- PTAB · Dec 7, 2015 · IPR2015-01438 · APJ Michael R Zecher · IPR · Order
The Board granted the parties’ joint motion and terminated the proceeding before deciding whether to institute review of claims 1–3 and 8–12.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“they have settled their disputes regarding the ’104 patent. Paper 7, 2. The parties further represent that there are numerous related matters in the United States District Court for the Northern District of California that have been dismissed with prejudice or stayed pending final determination of two related inter partes reviews involving U.S. Patent No. 7,550,870 B2 (“the ’870 patent”). Id. at 3. Based on the joint requests filed by the parties in the two proceedings involving the ’870 patent, those cases have been terminated. Avocent Huntsville Corp. v. Cyber Switching Patents, LLC, Cases IPR2015-00690 & IPR2015-00725 (PTAB Dec. 7, 2015) (Paper 33 in each proceeding). Lastly, the parties do not represent that the ’104 patent is involved in any other proceedings before the Office. See generally id. at 2–4. Under these circumstances, we determine that it is appropriate to terminate this proceeding without rendering any further decisions. See 37 C.F.R. § 42.72.” slip op. at 2
NonePatents in suitUS 7,672,104 - PTAB · Nov 25, 2015 · IPR2015-01289 · APJ Miriam L Quinn · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1, 15, and 21 were anticipated by Perry or obvious over Hochstein and Perry.
RulingsInstitution decision- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesOther
“means-plus-function format. Both parties also agree that the recited function is “detecting an incorrect functioning of the converter or of the semiconductor light source connected thereto” (claim 1) and “detecting a defective converter or semiconductor light source connected thereto” (claim 15). The parties, however, disagree on whether the structure should refer to a Zener diode, or a Zener diode Z60 or Zener diode Z70, specifically. See Prelim. Resp. 19 (“Philips disagrees with [Petitioner’s] construction insofar as it requires a generic zener diode.”). We agree with the parties that the “detection means” is a Zener diode that performs the recited function. But we do not agree, at this time, that the diode must be the Z60 or Z70 diode, arranged as indicted in the drawings of the ’458 patent. Nor do we find that the Zener diode must be arranged to detect minimum and maximum voltages, because the recited function specifically defines the function of the Zener diode and its equivalents. See 35 U.S.C. § 112, ¶ 6 (the structure of a means-plus-function term is construed to “cover the corresponding structure . . . described in the specification and equivalents thereof”) (emphasis added). Therefore, we construe the “detection means” as a Zener diode that performs the recited function, according to the claim language of the appropriate claim.” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Second, Petitioner failed to show that a Zener diode (or its equivalent) performs the recited function. We agree with Patent Owner that failure circuit 70 does not contain a Zener diode. Prelim. Resp. 28. We also find that Petitioner did not explain how failure circuit 70 is an equivalent to a Zener diode. Neither the Petition nor the cited passages of the Dr. Tingler’s Declaration allude to a Zener diode or its equivalent in describing the contention that Perry discloses the “detection means” limitation. Accordingly, we determine that Petitioner has failed to show a reasonable likelihood of prevailing in its contention that the challenged claims are unpatentable as anticipated by Perry.” slip op. at 10
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“First, the Petition did not show how the construed claim (as presented in the Petition) renders unpatentable the challenged claims in view of the prior art. See 37 C.F.R. § 42.104 (b)(4). Although the Petitioner proposed a Zener diode as the structure corresponding to the “detection means,” it presented an analysis of the prior art relying on a different position, i.e., that a transistor and a Zener diode are the corresponding structure of the “detection means.” Petitioner does not explain these different positions or how the applied construction of “a transistor and a Zener diode” is supported by the specification. Second, Petitioner failed to show that a Zener diode (or its equivalent) performs the recited function. We agree with Patent Owner that failure circuit 70 does not contain a Zener diode. Prelim. Resp. 28. We also find that Petitioner did not explain how failure circuit 70 is an equivalent to a Zener diode. Neither the Petition nor the cited passages of the Dr. Tingler’s Declaration allude to a Zener diode or its equivalent in describing the contention that Perry discloses the “detection means” limitation.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable
“claims 1, 15, and 21. Pet. 1735. Petitioner relies exclusively on Perry, however, as disclosing the “detection means.” Pet. 4345. The Petition cites for support the Declaration of Dr. Tingler. Id. (citing Ex. 1005, ¶¶ 119–121). Petitioner’s position with regard to the obviousness ground is the same as its anticipation contention that Perry discloses the “detection means.” Further, the Dr. Tingler Declaration passages relied upon for the “detection means” in the obviousness ground repeat the same analysis provided for the anticipation ground. Patent Owner has persuaded us that Petitioner’s obviousness contention relies on the same evidence of “detection means” proffered with respect to the anticipation ground. We determined above that Petitioner did not show that Perry discloses a “detection means.” Further, we find that Petitioner has not shown that Perry teaches or suggests the “detection means,” as we have construed the term. Consequently, we determine that Petitioner has failed to show a reasonable likelihood that it will prevail in its contention that the challenged claims are unpatentable as obvious over the combination of Hochstein and Perry.” slip op. at 11
Claim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 6,147,458 - Ace Bed Co., Ltd. v. Sealy Technology LLCAll claims unpatentablePTAB · Nov 24, 2015 · IPR2014-01119 · APJ Glenn J Perry · IPR · Final written decision
Claims 1–3, 5–8, and 10–17 were held unpatentable: claims 1–3, 5–8, 10–13, and 17 as anticipated by Ahn, and claims 14–16 as obvious over Ahn, Flesher, and Oakhill.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Decided for petitioner
“proposes a construction of “step” based on an explicit definition in the specification — “non-helical shaped segments of the described coils.” Ex. 1001, 3:8–10. Pet. 12. We adopt this construction.” slip op. at 7
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Ahn’s “contact-preventing ends” appear to be substantially coaxial with the longitudinal axis of the coil bodies that terminate at opposed axial ends which are generally perpendicular to the longitudinal axis of the coil. Linear segments (see base of coil 100 shown in Ahn Fig. 1a) of the coil spring accommodate interconnections by lacing wire (shown in Ahn Fig. 2a and 2b). Id. Transition segments (visible in Ahn Fig. 4d) connect coil ends with the “contact-preventing ends.” Pet. 14. Given these disclosures, we find that Ahn anticipates claim 1.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“We agree with Ace that it would have been obvious to a person of ordinary skill in the art to include a linear segment in the upper end of the coil disclosed in Ahn to facilitate a connection with lacing wire at the upper end of the coil – either in addition to, or in place of the linear segments already present in the Ahn coil. Pet. 43. Coils connected by lacing wires in that location were taught by Flesher to be both stable and “a common practice.” Ex. 1007, 1:13–26. A person of ordinary skill would have been motivated to connect the coils disclosed in Ahn at their ends to improve stability and form a matrix of interconnected coils in accordance with standard practice in the art. Coils so connected are nothing more than a predictable variation of the coils disclosed in Ahn. Accordingly, this limitation would have been obvious in view of Ahn alone, and/or in combination with Flesher. The preponderance of evidence establishes that claim 1 is unpatentable under 35 U.S.C. § 103(a) over Ahn and Flesher.” slip op. at 18
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“Claims 14–16 Dependent claim 14 states a range of spring height of 140 mm to 190 mm. Thus, the Oakhill range falls within the claimed range. Claim 15 depends from claim 14 and further requires that the “step” is substantially coaxial with the longitudinal axis of the coil body. As with claim 11, Ace has shown that this limitation is met by Ahn.” slip op. at 19
Patent outcomesUS 7,404,223 unpatentableClaim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 7,404,223 - American Megatrends, Inc. / Micro-Star International Co., Ltd et al. v. Kinglite Holdings Inc.Institution deniedPTAB · Nov 20, 2015 · IPR2015-01188 · APJ Glenn J Perry · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood that claims 1, 2, 7, 10, 14, and 18 were obvious over Schieve and AAPA.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“inter partes review may not be instituted unless the information presented in the Petition shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the Petition, Patent Owner’s Preliminary Response, and the evidence of record, we conclude Petitioner has not established a reasonable likelihood it would prevail with respect to at least one of the challenged claims. We, therefore, deny the Petition.