- Cherwell Software, LLC v. BMC Software, Inc.Institution deniedPTAB · Oct 19, 2018 · IPR2018-00978 · APJ Justin T Arbes · IPR · Institution
The Board denied institution because Cherwell did not show a reasonable likelihood that claims 1–20 were unpatentable over Leung under § 103(a).
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Petitioner primarily refers to client application 300, but also mentions “an application (e.g., a formset)” and refers in various places in its claim chart to master formset 18 and client formset 12. See Pet. 15–26. A petition for inter partes review must include a “full statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence,” must identify “where each element of the claim is found in the prior art patents or printed publications relied upon,” and must “identify[] specific portions of the evidence that support the challenge.” 37 C.F.R. §§ 42.22(a)(2), 42.104(b)(4)–(5). “The Board may exclude or give no weight to the evidence where a party has failed to state its relevance or to identify specific portions of the evidence that support the challenge.” 37 C.F.R. § 42.104(b)(5). Petitioner’s general description of Leung and unexplained quotations from Leung in its claim chart fail to meet these requirements.” slip op. at 15
- BurdenDenied
“Petitioner primarily refers to client application 300, but also mentions “an application (e.g., a formset)” and refers in various places in its claim chart to master formset 18 and client formset 12. See Pet. 15–26. A petition for inter partes review must include a “full statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence,” must identify “where each element of the claim is found in the prior art patents or printed publications relied upon,” and must “identify[] specific portions of the evidence that support the challenge.” 37 C.F.R. §§ 42.22(a)(2), 42.104(b)(4)–(5). “The Board may exclude or give no weight to the evidence where a party has failed to state its relevance or to identify specific portions of the evidence that support the challenge.” 37 C.F.R. § 42.104(b)(5). Petitioner’s general description of Leung and unexplained quotations from Leung in its claim chart fail to meet these requirements.” slip op. at 15
- Skill levelSkill level petitioner adoptedDecided for petitioner
“KSR, 550 U.S. at 406 (quoting 35 U.S.C. § 103(a)). Petitioner argues that a person of ordinary skill in the art at the time of the ’652 patent would have had “a bachelor’s degree in computer science or computer engineering, or in a related field, and approximately two or three years of experience in industry with respect to software design and computer systems.” Pet. 10 (citing Ex. 1004 ¶ 33). Patent Owner does not address the level of ordinary skill in the art in its Preliminary Response. Based on the record presented, including our review of the ’652 patent and the types of problems and solutions described in the ’652 patent and cited prior art, we agree with Petitioner’s assessment of the level of ordinary skill in the art and apply it for purposes of this Decision.” slip op. at 9
Nonecites KSR · GrahamPatents in suitUS 8,832,652 - Cherwell Software, LLC v. BMC Software, Inc.Institution deniedPTAB · Oct 19, 2018 · IPR2018-00982 · APJ John A Hudalla · IPR · Institution
The Board denied institution on all challenged claims because Petitioner did not show a reasonable likelihood that Hudis, alone or in combinations, taught the required uniquely named hierarchical namespace.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We have authority to determine whether to institute an inter partes review. See 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information in the petition and the preliminary response “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons that follow, we do not institute an inter partes review.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for patent owner
“The parties agree that a “hierarchical namespace” is an arrangement of objects and that the objects are arranged hierarchically. They also agree that the “uniquely addressable” aspect should be included in the construction, but they differ on the specificity with which this concept should be described. We agree with Patent Owner that the construction must include the specification’s express definition of “uniquely addressable.” See Ex. 1001, 1:52–60 (“The term ‘namespace’ generally refers to a set of names in which all names are unique. . . . ‘Uniquely addressable’ refers to the property that items in a namespace have unique names such that any item in the namespace has a name different from the names of all other items in the namespace.”).” slip op. at 10
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentable
“We are persuaded by Patent Owner’s arguments. Petitioner relies on Hudis’s keys for teaching unique naming (see Pet. 18), but Hudis expressly states that a namespace may have two instances with the same key. See Ex. 1005, 9:33–37. This does not comport with our construction of “hierarchical namespace” insofar as one object in the set (i.e., one instance) would not have a different name from all other objects in the set (i.e., the other instance with the same key). See supra § I.G.1. Patent Owner also establishes that certain superclass objects in Hudis may not even have keys, which Patent Owner likens to names. See Ex. 1005, 9:9–12. Without names, such objects cannot meet the unique naming requirements in our construction of “hierarchical namespace.” See supra § I.G.1. In addition, the same teaching cited by Patent Owner states that class objects can inherit keys from a superclass object, which undermines Petitioner’s assertion that a key is unique to an object. See Ex. 1005, 9:9–12. Petitioner has not explained why or how an ordinarily skilled artisan considering Hudis’s use of keys would have understood Hudis as teaching the unique naming of a “hierarchical namespace” consistent with our construction of that term.2” slip op. at 20
