- 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 - 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 - Globus Medical, Inc. v. Bonutti Skeletal Innovations LLCInstitution deniedPTAB · Dec 16, 2015 · IPR2015-01346 · APJ Erica A Franklin · IPR · Institution
The Board denied institution because Petitioner failed to show a reasonable likelihood of proving any challenged claim unpatentable on the asserted obviousness grounds.
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 and Preliminary Response, we determine that Petitioner has not shown a reasonable likelihood that it would prevail in showing the unpatentability of any challenged claim. Accordingly, the Petition is denied.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not found
“relationship between first and second bones which are interconnected at a joint. In particular, claim 8 requires that the step of moving the second bone relative to the first bone “includes expanding at least a portion of the joint interconnecting the first and second bones by applying force against the first and second bones with a wedge member.” Petitioner asserts that Wagner teaches this limitation. Pet. 18. According to Petitioner, Wagner’s method involves advancing the wedge member device by sliding it posteriorly in the intervertebral space, wherein “the first and second surfaces of the wedge shaped body engage the faces of the first and second vertebrae at which the device is implanted, forcing the intervertebral space open (i.e. expanding at least a portion of the joint) and moving the vertebrae apart.” Id. at 18 (citing Ex. 1011 ¶ 36). In other words, Petitioner asserts that Wagner describes “forcing the intervertebral space open with a wedge shaped device.” Id.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“Based upon our review, the Specification of the ’531 patent does not expressly define the claim term “tapers.” Thus, we adopt the ordinary and customary meaning of the term “tapers,” which is “to become progressively smaller toward one end.” Ex. 3001, MERRIAM-WEBSTER’S COLLEGIATE DICTIONARY, 10th ED. That meaning is consistent with (a) the Specification description that the wedge member 44 tapers from a thick end portion to a thin end portion, and (b) the Specification figures depicting the minor surface becoming progressively smaller from the thick end to the thin end. Ex. 1001, 5:57–61; 15:32–34; Figs. 5–7, 17. Claim 105, thus, requires a minor side surface that becomes progressively smaller from said thick end portion to said thin end portion. In view of our analysis, we determine that express construction of additional claim terms is not necessary for purposes of this Decision.” slip op. at 7
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentable
“We agree with Patent Owner. As discussed above, we have adopted the ordinary and customary meaning of the term “tapers,” which is “to become progressively smaller toward one end.” Benezech’s Figure 2 shows a rise in the height of the minor side surface as it extends from the thick end portion to the thin end portion of the wedge member. Thus, contrary to the assertions of Petitioner and Dr. Ochoa, we find that Benezech’s Figure 2 does not disclose a cage, i.e., wedge member, that tapers, i.e., becomes progressively smaller, from the thick end portion to the thin end portion, as required by claim 105. Moreover, although Benezech explains that the “cage can have various dimensions in height, in width, and in depth,” the reference emphasizes that “the special profile and shape of the cage 1A in the example FIG. 2 enable the overall device to fit perfectly in the intervertebral space.” Ex. 1007, 4:8–9, 5:1–3. Thus, to the extent Petitioner suggests that modifying the shape of the cage in Figure 2 to meet the claim limitation would have been obvious to a person of ordinary skill in the art, we disagree as Benezech characterizes the depicted “special profile and shape” in Figure 2 to “fit perfectly” in its intended location.” slip op. at 14
Claim construction§ 103 obviousnessPatents in suitUS 6,099,531 - Globus Medical, Inc. v. Bonutti Skeletal Innovations LLCInstitution deniedPTAB · Dec 16, 2015 · IPR2015-01345 · APJ Meredith C Petravick · IPR · Institution
The Board denied institution on claims 1, 8, and 34 because Petitioner did not show a reasonable likelihood of prevailing on any asserted obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“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.” We determine that Petitioner has not demonstrated that there is a reasonable likelihood that it would prevail with respect to any of the challenged claims. For the reasons described below, we do not institute an inter partes review of claims 1, 8, and 34.” slip op. at 2
