- Ima S.P.A. / Fillshape S.R.L. v. Indag Gesellschaft FÜR Industriebedarf MBH & Co. Betriebs KGInstitution deniedPTAB · Dec 7, 2016 · IPR2016-01153 · APJ Timothy J Goodson · IPR · Institution
The Board denied institution on all challenged claims because Petitioners did not show a reasonable likelihood of prevailing on any asserted obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“as to which portions of Resterhouse Petitioners rely on as teaching each element of claim 1. The rules governing this proceeding require that a petition “must specify where each element of the claim is found in the prior art patents or printed publications relied upon.” 37 C.F.R. § 42.104(b)(4). As the Federal Circuit has recently indicated, “[t]he Board is not free to disregard its own regulations.” Perfect Surgical Techniques, Inc. v. Olympus America, Inc., __ F.3d __, 2016 WL 6694956 at *1 (Fed. Cir. Nov. 15, 2016). The Federal Circuit has also emphasized the need, in AIA proceedings, for petitioners to articulate their challenges with specificity in their initial petitions. See Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016) (“It is of the utmost importance that petitioners in the IPR proceedings adhere to the requirement that the initial petition identify ‘with particularity’ the ‘evidence that supports the grounds for the challenge to each claim.’ 35 U.S.C. § 312(a)(3). . . . Unlike district court litigation—where parties have greater freedom to revise and develop their arguments over time and in response to newly discovered material—the expedited nature of IPRs bring with it an obligation for petitioners to make their case in their petition to institute.”). In this case, the Petition’s arguments concerning claim 1 fall short of the requirements of § 42.104(b)(4) because the Petition does not link each element of the claim to a particular disclosure or structure in the reference on which Petitioners rely. Specifically, it is unclear which portion of Resterhouse, in Petitioners’ theory, discloses a “transferring assembly” and which portion discloses an “apparatus.” The Petition’s analysis of limitations that include those elements simply reproduces selected excerpts of Resterhouse without linking the structures described in the excerpts to each element of the claim. See Pet. 13–18.” slip op. at 15
- BurdenDenied
“as to which portions of Resterhouse Petitioners rely on as teaching each element of claim 1. The rules governing this proceeding require that a petition “must specify where each element of the claim is found in the prior art patents or printed publications relied upon.” 37 C.F.R. § 42.104(b)(4). As the Federal Circuit has recently indicated, “[t]he Board is not free to disregard its own regulations.” Perfect Surgical Techniques, Inc. v. Olympus America, Inc., __ F.3d __, 2016 WL 6694956 at *1 (Fed. Cir. Nov. 15, 2016). The Federal Circuit has also emphasized the need, in AIA proceedings, for petitioners to articulate their challenges with specificity in their initial petitions. See Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016) (“It is of the utmost importance that petitioners in the IPR proceedings adhere to the requirement that the initial petition identify ‘with particularity’ the ‘evidence that supports the grounds for the challenge to each claim.’ 35 U.S.C. § 312(a)(3). . . . Unlike district court litigation—where parties have greater freedom to revise and develop their arguments over time and in response to newly discovered material—the expedited nature of IPRs bring with it an obligation for petitioners to make their case in their petition to institute.”). In this case, the Petition’s arguments concerning claim 1 fall short of the requirements of § 42.104(b)(4) because the Petition does not link each element of the claim to a particular disclosure or structure in the reference on which Petitioners rely. Specifically, it is unclear which portion of Resterhouse, in Petitioners’ theory, discloses a “transferring assembly” and which portion discloses an “apparatus.” The Petition’s analysis of limitations that include those elements simply reproduces selected excerpts of Resterhouse without linking the structures described in the excerpts to each element of the claim. See Pet. 13–18.” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“We also agree with Patent Owner that Petitioners have not shown why it would be obvious, based on the disclosures of Sugihara and Hiramoto, for a transferring assembly to simultaneously remove a single pouch and a single spout. We note that in both references, pouch and spout removal are sequential, not simultaneous. Further, Petitioners do not explain what modifications would be made to either reference to accomplish simultaneous removal, nor do Petitioners provide a persuasive reason why a skilled artisan would make such a modification.” slip op. at 23
§ 103 obviousnessPatents in suitUS 7,648,017 - Institut Straumann AG / Dental Wings Inc. v. Sirona Dental Systems GmbHSome claims unpatentablePTAB · Nov 15, 2016 · IPR2015-01190 · APJ Brian P Murphy · IPR · Final written decision
Claims 1–8 were held unpatentable as obvious over Bannuscher and Truppe; claims 9–10 were not shown unpatentable; the motion to amend was denied.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“interpretation of the language used in claim 1 and the additional limitations of dependent claims 9 and 10. Patent Owner’s proposed construction also impermissibly reads limitations from the preferred embodiment of Figure 5 into claim 1. Patent Owner would limit the pilot hole location exclusively to a position directly over the implant position and require the drill bit to pass through the pilot hole while drilling a bore hole into the patient’s jaw. The language recited in claim 1, in the context of the ’006 specification, does not so-limit the “determinating a pilot hole” step. First, Patent Owner fails to consider the present participle form “determinating”5 at the beginning of the recited method step at issue. As a result, Patent Owner conflates the recited device production step with a specific process for drilling a bore hole into a patient’s jaw during tooth implant surgery. PO Resp. 14–15. For example, Patent Owner relies on Dr. Erickson’s Declaration testimony (and Dr. Benjamin’s deposition testimony) for the proposition that “pilot hole” is a term of art referring to “an initial hole through which a pilot drill passes during an operation.” Ex. 2002 ¶ 37 (cited at PO Resp. 16–17); see also PO Resp. 16–17 (citing Ex. 2023, 24:3– 22, 25:18–27:2, 52:2–9). The ’006 patent does not describe or reference any such “pilot drill” or “initial hole” being made during a tooth implant operation. Regardless, the claim limitation at issue is a step in a method of producing a drill template. It recites defining a pilot hole in a drill template with reference to the surfaces of neighboring teeth, nothing more. The function of actually passing a drill through a pilot hole in a drill template” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“Petitioner argues that the term “pseudo-x-ray picture” is not a term that has a commonly understood meaning to a POSA. Pet. 19 (citing Ex. 1002 ¶ 45 [47]). Patent Owner does not comment on the construction of “pseudo-x-ray picture.” PO Resp. 15–19. Having reviewed the complete record, we adopt Petitioner’s argument and evidence in support of Petitioner’s proposed broadest reasonable interpretation of “pseudo-x-ray picture.” Therefore, we adopt Petitioner’s proposed broadest reasonable interpretation of “pseudo-x-ray picture” as “any representation of measured data records of the three-dimensional optical measuring that can be superimposed on an x-ray image.” Pet. 19 (citing Ex. 1002 ¶ 49).” slip op. at 17
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableInherency not foundNot shown unpatentable
“stylus is used to penetrate the surface of the gum repeatedly to measure the structure of the jaw bone displayed in Figure 25. PO Resp. 30–31 (citing Ex. 1007, 24:53–65 (“[S]tylus member 52 is provided with a sharp stylus 574 (FIG. 1) having a length sufficient[ly] long to penetrate gum tissue and contact the bone surface. . . . [P]ractitioner repeats the procedure of piercing the gum tissue in a region about the desired implantation site and taking point data until enough data has been collected . . . to map . . . the entire surface of bone 558 [Fig. 25] about the implantation site.”)). We agree with Patent Owner and find that the use of a sharp stylus to pierce the gum and take multiple data points via contact digitization of the jaw bone beneath the skin surface is not a 3-D optical measuring of the visible surfaces of a patient’s jaw.” slip op. at 21
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“would have been motivated to combine their teachings with respect to correlating X-ray imaging data of the jaw and 3-D surface data of the jaw and teeth. Reply 22–23 (citing Ex. 1002 ¶¶ 89, 92; Ex. 1008, 1:10–11 (“precise planning of the surgical operation is necessary”); Ex. 1010, 5:19– 25 (“it is possible to carry out the entire implantological, treatment and operation planning on a scientific basis . . . to implement holistic planning results in a precisely clinical manner”)). More particularly, Bannuscher discloses the desire to obtain “all the necessary [clinical] parameters” relevant to pre-surgical implant planning, which can be “combined together” (“correlated” in the language of claim 1) using planning simulation software, for transfer to a drill template. Ex. 1010, 5:44–6:13, 6:24–40, 7:38–8:4. As Dr. Erickson testified, it would have been desirable for a POSA to have as much diagnostic information as possible when planning for dental implant surgery. Ex. 1029, 31:12–21. Truppe discloses the advantage of correlating three-dimensional X-ray imaging data of the jaw and optical imaging data of the jaw and teeth, using simulation software, to obtain a “vivid” representation. Ex. 1008, 2:7–16, 3:19–28, 3:56–58; 4:1–5. Truppe, therefore, discloses a similar process to that disclosed in Bannuscher with respect to correlating 3-D X-ray imaging data and 3-D optical data representing the surfaces of the jaw and teeth, to generate the best possible representation of the patient’s jaw and teeth. Ex. 1002 ¶¶ 89–92. A POSA would have been motivated to use Truppe’s optical measurement system to generate 3-D surface data of the jaw and teeth for use in Bannuscher’s planning simulation software, in order to produce an enhanced image for determining the optimal bore hole and pilot hole in the drill template. Id.; Ex. 2023, 186:8–187:13 (“the optical imaging [of Truppe] would basically just enhance the diagnostic data [of Bannuscher]”). For example, a POSA would have optically measured the plaster model of the jaw and teeth referenced in Bannuscher and the patient’s actual jaw and teeth, as in Truppe, to produce a “vivid” image for correlation with the X-ray imaging data. Ex. 1002 ¶¶ 89, 92.20 Bannuscher’s determination of the optimized bore hole and corresponding pilot hole in the drill template would be based on the enhanced imagery generated from the correlated 3-D data sets. In short, we are persuaded that a POSA would have had reason to incorporate the teaching of Truppe’s enhanced 3-D optical measurement technique into Bannuscher’s method for correlating 3–D X-ray image and model geometry data sets, to determine an optimal bore hole and corresponding pilot hole in the drill template. For the reasons given above, we are persuaded that Petitioner has established a sufficient motivation for a POSA to combine the relevant teachings of Bannuscher and Truppe, with a reasonable expectation of success, by a preponderance of the evidence.” slip op. at 40
Patent outcomesUS 6,319,006 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,319,006 - Ibg LLC / Interactive Brokers LLC et al. v. Trading Technologies International, Inc.Rehearing deniedPTAB · Nov 9, 2016 · CBM2016-00032 · APJ Meredith C Petravick · CBM · Rehearing
