- Ceramtec GmbH v. Ceramedic LLCInstitution deniedPTAB · Dec 16, 2015 · IPR2015-01328 · APJ Kristina M Kalan · IPR · Institution
The Board denied institution on claims 1–53 because the ’364 publication was not shown to be prior art under § 102(b).
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“On this record, Petitioner fails to show sufficiently that the claims of the ’584 patent are not entitled to a priority date earlier than September 28, 1999. Pet. 6, 14. The ’364 publication is not available as § 102(b) prior art, and Petitioner is not reasonably likely to prevail at trial on a ground based on that reference.” slip op. at 11
- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“Based on the information presented, we are not persuaded that the first, third, and fifth Taylor factors require that both Petitioner and Petitioner’s Customers must be named as real parties-in-interest. We do not find that totality of evidence, presented at this stage in the proceeding, tips the balance of the Taylor factors in Patent Owner’s favor. In particular, having considered the information presented by both parties at this stage of the proceeding, the record is insufficient to support a finding that the second Taylor factor (“whether a pre-existing substantive legal relationship with the party named in the proceeding justifies binding the third party”) or fourth Taylor factor (“whether the third party exercised or could have exercised control over the proceeding”) are met in this case. Atlanta Gas Light Co., slip op. at 9.” slip op. at 14
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedNot shown unpatentable
“Petitioner’s argument is not persuasive because the challenged claims of the ’584 patent do not recite a specific volume Al2O3 content—and neither the specification nor the prosecution history are shown to limit the plain language of the claims, for example, by disclaimer of subject matter. See Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015) (in arriving at the broadest reasonable interpretation, the Board reads the claim language in light of the specification and the prosecution history); see also Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (“[T]he test for sufficiency is whether the disclosure . . . reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter.” (emphasis added)). Patent Owner has presented claim charts showing where every element of the disputed product and method claims is supported by the specification. Prelim. Resp. 25–33. Together with Patent Owner’s arguments, the claim charts showing where every element of the claims finds support in the specification is persuasive. We are not persuaded that the specification or the prosecution history limits, by disclaimer, the plain language of the claims—which include no express limitation on the Al2O3 content by volume of the sintered product. The standard for disclaimer or disavowal is exacting. See Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1366 (Fed. Cir. 2012). Petitioner relies on Gentry Gallery for the proposition that when the specification expressly states that the invention is of a particular scope, claims broader than the indicated scope lack written description support. Pet. 15. We are not persuaded by Petitioner’s argument that the specification sections it cites—including the two instances in which the 95– 100% range is mentioned5 and the data recited in Examples 1–7—limit the content by volume of Al2O3. Pet. 16–32. We have reviewed the Examples and the cited portions of the specification and are not persuaded that they disavow composites containing less than 95% by volume of Al2O3. The specification describes a number of embodiments by their variables, and describes exemplary ranges associated with the variables, but includes no clear language disclaiming other ranges for those variables. Embodiments” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer not foundDecided for patent owner
“Petitioner’s argument is not persuasive because the challenged claims of the ’584 patent do not recite a specific volume Al2O3 content—and neither the specification nor the prosecution history are shown to limit the plain language of the claims, for example, by disclaimer of subject matter. See Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015) (in arriving at the broadest reasonable interpretation, the Board reads the claim language in light of the specification and the prosecution history); see also Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (“[T]he test for sufficiency is whether the disclosure . . . reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter.” (emphasis added)). Patent Owner has presented claim charts showing where every element of the disputed product and method claims is supported by the specification. Prelim. Resp. 25–33. Together with Patent Owner’s arguments, the claim charts showing where every element of the claims finds support in the specification is persuasive. We are not persuaded that the specification or the prosecution history limits, by disclaimer, the plain language of the claims—which include no express limitation on the Al2O3 content by volume of the sintered product. The standard for disclaimer or disavowal is exacting. See Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1366 (Fed. Cir. 2012). Petitioner relies on Gentry Gallery for the proposition that when the specification expressly states that the invention is of a particular scope, claims broader than the indicated scope lack written description support. Pet. 15. We are not persuaded by Petitioner’s argument that the specification sections it cites—including the two instances in which the 95– 100% range is mentioned5 and the data recited in Examples 1–7—limit the content by volume of Al2O3. Pet. 16–32. We have reviewed the Examples and the cited portions of the specification and are not persuaded that they disavow composites containing less than 95% by volume of Al2O3. The specification describes a number of embodiments by their variables, and describes exemplary ranges associated with the variables, but includes no clear language disclaiming other ranges for those variables. Embodiments” slip op. at 8
Claim construction§ 102 anticipationcites PhillipsPatents in suitUS 6,066,584 - Mylan Pharmaceuticals Inc. v. Astrazeneca ABInstitution deniedPTAB · Dec 9, 2015 · IPR2015-01340 · APJ Robert A Pollock · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1, 2, 4, 6–22, 25–30, 32–37, and 39–42 would have been obvious.
