• Captioncall, L.L.C. v. Ultratec, Inc.No claims unpatentable
  PTAB · Dec 14, 2016 · IPR2015-01359 · APJ Lynne E Pettigrew · IPR · Final written decision

  Claims 1–3 and 5–7 were not shown unpatentable because Petitioner failed to establish that Hiroi taught the claimed voice delay for synchronizing voice and text.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “address the qualifications of one of ordinary skill in the art, but instead assert only that the relevant field of endeavor for the ’426 patent is “telephone communications.” PO Resp. 2; Ex. 2098 ¶ 25. This contention appears to relate to Patent Owner’s argument that Hiroi is not analogous art rather than to the level of ordinary skill in the art for assessing obviousness. See PO Resp. 36–49; Ex. 2098 ¶¶ 123–41. Thus, Patent Owner and its expert do not expressly dispute the level of skill in the art proffered by Petitioner and Mr. Occhiogrosso. In addition, although he does not offer his own opinion regarding the qualifications of a person having ordinary skill in the art, Mr. Zatkovich acknowledges Mr. Occhiogrosso’s definition and states that unless otherwise noted, the opinions expressed in his declaration testimony would not change under Mr. Occhiogrosso’s definition. Ex. 2098 ¶ 25 (citing Ex. 1012 ¶ 29). Based on our review of the record, including the experts’ testimony, the ’426 patent, and the prior art involved in this proceeding, we find that Petitioner’s proposal, as set forth by Mr. Occhiogrosso, accurately describes the qualifications of a person having ordinary skill in the art. Accordingly, we adopt Mr. Occhiogrosso’s characterization of the level of ordinary skill in the art.” slip op. at 8

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionOther

    “patent according to their broadest reasonable construction in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b); see Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016) (holding that 37 C.F.R. § 42.100(b) “represents a reasonable exercise of the rulemaking authority that Congress delegated to the Patent Office”). Consistent with the broadest reasonable construction, claim terms are presumed to have their ordinary and customary meaning as understood by a person of ordinary skill in the art in the context of the entire patent disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). An inventor may provide a meaning for a term that is different from its ordinary meaning by defining the term in the specification with reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). In the Institution Decision, we adopted Petitioner’s proposed construction of “assisted user,” recited in claims 1 and 5, as “a user who may be deaf or hard of hearing, but who also may be a normally hearing person who simply wants text assistance for some reason.” Dec. 5–6. Patent Owner does not challenge that construction. After considering the complete record, we maintain this construction of “assisted user” for this Final Written Decision. No other claim terms require express construction.” slip op. at 5

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner

    “We agree with and adopt Petitioner’s contentions as to how the combination of Engelke ’482 and Engelke ’405 teaches the identified limitations of claim 1. See Pet. 21–30. We also determine that a person of ordinary skill in the art at the time of the invention would have combined Engelke ’482 and Engelke ’405 in the manner asserted. In particular, we agree with Petitioner that combining the disclosure in Engelke ’405 of sending both voice and text to an assisted user who is hard of hearing with the re-voicing relay of Engelke ’482, which only provides text to an assisted user, would have been the application of a known technique to improve similar devices in the same way, and a combination of prior art elements according to known methods to yield predictable results. See Pet. 37–42, 44–45 (citing KSR, 550 U.S. at 416; Ex. 1012 ¶¶ 62–69).” slip op. at 13

  Patent outcomesUS 6,493,426 not shown unpatentable
  Claim construction§ 103 obviousnesscites Graham
  Patents in suitUS 6,493,426
• Captioncall, L.L.C. v. Ultratec, Inc.No claims unpatentable
  PTAB · Dec 14, 2016 · IPR2015-01357 · APJ Lynne E Pettigrew · IPR · Final written decision