The Board denied petitioner’s rehearing request, finding no error in its denial of the proposed obviousness combination of TSE, Schott, and Subler.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW Under 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” Abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus. Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988). In its request for rehearing, the dissatisfied party must identify the place in the record where it previously addressed each matter it submits for review. 37 C.F.R. § 42.71(d).” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“and evidence but were not persuaded that a POSITA would have combined TSE, Schott, and Subler in the manner proposed in the Petition. The Decision states: We disagree that the proposed combination is nothing more than an obvious design choice or nothing more than combining prior art elements according to a known method to yield predictable and desirable results of increasing the efficiency and decreasing the complexity of order entry. As can be seen from the annotated figure above, the proposed combination results in a more complex order entry system because it requires not merely the substitution of a point-and-click technique for a drag-and-drop technique but the addition of a window, such as Subler’s Viewer window 334, having the order icons to drag-and-drop. Dec. 25 (referring to a figure from page 49 of the Petition, reproduced on page 24 in the Decision). Petitioner effectively disagrees with our Decision, which is not an appropriate basis for rehearing.” slip op. at 4
§ 103 obviousnessPatents in suitUS 7,212,999 - Ibg LLC / Interactive Brokers LLC et al. v. Trading Technologies International, Inc.Rehearing deniedPTAB · Sep 20, 2016 · CBM2016-00031 · APJ Jeremy M Plenzler · CBM · Rehearing
The Board denied rehearing of its decision denying inter partes review on the Silverman, Gutterman, and Togher challenge, finding no error in its static-price-axis analysis.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“Under 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” Abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus. Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted). In its request for rehearing, the dissatisfied party must identify the place in the record where it previously addressed each matter it submits for review. 37 C.F.R. § 42.71(d).” slip op. at 2
NonePatents in suitUS 7,813,996 - Apple, Inc. / Eventbrite Inc. et al. v. Ameranth, Inc.All claims unpatentablePTAB · Aug 26, 2016 · CBM2015-00096 · APJ Meredith C Petravick · CBM · Final written decision
Claims 12–16 are unpatentable under § 103 over DeLorme; Patent Owner’s secondary-consideration evidence did not outweigh the showing of obviousness.
RulingsFinal written decision- Skill levelOther
“B. Unpatentability Over DeLorme Under 35 U.S.C. § 103, a claim is unpatentable if: the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art. The ultimate determination of obviousness under § 103 is a question of law based on underlying factual findings. In re Baxter Int’l, Inc., 678 F.3d 1357, 1362 (Fed. Cir. 2012) (citing Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966)). These underlying factual considerations consist of: (1) the “level of ordinary skill in the pertinent art,” (2) the “scope and content of the prior art,” (3) the “differences between the prior art and the claims at issue,” and (4) “secondary considerations” of non-obviousness such as “commercial success, long-felt but unsolved needs, failure of others, etc.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007) (quoting Graham, 338 U.S. at 17–18). Petitioner contends that claims 12–16 are unpatentable under 35 U.S.C. § 103 over DeLorme. Pet. 50–62. To support its contention, Petitioner provides explanations as to how the prior art meets each claim element. Id. Petitioner also cites the Declaration of Dr. Don Turnbull for support. See Ex. 1002 ¶¶ 180–237. Taking into account Patent Owner’s argument and evidence (PO Resp. 1–4, 12–80; PO Sur-Reply 1–5), for the reasons discussed below, we determine that Petitioner has shown by a preponderance of the evidence that claims 12–16 are unpatentable under 35 U.S.C. § 103 over DeLorme.” slip op. at 15
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“To resolve the issues of patentability of the claims over DeLorme, it is not necessary for us to determine whether the broadest reasonable construction of “wireless handheld computing device” requires that the device be held in a single hand or allows for the device to be held in two hands. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (stating that “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”). Regardless, DeLorme explicitly discloses that its wireless communication unit (“WCU”) 907 is handheld. Ex. 1024, col. 72, l. 1 (“WCU 907, typically hand-held 906”), col. 72, l. 31 (“handheld devices equipped with GPS 908”); see also id. at col. 7, l. 34, col. 16, ll. 40–49 (further describing wireless “handheld” device). Further, DeLorme discloses that WCU 907 could be a personal digital assistant (“PDA”) and describes PDAs as “handheld” wireless devices. Id. at col. 71, l. 61–col. 72, l. 2, col. 75, ll. 33–45; see Ex. 1076, 53:12–25 (testimony of Dr. Weaver indicating that a PDA or smartphone is a wireless hand-held computing device). The ’850 patent describes PDAs as an example of a wireless handheld device. Ex. 1001, col. 1, ll. 62–63, col. 13, l. 50. Given this, we determine that it is not necessary for us to determine whether the broadest reasonable construction of “wireless handheld computing device” requires that the device be held in a single hand or allows for the device to be held in two hands.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageTerm construed petitioner constructionDecided for petitioner
“As an initial matter, we are not persuaded by Patent Owner that we should wholesale adopt the construction of “communications control module” from a previous district court infringement action. The standard for claim construction in a district court infringement action is different than the standard applied by the Board. See In re Morris, 127 F.3d 1048, 1053–54 (Fed. Cir. 1997). In covered business method patent review proceedings, the Board applies the broadest reasonable construction consistent with the specification. 