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“that a surgeon may strike it with a hammer if necessary to urge the implant 50 into place between two vertebrae that have been slightly spread apart from their normal spacing during the surgical procedure.” Id. col. 8, l. 65– col. 9, l. 2. As can be seen from the above and contrary to Petitioner’s assertion and that of its declarant Dr. Ochoa, Wagner does not disclose moving the second bone from a first orientation relative to the first bone under the influence of force applied against the second bone by the wedge member as the wedge member moves into the joint between the first and second bones. Rather, the joint between the bones is expanded prior to striking the handle with a hammer to urge the implant into place. Id. at col. 9, ll. 1–2, 32–34. Indeed, as discussed, the implant is situated in a somewhat recessed position within the stabilizing lips 110 and between the opposed arms 102, such that striking the handle with a hammer would cause the forward portion of the arms 102 and/or the outward portion of the stabilizing lips 110 to encounter the spaced apart vertebrae, rather than the implant itself. Consequently, based on the information presented, Petitioner has not established sufficiently that Wagner teaches or suggests every limitation of independent claim 1. On this record, we determine Petitioner fails to demonstrate a reasonable likelihood that it would prevail in showing that independent claim 1, or its dependent claim 8, would have been obvious over Wagner.” slip op. at 9
§ 103 obviousnessPatents in suitUS 6,423,063 - PTAB · Dec 7, 2015 · IPR2015-01438 · APJ Michael R Zecher · IPR · Order
The Board granted the parties’ joint motion and terminated the proceeding before deciding whether to institute review of claims 1–3 and 8–12.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“they have settled their disputes regarding the ’104 patent. Paper 7, 2. The parties further represent that there are numerous related matters in the United States District Court for the Northern District of California that have been dismissed with prejudice or stayed pending final determination of two related inter partes reviews involving U.S. Patent No. 7,550,870 B2 (“the ’870 patent”). Id. at 3. Based on the joint requests filed by the parties in the two proceedings involving the ’870 patent, those cases have been terminated. Avocent Huntsville Corp. v. Cyber Switching Patents, LLC, Cases IPR2015-00690 & IPR2015-00725 (PTAB Dec. 7, 2015) (Paper 33 in each proceeding). Lastly, the parties do not represent that the ’104 patent is involved in any other proceedings before the Office. See generally id. at 2–4. Under these circumstances, we determine that it is appropriate to terminate this proceeding without rendering any further decisions. See 37 C.F.R. § 42.72.” slip op. at 2
NonePatents in suitUS 7,672,104 - Eastman Kodak Co. / Agfa Corp. et al. v. CTP Innovations, LLCNo claims unpatentablePTAB · Nov 25, 2015 · IPR2014-00788 · APJ Benjamin D M Wood · IPR · Final written decision
The Board held claims 10–20 not shown unpatentable because the asserted combinations did not show a reason to produce and provide the plate-ready file from a location remote from the printer.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner
“reasonable interpretation in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b); In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1278 (Fed. Cir. 2015). Under this standard, the claim language should be read in light of the specification as it would be interpreted by one of ordinary skill in the art. In re Suitco Surface, Inc., 603 F.3d 1255, 1260 (Fed. Cir. 2010). Any special definition for a claim term must be set forth in the specification with reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). We expressly construe below only those claim terms that require analysis to resolve arguments related to the patentability of the challenged claims. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those [claim] terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”). All other terms will be accorded their ordinary and customary meaning as would be understood by one of ordinary skill at the time of the invention. 1. “A method of providing printing and publishing services to a remote client in real time using a communication network” (claim 10); “A method of providing printing and publishing services to a remote client . . . in real time using a wide area communication network” (claim 16) The preamble for each of independent claims 10 and 16 recites a method of providing printing and publishing services to a remote client “in real time.” In the Decision on Institution, we determined that “the preambles in the claims at issue, including the term ‘real time,’ do not limit the scope of the claims.” Dec. on Inst. 11–13. Neither Patent Owner in its Response nor Petitioner in its Reply disputed this determination. Further, we are not aware of any evidence adduced at trial that calls this determination into question. Therefore, based on our analysis in the Decision on Institution, we determine that the preambles in the claims at issue, including the term “real time,” do not limit the scope of the claims.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownOther
“The Specification does not define “plate-ready file” expressly, but its meaning is discernible from the term itself: a file that can be used to produce a printing plate without further modification. See Ex. 1001, 10:7– 14 (equating the term “plate-ready file” with “a single file that is stable, predictable, and ready to image to proof or plate”). Moreover, as Petitioner states, the plate-ready file can be used with a platesetter to create a plate directly, or with an imagesetter to produce film that is then used to create the plate. Pet. 22. Further, we agree with the parties that because the file is “plate-ready,” it represents a page layout file that has gone through the prepress process, including RIPing. That is the purpose of prepress production: transforming “copy” into “a medium that is reproducible for printing,” such as a “computer to plate (CTP) file.” Id. at 1:26–38. Accordingly, in addition to the constructions we applied in the Decision on Institution, we construe “plate-ready file” to mean a file that represents a page layout that has gone through prepress processing, including RIPing, and is ready to image to a plate using either a platesetter or imagesetter.” slip op. at 9
