- NHK Seating Of America, Inc. v. Lear CorporationSome claims unpatentablePTAB · Dec 30, 2015 · IPR2014-01026 · APJ Mitchell G Weatherly · IPR · Final written decision
Claims 11, 14, and 17–21 are unpatentable; claim 15 was not shown unpatentable because Wiklund does not disclose its required sequential contact portions.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“Ex. 1001, 5:9–22 (emphasis added). This passage is consistent with interpreting “first manner and second manner” as meaning “any two different ways.” As described in this quoted passage, if either the forward velocity or the trajectory of the headrest, or both changes, then movement in a first and second manner has occurred. For example, if the headrest were to move forward at one velocity and then merely slow down (or speed up) on the same trajectory, then movement would occur in a first and second manner.” slip op. at 8
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Id. at 8:58–9:5 (emphasis added). The emphasized portion of the quotation establishes that Kage’s headrest moves differently at the beginning and end of its path S2'. Namely, Kage’s headrest moves quickly toward the occupant’s head at the beginning of path S2' and more slowly toward the occupant’s head at the end of path S2'.” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“claims 12, 17, 18, and 21 obvious and sets forth the evidence from Wiklund and Humer to support its contentions in detailed claim charts. Pet. 43–46. NHK also proffers Dr. Kent’s testimony to explain the manner in which Wiklund describes the requirements recited in these claims. Ex. 1010¶¶ 60– 69. Claims 12 and 21 depend from claims 10 and 20, respectively, and further recite a “damper connected between the headrest arrangement and the seatback.” Ex. 1001, 13:15–16 (claim 12), 14:26–27 (claim 21). NHK relies upon Humer for its disclosure of a damper as recited in these claims. Pet. 44–46. More specifically, NHK contends that Humer teaches using a damper 118 to improve “energy absorptions” of the Saab SAHR headrest. Pet. 43 (citing Ex. 1007, 7:27–8:4). NHK also contends that Wiklund is directed to the same Saab SAHR headrest. Pet. 43 (citing Ex. 1010 ¶ 60). NHK therefore concludes that an ordinary artisan would have found it obvious to improve Wiklund by adding Humer’s damper between the headrest arrangement and the seatback. Pet. 43–44. NHK contends that an ordinary artisan would have found it obvious to add a damper to Wiklund to “provide ‘some energy absorption to cause more even and controlled contact with the head during impact’ because without the damper 118 ‘the head tends to oscillate after impacting a headrest cushion.’” Id. at 44 (citing Ex. 1007, page 8:1–4; Ex. 1010 ¶¶ 60, 61, and 63).” slip op. at 34
- ExcludeMotion to exclude, deniedDenied
“IV. LEAR’S MOTION TO EXCLUDE We have reviewed Lear’s Motion to Exclude, NHK’s Opposition to the Motion, and Lear’s Reply in support of the Motion. Based on our review, we deny the Motion in all respects for one or both of the following reasons: (1) the Motion is moot because it seeks to exclude evidence not considered or relied upon in rendering this Decision or (2) the Motion addresses issues more appropriate to determining the weight ascribed to the evidence rather than the admissibility of evidence. In rendering this Decision, we determine and ascribe the appropriate weight to all proffered evidence and, when appropriate, comment upon the weight ascribed.” slip op. at 39
Patent outcomesUS 6,655,733 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,655,733 - HTC Corporation / HTC America, Inc. v. Advanced Audio Devices, LLCAll claims unpatentablePTAB · Dec 29, 2015 · IPR2014-01155 · APJ Christopher L Crumbley · IPR · Final written decision
Claims 1, 3, 6, 7, 9, 11, 25, 30, 59, 77, 82, 85, and 117–122 are unpatentable under § 103 over the stated prior-art combinations.
RulingsFinal written decision- Expert testimonyPetitioner expert creditedOther
“Based on the combination of references proposed by HTC, Mr. Schmandt testifies that a person of ordinary skill in the art would have recognized the advantages of Sound Blaster’s functionality, and sought to incorporate those features into Lucente. Ex. 1009 ¶ 240 (“a person of ordinary skill in the art would be motivated to combine a system with the flexibility, portability, and ease of use of Lucente with the audio 30 management capabilities of Sound Blaster”); id. at ¶ 242 (“it would be obvious to design a system with physical (e.g. push-button) controls to carry out the various functions designed by Sound Blaster, particularly in view of Lucente and Ozawa”) (emphasis added). The record reflects that such a modification would not have been outside the level of ordinary skill, which both experts define similarly. Ex. 1009 ¶ 25 (Schmandt: at least a bachelor’s degree in electrical engineering, computer science, or equivalent, and 1–3 years of experience in designing and programming consumer electronic devices); Ex. 2007 ¶ 8 (McAlexander: bachelor’s degree in electrical engineering or computer engineering, and at least two years of experience in the design of audio systems). This level of skill is also reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). AAD’s focus on whether the Sound Blaster hardware sound card could be installed on the Lucente device, or whether the Sound Blaster software could run on Lucente’s operating system, ignores that a person of ordinary skill is a “person of ordinary creativity, not an automaton.” KSR, 550 U.S. at 421. It would not have been outside the level of ordinary skill in the art, as defined by both experts, to modify the device of Lucente to have the functionality described in Sound Blaster—including grouping and ordering songs—as well as the ability to download songs as described in Ozawa. We, therefore, find that a person of ordinary skill in the art would have had reason to combine the disclosures of Sound Blaster, Lucente, and Ozawa, and would have had a reasonable expectation of success in doing so.” slip op. at 30
- ExcludeMotion to exclude, deniedDenied
“Exclude 1. Pursuant to our Rules, a motion to exclude evidence must be filed to preserve any previously-made objections to evidence. 37 C.F.R. § 42.64(c). The motion must identify where in the record the objections were made, and must explain the objections. Id. We note that AAD does not identify where in the record its objections to evidence were made prior to their being the basis of the Motion to Exclude, in violation of Rule 42.64(c). Indeed, the Board is aware of AAD’s prior objections only because they were quoted in HTC’s opposition to the Motion to Exclude. For this reason, AAD’s Motion is procedurally deficient, and may be denied on this basis alone.” slip op. at 25
- Skill levelSkill level board ownDecided for petitioner
“management capabilities of Sound Blaster”); id. at ¶ 242 (“it would be obvious to design a system with physical (e.g. push-button) controls to carry out the various functions designed by Sound Blaster, particularly in view of Lucente and Ozawa”) (emphasis added). The record reflects that such a modification would not have been outside the level of ordinary skill, which both experts define similarly. Ex. 1009 ¶ 25 (Schmandt: at least a bachelor’s degree in electrical engineering, computer science, or equivalent, and 1–3 years of experience in designing and programming consumer electronic devices); Ex. 2007 ¶ 8 (McAlexander: bachelor’s degree in electrical engineering or computer engineering, and at least two years of experience in the design of audio systems). This level of skill is also reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). AAD’s focus on whether the Sound Blaster hardware sound card could be installed on the Lucente device, or whether the Sound Blaster software could run on Lucente’s operating system, ignores that a person of ordinary skill is a “person of ordinary creativity, not an automaton.” KSR, 550 U.S. at 421. It would not have been outside the level of ordinary skill in the art, as defined by both experts, to modify the device of Lucente to have the functionality described in Sound Blaster—including grouping and ordering songs—as well as the ability to download songs as described in Ozawa. We, therefore, find that a person of ordinary skill in the art would have had reason to combine the disclosures of Sound Blaster, Lucente, and Ozawa, and would have had a reasonable expectation of success in doing so.” slip op. at 31
