• Cisco Systems, Inc. v. Centripetal Networks, Inc.Some claims unpatentable
  PTAB · May 18, 2020 · IPR2018-01760 · APJ J John Lee · IPR · Final written decision

  Claims 1–7, 10–12, 14–21, 24, and 25 are unpatentable as obvious over Sourcefire; claims 8, 9, 13, 22, and 23 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “In its Response, Patent Owner does not dispute Petitioner’s definition of the level of skill in the art.3 Based on the complete trial record, we find 3 Dr. Orso testified to a slightly different description of the level of skill in the art (Ex. 2002 ¶ 36), but Patent Owner did not argue during trial that Dr. Orso’s description should be adopted instead of Petitioner’s description and waived any such argument as a result. See In re NuVasive, Inc., 842 Dr. Staniford’s testimony credible and persuasive (Ex. 1003 ¶¶ 21–24), and we adopt Petitioner’s definition as a result. B.” slip op. at 7

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

    “an unexpired patent are given their broadest reasonable construction in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b) (2018); see Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016). In the Decision on Institution, we preliminarily construed the term “network-threat indicator” as an “indicator that represents the identity of a resource associated with a network threat.” Inst. Dec. 8. During trial, neither party disputed this preliminary construction. See PO Resp. 25; Pet. Reply 7–8; Tr. 10:22–11:9. We do not discern any evidence in the full record after trial indicating that this construction is incorrect or should be modified. Moreover, the Specification supports this construction, indicating that “network addresses, ports, fully qualified domain names (FQDNs), uniform resource locators (URLs), uniform resource identifiers (URIs), or the like” are examples of “network-threat indicators.” Ex. 1001, 3:18–26. Thus, we apply this construction in this Decision.” slip op. at 8

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner

    “Based on the above facts and case law, we conclude that Sourcefire was publicly accessible. The evidence of record indicates that the Sourcefire 3D System was publicly marketed and sold, and that the Sourcefire reference was actually distributed to over 500 customers of the Sourcefire 3D System. Ex. 1005 ¶¶ 11, 19; Ex. 1042 ¶¶ 5–9. This vastly exceeds the distribution to six people in MIT and distribution of 80 copies in Garrett. Record evidence also supports Petitioner’s contention that the customers who received Sourcefire included entities interested in network security products, including persons of ordinary skill in the art. See Ex. 1042 ¶ 9; see also Ex. 1004, 1, 32–33 (identifying Sourcefire as a “User Guide” and indicating Sourcefire provides information for network administrators); Ex. 1005 ¶ 5 (indicating Sourcefire was drafted in consultation with, and reviewed by, engineers who designed the Sourcefire system). Moreover, similar to MIT and as discussed in Medtronic, the record indicates that the recipients of Sourcefire were not subject to confidentiality requirements restricting use or further distribution. See Ex. 1004, 2 (Sourcefire copyright page stating, “You may use . . . and otherwise copy and distribute [Sourcefire] solely for non-commercial use”).5 Although Patent Owner asserts that MIT and Klopfenstein are distinguishable because they involved “the free distribution of academic documents to conference and meeting attendees” (PO Sur-reply 7), case law indicates that distribution to commercial entities also may be sufficient. See Garrett, 422 F.2d at 878; Pet. Reply 3.6” slip op. at 15

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

    “Id. at 65. These largely conclusory arguments, however, fail to explain how refreshing an event view or event summary page, whether at a regular interval or otherwise, teaches generating different types of log entries at the same time for different portions of packets in the manner claimed. The cited testimony of Dr. Staniford does not provide any further illumination, instead repeating essentially the same conclusory statements made in the Petition. See Ex. 1003 ¶¶ 162, 173; 37 C.F.R. § 42.65(a). Petitioner’s Reply also fails to supply the necessary explanation or supporting evidence. Petitioner notes that “flow-log entries are generated from the packet-logs”—thus, flow-log entries must be generated after the corresponding packet-log entries and would reflect any changes made to those entries. Pet. Reply 19–21. Although true, these facts pertain only to a single portion of packets, i.e., that their packet-log entries are generated first, and that the related flow-log entries are generated afterward. The same is true even considering that this process can occur at a predetermined “refresh interval.” Petitioner does not identify any specific teaching or suggestion in Sourcefire that indicates how the generation of log entries for two different portions of packets would operate. Instead, Petitioner relies on a bare assertion—without any specific basis in Sourcefire—that “the processing of the packet-logs and the flow-logs are continually being updated or refreshed.” Without sufficient supporting evidence, that bare assertion and the conclusory testimony of Dr. Staniford are inadequate to meet Petitioner’s burden to prove the unpatentability of these claims by a preponderance of the evidence.” slip op. at 35

  Patent outcomesUS 9,413,722 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,413,722
• Ralph Lauren Corporation v. Lexos Media IP, LLCSome claims unpatentable
  PTAB · Mar 25, 2020 · IPR2018-01755 · APJ Sharon Fenick · IPR · Final written decision

  Claims 27, 33, 40, 41, 72, 81, and 82 are unpatentable under § 103; the remaining challenged claims are not determined unpatentable.

  RulingsFinal written decision

  • BurdenFwd mixedMixed

    “Decision issues under 35 U.S.C. § 318(a). Having considered the evidence of record, and for the reasons discussed below, Petitioner has demonstrated by a preponderance of the evidence that claims 27, 33, 40, 41, 72, 81 and 82 of the ’449 patent are unpatentable under 35 U.S.C. § 103(a), but has not demonstrated by a preponderance of the evidence that claims 1–3, 5–7, 12– 15, 28, 29, 31, 32, 38, 39, 53–56, 58–63, 73–75, and 77–80 of the ’449 patent are unpatentable.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art Petitioner proposes that a person of ordinary skill in the art would have had “at least a master’s degree in Computer Science, Computer Engineering, or a related field, or hold a bachelor’s degree in Computer 4 The record contains no evidence relating to secondary considerations. Science, Computer Engineering, or equivalent and have at least two years of relevant work experience in the fields of UI [(user interface)] design and OSs.” Pet. 10–11. In the Institution Decision, we preliminary adopted Petitioner’s proposed definition, noting that the prior art in this case demonstrated the level of ordinary skill in the art at the time of the invention. Inst. Dec. 10 (citing Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001)). Patent Owner does not comment on or dispute Petitioner’s proposal, and instead cites Okajima’s holding regarding the level of skill in the prior art without raising any issues regarding whether the prior art here reflects a level of ordinary skill different from that proposed by Petitioner. PO Resp. 10 (citing Okajima, 261 F.3d at 1355). We adopt Petitioner’s definition as consistent with the ’449 patent and the asserted prior art.” slip op. at 10