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 . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Upon considering the Petition, Preliminary Response, and Reply, we conclude that Petitioner has not established a reasonable likelihood that it would prevail in showing the unpatentability of any challenged claim of the ’186 patent. Therefore, we deny an inter partes review of the challenged claims of the ’186 patent.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“a personal of ordinary skill would have chosen compound 25 as a lead compound. Accepting that compound 25 is a lead compound, it nevertheless “remains necessary to identify some reason that would have led a chemist to modify a known compound in a particular manner to establish prima facie obviousness of a new claimed compound.” Takeda Chem. Indus., Ltd. v. Alphapharm Pty., Ltd., 492 F.3d 1350, 1357 (Fed. Cir. 2007). Here, we focus on whether the evidence of record supports Petitioner’s contention that one of ordinary skill in the art would have been motivated to replace the 6- carbon cyclohexyl group at the 2-position of compound 25 with a 10-carbon adamantyl moiety. 1. Stability Petitioner points to the stability of compound 25 as an important reason for selecting it as a lead compound. See, e.g., Pet. 25; Reply 3–4. For example, Petitioner argues that Ashworth I teaches the advantages of a large cycloalkyl moiety, such as the cyclohexyl group of compound 25, in promoting both stability (by preventing cyclization of the primary amine) and affinity (by biasing the molecule toward the trans configuration). Pet. 25; see also Ex. 1003 ¶¶ 111–121. Petitioner further argues, however, that one of ordinary skill in the art would have been motivated to substitute the cyclohexyl group of compound 25 with the even larger cycloalkyl adamantyl group taught by Villhauer to increase its stability and potency (affinity).2 Ex. 1003 ¶ 113; Pet. 26. Petitioner does not, however, explain why one of ordinary skill in the art would have sought to further increase the stability of compound 25. In light of the evidence of record, we agree with Patent Owner that such motivation is lacking. Prelim. Resp. 44–47.” slip op. at 7
- Skill levelSkill level petitioner adoptedOther
“Applying this analysis, Petitioner contends that one of ordinary skill in the art1 would have selected Ashworth I compound 25 (“compound 25”) as a lead compound in the development of DP-IV inhibitors “because of its superior combination of potency and stability.” Reply 1 (citing Pet. 24–25). Compound 25 has the structure shown below: Compound 25 comprises a glycyl moiety having a primary amine (NH2), a cyclohexyl group on the β-carbon (2-position) of the glycyl moiety, and a 1 At this stage of the proceeding, we accept Petitioner’s contention that a person of ordinary skill in the art would typically “have an advanced degree (e.g., a Ph.D.) in pharmaceutics, pharmaceutical chemistry, medicinal chemistry or a related field and at least 2-3 years of practical experience in the design of drugs” or less education but considerably more professional experience. Pet. 12; see Prelim. Resp. 31.” slip op. at 6
§ 103 obviousness - Acxiom Corporation v. Phoenix Licensing, LLCInstitution deniedPTAB · Nov 19, 2015 · CBM2015-00134 · APJ Stacey G White · CBM · Institution
The Board denied the petitions because Acxiom did not establish standing as a real party in interest or privy of an entity sued for infringement.