  Claim 1 was not shown unpatentable because the asserted combination did not establish that Hiroi taught or motivated the claimed voice delay.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “address the qualifications of one of ordinary skill in the art, but instead assert only that the relevant field of endeavor for the ’366 patent is “telephone communications.” PO Resp. 2; Ex. 2098 ¶ 25. This contention appears to relate to Patent Owner’s argument that Hiroi is not analogous art rather than to the level of ordinary skill in the art for assessing obviousness. See PO Resp. 35–48; Ex. 2098 ¶¶ 122–40. Thus, Patent Owner and its expert do not expressly dispute the level of skill in the art proffered by Petitioner and Mr. Occhiogrosso. In addition, although he does not offer his own opinion regarding the qualifications of a person having ordinary skill in the art, Mr. Zatkovich acknowledges Mr. Occhiogrosso’s definition and states that unless otherwise noted, the opinions expressed in his declaration testimony would not change under Mr. Occhiogrosso’s definition. Ex. 2098 ¶ 25 (citing Ex. 1012 ¶ 29). Based on our review of the record, including the experts’ testimony, the ’366 patent, and the prior art involved in this proceeding, we find that Petitioner’s proposal, as set forth by Mr. Occhiogrosso, accurately describes the qualifications of a person having ordinary skill in the art. Accordingly, we adopt Mr. Occhiogrosso’s characterization of the level of ordinary skill in the art.” slip op. at 8

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner

    “In the Institution Decision, we adopted Petitioner’s proposed construction of “assisted user” as “a user who may be deaf or hard of hearing, but who also may be a normally hearing person who simply wants text assistance for some reason.” Dec. 5–6. Patent Owner does not challenge that construction. After considering the complete record, we maintain this construction of “assisted user” for this Final Written Decision. No other claim terms require express construction.” slip op. at 6

  • ExcludeNot reached

    “Under the circumstances in this case, we need not assess the merits of Patent Owner’s Motion to Exclude. As discussed above, even without excluding Mr. Occhiogrosso’s testimony, we have determined that Petitioner has not demonstrated by a preponderance of the evidence that the challenged claims are unpatentable. Accordingly, Patent Owner’s Motion to Exclude is dismissed as moot.” slip op. at 18

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

  Patent outcomesUS 6,934,366 not shown unpatentable
  Claim construction§ 103 obviousnesscites Graham
  Patents in suitUS 6,934,366
• Captioncall, L.L.C. v. Ultratec, Inc.All claims unpatentable
  PTAB · Dec 14, 2016 · IPR2015-01355 · APJ Barbara A Benoit · IPR · Final written decision

  Claims 1–13, 15, and 18 are unpatentable under § 103 over the stated combinations of Liebermann, Aronow, O’Toole, and McLaughlin.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner does not challenge directly Mr. Occhiogrosso’s testimony. See generally PO Resp. 5. Mr. Ivan Zatkovich, Patent Owner’s declarant, does not propose a level of ordinary skill in the art to be adopted, but he does testify that the opinions set forth in his declaration would not change if he “assumed that [one of ordinary skill in the art] had the qualifications set forth in Mr. Occhiogrosso’s declaration.” Ex. 2098 ¶ 24 (citing Ex. 1008 ¶ 27). Having reviewed the prior art asserted in this proceeding (see, e.g., Exs. 1002–1005), we determine that the level of ordinary skill proposed by Petitioner’s declarant and employed by both declarants is consistent with the challenged patent and the referenced prior art, and we adopt Mr. Occhiogrosso’s definition of the level of ordinary skill in the art for the purposes of the analysis below.” slip op. at 11

  • ExcludeMotion to exclude, deniedDenied

    “Turning to the merits of the Motion to Exclude, we find Patent Owner’s assertion that a person of ordinary skill in the art “must know the relevant prior art of telephone technology for the deaf and HOH” (Mot. Exc. 4) lacks sufficient factual corroboration or explanation. For example, Patent 10 Mr. Zatkovich is referring to the level of ordinary skill discussed previously and which we adopted for this proceeding. 14 Owner does not address the sentence that immediately precedes the single citation in the challenged patent on which Patent Owner relies: “[t]he present invention relates to the general field of telephone communications.” Ex. 1001, 1:13–14. Nor does Patent Owner discuss the level of ordinary skill reflected in the prior art of record or other factors that may be considered, including the types of problems encountered in the art, the sophistication of the technology, and educational level of active workers in the field. Okajima, 261 F.3d at 1355. Even if we were to adopt Patent Owner’s definition of a person of ordinary skill in the art, we find Mr. Occhiogrosso meets Patent Owner’s proffered level of ordinary skill: “must know the relevant prior art of telephone technology for the deaf and HOH” (Mot. Exc. 4). Mr. Occhiogrosso’s experience providing expert testimony in proceedings regarding assistive technologies for the deal or hard of hearing is uncontroverted. See Mot. Exc. 4–5 (identifying three inter partes reviews); Ex. 2105, 5:23–6:10 (deposition on August 9, 2016 indicating Mr. Occhiogrosso has been deposed between twelve and twenty times concerning Patent Owner’s patents). Furthermore, the five prior art references Mr. Occhiogrosso considered for this case (Ex. 1008 ¶ 28) all involve telephone technology for the deaf and HOH and support his qualification under the definition of a person of ordinary skill in the art now offers for the first time in its Motion to Exclude (and after it relied on the testimony of its declarant as to a different level). 15” slip op. at 14