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner

    “Only terms that are in controversy need to be construed, and then only to the extent necessary to resolve the controversy. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). The Petitioner proposed construction of several claim terms in the Petition. Pet. 12–18. However, none of these claim terms require construction to resolve the controversy. Petitioner also argued for a construction of an additional term (“wherein said specified content information further comprises information to be displayed on said display of said user’s terminal”) in its Reply. Pet. Reply 13. Patent Owner contends that this argument is a new argument raised improperly for the first time in the Reply. PO Sur-Reply 10–11. We agree. Pursuant to 37 C.F.R. § 42.23(b), a reply “may only respond to arguments raised in the corresponding ... patent owner response.” See also Acceleration Bay, LLC v. Activision Blizzard Inc., 908 F.3d 765, 775 (Fed. Cir. 2018) (concluding that the Board did not abuse its discretion in refusing to consider portions of a reply declaration “rais[ing] a new obviousness argument for [a claim] limitation that could have been made in the petition” but was not); Intelligent Bio-Sys., Inc. v. Illumina Cambridge, Ltd., 821 F.3d 1359, 1369–1370 (Fed. Cir. 2016) (concluding that the Board did not abuse its discretion in refusing to consider reply brief arguments advocating a “new theory” of unpatentability under 37 C.F.R. § 42.23(b)). Therefore, we will not address the new construction proposed for this claim term.” slip op. at 11

  • Strike new argumentNew argument disregardedDecided for patent owner

    “A petitioner must choose which grounds of invalidity to assert in the petition and “the expedited nature of IPRs bring with it an obligation for petitioners to make their case in their petition to institute.” Intelligent Bio- Sys., 821 F.3d at 1369 (Fed. Cir. 2016); Wasica Fin. GmbH v. Cont'l Auto. Sys., Inc., 853 F.3d 1272, 1286 (Fed. Circ. 2017) (a petitioner is foreclosed from “shifting” in post-petition arguments to a new theory of prima facie obviousness based on a different passage of a prior art reference than was used in the petition); see PTAB Consolidated Trial Practice Guide November 2019,5 73 (“Petitioner may not submit new evidence or argument in reply that it could have presented earlier, e.g., to make out a prima facie 5 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated case of unpatentability.”); Trial Practice Guide Update August 2018,6 14 (same). Therefore, we evaluate Petitioner’s arguments with respect to limitation [c.i] relying upon Malamud’s message relating to a preview cursor in Malamud to teach the “specified content information.” Patent Owner does not make any arguments relating to whether Malamud’s message, in view of the teachings of Anthias, teaches limitation [c.i] of claim 1. See, e.g., PO Resp. 9–18.” slip op. at 19

  Patent outcomesUS 6,118,449 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,118,449
• Shenzhen Liown Electronics Co., Ltd. v. Disney Enterprises, Inc.All claims unpatentable
  PTAB · Feb 7, 2017 · IPR2015-01658 · APJ William M Fink · IPR · Final written decision

  Claims 1–4, 7, 13, 14, 18–20, 22, and 26 are unpatentable on at least one ground; Sandell anticipation of claims 1–3 and Sandell-Hall obviousness of claim 7 were not proven.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We find these “definitions” to be substantially similar. For example, both require at least a mechanical engineering degree and experience varying between “some,” in Dr. Brown’s opinion, and “one to three years,” in Dr. Delson’s opinion. Given this apparent lack of disagreement, we adopt 7 U.S. Patent No. 782,156, issued Feb. 7, 1905 (Ex. 1009) (“Meeker”). 8 U.S. Patent No. 4,551,794, issued Nov. 5, 1985 (Ex. 1010) (“Sandell”). 9 U.S. Patent No. 1,842,167, issued Jan. 19, 1932 (Ex. 1011) (“Hall”). Dr. Delson’s statement of the level of ordinary skill for purposes of this Decision, but we note that our analysis would be the same under either formulation.” slip op. at 6

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Other

    “1. “flame silhouette element” In the Decision to Institute, we construed the term “flame silhouette element,” recited in at least claims 1 and 26, as “a body of material having a shape that is suitable to generate a flame flickering effect.” Inst. Dec. 9. In their respective Response and Reply, neither party disputes the preliminary construction of this term. Accordingly, we see no reason to change our construction, which we based on the broadest reasonable interpretation, consistent with the Specification.” slip op. at 7

  • Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer foundPlain and ordinary meaningDecided for petitioner

    “We determine that the Federal Circuit’s statement of the disclaimer of “non-chaotic pivoting” and devices “driven by rhythmic and metronomic patterns,” Luminara, 814 F.3d at 1353–54, is sufficiently specific to determine the scope of the term “pivot” in claim 1 and “pivotally supported” in claim 13.13 Accordingly, we apply the Federal Circuit’s construction that the plain and ordinary meaning of “pivot” and “pivotally supported” applies, 13 We have also considered Patent Owner’s Motion for Observations (Paper 37), which are substantially directed at obtaining admissions from Petitioner’s declarant in support of its proposed construction of chaotic pivoting (or that Schnuckle ’455 does not disclose chaotic pivoting based on this construction). See id. at 6–13. Although we have considered Patent Owner’s observations, we do not find them persuasive for the reasons explained herein. except that non-chaotic pivoting and devices driven by rhythmic and metronomic patterns are disclaimed.” slip op. at 17

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “consider whether Schnuckle ’455 sufficiently discloses the pivot (or pivotally supported) limitation given the disclaimer of non-chaotic pivoting and devices driven by rhythmic and metronomic patterns. As noted above, the Federal Circuit specifically determined, at least as a preliminary matter, that Schnuckle ’455 seemed to meet this claim requirement with its discussion of a two-axis gimbal articulated by “chaotic forces” that can articulate the flame element to “randomly simulate blowing in the wind. ’455 patent, col. 6, ll. 53–62.” Luminara, 814 F.3d at 1354. We agree with the Federal Circuit’s preliminary determination. Although Patent Owner observes that “‘chaotic’ describes the ‘external or internal force’––i.e., the force entering the system, not the resulting motion” (PO Resp. 20–21), Patent Owner does not address the fact that this driving force is coupled to resulting motion “simulating blowing in the wind” (Ex. 1003, 6:62) and “provid[ing] a realistic flame effect” (id. at 1:54–58). As such, we agree that this excerpt of Schnuckle ’455 satisfies the chaotic pivoting requirement and is not driven by a “rhythmic or metronomic” driving force. Pet. Reply 4 n.1. Petitioner also cites the discussion of “programmable movement patterns” as additional evidence of this fact. Id. (citing Ex. 1003, 5:52–67 (“The desired movement pattern of the flame shaped surface 326 may be encoded and stored in the memory module 408 of the control board 302 in the form of digital data or control signals.”)). We agree that the column 5 description in Schnuckle ’455 of programmable movement patterns, when viewed against column 6’s description relied upon by the Federal Circuit (Ex. 1003, 6:53–62), suggests the programmed pattern is not rhythmic or metronomic but natural and chaotic.14 Accordingly, we find that Schnuckle ’455 discloses chaotic pivoting as required by claims 1 and 13. Accordingly, for the foregoing reasons, we determine Petitioner has satisfied its burden of proving anticipation based on Schnuckle ’455 against claims 1 and 13 by a preponderance of the evidence.” slip op. at 21

  Patent outcomesUS 8,696,166 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,696,166
• American Megatrends, Inc. / Micro-Star International Co. Ltd et al. v. Kinglite Holdings Inc.Some claims unpatentable
  PTAB · Jan 19, 2017 · IPR2015-01515 · APJ Glenn J Perry · IPR · Final written decision

  Claims 1–14, 17–19, 21–27, 30, 32–49, and 51–60 are unpatentable under § 103; claims 15, 16, 28, 29, and 50 were not shown unpatentable.