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“FIG. 1 is an example graphical representation of a typical memory map 100 in a computer (e.g., an IBM compatible personal computer, any Intel central processing unit (CPU) -based machine, or similar computing devices). Memory 100 is generally divided into two areas: conventional memory 110 and upper memory 120. Conventional memory 110 comprises a random access memory (RAM) 112 address space that is set aside for use by operating systems and application programs. Conventional memory 110 is, for example, located in the 0 to 9FFFFh (Where “h” indicates hexadecimal notation) address range of memory 100. Upper memory 120 is used by the computer hardWare. Upper memory 120 is, for example, located in the AOOOOh to FFFFFh address range of memory 100. The first 128 kilo bytes (“K”) of upper memory 120 addresses are generally used for video memory 122. The remaining upper memory addresses (e. g., 0000h to 100000h or the end of memory) are set aside for read only memory (ROM) 130. Ex. 1001, 2:45–63. We understand from this passage that “conventional memory” referred only to lower memory and not to upper memory. While we agree with Petitioner that video RAM and other kinds of RAM were conventional in the sense that they were known and used, we are not persuaded that the term “conventional memory” should be construed to include video RAM. The Specification clearly identifies what was meant by “conventional memory.” We therefore adopt Patent Owner’s construction. For purposes of this decision, “conventional memory” refers to the basic 640K of memory available for running DOS programs.” slip op. at 6
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“In accordance with our construction of “conventional memory,” we agree with Patent Owner’s argument that Schieve’s teaching to a PHOSITA is to utilize video RAM, and not conventional memory, for running a decompressed diagnostic routine. Schieve’s Figure 2 is reproduced below (with annotation). Schieve describes Figure 2 as a partial block diagram of a PC architecture. Ex. 1002, 4:39–40. Video RAM 232 is shown in Figure 2 in a subsystem separate from memory subsystem 220. As discussed above, the ’013 patent itself, in Figure 1 (Prior Art), demonstrates that “conventional memory” (RAM 112) is separate and distinct from “video memory” (video memory 122). Accordingly, this limitation of claim 10 is not met by Schieve.” slip op. at 9
Claim construction§ 103 obviousnessPatents in suitUS 5,836,013 - Apple Inc. v. Contentguard Holdings, Inc.Rehearing deniedPTAB · Nov 2, 2015 · IPR2015-00448 · APJ Karl D Easthom · IPR · Rehearing
The Board denied rehearing and left in place the denial of institution on claims 1–18 because Apple did not show an abuse of discretion in the Board’s merits decision.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“an abuse of discretion.” 37 C.F.R. § 42.71(c). “The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” 37 C.F.R. § 42.71(d).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“proposed modifications were, how they were to be made, and why a person of ordinary skill would have made them. See Dec. 11–21. Petitioner’s Rehearing Request—characterizing the modifications as “a single change” as noted—neither clarifies the Petition nor shows that the Board overlooked or misapprehended a matter. Petitioner correctly notes that the need for extensive modification, alone, does not necessarily doom a proposed ground of obviousness, see Reh’g Req. 5–6; however, extensive modification was just one of many problems obfuscating the asserted ground. The Decision explains that combined with the many other deficiencies of the Petition, Petitioner had not shown a reasonable likelihood of prevailing on any of the challenged claims. See Dec. 11–21 (discussing the Petition’s vague, nested string citations to broad swaths of references; clarity problems created by pervasive use of internal cross-references and nested citations; improper incorporation by reference of the Sherman Declaration to support conclusory statements, thin analysis, and inadequate reasoning; and lack of sufficient information to enable a proper Graham analysis).” slip op. at 3
NonePatents in suitUS 8,370,956 - Duodecad It Services Luxembourg S.à.R.L. / Friendfinder Networks Inc. et al. v. Wag Acquisition, LLCInstitution deniedPTAB · Oct 23, 2015 · IPR2015-01035 · APJ Trevor M Jefferson · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–18 were obvious over any of the three asserted combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Inc., and Streamray Inc. (collectively “Petitioner”) filed a Petition (Paper 2, “Pet.”) to institute an inter partes review of claims 1–18 of U.S. Patent No. 8,185,611 B2 (Ex. 1001, “the ’611 patent”) pursuant to 35 U.S.C. § 311 et seq. Patent Owner, WAG Acquisition, LLC (“WAG”), filed a Preliminary Response to the Petition. Paper 6 (“Prelim. Resp.”). We have jurisdiction under 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” After considering the Petition, the Preliminary Response, and cited evidence, we conclude that Petitioner has not demonstrated a reasonable likelihood that it would prevail in showing unpatentability of any of the challenged claims.” slip op. at 2