- ExcludeMotion to exclude, deniedDenied
“Patent Owner seeks to exclude Mr. Suetens’ first Declaration for essentially the same reasons discussed above: that Mr. Suetens lacks personal knowledge regarding the public accessibility of Apogee. We have reviewed the First Motion and determine that Patent Owner’s objections to the First Suetens Declaration go more to the weight of the Declaration than to its admissibility. Further, we note that the public accessibility of the Apogee reference is a substantive issue that is better suited for Patent Owner’s Response than for a motion to exclude. For these reasons, we deny Patent Owner’s First Motion to Exclude.” slip op. at 17
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“§ 102, a reference must have been sufficiently accessible to the public interested in the art.” In re Lister, 583 F.3d 1307, 1311 (Fed. Cir. 2009) 8 Paper 30, 3; Tr. 31:4–8. (internal citation and quotation marks omitted). “Whether a reference is publicly accessible is determined on a case-by-case basis based on the facts and circumstances surrounding the reference’s disclosure to members of the public.” Id. (internal citation and quotation marks omitted). “A reference is considered publicly accessible if it was 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.” Id. (internal citation and quotation marks omitted). We find that Petitioner has shown by a preponderance of the evidence that Apogee was publicly accessible before the ’155 patent’s filing date. There does not seem to be any dispute that Apogee was printed at least as early as April 1998. Further, Petitioner has shown that a large number of copies were printed and distributed to Agfa subsidiaries around the world in 1998. Ex. 1024 ¶¶ 10–14, Atts. E–H. Petitioner has also proffered evidence of at least one Agfa sales representative, Mr. Jahn, publicly distributing Apogee to potential customers at conferences. Ex. 1023. Given that Apogee was created to promote the Apogee system to prospective customers, and that a very large number of copies of the reference were printed, it is reasonable to infer that many of these copies made their way into the possession of interested persons. We also credit Mr. Jahn’s testimony that an earlier version of Apogee was posted on his website before the critical date, and that he directed interested persons to that document. Although we do not rely on this version itself in considering Petitioner’s grounds of unpatentability, we consider this testimony further evidence that a person of ordinary skill, using reasonable diligence, could have gained access to the Apogee reference.” slip op. at 20
Patent outcomesUS 6,738,155 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 6,738,155 - Eastman Kodak Co. / Agfa Corp. et al. v. CTP Innovations, LLCNo claims unpatentablePTAB · Nov 25, 2015 · IPR2014-00790 · APJ Benjamin D M Wood · IPR · Final written decision
Claims 1–3 were not shown unpatentable because Petitioner did not establish that the proposed combinations would produce the required plate-ready file at the central service facility.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for patent owner
“1. A printing and publishing system which generates a printing plate-ready file from data provided remotely in real time using a communication network The preamble for each of independent claims 1, 2, and 3 recites a “printing and publishing system which generates a printing plate-ready file from data provided remotely in real time.” In the Decision on Institution, we determined that “the preambles in the claims at issue, including the term ‘real time,’ do not limit the scope of the claims.” Dec. on Inst. 14. Neither Patent Owner in its Response nor Petitioner in its Reply disputed this determination. Further, we are not aware of any evidence adduced at trial that calls this determination into question. Therefore, based on our analysis in the Decision on Institution, we determine that the preambles in the claims at issue, including the term “real time,” do not limit the scope of the claims.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“We agree with Patent Owner to the extent that the claim itself defines “end user facility,” “printing company facility,” and “central service facility” in terms of the particular functions they perform; e.g. the end user facility performs page building operations, the printing company facility provides printing operations, and the central service facility performs file processing and content management operations. But we maintain the view that these facilities must be distinct components of the claimed printing and publishing system. “Where a claim lists elements separately, the ‘clear implication of the claim language’ is that those elements are distinct components of the patented invention.” Becton, Dickenson and Co. v. Tyco Healthcare Group, LP, 616 F.3d 1249, 1254 (Fed. Cir. 2010) (internal citations and quotation marks omitted); cf. Regents of Univ. of Minn. v. AGA Med. Corp., 717 F.3d 929, 935 (Fed. Cir. 2013) (holding that phrase “first and second occluding disks” means physically separate occluding disks). The Specification supports this conclusion because it consistently describes the three facilities as separate entities, each connected to the same communication network to facilitate the transfer of data between each other. See, e.g., Ex. 1001, 2:54–64, 4:26–33, Figs. 1–5.” slip op. at 10