  RulingsFinal written decision

  • BurdenFwd mixedMixed

    “evidence of record that certain claims of the ’912 patent are unpatentable as summarized in the table below: Claim(s) Reference(s) Basis unpatentable 1–14, 17, 18, 24–27, Chang and Dent 35 U.S.C. § 103 30, 32, 35–49, 51– 53, 55, 56, 59 and 60 Chang, Dent and Bizzarri 35 U.S.C. § 103 19, 21–23, and 54 Chang, Dent, and Aegis 35 U.S.C. § 103 33 and 34 Flaherty and Chang 35 U.S.C. § 103 57 and 58 Petitioner has not established unpatentability of claims 15, 16, 28, 29 and 50 by a preponderance of the evidence IV. ORDER For the reasons given, it is: ORDERED that claims 1–14, 17–19, 21–27, 30, 32–49, and 51–60 are unpatentable; and” slip op. at 64

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner

    “Patent Owner argues that there is no motivation to combine Chang and Dent. PO Resp. 6–7. According to Patent Owner, Petitioner’s analysis ignores fundamental differences in operation between the systems taught in the two references. PO Resp. 6. Chang establishes a connection with a server upon detection of a program in the PROM. Pet. 6–7 (citing Ex. 1003 at 6:55–57 (“The system BIOS detects the existence of a program in a ROM socket on a network interface card (step 35) and passes control to this program (step 37).”)). Dent establishes communication only when there is a boot error. Ex. 1004 at 3:4–8 (“to enable remote system level diagnostics through a privately or publicly accessible network in the event of a boot error”). Patent Owner argues that given these differences, there would have been no motivation to combine these references. PO Resp. 6−7. We determine that the differences noted by Patent Owner would not dissuade one of ordinary skill from combining the teachings Chang and Dent. As noted above, Chang, during a boot sequence and prior to loading its operating system (OS), uses its BIOS to enable network communication. Dent describes a boot sequence that establishes an interconnection over a network for remote servicing of an electronic system upon experiencing a boot error. Thus, they address the same general problem and are similar in overall approach to solving that problem.” slip op. at 21

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

    “Patent Owner continues to argue for a more restrictive construction of “network-enhanced software” that would require various specific functions of software described in the Specification. PO Resp. 8. However, we do not read into this claim term limitations of particular embodiments in the absence of a reason to do so. Here there is none. The term “network-enhanced software” appears only in the claims and not elsewhere in the Specification. We find no description of the term “network-enhanced software” in the Specification that would rise to the level of a definition. Embodiments are described as including a “network-enhanced BIOS.” The term “BIOS” appears in some, but not all, of the claims. We regard the term “network-enhanced software” as being broader in scope than “network-enhanced BIOS” based on our understanding that the term BIOS connotes to computer engineers specialized software particular to the rudimentary operation of a computer. We therefore adopt our preliminary constructions along with our reasoning expressed in our Decision to Institute for purposes of this decision. Dec. to Inst. 12−14.” slip op. at 10

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “knowledge of one of ordinary skill when reading Chang and Dent. This knowledge includes the subject matter described by Melo, Banset, IBM and Bartek. The ordinarily skilled person reading these references would appreciate that when a computer using an Intel 80386 or 80486 processor is first turned on, it begins operation in “real mode.” Pet. 37; Ex. 1019 ¶ 53. Petitioner establishes that Chang meets the “second BIOS” limitation by offering the unrebutted Righi testimony which explains the knowledge of one of ordinary skill of real and protected modes, and that it would have been obvious to execute the second BIOS in protected mode, which was well-known at the time of the invention. Ex. 1019 ¶¶ 48–57. Patent Owner offers no testimony to counter the Righi testimony. We find that, at the time of the invention, real and protected modes were commonly used modes of operation in Intel processors and that these modes would have been known to those of ordinary skill. One of ordinary skill would have applied this knowledge along with the specific teachings of Chang and Dent to make the claimed invention. We therefore conclude that Petitioner has established by a preponderance of the evidence that claims 37 and 51 are unpatentable based on Chang and Dent.” slip op. at 26

  Patent outcomesUS 5,978,912 mixed
  Claim construction§ 103 obviousness
  Patents in suitUS 5,978,912
• Duodecad It Services Luxembourg S.à.R.L. / Friendfinder Networks Inc. et al. v. Wag Acquisition, LLCSome claims unpatentable
  PTAB · Oct 20, 2016 · IPR2015-01036 · APJ Glenn J Perry · IPR · Final written decision

  Claims 1, 3, 4, 6, 8, 10, 11, 13, 15, 17, 18, and 20 are unpatentable as obvious; claims 7, 14, and 21 were not shown unpatentable because the references lack per-user server tracking.

  RulingsFinal written decision

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner

    “A given reference is publicly accessible upon a satisfactory showing that such document has been [1] disseminated, or [2] otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it. SRI Int’l, Inc. v. Internet Sec. Sys., Inc., 511 F.3d 1186, 1194–95 (Fed. Cir. 2008. Even though Chen issued prior to the USPTO PAIR system, Chen FH was and remains easily requisitioned by any interested person from the USPTO by making the appropriate request and paying the appropriate fee.” slip op. at 18

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

    “We are not persuaded by Patent Owner’s argument that initially operating Chen in rush mode would cause unstable operation. The only evidence Patent Owner has presented is the declaration testimony of Dr. Mayer-Patel, which was weakened as a result of cross-examination.  For example, Dr. Mayer-Patel admitted that simply setting the water marks to different values would avoid the potential hysteresis instability. See Ex. 1016, pp. 64−66. Further, both Chen and Chen FH disclose that transmission starts in rush mode. Chen states: “transmission occurs in rush mode when the amount of data falls below the lower water mark, i.e., there is not enough data in the client agent packet buffer (33).” Ex. 1004, 6:43–45. Chen FH states at page 86 in the “open file” line: “read data from disk and rush them to CA” (emphasis added). We credit Dr. Polish’s testimony that “Chen and the Chen File History teach that the mode that is used at the start of transmission is the rush mode.” Ex. 1003 ¶ 58. Dr. Mayer-Patel was cross-examined regarding “thrashing.” When asked about setting gamma levels to achieve a stable system, Dr. Mayer- Patel answered that he would set the gammas to different levels for transitioning from rush to normal modes than for transitioning from normal to rush modes. Ex. 1016, 66:9–18; see Ex. 1005, 86–87 (discussing gamma values); Reply 14 n.2 (discussing hysteresis). Based on the testimony of Dr. Mayer-Patel and the evidence cited by Petitioner (Reply 14–15), we conclude that one of ordinary skill would have known how to set gamma levels defining mode transitions to provide the appropriate amount of hysteresis to prevent thrashing, e.g., in the manner that a thermostat hysteresis is set to avoid too rapid a cycling of a furnace. We find that if Chen were operated initially in “rush” mode, it would” slip op. at 29