RulingsInstitution decision- PTAB / AIA Trials › Real party in interest / privityInstitution denied rpiDenied
“authority with respect to the defense, settlement, or compromise of any such claim.” Id. As to the Declaration, Brian Williamson, Senior Account Executive for Acxiom’s Gerber Account, declares that it is his “understanding that Gerber sent Acxiom notice of a demand for indemnification for costs and potential liabilities arising from the [patent infringement suits involving the subject patents] referencing the indemnification provision in the Services and Data Agreement.” Ex. 1128 ¶¶ 2, 6. We do not find this evidence to be sufficient to show that Petitioner has standing to bring this Petition. See 37 C.F.R. § 42.304(a) (stating that it is Petitioner’s burden to “demonstrate that the patent for which review is sought is a covered business method patent, and that the petitioner meets the eligibility requirements of § 42.302.”). As Patent Owner points out, “the Petition does not supply the demand for indemnification, Acxiom’s response, or any correspondence regarding indemnification.” Prelim. Resp. 4; cf. General Electric Co. v. Transdata, Inc., Case IPR2014-01380, slip op. at 7–8 (PTAB Apr. 15, 2015) (Paper 34) (an agreement to indemnify as to a specific lawsuit was sufficient evidence of privity). Similarly, the Williamson Declaration does not provide any details as to the purported demand for indemnity nor does it inform us of Petitioner’s view as to the merits of any such demand for indemnity. Nor does Mr. Williamson testify as to whether the Agreement was in force at the relevant time. Thus, Petitioner has not provided evidence sufficient to show that it has an obligation to indemnify Gerber or any other entity that may have been sued for infringement.3 Also, as discussed 3 AAA also is listed as a real party-in-interest. Pet. 3. Petitioner, however, provides no argument or evidence as to why it believes that AAA is a real party-ininterest of Petitioner. Thus, we have no basis to ascertain whether Petitioner may above, Petitioner has not provided evidence sufficient to show what services, if any, Petitioner provides to Gerber. Therefore, Petitioner does not provide us with evidence sufficient to show that Gerber is a real party-in-interest of Petitioner. Also, the heavily redacted Agreement does not provide us with sufficient evidence regarding the relationship between these entities to show that Gerber is a privy of Petitioner sufficient to support Petitioner’s argument for standing. Thus, we do not have sufficient evidence to show that Petitioner has proper standing to bring this Petition. Therefore, we deny Petitioner’s request to institute a covered business method review of the challenged claims. See Changes to Implement Inter Partes Review Proceedings, Post-Grant Review Proceedings, and Transitional Program for Covered Business Method Patents, 77 Fed. Reg. 48,680, 48,709 (Aug. 14, 2012) (Response to Comment 102) (“Facially improper standing is a basis for denying the petition without proceeding to the merits of the decision.”).” slip op. at 5
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Motion to exclude, deniedDenied
“Default Protective Order and moves to seal Exhibits 1128 and 1129, as confidential pursuant to the Default Protective Order. Paper 5, 1. These Exhibits, however, are cited extensively in the Decision. Confidential information relied upon in a decision to grant or deny a request to institute ordinarily will be made public. Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,760 (Aug. 14, 2012). We are not persuaded that there is sufficient reason to depart from that principle. Therefore, Petitioner’s Motion to Seal is denied. Accordingly, we order Exhibits base its standing on its relationship with AAA. See Acxiom Corp. v. Phoenix Licensing, LLC, Case CBM2015-00068, slip. op at 4–6 (PTAB Aug. 11, 2015) (Paper 23). 1128 and 1129 to be UNSEALED forty-five (45) days after the entry date of this decision.” slip op. at 6
Discretionary denialPatents in suitUS 8,234,184 - Acxiom Corporation v. Phoenix Licensing, LLCInstitution deniedPTAB · Nov 19, 2015 · CBM2015-00137 · APJ Stacey G White · CBM · Institution
The Board denied the petitions because Acxiom did not establish standing to seek covered business method review; it did not reach the merits of the challenged claims.
