- 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 - Arris Group, Inc. / Tellabs, Inc. et al. v. Cirrex Systems LLCAll claims unpatentablePTAB · Dec 2, 2015 · IPR2014-00815 · APJ Trenton A Ward · IPR · Final written decision
Claim 30 is unpatentable as anticipated by Nicholson and Yokoyama and obvious over Shih.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“claim language. Bell Atl. Network Servs., Inc. v. Covad Comm. Grp., Inc., 262 F.3d 1258, 1268 (Fed. Cir. 2001). To overcome this presumption, the patentee must “clearly set forth” and “clearly redefine” a claim term away from its ordinary meaning. Id. The disavowal must be “unmistakable” and “unambiguous.” Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1322 (Fed. Cir. 2012). This standard is “exacting.” Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1366 (Fed. Cir. 2012). We do not find that Patent Owner has met this exacting standard, and, in the absence of an express definition for the term “thin-film filter,” we decline to incorporate Patent Owner’s lengthy recitation as the broadest reasonable interpretation of the term “thin-film filter.” In view of the plain and ordinary meaning of the term “thin-film filter” and the disclosure in the ’953 patent Specification, we construe the term “thin-film filter” to mean “a filter comprised of stacked layers for filtering light.”” slip op. at 13
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Claim 30 further requires “a mask in intimate contact with at least one of said filter surfaces, said mask substantially opaque in at least some spectral region.” For this claim limitation, Petitioner relies upon Nicholson’s disclosure of absorbance layer 12, shown in the annotated Figure 1 above. Pet. 31 (citing Ex. 1005, 3:23–25). Nicholson states that the “absorbance layer 12 [is] formed of highly optical absorbent material such as carbon black.” Ex. 1005, 3:24–25. Petitioner argues that this highly absorbent material, such as carbon black, would be substantially opaque in at least some spectral region. Pet. 31–32 (citing Ex. 1003 ¶ 94). As discussed above, we construe a mask as “a material that blocks the passage of at least selected photons.” We are persuaded that Petitioner sufficiently demonstrates that absorbance layer 12 in Nicholson provides a material that blocks the passage of at least selected photons. In its Response, Patent Owner argues that Nicholson does not anticipate because it fails to teach a thin-film filter with layers having packing factors approaching 100%. PO Resp. 6–7. As we do not adopt Patent Owner’s proposed construction of “thin-film filter” requiring these limitations, Patent Owner’s arguments are moot. In fact, during the oral argument, Patent Owner conceded that, if the Board were to adopt the same construction for “thin-film filter” as set forth in the decision to institute, Nicholson would anticipate claim 30. Tr. 38.5 As discussed above, we maintain the same construction for “thin-film filter” as in the decision to institute. Dec. on Inst. 6. For the foregoing reasons, we determine that Petitioner has demonstrated by a preponderance of the evidence that claim 30 is anticipated by Nicholson.” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“To determine whether there was an apparent reason to combine the known elements in the way a patent claims, it will often be necessary to look . . . [at] the background knowledge possessed by a person having ordinary skill in the art.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 401 (2007). Petitioner argues that thin-film filters were well known in the art. Pet. 25 (citing Ex. 1003 ¶ 45). As discussed above, we construe “thin-film filter,” to mean “a filter comprised of stacked layers for filtering light.” Shih discloses that antireflection coatings are comprised of “layers of TiO2 and SiO2” and that “[t]he antireflection coatings enhance the transmission of light in the forward direction through the input fiber 20.” Ex. 1004, 4:42– 48. Thus, we are persuaded that Petitioner has presented sufficiently an “articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” KSR, 550 U.S. at 418 (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)) (internal quotation marks omitted). For the foregoing reasons, we determine that Petitioner has demonstrated by a preponderance of the evidence that claim 30 would have been obvious in view of Shih. slip op. at 24
Patent outcomesUS 6,404,953 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSRPatents in suitUS 6,404,953 - Unified Patents Inc. v. Finnavations LLCInstitution deniedPTAB · Nov 30, 2015 · IPR2015-01209 · APJ Meredith C Petravick · IPR · Institution