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedMixed

    “We are not persuaded by Patent Owner’s argument that initially operating Chen in rush mode would cause unstable operation. The only evidence Patent Owner has presented is the declaration testimony of Dr. Mayer-Patel, which was weakened as a result of cross-examination.  For example, Dr. Mayer-Patel admitted that simply setting the water marks to different values would avoid the potential hysteresis instability. See Ex. 1016, pp. 64−66. Further, both Chen and Chen FH disclose that transmission starts in rush mode. Chen states: “transmission occurs in rush mode when the amount of data falls below the lower water mark, i.e., there is not enough data in the client agent packet buffer (33).” Ex. 1004, 6:43–45. Chen FH states at page 86 in the “open file” line: “read data from disk and rush them to CA” (emphasis added). We credit Dr. Polish’s testimony that “Chen and the Chen File History teach that the mode that is used at the start of transmission is the rush mode.” Ex. 1003 ¶ 58. Dr. Mayer-Patel was cross-examined regarding “thrashing.” When asked about setting gamma levels to achieve a stable system, Dr. Mayer- Patel answered that he would set the gammas to different levels for transitioning from rush to normal modes than for transitioning from normal to rush modes. Ex. 1016, 66:9–18; see Ex. 1005, 86–87 (discussing gamma values); Reply 14 n.2 (discussing hysteresis). Based on the testimony of Dr. Mayer-Patel and the evidence cited by Petitioner (Reply 14–15), we conclude that one of ordinary skill would have known how to set gamma levels defining mode transitions to provide the appropriate amount of hysteresis to prevent thrashing, e.g., in the manner that a thermostat hysteresis is set to avoid too rapid a cycling of a furnace.” slip op. at 29

  • Obviousness (§103) › KSR rationalesUnpatentableUnpatentable

    “We find that ISO-11172 would have been well known to those of ordinary skill. It was at the time of the ’839 patent already published and utilized. ISO-11172 demonstrates that it was known to encode frames at constant and variable bit rates. We are not persuaded that Chen’s focus on variable bit rates teaches away from the use of either constant or variable bit rates. The fact that a standard, published before Chen, describes the use of both in detail suggests that it was well known to those of ordinary skill in the art. We therefore conclude that Petitioner has established by a preponderance of evidence of record that Chen describes the constant bit rate feature of claims 3, 10 and 17. We find that Petitioner has produced sufficient evidence to establish that claims 3, 10, and 17 are unpatentable over Chen, Chen FH, and ISO-11172. See Pet. 38–39 (citing Ex. 1003 ¶¶ 68–70).” slip op. at 35

  Patent outcomesUS 8,364,839 mixed
  § 102 anticipation§ 103 obviousness
  Patents in suitUS 8,364,839
• Toshiba Corporation v. Optical Devices, LLCNo claims unpatentable
  PTAB · Mar 9, 2016 · IPR2014-01445 · APJ Erica A Franklin · IPR · Final written decision

  Claims 1–10 were not shown unpatentable: Baird did not disclose the required FES and TES determination, and the ST Datasheet was not established as prior art.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner

    “Ex. 1001, 13:50–61. From this disclosure, we recognize that the Specification suggests that a DSP operates faster than a microprocessor and, in some embodiments, real time digital servo algorithms can be executed on a DSP. Id. at 53–55. The Specification, however, does not expressly define the term “digital signal processor.” We note the competing views of Dr. de Callafon, on behalf of Patent Owner, and Dr. Zech, on behalf of Petitioner. We also note issues regarding the testimony of each declarant. For example, in some respects, Dr. de Callafon bases his proposed construction of a DSP on features that he asserts one of ordinary skill in the art would have understood that “most DSP processors have,” as opposed to features that all DSP processors require. Ex. 2008 ¶ 21(a). Dr. Zech’s deposition testimony describing the design of a DSP, also relied upon by Patent Owner, is unreliable because Dr. Zech testified that he had “no expertise” as to design elements distinguishing a DSP from a general processor. See, e.g., Ex. 2001, 35:12–13, 44:12–14. As we seek to give the term “DSP” its ordinary and customary meaning, as would be understood by one of ordinary skill in the art at the time of the invention, we take into account the Microsoft and IBM dictionary definitions submitted by Patent Owner. We note that each of those dictionaries define a DSP as being designed for “high speed” manipulation of data/digital signals. Ex. 2002; Ex. 2003. Patent Owner, however, has not directed our attention to evidence establishing what “high speed” encompasses. We note also that only one of the submitted dictionary definitions additionally characterizes such digital signal manipulation as “real-time.” Id. at 2003. The Specification, however, discloses that only some embodiments can execute real time digital servo algorithms on a DSP. We determine that Patent Owner has not established persuasively that the broadest reasonable interpretation of a DSP requires “high speed” processing achieving this “real time” feature. Indeed, Patent Owner’s “basic” construction for a DSP does not include a requirement for “real time” processing. See PO Resp. 20 (providing a minimal definition for a DSP). Thus, we are persuaded that that the broadest reasonable intepretation of the term “digital signal processor,” consistent with the Specification, is “an integrated circuit structured and arranged for manipulation of digital signals in accordance with programmed commands, and in a manner that operates faster than a microprocessor.” Patent Owner’s proposal to characterize further an integrated circuit as “specialized” is not well taken. Indeed, we find that proposed modification to be superfluous in that our construction describes that the integrated circuit is structured and arranged to achieve a specific function, i.e., manipulation of digital signals and operating faster than a microprocessor. 2.” slip op. at 8

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

    “Patent Owner proposes constructions for additional claim phrases without providing any discussion or reference to the Specification in support of those proposed constructions. PO Resp. 12–13. Based on our analysis, we determine that no express claim construction is necessary for any remaining claim term. Thus, we are not persuaded to adopt those proposed constructions.” slip op. at 10

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner asserts that one of ordinary skill in the art at the time of the filing of the ’729 patent as having: (1) a Bachelor’s of Science Degree in Electrical Engineering, Mechanical Engineering, Physics or a related field and at least two years of additional experience in control system technology, optical disk servo technology, magnetic disk servo technology, or related technologies, either in industry or research[,] or (2) at least a Master’s of Science Degree in Electrical Engineering, Mechanical Engineering, Physics or a related field with coursework in control system technology, optical disk servo technology, magnetic disk servo technology, or related technologies. Pet. 36–37 (citing Ex. 1006 ¶¶ 65–66) (emphases added). Patent Owner asserts that one of ordinary skill in the art would have “a Bachelor of Science in Mechanical or Electrical Engineering and at least two years of experience in control systems technology.” PO Resp. 5 (citing Ex. 2008 ¶¶ 9–11) (emphasis added). Based on our consideration of the record, we find that the evidence as a whole supports Petitioner’s broader description of the level of ordinary skill in the art. Accordingly, we adopt Petitioner’s statement of the ordinary skill in the art.” slip op. at 11