37 C.F.R. § 42.300(b). We determine that the broadest reasonable construction, in light of the specification of the ’850 patent, of “a communications control module . . . wherein the communications control module is an interface between the hospitality applications and any other communications protocol” is a device used as an intermediary in transferring communications to and from the host computer to which it is connected, wherein the device is an interface between the hospitality applications and any other communications protocol. This construction is consistent with the plain language of claim 12, which requires the communication control module to be an interface between the hospitality applications and any other communications protocol. This construction is also consistent with the description of the communication control module in the specification of the ’850 patent, as a “control program [that] monitors and routes all communications [as] to the appropriate devices” in the ’850 patent and as “a single point of entry for all hospitality application to communicate with one another wirelessly or over the Web.” Ex. 1001, col. 9, ll. 21–22, col. 11, ll. 24–27. This construction, unlike Patent Owner’s proposed construction, does not import extraneous features from the Specification of the ’850 patent into the claims. Although the specification of the ’850 patent describes additional features of the communication control module, such as it is “a layer that sits on top of any communication protocol.” The plain language of claim 12, does not require the claimed communication control module to have such features. If a feature is not necessary to give meaning to what the inventor means by a claim term, it would be “extraneous,” and should not be read into the claim. Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1249 (Fed. Cir. 1998); E.I. du Pont de Nemours & Co. v. Phillips Petroleum Co., 849 F.2d 1430, 1433 (Fed. Cir. 1988).” slip op. at 13
Patent outcomesUS 6,384,850 unpatentableClaim construction§ 103 obviousnesscites KSRPatents in suitUS 6,384,850 - Petitioner v. Ameranth, Inc.All claims unpatentablePTAB · Aug 26, 2016 · CBM2015-00080 · APJ Meredith C Petravick · CBM · Final written decision
Claims 12–16 are unpatentable under § 103 over DeLorme because its TRIPS system teaches or renders obvious the claimed elements; secondary considerations do not outweigh that showing.
RulingsFinal written decision- BurdenFwd all claims unpatentableUnpatentable
“Petitioner contends that claims 12–16 are unpatentable under 35 U.S.C. § 103 over DeLorme. Pet. 50–62. To support its contention, Petitioner provides explanations as to how the prior art meets each claim element. Id. Petitioner also cites the Declaration of Dr. Don Turnbull for support. See Ex. 1002 ¶¶ 180–237. Taking into account Patent Owner’s argument and evidence (PO Resp. 1–4, 12–80; PO Sur-Reply 1–5), for the reasons discussed below, we determine that Petitioner has shown by a preponderance of the evidence that claims 12–16 are unpatentable under 35 U.S.C. § 103 over DeLorme.” slip op. at 16
- ExcludeOther
“Patent Owner moves to exclude certain paragraphs of Exhibit 1070 and the entirety of Exhibits 1071, 1072, 1073, 1078, 1079, 1080, 1081, and 1082. Paper 33. We do not rely on these exhibits in reaching our Decision and, thus, dismiss Patent Owner’s motion to exclude these exhibits as moot. Petitioner moves to exclude the entirety of Exhibits 2021, 2023, 2025, 2027, 2030–2051, and 2053–2056 and with the annotated portions of Exhibit 2024. Paper 31. We also dismiss Petitioner’s motion to exclude these exhibits. Petitioner’s motion to exclude theses exhibits are moot because we have found this evidence insufficient regardless of their admissibility.” slip op. at 51
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“To resolve the issues of patentability of the claims over DeLorme, it is not necessary for us to determine whether the broadest reasonable construction of “wireless handheld computing device” requires that the device be held in a single hand or allows for the device to be held in two hands. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (stating that “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”). Regardless, DeLorme explicitly discloses that its wireless communication unit (“WCU”) 907 is handheld. Ex. 1024, col. 72, l. 1 (“WCU 907, typically hand-held 906”), col. 72, l. 31 (“handheld devices equipped with GPS 908”); see also id. at col. 7, l. 34, col. 16, ll. 40–49 (further describing wireless “handheld” device). Further, DeLorme discloses that WCU 907 could be a personal digital assistant (“PDA”) and describes PDAs as “handheld” wireless devices. Id. at col. 71, l. 61–col. 72, l. 2, col. 75, ll. 33–45; see Ex. 1076, 53:12–25 (testimony of Dr. Weaver indicating that a PDA or smartphone is a wireless hand-held computing device). The ’850 patent describes PDAs as an example of a wireless handheld device. Ex. 1001, col. 1, ll. 62–63, col. 13, l. 50. Given this, we determine that it is not necessary for us to determine whether the broadest reasonable construction of “wireless handheld computing device” requires that the device be held in a single hand or allows for the device to be held in two hands.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“Petitioner proposes that “applications” be construed to mean “sequences of instructions that can be executed on a computer that are designed to help people perform a specific task.” Pet. 22. To support its proposed construction, Petitioner cites to the Microsoft Computer Dictionary, 4th ed., which defines “application” as “a program designed to assist in the performance of a specific task” and “program” as “[a] sequence of instructions that can be executed by a computer.” Ex. 1034, 4, 10. Patent Owner does not propose an explicit construction of “applications” but does state that “[i]t is clear from the specification, consistent with the ordinary meaning as would be understood by a POSA, that an application is a software program, not data.” PO Resp. 32 n.15. This is consistent with Petitioner’s proposed construction, which is based in-part on the definition of application, as a program. Given the above, we determine that the broadest reasonable interpretation, in light of the specification of the ’850 patent, of “hospitality applications” is a sequences of instructions that can be executed on a computer (i.e., a program) that are designed to assist in the performance of a specific task in the hospitality industry.” slip op. at 10
Patent outcomesUS 6,384,850 unpatentableClaim construction§ 103 obviousnesscites KSRPatents in suitUS 6,384,850 - Apple, Inc. / Eventbrite Inc. et al. v. Ameranth, Inc.All claims unpatentablePTAB · Aug 26, 2016 · CBM2015-00097 · APJ Meredith C Petravick · CBM · Final written decision
Claims 11, 13, and 15 are unpatentable as obvious over DeLorme because the reference teaches or renders obvious their limitations.