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“§ 102, a reference must have been sufficiently accessible to the public interested in the art.” In re Lister, 583 F.3d 1307, 1311 (Fed. Cir. 2009) (internal citation and quotation marks omitted). “Whether a reference is publicly accessible is determined on a case-by-case basis based on the facts 8 Paper 35, 3; Tr. 31:4–8. and circumstances surrounding the reference’s disclosure to members of the public.” Id. (internal citation and quotation marks omitted). “A reference is considered publicly accessible if it was 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.” Id. (internal citation and quotation marks omitted). We find that Petitioner has shown by a preponderance of the evidence that Apogee was publicly accessible before the ’349 patent’s filing date. There does not seem to be any dispute that Apogee was printed at least as early as April 1998. Further, Petitioner has shown that a large number of copies were printed and distributed to Agfa subsidiaries around the world in 1998. Ex. 1025 ¶¶ 10–14, Atts. E–H. Petitioner also has proffered evidence of at least one Agfa sales representative, Mr. Jahn, publicly distributing Apogee to potential customers at conferences. Ex. 1024. We also credit Mr. Jahn’s testimony that an earlier version of Apogee was posted on his website before the critical date, and that he directed interested persons to that document. Although we do not rely on this version itself in considering Petitioner’s grounds of unpatentability, we consider this testimony evidence that a person of ordinary skill, using reasonable diligence, could have gained access to the earlier version Apogee, which reasonably would have led that person to the updated version. Given that Apogee was created to promote the Apogee system to prospective customers; a very large number of copies of the reference were printed, at least some of which were distributed at conferences and trade shows; and an earlier, substantively identical version was publicly available in electronic form on the internet; we find that Apogee was publicly accessible before the critical date.” slip op. at 21
- ExcludeMotion to exclude, deniedDenied
“Patent Owner seeks to exclude Mr. Suetens’ first Declaration for essentially the same reasons discussed above: that Mr. Suetens lacks personal knowledge regarding the public accessibility of Apogee. We have reviewed the First Motion and determine that Patent Owner’s objections to the First Suetens Declaration go more to the weight of the Declaration than to its admissibility. Further, we note that the public accessibility of the Apogee reference is a substantive issue that is better suited for Patent Owner’s Response than for a motion to exclude. For these reasons, we deny Patent Owner’s first motion to exclude.” slip op. at 18
Patent outcomesUS 6,611,349 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 6,611,349 - Eastman Kodak Co. / Agfa Corp. et al. v. CTP Innovations, LLCAll claims unpatentablePTAB · Nov 25, 2015 · IPR2014-00789 · APJ Benjamin D M Wood · IPR · Final written decision
Claims 1–9 are unpatentable as obvious over Jebens, Apogee, and OPI White Paper; specified claims are also obvious over the two Dorfman-based combinations.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for patent owner
“1. “A printing and publishing system providing . . . services to system subscribers in real time using a communication network” The preamble for independent claim 1 recites a printing and publishing system providing services to system subscribers “in real time.” In the Decision on Institution, we determined that “the preambles in the claims at issue, including the term ‘real time,’ do not limit the scope of the claims.” Dec. on Inst. 13. Neither Patent Owner in its Response nor Petitioner in its Reply disputed this determination. Further, we are not aware of any evidence adduced at trial that calls this determination into question. Therefore, based on our analysis in the Decision on Institution, we determine that the preambles in the claims at issue, including the term “real time,” do not limit the scope of the claims.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“We agree with Patent Owner to the extent that the claim itself defines “end user facility,” “printing company facility,” and “central service facility” in terms of the particular functions they perform; e.g. the end user facility performs page building operations, the printing company facility performs imposition and generates a plate-ready file, and the central service facility performs content management operations. These functions are not limiting; for example, the printing company facility obviously would also perform platemaking and offset printing functions. But we maintain the view that these facilities must be distinct components of the claimed printing and publishing system. “Where a claim lists elements separately, the ‘clear implication of the claim language’ is that those elements are distinct components of the patented invention.” Becton, Dickenson and Co. v. Tyco Healthcare Group, LP, 616 F.3d 1249, 1254 (Fed. Cir. 2010) (internal citations and quotation marks omitted); cf. Regents of Univ. of Minn. v. AGA Med. Corp., 717 F.3d 929, 935 (Fed. Cir. 2013) (holding that phrase “first and second occluding disks” means physically separate occluding disks). The Specification supports this conclusion because it consistently describes the three facilities as separate entities, each connected to the same communication network to facilitate the transfer of data between each other. See, e.g., Ex. 1001, 2:54–64, 4:26–33, Figs. 1–5.” slip op. at 9