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

    “Having considered the arguments and evidence, we are not persuaded that Petitioner has established by a preponderance of the evidence that Baird inherently discloses a DSP configured to determine a FES and a TES from digital signals received by the SCP. In particular, Petitioner’s primary contention with respect to inherency is that one of ordinary skill in the art would understand that Baird must determine a FES and TES in order for the SCP to operate focus and tracking control loops. Pet. Reply 14 (citing Ex. 1006 ¶ 82). However, neither Petitioner, nor Petitioner’s declarant, Dr. Zech, provides any explanation why that is true. When asked for an explanation during his deposition, Dr. Zech responded in a manner that relied upon a probability that Baird’s SCP determines FES and TES. For example, the following is an excerpt from Dr. Zech’s deposition: Q Can you explain to me why it is your opinion that it is inherent that a servo control processor in Baird determines a focus error signal and a tracking error signal? A Well, because the way he designed it, it does. And I can’t imagine why somebody, an engineer at Cirrus Logic, would swim against the current and 0 come up with something entirely new. The chip 1 surely would not sell. I know that from pretty broad experience in sales and marketing. Once you tell me optical disk drive -- I’ve explained to you the statistics of it -- 99 percent plus are probably using continuous composite servoing. When you use continuous composite servoing, you need to have a tracking error and a focus error signal. So it’s not much of a leap for me to conclude that that’s what’s going on here. Ex. 2001, 151:3–20 (emphases added). Dr. Zech’s deposition testimony describes what functions and systems optical disk drives “are probably using” and that “it’s not much of a leap” for him to conclude what is occuring in Baird with respect to whether error signals are determined Id.; see MEHL/Biophile Int’l. Corp., 192 F.3d at 1365 (inherency is not established by probabilities or possibilities). Moreover, both in his declaration and at the deposition, Dr. Zech bases his opinion regarding that issue on assumptions unsupported by evidence. See Office Patent Trial Practice Guide 77 Fed. Reg. 48,756, 48,763 (Aug. 14, 2012) (“Affidavits expressing an opinion of an expert must disclose the underlying facts or data upon which the opinion is based. . . . Opinions expressed without disclosing the underlying facts or data may be given little to no weight.”) (citations omitted). Thus, we do not afford Dr. Zech’s opinions persuasive weight.” slip op. at 20

  Patent outcomesUS 7,839,729 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 7,839,729
• Toshiba Corporation v. Optical Devices, LLCNo claims unpatentable
  PTAB · Mar 9, 2016 · IPR2014-01447 · APJ James B Arpin · IPR · Final written decision

  Claims 1–39 were not shown unpatentable: Baird did not necessarily disclose determining FES and TES, and the ST Datasheet was not established as publicly accessible prior art.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “that Petitioner has established by a preponderance of the evidence that Baird inherently discloses a DSP configured to determine a FES and a TES from digital signals received by the SCP. In particular, Petitioner’s primary contention with respect to inherency is that one of ordinary skill in the art would have understood that Baird must determine a FES and TES in order for the SCP to operate focus and tracking control loops. Pet. Reply 14 (citing Ex. 1006 ¶ 77). However, neither Petitioner nor Petitioner’s declarant, Dr. Zech, provides any explanation why that is so. When asked for an explanation during his deposition, Dr. Zech responded in a manner that relied upon a probability that Baird’s SCP determines FES and TES. In particular, the following is an excerpt from Dr. Zech’s deposition: Q Can you explain to me why it is your opinion that it is inherent that a servo control processor in Baird determines a focus error signal and a tracking error signal? A Well, because the way he designed it, it does. And I can’t imagine why somebody, an engineer at Cirrus Logic, would swim against the current and 0 come up with something entirely new. The chip 1 surely would not sell. I know that from pretty broad experience in sales and marketing. Once you tell me optical disk drive -- I’ve explained to you the statistics of it -- 99 percent plus are probably using continuous composite servoing. When you use continuous composite servoing, you need to have a tracking error and a focus error signal. So it’s not much of a leap for me to conclude that that’s what’s going on here. Ex. 2001, 151:3–20 (emphases added); see Tr. 100:13–101:2. Dr. Zech’s deposition testimony describes what functions and systems optical disk drives “are probably using” and that “it’s not much of a leap” for him to conclude what is occuring in Baird with respect to whether error signals are determined Ex. 2001, 151:15–18; see MEHL/Biophile Int’l. Corp. v. Milgraum, 192 F.3d 1362, 1365 (Fed. Cir. 1999) (inherency is not to be established by probabilities or possibilities). Moreover, both in his declaration and at the deposition, Dr. Zech bases his opinion regarding that issue on assumptions unsupported by evidence. See Office Patent Trial Practice Guide 77 Fed. Reg. 48, 756, 48,763 (Aug. 14, 2012) (“Affidavits expressing an opinion of an expert must disclose the underlying facts or data upon which the opinion is based. . . . Opinions expressed without disclosing the underlying facts or data may be given little to no weight.”) (citing Fed. R. Evid. 705; 37 C.F.R. § 42.65; Rohm & Haas Co. v. Brotech Corp., 127 F.3d 1089, 1092 (Fed. Cir. 1997)). Thus, we do not credit Dr. Zech’s unsupported opinions with persuasive weight.” slip op. at 29

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

    “As we seek to give the term “digital signal processor” its ordinary and customary meaning, as would be understood by one of ordinary skill in the art at the time of the invention, we take into account the Microsoft and IBM dictionary definitions submitted by Patent Owner. Ex. 2002, 145; Ex. 2003, 198. We note that each of those dictionaries define a DSP as being designed for “high speed” manipulation of data/digital signals. Id. Patent Owner, however, has not directed our attention to evidence establishing what “high speed” encompasses. See Tr. 98:12–23; see also id. at 95:10–96:3 (Petitioner’s argument that speed governed by function). We also note one of the submitted dictionary definitions characterizes “high speed,” such that digital signal manipulation as “real-time.” Ex. 2003, 198. Another dictionary definition simply includes “high speed.” Ex. 2002, 145. However, the Specification discloses that only some embodiments can execute real time digital servo algorithms on a DSP. See Ex. 1001, col. 13, ll. 38–42. We determine that Patent Owner has not established persuasively that the broadest reasonable interpretation of a DSP requires “high speed” processing achieving this “real time” feature. Indeed, Patent Owner’s “basic” construction for a DSP does not include a requirement for “real time” processing. See PO Resp. 16 (providing a minimal definition for a DSP). We are persuaded, however, that the broadest reasonable interpretation of the term “digital signal processor,” consistent with the Specification and the ordinary and customary meaning of the term as understood at the time of the invention by a person of ordinary skill in the art, is “an integrated circuit structured and arranged for manipulation of digital signals in accordance with programmed commands, and in a manner that operates faster than a microprocessor.” We do not adopt Patent Owner’s proposal to characterize further an integrated circuit as “specialized.” We determine that proposed modification is superfluous in that our construction describes that the integrated circuit is structured and arranged to achieve a specific function, i.e., manipulation of digital signals and operation faster than a microprocessor. B.” slip op. at 15