- Expert testimonyPetitioner expert discountedDecided for patent owner
“We also have considered Dr. Fox’s testimony on Hudis’s teaching that “matching keys are considered to be the same instance within a namespace.” See Ex. 1003 ¶ 135 (quoting Ex. 1005, 9:33–37) (emphasis omitted). Dr. Fox testifies that this teaching resolves the problem of matching keys because “only a single instance object may have a given name (identified by the property designated as a ‘key value’) within a particular namespace.” Id. Yet merely considering two objects to be the same does not demonstrate that the two objects have different names. We do not credit Dr. Fox’s testimony in this regard because it is contradicted by Hudis. Dr. Fox also cites an example from Hudis related to “root/default” (id. (citing Ex. 1005, 8:60–64, 9:22–30)), but the example does not address the existence of two objects having the same name in Hudis. The fact that certain objects in Dr. Fox’s “root/default” example may have unique names does not indicate that all objects in the set have different names from one another, as required by our construction. See supra § I.G.1.” slip op. at 22
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,895,586 - Nikon Corporation v. ASML Netherlands B.V. Carl Zeiss AGRehearing deniedPTAB · Oct 4, 2018 · IPR2018-00688 · APJ Jeffrey S Smith · IPR · Rehearing
The Board denied the Patent Owner’s rehearing request, leaving institution in place for claims 1–4, 6, 7, 15, 16, and 19 because it found no abuse of discretion.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“decision for an abuse of discretion. See 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. See 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). The burden of showing that the Decision should be modified is on Patent Owner, the party challenging the Decision. See 37 C.F.R. § 42.71(d). In addition, “[t]he 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.” Id.” slip op. at 2
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)Decided for petitioner
“function limitations because, according to Patent Owner, we did not address Patent Owner’s contention that Petitioner’s analysis did not show that the prior art structures are the same or equivalent to structures disclosed in the Specification for performing the functions recited in claims 15, 16, and 19. Req. 3–6. We did address Patent Owner’s contention in our Decision. Dec. 18. In our analysis of the means plus function limitations recited in claim 15, we stated that The Petition identifies the structure in the Specification corresponding to the claimed “first filtering means” as a linear matched filter, and identifies the equivalent structure in Yow as a matched bandpass filter. Pet. 13–14, 27. The Petition identifies the structure in the Specification corresponding to the claimed “second filtering means” as a non-linear filter, and identifies the equivalent structure in Yow as a non-linear edge detector. Pet. 14, 27. Id. Our Decision includes similar analyses for claims 16 and 19. See Dec. 19. Patent Owner does not persuade us that we misapprehended the law for means plus function limitations. Rather, Patent Owner simply disagrees with our Institution Decision on this issue. Mere disagreement with our conclusion is not a proper basis for rehearing.” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Petitioner did not establish sufficiently that Yow Thesis was available as a printed publication, we should not have instituted trial on the grounds based on Yow Thesis. Req. 6–7 (citing Dec. 26). However, at this time, if the Board institutes a trial, the Board will institute on all challenges raised in the Petition. See Guidance on the Impact of SAS on AIA Trial Proceedings, April 26, 2018, available at https://www.uspto.gov/patents-application-process/patent-trial-and-appeal-board/trials/guidance-impact-sas-aia-trial. Accordingly, we deny Patent Owner’s Request for Rehearing.” slip op. at 4
Claim constructionPatents in suitUS 6,463,163 - Nikon Corporation v. ASML Netherlands B.V. Carl Zeiss AGRehearing deniedPTAB · Oct 1, 2018 · IPR2018-00687 · APJ David C Mckone · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving institution on claims 1–12 unchanged because Patent Owner showed no overlooked argument or misapprehended law.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“We are not persuaded by Patent Owner. Patent Owner does not contend that we overlooked or misapprehended its argument. Indeed, we discussed it in detail. Dec. 16–20. Patent Owner also does not persuade us that we misapprehended the law of obviousness. Rather, Patent Owner simply disagrees with our Institution Decision on this issue. Nevertheless, mere disagreement with our conclusion is not a proper basis for rehearing. Accordingly, we deny Patent Owner’s Request for Rehearing.” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“We note that our determination that there would have been reasons to modify Takahashi is not final and that Patent Owner is not precluded from raising in its Patent Owner Response the arguments presented in the Request for Rehearing.” slip op. at 4