The Board denied institution on all challenged claims because Petitioner did not show a reasonable likelihood that any claim was unpatentable under the asserted § 103 grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Finnavations LLC (“Patent Owner”) filed a Preliminary Response to the Petition. Paper 11 (“Prelim. Resp.”). 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.” 35 U.S.C. § 314. Petitioner fails to demonstrate that there is a reasonable likelihood that it would prevail with respect to at least one of the challenged claims. For the reasons described below, we deny institution of inter partes review.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“We are persuaded that the Petition fails to sufficiently establish that it would have been obvious to one of ordinary skill in the art to modify Williams’ authorization display screen depicted in Figure 11 to include a category field configured to accept user input as disclosed in Chancey. Petitioner and its declarant, Dr. Shamos, assert that categorizing the transaction before exporting it to the personal financial management application is a matter of design choice and rely upon Chancey and Wells for support. Pet. 16; Shamos Decl. ¶ 66. Although Chancey and Wells both disclose a category field configured to accept user input, neither Chancey nor Wells teaches including such a category field on a GUI generated prior to the acceptance of an online transaction, like Williams’ authorization display screen depicted in Figure 11. As discussed above, Chancey discloses that the financial transactions are categorized in the process of entering them into a financial account from a financial statement. Wells discloses a user uploading financial transaction data to a server via a text entry window after a transaction concludes and separately discloses uploading transaction data from a vendor without any additional effort on the user’s part. This does not sufficiently establish that it would have been obvious to one of ordinary skill in the art to modify Williams’ authorization display screen depicted in Figure 11, which is generated prior to the acceptance of a transaction, to include a category field configured to accept user input. Neither Petitioner nor its declarant, Dr. Shamos, provide sufficient other rationale as to why providing a category filed configured to accept user input on Williams’ GUI depicted in Figure 11 would merely be a matter of design choice. Upon this record, we determine that Petitioner fails to establish that there is a reasonable likelihood that claims 1, 12, and 19, and claims 2–7, 11, 13–18, and 20, dependent therefrom, are unpatentable under 35 U.S.C. § 103(a) over Williams and Chancey.” slip op. at 12
§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,132,720 - PTAB · Nov 6, 2015 · IPR2014-00587 · APJ Meredith C Petravick · IPR · Rehearing
The Board denied IBM’s rehearing request, leaving intact its determination that claim 1 was not shown unpatentable over Hughes and Abraham because they were not prior art.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“decision for an abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion may be determined if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. See Arnold Partnership v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004). “The burden of showing a decision should be modified lies with the party challenging the decision.” 37 C.F.R. § 42.71(d).” slip op. at 3
- ExcludeOther
“concerning the issue of inventorship and concerning Mr. Kumar’s alleged date of employment because we dismissed Patent Owner’s motion to exclude such evidence as moot. Req. 1–2. Patent Owner’s motion to exclude sought to exclude Exhibits 1032, 1034, 1035 and 1036. Paper 40. Petitioner proffered exhibit 1032 and 1034 to establish that Mr. Kumar was an inventor. Pet. Reply 11. However, it is apparent from the ’694 patent, itself, that Mr. Kumar was named as an inventor when the ’694 patent was filed. Ex. 1004, 1. Petitioner proffered exhibits 1035 and 1036 to establish that Mr. Kumar did not start work at AT&T until July 1997. Pet. Reply 11– 12. In reaching our decision, we assumed that Petitioner was correct that Mr. Kumar did not start until July 1997. See Dec. 17–18. We, thus, dismissed Patent Owner’s motion to exclude as moot because we did not rely upon exhibits 1032, 1034, 1035, and 1036 in reaching our Decision. Id. at 19. As indicated in our Decision, even assuming that Mr. Kumar, a named inventor, did not start work at AT&T until July 1997, we were not persuaded that the alleged discrepancy between Mr. Kumar’s alleged date of employment and Patent Owner’s alleged date of reduction to practice ipso facto leads to the conclusion that the claimed subject matter could not have been reduced to practice by June, 1996. See Id. at 17–18.” slip op. at 6
- Strike new argumentDecided for patent owner