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

    “To establish inherency, the extrinsic evidence must make clear that the missing descriptive matter is necessarily present in the thing described in the reference, and that it would be so recognized by persons of ordinary skill. Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient. PO Resp. 30–31 (quoting In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (emphasis added) (citations omitted)). Petitioner argues that, because Baird discloses that the servo control processor performs focus and tracking control loops (Ex. 1003, col. 5 l. 63–col. 6, l. 11), “it is necessarily the case that a focus error and tracking error signal are generated” in order to perform that function (Pet. 42–43). See Ex. 1006 ¶ 77; Tr. 20:21–23:5. According to Petitioner and, its declarant, Dr. Zech, one of ordinary skill in the art would” slip op. at 25

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

    “qualify as a prior art printed publication under 35 U.S.C. § 102, the reference must be shown to have been “sufficiently accessible to the public interested in the art” prior to the earliest effective filing date. In re Cronyn, 890 F.2d 1158, 1160 (Fed. Cir. 1989). “Because there are many ways in which a reference may be disseminated to the interested public, ‘public accessibility’ has been called the touchstone in determining whether a reference constitutes a ‘printed publication’ bar under 35 U.S.C. § 102(b).” In re Hall, 781 F.2d 897, 898–99 (Fed. Cir. 1986). A reference will be considered publicly accessible if it was “disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it.” Kyocera Wireless Corp. v. Int’l Trade Comm’n, 545 F.3d 1340, 1350 (Fed. Cir. 2008). Whether a reference qualifies as a printed publication is a legal conclusion based on underlying factual determinations. In re Lister, 583 F.3d 1307, 1311 (Fed. Cir. 2009). Blue Calypso, LLC v. Groupon, Inc., Dkt. Nos. 2015-1391, 2015-1393, 2015- 1394, slip op. at 28–29 (Fed. Cir. Mar. 1, 2016).” slip op. at 38

  Patent outcomesUS 8,416,651 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,416,651
• First Quality Baby Products, LLC v. Kimberly-Clark Worldwide, Inc.All claims unpatentable
  PTAB · Dec 14, 2015 · IPR2014-01024 · APJ J John Lee · IPR · Final written decision

  Claims 25–32 are unpatentable under § 103(a) as obvious in view of Brandon, Anderson, and Long.

  RulingsFinal written decision

  • Expert testimonyPatent owner expert discountedDecided for petitioner

    “Patent Owner argues Brandon teaches that training pants should be designed to feel different than diapers to facilitate toilet training, but that replacing its bonded seams by adding refastenable seams such as in Anderson, or adding the containment flaps and surge layer of Long, contradicts that goal by making the training pants resemble diapers. Id. at 36–40. The evidence of record, however, belies that argument. As Petitioner notes (Pet. Reply 13–14), Anderson discloses explicitly that its refastenable seams “approximate the side seams of a normal underpant” (Ex. 1206, 4:27–34), and notes the importance of training pants that “look like a normal panty when first put on by the child” (id. at 2:35–36). Patent Owner’s argument also is unpersuasive with respect to Brandon because it only relies on the conclusory testimony of its declarant. PO Resp. 37–38. On this issue, Mr. Butterworth’s Declaration only states conclusorily that adding a surge layer or containment flaps “would render the garment closer to a conventional disposable diaper.” Ex. 2206 ¶ 79. Compared to the evidence Petitioner cites to support its asserted rationale for combining the references, which we find compelling, we give little weight to this portion of Mr. Butterworth’s testimony because the underlying facts or data on which his opinion is based, if any, were not disclosed. See 37 C.F.R. § 42.65.” slip op. at 20

  • ExcludeMotion to exclude, deniedMixed

    “all related evidence is irrelevant. See id. Rule 401 states that evidence is relevant if “(a) it has any tendency to make a fact more or less probable than it would be without the evidence; and (b) the fact is of consequence in determining the action.” Petitioner does not dispute that the evidence in question pertains to facts underlying Patent Owner’s contentions regarding secondary considerations. Whether Patent Owner failed to provide sufficient evidence or neglected to supply all of the necessary analysis does not negate the relevance of that evidence. In addition, we note that Petitioner’s motion is moot because of our decision above that the challenged claims are unpatentable even considering this evidence. This portion of the Motion is denied.” slip op. at 30

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “8 Both parties agree that a person of ordinary skill in the art would have had two to four years of work experience in product design and testing of disposable absorbent articles, such as diapers and training pants. Pet. 13–14; PO Resp. 7. We adopt this characterization and apply it to our analysis.” slip op. at 10

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

    “claimed training pants “can further include releasable side bonds . . . for improved reliability of maintaining the pant in a prefastened condition particularly when it is being pulled on or off over the hips of the wearer.” Ex. 1201, 20:1–4. In addition, the specification states: “The absorbent articles are desirably pre-fastened to provide a pant-like product for the user. The product can then be pulled on like a conventional training pant . . . .” Id. at 5:31–34. The specification does not describe any manufacturing process for prefastening training pants. Mr. Butterworth’s testimony is based solely on claim language indicating that the recited fastening components and mating fastening components are the elements that are prefastened. Ex. 2206 ¶ 50. His conclusion, however, is not supported by that claim language, which does not reference manufacturing or a timeframe prior to sale. See Ex. 1214, 99:13–16, 102:25–103:9 (Mr. Butterworth indicating at his deposition that the ’379 patent does not discuss a manufacturing process for prefastening the claimed training pant, or when the training pants are prefastened).6 Based on the record presented, the broadest reasonable interpretation of “prefastened” in light of the specification requires that the claimed training pant be fastened prior to wear, but does not require fastening during manufacturing or prior to sale.” slip op. at 8

  Patent outcomesUS 8,747,379 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,747,379
• First Quality Baby Products, LLC v. Kimberly-Clark Worldwide, Inc.All claims unpatentable
  PTAB · Dec 10, 2015 · IPR2014-01023 · APJ J John Lee · IPR · Final written decision

  Claims 33–54 are unpatentable under § 103(a): claims 33–42, 44, 45, 47–49, and 51–53 over Brandon and Anderson; claims 43, 46, 50, and 54 over Brandon, Anderson, and Long.

