- Robert Bosch LLC / Daimler AG v. Orbital Australia Pty LtdAll claims unpatentablePTAB · Dec 22, 2016 · IPR2015-01258 · APJ Ken B Barrett · IPR · Final written decision
Claims 1, 2, 5, 9, 10, and 12–14, and 18 are unpatentable as anticipated by Bernhardt or obvious over the stated combinations.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“have at least an undergraduate degree in mechanical engineering or a similar technical field and at least two (2) years of relevant work experience or equivalent advanced education in a field related to engine control technology.” Pet. 3 n.1. Patent Owner adopts, for purposes of this proceeding, Petitioner’s proposed definition of the ordinary artisan. PO 2 In its Preliminary Response, Patent Owner argued that Petitioner failed to meet its burden of establishing Bernhardt as a prior art printed publication. Prelim. Resp. 29, 32. Patent Owner subsequently withdrew its argument and “agree[d] that it will not submit in the IPR2015-01258 proceeding any arguments challenging the admissibility of the Bernhardt Exhibit in a motion to exclude, at the Oral Hearing, or at any other time in the IPR2015-01258 proceeding, including in any appeal of a final written decision.” Paper 22. Resp. 12 n.2. Based on our review of the record, we too adopt Petitioner’s assessment of the level of ordinary skill in the art.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“We do not find Patent Owner’s arguments persuasive. As Petitioner notes (Reply 16), in claim 1, the fuelling rate of at least one cylinder during the period “while said ignition is so retarded” is compared to the fuelling rate during the period “when the engine is operating normally,” a phrase appearing later in the same limitation. This suggests that the retarded ignition state, like the operating normally state, is a condition of the engine’s pertinent cylinder, not a period within a single cycle, e.g., ATDC. See Ex. 1001, col. 3, ll. 22–33 (distinguishing “cylinder(s) operating under ignition retard/high fuelling rate conditions” with other cylinder(s) operating under “normal conditions”). In other words, a particular cylinder during a given cycle is operating either normally or is “so retarded,” according to the claimed method. Patent Owner offers no persuasive argument or evidence that one of ordinary skill in the art would understand the state of being ignition-retarded applies to only the portion of a cycle occurring ATDC, or would understand the claim to require a cylinder, during the same cycle, to be in both a normal operating state (in the BTDC range) and in an ignition-retarded state (in the ATDC range). Cf. Tr. 32:1–23 (counsel for Patent Owner confirming that, before the start of a cycle, the status of being ignition-retarded or operating normally is known). Patent Owner argues that the Board’s preliminary construction renders redundant and superfluous the phrase “while said ignition is so retarded.” PO Resp. 27–29. Patent Owner reasons that the phrase “when the engine is operating normally” already contrasts the fueling rate of the “‘retarded ignition’ state” with the normally operating (“non-retarded ignition”) state thereby rendering redundant and superfluous the phrase “while said ignition is so retarded” if we do not adopt Patent Owner’s proposed construction. Id. We do not find this argument persuasive. That phrase does not, as Patent Owner argues, limit the timing of the “increasing the fuelling rate” step to a period that is a subset of a given cycle, e.g., ATDC. Rather, the “while said ignition is so retarded” phrase requires the “increasing the fuelling rate” step to be performed at the same time as, i.e., “while,” the ignition is retarded pursuant to the “retarding the ignition” step, i.e., in an ignition-retarding condition or state. This is confirmed by the specification, which discusses performing the first two steps of the claim at the same time, explaining that, upon attainment of the desired exhaust temperature, “the engine management system may then cease to effect the ignition retard and high fuelling rate conditions and return the cylinder to normal ignition timing and fuelling rates.” Ex. 1001, col. 5, ll. 24–29. Were the “while said ignition is so retarded” absent from the claim, consistent with Patent Owner’s argument, the method would be practiced in a situation where the ignition was retarded then returned to normal, and thereafter the fueling rate increased relative to that of the normal operating conditions. By contrast, requiring the increasing of the fuelling rate to occur “while said ignition is so retarded” serves the claimed method’s purpose of increasing downstream gas temperatures. See Ex. 1008, 84 (Applicant, during prosecution, attempting to distinguish Morikawa by arguing that the reference “contains no disclosure of increasing the fuelling rate while the ignition is retarded for the purpose of assisting in increasing the exhaust gas temperature, as in the present invention”); id. at 85 (similarly attempting to distinguish two other references because they allegedly “lack disclosure which would have made it obvious to increase the fuelling rate while the ignition is retarded for the purpose of assisting in increasing the exhaust gas temperature”). The phrase “while said ignition is so retarded” is not redundant or superfluous under our preliminary construction.” slip op. at 12