§ 103 obviousnesscites KSRPatents in suitUS 6,731,335 - Unified Patents Inc. v. Kamatani Cloud, LLCNo claims unpatentablePTAB · Sep 19, 2018 · IPR2017-01370 · APJ Barbara A Parvis · IPR · Final written decision
The Board held claims 1, 2, 5, 7–13, 15–18, 21, 23–28, 30–32, 34, 35, and 38–41 not shown unpatentable under the three § 103 grounds.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“d) Conclusion—“detecting whether the measurement data are capable of being measured” Based on the entire trial record before us, for the reasons given, we are persuaded that Patent Owner’s proposed construction is consistent with the plain and ordinary meaning of the claim language as understood by a person of ordinary skill in the art in the context of the ’940 Patent Specification. See Ex. 1001, 5:40–54, 6:3–13, 7:1–4, Figs. 3, 4. Accordingly we determine that the broadest reasonable interpretation of detecting if data are “capable of being [measured/processed]” or “can be processed” is detecting “if any instrument has the functional ability to measure measurement data,” as proposed by Patent Owner. PO Resp. 14– 21.15 We determine no further express construction is necessary for the detecting recitations in the independent claims.” slip op. at 23
- Skill levelSkill level petitioner adoptedDecided for petitioner
“C. Person of Ordinary Skill in the Art Petitioner proposes that a person of ordinary skill in the art would have had a degree in computer science, electrical engineering, or computer engineering, or equivalent experience, and at least two years of experience in remote monitoring and control systems. Pet. 7 (citing Ex. 1007 ¶ 16). At the preliminary stage, Patent Owner agreed with Petitioner’s proposal (Prelim. Resp. 8) and Patent Owner has not subsequently disputed Petitioner’s proposal or offered an alternative (see generally PO Resp.). Because we find Petitioner’s statement of the level of skill in the art (Pet. 7; Ex. 1007 ¶ 16) consistent with the level of skill implied by the prior art of record, we adopt Petitioner’s statement of the level of skill in the art. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art itself can reflect the appropriate level of skill in the art).” slip op. at 25
- Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner
“Mr. Zatarain testifies “[i]n my opinion, detecting the off-on status of an instrument satisfies a PHOSITA’s understanding of the term ‘capable’ as well as relevant dictionary definitions for that term.” Ex. 1030 ¶ 84. Mr. Zatarain’s testimony then repeats the aforementioned definitions (id.), which we find are consistent with Patent Owner’s proposed construction. Mr Zatarain also testifies that an instrument that is not powered on “lacks the ability to perform any of its general functions.” Id. ¶ 85. But Mr. Zatarain’s testimony does not provide sufficient explanation as to why the meaning of the words “capable” and “available” overlap, as Petitioner contends (Pet. Reply 22–26). Additionally, Mr. Zatarain’s testimony is conclusory. See Ex. 1030 ¶¶ 84–85. We, instead, credit the testimony of Dr. Zavadsky that Patent Owner’s proposed construction is consistent with the understanding of one of ordinary skill in the art. See, e.g., Ex. 2006 ¶¶ 28, 30–36.” slip op. at 23
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Petitioner’s contentions are premised on its claim construction contentions, which we did not adopt. More specifically, for the reasons discussed supra in Section II.A.2, we are persuaded that the broadest reasonable interpretation of detecting if data are “capable of being [measured/processed]” is detecting “if any instrument has the functional ability to measure measurement data,” as proposed by Patent Owner. PO Resp. 14–21. Petitioner relies on two paragraphs of Miyajima describing determining whether an instrument is powered on and, if so, if it is processing another client’s data. Pet. 38–45 (citing e.g., Ex. 1005 ¶¶ 47, 55). This description, however, merely is of detecting the instrument’s availability. We do not find that Miyajima’s description of determining whether an instrument is powered on and, if so, if it is processing another client’s data (Ex. 1005 ¶¶ 47, 55) teaches “detecting whether the measurement data are capable of being measured by any measurement means in the said server apparatus” (emphasis added) in accordance with our construction, i.e., we do not find Miyajima teaches detecting “if any instrument has the functional ability to measure measurement data.”” slip op. at 31
Patent outcomesUS 6,873,940 not shown unpatentableClaim construction§ 103 obviousnesscites GrahamPatents in suitUS 6,873,940 - Nikon Corporation v. ASML Netherlands B.V., Carl Zeiss AGRehearing deniedPTAB · Sep 10, 2018 · IPR2018-00227 · APJ Brian J Mcnamara · IPR · Rehearing
