- Hewlett Packard Enterprise Co. v. Chrimar Systems, Inc.Rehearing deniedPTAB · Nov 26, 2019 · IPR2019-00032 · APJ Frederick C Laney · IPR · Rehearing
The Board denied rehearing and maintained its denial of institution because § 315(a)(1) barred review after Petitioner filed and voluntarily dismissed a declaratory judgment action.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“the Board misapprehended or overlooked, and the place where each matter was previously addressed.” 37 C.F.R. § 42.71(d). The party challenging a decision in a request for rehearing bears the burden of showing that the decision should be modified. Id.” slip op. at 2
- PTAB / AIA Trials › §315(b) time barInstitution denied time barInstitution denied
“institution of an inter partes review because Petitioner previously filed a declaratory judgment action challenging the validity of claims in the ’012 patent, notwithstanding Petitioner’s voluntary dismissal without prejudice of that declaratory judgment action. Dec. 5–8. We explained that our conclusion was compelled by the Federal Circuit’s analysis in Click-to-Call Technologies, LP v. Ingenio, Inc., 899 F.3d 1321 (Fed. Cir. 2018) (en banc as to footnote 3). Dec. 6–8.” slip op. at 2
Discretionary denialPatents in suitUS 8,155,012 - Illumina, Inc. v. The Trustees Of Columbia University In The City Of New YorkAll claims unpatentablePTAB · Sep 9, 2019 · IPR2018-00797 · APJ Michelle N Ankenbrand · IPR · Final written decision
Claims 1 and 2 are unpatentable as obvious over the instituted grounds; the Board also denied Petitioner’s motion to exclude and found no estoppel against Patent Owner.
RulingsFinal written decision- ExcludeMotion to exclude, deniedDenied
“II. PETITIONER’S MOTION TO EXCLUDE In support of its briefing, Patent Owner provided a declaration of” slip op. at 9
- PTAB / AIA Trials › §315(e) estoppelEstoppel does not applyDecided for patent owner
“proceedings or would otherwise have a collateral estoppel effect on the current proceedings. See Paper 59, 4–5. For the reasons set forth below, we determine that the claims of the ’985 patent have material differences from the claims at issue in the previous proceedings, and that there is no inconsistency between Patent Owner’s positions in the current proceeding and in the previous proceedings. Accordingly, we determine that there is no estoppel attaching to Patent Owner with respect to the present inter partes reviews. Below, we provide a brief history of the previous proceedings and then address Petitioner’s contentions.” slip op. at 61
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“analogues for SBS, and Metzker reports actually achieving such a molecule. Accordingly, the preponderance of the evidence supports our determination that a person of ordinary skill in the art would have had a reasonable expectation of success and reasonable likelihood of success in “meet[ing] the limitations” of claim 1 to the extent the claim requires using such an analogue. Intelligent Bio-Systems, Inc., 821 F.3d at 1367.” slip op. at 50
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for patent owner
“analogues for SBS, and Metzker reports actually achieving such a molecule. Accordingly, the preponderance of the evidence supports our determination that a person of ordinary skill in the art would have had a reasonable expectation of success and reasonable likelihood of success in “meet[ing] the limitations” of claim 1 to the extent the claim requires using such an analogue. Intelligent Bio-Systems, Inc., 821 F.3d at 1367.” slip op. at 50
Patent outcomesUS 9,868,985 unpatentable§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,868,985 - Syrinix, Inc. v. Blacoh Fluid Control, Inc.Some claims unpatentablePTAB · May 22, 2019 · IPR2018-00414 · APJ Frederick C Laney · IPR · Final written decision
Claims 1–6, 10, 12, and 14 are unpatentable; the motion to amend is granted for substitute claims 22 and 24.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer foundDecided for patent owner
“We find the above remarks made during prosecution of the ’553 patent by the applicant to be an unmistakable disavowal of pressure fluctuations caused by a leak in a pipe from the scope of “dynamic transient pressure.” Accordingly, we agree with Patent Owner that the applicant narrowed the scope of “dynamic transient pressure” to exclude transient pressures caused by pipeline leaks.” slip op. at 18
- Skill levelSkill level board ownOther