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Patent Owner contends, however, that Bernhardt does not anticipate if we adopt its proposed construction of “while said ignition is so retarded, increasing the fuelling rate” as requiring some fuel to be injected ATDC. PO Resp. 51. Specifically, Patent Owner argues that Bernhardt “necessarily injects all fuel BTDC” and therefore Bernhardt fails to disclose the “increasing the fuelling rate” limitation under Patent Owner’s narrow construction. Patent Owner’s argument is not persuasive because, for the reasons set forth above, the properly construed claims are not as narrow as Patent Owner proposes. See Section II.B. Based on the argument and evidence presented in the Petition and having considered the argument and evidence presented by both parties during the trial, we are persuaded that Petitioner has established, by a preponderance of the evidence, that claims 1, 2, 5, 10, 12, 13, and 18 are anticipated by Bernhardt.” slip op. at 23
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“Patent Owner relies on its arguments concerning the Bernhardt anticipation ground and does not challenge otherwise Petitioner’s contentions regarding these two obviousness grounds. PO Resp. 51; see Tr. 28:24–29:16. We are persuaded by Petitioner’s contentions with respect to these two obviousness grounds based on Bernhardt (Pet. 24–31), and we adopt them as our own. We determine that Petitioner has demonstrated by a preponderance of the evidence that the combination of Bernhardt and Onishi renders obvious claim 9 and that the combination of Bernhardt and Griese renders obvious claim 14.” slip op. at 25
Patent outcomesUS 5,655,365 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites PhillipsPatents in suitUS 5,655,365 - Robert Bosch LLC / Daimler AG v. Orbital Australia Pty LtdAll claims unpatentablePTAB · Dec 22, 2016 · IPR2015-01259 · APJ Ken B Barrett · IPR · Final written decision
Claims 1, 2, 5, 9, 10, 12–14, and 18 are unpatentable as obvious over the instituted combinations of prior art.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“We do not find Patent Owner’s arguments persuasive. As Petitioner notes (Reply 16), in claim 1, the fuelling rate of at least one cylinder during the period “while said ignition is so retarded” is compared to the fuelling rate during the period “when the engine is operating normally,” a phrase appearing later in the same limitation. This suggests that the retarded ignition state, like the operating normally state, is a condition of the engine’s pertinent cylinder, not a period within a single cycle, e.g., ATDC. See Ex. 1001, col. 3, ll. 22–33 (distinguishing “cylinder(s) operating under ignition retard/high fuelling rate conditions” with other cylinder(s) operating under “normal conditions”). In other words, a particular cylinder during a given cycle is operating either normally or is “so retarded,” according to the claimed method. Patent Owner offers no persuasive argument or evidence that one of ordinary skill in the art would understand the state of being ignition-retarded applies to only the portion of a cycle occurring ATDC, or would understand the claim to require a cylinder, during the same cycle, to be in both a normal operating state (in the BTDC range) and in an ignition-retarded state (in the ATDC range). Cf. Tr. 32:1–23 (counsel for Patent Owner confirming that, before the start of a cycle, the status of being ignition-retarded or operating normally is known).” slip op. at 12
- Skill levelSkill level petitioner adoptedDecided for patent owner
“II. ANALYSIS A. Level of Ordinary Skill in the Art Petitioner maintains that a person of ordinary skill in the art “would have at least an undergraduate degree in mechanical engineering or a similar technical field and at least two (2) years of relevant work experience or equivalent advanced education in a field related to engine control technology.” IPR2015-01258 (related case), Paper 3, 3 n.1.2 Patent Owner adopts, for purposes of this proceeding, Petitioner’s proposed definition of the ordinary artisan. PO Resp. 12 n.2. Based on our review of the record, we too adopt Petitioner’s assessment of the level of ordinary skill in the art. 2 Petitioner, in this case, utilizes a slightly different articulation of the level of ordinary skill in the art. See Pet. 3 n.1. The differences do not affect the outcome.” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableUnpatentable
“We are persuaded by Petitioner’s contentions with respect to these three obviousness grounds based on Hitomi and Onishi (Pet. 11–27), and we adopt them as our own. We determine that Petitioner has demonstrated by a preponderance of the evidence that the combination of Hitomi and Onishi renders obvious claims 1, 9, 10, 13, 14, and 18; that the combination of Hitomi, Onishi, and Eichler ’089 renders obvious claim 5; and that that the combination of Hitomi, Onishi, and Takada renders obvious claim 12.” slip op. at 26
Patent outcomesUS 5,655,365 unpatentableClaim construction§ 103 obviousnesscites PhillipsPatents in suitUS 5,655,365 - Apple Inc. v. Smartflash LLCAll claims unpatentablePTAB · Nov 10, 2016 · CBM2015-00131 · APJ Matthew R Clements · CBM · Final written decision
Claims 3–6, 8–14, 16–25, 27–30, and 32–41 are unpatentable under § 101 because they claim an abstract idea without an inventive concept.