RulingsFinal written decision- BurdenUnpatentable
“Petitioner contends that claims 11, 13, and 15 are unpatentable under 35 U.S.C. § 103 over DeLorme. Pet. 51–63. To support its contention, Petitioner provides explanations as to how the prior art meets each claim element. Id. Petitioner also cites the Declaration of Dr. Don Turnbull for support. See Ex. 1002 ¶¶ 419–473. Taking into account Patent Owner’s argument and evidence (PO Resp. 1–3, 14–80, PO Sur-Reply 1–5), for the reasons discussed below, we determine that Petitioner has shown by a preponderance of the evidence that claims 11, 13, and 15 are unpatentable under 35 U.S.C. § 103 over DeLorme.” slip op. at 18
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“To resolve the issues of patentability of the claims over DeLorme, it is not necessary for us to determine whether the broadest reasonable construction of “wireless handheld computing device” requires that the device be held in a single hand or allows for the device to be held in two hands. See Vivid Techs., Inc. v. Am. Sci.& Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (stating that “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”). Regardless, DeLorme explicitly discloses that its wireless communication unit (“WCU”) 907 is handheld. Ex. 1024, col. 72, l. 1 (“WCU 907, typically hand-held 906”), col. 72, l. 31 (“handheld devices equipped with GPS 908”); see also id. at col. 7, l. 34, col. 16, ll. 40–49 (further describing a wireless “handheld” device). Further, DeLorme discloses that WCU 907 could be a personal digital assistant (“PDA”) and describes PDAs as “handheld” wireless devices. Id. at col. 71, l. 61–col. 72, l. 2, col. 75, ll. 33–45; see Ex. 1076, 53:12–25 (testimony of Dr. Weaver indicating that a PDA or smartphone is a wireless hand-held computing device). The ’325 patent describes PDAs as an example of a wireless handheld device. Ex. 1003, col. 13, l. 63. Given this, we determine that it is not necessary for us to determine whether the broadest reasonable construction of “wireless handheld computing device” requires that the device be held in a single hand or allows for the device to be held in two hands.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“We determine that the broadest reasonable construction, in light of the specification of the ’325 patent, of “a communications control module . . . wherein the communications control module is an interface between the hospitality applications and any other communications protocol” is a device used as an intermediary in transferring communications to and from the host computer to which it is connected, wherein the device is an interface between the hospitality applications and any other communications protocol. This construction is consistent with the plain language of claims 11 and 13, which requires the communication control module to be an interface between the hospitality applications and any other communications protocol. This construction is also consistent with the description of the communication control module in the specification of the ’325 patent as “a communications control program [that] monitors and routes all communications to the appropriate devices” and as “a single point of entry for all hospitality applications to communicate with one another wirelessly or over the [w]eb.” Ex. 1003, col. 9, ll. 35–36, col. 11, ll. 38–40. This construction, unlike Patent Owner’s proposed construction, does not import extraneous features from the specification of the ’325 patent into the claims. The specification of the ’325 patent describes additional features of the communication control module, such as it is “a layer that sits on top of any communication protocol.” Ex. 1003, col. 11, ll. 40–43. The plain language of claims 11 and 13, however, do not require the claimed communication control module to have such features. If a feature is not necessary to give meaning to what the inventor means by a claim term, it would be “extraneous,” and should not be read into the claim. Renishaw PLC v. Marposs Societa' per Azioni, 158 F.3d 1243, 1249 (Fed. Cir. 1998); E.I. du Pont de Nemours & Co. v. Phillips Petroleum Co., 849 F.2d 1430, 1433 (Fed. Cir. 1988). We, thus, determine that the broadest reasonable construction, in light of the specification of the ’325 patent, of “a communications control module . . . wherein the communications control module is an interface between the hospitality applications and any other communications protocol” is a device used as an intermediary in transferring communications to and from the host computer to which it is connected, wherein the device is an interface between the hospitality applications and any other communications protocol.” slip op. at 15
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“We are persuaded by Petitioner’s evidence and analysis that the claimed communication control module, when it is given the broadest reasonable construction, would have been obvious in view of DeLorme’s Interface and Interaction Bus 209. As discussed above, the broadest reasonable construction of “a communications control module . . . wherein the communications control module is an interface between the hospitality applications and any other communications protocol” is a device used as an intermediary in transferring communications to and from the host computer to which it is connected, wherein the device is an interface between the hospitality applications and any other communications protocol. DeLorme describes the Interface and Interaction Bus 209 as a device that gives retail users access to TRIPS Subsystem (Ex. 1024, col. 13, ll. 15–41) and depicts it as an interface between retail users 205 and third-party