- One World Technologies, Inc. D/B/A Techtronic Industries Power Equipment v. The Chamberlain Group, Inc.Institution deniedPTAB · Dec 13, 2017 · IPR2017-01546 · APJ Jon M Jurgovan · IPR · Institution
The Board denied institution on all challenged claims under § 314(a), finding that a majority of the General Plastic factors weighed strongly against institution.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticInstitution denied
“or should have known of the Kikuya reference at the time of filing its first two petitions (September 9, 2016). Petitioner does not provide any explanation as to why the reference could not have been found with a reasonably diligent search at the time of the earlier petitions. See General Plastic at 11 (“Petitioner . . . provided no explanation why it could not have found this new prior art earlier— prior to filing the first-filed petitions—through the exercise of reasonable diligence.”), 19 (“the record is devoid of any explanation why Petitioner could not have found the newly asserted prior art in any earlier search(es) through the exercise of reasonable diligence”). Furthermore, what bearing the Federal Circuit’s claim construction (or those of the Board or the District Court) had on whether the Kikuya reference reasonably could have been located earlier is not explained adequately in the Petition. In this regard, we note that Petitioner states that it requested the later patent search on February 23, 2017, which was shortly after receiving our decisions denying institution in Cases IPR2016-01772 and IPR2016-01774 on February 21, 2017. Petitioner makes no mention of how this factored into the decision to request the later patent search. Moreover, Petitioner states that it requested the patent search that yielded the Kikuya reference on February 23, 2017, and the District Court adopted a “broader construction” in an order issued April 7, 2017. Pet. 7. Given this sequence of events, we do not see how the scope of the patent search could have taken into account a “broader” claim construction that did not exist when Petitioner requested the later patent search. We agree with Patent Owner that factor (2) weighs in favor of exercising our discretion to deny the Petition. See Prelim. Resp. 10–14. In view of the foregoing, this factor weighs against institution.” slip op. at 6
Discretionary denialPatents in suitUS 7,224,275 - Sonos, Inc. v. D&M Holdings Inc.Institution deniedPTAB · Oct 5, 2017 · IPR2017-01044 · APJ Jon M Jurgovan · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–4, 10, 11, 13–20, and 25–27 were unpatentable over Deslippe.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Under 35 U.S.C. § 314(a), 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 Preliminary Response, we determine that Petitioner has not established a reasonable likelihood that it would prevail with respect to the challenged claims. Therefore, we do not institute an inter partes review as to the challenged claims of the ’294 patent.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“interpretation of “providing, for each group, a system control interface” as meaning that one system control interface can control multiple groups of multimedia devices. Pet. 6–7. Similarly, Petitioner’s challenge requires interpretation of claim 1’s language of “defining at least two groups” and “each group has a group leader” as meaning one group leader may control multiple groups. Patent Owner interprets this language to require a separate system control interface and group leader for each of multiple groups. Prelim. Resp. 28. We agree with Patent Owner and interpret the claim language as requiring the groups to have distinct system control interfaces and group leaders. In this regard, we can find no mention in the ’294 patent of a device serving as system control interface and group leader for multiple groups. Also, under similar facts in Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298−99 (Fed. Cir. 2015), the Federal Circuit construed claims reciting a “gateway,” “caching computer,” and “at least two other computers” to be four separate elements, finding the Board’s construction permitting the “two other computers” to include the “caching computer” unreasonably broad in light of the language of the claims and specification. Similarly, in the case of In re Smith International, Inc., No. 2016-” slip op. at 8
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)