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedReference is prior artDecided for patent owner
“For purposes of this decision, we consider Chen FH to be a publication. In re Wyer, 655 F.2d 221, 226–27 (CCPA 1981) and Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 1378–79 (Fed. Cir. 2006) establish that an application underlying a published patent, such as the Chen FH in the present case, is a printed publication. Contrary to Patent Owner’s contentions, Bruckelmyer does not require that an issued patent suggests turning to the underlying application in order to establish the file history was publicly accessible. Prelim. Resp. 11–12 (citing Bruckelmyer, 445 F.3d at 1379). Instead, as discussed in In re Wyer, the abstract of the issued patent is sufficient to indicate the subject matter and substance of the underlying patent application and establish its public accessibility. 655 F.2d 2 at 227; see also Bruckelmyer, 445 F.3d at 1379 (noting sufficiency of abstract in In re Wyer). For purposes of this Decision and based on the present record, we determine that Chen FH is available as prior art against the challenged claims.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“Based on the record before us, Petitioner has failed to show that Chen and Chen FH teach or suggest that the server buffer in Chen fills at a constant rate that matches the rate of data coming out of the buffer. Petitioner’s citations to Chen (Pet. 19 (citing Ex. 1004, 5:17–34) and Pet. 31 (citing Ex. 1004, 9:21–30, claim 42)) and the Polish Declaration (Ex. 1003 ¶ 63) do not demonstrate that the data rate out of the server matches the data rate into its buffer and is “constant.” Indeed, Petitioner’s argument and evidence fails to address whether the rate is constant. In addition, we do not find the argument’s reliance on the small number of frames establishes that the rate of filling the server buffer is about at about playback rate. In sum, Petitioner has not provided persuasive evidence that Chen and Chen FH teach that “the media data elements is sent at a rate that matches the constant fill rate of a server buffer,” which appears in every challenged claims of the ’611 patent. Based on the foregoing, we find Petitioner has not demonstrated that there is a reasonable likelihood that it would prevail in showing that claims 1–18 are obvious in view of Chen and Chen FH.” slip op. at 15
§ 102 anticipation§ 103 obviousnessPatents in suitUS 8,185,611 - PTAB · Oct 19, 2015 · IPR2015-01037 · APJ Brian J Mcnamara · IPR · Institution
The Board denied institution for claims 1–28 because Su was not established as prior art and Diedrich did not show a reasonable likelihood of unpatentability for claim 19.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We are also not persuaded by Petitioner’s argument that Diedrich discloses the claimed “routine to store and serially identify sequential data elements comprising said streaming media content, in a format capable of being served to users by said server.” The subject matter Petitioner cites at column 4, lines 49–62 of Deidrich describes storing, updating and maintaining files, generally, but does not disclose the claimed routine to store and serially identify sequential data elements. Pet. 59. The subject matter Petitioner cites at columns 8 and 10 of Diedrich concern the receipt of parameters and transmission of pacing requests between the receiving station and the sending station, as discussed above, and also do not demonstrate the claimed routine. Pet. 59–60. For the reasons discussed above, we are not persuaded that Petitioner has demonstrated a reasonable likelihood it will prevail in its challenge to claim 19 and we decline to institute a trial on Petitioner’s challenge to claim 19 as anticipated by Diedrich.” slip op. at 12
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“As an initial matter, Patent Owner contends that Su is not applicable as a prior art reference. We addressed this issue extensively in related IPR2015-01033. There we determined that Petitioner had not carried its burden of production to establish that Su was accessible to one of ordinary skill exercising reasonable diligence. Friendfinder v. WAG Acquisiton, Case IPR2015-01033, slip op. at 6–13 (PTAB Oct. 19, 2015)(Paper 8, Decision Denying Institution) (“Friendfinder I”). The analysis we applied in Friendfinder I concerning the public accessibility of Su also applies in this proceeding. Thus, we decline to institute on Petitioner’s challenges based on Su.” slip op. at 8