providers at 231 and TRIPS Subsystems 213, 217, 221, and 223 (id. at Fig. 9). DeLorme also describes Main Menu 413 and Interaction Bus 414, which corresponds to the Interface and Interaction Bus 209, as coordinating the responses to alternate input means embedded in specialized TRIPS field or in-vehicle embodiments. Id. at col. 37, ll. 54–65. DeLorme, thus, discloses an intermediary in transferring communications to and from the host computer to which it is connected. DeLorme does not explicitly disclose that the Interface and Interaction Bus 209 is an interface between different communication protocols. DeLorme, however, does describe the Interface and Interaction Bus 209 interfacing with different devices. E.g., see id. at col. 14, l. 66–col. 15, l. 14 (describing different alternative end-user hardware platforms). The different devices would use different communication protocols. See id. at col. 37, ll. 54–56, (describing simplified input or remote queries), col. 14, l. 66–col. 15, l. 13 (describing internet based access); PO Resp. 9 (“third party systems such as POS system devices (clearly which operate with different protocols”), Ex. 1076, 176:17–177:12 (testimony of Dr. Weaver indicating that different devices operate with different protocols). In order for Interface and Interaction Bus 209 to interface with devices using different communication protocols, Interface and Interaction Bus 209 would be configured to interface with different communication protocols or it would be obvious for it to be configured as such, because it is advantageous for TRIPS to interface with different devices. See Ex. 1002 ¶ 447. Patent Owner’s argument that DeLorme’s Interface and Interaction Bus 209 fails to meet this claim element is based upon its proposed construction (see PO Resp. 45–49), which we did not adopt. For example, Patent Owner’ argues that Interface and Interaction Bus 209 is not a software layer that sits on top of a communication protocol. Id. at 45–49. This argument is not persuasive because it is not commensurate with the scope of claim 12, when given its broadest reasonable construction. See Pet. Reply 15–19. We are persuaded by Petitioner’s evidence and analysis that the claimed communication control module, when it is given the broadest reasonable construction, would have been obvious in view of DeLorme’s Interface and Interaction Bus 209. We, thus, determine that DeLorme’s TRIPS system teaches the claimed communications control module that is an interface between the hospitality applications and any other communications protocol.” slip op. at 30
Patent outcomesUS 6,871,325 unpatentableClaim construction§ 103 obviousnesscites KSRPatents in suitUS 6,871,325 - Apple, Inc. / Eventbrite Inc. et al. v. Ameranth, Inc.All claims unpatentablePTAB · Aug 26, 2016 · CBM2015-00082 · APJ Meredith C Petravick · CBM · Final written decision
Claims 11, 13, and 15 are unpatentable under § 103 over DeLorme because the evidence establishes the claimed system features, and secondary considerations do not outweigh the showing.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“To resolve the issues of patentability of the claims over DeLorme, it is not necessary for us to determine whether the broadest reasonable construction of “wireless handheld computing device” requires that the device be held in a single hand or allows for the device to be held in two hands. See Vivid Techs., Inc. v. Am. Sci.& Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (stating that “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”). Regardless, DeLorme explicitly discloses that its wireless communication unit (“WCU”) 907 is handheld. Ex. 1024, col. 72, l. 1 (“WCU 907, typically hand-held 906”), col. 72, l. 31 (“handheld devices equipped with GPS 908”); see also id. at col. 7, l. 34, col. 16, ll. 40–49 (further describing a wireless “handheld” device). Further, DeLorme discloses that WCU 907 could be a personal digital assistant (“PDA”) and describes PDAs as “handheld” wireless devices. Id. at col. 71, l. 61–col. 72, l. 2, col. 75, ll. 33–45; see Ex. 1076, 53:12–25 (testimony of Dr. Weaver indicating that a PDA or smartphone is a wireless hand-held computing device). The ’325 patent describes PDAs as an example of a wireless handheld device. Ex. 1003, col. 13, l. 63. Given this, we determine that it is not necessary for us to determine whether the broadest reasonable construction of “wireless handheld computing device” requires that the device be held in a single hand or allows for the device to be held in two hands.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“Given the above, we determine that the broadest reasonable interpretation, in light of the specification of the ’325 patent, of “hospitality applications” is a sequence of instructions that can be executed on a computer (i.e., a program) and that is designed to assist in the performance of a specific task in the hospitality industry. We are not persuaded by Patent Owner that the hospitality industry excludes travel, tourism, and transportation. However, to resolve the issues of patentability of the claims over DeLorme, it is not necessary for us to construe hospitality industry. See Vivid Techs, 200 F.3d at 803 (stating that “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”). Regardless, DeLorme discloses that TRIPS can be used for buying event tickets and making restaurant or hotel reservations. E.g., see Ex. 1024, col. 21, ll. 8–17, col. 31, ll. 42–51, col. 77, ll. 60–67, Fig. 1B-3. The ’325 patent describes frequent customer ticketing and restaurant reservations as tasks in the hospitality application. Ex. 1003, col. 5, ll. 17–20, claim 5. Patent Owner’s also argues reservations, with regards to claim 13, include hotel reservations. See PO Resp. 14 (“within the hospitality industry e.g. restaurants/hotels and event ticketing”). Given this, we determine that it is not necessary for us to determine whether the broadest reasonable construction of “hospitality applications” excludes tasks performed in the travel, tourism, and transportation industries.” slip op. at 11