The Board denied rehearing of the denial of institution, finding the Kerns-Niikawa combination did not sufficiently teach or suggest initiating audio capture based on focus adjustment for claims 15, 20, and 23.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“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).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“not persuaded that the Request for Rehearing demonstrates any error or misapprehension in our analysis of the Petition, the ’167 patent, or the references. Kerns uses a two-position shutter button (ready and picture taking positions) that in the first position begins to take a series of photographs and record a series of sound images in ring buffers that are filled and then overwritten as recording progresses. See e.g., Ex. 1005, 3:17–23. When the user presses the button into the second position, additional pictures are snapped and recording stops, with the ring buffers remaining intact. Id. at 3:24–33. Kerns does not explicitly discuss auto focusing. Niikawa uses a separate button for sound recording. See, e.g., Ex. 1006 ¶ 155. The Petition describes Kerns at pages 27–30 without mentioning focusing. The relevant claim chart in the Petition cites Kerns’ disclosure of a two-position shutter, but does not cite a portion of Kerns that discloses responding to a detection in focus adjustment. Id. at 43. Petitioner’s chart of claim 15 cites Niikawa as disclosing “generating a trigger signal in response to detection of focus adjustment when the camera is manipulated prior to image capture.” Petitioner acknowledges “Niikawa discloses recording sound in association with an image by using sound recording button 53 during ‘after view’ display following image capture.” Pet. 32 (citing Ex. 1006 ¶ 106). Although Niikawa discloses audio capture, Niikawa does not disclose audio capture based on focusing adjustment. Accordingly, neither Kerns nor Niikawa individually discloses initiating audio capture based on focusing adjustment. The Petition argues that “it would have been obvious to one of skill in the art to employ the two-step shutter control of Kerns in the camera of Niikawa to provide simplified sound recording control in connection with image capture” (id. at 32). As noted above, Kerns does not discuss explicitly responding to focus adjustment to trigger audio recording. The Petition also acknowledges that “Niikawa discloses numerous sensors relating to image taking operations that will cause the camera to be switched to capture mode.” Id. at 34. Petitioner’s assertion that one of ordinary skill would have modified Niikawa to replace sound recording button 53 with Kerns’ two-step shutter and further modified the combination to select autofocusing as the sensor parameter that initiates sound recording, as recited in claim 15, is not supported by the references and represents an impermissible level of hindsight. Thus, we further determine the Petition did not demonstrate sufficiently that the combination of Kerns and Niikawa would have taught or suggested initiating audio capture based on focusing adjustment to the ordinarily skilled artisan during the relevant timeframe.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“Claim 15 explicitly recites that “the detection circuit [is] configured to generate a trigger signal when the camera is manipulated prior to image-capture” and that “the detection circuit is configured to sense focus adjustments by the camera while the camera is powered-up and in a wait state, sense activation of a viewfinder display of the digital camera, and generate the trigger signal in response to detection of a focus adjustment.” Claim 15 recites that the detection circuit configured to generate the trigger signal performs all of these functions, as opposed to one or more of them. Petitioner identifies no disclosure in the Specification supporting its proposed construction that claim 15 should be construed to mean a system in which generating a trigger signal when the camera is manipulated does not require both sensing activation of the viewfinder and detecting focus adjustment. As Petitioner points out, the ’167 patent acknowledges that it was known to use the shutter release button to initiate both audio capture and focusing. Id. at 10 (citing Pet. 33, Ex. 1001, 1:14–16 (disclosing that “[s]ome still cameras utilize a first position on a shutter-release button to initiate audio capture and/or focusing”)). The ’167 patent recognizes that in such systems “the user is limited to capturing an image during the audio recording period in order to obtain the best coordination between picture and sound.” Ex. 1001, 1:44–47. The ’167 patent addresses this limitation of the prior art with a system in which “[m]anipulation of the camera is detected prior to image capture, and sensory data are generated in response to detecting the manipulation.” Ex. 1001, 1:54–56. Construing apparatus claim 15 as a whole, the functional limitation, “the detection circuit configured to generate a trigger signal when the camera is manipulated prior to image-capture,” must be view the claimed manipulation in the context of the additional functional limitation that the detection circuit is configured to sense activation of the viewfinder. Recognizing that the Specification articulates one purpose of the invention is to avoid the technical constraints of using the shutter button alone to initiate both audio capture and focusing, we do not construe the claim to mean only focusing adjustment is required to begin audio recording merely because the claim also recites that the sensory data used to generate the trigger signal is a focus adjustment.” slip op. at 5