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“publicly accessible is determined on a case-by-case basis based on the facts and circumstances surrounding the reference’s disclosure to members of the public.” Id. (internal citation and quotation marks omitted). “A reference is considered publicly accessible if it was 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.” Id. (internal citation and quotation marks omitted). We find that Petitioner has shown by a preponderance of the evidence that Apogee was publicly accessible before the ’155 patent’s filing date. There does not seem to be any dispute that Apogee was printed at least as early as April 1998. Further, Petitioner has shown that a large number of copies were printed and distributed to Agfa subsidiaries around the world in 1998. Ex. 1024 ¶¶ 10–14, Atts. E–H. Petitioner also has proffered evidence of at least one Agfa sales representative, Mr. Jahn, publicly distributing Apogee to potential customers at conferences. Ex. 1023. We also credit Mr. Jahn’s testimony that an earlier version of Apogee was posted on his website before the critical date, and that he directed interested persons to that document. Although we do not rely on this version itself in considering Petitioner’s grounds of unpatentability, we consider this testimony evidence that a person of ordinary skill, using reasonable diligence, could have gained access to the earlier version Apogee, which reasonably would have led that person to the updated version. Given that Apogee was created to promote the Apogee system to prospective customers; a very large number of copies of the reference were printed, at least some of which were distributed at conferences and trade shows; and an earlier, substantively identical version was publicly available in electronic form on the internet; we find that Apogee was publicly accessible before the critical date.” slip op. at 21
- ExcludeMotion to exclude, deniedDenied
“Patent Owner seeks to exclude Mr. Suetens’ first Declaration for essentially the same reasons discussed above: that Mr. Suetens lacks personal knowledge regarding the public accessibility of Apogee. We have reviewed the First Motion and determine that Patent Owner’s objections to the First Suetens Declaration go more to the weight of the Declaration than to its admissibility. Further, we note that the public accessibility of the Apogee reference is a substantive issue that is better suited for Patent Owner’s Response than for a motion to exclude. For these reasons, we deny Patent Owner’s First Motion to Exclude.” slip op. at 17
Patent outcomesUS 6,738,155 unpatentableClaim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 6,738,155 - Eastman Kodak Co. / Agfa Corp. et al. v. CTP Innovations, LLCNo claims unpatentablePTAB · Nov 25, 2015 · IPR2014-00791 · APJ Benjamin D M Wood · IPR · Final written decision
Claims 10–14 were not shown unpatentable over either asserted obviousness combination because the evidence did not show a reason to produce the plate-ready file away from the printing facility.
RulingsFinal written decision- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“§ 102, a reference must have been sufficiently accessible to the public interested in the art.” In re Lister, 583 F.3d 1307, 1311 (Fed. Cir. 2009) (internal citation and quotation marks omitted). “Whether a reference is publicly accessible is determined on a case-by-case basis based on the facts and circumstances surrounding the reference’s disclosure to members of the public.” Id. (internal citation and quotation marks omitted). “A reference is considered publicly accessible if it was 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.” Id. (internal citation and quotation marks omitted). We find that Petitioner has shown by a preponderance of the evidence that Apogee was publicly accessible before the ’155 patent’s filing date. There does not seem to be any dispute that Apogee was printed at least as early as April 1998. Further, Petitioner has shown that a large number of copies were printed and distributed to Agfa subsidiaries around the world in 1998. Ex. 1024, Atts. E–H. Petitioner has also proffered evidence of at least one Agfa sales representative, Mr. Jahn, publicly distributing Apogee to potential customers at conferences. Ex. 1023. Given that Apogee was created to promote the Apogee system to prospective customers, and that a very large number of copies of the reference were printed, it is reasonable to infer that many of these copies made their way into the possession of interested persons. We also credit Mr. Jahn’s testimony that an earlier version of Apogee was posted on his website before the critical date, and that he directed interested persons to that document. Although we do not rely on this version itself in considering Petitioner’s grounds of unpatentability, we consider this testimony further evidence that a person of ordinary skill, using reasonable diligence, could have gained access to the Apogee reference.” slip op. at 20