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “Mr. Occhiogrosso testifies that one of ordinary skill in the art “would consider the screen in Figure 6 [shown on a cellular phone] as analogous to the screen depicted in Figure 8.” Ex. 1043 ¶ 6; see Pet. Reply 9–10 (citing Ex. 1043 ¶ 4–7). Mr. Occhiogrosso’s testimony relies on, and better comports with, Liebermann’s description of Figure 8 as illustrating “a layout for the visual display to present multiple information to the deaf person.” Ex. 1002, 6:29–36; Ex. 1043 ¶ 6. Mr. Occhiogrosso opines that the layout in Figure 8 “can be applied to different devices with displays of varying dimensions,” including the cellular embodiment of Figure 6, the personal computer embodiment in Figure 5a, and the kiosk embodiment in Figure 5c. Ex. 1043 ¶ 6. Mr. Occhiogrosso explains that Figure 8 depicts a “three-part, logical screen layout [that would be] identical and would be scaled appropriately, depending on display size.” Id. We credit Mr. Occhiogrosso’s testimony over that of Mr. Zatkovich because Mr. Occhiogrosso’s testimony better comports with the express disclosure of Liebermann—Figure 8 is not described as being limited to the embodiments in Figures 5a–5c or otherwise not being applicable to the cellular phone embodiment shown in Figure 6. Rather, Figure 8 is described more generally as being “a layout for the visual display.” Ex. 1002, 6:31– 34 36. In addition, Mr. Zatkovich opines that one of ordinary skill in the art purportedly would not incorporate the display shown in Figure 8—that is, the three-part display. At issue here, however, is only a small portion of that display—the incoming text screen—showing the text communication representing a transcription of the voice of the person speaking to a user of the personal interpreter device.” slip op. at 34

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner

    “skill in the art would combine Aronow’s initiation switch into Liebermann’s device to save power. PO Resp. 35–36. We agree with Patent Owner that, because the initiation switch is not an “on/off switch” that would enable a user to turn off the device and save power, Mr. Occhiogrosso’s power saving rationale (Ex. 1008 ¶¶ 58–59) is an insufficient motivation to combine the initiation switch. PO Resp. 35–36 (citing Ex. 2098 ¶ 62; Ex. 2097, 141:21– 142:12). Similarly, we also agree with Patent Owner’s challenge regarding Mr. Occhiogrosso’s testimony that Aronow’s switch improves Liebermann’s communicator by making it a “low cost, self contained telephonic interface device requiring no programming for operation.” Id. at 36. Relying on Mr. Zatkovich’s testimony, Patent Owner indicates “the communicator/cellular phone embodiment of Fig. 6 of Liebermann[] already appears to be a self-contained device.” Id. (citing Ex. 2098 ¶ 61). Nevertheless, we note that there is no dispute that Liebermann’s communicator and cellular telephone implementations provide for a user initiating a call to the center by dialing the center. See, e.g., PO Resp. 36 (“As a special case of a telephone, Liebermann can initiate a call simply by dialing a stored number to the Center.”). We disagree with Patent Owner that the addition of Aronow’s switch would not simplify the communicator 48 of Liebermann. Id. Common sense suggests that a single initiation switch is a simpler way to initiate a call than by dialing the multiple digits of a telephone number. Furthermore, we credit Mr. Occhiogrosso’s testimony of the simplifying benefits of a user-operated initiation switch, which is based on Aronow’s discussion about the benefits of the initiation switch to simplify operations of the telephonic device, especially for elderly people who are hard of hearing. Ex. 1008 ¶ 58. For these reasons, we determine that Petitioner has provided sufficient” slip op. at 48

  Patent outcomesUS 5,974,116 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 5,974,116
• Captioncall, L.L.C. v. Ultratec, Inc.No claims unpatentable
  PTAB · Dec 9, 2016 · IPR2015-01358 · APJ William V Saindon · IPR · Final written decision

  Claim 1 was not shown unpatentable because Petitioner did not establish a sufficient rationale to combine Engelke ’482 and Engelke ’405.