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation not foundNot shown unpatentableNot shown unpatentable
“The Petition argues that “it would have been obvious to one of skill in the art to employ the two-step shutter control of Kerns in the camera of Niikawa to provide simplified sound recording control in connection with image capture” (id. at 32). As noted above, Kerns does not discuss explicitly responding to focus adjustment to trigger audio recording. The Petition also acknowledges that “Niikawa discloses numerous sensors relating to image taking operations that will cause the camera to be switched to capture mode.” Id. at 34. Petitioner’s assertion that one of ordinary skill would have modified Niikawa to replace sound recording button 53 with Kerns’ two-step shutter and further modified the combination to select autofocusing as the sensor parameter that initiates sound recording, as recited in claim 15, is not supported by the references and represents an impermissible level of hindsight. Thus, we further determine the Petition did not demonstrate sufficiently that the combination of Kerns and Niikawa would have taught or suggested initiating audio capture based on focusing adjustment to the ordinarily skilled artisan during the relevant timeframe.” slip op. at 8
Claim construction§ 103 obviousnessPatents in suitUS 7,209,167 - Fedex Corporation v. Intellectual Ventures II LLCSome claims unpatentablePTAB · Aug 9, 2018 · IPR2017-00859 · APJ Trevor M Jefferson · IPR · Final written decision
Claims 7, 8, 12, and 13 are unpatentable as obvious over the ANSI Standard and Ett; claims 16, 18, and 19 were not shown unpatentable.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“We agree that the differences are not determinative. We also find that Patent Owner’s evidence of the level of skill in the art, although generally expansive regarding “data interchange” and exchange using electronic documents, casts an overly broad net for the ’586 patent, which describes that the “present invention relates generally to bar code technology” (Ex. 1001, 1:19–20). We agree with Petitioner that bar code technology is the technology that forms the background of the claims and specification. Reply 15–16; Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1257 (Fed. Cir. 2007) (referring to “the invention” and “the claim[s]” to determine the level of ordinary skill in the art). Accordingly, we adopt Petitioner’s identification of the level of ordinary skill in the art as reflecting the claims and specification of the ’586 patent. C.” slip op. at 8
- ExcludeMotion to exclude, deniedDenied
“failed to show that the ANSI Standard (Exhibit 1002) is authentic and not hearsay. PO Mot. Excl. 1, 3–5. Our prior case, cited by Patent Owner, acknowledges that panels have more often relied on copyright notices as probative evidence of publication. See Ford Motor Co. v. Versata Dev. Grp., Inc., Case IPR2016-01016, at 6 (PTAB Sept. 27, 2016) (Paper 11) (citing cases); see also Ericsson Inc. v. Intellectual Ventures I LLC, IPR2014-00527, Paper 41, at 10–11 (PTAB May 18, 2015). We find the copyright notice on a commercial standards document, such as the ANSI Standard copyright marking that is not directly challenged by the Patent Owner, is generally reliable indicia used by the interested public, absent counterfactual evidence. FRE 803(17); see Ex. 2004, 95:23–96:20; Ex. 1008 ¶ 19; Ex. 1002, vvi. We note that Patent Owner acknowledges that persons of ordinary skill in the art turn to ANSI publications as a recognized source. PO Resp. 15. We agree with Petitioner that the copyright notice of the ANSI Standard is admissible under the residual hearsay exception. FRE 807. ANSI has “circumstantial guarantees of trustworthiness” due to the voluminous evidence referencing it (e.g., Exs. 1011, 1032– 1034, 1037), the formalized processes culminating in its publication (Ex. 1008 ¶¶ 9, 11–17; 1023 ¶¶ 6, 8–14; Exs. 1009, 1010), and its status as a standards document. There can be no question that industries rely on ANSI standards. E.g., Ex. 1008 ¶ 19; Ex. 1023 ¶ 20; Ex. 2004 at 95:21–96:11, 190:16–194:7. (Paper 34) Pet. Opp. Excl. 2 (footnote omitted). Patent Owner also does not challenge the ANSI Publication Manuals (Exhibits 1009, 1010), which further support the evidence that the ANSI Standard was published as a standards document.” slip op. at 9
- Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Term construed board ownDecided for patent owner
“Based on the ’586 patent specification and the decoding means of claim 16, and related dependent claims 18 and 19, we determine that the structure includes the algorithm that performs the decoding function. See Ex. 1001, 5:40–48 (describing particular “logic and computer routines” in step 127 of Figure 1). Thus, the corresponding structure is more than a general purpose computer or controller. Pet. 10–11; see Aristocrat Techs. Austl. Party Ltd. vs. Int’l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008) (quoting Harris Corp. v. Ericsson Inc., 417 F.3d 1241, 1249 (Fed. Cir. 2005)). Petitioner does not address the algorithm identified as corresponding structure for the “means for decoding” of independent claim 16 as construed above, and in particular, Petitioner fails to show that the asserted prior art teaches or discloses the algorithm in claim 16 and its dependent claims 18 and 19. Accordingly, Petitioner has not shown the unpatentability of claims 16, 18, and 19.” slip op. at 7