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“In our view, HTC’s proposed analysis better comports with the “expansive and flexible approach” to obviousness set forth by the Supreme Court in KSR. “The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference.” In re Keller, 642 F.2d 413, 425 (CCPA 1981). Our inquiry is, therefore, not “whether the references could be physically combined but whether the claimed inventions are rendered obvious by the teachings of the prior art as a whole.” In re Etter, 756 F.2d 852, 859 (Fed. Cir. 1985) (en banc). Based on the combination of references proposed by HTC, Mr. Schmandt testifies that a person of ordinary skill in the art would have recognized the advantages of Sound Blaster’s functionality, and sought to incorporate those features into Lucente. Ex. 1009 ¶ 240 (“a person of ordinary skill in the art would be motivated to combine a system with the flexibility, portability, and ease of use of Lucente with the audio 30 management capabilities of Sound Blaster”); id. at ¶ 242 (“it would be obvious to design a system with physical (e.g. push-button) controls to carry out the various functions designed by Sound Blaster, particularly in view of Lucente and Ozawa”) (emphasis added). The record reflects that such a modification would not have been outside the level of ordinary skill, which both experts define similarly. Ex. 1009 ¶ 25 (Schmandt: at least a bachelor’s degree in electrical engineering, computer science, or equivalent, and 1–3 years of experience in designing and programming consumer electronic devices); Ex. 2007 ¶ 8 (McAlexander: bachelor’s degree in electrical engineering or computer engineering, and at least two years of experience in the design of audio systems). This level of skill is also reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). AAD’s focus on whether the Sound Blaster hardware sound card could be installed on the Lucente device, or whether the Sound Blaster software could run on Lucente’s operating system, ignores that a person of ordinary skill is a “person of ordinary creativity, not an automaton.” KSR, 550 U.S. at 421. It would not have been outside the level of ordinary skill in the art, as defined by both experts, to modify the device of Lucente to have the functionality described in Sound Blaster—including grouping and ordering songs—as well as the ability to download songs as described in Ozawa. We, therefore, find that a person of ordinary skill in the art would have had reason to combine the disclosures of Sound Blaster, Lucente, and Ozawa, and would have had a reasonable expectation of success in doing so.” slip op. at 30
Patent outcomesUS 7,289,393 unpatentable§ 103 obviousnesscites GrahamPatents in suitUS 7,289,393 - HTC Corporation / HTC America, Inc. v. Advanced Audio Devices, LLCAll claims unpatentablePTAB · Dec 29, 2015 · IPR2014-01154 · APJ Christopher L Crumbley · IPR · Final written decision
Claims 1, 3, 6, 7, 11, 12, 16, 22, 24, 27, 29, 30, 35–37, 43, and 45–47 are unpatentable under § 103; proposed substitute claims 49–65 were denied.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“AAD misunderstands our prior claim construction ruling. We cited the above-quoted portions of the specification to demonstrate that, when the ’403 patentee wished to refer to ordering sound tracks, the terms rearranging or customizing were used—as opposed to the term organizable. Dec. 9. By contrast, we noted that the specification of the ’403 patent does not use the word organizable outside the claims. Id. The claim language itself, therefore, is the best guide to the meaning of the term. As we noted in our Decision, claim 1 requires that the music library is “organizable into a 10 master song list and at least one group of sound tracks.” Ex. 1001, 21:32–33 (emphasis added); Dec. 9. This usage implies that the user must be able to, at the very least, add songs from the music library into groups such as the master song list and the group of sound tracks. We note that AAD’s expert, Mr. McAlexander, agreed with our construction of the term, with a minor caveat discussed below. Ex. 1016, 31:6–32:16 (“The actual context of an arrangement ordering and grouping, I have no problem with that. I think they’re right.”). AAD’s proposed construction, which limits organizable to only the ordering of songs, is not the broadest reasonable interpretation of the claim term.” slip op. at 10
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“b. Analysis of Anticipation by Nathan ’259 Anticipation requires not only that all elements of a claim are disclosed within the four corners of a single prior art reference, but that the elements are “arranged as in the claim.” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008). For the following reasons, we determine that Petitioner has not proven by a preponderance of the evidence that Nathan ’259 teaches all elements of claim 1, and by extension, any of the challenged dependent claims.” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“In our view, HTC’s proposed analysis better comports with the “expansive and flexible approach” to obviousness set forth by the Supreme Court in KSR. “The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference.” In re Keller, 642 F.2d 413, 425 (CCPA 1981). Our inquiry is, therefore, not “whether the references could be physically combined but whether the claimed inventions are rendered obvious by the 37 teachings of the prior art as a whole.” In re Etter, 756 F.2d 852, 859 (Fed. Cir. 1985) (en banc). Based on the combination of references proposed by HTC, Mr. Schmandt testifies that a person of ordinary skill in the art would have recognized the advantages of Sound Blaster’s functionality, and sought to incorporate those features into Lucente. Ex. 1007 ¶ 168 (“a person of ordinary skill in the art would be motivated to combine a system with the flexibility, portability, and ease of use of Lucente with the audio management capabilities of Sound Blaster”); id. at ¶ 170 (“it would be obvious to design a system with physical (e.g. push-button) controls to carry out the various functions designed by Sound Blaster, particularly in view of Lucente and Ozawa”) (emphasis added). The record reflects that such a modification would not have been outside the level of ordinary skill, which both experts define similarly. Ex. 1007 ¶ 25 (Schmandt: at least a bachelor’s degree in electrical engineering, computer science, or equivalent, and 1–3 years of experience in designing and programming consumer electronic devices); Ex. 2003 ¶ 8 (McAlexander: bachelor’s degree in electrical engineering or computer engineering, and at least two years of experience in the design of audio systems). This level of skill is also reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). AAD’s focus on whether the Sound Blaster hardware sound card could be installed on the Lucente device, or whether the Sound Blaster software could run on Lucente’s operating system, ignores that a person of 38 ordinary skill is a “person of ordinary creativity, not an automaton.” KSR, 550 U.S. at 421.” slip op. at 37
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“In cases in which the proffered evidence of commercial success is licenses, rather than sales of products embodying the invention, there is a danger that the licenses may have been taken only because they were cheaper than defending an infringement suit. See EWP Corp. v. Reliance Universal Inc., 755 F.2d 898, 908 (Fed. Cir. 1985). In such situations, nexus between the commercial success and the patent cannot be inferred; rather, “affirmative evidence of nexus” is required. Iron Grip Barbell Co. v. USA Sports, Inc., 392 F.3d 1317, 1324 (Fed. Cir. 2004). In other words, a patent owner must demonstrate “a nexus between the merits of the invention and the licenses of record”; otherwise, the licenses are to be accorded little weight. In re GPAC Inc., 57 F.3d at 1580 (emphasis added). HTC notes that each of the licenses listed by Mr. Keller includes at least two patents that explicitly claim a compact disc recorder, an element not present in the claims of the ’403 patent. Pet. Reply 24. HTC also contends that AAD fails to demonstrate any link between the invention of the ’403 patent and the taking of the license; for example, AAD provides no 27 apportionment of revenues to show the amount attributable to the ’403 patent, as opposed to the other members of the licensed family. Id. We agree with HTC that the evidence provided by AAD does not establish a sufficient link between the merits of the invention claimed in the ’403 patent and the taking of the licenses. Although Mr. Keller notes that some of the provided licenses were taken in situations where there was no pending litigation against the licensee (Ex. 2004 ¶ 9), he does not address whether litigation had been threatened against those parties. We, therefore, cannot determine whether the licenses reflect the commercial value of the invention claimed in the ’403 patent, or whether they were taken merely to avoid the cost of litigation, either pending or threatened. Absent a persuasive showing of nexus, AAD’s evidence of licensing fails to establish commercial success. We conclude that the evidence of objective indicia of nonobviousness is insufficient to overcome the evidence of obviousness over the combined Nathan references.” slip op. at 27
Patent outcomesUS 6,587,403 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites GrahamPatents in suitUS 6,587,403 - HTC Corporation / HTC America, Inc. v. Advanced Audio Devices, LLCAll claims unpatentablePTAB · Dec 29, 2015 · IPR2014-01156 · APJ Christopher L Crumbley · IPR · Final written decision
Claims 1, 2, 14, 20, and 43–47 are unpatentable as obvious over either Nathan ’259 and Nathan ’255, or Sound Blaster, Lucente, Ozawa, and Hawkins.