RulingsInstitution decision- PTAB / AIA Trials › Real party in interest / privityDenied
“authority with respect to the defense, settlement, or compromise of any such claim.” Id. As to the Declaration, Brian Williamson, Senior Account Executive for Acxiom’s Gerber Account, declares that it is his “understanding that Gerber sent Acxiom notice of a demand for indemnification for costs and potential liabilities arising from the [patent infringement suits involving the subject patents] referencing the indemnification provision in the Services and Data Agreement.” Ex. 1128 ¶¶ 2, 6. We do not find this evidence to be sufficient to show that Petitioner has standing to bring this Petition. See 37 C.F.R. § 42.304(a) (stating that it is Petitioner’s burden to “demonstrate that the patent for which review is sought is a covered business method patent, and that the petitioner meets the eligibility requirements of § 42.302.”).” slip op. at 5
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Denied
“Default Protective Order and moves to seal Exhibits 1128 and 1129, as confidential pursuant to the Default Protective Order. Paper 5, 1. These Exhibits, however, are cited extensively in the Decision. Confidential information relied upon in a decision to grant or deny a request to institute ordinarily will be made public. Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,760 (Aug. 14, 2012). We are not persuaded that there is sufficient reason to depart from that principle. Therefore, Petitioner’s Motion to Seal is denied. Accordingly, we order Exhibits” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied rpiInstitution denied
“their real parties-in-interest or privies that have been sued or charged with infringement of a “covered business method patent,” which does not include patents for “technological inventions.” AIA §§ 18(a)(1)(B), 18(d)(1); see 37 C.F.R. § 42.302. Of key importance in this case is the requirement that “a person may not file a petition for a transitional proceeding with respect to a covered business method patent unless the person or the person’s real party in interest or privy has been sued for infringement of the patent or has been charged with infringement under that patent.” AIA § 18(a)(1)(B) (emphases added); see 37 C.F.R. § 42.302(a). Regarding this requirement, Petitioner does not allege that it has been charged with or sued for infringement, but instead contends that its” slip op. at 3
Discretionary denialPatents in suitUS 7,890,366 - Acxiom And Gerber v. Phoenix Licensing, LLCInstitution deniedPTAB · Nov 19, 2015 · CBM2015-00139 · APJ Stacey G White · CBM · Institution
The Board denied institution because Acxiom did not show it had standing as a real party in interest or privy of an entity sued for infringement.
RulingsInstitution decision- PTAB / AIA Trials › Real party in interest / privityInstitution denied rpiInstitution denied
“authority with respect to the defense, settlement, or compromise of any such claim.” Id. As to the Declaration, Brian Williamson, Senior Account Executive for Acxiom’s Gerber Account, declares that it is his “understanding that Gerber sent Acxiom notice of a demand for indemnification for costs and potential liabilities arising from the [patent infringement suits involving the subject patents] referencing the indemnification provision in the Services and Data Agreement.” Ex. 1128 ¶¶ 2, 6. We do not find this evidence to be sufficient to show that Petitioner has standing to bring this Petition. See 37 C.F.R. § 42.304(a) (stating that it is Petitioner’s burden to “demonstrate that the patent for which review is sought is a covered business method patent, and that the petitioner meets the eligibility requirements of § 42.302.”). As Patent Owner points out, “the Petition does not supply the demand for indemnification, Acxiom’s response, or any correspondence regarding indemnification.” Prelim. Resp. 4; cf. General Electric Co. v. Transdata, Inc., Case IPR2014-01380, slip op. at 7–8 (PTAB Apr. 15, 2015) (Paper 34) (an agreement to indemnify as to a specific lawsuit was sufficient evidence of privity). Similarly, the Williamson Declaration does not provide any details as to the purported demand for indemnity nor does it inform us of Petitioner’s view as to the merits of any such demand for indemnity. Nor does Mr. Williamson testify as to whether the Agreement was in force at the relevant time. Thus, Petitioner has not provided evidence sufficient to show that it has an obligation to indemnify Gerber or any other entity that may have been sued for infringement.3 Also, as discussed” slip op. at 5
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Motion to exclude, deniedDenied
“Default Protective Order and moves to seal Exhibits 1128 and 1129, as confidential pursuant to the Default Protective Order. Paper 5, 1. These Exhibits, however, are cited extensively in the Decision. Confidential information relied upon in a decision to grant or deny a request to institute ordinarily will be made public. Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,760 (Aug. 14, 2012). We are not persuaded that there is sufficient reason to depart from that principle. Therefore, Petitioner’s Motion to Seal is denied. Accordingly, we order Exhibits” slip op. at 6
Discretionary denialPatents in suitUS 7,860,744 - Acxiom Corporation v. Phoenix Licensing, LLCInstitution deniedPTAB · Nov 19, 2015 · CBM2015-00138 · APJ Stacey G White · CBM · Institution
The Board denied institution because Acxiom did not establish standing as a real party in interest or privy of an entity sued for infringement.