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedPrinted publication establishedMixed
“We are not persuaded that Petitioner has sufficiently shown by a preponderance of the evidence that UPS qualifies as a prior art printed publication. The last page of UPS includes the following: “01880273 REV. 1/96 50M.” Ex. 1004, 47. Although “1/96” appears to be the date January 1996, the annotation itself does not indicate that the document was disseminated on that date. Additionally, the deposition testimony from Bartex that Petitioner relies on (Pet. 64 (citing Ex. 1012, 58–60)) pertains to “Exhibit 4” (Ex. 1012, 58–60), which has not been submitted in this proceeding. In sum, we have no way to determine if UPS is the same as “Exhibit 4,” and Petitioner fails to establish as much. Thus, we do not find Mr. Lewis’ testimony regarding “Exhibit 4” persuasive, nor do we find that the record contains sufficient evidence to support the finding that UPS was publicly disseminated. Thus, Petitioner has not established that UPS qualifies as a prior art printed publication. Accordingly, Petitioner has failed to show that the two grounds including UPS render the challenged claims unpatentable by a preponderance of the evidence.” slip op. at 18
Patent outcomesUS 9,047,586 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 9,047,586 - Amazon.Com, Inc. / Amazon Digital Services, Inc. et al. v. Uniloc Luxembourg S.A.Some claims unpatentablePTAB · Aug 1, 2018 · IPR2017-00948 · APJ David C Mckone · IPR · Final written decision
Claims 1–8, 18–22, and 25 are unpatentable; claims 9–17, 23, and 24 are not unpatentable; substitute claims 26–28 are denied.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“The “verify” limitation of claim 1 expressly recites a check based “at least in part on a device identity.” The specification describes such a check as occurring at steps 15 and 16, not step 13. Steps 15 and 16 check whether the device identity is on record and, in response to that check, allow a digital product to be used on a device (steps 17, 18) or start a process to authorize the device. Id. at 5:1–9, 5:13–18. Although steps 15 and 16 are not expressly described as a verification of validity, steps 15 and 16, not step 13, logically track and most closely align with the language of claim 1’s “verify” and “in response to” limitations. Thus, the specification supports Petitioner’s view that the “verify” limitation can encompass checking whether unique device information is reflected in a database as authorized for a license.” slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner
“claim 1 is limiting, with Patent Owner arguing that it is and Petitioner arguing that it is not. Id. at 12–13. Patent Owner now argues that “[t]he preambles [of claims 1 and 22] expressly state that the claimed system and method are both directed to ‘adjusting’ the license in terms of its allowed copy count, which the preambles expressly define.” PO Resp. 9. We explained in the Institution Decision, however, that even if the preamble is limiting (e.g., by virtue of it providing antecedent basis (“at least one allowed copy count”) for “set the allowed copy count”), the language “[a] system for adjusting a license for a digital product over time” constitutes a 2 The preamble of claim 25 is not similar to that of claims 1 and 22, and Patent Owner does not propose an “adjusting” limitation for the language “in response to the device identity not being on the record, set the allowed copy count to a first upper limit for a first time period after an initial authorization of the digital product,” as recited in claim 25. statement of intended purpose and does not purport to modify any particular claim language, such as “set the allowed copy count.” Dec. 13–14. Patent Owner argues that our preliminary construction would vitiate the purpose of the preamble language and that, instead, “the claim limitations must be understood in light of the ‘adjusting’ context introduced in the preamble.” PO Resp. 9. However, “the mere fact that a structural term in the preamble is part of the claim does not mean that the preamble’s statement of purpose or other description is also part of the claim.” Marrin v. Griffin, 599 F.3d 1290, 1295 (Fed. Cir. 2010). Rather, the Federal Circuit has held that “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 Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (quoting Rowe v. Dror, 112 F.3d 473, 478 (Fed. Cir. 1997)). Thus, an intended purpose set forth in a claim preamble and the context that purpose might provide, without more, are not limiting. Moreover, as Petitioner points out, “the claimed invention could be used to adjust an allowed device limit, at least to a higher limit, thereby satisfying the intended purpose of the invention.” Reply 4.” slip op. at 14
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed
“On the complete record, we find that DeMello’s authentication, which checks a Passport ID and machine ID against stored records to authenticate a device, discloses executable code for the processor to “verify that a license data associated with the digital product is valid based at least in part on a device identity generated by sampling physical parameters of the given device,” as recited in claim 1 and similarly recited in claim 22.” slip op. at 29
- Obviousness (§103) › KSR rationalesUnpatentableNot shown unpatentableMixed