“Claim 1 recites a “relative group leader” which, for reasons explained in Section II.A, supra, we interpret as a master multimedia device which is a member of a group, which controls slave multimedia devices within the group. Petitioner contends Deslippe’s master device 110 is a “relative group leader” as claimed. Pet. 22. However, as Patent Owner observes, “[t]he master console device 110 is not disclosed in Deslippe as capable of playing media and thus is not a multimedia device.” Prelim. Resp. 25. We agree with Patent Owner’s assertion. In this regard, the ’294 patent states “[t]he master device 110 can include, for example, a stand-alone control console or a control program using communication abilities of a computer (e.g., desktop, laptop, or handheld computer).” Ex. 1001, ¶ 42. Deslippe also states “[t]he slave devices 112A–112D can include any of a variety of devices including a speaker, an electronic device with an audio playback and/or recording capability, or a device collecting and/or displaying information about an audio stream.” Id. Thus, because Deslippe’s master device 110 is not a multimedia device (whereas its slave devices 112 are), Deslippe does not disclose the claimed “relative group leader,” and thus does not anticipate claim 1.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not found
“control interface is provided in accordance with an open networking protocol.” Ex. 1001, 21:31–33. Claim 11 thus incorporates the limitations of claim 1. 35 U.S.C. § 112 ¶ 4. As noted, Deslippe differs from claim 1 in that its master device 110 has not been shown to be a “relative group leader” that is a multimedia device, such as a speaker, that is one of a group of multimedia devices responsive to a system control signal to implement an operational change, such as a volume adjustment. Petitioner’s contentions with respect to claim 11 do not address this difference or explain why it would have been obvious to a person of ordinary skill in the art. Pet. 50–51. Accordingly, we are not persuaded Petitioner has shown a reasonable likelihood of prevailing in showing obviousness of claim 11 in view of Deslippe. Claim 15 is similar to claim 11 but depends from claim 13 and thus incorporates all of its limitations. 35 U.S.C. § 112 ¶ 4. Petitioner has not shown that Deslippe’s master device 110 is one of a group of multimedia devices that is responsive to the system control signal it generates to implement an operational change, such as a volume adjustment. Petitioner has not explained why this difference between claim 15 and Deslippe would have been obvious to a person of ordinary skill. Accordingly, we are not persuaded Petitioner has shown a reasonable likelihood to prevail in showing claim 15 is unpatentable.” slip op. at 18
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,987,294 - One World Technologies, Inc. D/B/A Techtronic Industries Power Equipment v. The Chamberlain Group, Inc.Institution deniedPTAB · Oct 3, 2017 · IPR2017-01042 · APJ Jon M Jurgovan · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 1–22 unpatentable over Crusius alone or with Weik.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Under 35 U.S.C. § 314(a), 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 Preliminary Response, we determine that Petitioner has not established a reasonable likelihood that it would prevail with respect to the challenged claims. Therefore, we do not institute an inter partes review as to the challenged claims of the ’966 patent.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“battery.” Claim 9 further recites “the at least one rechargeable battery being removably connectable to electrically powered equipment . . . to provide power to the electrically powered equipment.” Thus, the claim recites one connection between the battery charging station and the rechargeable battery (“in electrical communication”) and another connection between the rechargeable battery and the electrically powered equipment (“removably connectable to”). Separately reciting two different connections between the devices and the rechargeable battery indicates that the devices are distinct from each other. The other independent claims include similar language. Claim 1 recites “a battery charging station in electrical communication with at least one rechargeable battery” and “electrically powered equipment . . . comprising an apparatus for receiving the at least one rechargeable battery and to be powered by the at least one rechargeable battery to perform a predetermined function.” Claim 15 recites “detecting whether the at least one rechargeable battery is in electrical communication with a battery charging station” and “providing power from the at least one rechargeable battery to the electrically powered equipment in response to the at least one rechargeable battery being electrically connected to the electrically powered equipment.” Claim 19 recites “a battery charging station configured to supply power to the at least one separable rechargeable battery that is configured to separably and electrically connect to and power electrically powered equipment.” The Specification of the ’966 patent confirms that the “electrically powered equipment” is distinct from the “battery charging station.” Figure 3 of the ’966 patent shows that battery charging station 82 includes batteries 104, 108 in respective receptacles 102, 106. Ex. 1001, Fig. 3. The ’966 patent never states that battery charging station 82 may include electrically powered equipment. Id. at 4:47–5:15. To the contrary, the ’966 patent shows electrically powered equipment 140 with battery 144 in receptacle 142 in Figure 5. Id. The ’966 patent does not state that electrically powered equipment 140 constitutes any part of battery charging station 82, but rather discloses that battery 144, which may be one of the batteries 102, 104 from battery charging station 82 in Figure 3, may be used in electrically powered equipment 140, and when finished, may be placed back in battery charging station 82 to be recharged. Id. at 5:51–6:3.” slip op. at 9