- Prior constructionPrior construction not adoptedTerm construed board ownDecided for petitioner
“As an initial matter, we are not persuaded by Patent Owner that we should wholesale adopt the construction of “communications control module” from a previous district court infringement action. The standard for claim construction in a district court infringement action is different than the standard applied by the Board. See In re Morris, 127 F.3d 1048, 1053–54 (Fed. Cir. 1997). In covered business method patent review proceedings, the Board applies the broadest reasonable construction consistent with the specification. 37 C.F.R. § 42.300(b). We determine that the broadest reasonable construction, in light of the specification of the ’325 patent, of “a communications control module . . . wherein the communications control module is an interface between the hospitality applications and any other communications protocol” is a device used as an intermediary in transferring communications to and from the host computer to which it is connected, wherein the device is an interface between the hospitality applications and any other communications protocol. This construction is consistent with the plain language of claims 11 and 13, which requires the communication control module to be an interface between the hospitality applications and any other communications protocol. This construction is also consistent with the description of the communication control module in the specification of the ’325 patent as “a communications control program [that] monitors and routes all communications to the appropriate devices” and as “a single point of entry for all hospitality applications to communicate with one another wirelessly or over the [w]eb.” Ex. 1003, col. 9, ll. 35–36, col. 11, ll. 38–40. This construction, unlike Patent Owner’s proposed construction, does not import extraneous features from the specification of the ’325 patent into the claims. The specification of the ’325 patent describes additional features of the communication control module, such as it is “a layer that sits on top of any communication protocol.” Ex. 1003, col. 11, ll. 40–43. The plain language of claims 11 and 13, however, do not require the claimed communication control module to have such features. If a feature is not necessary to give meaning to what the inventor means by a claim term, it would be “extraneous,” and should not be read into the claim. Renishaw PLC v. Marposs Societa' per Azioni, 158 F.3d 1243, 1249 (Fed. Cir. 1998); E.I. du Pont de Nemours & Co. v. Phillips Petroleum Co., 849 F.2d 1430, 1433 (Fed. Cir. 1988). We, thus, determine that the broadest reasonable construction, in light of the specification of the ’325 patent, of “a communications control module . . . wherein the communications control module is an interface between the hospitality applications and any other communications protocol” is a device used as an intermediary in transferring communications to and from the host computer to which it is connected, wherein the device is an interface between the hospitality applications and any other communications protocol.” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“We are persuaded by Petitioner’s evidence and analysis that the claimed communication control module, when it is given the broadest reasonable construction, would have been obvious in view of DeLorme’s Interface and Interaction Bus 209. As discussed above, the broadest reasonable construction of “a communications control module . . . wherein the communications control module is an interface between the hospitality applications and any other communications protocol” is a device used as an intermediary in transferring communications to and from the host computer to which it is connected, wherein the device is an interface between the hospitality applications and any other communications protocol. DeLorme describes the Interface and Interaction Bus 209 as a device that gives retail users access to TRIPS Subsystem (Ex. 1024, col. 13, ll. 15–41) and depicts it as an interface between retail users 205 and third-party providers at 231 and TRIPS Subsystems 213, 217, 221, and 223 (id. at Fig. 9). DeLorme also describes Main Menu 413 and Interaction Bus 414, which corresponds to the Interface and Interaction Bus 209, as coordinating the responses to alternate input means embedded in specialized TRIPS field or in-vehicle embodiments. Id. at col. 37, ll. 54–65. DeLorme, thus, discloses an intermediary in transferring communications to and from the host computer to which it is connected. DeLorme does not explicitly disclose that the Interface and Interaction Bus 209 is an interface between different communication protocols. DeLorme, however, does describe the Interface and Interaction Bus 209 interfacing with different devices. E.g., see id. at col. 14, l. 66–col. 15, l. 14 (describing different alternative end-user hardware platforms). The different devices would use different communication protocols. See id. at col. 37, ll. 54–56, (describing simplified input or remote queries), col. 14, l. 66–col. 15, l. 13 (describing internet based access); PO Resp. 9 (“third party systems such as POS system devices (clearly which operate with different protocols”), Ex. 1076, 176:17–177:12 (testimony of Dr. Weaver indicating that