“Petitioner further argues that consideration of Patent Owner’s argument is improper procedurally because it was first raised in Patent Owner’s motion to exclude. Req. 6–7. We acknowledge that previous Board decisions have stated that a motion to exclude is not an opportunity for submitting new arguments or a sur-reply. See Id. We, however, are not persuaded this was an abuse of our discretion that requires us to modify our decision to determine that Petitioner’s argument outweighs Patent Owner’s evidence of prior invention. We note that Patent Owner responded to Patent Owner’s argument regarding inventorship in its opposition to Patent Owner’s motion to exclude and had an opportunity to respond to the issue during oral argument. See Paper 48, 5–6; Paper 54, 14–16, 20–24.” slip op. at 7
NonePatents in suitUS 6,826,694 - Fca US LLC v. Jacobs Vehicle Systems, Inc.Institution deniedPTAB · Oct 23, 2015 · IPR2015-01234 · APJ Richard E Rice · IPR · Institution
The Board denied review of claims 38–42, 44, and 45 because Patent Owner had statutorily disclaimed all challenged claims before institution.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“which provides that an 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). We determine that Patent Owner has filed statutory disclaimers under 35 U.S.C. § 253(a) in compliance with 37 C.F.R. § 1.321(a), disclaiming all of challenged claims 38–42, 44, and 45 of the ’492 Patent. Ex. 3001. Accordingly, no inter partes review will be instituted based on the challenged claims. See 37 C.F.R. § 42.107(e).” slip op. at 2
- Adverse judgmentAdverse judgmentDecided for patent owner
“We further determine that Patent Owner’s statutory disclaimers, which were filed prior to institution of a trial in this case, should not be construed as a request for adverse judgment. Under 37 C.F.R. § 42.73(b), “[a] party may request judgment against itself at any time during a proceeding” and “[a]ctions construed to be a request for adverse judgment include . . . (2) [c]ancellation or disclaimer of a claim such that the party has no remaining claim in the trial” (emphasis added). The term “trial” in 37 C.F.R. § 42.73(b)(2) means “a contested case instituted by the Board based upon a petition.” See 37 C.F.R. § 42.2. Nothing in 37 C.F.R. § 42.73(b)(2) requires us to construe Patent Owner’s statutory disclaimers as a request for adverse judgment prior to institution of a trial.” slip op. at 3
NonePatents in suitUS 6,883,492 - International Business Machines Corporation v. Intellectual Ventures II, LLCNo claims unpatentablePTAB · Sep 23, 2015 · IPR2014-00587 · APJ Meredith C Petravick · IPR · Final written decision
Claim 1 was not shown unpatentable because Petitioner did not establish that Hughes and Abraham qualify as prior art.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“construction, in light of the Specification, of “contents of the packet” in step c is the header and/or payload of the packet. Petitioner’s construction is supported, sufficiently, by the ’694 patent, itself, which discloses embodiments of selecting access rules based upon the header and/or payload of the packet. The ’694 patent discloses a first embodiment in which the firewall selects a rule based on header parameters only, and discloses that, based on the header parameters, the packet may be passed or dropped. See Ex. 1004, col. 2, ll. 35–37, 40–43, col. 3, ll. 10–12, Fig 1 (path formed by steps 101, 102, 103, and 104). The ’694 patent also discloses that an access control proxy selects a rule based on an analysis of the payload of a single or multiple packets. Id. at col. 3, ll. 4–8, 18–22, 30–32, col. 4, ll. 28–34, 38–40, Fig. 1 (path formed by steps 106 and 107). The ’694 patent further discloses alternate embodiments in which the “access control proxy selects an access rule that pertains to the packet based both on an analysis of the payload and the header parameters of the packet” (Ex. 1004, col. 3, ll. 38–41) and the “access rule is retrieved based upon a combination of the contents and header parameters of the packet” (id. at col. 4, ll. 36–38).” slip op. at 9
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedReference not prior artDecided for patent owner
“To establish an actual reduction to practice, the patentee must prove that he (1) constructed an embodiment or performed a process that meets all the claimed limitations of the invention, and (2) determined that the invention worked for its intended purpose. Cooper v. Goldfarb, 154 F.3d 1321, 1327 (Fed. Cir. 1998). “The essential inquiry here is whether the advance in the art represented by the invention . . . was embodied in a workable device that demonstrated that it could do what it was claimed to be capable of doing.” Scott v. Finney, 34 F. 3d 1058, 1063 (Fed. Cir. 1994) (emphasis omitted) (quoting Farrand Optical Co. v. United States, 325 F.2d 3278, 333 (2d Cir. 1963)). “In order to establish an actual reduction to practice, an inventor’s testimony must be corroborated by independent evidence. . . . [A] ‘rule of reason’ analysis is applied to determine whether an inventor’s testimony regarding reduction to practice has been sufficiently corroborated.” Cooper, 154 f.3d at 1330 (citation omitted); see also Mahurkar v. C.R. Bard, Inc., 79 F.3d 1572, 1577 (Fed. Cir. 1996) (corroboration requirement “arose out of a concern that inventors testifying in patent infringement cases would be tempted to remember facts favorable to their case by the lure of protecting their patent or defeating another’s patent”). The sufficiency of corroboration is determined according to a “rule of reason.” Price v. Symsek, 988 F.2d 1187, 1195 (Fed. Cir. 1993). This, however, does not dispense with the requirement that some independent evidence provide corroboration. Coleman v. Dines, 754 F.2d 353, 360 (Fed. Cir. 1985). The requirement of “independent” corroboration requires evidence other than the inventor’s testimony. In re NTP, Inc., 654 F.3d 1279, 1291–92 (Fed. Cir. 2011).” slip op. at 12