RulingsFinal written decision- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionUnpatentable
“We are persuaded that the challenged claims are drawn to a patent- ineligible abstract idea. Specifically, the challenged claims are directed to performing the fundamental economic practice of conditioning and controlling access to content. For example, claim 21 recites “code for storing and accessing the one or more use rules in the use rule memory.” Claim 35 recites “evaluating the use status data using the one or more use rules to determine whether access to the content data item is permitted” and “enabling access to the content data item responsive to a determination that access to the content data item is permitted.” As discussed above, the ’598 patent discusses addressing recording industry concerns of data pirates offering unauthorized access to widely available compressed audio recordings. Ex. 1001, 1:20–55. The Specification explains that these pirates obtain data either by unauthorized or legitimate means and then make the data available over the Internet without authorization. Id. The Specification further explains that once data has been published on the Internet, it is difficult to police access to and use of that data by internet users who may not even realize that it is pirated. Id. The ’598 patent proposes to solve this problem by restricting access to data on a portable data carrier based upon payment validation. Id. at 1:59–2:4. The ’598 patent makes clear that the crux of the claimed subject matter is restricting access to stored data based on supplier-defined access rules and validation of payment. Id. at 1:59–2:15. Although the Specification refers to data piracy on the Internet, the challenged claims are not limited to the Internet. The underlying concept of the challenged claims, particularly when viewed in light of the Specification, is paying for and/or controlling access to content, as Petitioner contends. As discussed further below, this is a fundamental economic practice long in existence in commerce. See Bilski, 561 U.S. at 611.” slip op. at 8
- Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptStep2 no inventive conceptUnpatentable
“2. Inventive Concept “A claim that recites an abstract idea must include ‘additional features’ to ensure ‘that the [claim] is more than a drafting effort designed to monopolize the [abstract idea].’” Alice, 134 S. Ct. at 2357 (quoting Mayo, 132 S. Ct. at 1297). “This requires more than simply stating an abstract idea while adding the words ‘apply it’ or ‘apply it with a computer.’ Similarly, the prohibition on patenting an ineligible concept cannot be circumvented by limiting the use of an ineligible concept to a particular technological environment.” Versata, 793 F.3d at 1332 (citations omitted). Moreover, the mere recitation of generic computer components performing conventional functions is not enough. See Alice, 134 S. Ct. at 2360 (“Nearly every computer will include a ‘communications controller’ and ‘data storage unit’ capable of performing the basic calculation, storage, and transmission functions required by the method claims.”). Petitioner argues that “the [challenged c]laims’ ‘additional features’ recite only well-known, routine, and conventional computer components and activities, which is insufficient to establish an inventive concept.” Pet. Reply 6. We are persuaded that claims 3–6, 8–14, 16–25, 27–30, and 32–41 of the ’598 patent do not add an inventive concept sufficient to ensure that the patent in practice amounts to significantly more than a patent on the abstract idea itself. Alice, 134 S. Ct. at 2355; see also Accenture Global Servs., 728 F.3d at 1344 (holding claims directed to the abstract idea of “generating tasks [based on] rules . . . to be completed upon the occurrence of an event” to be unpatentable even when applied in a computer environment and within the insurance industry). Specifically, we agree with and adopt the rationale articulated in the Petition that the additional elements of the challenged claims are either field of use limitations and/or generic features of a computer that do not bring the challenged claims within § 101 patent eligibility. Pet. 53–73.” slip op. at 13
- ExcludeMotion to exclude, deniedDenied