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“As Patent Owner notes, although the parameters include frame numbers, the receiving station is not transmitting requests for particular data elements, but responding to a request to start a multimedia session from the sending station. The parameters the server transmits to the receiving station are not requests for data elements from the receiving station. The parameters identify the information the receiving station has received, the next information in the expected sequence, and the ability of the receiving station to accept additional information. Ex. 1012, col. 10, l. 64–col. 11, l. 6. The receiving station generates and transmits a multimedia session reply that includes a pacing parameter, as well as other parameters pertaining to the transmission of multimedia data. Id. at col. 11, ll. 7–18. A fixed multimedia buffer is then created, and the receiving station sends a multimedia pacing request to the sending station. Id. at col. 11, ll. 21–35. Although the parameters and pacing requests cited by Petitioner are used for purposes of synchronizing data transfer, we are not persuaded by Petitioner’s argument that Diedrich discloses the claimed feature “wherein said server responds to user requests for media data elements identified by a serial identifier.” Pet. 58. We are also not persuaded by Petitioner’s argument that Diedrich discloses the claimed “routine to store and serially identify sequential data elements comprising said streaming media content, in a format capable of being served to users by said server.” The subject matter Petitioner cites at column 4, lines 49–62 of Deidrich describes storing, updating and maintaining files, generally, but does not disclose the claimed routine to store and serially identify sequential data elements. Pet. 59. The subject matter Petitioner cites at columns 8 and 10 of Diedrich concern the receipt of parameters and transmission of pacing requests between the receiving station and the sending station, as discussed above, and also do not demonstrate the claimed routine. Pet. 59–60.” slip op. at 11
§ 102 anticipationPatents in suitUS 8,122,141 - PTAB · Oct 19, 2015 · IPR2015-01033 · APJ Brian J Mcnamara · IPR · Institution
The Board denied institution on all challenged claims because Petitioner did not show Su was publicly accessible prior art, defeating every asserted obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“In consideration of the above, we are not persuaded that Petitioner has met its initial burden of production of evidence establishing that Su is applicable as prior art. As Su is cited as prior art in each of Petitioner’s challenges to patentability, we are not persuaded that Petitioner has demonstrated a reasonable likelihood Petitioner would prevail in its challenges to patentability and we decline to institute inter partes review. SUMMARY Petitioner has not met its initial burden to establish that Su is applicable prior art. Therefore, Petitioner has not demonstrated a reasonable likelihood it would prevail on its challenges to patentability and we decline to institute inter partes review.” slip op. at 13
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“that such document has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it.”’ Kyocera Wireless Corp. v. Int’l Trade Comm’n, 545 F.3d 1340, 1350 (Fed. Cir. 2008)(quoting SRI Int’l, Inc. v. Internet Sec. Sys. Inc., 511 F.3d 1186, 1194 (Fed. Cir. 2008). Whether a reference is a printed publication is a legal question based on underlying factual determinations. Id. The party seeking to introduce the reference “should produce sufficient proof of its dissemination or that it has otherwise been available and accessible to persons concerned with the art to which the document relates and thus most likely to avail themselves of its contents.” In re Wyer, 655 F.2d 221, 227 (CCPA 1981). Our inquiry focuses on whether Su, as it was catalogued, indexed, and shelved, was reasonably accessible to the public before the critical date. We consider all the facts and circumstances surrounding the disclosure and determine whether an interested researcher would have been able to find the reference and examine its contents exercising reasonable diligence, prior to the critical date. In re Lister, 558 F. 3d 1307, 1314–15, 1317 (Fed. Cir. 2009). Petitioner’s only evidence of public accessibility is TH-Su and Su itself. Thus, we look to other information provided on Su and TH-Su to assess whether Su was accessible to an interested researcher exercising reasonable diligence.” slip op. at 9
§ 102 anticipationPatents in suitUS 8,327,011 - Kinetic Technologies, Inc. v. Skyworks Solutions, Inc.No claims unpatentablePTAB · Oct 19, 2015 · IPR2014-00690 · APJ Scott A Daniels · IPR · Final written decision
The Board held claims 4–6, 8–20, and 23–29 not shown unpatentable because LT1932 was not proven publicly accessible before the priority date.