“formulation regarding the level of ordinary skill in the art, and instead found the cited references to be representative of the level of ordinary skill in the art. Inst. Dec. 9–10 (citing Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the level of ordinary skill in the art may be evidenced by the cited references themselves)). The parties have not expressed any disagreement with this finding, nor have they suggested a more definitive characterization of the level of ordinary skill in the art is necessary to resolve a disputed issue. Accordingly, for purposes of this Decision we again treat the cited references as being representative of the level of skill in the art. However, the factual findings and legal conclusions set forth herein would” slip op. at 9
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend granted in partGranted in part
“claims, “the burden of persuasion ordinarily will lie with the petitioner to show that any proposed substitute claims are unpatentable by a preponderance of the evidence.” Lectrosonics, Inc. v. Zaxcom, Inc., Case IPR2018-01129, slip op. at 4 (PTAB Feb. 25, 2019) (Paper 15) (precedential). Before we evaluate the patentability of Patent Owner’s proposed substitute claims, we first must consider whether the proposed claims satisfy the threshold statutory and regulatory requirements set forth in 35 U.S.C. § 316(d) and 37 C.F.R. § 42.221. Id. at 4–10. Accordingly, Patent Owner must demonstrate (1) the amendment responds to a ground of unpatentability involved in the trial; (2) the amendment does not seek to enlarge the scope of the claims of the patent; (3) the amendment proposes a reasonable number of substitute claims; and (4) the amendment does not introduce new subject matter and has written description support in the original disclosure. Id.” slip op. at 74
Patent outcomesUS 7,219,553 mixedClaim constructioncites KSR · GrahamPatents in suitUS 7,219,553 - Hewlett Packard Enterprise Co. v. Chrimar Systems, Inc.Institution deniedPTAB · Apr 9, 2019 · IPR2019-00032 · APJ Frederick C Laney · IPR · Institution
The Board denied institution because Hewlett Packard Enterprise had previously filed a civil action challenging the validity of a claim, triggering the § 315(a)(1) bar.
RulingsInstitution decision- PTAB / AIA Trials › §315(b) time barInstitution denied time barInstitution denied
“Action,” bars institution of an inter partes review when a petitioner filed a civil action challenging the validity of a claim of a patent before the date on which that petitioner filed a petition requesting an inter partes review of that patent. 35 U.S.C. § 315(a)(1). Section 315(a)(1) does not include an exception for a civil action that was dismissed without prejudice. Id.; see Click-to-Call, 899 F.3d at 1330. And Congress demonstrated that it knew how to provide an exception to a statutory bar by including an exception to the § 315(b) time bar for a joinder request. 35 U.S.C. § 315(b); see Click-to- Call, 899 F.3d at 1331. Thus, Congress could have included an exception to the § 315(a)(1) bar for a civil action that was dismissed without prejudice, but did not. 35 U.S.C. § 315(a)(1); see Click-to-Call, 899 F.3d at 1331.” slip op. at 6
Discretionary denialPatents in suitUS 8,155,012 - Cisco Systems, Inc. v. Chrimar Systems, Inc.Institution deniedPTAB · Mar 12, 2019 · IPR2018-01515 · APJ Frederick C Laney · IPR · Institution
The Board denied institution because Cisco did not show that the cited art disclosed the claimed predetermined response for claims 1, 15, 34, 38, 49, and 64.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Under 35 U.S.C. § 314, an inter partes review must 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.” 35 U.S.C. § 314(a). Upon considering the evidence presented and the arguments made, we determine that Cisco has not demonstrated a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims. Accordingly, we do not institute an inter partes review.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner
“configured to be interrogated” found in the respective preambles of claims 1 and 38 demonstrate that the preambles are “superfluous and [have] no limiting effect because they “merely provide an intended use for the claimed apparatus.” Pet. 6 (citing Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002); Am. Med. Sys., Inc. v. Biolitec, Inc., 618 F.3d 1354, 1359 (Fed. Cir. 2010)). Cisco’s argument that the preambles are “superfluous,” however, ignores the antecedent basis the preambles provide to limitations found in the body of the claims. Although Cisco is correct that preamble language that merely states a purpose or intended use of an invention is generally not treated as limiting the scope of a claim, “when limitations in the body of the claim rely upon and derive antecedent basis from the preamble, then the preamble may act as a necessary component of the claimed invention.” Pacing Techs., LLC v. Garmin Int’l, Inc., 778 F.3d 1021, 1024 (Fed. Cir. 2015). The Catalina decision that Cisco relies upon is in accord with the Pacing holding and further holds that a preamble may also be limiting when it “is essential to understand limitations or terms in the claim body.” 289 F.3d at 808. In this case, we find the preambles of both claims 1 and 38 are limiting because they provide an antecedent for positively recited limitations and are essential to understanding those limitations. In particular, the preamble of claim 1 recites, “[a] BaseT Ethernet device configured to interrogate for [a] predetermined response via at least one direct current (DC) signal,” which the body of the claim subsequently refers to by reciting, “the predetermined response carried by at least two different magnitudes in slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“The problem with Cisco’s proposed interpretation is that it broadly recites any two magnitudes of DC current flow, regardless of whether those magnitudes of DC current are communicating a response that was predetermined. Thus, within the context of the claims, Cisco’s proposed interpretation appears to render “predetermined” meaningless because any two magnitudes of DC current flow encompasses even those responses that would not have been predetermined. Furthermore, claims 1 and 38 expressly state that the “predetermined response” is “carried by at least two different magnitudes in the flow of the at least one direct current (DC) signal.” Cisco’s proposed interpretation improperly conflates the predetermined response with the two different magnitudes of DC current flow used to carry the predetermined response. The plain language of the claims indicates that the two are not synonymous––the at least two different magnitudes of direct current are identified as the means by which the predetermined response is transferred. The specification of the ’825 patent supports our interpretation that a “predetermined response” is not just any two magnitudes of DC current flow. At several points, the specification discusses a BaseT Ethernet device that sends an interrogating signal from a central module to a remote module by way of a DC signal to request information previously defined. See Ex. 1006, 5:37–6:52, 9:1–17, 10:35–42, 15:56–16:35. For example, the specification describes the remote module as providing “a preprogrammed unique identification number” in response to a status request initiated by the central module. Id. at 6:6–14. This information is then compared to information predefined to be what the status signal was intended to retrieve and a determination is made about whether the response is valid. Id. at 6:30–44; see also 9:1–17, 10:35–42, 16:30–35. Thus, the examples of a predetermined response that the ’825 patent specification provides were known identification numbers.” slip op. at 11
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A. Level of Ordinary Skill in the Art Cisco contends that a person of ordinary skill in the art “would have had at least a B.S. degree in electrical engineering or computer science, or the equivalent, and at least three years of experience in the design of network communication products.” Pet. 9 (citing Ex. 1001 ¶ 42). Patent Owner does not provide an assessment of the appropriate level of skill in the art. See generally Prelim. Resp. We are persuaded that the assessment proposed by Cisco is correct. Further, in this case, the applied prior art reflects the appropriate level of skill at the time of the claimed invention, which is consistent with the level of skill that Cisco proposes. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 7
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,812,825 - Sonitor Technologies, Inc. v. Centrak, Inc.Rehearing deniedPTAB · Feb 21, 2019 · IPR2018-00740 · APJ Frederick C Laney · IPR · Rehearing