RulingsFinal written decision- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Court in KSR. “The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference.” In re Keller, 642 F.2d 413, 425 (CCPA 1981). Our inquiry is, therefore, not “whether the references could be physically combined but whether the claimed inventions are rendered obvious by the teachings of the prior art as a whole.” In re Etter, 756 F.2d 852, 859 (Fed. Cir. 1985) (en banc). Based on the combination of references proposed by HTC, Mr. Schmandt testifies that a person of ordinary skill in the art would have recognized the advantages of Sound Blaster’s functionality, and sought to incorporate those features into Lucente. Ex. 1008 ¶ 148 (“a person of ordinary skill in the art would be motivated to combine a system with the flexibility, portability, and ease of use of Lucente with the audio management capabilities of Sound Blaster.”); id. at ¶ 150 (“it would be obvious to design a system with physical (e.g. push-button) controls to carry out the various functions designed by Sound Blaster, particularly in view of Lucente and Ozawa”) (emphasis added). The record reflects that such a modification would not have been outside the level of ordinary skill, which both experts define similarly. Ex. 1008 ¶ 25 (Schmandt: at least a bachelor’s degree in electrical engineering, computer science, or equivalent, and 1–3 years of experience in designing and programming consumer electronic devices); Ex. 2007 ¶ 8 (McAlexander: bachelor’s degree in electrical engineering or computer engineering, and at least two years of experience in the design of audio systems). This level of skill is also reflected by the prior 30 art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). AAD’s focus on whether the Sound Blaster hardware sound card could be installed on the Lucente device, or whether the Sound Blaster software could run on Lucente’s operating system, ignores that a person of ordinary skill is a “person of ordinary creativity, not an automaton.” KSR, 550 U.S. at 421. It would not have been outside the level of ordinary skill in the art, as defined by both experts, to modify the device of Lucente to have the functionality described in Sound Blaster—including grouping and ordering songs—as well as the ability to download songs as described in Ozawa and the on/off control of Hawkins. We, therefore, find that a person of ordinary skill in the art would have had reason to combine the disclosures of Sound Blaster, Lucente, Ozawa, and Hawkins and would have had a reasonable expectation of success in doing so.” slip op. at 30
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“licenses, rather than sales of products embodying the invention, there is a danger that the licenses may have been taken only because they were cheaper than defending an infringement suit. See EWP Corp. v. Reliance Universal Inc., 755 F.2d 898, 908 (Fed.Cir.1985). In such situations, nexus between the commercial success and the patent cannot be inferred; rather, “affirmative evidence of nexus” is required. Iron Grip Barbell Co. v. USA Sports, Inc., 392 F.3d 1317, 1324 (Fed. Cir. 2004). In other words, a patent owner must demonstrate “a nexus between the merits of the invention and the licenses of record,” otherwise the licenses are to be accorded little weight. In re GPAC Inc., 57 F.3d at 1580 (emphasis added). HTC notes that each of the licenses listed by Mr. Keller includes at least two patents that explicitly claim a compact disc recorder, an element not present in the claims of the ’502 patent. Pet. Reply 23–24. HTC also contends that AAD fails to demonstrate any link between the invention of the ’502 patent and the taking of the license; for example, AAD provides no apportionment of revenues to show the amount attributable to the ’502 patent, as opposed to the other members of the licensed family. Id. at 23. 19 We agree with HTC that the evidence provided by AAD does not establish a sufficient link between the merits of the invention claimed in the ’502 patent and the taking of the licenses. Although Mr. Keller notes that some of the provided licenses were taken in situations where there was no pending litigation against the licensee (Ex. 2004 ¶ 9), he does not address whether litigation had been threatened against those parties. We, therefore, cannot determine whether the licenses reflect the commercial value of the invention claimed in the ’502 patent, or whether they were taken merely to avoid the cost of litigation, either pending or threatened. Absent a persuasive showing of nexus, AAD’s evidence of licensing fails to establish commercial success.” slip op. at 19
- ExcludeMotion to exclude, deniedDenied
“Blaster is not offered for a hearsay purpose. As a prior art reference, Sound Blaster is offered to show what information it would have conveyed to a person of ordinary skill in the art; the truth of the contents of Sound Blaster is not relevant to this inquiry. See EMC Corp. v. Personal Web Techs., LLC, Case IPR2013-00085, slip op. at 66 (PTAB May 15, 2014) (Paper 73) (“a prior art document submitted as a ‘printed publication’ under 35 U.S.C. § 102(b) is offered simply as evidence of what it described, not for proving the truth of the matters addressed in the document.”); see Joy Techs., Inc. v. Manbeck, 751 F. Supp. 225, 233 n.2 (D.D.C. 1990), aff’d, 959 F.2d 226 (Fed. Cir. 1992)). Finally, AAD seeks to exclude Sound Blaster as not authenticated, as there is no evidence to authenticate the reference “except the inadmissible Miller Declaration.” Mot. Exclude 8. We have not found the Miller Declaration to be inadmissible, however. To authenticate an item of evidence, a party must “produce evidence sufficient to support a finding that the item is what the proponent claims it is.” Fed. R. Evid. 901(a). The Miller Declaration provides sufficient evidence to support the finding that Sound Blaster is what HTC contends it to be: a document distributed to the public with the commercially available version of the Sound Blaster 16 Audio Card. For these reasons, even if AAD’s Motion to Exclude were procedurally proper, we would not exclude Exhibit 1004, including the Sound Blaster reference, from the record.” slip op. at 27
Patent outcomesUS 7,817,502 unpatentable§ 103 obviousnesscites GrahamPatents in suitUS 7,817,502 - Fca US LLC v. Jacobs Vehicle Systems, Inc.Institution deniedPTAB · Dec 18, 2015 · IPR2015-01337 · APJ James A Tartal · IPR · Institution
Institution was denied because FCA did not show a reasonable likelihood that Bowman anticipates claim 1 or that the asserted grounds render any challenged claim unpatentable.