  RulingsFinal written decision

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

    “As Petitioner asserts, the intrinsic evidence does not support the construction advanced by Patent Owner. The ’379 patent explains that the claimed training pants “can further include releasable side bonds . . . for improved reliability of maintaining the pant in a prefastened condition particularly when it is being pulled on or off over the hips of the wearer.” Ex. 1101, 20:1–4. In addition, the specification states: “The absorbent articles are desirably pre-fastened to provide a pant-like product for the user. The product can then be pulled on like a conventional training pant . . . .” Id. at 5:31–34. The specification does not describe any manufacturing process for prefastening training pants. Mr. Butterworth’s testimony is based solely on claim language indicating that the recited fastening components and mating fastening components are the elements that are prefastened. Ex. 2106 ¶ 48. His conclusion, however, is not supported by that claim language, which does not reference manufacturing or a timeframe prior to sale. See Ex. 1114, 99:13–16, 102:25–103:9 (Mr. Butterworth indicating at his deposition that the ’379 patent does not discuss a manufacturing process for prefastening the claimed training pant, or when the training pants are prefastened).6 Based on the record presented, the broadest reasonable interpretation of “prefastened” in light of the specification requires that the claimed training pant be fastened prior to wear, but does not require fastening during manufacturing or prior to sale.” slip op. at 7

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayMotivation foundTeaching away not foundDecided for petitioner

    “Patent Owner contends, however, that a person of ordinary skill would not have been motivated to combine Brandon and Anderson in the manner asserted by Petitioner because both Brandon and Anderson teach away from such a combination. PO Resp. 32–40. First, Patent Owner argues Brandon teaches that training pants should be designed to feel different than diapers to facilitate toilet training, but that replacing its bonded seams by adding refastenable seams such as in Anderson contradicts that goal by making the training pants resemble diapers. Id. at 33–35. The evidence of record, however, belies that argument. As Petitioner notes (Pet. Reply 13), Anderson discloses explicitly that its refastenable seams “approximate the side seams of a normal underpant” (Ex. 1106, 4:27–34), and notes the importance of training pants that “look like a normal panty when first put on by the child” (id. at 2:35–36). Next, Patent Owner argues Anderson teaches away from the asserted combination with Brandon because Anderson teaches away from using its releasable fastening system with a liquid impermeable outer cover, as taught by Brandon and required by claim 33. PO Resp. 36–40. Patent Owner is correct that Anderson discloses advantages to constructing training pants to allow some moisture to leak through the outer cover. See, e.g., Ex. 1106, 3:40–49 (explaining that a preferred embodiment of Anderson includes a “moisture permeable outer covering” that facilitates toilet training by alerting the child to a bowel or bladder accident). According to Patent Owner, Anderson discloses the use of refastenable seams because they facilitate removal while minimizing contamination, which is only necessary due to the moisture permeable covering. See PO Resp. 38–39. Patent Owner’s position is unpersuasive, however, because merely describing the benefits of a moisture permeable cover does not teach away from using an impermeable cover. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004); In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). At the oral hearing, Patent Owner also admitted that nothing in the record indicates a person of ordinary skill would have been led to avoid training pants that do not allow moisture to leak through the outer cover. See Tr. 61:21–62:6; see also Ex. 1114, 339:10–18 (Mr. Butterworth testifying that Anderson does not disparage the use of refastenable seams with liquid permeable outer covers). Based on the full record after trial, Petitioner has established sufficiently a reason with rational underpinning to combine Brandon and Anderson. See KSR, 550 U.S. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). Consequently, a preponderance of the evidence supports Petitioner’s position that claim 33 of the ’379 patent is unpatentable as obvious in view of the combination of Brandon and Anderson.” slip op. at 17

  • Obviousness (§103) › KSR rationalesUnpatentableUnpatentable

    “Based on Mr. Butterworth’s testimony, which we find credible, the record indicates that the limitations of claim 36 were known and obvious to one of ordinary skill in the art. Additionally, the record supports Petitioner’s argument that the size limitations of claim 36 do not distinguish the claim from the prior art, which ordinary artisans knew to provide the benefit of adjustability, as Mr. Butterworth testified. See Gardner, 725 F.2d at 1349. Petitioner’s contentions are further supported by the evidence indicating this alleged benefit was not a critical aspect of the claimed invention. See In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990) (“These cases [including Gardner] have consistently held that in such a situation, the applicant must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range.”). Consequently, considering the full record after trial, a preponderance of the evidence supports Petitioner’s contention that claim 36 would have been obvious in view of the combination of Brandon and Anderson.” slip op. at 23

  • Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner

    “To establish a nexus between alleged commercial success and the challenged claims, Patent Owner must show “that the thing (product or method) that is commercially successful is the invention disclosed and claimed in the patent.” Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387, 1392 (Fed. Cir. 1988); see also In re GPAC Inc., 57 F.3d 1573, 1580 (Fed. Cir. 1995) (holding that a nexus was not demonstrated where “GPAC did not establish which claim(s) of the patent the [allegedly successful] licensing program incorporates”). Patent Owner does not, however, provide an analysis establishing that its PULL-UPS product practices any claim or claims of the ’379 patent. 16 As indicated earlier, we need not reach the issue of whether Patent Owner’s arguments as to secondary considerations are barred due to collateral estoppel because we conclude that a preponderance of the evidence establishes that the challenged claims are unpatentable, even considering Patent Owner’s arguments and evidence. In addition, even assuming arguendo that Patent Owner’s evidence establishes a nexus between the commercial success of its PULL-UPS product and the specific refastenable fastening system recited in the challenged claims, Patent Owner has failed to demonstrate that “the asserted commercial success of the product [is] due to the merits of the claimed invention beyond what was readily available in the prior art.” See J. T. Eaton & Co. v. Atlantic Paste & Glue Co., 106 F.3d 1563, 1571 (Fed. Cir. 1997) (emphasis added). As discussed above, the record establishes that the refastenable fastening system recited in the challenged claims was taught in the prior art. Relying on Gillette Co. v. S.C. Johnson & Son, Inc., Patent Owner argues that the “fact that all elements of a claim are in the prior art does not by itself defeat commercial success,” and that “the prior art discloses only individual elements of the patented training pants, but there is no prior art that discloses the unique combination found in the claims of the ’379 Patent.” PO Resp. 59–60 (citing 919 F.2d 720, 725 (Fed.Cir.1990)). In Gillette, although each individual element of the claimed chemical composition was known in the art, it was undisputed that the composition as a whole had “superior properties” that were unique to the composition rather than any individual component. See 919 F.2d at 725. In contrast, Patent Owner’s arguments and evidence focus on a single element of its claimed invention—“refastenable elastomeric sides”—and Patent Owner does not identify any evidence indicating the claimed refastenable sides (or any other claimed feature or combination of features) had unique properties or advantages beyond those found in the prior art training pants relied on by Petitioner.17 See PO Resp. 56–58.” slip op. at 31

  Patent outcomesUS 8,747,379 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,747,379
• First Quality Baby Products, LLC v. Kimberly-Clark Worldwide, Inc.All claims unpatentable
  PTAB · Dec 10, 2015 · IPR2014-01021 · APJ J John Lee · IPR · Final written decision

  Claims 1–24 are unpatentable under § 103: claims 1–10, 12, 13, 15–17, and 19–23 over Brandon and Anderson; claims 11, 14, 18, and 24 over Brandon, Anderson, and Long.