The Board denied Sonitor’s rehearing request, leaving institution denied for claims 1–14 and 21–33 because Sonitor had not shown a reasonable likelihood of prevailing on its obviousness challenge.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“(d) Rehearing. A party dissatisfied with a decision may file a single request for rehearing without prior authorization from the Board. The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“because, rather than resolving a factual dispute in Centrak’s favor, the Decision concludes Sonitor failed to show persuasively that there was a reasonable likelihood it would prevail in establishing the facts necessary to support an unpatentability determination of the challenged claims in view of Corrado (Ex. 1005) and Welles. Although we agreed with Centrak’s argument “that Sonitor’s basis for combining Corrado and Welles in the manner claimed relies on a critical unfounded factual assertion about what Welles teaches” (Dec. 14), we did not reach that conclusion by weighing Centrak’s argument against Sonitor’s alleged facts. Instead, we carefully evaluated Sonitor’s contentions, independent of any factual representations Centrak may have made, and determined, based on the record before us, that Sonitor’s support for the facts alleged was deficient. See Dec. 14–19. Put another way, we did not improperly credit Centrak’s uncorroborated attorney argument over Sonitor’s allegedly supported arguments; we made a determination that Sonitor did not establish a reasonable likelihood of success because Sonitor’s arguments did not have persuasive evidentiary support in the record before us.” slip op. at 3
- Expert testimonyPetitioner expert discountedDecided for patent owner
“Moreover, as noted in the Decision, Sonitor’s declarant, Gary Michael Gaukler, Ph.D., does not provide additional information sufficient to explain why the disputed passage would have been understood by a skilled artisan in the manner Sonitor alleges. Dec. 15 n. 5. Such conclusory testimony carries little, if any, probative and/or evidentiary value. See, e.g., 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts . . . on which the opinion is based is entitled to little or no weight.”). Dr. Gaukler states the same thing that Sonitor argues in the Petition (compare Pet. 17 with Ex. 1003 ¶¶ 51–52) and both fail to explain why a skilled artisan would have understood column 8, lines 5–9, of Welles to teach synchronizing the transmitters such that they transmit signals at different times; both simply state this as a conclusion. Therefore, Sonitor’s reliance on Dr. Gaulker’s declaration as proof of its argument on this point is misplaced. Homeland Housewares, LLC v. Whirlpool Corp., 865 F.3d 1372, 1378 (Fed. Cir. 2017) (“we must disregard the testimony of an expert that is plainly inconsistent with the record”).” slip op. at 5
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)New argument disregardedDenied
“misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id. The Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756 (Aug. 14, 2012) (“Practice Guide”) explains that “[e]vidence not already of record at the time of the decision will not be admitted absent a showing of good cause.” Id. at 48,768 (emphasis added). Here, Sonitor has not established “good cause” for us to consider Centrak’s Reply Brief. Sonitor does not contend Centrak’s Reply Brief was not available before we issued our Decision in this matter. Sonitor asserts instead that it “did not earlier present these contrary admissions by Centrak because the ‘timing’ and ‘synchronization’ features of the claims were not the focal point of the proceeding until the Board’s institution decision adopted Centrak’s factually implausible interpretation of Welles.” Req. Reh’g 12. Sonitor, however, could have sought to supplement the record and provide additional briefing immediately after receiving Centrak’s Preliminary Response, but it chose not to do so. See 37 C.F.R. § 42.108(c) (“A petitioner may seek leave to file a reply to the preliminary response . . . . Any such request must make a showing of good cause.”). Because Sonitor fails to provide a reasonable explanation for why it did not present Centrak’s Reply Brief sooner, and fails to otherwise justify persuasively why we should consider the Reply Brief arguments made by Centrak in a different case to address a different issue (i.e., written description and/or enablement), we do not find “good cause” exists for us to allow it to become part of this record now. Therefore, Sonitor’s arguments based on Centrak’s Reply Brief are not entitled to consideration.” slip op. at 7
NonePatents in suitUS 9,622,030
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.