RulingsInstitution decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“gallery.” Pet. 14. Patent Owner states that it disagrees, and instead proposes a meaning of “more than one solenoid valve connected to permit fluid flow into and out of the hydraulic circuit.” Prelim. Resp. 11. Patent Owner does not explain how its proposed construction differs substantively from Petitioner’s proposed construction. We determine no express construction is necessary for purposes of this Decision. 2. “normal mode”and “transient mode” Patent Owner also proposes constructions for both “normal mode” and “transient mode.” Prelim. Resp. 12–13. We determine no express construction is necessary for purposes of this Decision.” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review of claims 1, 3, 5–7, 13–22, 31, 35–50, and 53–56 of U.S. Patent No. 8,776,738 B2 (“the ’738 patent”). Paper 2 (“Pet.”). Patent Owner, Jacobs Vehicle Systems, Inc., filed a Preliminary Response. Paper 6 (“Prelim. Resp.”). We have jurisdiction under 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the Petition and the Preliminary Response, we conclude the information presented does not show there is a reasonable likelihood that Petitioner would prevail in showing the unpatentability of the challenged claims. Accordingly, we do not authorize an inter partes review to be instituted as to the ’738 patent.” slip op. at 2
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“Of particular concern is the limitation requiring “a plurality of solenoid valves in hydraulic communication with the hydraulic circuit.” There is no dispute that the claim requires more than one solenoid valve connected to a single hydraulic circuit. Petitioner identifies hydraulic passage 102 of Bowman as corresponding to the claimed “hydraulic circuit.” Pet. 15. Petitioner, however, fails to explain how passage 102 of Bowman (or any other passage) is connected to a plurality of solenoid valves, as further required by claim 1. A petition must identify how the construed claim is unpatenable, as well as the relevance of the evidence to the challenge raised. 37 C.F.R. § 42.104 (b). Although Petitioner provides a string citation in its claim chart to various statements in Bowman purportedly corresponding to the claimed “plurality of solenoid valves in hydraulic communication with the hydraulic circuit,” Petitioner offers no explanation relating the citations to the claimed language, and none is readily apparent. See Pet. 19–20. “A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987) (citation omitted). Although figure 4 of Bowman shows a plurality of cartridge-type hydraulically actuated valve control systems mounted serially, Bowman expressly states that each cartridge module is “a complete unit in and of itself.” Petitioner has not shown that Bowman discloses “a plurality of solenoid valves in hydraulic communication with the hydraulic circuit,” as required by claim 1.” slip op. at 10
- Expert testimonyPetitioner expert discountedOther
“Although Petitioner does not direct us to any supporting expert testimony, we have also reviewed the Declaration of John J. Moskwa submitted along with the Petition, and find that it provides virtually no support for Petitioner’s contention that claim 1 is anticipated by Bowman beyond the statement that the declarant agrees “that the claim chart shows where every element of claim 1 of the ’738 Patent is disclosed in Bowman.” Ex. 1002, ¶ 28. We afford such conclusory testimony little weight.” slip op. at 10
Claim construction§ 102 anticipationPatents in suitUS 8,776,738 - Seagate Technology (US) Holdings, Inc. / Seagate Technology LLC v. Enova Technology Corp.All claims unpatentablePTAB · Dec 18, 2015 · IPR2014-01449 · APJ Timothy J Goodson · IPR · Final written decision
Claims 40–53 are unpatentable under § 103 over Sullivan and SATA Standard because the combination renders the claimed cryptographic SATA operations obvious.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“The Decision to Institute did not provide express constructions for any of the terms of the challenged claims, noting that “claim terms need only be construed ‘to the extent necessary to resolve the controversy.’” Dec. to Inst. 6–7 (quoting Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011)). Patent Owner’s Response does not propose any claim constructions, asserting instead that “even under the claim constructions proposed by Petitioner[], the references of record do not render any claims of the ’057 Patent obvious.” PO Resp. 15. The parties’ arguments in this proceeding following the Decision to Institute do not provide any reason to deviate from the claim construction approach in the Decision to Institute. Based on the record before us, we need not provide express constructions for any claim terms.” slip op. at 6
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the field of this invention would have had at least a bachelor’s degree in electrical engineering, computer engineering, or computer science, and two years of experience in a relevant field, or equivalent knowledge and experience. Pet. 4 (citing Ex. 1006 ¶¶ 16–17). Patent Owner’s Response does not address specifically the level of ordinary skill in the art. We note, however, that Patent Owner’s declarant, Dr. Thomas M. Conte, testifies that because the claims of the ’057 patent describe a cryptographic apparatus, which is a computer hardware device, one of ordinary skill in the art should have experience with the hardware of devices and systems. Ex. 2061 ¶ 18. Dr. Conte’s testimony does not persuade us that hardware encryption experience is a prerequisite for the level of ordinary skill, such that persons having a software background or a degree in computer science are excluded from being persons of ordinary skill. See id. Although the Specification of the ’057 patent and the challenged claims disclose a “cryptographic device,” the ’057 patent teaches that “[t]he above-described embodiments may be implemented in hardware and/or software form, as desired.” Ex. 1001, 12:10–11. After considering the evidence of record, we conclude that a person of ordinary skill in the art at the time of the ’057 patent would have had a bachelor’s degree in electrical engineering, computer engineering or computer science, and at least two years of experience.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“adequately for the disclosure in Sullivan that is broader and more general. For example, in the Background section, Sullivan describes that “[a] system is needed whereby transmission of data in a serial channel can be accomplished in-line and in real time, where the data and control information can be treated separately for both encryption purposes and for handling various types of attacks and covert processes embedded in or achieved by the transmitted information.” Ex. 1002 ¶ 6 (emphasis added); see also id. at ¶ 10 (“The control information, which may include commands and status information, can be subjected to filtering and rejecting operations by the encryption unit, to pass through only a predetermined set of commands and/or to reject a predetermined set of commands.”); id. at ¶ 55 (“[T]he filter module 730 may be configured as an information or command pass filter or blocking filter for any control information that may be included in the packet 700, whether or not in the header.”) (emphasis added); id. at claim 9 (“transmitting the encrypted information with the associated control information to the second device, where the associated control information is transmitted in an unencrypted form”). In view of these teachings, we agree with Petitioner that “Sullivan describes making encryption decisions based on the type of data and not simply the location of the data (e.g., in a header or in a payload).” Reply 8. Further, a skilled artisan would not have understood Sullivan’s teaching to strip out the header and encrypt the payload as a prescription for how each individual FIS should be treated when Sullivan is applied to a SATA device, because that encryption strategy would yield a non-functioning SATA device. It is undisputed that implementing Sullivan in a SATA device in this manner would result in a non-functional system, because doing so would result in encryption of payloads that should not be encrypted, thereby rendering the FISes unintelligible to the host or the peripheral device intended to process them. See PO Resp. 25; Reply 9. As summarized above, Patent Owner argues that this non-functionality demonstrates a flaw in Petitioner’s proposed combination. See PO Resp. 25. Yet, we view Patent Owner’s argument regarding non-functionality as detracting from the persuasiveness of Patent Owner’s contentions regarding how a skilled artisan would have understood Sullivan’s disclosure. In particular, it strains credulity that a skilled artisan would apply Sullivan in the manner Patent Owner urges when doing so would result in a non-functioning device. We agree with Petitioner that an artisan having ordinary skill and creativity would not have applied Sullivan’s teachings in such a simplistic and plainly counterproductive fashion. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) (“A person of ordinary skill is also a person of ordinary creativity, not an automaton.”); see also Reply 9–10 (citing In re Sovish, 769 F.2d 738, 743 (Fed. Cir. 1985); Scanner Techs. Corp. v. ICOS Vision Sys. Corp., 528 F.3d 1365, 1382 (Fed. Cir. 2008)). We further agree with Petitioner that a skilled artisan would have recognized that “Sullivan teaches a flexible cryptographic device that can be implemented using a variety of data transfer protocols . . . and is designed to ‘accommodate[] whatever standard is used.’” Reply 8–9 (quoting Ex. 1002 ¶ 50).” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“However, because Sullivan describes the rejection feature as alternative or additional, we find Dr. Long’s description of how a skilled artisan would have understood these teachings to be more credible. Dr. Long testifies that Sullivan’s paragraph 55 “reminds us there’s a number of ways to do this, look-up table, formula logic, whatever. It discloses the idea of you can pass some subset of commands to the encryption unit, and you can block other set of commands. It’s silent on the intersection of those two sets.” Ex. 2060, 74:3–8. Elaborating further, Dr. Long testifies: 3 Sullivan does not state expressly what becomes of the information that is rejected. Dr. Conte testifies that it is “rejected and filtered out.” Ex. 2061 ¶ 122. Dr. Long appears to be in agreement that information blocked by the rejection feature is not processed further. See Ex. 2060, 74:17–18 (testifying that “[t]here is a set of things that are blocked, which means they don’t go anywhere”). There’s a set of things that are passed to the encryption unit. There is a set of things that are blocked, which means they don’t go anywhere. And a person of ordinary skill in the art would think this through, but there could be things that are in neither set. Id. at 74:16–21. In other words, Sullivan’s description of the filter module leaves open the possibility that some of the information will be neither passed for encryption nor rejected and discarded. Thus, Sullivan’s description of the filter module does not criticize, discredit, or otherwise discourage a skilled artisan from causing certain FISes to bypass the cryptographic engine. Moreover, we agree with Petitioner that passing a PIO Setup FIS without encrypting it would have been obvious to a skilled artisan implementing Sullivan’s teachings in view of SATA Standard. As discussed above in the context of the “associated with” limitation, we agree with Petitioner that Sullivan teaches that control information should not be encrypted or decrypted. For example, Sullivan’s claim 9 describes “transmitting the encrypted data with the associated control information to the second device, where the associated control information is transmitted in an unencrypted form.” Ex. 1002, claim 9. Further, Dr. Long testifies that a skilled artisan would have known that the PIO setup FIS contains control information. Ex. 1006 ¶ 82, 179. Accordingly, we find persuasive Petitioner’s argument that it would have been obvious to pass a PIO Setup FIS from device interface to host interface without encrypting it.” slip op. at 24
Patent outcomesUS 7,900,057 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,900,057 - Petroleum Geo-Services Inc. / Ion Geophysical Corporation And Ion International S.A.R.L. v. Westerngeco LLCAll claims unpatentablePTAB · Dec 15, 2015 · IPR2014-00689 · APJ Scott A Daniels · IPR · Final written decision
Claims 1, 2, 18, and 19 are unpatentable: claims 1 and 18 are anticipated by Workman, and all four claims are obvious over Workman.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“In the feather angle control mode, the global control system 22 attempts to keep each streamer in a straight line offset from the towing direction by a certain feather angle. The feather angle could be input either manually, through use of a current meter, or through use of an estimated value based on the average horizontal bird forces. Only when the crosscurrent velocity is very small will the feather angle be set to zero and the desired streamer positions be in precise alignment with the towing direction. Ex. 1001, 10:29–37. Although this passage indicates that there may be various ways, e.g. estimation, manual input, current measurement, to input or determine the feather angle, it is clear that the “feather angle” itself exists as a value used by global control system 22 to control the streamers positions.” slip op. at 11
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Control Mode Patent Owner’s arguments with respect to anticipation each turn around an erroneous claim construction of “control mode.” Patent Owner argues that different from the claimed control modes which actively control the streamers, “Workman is concerned with noise minimization rather than generating noise through actively controlling streamer positioning devices.” PO Resp. 19. The correct interpretation of “control mode” does not include any aspect, state or condition that requires “active control.” We construed “control mode” to mean “operational state.” Whether Workman’s network solution system 10 or streamer control processor 40 does, or does not disclose “active control” in any of its operations is irrelevant because we are not persuaded that “control mode” in either claim 1 or 18 includes “active control.” Turning to Patent Owner’s next argument that “control mode” is “a goal-oriented automated configuration,” not disclosed by Workman, this argument is similarly unpersuasive. PO Resp. 19–20. As discussed above, the appropriate claim construction of “control mode” is “operational state.” Workman clearly discloses a computerized streamer control system having an operational state, being “a network solution system 10 for determining the position of the streamer cables 13 and seismic sources 12, and a streamer cable controller 16 for controlling the streamer positioning devices.” Ex. 1004, 3:40–43. To the extent that Patent Owner’s explanation of a control mode having “a goal-oriented automated configuration” is even relevant to the comparison with Workman we are still not apprised of a substantive difference between the claims and the prior art. Workman discloses that “the network solution system 10 implements a Kalman filter solution on the signals it receives . . . output[ing] real time streamer cable shapes, streamer cable positions, and streamer cable separations.” Id. at 3:46–51. A Kalman filter is explicitly part of the automated computer network solution system 10 performing data acquisition and determination of various output values, directed to the goal of controlling the streamers and their separations from one another. Workman therefore discloses an operational state of a computer system that, as specifically stated by Workman, determines streamer shapes, positions, and separations. Streamer Separation Mode As discussed above, we are not persuaded that streamer separation mode is properly defined as having a streamer spacing “set and maintain[ed]” as Patent Owner promotes. The appropriate claim construction of “streamer separation mode” is “a mode to control separation, or spacing, between streamers.” Patent Owner contends that under the proper definition the threshold spacing parameters disclosed by Workman “fails to control any separation or spacing (or set and maintain separation or spacing, for that matter).” PO Resp. 22 (citing Ex. 2042 ¶¶ 193–194.) Patent Owner’s own arguments, however, contradict this position. Patent Owner states that “Workman’s system is purely reactionary; it lies in wait and attempts to reposition the streamers only in the event that a certain threshold value is violated.” Id. This argument asserts, in effect, the operational state occurring under certain conditions, e.g. violation of a spacing threshold, the streamer is “repositioned” to control separation or spacing between streamers as the proper construction elucidates. Indeed Dr. Triantafyllou’s testimony supports our understanding where he states that “Workman does not move the streamers unless it violates a minimum threshold.” Ex. 2042 ¶ 194. Moreover, the fact that an additional parameter such as a high noise level might restrain the system from repositioning the streamers even if the threshold is exceeded makes no difference in our understanding that under appropriate operating conditions Workman controls streamer separation. PO Resp. 23. Patent Owner argues further that “[t]here is also no teaching in Workman of how much to correct, or where the streamers will end up once the violation is remedied.” Id. This is not persuasive because neither claim 1 nor claim 18, nor the proper construction of “streamer separation mode” includes any definition or limitation relating to a magnitude of correction or control. In addition to disclosing an array of streamers and streamer positioning devices, the evidence shows that Workman expressly teaches an operational state of a streamer control system that is no different than the claimed “control system configured to use a control mode selected from . . . a streamer separation mode” as recited in 18, or as called for in claim 1, “controlling the streamer positioning devices with a control system configured to operate in one or more control modes selected from . . . a streamer separation mode.” We are persuaded by the complete record before us that Petitioner has shown by a preponderance of the evidence that each of the limitations of independent claims 1 and 18 are disclosed by Workman.” slip op. at 21