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“of the evidence, that the challenged claim is unpatentable. 35 U.S.C. § 316(e). This burden includes, inter alia, showing that any reference on which it relies is prior art under 35 U.S.C. § 102. See Mahurkar, 79 F.3d at 1576 (holding that accused infringer “bore the burden of persuasion . . . on all issues relating to the status of [the asserted reference] as prior art”). Hughes and Abraham presumptively constitute prior art under 35 U.S.C. §§ 102(a) or 102(e) because their filing dates are prior to the ‘694 patent’s earliest effective filing date, giving rise to Patent Owner’s burden of coming forward with evidence supporting a date of invention before September 9, 1998. Mahurkar, 79 F.3d at 1576–77; see Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1327 (Fed. Cir. 2008) (finding that when party challenging validity came forward with art that is prior to the challenged patent’s application date, the patentee has the burden of going forward with evidence that “the asserted claim is entitled to the benefit of a filing date prior to the alleged prior art”). Upon consideration of the all the evidence, we are persuaded that Patent Owner has met its burden of coming forward with sufficient evidence to corroborate independently inventor Mr. Dutta’s testimony that the inventors of the ’694 patent reduced to practice the claimed invention “at least as early as early 1996 but no later than June 11, 1996” (PO Resp. 36). Thus, we are not persuaded that Hughes and Abraham are prior art under 35 U.S.C. §§ 102(a) or 102(e). C. Obviousness over Hughes and Abraham Petitioner fails to demonstrate that claim 1 is unpatentable under 35 U.S.C. § 103 because Petitioner has not demonstrated that Hughes and Abraham are prior art.” slip op. at 18
- ExcludeMotion to exclude, deniedMixed
“under Federal Rule of Evidence (“FRE”) 602. Pet. Mot. 4–5; Pet. Mot. Reply 1–3. FRE 602 states that “[a] witness may testify to a matter only if evidence is introduced sufficient to support a finding that the witness has personal knowledge of the matter. Evidence to prove personal knowledge may consist of the witness’s own testimony.” Fed. R. Evid. 602. Exhibit 2006 is the Declaration of Partha Dutta. According to Petitioner, in paragraphs 22, 23, and 26, Mr. Dutta testimony contains statements that require an understanding of the proper legal scope of the ’694 patent, but there is insufficient evidence to support a finding Mr. Dutta has personal knowledge of that proper legal scope of the ’694 patent. Id. at 4. We dismiss Petitioner’s motion to exclude paragraphs 22, 23, and 26 paragraphs of Exhibit 2006 as moot because we do not rely upon the statements made in these paragraphs that Petitioner alleges to require an understanding of the proper legal scope of the ’694 patent in reaching our decision. Although we cite to paragraphs 22, 23, and 26 of Ex. 2006 above, we only rely upon other statements in those paragraphs, which do not address the legal scope of the ’694 patent, such as “the prototype code is no longer available.” Ex. 2006 ¶ 26.” slip op. at 20
Patent outcomesUS 6,826,694 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 6,826,694 - Compass Bank / Commerce Bancshares, Inc. et al. v. Intellectual Ventures II, LLCAll claims unpatentablePTAB · Sep 23, 2015 · IPR2014-00786 · APJ Meredith C Petravick · IPR · Final written decision
Claim 1 is unpatentable as anticipated by Rubin and obvious over Norman and Rubin; Cunningham was not shown to anticipate claim 1.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“construction, in light of the Specification, of “contents of the packet” in step c is the header and/or payload of the packet. Petitioner’s construction is supported, sufficiently, by the ’694 patent itself, which discloses embodiments of selecting access rules based upon the header and/or payload of the packet. The’694 patent discloses a first embodiment in which the firewall selects a rule based on header parameters only, and discloses that, based on the header parameters the packet may be passed or dropped. See Ex. 1004, col. 2, ll. 35–37, 40–43, col. 3, ll. 10–12; Fig 1 (path formed by steps 101, 102, 103, and 104). The ’694 patent also discloses that an access control proxy selects a rule based on an analysis of the payload of a single or multiple packets. Id. at col. 3, ll. 4–8, 18–22, 30–32; col. 4, ll. 28–34, 38–40; Fig. 1 (path formed by steps 106 and 107). The ’694 patent further discloses alternate embodiments, in which the “access control proxy selects an access rule that pertains to the packet based both on an analysis of the payload and the header parameters of the packet” (Ex. 1004, col. 3, ll. 38–41) and the “access rule is retrieved based upon a combination of the contents and header parameters of the packet” (id. at col. 4, ll. 36–38).” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for petitioner