“Patent Owner has not articulated a persuasive reason for excluding Dr. Kelly’s Declaration. Because Exhibit 1019 relates to the underlying factual issues related to patent eligibility, we are not persuaded that it is irrelevant under FRE 401 and 402. It is within our discretion to determine the appropriate weight to be accorded to the evidence presented, including the weight accorded to expert opinion, based on the disclosure of the underlying facts or data upon which the opinion is based. Our discretion includes determining whether the expert testimony is the product of reliable principles and methods and whether the expert has reliably applied the principles and methods to the facts of the case. See FRE 702. Accordingly, we decline to exclude Exhibit 1019 in its entirety or any paragraph therein.” slip op. at 32
Patent outcomesUS 8,061,598 unpatentable§ 101 eligibilitycites Alice · Mayo · Bilski · EnfishPatents in suitUS 8,061,598 - Google, Inc. / Apple Inc. v. Smartflash LLCAll claims unpatentablePTAB · Nov 10, 2016 · CBM2015-00130 · APJ Jennifer S Bisk · CBM · Final written decision
Claims 3–10, 15–31, and 33 are unpatentable under § 101; claim 22 is also indefinite under § 112.
RulingsFinal written decision- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionUnpatentable
“We are persuaded that the challenged claims are drawn to a patent- ineligible abstract idea. Specifically, the challenged claims are directed to performing the fundamental economic practice of conditioning and controlling access to content. For example, claim 17 recites “code to evaluate the use status data using the use rules data to determine whether access is permitted to the stored data.” Ex. 1001, 27:1–15. As discussed above, the ’221 patent discusses addressing recording industry concerns of data pirates offering unauthorized access to widely available compressed audio recordings. Ex. 1001, 1:20–55. The Specification explains that these pirates obtain data either by unauthorized or legitimate means and then make the data available over the Internet without authorization. Id. The Specification further explains that once data has been published on the Internet, it is difficult to police access to and use of it by internet users who may not even realize that it is pirated. Id. The ’221 patent proposes to solve this problem by restricting access to data on a portable data carrier based upon payment validation. Id. at 1:59–2:4. The ’221 patent makes clear that the crux of the claimed subject matter is restricting access to stored data based on supplier-defined access rules and validation of payment. Id. at 1:59–2:15. Although the Specification refers to data piracy on the Internet, the challenged claims are not limited to the Internet. The underlying concept of the challenged claims, particularly when viewed in light of the Specification, is controlling access to content based upon payment as Petitioner contends. As discussed further below, this is a fundamental economic practice long in existence in commerce. See Bilski, 561 U.S. at 611.” slip op. at 10
- Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptStep2 no inventive conceptUnpatentable
“recite only well-known, routine, and conventional computer components and activities, which is insufficient to establish an inventive concept.” Reply 6. Petitioner adds that “[t]he specification [of the ’221 patent] itself disclaims [the claimed hardware elements] as non-inventive.” Id. (citing Ex. 1001, 4:4–13, 11:28–29, 12:29–32, 13:35–38, 16:46–50, 18:7–17). We are persuaded that claims 3–10, 15–31, and 33 do not add an inventive concept sufficient to ensure that the patent in practice amounts to significantly more than a patent on the abstract idea itself. Alice, 134 S. Ct. at 2355; see also Accenture Global Servs., 728 F.3d at 1344 (holding claims directed to the abstract idea of “generating tasks [based on] rules . . . to be completed upon the occurrence of an event” to be unpatentable even when applied in a computer environment and within the insurance industry). Specifically, we agree with and adopt the rationale articulated in the Petition that the additional elements of the challenged claims are generic features of a computer that do not bring the challenged claims within § 101 patent eligibility. Pet. 49–82; Reply 6–19; ’126 Pet. 25–31; ’126 Reply 8–12.” slip op. at 15
- Disclosure Requirements (§112) › Definiteness (Nautilus)IndefiniteUnpatentable