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentableUnpatentable
“The question of obviousness in this proceeding for claims 2 and 19 rests on whether Dr. Evans has provided a persuasive articulated reasoning based on rational underpinnings to support the contention that one of ordinary skill in the art having familiarity with the design and operation of marine seismic surveys, seismic survey arrays including sensors such as hydrophones, streamers, streamer positioning devices and the associated electronic equipment, would have modified Workman to use a feather angle to control streamer positioning. Without this, Petitioner’s contentions would therefore appear to be the result of hindsight analysis as Patent Owner asserts. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), (cited with approval in KSR, 550 U.S. at 418.) Dr. Evans testifies persuasively that during collection of seismic data it was important to attempt to achieve a fairly consistent and straight streamer array behind the boat towing the array and along the plotted survey route, or line, and that maintaining “uniform streamer separation along the course of a planned survey line was a predictable solution to a problem that had been known in the art, because it would lead to a collection of the data at set streamer separations along the planned and desired survey line.” Ex. 1002 ¶ 146. Dr. Evans also testifies persuasively that streamer feathering was a known factor in seismic surveys where currents forced the streamers out of alignment behind the boat and “a marine seismic surveyor must be prepared to correct the recorded data where streamers are feathered and data collection does not follow the predetermined survey path.” Id. Based on this, Dr. Evans states that in order to optimize data collection, “a person of ordinary skill would have been motivated to, at minimum, set and maintain the streamers at a zero degree feather angle offset.” Id. at ¶ 149. What is not immediately clear from Petitioner’s argument is why prescribing a specific offset “feather angle” value to the streamers positioning determination system would have been apparent to one of skill in the art. But to this point, Dr. Evans directs us to Workman for evidence that it was a “well-known problem that the noise produced by streamer positioning devices can reduce seismic data quality in certain situations.” Id. at ¶ 150 (citing Ex. 1004, 1:62–2:9). We further ascertain from Dr. Evans testimony that when streamers are offset from the line of survey for instance by five degrees, “[i]n this situation, attempting to return the streamers to a zero degree feather angle against the current may generate hydrophone noise that adversely affects data quality.” Id. Based on these evidentiary underpinnings, Dr. Evans reasons that A person of ordinary skill would understand that it may be more desirable to maintain the streamers at a constant two degree feather angle than to return the streamers to the zero degree feather angle position. It was well-known to persons of ordinary skill that maintaining a straight and constant feather angle—even if non-zero—would produce more reliable seismic data than data retrieved from a cable that was not set and maintained in a straight configuration. Id. This reasoning is persuasive because it explains why one of ordinary skill in the art would have been motivated to use a specific feather angle value to determine streamer positioning apart from that imparted by a crosscurrent (five degrees) and different also from the streamers being repositioned to an alignment straight behind the boat towing the array i.e. zero degrees. In this scenario, by moving the streamers from five degrees, to a two degree feather angle, the data collection quality would be better and the noise generated by the SPD’s would not be as great as if the streamers were returned to the zero degree offset straight behind the boat and aligned with the plotted survey line.” slip op. at 30
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“Patent Owner argues that the Declaration of Robin Walker is firsthand evidence of industry praise “and how WesternGeco’s revolutionary lateral steering technology satisfied a longfelt need in the industry (Ex. 2077, ¶¶ 12–37) and ultimately contributed to billions of dollars in revenue (Ex. 2077, ¶¶ 47–51).” PO Resp. 48. Patent Owner, however, does not explain adequately how the Q-Marine product allegedly embodies the challenged claims in the ’520 patent. Mr. Walker states specifically that [t]hrough its provision of WesternGeco’s patented lateral steering technology, Q-Marine satisfied a significant, previously unmet need in the industry for better quality data and more cost-effective surveys by offering numerous benefits, including those detailed below. Ex. 2077 ¶ 12. The benefits described in the subsequent paragraphs of Mr. Walker’s Declaration are apparently based on lateral steering technology, with the result that “better data quality could be achieved without the risk of costly downtime and damage due to streamer tangling.” Id. at ¶ 15. It may be that Q-Marine provides a better, faster, more reliable and commercially successful 4D survey, but any commercial success enjoyed by the Q-Marine product is relevant only if the challenged claims are shown to embody those products. Patent Owner has not made out that critical showing. See In re DBC, 545 F.3d 1373, 1384 (Fed. Cir. 2008) (finding no nexus, absent evidence that “the driving force behind [the allegedly successful product’s sales] was the claimed combination”); Ormco Corp. v. Align Technology Inc., 463 F.3d 1299, 1311–12 (Fed. Cir. 2006) (requiring a “nexus between the claimed invention and the commercial success”); Huang, 100 F.3d at 140 (requiring proof that sales were a “direct result of the unique characteristics of the claimed invention”). In the alternative, Patent Owner’s evidence of commercial success does not outweigh the strong showing of obviousness made out by Petitioner in view of Workman. See Sud-Chemie, Inc. v. Multisorb Techs., Inc., 554 F.3d 1001, 1009 (Fed. Cir. 2009) (“evidence of unexpected results and other secondary considerations will not necessarily overcome a strong prima facie showing of obviousness”). Accordingly, the alleged commercial success of the Q-Marine product does not support a conclusion of nonobviousness of the challenged claims in this case.” slip op. at 34
Patent outcomesUS 7,293,520 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,293,520 - Petroleum Geo-Services Inc. / Ion Geophysical Corporation et al. v. Westerngeco LLCAll claims unpatentablePTAB · Dec 15, 2015 · IPR2014-00687 · APJ Scott A Daniels · IPR · Final written decision
Claims 1 and 15 are unpatentable as anticipated by and obvious over the ’636 PCT.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“all SPD’s is a requirement of claim 1 imparted by the term “global control system.” Accordingly, we do not construe “global positioning system” to require all streamer positioning devices to be controlled and we decline to adopt Patent Owner’s construction. See SuperGuide Corp. at 875 (“a particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment.”). We are also not persuaded to read the word “coordinate” as advocated” slip op. at 13
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros. Inc., v. Union Oil Co., 814 F.2d 628, 631 (Fed. Cir. 1987). “The identical invention must be shown in as complete detail as is contained in the . . . claim.” Richardson v. Suzuki Motor Co., 868 F.2d 1226, 1236 (Fed. Cir. 1989). The elements must be arranged as required by the claim, but this is not an ipsissimis verbis test, i.e., identity of terminology is not required. In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). [U]nless a reference discloses within the four corners of the document not only all of the limitations claimed but also all of the limitations arranged or combined in the same way as recited in the claim, it cannot be said to prove prior invention of the thing claimed and, thus, cannot anticipate under 35 U.S.C. § 102. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008). slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableUnpatentable
“The tests for anticipation and obviousness are different. Cohesive, 543 F.3d at 1364. Obviousness generally requires an analysis under the Graham factors. Id. In the instant case, however, we agree with Petitioner that the ’636 PCT, as a standalone reference discloses all of the limitations of claims 1 and 15 including a “global control system” as construed above. In other words, there is no element of claims 1 and 15 missing from the ’636 PCT as discussed above in relation to anticipation that necessitates modification, additional rationale, or articulated reasoning. Inasmuch as the ’636 PCT is relied upon as the sole reference for both anticipation and obviousness grounds and is directed to the same field of endeavor seeking to solve the same, or similar problem of controlling birds, i.e. SPD’s, in a towed seismic survey array as in the ’967 patent, so that “[d]uring the seismic survey, the streamers are intended to remain straight, parallel to each other and equally spaced” (Ex. 1004, 2), this case is particularly appropriate for application of the maxim that anticipation is the epitome of obviousness. Fracalossi, 681 F.2d at 794. All that remains is to address secondary considerations.” slip op. at 29