“The Federal Circuit has cautioned that “references to ‘common sense’—whether to supply a motivation to combine or a missing limitation—cannot be used as a wholesale substitute for reasoned analysis and evidentiary support, especially when dealing with a limitation missing from the prior art references specified.” Arendi S.A.R.L. v. Apple Inc., 832 F.3d 1355, 1362 (Fed. Cir. 2016). That is not the case here. As explained above, both the ’960 patent and DeMello describe precise numbers of days as arbitrary and that their respective inventions contemplate other numbers. We find that it would have been reasonable for the skilled artisan to have selected six days, as recited in claim 6, in light of DeMello’s disclosure.” slip op. at 45
Patent outcomesUS 8,566,960 mixedClaim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Alice · Bilski · Berkheimer · GrahamPatents in suitUS 8,566,960 - Fedex Corporation v. Intellectual Ventures II LLCSome claims unpatentablePTAB · Jul 20, 2018 · IPR2017-00729 · APJ Barbara A Parvis · IPR · Final written decision
Claims 1–17 are unpatentable as obvious over Rappaport, Rappaport and DeLorme, or Rappaport and Wright; claims 18–24 were not shown unpatentable.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“have held at least a Bachelor’s Degree in Electrical Engineering, Computer Engineering, Computer Science, or an equivalent, and two or more years of industry experience in the field of mobile communications, or the academic equivalent thereof.” Pet. 8. Petitioner bases its argument on the testimony and experience of Dr. Lavian. Id. (citing Ex. 1005 ¶¶ 44–49). Patent Owner does not dispute Petitioner’s statement. See generally PO Resp. For the 3 The complete record does not include evidence of objective indicia of nonobviousness or secondary considerations. reasons given by Petitioner (Pet. 8; Ex. 1005 ¶¶ 44–49), we adopt Petitioner’s statement of the level of skill in the art.” slip op. at 9
- Expert testimonyPetitioner expert creditedPatent owner expert discountedMixed
“Although Petitioner directs us to a portion of the ’581 Patent that Petitioner contends corresponds to the field management program, i.e., “Ex. 1001, 7:50–8:12” (Pet. 10), Petitioner does not identify teachings in Rappaport corresponding to the algorithm in the ’581 Patent, which includes “[t]he program would prompt the user for input of data related to the problem.” Ex. 1001, 7:54–55. Petitioner’s assertion that no substantial differences exist between “Rappaport’s memory, processor, and SitePlanner® program and the memory, processor, and field data management program” of the ’581 Patent is conclusory. Pet. 51. Although Petitioner includes references back to its contentions for other independent claims that do not require a prompt, Petitioner does not provide any explanation regarding these other teachings and the prompt requirement of claim 18. Id. As discussed above with respect to independent claims 1 and 7, Rappaport teaches repeating the cycle of making measurements, receiving optimized predictions, and reconfiguring the network. See, e.g., Ex. 1002, 19:1–8. However, Petitioner has not shown sufficiently that this teaching, or any other teaching in Rappaport, is the same or equivalent to a program that prompts the user to input data. Dr. Lavian’s testimony (see, e.g., Ex. 1006 ¶ 205) is conclusory and substantially the same as Petitioner’s contentions. Dr. Lavian testifies that the program in Rappaport when executed “is substantially equivalent” to that of the ’581 Patent. Id. Because Dr. Lavian does not disclose sufficiently the underlying facts or data on which his opinion is based, including what portions of Rappaport are substantially equivalent to the prompt in the ’581 Patent, we give his testimony (Ex. 1006 ¶ 205) little or no weight. 37 C.F.R. § 42.65(a).” slip op. at 45
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed
“Although Petitioner directs us to a portion of the ’581 Patent that Petitioner contends corresponds to the field management program, i.e., “Ex. 1001, 7:50–8:12” (Pet. 10), Petitioner does not identify teachings in Rappaport corresponding to the algorithm in the ’581 Patent, which includes “[t]he program would prompt the user for input of data related to the problem.” Ex. 1001, 7:54–55. Petitioner’s assertion that no substantial differences exist between “Rappaport’s memory, processor, and SitePlanner® program and the memory, processor, and field data management program” of the ’581 Patent is conclusory. Pet. 51. Although Petitioner includes references back to its contentions for other independent claims that do not require a prompt, Petitioner does not provide any explanation regarding these other teachings and the prompt requirement of claim 18. Id. As discussed above with respect to independent claims 1 and 7, Rappaport teaches repeating the cycle of making measurements, receiving optimized predictions, and reconfiguring the network. See, e.g., Ex. 1002, 19:1–8. However, Petitioner has not shown sufficiently that this teaching, or any other teaching in Rappaport, is the same or equivalent to a program that prompts the user to input data. Dr. Lavian’s testimony (see, e.g., Ex. 1006 ¶ 205) is conclusory and substantially the same as Petitioner’s contentions. Dr. Lavian testifies that the program in Rappaport when executed “is substantially equivalent” to that of the ’581 Patent. Id. Because Dr. Lavian does not disclose sufficiently the underlying facts or data on which his opinion is based, including what portions of Rappaport are substantially equivalent to the prompt in the ’581 Patent, we give his testimony (Ex. 1006 ¶ 205) little or no weight. 37 C.F.R. § 42.65(a). In summary, Petitioner has not provided persuasive contentions identifying in Rappaport teachings for the “means for managing data collected at the field using the at least one handheld device responsive to program,” recited in claim 18. On this record, we are not persuaded Petitioner establishes by a preponderance of the evidence that claim 18 is unpatentable over Rappaport.” slip op. at 45