RulingsInstitution decision- PTAB / AIA Trials › Real party in interest / privityInstitution denied rpiInstitution denied
“authority with respect to the defense, settlement, or compromise of any such claim.” Id. As to the Declaration, Brian Williamson, Senior Account Executive for Acxiom’s Gerber Account, declares that it is his “understanding that Gerber sent Acxiom notice of a demand for indemnification for costs and potential liabilities arising from the [patent infringement suits involving the subject patents] referencing the indemnification provision in the Services and Data Agreement.” Ex. 1128 ¶¶ 2, 6. We do not find this evidence to be sufficient to show that Petitioner has standing to bring this Petition. See 37 C.F.R. § 42.304(a) (stating that it is Petitioner’s burden to “demonstrate that the patent for which review is sought is a covered business method patent, and that the petitioner meets the eligibility requirements of § 42.302.”). As Patent Owner points out, “the Petition does not supply the demand for indemnification, Acxiom’s response, or any correspondence regarding indemnification.” Prelim. Resp. 4; cf. General Electric Co. v. Transdata, Inc., Case IPR2014-01380, slip op. at 7–8 (PTAB Apr. 15, 2015) (Paper 34) (an agreement to indemnify as to a specific lawsuit was sufficient evidence of privity). Similarly, the Williamson Declaration does not provide any details as to the purported demand for indemnity nor does it inform us of Petitioner’s view as to the merits of any such demand for indemnity. Nor does Mr. Williamson testify as to whether the Agreement was in force at the relevant time. Thus, Petitioner has not provided evidence sufficient to show that it has an obligation to indemnify Gerber or any other entity that may have been sued for infringement.3 Also, as discussed” slip op. at 5
- ExcludeDenied
“Default Protective Order and moves to seal Exhibits 1128 and 1129, as confidential pursuant to the Default Protective Order. Paper 5, 1. These Exhibits, however, are cited extensively in the Decision. Confidential information relied upon in a decision to grant or deny a request to institute ordinarily will be made public. Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,760 (Aug. 14, 2012). We are not persuaded that there is sufficient reason to depart from that principle. Therefore, Petitioner’s Motion to Seal is denied. Accordingly, we order Exhibits base its standing on its relationship with AAA. See Acxiom Corp. v. Phoenix Licensing, LLC, Case CBM2015-00068, slip. op at 4–6 (PTAB Aug. 11, 2015) (Paper 23). 1128 and 1129 to be UNSEALED forty-five (45) days after the entry date of this decision.” slip op. at 6
Discretionary denialPatents in suitUS 8,738,435 - Acxiom Corporation v. Phoenix Licensing, LLCInstitution deniedPTAB · Nov 19, 2015 · CBM2015-00136 · APJ Stacey G White · CBM · Institution
The Board denied institution because Petitioner did not establish standing to seek covered business method review, failing to show it was a real party-in-interest or privy of a sued entity.
RulingsInstitution decision- PTAB / AIA Trials › Real party in interest / privityInstitution denied rpiInstitution denied
“authority with respect to the defense, settlement, or compromise of any such claim.” Id. As to the Declaration, Brian Williamson, Senior Account Executive for Acxiom’s Gerber Account, declares that it is his “understanding that Gerber sent Acxiom notice of a demand for indemnification for costs and potential liabilities arising from the [patent infringement suits involving the subject patents] referencing the indemnification provision in the Services and Data Agreement.” Ex. 1128 ¶¶ 2, 6. We do not find this evidence to be sufficient to show that Petitioner has standing to bring this Petition. See 37 C.F.R. § 42.304(a) (stating that it is Petitioner’s burden to “demonstrate that the patent for which review is sought is a covered business method patent, and that the petitioner meets the eligibility requirements of § 42.302.”).” slip op. at 5
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Motion to exclude, deniedDenied
“Default Protective Order and moves to seal Exhibits 1128 and 1129, as confidential pursuant to the Default Protective Order. Paper 5, 1. These Exhibits, however, are cited extensively in the Decision. Confidential information relied upon in a decision to grant or deny a request to institute ordinarily will be made public. Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,760 (Aug. 14, 2012). We are not persuaded that there is sufficient reason to depart from that principle. Therefore, Petitioner’s Motion to Seal is denied. Accordingly, we order Exhibits” slip op. at 6
Discretionary denialPatents in suitUS 7,856,375 - Acxiom Corporation / Gerber Life Insurance Company et al. v. Phoenix Licensing, LLCInstitution deniedPTAB · Nov 19, 2015 · CBM2015-00135 · APJ Stacey G White · CBM · Institution
The Board denied institution because Acxiom did not show that Gerber was its real party in interest or privy, leaving Acxiom without CBM standing.