“Upon consideration of the entire record, we are persuaded sufficiently byPetitioner’s argument that a person of ordinary skill in the art would not know that the antecedent basis for “said use rules” refers back to the “use rules data” introduced in claim 17. Although lack of antecedent basis alone is insufficient to render a claim indefinite, here the lack of antecedent basis introduces ambiguity into the claim. It is unclear whether claim 22 should recite “use rules” or “said use rules data,” rather than “said use rules.” As indicated above, we have construed “use rules” and “use rules data” differently. Accordingly, we are persuaded that claim 22 is amenable to two plausible claim interpretations, and we determine that the phrase “said use rules” does not inform those skilled in the art about the scope of the invention with reasonable certainty and, therefore, is indefinite under 35 U.S.C § 112, ¶ 2. In re Packard, 751 F.3d 1307, 1311 (Fed. Cir. 2014) (affirming Board’s conclusion, in context of ex parte appeal, that claims were indefinite “on grounds that they ‘contain[ ] words or phrases whose meaning is unclear.’”).” slip op. at 32
- ExcludeMotion to exclude, deniedDenied
“Patent Owner has not articulated a persuasive reason for excluding Dr. Tygar’s Declaration. Because Exhibit 1002 relates to the underlying factual issues related to patent eligibility, we are not persuaded that it is irrelevant under FRE 401 and 402. It is within our discretion to determine the appropriate weight to be accorded to the evidence presented, including the weight accorded to expert opinion, based on the disclosure of the underlying facts or data upon which the opinion is based. Our discretion includes determining whether the expert testimony is the product of reliable principles and methods and whether the expert has reliably applied the principles and methods to the facts of the case. See FRE 702. Accordingly, we decline to exclude Exhibit 1002 in its entirety or any paragraph therein.” slip op. at 34
Patent outcomesUS 8,118,221 unpatentable§ 101 eligibility§ 112 disclosurecites Alice · Mayo · Bilski · EnfishPatents in suitUS 8,118,221 - Google, Inc. / Apple Inc. v. Smartflash LLCAll claims unpatentablePTAB · Nov 10, 2016 · CBM2015-00126 · APJ Jennifer S Bisk · CBM · Final written decision
Claims 3–10, 15–31, and 33 are unpatentable under § 101; claim 22 is also indefinite under § 112, ¶ 2.
RulingsFinal written decision- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionUnpatentable
“Petitioner argues that the challenged claims are directed to the abstract idea of “controlling access to something based on validation that payment has been made” (’126 Pet. 21) or “payment for and/or controlling access to data” (Pet. 41). Specifically, Petitioner contends that “each challenged claim is drawn on its face to the concept of payment for and/or controlling access to data.” Pet. 43; see also ’126 Pet. 22 (“challenged claim 3 simply performs four steps inherent in the abstract idea of conditioning access on payment validation.”). We are persuaded that the challenged claims are drawn to a patent- ineligible abstract idea. Specifically, the challenged claims are directed to performing the fundamental economic practice of conditioning and controlling access to content. For example, claim 17 recites “code to evaluate the use status data using the use rules data to determine whether access is permitted to the stored data.” Ex. 1001, 27:1–15.” slip op. at 10
- Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptStep2 no inventive conceptUnpatentable
“132 S. Ct. at 1297). “This requires more than simply stating an abstract idea while adding the words ‘apply it’ or ‘apply it with a computer.’ Similarly, the prohibition on patenting an ineligible concept cannot be circumvented by limiting the use of an ineligible concept to a particular technological environment.” Versata, 793 F.3d at 1332 (citations omitted). Moreover, the mere recitation of generic computer components performing conventional functions is not enough. See Alice, 134 S. Ct. at 2360 (“Nearly every computer will include a ‘communications controller’ and ‘data storage unit’ capable of performing the basic calculation, storage, and transmission functions required by the method claims.”). Petitioner argues that “the [challenged c]laims’ ‘additional features’ recite only well-known, routine, and conventional computer components and activities, which is insufficient to establish an inventive concept.” Reply 6. Petitioner adds that “[t]he specification [of the ’221 patent] itself disclaims [the claimed hardware elements] as non-inventive.” Id. (citing Ex. 1001, 4:4–13, 11:28–29, 12:29–32, 13:35–38, 16:46–50, 18:7–17). We are persuaded that claims 3–10, 15–31, and 33 do not add an inventive concept sufficient to ensure that the patent in practice amounts to significantly more than a patent on the abstract idea itself. Alice, 134 S. Ct. at 2355; see also Accenture Global Servs., 728 F.3d at 1344 (holding claims directed to the abstract idea of “generating tasks [based on] rules . . . to be completed upon the occurrence of an event” to be unpatentable even when applied in a computer environment and within the insurance industry). Specifically, we agree with and adopt the rationale articulated in the Petition that the additional elements of the challenged claims are generic features of a computer that do not bring the challenged claims within § 101 patent eligibility. Pet. 49–82; Reply 6–19; ’126 Pet. 25–31; ’126 Reply 8–12.” slip op. at 15