  RulingsFinal written decision

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

    “Based on the full record after trial, the evidence presented supports Petitioner’s view. It is undisputed that Brandon teaches a seam extending 100% of the distance between the waist and leg openings. See Tr. 44:13–15; Ex. 1014, 82:15–22. The record also indicates it was well known in the art generally to provide 80–100% seams. Ex. 1014, 85:3–8; Ex. 1021 ¶ 99. Although Patent Owner disputes that Anderson teaches an 80–100% seam, such an express disclosure is not required given Brandon’s disclosure of a 100% seam. See In re Keller, 642 F.2d 413, 425 (CCPA 1981) (“The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art.”). Moreover, Petitioner argues persuasively that a person of ordinary skill would have understood Anderson also to teach an 80–100% seam because such a seam was known to be important to prevent undesired tearing or separation, and to best approximate a normal underpant. Pet. Reply 11–13; see Ex. 1006, 2:35–36, 4:32–37, Fig. 2; Ex. 1014, 83:14–23, 85:3–20; Ex. 1021 ¶¶ 99, 101, 102, 104, 106, 107.11 In sum, Petitioner has established sufficiently that the combination of Brandon and Anderson teaches or suggests each limitation of claim 1.” slip op. at 16

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner

    “Petitioner asserts that a person of ordinary skill would have been led to combine the training pants of Brandon with the refastenable seam of Anderson because the references identify solutions for the same problem, namely potential contamination on the child when removing soiled training pants. Pet. 22–24 (citing KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 419– 20 (2007)). The record supports Petitioner’s position. Brandon states that “side seams 20 may be constructed to be manually tearable in order to allow training pant 10 to be disassembled manually by the caregiver, so that it can be easily removed from the child after a bowel movement.” Ex. 1002, 11. Anderson discloses that training pants with tearable seams “facilitate removal of the panty after the child has either a bowel accident or a bladder accident,” which reduces “incidents of contamination on the child and in the area surrounding the child.” Ex. 1006, 1:46–55. Anderson further teaches refastenable side seams, as discussed above, explaining that “in the event of an accident the [refastenable] seams are readily released to facilitate removal of the panty without undue contamination.” Id. at 4:32–37.” slip op. at 17

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner

    “not have been motivated to combine Brandon and Anderson in the manner asserted by Petitioner because both Brandon and Anderson teach away from such a combination. PO Resp. 31–39. First, Patent Owner argues Brandon teaches that training pants should be designed to feel different than diapers to facilitate toilet training, but that replacing its bonded seams by adding refastenable seams such as in Anderson contradicts that goal by making the training pants resemble diapers. Id. at 32–35. The evidence of record, however, belies that argument. As Petitioner notes (Pet. Reply 13), Anderson discloses explicitly that its refastenable seams “approximate the side seams of a normal underpant” (Ex. 1006, 4:27–34), and notes the importance of training pants that “look like a normal panty when first put on by the child” (id. at 2:35–36). Next, Patent Owner argues Anderson teaches away from the asserted combination with Brandon because Anderson teaches away from using its releasable fastening system with a liquid impermeable outer cover, as taught by Brandon and required by claim 1. PO Resp. 35–39. Patent Owner is correct that Anderson discloses advantages to constructing training pants to allow some moisture to leak through the outer cover. See, e.g., Ex. 1006, 3:40–49 (explaining that a preferred embodiment of Anderson includes a “moisture permeable outer covering” that facilitates toilet training by alerting the child to a bowel or bladder accident). According to Patent Owner, Anderson discloses the use of refastenable seams because they facilitate removal while minimizing contamination, which is only necessary due to the moisture permeable covering. See PO Resp. 37–38. Patent Owner’s position is unpersuasive, however, because merely describing the benefits of a moisture permeable cover does not teach away from using an impermeable cover. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004); In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). At the oral hearing, Patent Owner also admitted that nothing in the record indicates a person of ordinary skill would have been led to avoid training pants that do not allow moisture to leak through the outer cover. See Tr. 61:21–62:6; see also Ex. 1014, 339:10–18 (Mr. Butterworth testifying that Anderson does not disparage the use of refastenable seams with liquid permeable outer covers). Based on the full record after trial, Petitioner has established sufficiently a reason with rational underpinning to combine Brandon and Anderson. See KSR, 550 U.S. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).” slip op. at 17

  • Strike new argumentNew argument consideredDecided for petitioner

    “deposition testimony (Tr. 54:1–16), but argued the testimony should be disregarded because neither Mr. Butterworth nor Patent Owner had fair notice of Petitioner’s arguments or an adequate opportunity to present counterevidence—for example, regarding possible teaching away (e.g., Tr. 54:19–55:9). We disagree. As an initial matter, Patent Owner is correct that the Petition does not include specifically an allegation that the size limitation was known generally in the art, and does not present evidence of that fact. Such evidence, however, was introduced into the record through discovery in the form of Mr. Butterworth’s deposition testimony. Patent Owner does not advance persuasively any reason to block Petitioner from relying on this evidence, which could not have been cited in the Petition because Mr. Butterworth’s deposition had not yet occurred.12 In essence, Patent Owner requests that the Board prevent Petitioner from using evidence in the record it admits is inconsistent with its position on patentability, and which its own expert provided to Petitioner during discovery. We decline to do so. Nor are we persuaded by Patent Owner’s protestations of prejudice. Although Patent Owner asserts Mr. Butterworth was not given a fair opportunity to “prepare” for Petitioner’s questions, Patent Owner proffered him as an expert in this field and otherwise relies on his testimony regarding 12 Although Petitioner’s position would have been stronger had it provided similar evidence with the Petition, the fact remains that the record includes Mr. Butterworth’s testimony, which was routine discovery provided in the normal course of this inter partes review. See 37 C.F.R. § 42.51(b)(1)(ii). similar issues. See, e.g., PO Resp. 33–35 (citing Ex. 2006 ¶¶ 74–77 (Mr. Butterworth’s declaration testimony regarding “the conventional wisdom in the industry at the time of the invention”)). The testimony relied on by Petitioner was provided in response to basic questions about the understanding of a person of ordinary skill in the art and whether the recited limitation was known in the art at the time of the invention. Ex. 1014, 151:2–13, 152:10–14. Moreover, the Petition plainly raised the issue of whether any alleged functionality of the limitations of claim 4 already was known to be provided by the prior art. Pet. 25. Petitioner’s questioning of Mr. Butterworth on this issue should not have been unexpected considering he provided testimony on the subject in his Declaration, which Patent Owner submitted with its Response. See Ex. 2006 ¶ 95; PO Resp. 41. Patent Owner does not dispute the veracity of Mr. Butterworth’s testimony. Further, Patent Owner does not argue that he misunderstood the questions (Tr. 53:18–24), and did not move to exclude the testimony.13 Patent Owner had the opportunity to adduce further testimony from Mr. Butterworth at his deposition to clarify or supplement his testimony, but it did not do so with respect to the testimony at issue. See Tr. 57:12–58:8. No attempt was made to seek relief from the Board or to introduce further information into the record (e.g., a supplemental declaration or additional briefing). See Tr. 59:18–60:6. Patent Owner made no request to have Mr. 13 Patent Owner properly raised at the oral hearing the issue of whether Petitioner’s arguments should be disregarded as improper new arguments, rather than raising the issue in a motion to exclude. See Tr. 58:9–59:2. That is a distinct issue, however, from whether Mr. Butterworth’s cross-examination testimony should be excluded as inadmissible because it is allegedly misleading or incomplete. In any event, we also conclude Petitioner’s arguments were not improper.” slip op. at 21

  Patent outcomesUS 8,747,379 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,747,379

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