RulingsInstitution decision- PTAB / AIA Trials › Real party in interest / privityInstitution denied rpiDenied
“authority with respect to the defense, settlement, or compromise of any such claim.” Id. As to the Declaration, Brian Williamson, Senior Account Executive for Acxiom’s Gerber Account, declares that it is his “understanding that Gerber sent Acxiom notice of a demand for indemnification for costs and potential liabilities arising from the [patent infringement suits involving the subject patents] referencing the indemnification provision in the Services and Data Agreement.” Ex. 1128 ¶¶ 2, 6. We do not find this evidence to be sufficient to show that Petitioner has standing to bring this Petition. See 37 C.F.R. § 42.304(a) (stating that it is Petitioner’s burden to “demonstrate that the patent for which review is sought is a covered business method patent, and that the petitioner meets the eligibility requirements of § 42.302.”).” slip op. at 5
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Denied
“Default Protective Order and moves to seal Exhibits 1128 and 1129, as confidential pursuant to the Default Protective Order. Paper 5, 1. These Exhibits, however, are cited extensively in the Decision. Confidential information relied upon in a decision to grant or deny a request to institute ordinarily will be made public. Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,760 (Aug. 14, 2012). We are not persuaded that there is sufficient reason to depart from that principle. Therefore, Petitioner’s Motion to Seal is denied. Accordingly, we order Exhibits” slip op. at 6
Discretionary denialPatents in suitUS 6,999,938 - Acxiom Corporation v. Phoenix Licensing, LLCInstitution deniedPTAB · Nov 19, 2015 · CBM2015-00140 · APJ Stacey G White · CBM · Institution
The Board denied institution because Acxiom did not establish standing as a real party in interest or privy of an entity sued for infringement.
RulingsInstitution decision- PTAB / AIA Trials › Real party in interest / privityInstitution denied
“authority with respect to the defense, settlement, or compromise of any such claim.” Id. As to the Declaration, Brian Williamson, Senior Account Executive for Acxiom’s Gerber Account, declares that it is his “understanding that Gerber sent Acxiom notice of a demand for indemnification for costs and potential liabilities arising from the [patent infringement suits involving the subject patents] referencing the indemnification provision in the Services and Data Agreement.” Ex. 1128 ¶¶ 2, 6. We do not find this evidence to be sufficient to show that Petitioner has standing to bring this Petition. See 37 C.F.R. § 42.304(a) (stating that it is Petitioner’s burden to “demonstrate that the patent for which review is sought is a covered business method patent, and that the petitioner meets the eligibility requirements of § 42.302.”).” slip op. at 5
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Motion to exclude, deniedDenied
“Default Protective Order and moves to seal Exhibits 1128 and 1129, as confidential pursuant to the Default Protective Order. Paper 5, 1. These Exhibits, however, are cited extensively in the Decision. Confidential information relied upon in a decision to grant or deny a request to institute ordinarily will be made public. Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,760 (Aug. 14, 2012). We are not persuaded that there is sufficient reason to depart from that principle. Therefore, Petitioner’s Motion to Seal is denied. Accordingly, we order Exhibits” slip op. at 6
Discretionary denialPatents in suitUS 5,987,434 - BLD Services, LLC v. LMK Technologies, LLCAll claims unpatentablePTAB · Nov 18, 2015 · IPR2014-00768 · APJ Sheridan K Snedden · IPR · Final written decision
Claims 9, 10, 13–15, and 27–42 are unpatentable under § 103 over Kiest ’118 and Kiest ’663.