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentable
“Petitioner maps the claimed “battery charging station” to Crusius’s battery charge and control circuit 41 and conductors 46, 49. Pet. 26; Ex. 1012, Fig. 1 (annotated). Petitioner maps the claimed “electrically powered equipment” to Crusius’s LEDs 91–93, buzzer 95, and “associated circuitry.” Pet. 31–32. Petitioner does not identify any particular part(s) of Crusius as the “associated circuitry,” however. As shown and described in Crusius, and as Petitioner acknowledges, LEDs 91–93 and buzzer 95 are part of battery charge and control circuit 41. Ex. 1012 ¶ 14, Fig. 1; see Pet. 31 (arguing that Crusius “discloses electrically powered equipment other than and physically separate or separable from the BMO including LEDs 91–93, as well as buzzer 95 in the battery charge and control unit 41” (emphasis added)). Thus, in the language of the claims, Petitioner contends Crusius describes “electrically powered equipment” (Crusius’s LEDs 91–93, buzzer 95, and “associated circuitry”) that is part of a “battery charging station” (Crusius’s battery charge and control circuit 41). However, for the reasons explained above, the claims do not encompass this arrangement, but require a “battery charging station” and “electrically powered equipment” that are distinct devices. See supra Section I.E. Thus, Petitioner’s arguments as to how Crusius discloses a “battery charging station” and “electrically powered equipment” as recited in claim 1 are not persuasive. Petitioner has not shown a reasonable likelihood of prevailing with respect to claim 1.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Petitioner asserts one of ordinary skill in the art would have been “motivated to modify Crusius to include using two of the [barrier movement operators] disclosed in the Crusius reference in a single garage (for example, equipping a two-door garage with a second garage door opener according to Crusius).” Pet. 58–59; Ex. 1003 ¶¶ 219, 200. Petitioner notes multiple garage doors, such as disclosed by another reference, the Craftsman Owner’s Manual for Garage Door Operator Model 139.53919 (Ex. 1007, “Craftsman”), were common at the time of the ’966 patent. Id. According to Petitioner, for example, “with two Crusius garage door openers, the same remotes could be used to control multiple garage door openers, and the battery backup unit . . . could be interchanged between garage door openers in the event of a power outage.” Id. Petitioner’s reasons to modify Crusius and its declarant’s testimony regarding the same are unpersuasive. As Patent Owner asserts, the testimony of Petitioner’s declarant, Stuart Lipoff, concerning the reasons to modify Crusius is conclusory and lacks evidentiary support. Prelim. Resp. 25. Specifically, Mr. Lipoff states “during a power outage in a garage with two garage doors, a battery backup unit could be used to operate the first garage door, i.e., to gain entry in the garage from outside, then plugged into a second barrier movement operator to operate the second door, for example, if departing in a different vehicle.” Ex. 1003 ¶ 225. This testimony as to what someone “could” have done does not address, for example, why a person of ordinary skill would undertake the more difficult task of moving a backup battery from one barrier movement operator to another as opposed to simpler approaches, such as providing each barrier movement operator with its own backup battery or using a single backup battery connected to operate multiple barrier movement operators. See Belden Inc. v. Berk–Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (“[O]bviousness 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.” (emphases omitted)). Thus, we find Petitioner’s reasons to modify Crusius and its declarant’s testimony unpersuasive. Accordingly, Petitioner fails to establish a reasonable likelihood that any of the claims challenged are unpatentable over Crusius.” slip op. at 17