“Given the above, we determine that the broadest reasonable construction, in light of the Specification, of step b is to choose the access rule based upon the contents of the payload of the received packet. Likewise, the broadest reasonable construction, in light of the Specification, of step c is the access rule is chosen based upon a combination of the contents of the received packet and another packet. The broadest reasonable construction of these steps does not require selecting the rule by choosing the access rule from set of rules or preclude selecting the access rule by choosing whether or not the rule is pertinent. Although the Specification discloses selecting a rule from a set of rules (Ex. 1004, col. 3, ll. 10–12, 30–32, col. 4, ll. 47–59), claim 1 does not set forth a set of rules or require that the rule is selected from a set of rules. Limitations appearing in the Specification but not recited in the claim are not read into the claim. E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 1369 (Fed. Cir. 2003) (claims must be interpreted “in view of the specification” without importing limitations from the specification into the claims unnecessarily).” slip op. at 14
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedDecided for patent owner
“This burden includes, inter alia, showing that any reference on which it relies is prior art under 35 U.S.C. § 102. See Mahurkar, 79 F.3d at 1576 (holding that accused infringer “bore the burden of persuasion . . . on all issues relating to the status of [the asserted reference] as prior art”). Cunningham presumptively constitutes prior art under 35 U.S.C. § 102(e) because its September 9, 1998 filing date is prior to the ’694 patent’s earliest effective filing date, giving rise to Patent Owner’s burden of coming forward with evidence supporting a date of invention before September 9, 1998. Mahurkar, 79 F.3d at 1576–77; see Technology Lic. Corp. v. Videotek, Inc., 545 F.3d 1316, 1327 (Fed. Cir. 2008) (finding that when party challenging validity came forward with art that is prior to the challenged patent’s application date, the patentee has burden of going forward with evidence that “the asserted claim is entitled to the benefit of a filing date prior to the alleged prior art”). Upon consideration of Patent Owner’s proffered evidence, as discussed above, we are persuaded that Patent Owner has met its burden of coming forward with sufficient independently corroborated evidence showing that the inventors of the ’694 patent reduced to practice the claimed invention “at least as early as early 1996 but no later than June 11, 1996” (id. at 40). Thus, upon consideration of all of the evidence, we are not persuaded that Cunningham is prior art under 35 U.S.C. § 102(e).” slip op. at 25
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityReference is prior artPrinted publication establishedDecided for petitioner
“was publicly accessible in February 1997 and, thus, qualifies as prior art under 35 U.S.C. § 102(b). The determination of whether a given reference qualifies as a prior art “printed publication” involves a case-by-case inquiry into the facts and circumstances surrounding the reference’s disclosure to members of the public. In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). The key inquiry is whether the reference was made “sufficiently accessible to the public interested in the art” before the critical date. In re Cronyn, 890 F.2d 1158, 1160 (Fed. Cir. 1989); In re Wyer, 655 F.2d 221, 226 (CCPA 1981). “A given reference is ‘publicly accessible’ upon a satisfactory showing that such document has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it.” Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 1378 (Fed. Cir. 2006) (citation omitted). Dr. Aviel Rubin testifies that Rubin is a true copy of the paper, which was presented by his co-author David Martin at the Symposium on Network and Distributed System Security, held on February 10–11, 1997. Ex. 1027 ¶¶ 1–2, 6. Dr. Rubin also testifies that he personally attended the symposium and that he observed that copies of Rubin were freely available to the several hundred attendees. Id. ¶¶ 3, 8–9. Dr. Rubin further testifies that Rubin was published in the Proceedings of the Symposium on Network and Distributed System Security, which are handed out to participants at the symposium. See id. ¶¶ 1, 13. Dr. Rubin’s testimony is consistent with Rubin itself, which states that it was “[r]eprinted from The Proceedings of the 1997 Symposium on Network and Distributed Systems Security.” Ex. 1009, n. 1. Given the above, we determine that Rubin was a printed publication publicly available as of February 1997 and is prior art under 35 U.S.C. § 102(b). See Massachusetts Institute of Technology v. AB Fortia, 774 F.2d 1104, 1109 (Fed. Cir. 1985) (paper orally presented at a scientific meeting open to all persons interested in the subject matter, with written copies distributed without restriction to all who requested, is a printed publication). Thus, Rubin cannot be overcome by proving prior invention.” slip op. at 16
Patent outcomesUS 6,826,694 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,826,694 - Informatica Corporation v. Protegrity CorporationRehearing deniedPTAB · Aug 6, 2015 · CBM2015-00010 · APJ Meredith C Petravick · CBM · Rehearing
The Board denied both rehearing requests, leaving institution and denial of the identified claims and grounds unchanged after finding no abuse of discretion.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. ANALYSIS A. Standard of Review When rehearing a decision on petition, the Board will review the decision for an abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion may be determined if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. See Arnold Partnership v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004). The party challenging the decision has the burden of showing a decision should be modified, and the request for rehearing must identify specifically all matters the party believes the Board misapprehended or overlooked. 37 C.F.R. § 42.71(d). In its Request for Rehearing, the dissatisfied party must (1) “specifically identify all matter that party believes the Board misapprehended or overlooked” and (2) identify the place where each matter was previously addressed. Id.” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Other
“A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). “[T]he prior art reference—in order to anticipate under 35 U.S.C. § 102—must not only disclose all elements of the claim within the four corners of the document, but must also disclose those elements ‘arranged as in the claim.’” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008) (quoting Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983). “[I]t is not enough that the prior art reference . . . includes multiple, distinct teachings that the artisan might somehow combine to achieve the claimed invention.” Id. at 1371. “[D]ifferences between the prior art reference and a claimed invention, however slight, invoke the question of obviousness, not anticipation.” Id. Petitioner first quotes a passage from Denning that describes the columns of the access matrix as corresponding to objects which are controlled by the access matrix. See Ex. 1006, 192. Petitioner then quotes a disparate portion of Denning that describes a relational database system that consists of n-tuples having n attributes or columns, with respect to authorization lists, which are a different type of access control. See id. at 213. Neither of these quoted passages links the objects of the access matrix model to the columns of the relational database system, described in connection with the authorization lists, or provides any other adequate explanation as to how Denning discloses that the object of the access matrix model “corresponds” to the columns of the relational database system. In the Petition, Petitioner and its declarant also state that Denning discloses that the access matrix is applicable to database systems. Pet. 3; Ex. 1010 ¶ 54 (citing Ex. 1006, 192). However, this also does not describe the objects of the access matrix model as columns of the relational database system. slip op. at 14
- PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner
“LLC. See Decision 9–10. As we stated in our Decision, a party may not petition for post-grant review if it has filed a civil action challenging the validity of a claim of the patent before the petition is filed. 35 U.S.C. § 325(a)(1); 37 C.F.R. § 42.201(a); see Securebuy, LLC, CBM2014-00035, (PTAB Apr. 25, 2014) (Paper 12, precedential) (explaining that 35 U.S.C. § 325(a)(1) applies to covered business method patent review proceedings). In this case, however, Petitioner’s filing of a civil action before filing the Petition did not trigger the statutory bar because the civil action was dismissed without prejudice. See id. Dismissal without prejudice does not trigger the statutory bar. See Decision 9 (citing Cyanotech Corp. v. Bd. of Trustees of the Univ. of Ill., IPR2013-00401, slip op. at 11–12 (PTAB Dec. 19, 2013) (Paper 17) (“Excluding an action that de jure never existed from the scope of § 315(a)(1) is consistent with both relevant case law and legislative history.”); Callidus Software, Inc. v. Versata Software, Inc., CBM2013-00052, slip op. at 5–7 (PTAB Mar. 4, 2014) (Paper 21).); “The dismissal of an action without prejudice leaves the parties as though the action had never been brought. Ariosa Diagnostics v. Isis Innovation Ltd., IPR2012-00022, slip op. at 16–18 (PTAB Sept. 2, 2014)(Paper 166) (citing Graves v. Principi, 294 F.3d 1350, 1356 (Fed. Cir. 2002)). In SecureBuy, LLC, the Board determined the 35 U.S.C. § 325(a)(1) applied to covered business method review proceedings, but made no determination as to whether or not a dismissal without prejudice triggered the statutory bar. See SecureBuy, LLC, CBM2014-00035 (PTAB April 25, 2014)( Paper 12).” slip op. at 4