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Petitioner has shown that all the limitations of claim 1 are taught in Rappaport’s description with respect to two consecutive figures, i.e., Figures 9 and 10. Rappaport’s Figures 9 and 10 both pertain to a system with a handheld device that transmits field data to a remote server, consistent with Dr. Lavian’s testimony. Ex. 1006 ¶¶ 77, 80 (citing, e.g., Ex. 1002, (57), 1:12–18, 4:41–5:31, 18:7–18, 18:64–19:8, Figs. 1, 3, 9, 10). Even to the extent that these disclosures are of two separate embodiments, “[c]ombining two embodiments disclosed adjacent to each other in a prior art patent does not require a leap of inventiveness.” Boston Sci. Scimed, Inc. v. Cordis Corp., 554 F.3d 982, 991 (Fed. Cir. 2009). Consistent with Dr. Lavian’s testimony (Ex. 1006 ¶¶ 80–85), we find that it at least would have been obvious and predictable for a person having ordinary skill in the art to combine the functionality disclosed with respect to Figures 9 and 10 into a single handheld device that transmits measured field data to a remote server so that the technician could optimize on-site and on the fly. See, e.g., Ex. 1002, 18:7–18, 18:33–48, 18:64–19:8. Rappaport depicts handheld devices in Figures 1, 3, 9, and 10 and refers to each device as a “handheld computer.” See, e.g., Ex. 1002, 6:27–58, 9:26–36, 14:54–15:3, 16:56–65, 18:7–18, 18:64–19:8, Figs. 1, 3, 9, 10. Dr. Sharony’s testimony that the proposed combination is impractical because “the exemplary Palm IIIc handheld of Rappaport . . . only had one serial port” (Ex. 2008 ¶¶ 53–59) does not take into account the full disclosure of Rappaport including “many other portable handheld computers” that “could be used while staying within the spirit of the present invention” such as cellular phones, other PDAs running PalmOS and pocket or tablet personal computers (PCs) running the Windows OS or “another powerful OS.” See, e.g., Ex. 1002, 6:27–58; see also id. at 19:9–12 (“[T]hose skilled in the art will recognize that the invention can be practiced with considerable variation”).6 Additionally, Dr. Sharony’s testimony that the measurement device and the interface box must be connected “at the same time” (Ex. 2008 ¶ 53) is not commensurate with the scope of claim 1, which does not require simultaneous collection and transmission of field data.” slip op. at 24
Patent outcomesUS 8,494,581 mixed§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,494,581 - Fedex Corporation v. Intellectual Ventures II LLCRehearing deniedPTAB · Jul 17, 2018 · IPR2017-02030 · APJ Barbara A Parvis · IPR · Rehearing
The Board denied Patent Owner’s rehearing requests, finding no overlooked or misapprehended basis to authorize a motion to terminate the reexamination.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). The party must identify specifically all matters we misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. Id. With this in mind, we address the arguments presented by Patent Owner.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Decided for patent owner
“First, IV requested that the Board exercise its discretion under 35 U.S.C. § 315(d) and 37 C.F.R. § 42.122(a) to terminate the reexamination request because it was abusive to IV and an unmistakable attempt to circumvent General Plastic. Second, IV requested that the Board exercise its discretion under 35 U.S.C. § 325(d) to terminate the reexamination request because that request presented the same references and substantially the same arguments that FedEx presented in Case IPR2017-00729 and Case IPR2017-02030. Id. For the reasons that follow, we are not persuaded by Patent Owner’s contentions that we misapprehended or overlooked its arguments in connection with its request for authorization to file a motion to terminate. Id. at 1–8.” slip op. at 4
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for patent owner
“First, IV requested that the Board exercise its discretion under 35 U.S.C. § 315(d) and 37 C.F.R. § 42.122(a) to terminate the reexamination request because it was abusive to IV and an unmistakable attempt to circumvent General Plastic. Second, IV requested that the Board exercise its discretion under 35 U.S.C. § 325(d) to terminate the reexamination request because that request presented the same references and substantially the same arguments that FedEx presented in Case IPR2017-00729 and Case IPR2017-02030. Id. For the reasons that follow, we are not persuaded by Patent Owner’s contentions that we misapprehended or overlooked its arguments in connection with its request for authorization to file a motion to terminate. Id. at 1–8.” slip op. at 4
Discretionary denialPatents in suitUS 8,494,581
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.