  RulingsFinal written decision

  • Skill levelOther
  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner

    “reasonable interpretation in light of the specification of the patent. 37 C.F.R. § 42.100(b); see Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016) (holding that 37 C.F.R. § 42.100(b) “represents a reasonable exercise of the rulemaking authority that Congress delegated to the Patent Office”). Under the broadest reasonable interpretation standard, claim terms are presumed to have their ordinary and customary meaning, as would be understood by one of ordinary skill in the art in the context of the entire” slip op. at 5

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundReasonable expectation foundNot shown unpatentable

    “We understand Patent Owner’s argument to be that a person of ordinary skill in the art would not have considered it obvious to follow the teachings of Engelke ’405 in this particular situation, because one of the main benefits taught by Engelke ’405 is to provide voice in addition to text so that non-deaf users can benefit more from voice-to-text services. Here, however, an assisted user does not need the hearing user’s voice to be provided because the assisted user already can hear the hearing user, as they are in close physical proximity (in order to use the personal interpreter). Thus, although a person of ordinary skill in the art might consider Engelke ’405 because it teaches to improve devices for the deaf such as Engelke ’482, we are not persuaded that a person of ordinary skill in the art would have considered it obvious to apply it in this situation. The reason is that the hearing user’s voice would already be present, such that providing that voice again, i.e., when applying the teaching of Engelke ’405, appears to be unnecessary and, as Patent Owner’s declarant suggests, potentially disruptive. Ex. 2098 ¶ 58. Engelke ’405 would not provide the solution to the problem it was intended to solve—the voice is there already. Petitioner offers insufficient reason or evidence explaining why a person of ordinary skill in the art would have considered it obvious to proceed to combine the references nonetheless, in view of this situation.” slip op. at 10

  • Obviousness (§103) › KSR rationalesMotivation not foundNot shown unpatentable

    “design need or market pressure that indicates it would have been obvious to try to modify the personal interpreter of Engelke ’482 to have simultaneous voice and text as shown in Engelke ’405. An obvious to try rationale generally requires some identification of “a design need or market pressure to solve a problem” before looking at the “finite number of identified, predictable solutions.” See KSR, 550 U.S. at 421. A key of the obvious to try rationale is that the design need or market pressure is what drives a person of ordinary skill in the art to consider the identified, predictable solutions. In other words, the need is addressed by the solutions. Here, the need identified by Petitioner is to upgrade devices previously intended for the deaf to be used for the hard of hearing. See Pet. 38. We agree that this is an identified need in the art. The solutions identified by Petitioner, however, are text alone, VCO, and text-enhanced telephony. Id. at 38–39. Notably, only one of these solutions, text-enhanced telephony, actually addresses the identified need of upgrading devices to include features specifically for hard of hearing users. Text only and VCO are for deaf users. Ex. 1003, 1:25–40 (describing text-only devices for the deaf); Ex. 1012 ¶ 64 (Mr. Occhiogrosso testifying that VCO “allowed a deaf but speaking person to . . . respond directly to the hearing user in voice”). The problem with Petitioner’s rationale is that it is based upon the identification of a finite set of identified, predictable solutions to a need where, in fact, two out of the three so-called solutions in the set are not actually solutions at all, because they do not address the need. In this way, Petitioner’s articulated rationale, as a whole, is internally inconsistent and, for that reason, unpersuasive.” slip op. at 13

  Patent outcomesUS 7,006,604 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 7,006,604
• Polygroup Limited v. Willis Electric Co., Ltd.Rehearing denied
  PTAB · Dec 6, 2016 · IPR2016-00802 · APJ William V Saindon · IPR · Rehearing

  The Board denied Patent Owner’s rehearing request, finding no abuse of discretion in instituting inter partes review.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “The standard of review for rehearing requests is set forth in 37 C.F.R. § 42.71(d), which states: 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. Specifically for rehearing requests of decisions on institution, “a panel will review the decision for an abuse of discretion.” 37 C.F.R. § 42.71(c).” slip op. at 2