- Disclosure Requirements (§112) › Definiteness (Nautilus)IndefiniteUnpatentable
“Upon consideration of the entire record, we are persuaded sufficiently byPetitioner’s argument that a person of ordinary skill in the art would not know that the antecedent basis for “said use rules” refers back to the “use rules data” introduced in claim 17. Although lack of antecedent basis alone is insufficient to render a claim indefinite, here the lack of antecedent basis introduces ambiguity into the claim. It is unclear whether claim 22 should recite “use rules” or “said use rules data,” rather than “said use rules.” As indicated above, we have construed “use rules” and “use rules data” differently. Accordingly, we are persuaded that claim 22 is amenable to two plausible claim interpretations, and we determine that the phrase “said use rules” does not inform those skilled in the art about the scope of the invention with reasonable certainty and, therefore, is indefinite under 35 U.S.C § 112, ¶ 2. In re Packard, 751 F.3d 1307, 1311 (Fed. Cir. 2014) (affirming Board’s conclusion, in context of ex parte appeal, that claims were indefinite “on grounds that they ‘contain[ ] words or phrases whose meaning is unclear.’”).” slip op. at 32
- ExcludeMotion to exclude, deniedDenied
“Patent Owner has not articulated a persuasive reason for excluding Dr. Tygar’s Declaration. Because Exhibit 1002 relates to the underlying factual issues related to patent eligibility, we are not persuaded that it is irrelevant under FRE 401 and 402. It is within our discretion to determine the appropriate weight to be accorded to the evidence presented, including the weight accorded to expert opinion, based on the disclosure of the underlying facts or data upon which the opinion is based. Our discretion includes determining whether the expert testimony is the product of reliable principles and methods and whether the expert has reliably applied the principles and methods to the facts of the case. See FRE 702. Accordingly, we decline to exclude Exhibit 1002 in its entirety or any paragraph therein.” slip op. at 34
Patent outcomesUS 8,118,221 unpatentable§ 101 eligibility§ 112 disclosurecites Alice · Mayo · Bilski · EnfishPatents in suitUS 8,118,221 - 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 - PTAB · Sep 30, 2016 · IPR2015-00842 · APJ James P Calve · IPR · Rehearing
The Board denied Wonderland’s rehearing request, leaving in place the finding that claims 1–5 and 8–29 are unpatentable.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW A party challenging a final written decision in a request for rehearing must identify all matters the party believes that the Board misapprehended or overlooked. 37 C.F.R. § 42.71(d). The challenging party bears the burden of showing that the decision should be modified. Id.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“It is well-settled that “a” and “an” mean “one or more” unless a clear intent is evinced to limit those terms to just “one.” Dec. 17. In contrast to Patent Owner’s arguments in this proceeding (Req. 9–11), Patent Owner, in related district court action, repeatedly asserted that the term “an” in claim 8 can mean “one or more.” Ex. 1032, 6–7 (“it is generally accepted in patent parlance that ‘a’ or ‘an’ can mean ‘one or more.’”), 9 (“it is black-letter patent law that ‘an’ means ‘one or more’ in a patent claim.”).” slip op. at 5
Claim constructioncites Phillips - PTAB · Sep 30, 2016 · IPR2015-00841 · APJ James P Calve · IPR · Rehearing