- BurdenDecided for patent owner
“A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). “[T]he prior art reference—in order to anticipate under 35 U.S.C. § 102—must not only disclose all elements of the claim within the four corners of the document, but must also disclose those elements ‘arranged as in the claim.’” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008) (quoting Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983). “[I]t is not enough that the prior art reference . . . includes multiple, distinct teachings that the artisan might somehow combine to achieve the claimed invention.” Id. at 1371. “[D]ifferences between the prior art reference and a claimed invention, however slight, invoke the question of obviousness, not anticipation.” Id. Petitioner first quotes a passage from Denning that describes the columns of the access matrix as corresponding to objects which are controlled by the access matrix. See Ex. 1006, 192. Petitioner then quotes a disparate portion of Denning that describes a relational database system that consists of n-tuples having n attributes or columns, with respect to authorization lists, which are a different type of access control. See id. at 213. Neither of these quoted passages links the objects of the access matrix model to the columns of the relational database system, described in connection with the authorization lists, or provides any other adequate explanation as to how Denning discloses that the object of the access matrix model “corresponds” to the columns of the relational database system. In the Petition, Petitioner and its declarant also state that Denning discloses that the access matrix is applicable to database systems. Pet. 3; Ex. 1010 ¶ 54 (citing Ex. 1006, 192). However, this also does not describe the objects of the access matrix model as columns of the relational database system. Petitioner alternatively argues that Denning’s objects at the top of the columns of the access matrix model are associated with a data category, when “data category” is given the broadest reasonable construction adopted in the Decision. Pet. Req. 3, 9. Petitioner states: “[f]or example, M1 refers to a division of data that shares a common attribute of being stored in memory segment M1.” Id. Petitioner, however, does not identify where this argument was raised in the first instance in the Petition, and we can find no such argument in the Petition. We could not have overlooked or misapprehended an argument that was not raised in the Petition. We, thus, are not persuaded by Petitioner that we abused our discretion in denying institution of covered business method patent review of claims 15, 31, 33, and 47 on the ground of obviousness over Denning. slip op. at 14
§ 101 eligibility§ 102 anticipationDiscretionary denialPatents in suitUS 8,402,281 - Whole Space Industries Ltd. v. Zipshade Industrial (B.V.I.) Corp.Institution deniedPTAB · Jul 24, 2015 · IPR2015-00488 · APJ Barry L Grossman · IPR · Institution
The Board denied institution because the Petition did not show a reasonable likelihood of proving any challenged claim unpatentable, given unclear grounds and insufficiently specific supporting analysis.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Petitioner has the burden of proof to establish that it is entitled to the requested relief. 37 C.F.R. § 42.20(c). We address only the basis, rationale, and reasoning put forth by the Petitioner in the Petition, and resolve all vagueness and ambiguity in Petitioner’s arguments against the Petitioner. See Liberty Mutual Ins. Co. v. Progressive Casualty Ins. Co., Case CBM-2012-00003, slip op. at 10 (PTAB Oct. 25, 2012) (Paper 8). Under our rules, the petition must contain a “full statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence . . . .” 37 C.F.R. § 42.22(a)(2). Our rules also require that the petition itself must: (1) “identify specific portions of the evidence that support the challenge,” and (2) “specify where each element of the claim is found in the prior art patents or printed publications relied upon.” 37 C.F.R. §§ 42.104(b)(4), 104(b)(5)). The Petition fails to satisfy each of these requirements. As explained below, the Petition contains confusing, inconsistent grounds. Also, the Petition repeatedly cites the thirty-one page, seventy-four paragraph Declaration of Ren Judkins (Ex. 1002) in its entirety, rather than citing specific portions thereof, for evidentiary support on a substantial number of specific factual issues. As explained in the Office Patent Trial Practice Guide, parties requesting inter partes review should “avoid submitting a repository of all the information that a judge could possibly consider, and instead focus on concise, well-organized, easy-to-follow arguments supported by readily identifiable evidence of record.” 77 Fed. Reg. 48,756, 48,763 (Aug. 14, 2012).” slip op. at 8