RulingsFinal written decision- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“Reimund “[t]he documents were made publicly available shortly after the footer dates were applied.” Id. A “printing date” is not, however, without more, sufficient evidence of public accessibility as of that particularly date. See e.g., LG Elecs., Case IPR2015-00329 (Paper 13, 13) (Declarant’s “unsupported opinion that EIFUFAL501 ‘was more than likely published on or about March 24, 1998’ (id.) is insufficient to demonstrate a reasonable likelihood that EIFUFAL501 was published before June 1, 1998.”) The bare testimony of Mr. Reimund that the printing date “‘1201’ indicates that the datasheet was made public, and Linear customers and members of the public were able to access the datasheet no later than December 2001” (Ex. 1012 ¶ 6) is not persuasive evidence that the “printing date” can be equated to the publication date. In his Declaration, Mr. Reimund stated that such documents “were made publicly available shortly after the footer dates were applied.” Ex. 1012 ¶ 5 (emphasis added). Mr. Reimund’s testimony, however, provides no further explanation as to what time period, hours, days or months etc., is encompassed by the term “shortly after.” Giving some weight to Mr. Reimund’s testimony that it was common business practice for documents to bear a printing date such as “1201” indicative of a printing date of December 2001, his opinion that LT1932 was publicly available “shortly after” that date is vague and insufficient by itself to demonstrate that LT1932 was accessible to the public prior to the filing of the ’474 provisional application on March 28, 2002. Mr. Reimund further states that “Linear maintains and I have reviewed a database reflecting the dates that such documents were made publicly available.” Id. ¶ 5. The database referred to by Mr. Reimund is not part of the record in these proceedings and this explicit reference to purported important corroborating evidence is ambiguous without the specific database and dates he reviewed. Overall, Mr. Reimund’s testimony does not state any facts or circumstances relating to specific dates, or even a general time frame, after December 2001 that LT1932 was in fact publicly accessible. Mr. Reimund’s testimony alleging that LT1932 was publicly available “shortly after” December 2001, does not sufficiently temporally link the December 2001 printing date to the alleged public availability of the reference prior to March 28, 2002. Consequently, on this record we are not persuaded that Petitioner has demonstrated by a preponderance of the evidence that LT1932 is a printed publication available before the priority date.” slip op. at 19
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedDecided for patent owner
“We determine that the priority date, for purposes of this Decision, is March 28, 2002, the filing date of the ’474 provisional application that became the ’275 patent.10 Patent Owner provides persuasive evidence that 10 Patent Owner provides evidence of conception and reduction to practice of the invention claimed in the ’275 patent prior to December 31, 2001, and also evidence of diligence leading to the filing of the ’474 provisional application on March 28, 2002. See PO Resp. 35–57. Based on this the 60/368,474 (“’474”) provisional application contains essentially identical disclosure to that of the ’275 patent and that each of the claims at issue is supported by disclosure in the ’474 provisional application. PO Resp. 54– 57, compare Ex. 2016, with Ex. 1001; Ex. 2030 ¶¶ 54–55; Ex. 2028 ¶ 90.” slip op. at 17
- ExcludeMotion to exclude, deniedDenied
“to exclude is properly related to the admissibility of evidence (e.g., authenticity or hearsay). See Bloomberg Inc. v. Markets-Alert Pty Ltd., CBM2013-00005, slip op. at 5 (PTAB Nov. 15, 2013) (Paper 56). Patent Owner’s Motion to Exclude Evidence is directed, however, to the sufficiency of evidence concerning whether or not LT1932 is prior art to the claimed subject matter in the ’275 patent. Patent Owner argues in its Motion that “[t]he Petition asserted, without evidentiary support, that Exhibit 1004 ‘was published at least as early as 2001.’” Mot. 2 (citing Pet. 5). Although Patent Owner states that Petitioner does not establish the necessary “foundation,” the arguments presented by Patent Owner are directed specifically to the sufficiency of the copyright date of 2001 as evidence of a publication date, and hence public accessibility, of LT1932. See id. at 2–4. Arguments related to whether a copyright date is sufficient evidence of public accessibility so that LT1932 is, or is not, a “printed publication” under 35 U.S.C. § 102 are properly presented in a reply rather than in a motion to exclude. With respect to Patent Owner’s argument that Mr. Reimund’s Declaration should be excluded as irrelevant under Fed. R. Evid. 402, this admissibility objection is based on Patent Owner’s assertion that Petitioner’s evidence is insufficient to establish LT1932 as prior art where Patent Owner has provided evidence of conception prior to December 31, 2001. Mot. 5. For example, Patent Owner argues in its Motion that “Petitioner cannot carry its burden to show that the claims of the patent are invalid unless it presents sufficient evidence in the Petition itself that a relied upon reference is prior art to the ’275 Patent.” Id. (emphasis added) (original emphasis omitted). Such an argument addressing the sufficiency of Petitioner’s temporal evidence is misplaced in a motion to exclude. Accordingly, Patent Owner’s Motion to Exclude Evidence is denied.” slip op. at 15