The Board denied Wonderland’s rehearing request and declined to modify the final written decision finding claims 15–29 unpatentable.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW A party challenging a final written decision in a request for rehearing must identify all matters the party believes that the Board misapprehended or overlooked. 37 C.F.R. § 42.71(d). The challenging party bears the burden of showing that the decision should be modified. Id.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“It is well-settled that “a” and “an” mean “one or more” unless a clear intent is evinced to limit those terms to just “one.” Dec. 17. In contrast to Patent Owner’s arguments in this proceeding (Req. 8–9), Patent Owner, in related district court action, repeatedly asserted that the term “an” in claim 8 can mean “one or more.” Ex. 1032, 6–7 (“it is generally accepted in patent parlance that ‘a’ or ‘an’ can mean ‘one or more.’”), 9 (“it is black-letter patent law that ‘an’ means ‘one or more’ in a patent claim.”).” slip op. at 5
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for petitioner
“baby crib, wherein each of the upright tubes has an outer wall that defines an outer contour shape of the upright tube” in claim 15 consistent with the plain language of the claims in light of the ’919 Specification. Claim 15 recites “upright tubes defining corners of the baby crib, wherein each of the upright tubes has an outer wall that defines an outer contour shape of the upright tube.” Ex. 1001, 5:7–9. We found that Bidwell discloses retaining members 22 that satisfy these claimed features. Dec. 42.” slip op. at 27
Claim constructioncites Phillips - 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 - South-Tek Systems, LLC / Potter Electric Co, LLC v. Engineered Corrosion Solutions, LLCRehearing deniedPTAB · Aug 9, 2016 · IPR2016-00136 · APJ Barry L Grossman · IPR · Rehearing
The Board denied the Patent Owner’s rehearing request, finding no abuse of discretion in instituting review of claims 1–9 under the stated obviousness grounds.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“When rehearing a decision on institution, the Board reviews the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may arise if the decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if an unreasonable judgment is made in weighing relevant factors. Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000).” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“issue before the Board regarding the claimed “vent”: “Petitioners conclude that Wood discloses the pressure-based, adjustable, ‘vent positioned within the piping network,’ as recited in claim 1 of the ’700 patent.” DI 9 (citing Pet. 10) (emphasis added). We also stated Petitioner’s argument regarding obviousness of the proposed combination of Viking and Wood: “[i]t would also have been obvious to add a vent operative to vent displaced oxygen while maintaining system pressure, as taught by Wood” to the Viking system. DI 9 (citing Pet. 12) (emphasis added). The Decision was explicit in pointing out that “Petitioners rely on Wood for the recited ‘vent’ in claim 1.” Id. at 11 (citing Pet. 15). Thus, Patent Owner’s assertion of an abuse of discretion based on Viking’s disclosure of an optional accelerator is not persuasive. In the Decision, we determined that the record before us supports Petitioner’s position that it would have been obvious to use a vent, such as 1 Citations are to column:line of the cited patent. disclosed in Wood, to accomplish the venting that “may be necessary,” as stated in Viking. DI 13 (emphasis added). The Decision explained that the rationale for the proposed combination of references was based on background knowledge, inferences, and creative steps that a person of ordinary skill in the relevant technology would employ. Id. at 12.” slip op. at 5
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Decided for petitioner
“statement that there are “substantial similarities between Viking and the disclosed invention.” Req. Reh’g. 8 (citing DI 13). In the context of addressing whether Viking was duplicative of references considered by the PTO during examination of the application that led to issuance of the ’700 patent, the Decision stated, “[a]s pointed out by Petitioners, there is a substantial similarity between Figure 1 of the ’700 patent and portions of its Specification and the disclosure of Viking.” DI 13 (citing Pet. 8–9) (emphasis added). Indeed, there are substantial similarities. For example, Figure 1 of the ’700 patent is shown below, with the figure from Viking immediately below it. Comparing the two figures, there can be no reasonable dispute that these two figures are, in fact, substantially similar, as stated in the Decision. We are not persuaded that the statement in our Decision was an abuse of our discretion.” slip op. at 7
§ 103 obviousnessPatents in suitUS 9,144,700
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