- BurdenDenied
“requested relief. 37 C.F.R. § 42.20(c). We address only the basis, rationale, and reasoning put forth by the Petitioner in the Petition, and resolve all vagueness and ambiguity in Petitioner’s arguments against the Petitioner. See Liberty Mutual Ins. Co. v. Progressive Casualty Ins. Co., Case CBM-2012-00003, slip op. at 10 (PTAB Oct. 25, 2012) (Paper 8). Under our rules, the petition must contain a “full statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence . . . .” 37 C.F.R. § 42.22(a)(2). Our rules also require that the petition itself must: (1) “identify specific portions of the evidence that support the challenge,” and (2) “specify where each element of the claim is found in the prior art patents or printed publications relied upon.” 37 C.F.R. §§ 42.104(b)(4), 104(b)(5)). The Petition fails to satisfy each of these requirements. As explained below, the Petition contains confusing, inconsistent grounds. Also, the Petition repeatedly cites the thirty-one page, seventy-four paragraph Declaration of Ren Judkins (Ex. 1002) in its entirety, rather than citing specific portions thereof, for evidentiary support on a substantial number of specific factual issues. As explained in the Office Patent Trial Practice Guide, parties requesting inter partes review should “avoid submitting a repository of all the information that a judge could possibly consider, and instead focus on concise, well-organized, easy-to-follow arguments supported by readily identifiable evidence of record.” 77 Fed. Reg. 48,756, 48,763 (Aug. 14, 2012).” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“Petitioner also does not identify a persuasive, fact-based “reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does.” KSR, 550 U.S. at 418. Whether a patent claiming the combination of prior art elements would have been obvious is determined by whether the improvement is more than the predictable use of prior art elements according to their established functions. Id. at 417. To reach this conclusion, however, requires more than a mere showing that the prior art includes separate references covering each separate limitation in a claim under examination. Unigene Labs., Inc. v. Apotex, Inc., 655 F.3d 1352, 1360 (Fed. Cir. 2011) (citing KSR, 550 U.S. at 418). Rather, obviousness requires the additional showing that a person of ordinary skill at the time of the invention would have selected and combined those prior art elements in the normal course of research and development to yield the claimed invention. Id. Petitioner must clearly express and explain its positions, especially on precisely how the teachings of multiple references are used in combination to meet a claimed feature. Petitioner’s assertions, for example, without persuasive supporting evidence, that proposed modifications would have been “an obvious design choice” (Pet. 19), “a common design issue” (id. at 20), “a design choice that is obvious” (id.), and “obvious to try such a modification in the art as these units are configured to perform a similar function” (id. at 27), are insufficient to demonstrate a reasonable likelihood of prevailing on any of its obviousness challenges. These conclusory labels do not substitute for a fact-based analysis in the Petition establishing what is being modified, and why it would have been obvious to a person of ordinary skill to make the modification.” slip op. at 16
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“2. The Anticipation Grounds “A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros. v. Union Oil Co., 814 F.2d 628, 631 (Fed. Cir. 1987). “The identical invention must be shown in as complete detail as is contained in the . . . claim.” Richardson v. Suzuki Motor Co., 868 F.2d 1226, 1236 (Fed. Cir. 1989). The elements must be arranged as required by the claim, but this is not an ipsissimis verbis test, i.e., identity of terminology is not required. In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). Petitioner’s assertions that the challenged claims are anticipated by Bixler and Toti suffer from the same improper incorporation by reference of the Judkins Declaration as discussed above. The anticipation grounds also suffer from the lack of specificity as discussed above.” slip op. at 17
§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,245,756
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.