- ExcludeMotion to exclude, deniedDenied
“Patent Owner seeks to exclude Mr. Suetens’ first Declaration for essentially the same reasons discussed above: that Mr. Suetens lacks personal knowledge regarding the public accessibility of Apogee. We have reviewed the First Motion and determine that Patent Owner’s objections to the First Suetens Declaration go more to the weight of the Declaration than to its admissibility. Further, we note that the public accessibility of the Apogee reference is a substantive issue that is better suited for Patent Owner’s Response than for a motion to exclude. For these reasons, we deny Patent Owner’s First Motion to exclude.” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“this limitation, either the end user or the host facility must produce the plateready file and provide it to the printer. Petitioner argues that “one of ordinary skill could predictably implement Apogee at a central service facility.” Pet. Reply 4 (emphasis added). But as our reviewing court recently stated, “obviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.” Belden, 2015 WL 6756451, at *5 (emphasis in original) (citing InTouch Techs., Inc. v. VGO Commc’n, Inc., 751 F.3d 1327, 1352 (Fed. Cir. 2014)). Jebens does not teach or suggest generating a “plate-ready file” as we have construed the term above, i.e., a file that “that has gone through prepress processing, including RIPing.” Apogee teaches generating a plateready file from a PDF, but does not teach or suggest providing it to a remote 8 Claim 10 only requires a “client” and a “printer” that are “remote” with respect to each other. printer. Petitioner asserts that “one of ordinary skill in the art would have been motivated to incorporate Apogee into the Jebens printing system to allow for a printing facility to produce a printing plate for offset printing.” Pet. 29. But Petitioner does not point us to any evidence—in Jebens, Apogee, or otherwise—that a person of ordinary skill in the art would have combined Jebens and Apogee in such a way that a plate-ready file would have been produced at Jebens’ host facility or end user facility rather than at its printing facility. In other words, there is no evidence that a person of ordinary skill in the art would have considered generating a plate-ready file anywhere other than where the printing plates are produced: at the printing facility. Evidence that a skilled artisan could have generated the plate-ready file at Jebens’ host facility, without any evidence of a reason why the skilled artisan would have done so, is insufficient to show obviousness. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 421–23 (2007) (considering the obviousness of a claim to an adjustable automobile throttle pedal combined with an electronic sensor, holding that “[a] person having ordinary skill in the art could have combined [the adjustable pedal] with a pedal position sensor in a fashion encompassed by [the claim], and would have seen the benefits of doing so” (emphasis added)); InTouch Techs., 751 F.3d at 1352 (holding that expert witness “succumbed to hindsight bias” in basing obviousness opinion on “belief that one of ordinary skill in the art could combine these references, not that they would have been motivated to do so” (emphasis in original)). For these reasons, Petitioner has not shown by a preponderance of the evidence that claim 10, and its dependent claims 11– 14, would have been obvious over Jebens and Apogee.” slip op. at 25
Patent outcomesUS 6,611,349 not shown unpatentable§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 6,611,349 - Hart Communication Foundation v. Sipco, LLCSome claims unpatentablePTAB · Nov 13, 2015 · IPR2014-00751 · APJ Patrick M Boucher · IPR · Final written decision
Claims 2–4 are unpatentable under § 103; claims 1 and 9–13 were not shown unpatentable because the art did not establish the claimed wireless retransmission.
RulingsFinal written decision- Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner
“distances.” Id. ¶¶ 7, 6. Although we credit those opinions of Mr. Gannon, we find more compelling the bases for Dr. Almeroth’s opinion that one of skill in the art would be disinclined to use wireless communication at multiple levels of Enterprise Server CM’s tree hierarchy.” slip op. at 19
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“articulated clearly in the Petition, and it is, nevertheless, unpersuasive in light of Dr. Almeroth’s testimony. Nor are we persuaded by Petitioner’s general argument that various of the references disclose wireless communications that a person of skill in the art would have found obvious to implement in the tree hierarchy disclosed by Enterprise Server CM. See id. at 2–4. That argument is insufficiently supported by evidence that responds to the several issues raised by Dr. Almeroth. See In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (unsupported attorney argument in a brief cannot take the place of evidence).” slip op. at 18
Patent outcomesUS 7,468,661 mixed§ 103 obviousnessPatents in suitUS 7,468,661
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.