RulingsFinal written decision- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedDecided for patent owner
“as unpatentable 1 or more claims only on a ground raised under section 102 or 103 and only on the basis of prior art consisting of patents or printed publications.” The determination of whether a given reference qualifies as a prior art “printed publication” involves a case-by-case inquiry into the facts and circumstances surrounding the reference’s disclosure to members of the public. In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). To qualify, a document must have been “‘sufficiently accessible to the public interested in the art’” before the critical date. In re Cronyn, 890 F.2d 1158, 1160 (Fed. Cir. 1989) (citation omitted). “A reference is publicly accessible ‘upon a satisfactory showing 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. ITC, 545 F.3d 1340, 1350–51 (Fed. Cir. 2008) (citation omitted).” slip op. at 14
- Skill levelSkill level patent owner adoptedDecided for patent owner
“Sometimes, however, the prior art may reflect an appropriate skill level. Litton Indus. Products, Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163–64 (Fed. Cir. 1985). Such is the case here. See, e.g., Ex. 1002, 1:6–2:28 (discussing methods for repairing damaged pipe lines using liner tubes impregnated with a liquid material capable of curing and hardening and hydrophilic bands); Ex. 1003, 4:9–28 (discussing methods for repairing the juncture of a lateral sewer pipe and a mainline sewer pipe by inverting a preliner tube to a position where a gasket impregnated with grout forms a water tight seal between the preliner tube and the sewer pipes).” slip op. at 18
- Expert testimonyPetitioner expert creditedPatent owner expert creditedOther
“any expert declaration. “The Board expects that most petitions and motions will rely upon affidavits of experts.” Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,763 (Aug. 14, 2012). Especially in complex cases where obviousness is asserted as a ground of unpatentability, “expert testimony may be critical, for example, to establish the existence of certain features in the prior art or the existence (or lack thereof) of a motivation to combine references.” Wyers v. Master Lock Co., 616 F.3d 1231, 1240 n.5 (Fed. Cir. 2010) (citations omitted). But expert testimony is not a per se requirement—where the technology is simple, where the references are easily understandable without the need for expert explanatory testimony, or where the factual inquiries underlying the obviousness determination are not in material dispute, expert testimony, though it might be helpful, may not be indispensable. Allergan, Inc. v. Barr Labs., Inc., 501 F. App’x 965, 972 (Fed. Cir. 2013). In addition, a reason to combine prior art teachings may exist “in the content of the public prior art, in the nature of the problem addressed by the invention, or even in the knowledge of one of ordinary skill in the art.” Princeton Biochemicals Inc. v. Beckman Coulter Inc., 411 F.3d 1332, 1338–39 (Fed. Cir. 2005). And in some cases, “the legal determination of obviousness may include recourse to logic, judgment, and common sense, in lieu of expert testimony.” Wyers, 616 F.3d at 1239. Patent Owner challenges the credibility and qualification of Mr. Fletcher, an expert who submitted a declaration in support of Petitioner’s Reply. See, e.g., Paper 28, 1–2, 4. Petitioner, on the other hand, urges that we ignore the declaration of Mr. Kampbell, an expert for Patent Owner, due to his alleged bias and lack of qualification. Pet. Reply 14 and nn.8–9. Neither party, however, seeks to disqualify the expert for the other side. We, thus, consider the declarations from both Mr. Fletcher and Mr. Kampbell, according proper weight to the testimonies, taking account of the credibility challenges raised by each party. B. Claim Interpretation” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“PO Resp. 15. Thus, Patent Owner appears to argue that the ordinary and customary meaning of the term “gasket” requires the capability to form a compression seal and that Kiest ’663 does not disclose such a “gasket.” We are not persuaded, however. Even if we were to agree with Patent Owner and expressly construe the term “gasket” to require a compression seal capability, which we do not, Patent Owner fails to provide persuasive evidence to demonstrate that the gasket described in Kiest ’663 does not operate under the principles of compression. See Pet. Reply 13 (citing Fletcher Decl. ¶¶ 2324) (indicating why the “gasket” in Kiest ’663, comprising open cell foam filled with rubber-like material, would have an element of compressibility and resiliency). We further conclude that our explicit construction of the term “gasket” is not necessary. It is sufficient to say that Kiest ’663, a reference disclosing a device in the exact field of invention as the ’726 patent, and by the same inventor, expressly uses the term “gasket” to describe an object relied upon by Petitioner to meet the “gasket” element of the challenged claims. We determine that no explicit construction of any specific claim term is necessary to render our decision on patentability of the challenged claims. See, e.g., Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 13
Patent outcomesUS 7,975,726 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,975,726
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.