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,635,966 - One World Technologies, Inc. D/B/A Techtronic Industries Power Equipment v. The Chamberlain Group, Inc.Institution deniedPTAB · Feb 21, 2017 · IPR2016-01772 · APJ Joni Y Chang · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–6, 9–12, and 14–23 were unpatentable over Menard alone or in either asserted combination.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Under 35 U.S.C. § 314(a), 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.” For the reasons stated below, we determine that Petitioner has not established a reasonable likelihood that it would prevail with respect to any of the challenged claims. We hereby decline to institute an inter partes review in this proceeding.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“There is a presumption that a claim term carries its ordinary and customary meaning. CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002). To overcome this presumption, the patentee must “clearly set forth” and “clearly redefine” a claim term away from its ordinary meaning. Bell Atlantic Network Servs., Inc. v. Covad Commc’ns Grp., Inc., 262 F.3d 1258, 1268 (Fed. Cir. 2001). The disavowal must be “unmistakable” and “unambiguous.” Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1322 (Fed. Cir. 2012). Here, Petitioner’s proposed claim construction is inconsistent with the plain and ordinary meaning of the claim language. As Patent Owner notes, by using the possessive term “having,” the language recited in claim 1 unambiguously references the controller’s potential operational status conditions. Prelim. Resp. 8. The claim language makes clear that the controller itself has the potential operational status conditions, not any other component.” slip op. at 9
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“testimony that Menard describes the claimed “status condition signal” because “the operational status condition regarding the door’s position is defined at least two operating states, namely door open or door closed.” Pet. 27, 30 (citing to Ex. 1008 ¶ 89) (emphasis added, original emphasis omitted). Petitioner’s argument and Mr. Lipoff’s testimony conflate the status information regarding the door (e.g., the door’s position) with the present operational status condition of the controller, which is defined by at least two operating states of the controller (e.g., moving the door towards an opened or closed position). See Pet. 30; Ex. 1008 ¶¶ 89, 96. Notably, the door’s position (e.g., open or closed) indicates the status of the door. By 19 contrast, moving the door towards an open or closed position identifies an action being taken by the controller. Ex. 1001, 8:30–46. As recited in claim 5, for example, a plurality of operating states of the controller include: “moving a movable barrier in a first direction; . . . a lighting status change; . . . and receiving an operating parameter alteration signal.” Id. Indeed, each item on this list describes an action being taken by the controller. As noted above, the Specification of the ’275 patent also explains that “the wireless status condition data transmitter 15 serves to transmit a status condition signal that represents a present operational status condition of the controller 11.” Ex. 1001, 4:64–67 (emphasis added). The Specification further discloses that a status condition signal reflects “the actions being taken by the controller and/or the other operational conditions being experienced by the controller.” Id. at 5:33–36. Contrary to Petitioner’s argument (Pet. 22, 30), the position of the door does not describe an operation of the controller, much less a present operational status condition of the controller. More importantly, the portions of Menard cited by Petitioner do not support its argument, or Mr. Lipoff’s testimony, that “Menard discloses that information about any present operational status condition (which would include the condition of open door and obstruction present) can be transmitted wirelessly to a user device.” Pet. 30–31 (emphasis omitted) (citing Ex. 1003 ¶¶ 10, 11, 66, 69); Ex. 1008 ¶¶ 95–101. Indeed, those cited portions of Menard describe a transmission of status information of the door, light, and HVAC system, but not a present operational status condition of 20 the controller, as required by the challenged claims. Ex. 1003 ¶¶ 10–11 (“Position information is transmitted to the device by a transceiver coupled to the processor. Other information, such as temperature or light levels, may also be transmitted to the device.” (emphases added)), 66 (“Programming 150 may include instructions to cause processor 120 to transmit position information, or any other information, using all modes of communication.” (emphasis added)), 69 (“[The] door position information is received by the user.” (emphasis added)).” slip op. at 19
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“In particular, we are not persuaded by Petitioner’s contention that an ordinarily skilled artisan would have been “motivated to use the ‘failure code’ and ‘state code’ (and its multiple operating states) of Tazumi to report obstruction information as discussed by Menard.” See Pet. 62–63 (emphasis added); Ex. 1008 ¶ 161. Petitioner’s contention rests on the premise that Tazumi’s CPU 14 would generate a failure code or state code when there is an object (e.g., a human) at the doorway. Unlike Menard, however, Tazumi 27 treats an obstruction as a normal situation to open the door automatically, not a failure of a system part.” slip op. at 27
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,224,275
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.