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“considerations which we address here. PO Resp. 32–35. The factual inquiries for obviousness include secondary considerations based on evaluation and crediting of objective evidence. Graham v. John Deere Co., 383 U.S. 1, 17 (1966). However, to accord substantial weight to objective evidence requires the finding of a nexus between the evidence and the merits of the claimed invention. In re GPAC Inc., 57 F.3d 1573, 1580 (Fed. Cir. 1995); see also In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996) (“success is relevant in the obviousness context only if there is proof that the sales were a direct result of the unique characteristics of the claimed invention.”). “Nexus” is a legally and factually sufficient connection between the objective evidence and the claimed invention, such that the objective evidence should be considered in determining nonobviousness. Demaco CorpF. Von Langsdorff Licensing Ltd., 851 F.2d 1387, 1392 (Fed. Cir. 1988). The burden of showing that there is a nexus lies with the patent owner. Id.; see In re Paulsen, 30 F.3d 1475, 1482 (Fed. Cir. 1994).” slip op. at 30
Patent outcomesUS 7,162,967 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 7,162,967 - Petroleum Geo-Services Inc. / Ion Geophysical Corporation et al. v. Westerngeco LLCAll claims unpatentablePTAB · Dec 15, 2015 · IPR2014-00688 · APJ Scott A Daniels · IPR · Final written decision
Claims 1 and 15 are unpatentable as anticipated by Workman and obvious over Workman alone and Workman combined with Elholm.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownPlain and ordinary meaningDecided for petitioner
“Inst. Dec. 9. Our claim construction relies specifically on the nature of the temporal component described in the ’607 patent specification which states “the global positioning system runs position predictor software to estimate the actual locations of each of the birds 18.” Ex. 1001, 4:51–55. Based on the specification, the estimated “actual locations” recited in our construction is a future prediction relative to the old (measured) position data that takes into account the time delay, or lag, and as stated in Patent Owner’s point (1) above. The “actual location” in our claim construction is “where the streamer positioning device will be at the time when commands are received at the device” as contended by Patent Owner. See PO Resp. 7.” slip op. at 12
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“This argument is not persuasive because Workman clearly describes that the Kalman filter would first receive signals including vessel positioning and location sensing device signals, i.e. position and location signals, and that the network solution 10 would make use of such signals to determine “real time . . . streamer cable positions.” Ex. 1004, 3:46–51, see also Ex. 1092, 434. We further understand the term “real time” cable positions to mean a cable position as a function of time and signal processing delay time, and that is most reasonably understood in context as current, actual, or some future estimated time relative to when the data i.e. old data, used to compute the “real time” cable position was observed. Thus, we interpret Workman to disclose a Kalman filter that provides an estimate of real time, i.e. actual, streamer positions based on previously observed location data, an interpretation that falls squarely within an “estimate of an actual position” as determined in our claim construction for the “predict[ing] positions” limitation in claims 1 and 15.” slip op. at 26
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“Despite Patent Owner’s arguments, we agree with Petitioner’s analysis as supported by Dr. Evans testimony, that one of ordinary skill in the art would have had reason to combine the teachings of Workman and Elholm to achieve the invention recited in challenged claims 1 and 15 with a reasonable expectation of success. Workman teaches every aspect of the claimed invention including towing an array of streamers, each streamer having a plurality of streamer positioning devices, predicting the positions of at least the streamers (if not the streamer positioning devices) and calculating changes in position of the streamer so as to control a streamer positioning device to affect the streamers. Based on Dr. Evans testimony, we are persuaded that one of skill in the art would have been motivated to modify Workman, by measuring, observing and changing the position of an SPD itself (as opposed to merely the streamer) as taught by Elholm, in order to accurately and precisely control the streamer. We agree that a person of ordinary skill in the art would have looked to Elholm’s teaching of an observable and controllable SPD via a “computer programme,” as a compatible streamer positioning device providing more accurate positional control of a streamer along its length, in the manner of Workman’s streamer control processor as it controls an array of streamers via multiple SPD’s on each streamer. We are not persuaded by Patent Owner’s position that Elholm only discloses a single SPD at the front of a streamer array because Petitioner is relying on Elholm for its teaching of an observable and controllable SPD, whereas it is Workman that teaches multiple SPD’s along the length of each streamer. See KSR, 550 U.S. at 420 (“[F]amiliar items may have obvious uses beyond their primary purpose, and in many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle.”). Additionally, Patent Owner is arguing the references individually and these arguments fail to consider the collective teachings of Workman and Elholm from the perspective of one of ordinary skill in the art. See PO Resp. 40–43. Nonobviousness cannot be established by attacking the references individually when a challenge is predicated upon a combination of prior art disclosures. See In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). In attacking Elholm individually, Patent Owner fails to address Petitioner’s actual challenges or, therefore, establish an insufficiency in the combined teachings of the references. Accordingly, we conclude Petitioner has established by a preponderance of evidence that claims 1 and 15 would have been obvious under 35 U.S.C. § 103 in view of the disclosures of Workman and Elholm.” slip op. at 37
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“Id. Patent Owner argues that these references to trial testimony from district court litigation support a finding of long-felt need but does not explain with any detail why, or how, the referenced testimony, evidences a long-felt need, failure of others, or industry praise. In this regard, we limit our review to evidence actually discussed in Patent Owner’s Response. We will not play archeologist with the record to discover evidentiary support for bare attorney argument made in such a response. See Google Inc. v. ART+COM Innovationpool GmbH, Case IPR2015-00788, slip. op. at 10 (PTAB Sept. 2, 2015) (Paper 7) (citing 37 C.F.R. § 42.104(b)(5) (“The Board may exclude or give no weight to the evidence where a party has failed to state its relevance or to identify specific portions of the evidence that support the challenge.”)). We decline to consider, moreover, information presented in an Exhibit, but not discussed sufficiently in Patent Owner’s Response. See PO Resp. 48 (citing Ex. 2035 and 2036, without any discussion of that evidence). Among other reasons, doing so would permit the use of declarations to circumvent our rules relating to page limits. In that regard, our rules prohibit a party from incorporating by reference from one document (such as a supporting declaration) into another document (such as Patent Owner’s Response). See 37 C.F.R. § 42.6(a)(3). Patent Owner argues that the Declaration of Robin Walker is firsthand evidence of industry praise “and how WesternGeco’s revolutionary lateral steering technology satisfied a long-felt need in the industry (Ex. 2077, ¶¶ 12–37) and ultimately contributed to billions of dollars in revenue (Ex. 2077, ¶¶ 47–51).” PO Resp. 48–49. Patent Owner, however, does not explain adequately how the Q-Marine product allegedly embodies the challenged claims in the ’607 patent. Mr. Walker states specifically that [t]hrough its provision of WesternGeco’s patented lateral steering technology, Q-Marine satisfied a significant, previously unmet need in the industry for better quality data and more cost-effective surveys by offering numerous benefits, including those detailed below. Ex. 2077 ¶ 12. The benefits described in the subsequent paragraphs of Mr. Walker’s Declaration are apparently based on lateral steering technology, with the result that “better data quality could be achieved without the risk of costly downtime and damage due to streamer tangling.” Id. at ¶ 15. It may be that Q-Marine provides a better, faster, more reliable and commercially successful 4D survey, but any commercial success enjoyed by the Q-Marine product is relevant only if the challenged claims are shown to embody those products. Patent Owner has not made out that critical showing. See In re DBC, 545 F.3d 1373, 1384 (Fed. Cir. 2008) (finding no nexus, absent evidence that “the driving force behind [the allegedly successful product’s sales] was the claimed combination”) (emphasis added); Ormco Corp. v. Align Technology Inc., 463 F.3d 1299, 1311–12 (Fed. Cir. 2006) (requiring a “nexus between the claimed invention and the commercial success”); Huang, 100 F.3d at 140 (requiring proof that sales were a “direct result of the unique characteristics of the claimed invention”). In the alternative, Patent Owner’s evidence of commercial success does not outweigh the strong showing of obviousness made out by Petitioner in view of anticipation by Workman, and also Workman and Elholm. See Sud-Chemie, Inc. v. Multisorb Techs., Inc., 554 F.3d 1001, 1009 (Fed. Cir. 2009) (“evidence of unexpected results and other secondary considerations will not necessarily overcome a strong prima facie showing of obviousness”). Accordingly, the alleged commercial success of the Q-Marine product does not support a conclusion of nonobviousness of the challenged claims in this case.” slip op. at 42