different devices operate with different protocols). In order for Interface and Interaction Bus 209 to interface with devices using different communication protocols, Interface and Interaction Bus 209 would be configured to interface with different communication protocols or it would be obvious for it to be configured as such, because it is advantageous for TRIPS to interface with different devices. See Ex. 1002 ¶ 447. Patent Owner’s argument that DeLorme’s Interface and Interaction Bus 209 fails to meet this claim element is based upon its proposed construction (see PO Resp. 45–49), which we did not adopt. For example, Patent Owner’ argues that Interface and Interaction Bus 209 is not a software layer that sits on top of a communication protocol. Id. at 45–49. This argument is not persuasive because it is not commensurate with the scope of claim 12, when given its broadest reasonable construction. See Pet. Reply 15–19. We are persuaded by Petitioner’s evidence and analysis that the claimed communication control module, when it is given the broadest reasonable construction, would have been obvious in view of DeLorme’s Interface and Interaction Bus 209. We, thus, determine that DeLorme’s TRIPS system teaches the claimed communications control module that is an interface between the hospitality applications and any other communications protocol.” slip op. at 30
Patent outcomesUS 6,871,325 unpatentableClaim construction§ 103 obviousnesscites KSRPatents in suitUS 6,871,325 - Leggett & Platt, Inc. v. Dreamwell, Ltd.Rehearing deniedPTAB · Jun 29, 2016 · IPR2015-01753 · APJ Barry L Grossman · IPR · Rehearing
The Board denied rehearing of its decision denying institution because Petitioner did not show that the Board abused its discretion or misapprehended or overlooked a matter.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may arise if the decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if an 1 The “statement” to which the Request apparently refers reads: “Petitioner does not cite any persuasive evidence that Kochi achieves any of the asserted advantages of the disclosed alloy without the claimed and disclosed pearlite structure.” Decision 12. unreasonable judgment is made in weighing relevant factors. Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“A patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). It is not enough to show merely that the prior art includes separate references covering each separate limitation in a challenged claim. Unigene Labs., Inc. v. Apotex, Inc., 655 F.3d 1352, 1360 (Fed. Cir. 2011). Rather, obviousness requires the additional showing that a person of ordinary skill at the time of the invention would have selected and combined those prior art elements in the normal course of research and development to yield the claimed invention. Id.” slip op. at 5
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“composition that provided “excellent wire-drawing workability, generating wire insusceptible to wire break, extending die life, increasing a wire-drawing rate thereby enhancing productivity during the manufacturing process, reducing cost, and producing a product, e.g., spring that is less susceptible to breakage.” Id. at 33–34. According to Kochi’s disclosure, however, the benefits on which Petitioner relied for the proffered rationale result from: adequately controlling the requirements for the metal microstructure thereof (the area ratio of the second-phase ferrite, and the pearlite lamellar spacing) and the requirements for the chemical components thereof. Decision 12 (citing Ex. 1002 ¶ 71); see also Ex. 1004 ¶ 41 (disclosing the need to control the area ratio of second-phase ferrite to achieve improved resistance to wire-break). Kochi also discloses that “pearlite is the primary constituent of the metal microstructure.” Ex. 1004 ¶ 43. As stated in the Decision, there was no persuasive evidence that Kochi achieves any of the asserted advantages of the disclosed alloy without the disclosed pearlite lamellar structure. Decision 12. In weighing the evidence, the Decision determined there was no persuasive evidence that it would have been obvious to a person of ordinary skill that the asserted benefits in Kochi can be achieved with an alloy that does not include the metal microstructure of Kochi. Id.” slip op. at 4
§ 103 obviousnesscites KSRPatents in suitUS 8,474,805 - Aisin Seiki Co., Ltd. v. Signal IP, Inc.Rehearing deniedPTAB · Jun 27, 2016 · IPR2016-00366 · APJ Jeremy M Plenzler · IPR · Rehearing
The Board denied rehearing, leaving in place the decision to institute on claims 17 and 21 under Ground 1 and deny institution on Grounds 2–5.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“partes review of claims 17, 21, and 22 (“the challenged claims”) of U.S. Patent No. 6,012,007 (Ex. 1001, “the ’007 patent”). Paper 1 (“Pet.”). In our Decision to Institute (Paper 7, “Decision to Institute” or “Dec.”), we instituted a trial to review the patentability of claims 17 and 21 based on anticipation of those claims by Schousek1 (Ground 1), but denied institution as to Petitioner’s challenges based on obviousness of claims 17 and 21 over Schousek and Fu2 (Ground 2), claim 22 over Schousek, Fu, and Cashler3 (Ground 3), claims 17 and 21 over Blackburn4, JP 2585, and Schousek (Ground 4), and claim 22 over Blackburn, JP 258, Schousek, and Cashler (Ground 5). Dec. 18. Petitioner requests rehearing of the Decision to Institute with respect to Grounds 2 and 3. Paper 9 (“Request” or “Req. Reh’g”). Having considered Petitioner’s arguments, Petitioner’s Request is denied for the reasons provided below.” slip op. at 2
NonePatents in suitUS 6,012,007
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.