- PTAB / AIA Trials › Motions to amend / substitute claimsDenied
“Renewed Joint Motion to Terminate Proceedings under 35 U.S.C. § 317(a) on June 12, 2015. Accompanying the Motion, the parties filed a true copy of a settlement agreement (Ex. 2040) along with a joint request to treat the settlement agreement as business confidential (Paper 40), to be kept separate from the patent file pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c). Based on the facts of this case and because the settlement was not concluded until after the oral hearing and we had substantially decided the merits of the proceeding, we exercise our discretion not to terminate this proceeding. The Renewed Joint Motion to Terminate Proceedings is denied.” slip op. at 20
Patent outcomesUS 8,539,275 not shown unpatentable§ 102 anticipationcites PhillipsPatents in suitUS 8,539,275 - Webasto Roof Systems, Inc. v. Uusi, LLCAll claims unpatentablePTAB · Oct 13, 2015 · IPR2014-00649 · APJ Hyun J Jung · IPR · Final written decision
Claims 7 and 13 are unpatentable as anticipated by Bernard; claim 1 is unpatentable as obvious over Bernard and Chikaraishi.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageTerm construed board ownDecided for petitioner
“The record before us does not present a clear disavowal in the prosecution history that would limit the plain and ordinary meaning of the disputed term. Patent Owner cites to portions of the prosecution history of the ’037 patent that argues how the as-filed application provides support for the claimed subject matter. PO Resp. 25–28; Ex. 1004 at 384, 388, 484– 498, 585–779. These cited portions do not discuss the scope of the claim language and do not indicate that Applicants intended to limit the claim language to the cited embodiments. See Ex. 1004 at 384, 388, 484–498, 585–779. Also, we decline to import into the claims a limitation based on specific embodiments in the Specification. See, e.g., SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) (“[A] particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment.”). Accordingly, based on the complete record before us, we construe “different parameter values” in accordance with its plain meaning. Our construction includes parameter values that are either values of a parameter measured at different times or values of two or more different kinds of parameters. Ex. 1003, 18:29–44.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“Petitioner replies, and we agree, that “‘frame,’ ‘closure,’ and ‘drive motor’ are separately recited in claims 1 and 7, so it would be redundant to read them into the ‘power system.’” Reply 4. We also agree with Petitioner that “the additional requirement of ‘a modularized or preassembled’ has no basis in the intrinsic record; it is not mentioned in the ’037 patent.” Id. (citing Reply Decl. ¶ 17). Petitioner argues that “‘power system’ only appears in the claims,” that the “’037 patent ‘concerns motor driven actuator control systems” and references a standard “that ‘establishes requirements for power window control systems,’” and that the “disclosure indicates that . . . ‘power system’ refers to a ‘motor driven system,’ e.g., for use in a power window.” Id. (citing Ex. 1003, 1:24–26, 1:30–33; Reply Decl. ¶ 15), 16 (citing Reply Decl. ¶¶ 14–15). Accordingly, based on the complete record before us, we construe “power system” in accordance with its plain meaning. Our construction does not require that power system be a modularized or preassembled power unit.” slip op. at 10
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“As explained above in Part III.A.1, our construction of “different parameter values” includes values of a parameter measured at different times and is not limited to values of two or more different kinds of parameters. Also, as discussed in Part III.A.2, our construction of “power system” does not require that it be a modularized or preassembled power unit or further include frame, closure, and drive motor, which are recited separately in claim 7. Accordingly, based on the complete record before us, we determine that Petitioner, by a preponderance of the evidence, has shown that claim 7 is anticipated by Bernard.” slip op. at 18
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“As discussed above in Parts III.A.1 and III.A.2, our construction of “different parameter values” includes values of a parameter measured at different times and our construction of “power system” does not require that it be a modularized or preassembled power unit or further include frame, closure, and drive motor, which are recited separately in claim 1. Accordingly, based on the complete record before us, we determine that Petitioner, by a preponderance of the evidence, has shown that claim 1 is unpatentable over Bernard and Chikaraishi.” slip op. at 22
Patent outcomesUS 7,548,037 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSRPatents in suitUS 7,548,037
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.