Patent outcomesUS 7,080,607 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 7,080,607 - Petroleum Geo-Services Inc. / Ion Geophysical Corporation And Ion International S.A.R.L. v. Westerngeco LLCAll claims unpatentablePTAB · Dec 15, 2015 · IPR2015-00567 · APJ Scott A Daniels · IPR · Final written decision
Claims 1 and 15 are unpatentable as anticipated by Workman and obvious over Workman alone and Workman combined with Elholm.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“Id. at 7. First, we note that neither claim 1 nor claim 15 recites “predictive control” as stated here by Patent Owner. See Ex. 1001, 11:15–24, 12:26–34. Second, with respect to point (1), our claim construction accounts for exactly this temporal, i.e. future, aspect of “predicting.” As explained in our Decision to Institute: the received position data of any bird 18 is old, i.e., not instantaneous, or current, but is used to estimate a position of bird 18, and assess the estimate as an actual position of bird 18. Inst. Dec. 9. Our claim construction relies specifically on the nature of the temporal component described in the ’607 patent specification which states “the global positioning system runs position predictor software to estimate the actual locations of each of the birds 18.” Ex. 1001, 4:51–55. Based on the specification, the estimated “actual locations” recited in our construction is a future prediction relative to the old (measured) position data that takes into account the time delay, or lag, and as stated in Patent Owner’s point (1) above. The “actual location” in our claim construction is “where the streamer positioning device will be at the time when commands are received at the device” as contended by Patent Owner. See PO Resp. 7.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“the streamer on which the streamer positioning device is located, but also the complete streamer array.” PO Resp. 12. We are not persuaded to read such a limitation into this claim phrase. First, in the context of both claim 1 and claim 15, the phrase is more completely, “calculate desired changes in positions.” The plain meaning of, “calculate,” is essentially interchangeable with “determine,” thus we see no reason to clarify this aspect of the claim language. The direct object of the verb “calculate” is “changes in position” of the SPD, thus the proposed claim construction would substitute “forces based on streamer and array behavior” for “changes in position.” The asserted claim construction, however, naturally expresses how changes in position are, or could be accomplished. For example, “force” acting on an object is, from a physics perspective, a different quantity than the “position” of the object. A certain force may cause a change in position but it is not the “change in position” itself. We are, therefore, not persuaded by the plain meaning of the claim language that “changes in position” is required to be limited to any particular causational definition or quantity. Patent Owner’s claim construction relies upon preferred embodiments from the specification, for example, the specification states that “[t]he global control system 22 preferably calculates the desired vertical and horizontal forces based on the behavior of each streamer and also takes into account the behavior of the complete streamer array.” See PO Resp. 13 (citing Ex. 1001, 4:48–51). Furthermore, to the extent that Patent Owner is relying on the “global control system 22” as predicting or calculating such forces, the specification includes an alternative embodiment where the global control system does not calculate the forces, but alternatively, “can transmit location information to the local control system 36 instead of force information.” Ex. 1001, 6:38–39. Accordingly, we determine based on the specification, claim language, and evidence from the complete record before us, that under the broadest reasonable interpretation, and giving the words their plain and ordinary meaning consistent with the specification, that the phrase “calculating desired changes in position” needs no construction and should be accorded its plain and ordinary meaning.” slip op. at 17
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“This argument is not persuasive because Workman clearly describes that the Kalman filter would first receive signals including vessel positioning and location sensing device signals, i.e. position and location signals, and that the network solution 10 would make use of such signals to determine “real time . . . streamer cable positions.” Ex. 1004, 3:46–51, see also Ex. 1092, 434. We further understand the term “real time” cable positions to mean a cable position as a function of time and signal processing delay time, and that is most reasonably understood in context as current, actual, or some future estimated time relative to when the data i.e. old data, used to compute the “real time” cable position was observed. Thus, we interpret Workman to disclose a Kalman filter that provides an estimate of real time, i.e. actual, streamer positions based on previously observed location data, an interpretation that falls squarely within an “estimate of an actual position” as determined in our claim construction for the “predict[ing] positions” limitation in claims 1 and 15.” slip op. at 26
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“Despite Patent Owner’s arguments, we agree with Petitioner’s analysis as supported by Dr. Evans testimony, that one of ordinary skill in the art would have had reason to combine the teachings of Workman and Elholm to achieve the invention recited in challenged claims 1 and 15 with a reasonable expectation of success. Workman teaches every aspect of the claimed invention including towing an array of streamers, each streamer having a plurality of streamer positioning devices, predicting the positions of at least the streamers (if not the streamer positioning devices) and calculating changes in position of the streamer so as to control a streamer positioning device to affect the streamers. Based on Dr. Evans testimony, we are persuaded that one of skill in the art would have been motivated to modify Workman, by measuring, observing and changing the position of an SPD itself (as opposed to merely the streamer) as taught by Elholm, in order to accurately and precisely control the streamer. We agree that a person of ordinary skill in the art would have looked to Elholm’s teaching of an observable and controllable SPD via a “computer programme,” as a compatible streamer positioning device providing more accurate positional control of a streamer along its length, in the manner of Workman’s streamer control processor as it controls an array of streamers via multiple SPD’s on each streamer. We are not persuaded by Patent Owner’s position that Elholm only discloses a single SPD at the front of a streamer array because Petitioner is relying on Elholm for its teaching of an observable and controllable SPD, whereas it is Workman that teaches multiple SPD’s along the length of each streamer. See KSR, 550 U.S. at 420 (“[F]amiliar items may have obvious uses beyond their primary purpose, and in many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle.”). Additionally, Patent Owner is arguing the references individually and these arguments fail to consider the collective teachings of Workman and Elholm from the perspective of one of ordinary skill in the art. See PO Resp. 40–43. Nonobviousness cannot be established by attacking the references individually when a challenge is predicated upon a combination of prior art disclosures. See In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). In attacking Elholm individually, Patent Owner fails to address Petitioner’s actual challenges or, therefore, establish an insufficiency in the combined teachings of the references. Accordingly, we conclude Petitioner has established by a preponderance of evidence that claims 1 and 15 would have been obvious under 35 U.S.C. § 103 in view of the disclosures of Workman and Elholm.” slip op. at 37
Patent outcomesUS 7,080,607 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 7,080,607
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