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner

    “Patent Owner’s second argument for rehearing involves the discretion we have under 35 U.S.C. § 325(d) not to institute review if “the same or substantially the same prior art or arguments previously were presented to the Office.” In our Decision, we declined to exercise our discretion to deny. Dec. on Inst. 14. One factor behind our decision that we highlighted was that the grounds asserted against the ’186 patent were going forward already in a related proceeding (namely, the grounds in IPR2016-00802) against a very similar patent. Id. As such, we saw little substantive burden in proceeding on the merits. Id. Further, denying institution here causes additional inefficiencies, as it leaves to the district court issues that we are going to resolve on a closely related patent. Id. Patent Owner points to other cases having different facts in which petitions were denied. See Req. Reh’g 9–11. Different facts will give different results, especially in a multi-factor test such as that involved in § 325(d). Patent Owner does not address any facts that would make us reconsider our Decision. Patent Owner then points out that more cases were filed against it after this particular proceeding was filed (Req. 11–14); this is immaterial as to our decision regarding this proceeding. See 35 U.S.C. § 325(d) (referring to “prior art or arguments [that] previously were presented to the Office”) (emphasis added).” slip op. at 3

  • Strike new argumentDecided for petitioner

    “Patent Owner’s first argument for rehearing is directed to whether the Petition provided sufficient notice to Patent Owner regarding the basis of the unpatentability challenge. Req. 2–7. Patent Owner argues that Petitioner’s ground was to modify one reference with another as a “wholesale” slip op. at 2

  Discretionary denial
  Patents in suitUS 9,044,056
• Polygroup Limited v. Willis Electric Co., Ltd.Rehearing denied
  PTAB · Dec 6, 2016 · IPR2016-00801 · APJ William V Saindon · IPR · Rehearing

  The Board denied Willis Electric’s rehearing request, leaving institution in place because it found no abuse of discretion in its notice analysis or decision not to deny under § 325(d).

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “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. Specifically for rehearing requests of decisions on institution, “a panel will review the decision for an abuse of discretion.” 37 C.F.R. § 42.71(c).” slip op. at 2

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDecided for patent owner

    “we have under 35 U.S.C. § 325(d) not to institute review if “the same or substantially the same prior art or arguments previously were presented to the Office.” In our Decision, we declined to exercise our discretion to deny. Dec. on Inst. 14. One factor behind our decision that we highlighted was that the grounds asserted against the ’186 patent were going forward already in a related proceeding (namely, the grounds in IPR2016-00802) against a very similar patent. Id. As such, we saw little substantive burden in proceeding on the merits. Id. Further, denying institution here causes additional inefficiencies, as it leaves to the district court issues that we are going to resolve on a closely related patent. Id. Patent Owner points to other cases having different facts in which petitions were denied. See Req. Reh’g 9–11. Different facts will give different results, especially in a multi-factor test such as that involved in § 325(d). Patent Owner does not address any facts that would make us reconsider our Decision. Patent Owner then points out that more cases were filed against it after this particular proceeding was filed (Req. 11–14); this is immaterial as to our decision regarding this proceeding. See 35 U.S.C. § 325(d) (referring to “prior art or arguments [that] previously were presented to the Office”) (emphasis added).” slip op. at 3

  Discretionary denial
  Patents in suitUS 8,454,187
• Polygroup Limited v. Willis Electric Co., Ltd.Rehearing denied
  PTAB · Dec 6, 2016 · IPR2016-00800 · APJ William V Saindon · IPR · Rehearing

  The Board denied Patent Owner’s rehearing request, finding no abuse of discretion in instituting review after rejecting its notice and § 325(d) arguments.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “The standard of review for rehearing requests is set forth in 37 C.F.R. § 42.71(d), which states: 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. Specifically for rehearing requests of decisions on institution, “a panel will review the decision for an abuse of discretion.” 37 C.F.R. § 42.71(c).” slip op. at 2

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner

    “we have under 35 U.S.C. § 325(d) not to institute review if “the same or substantially the same prior art or arguments previously were presented to the Office.” In our Decision, we declined to exercise our discretion to deny. Dec. on Inst. 14. One factor behind our decision that we highlighted was that the grounds asserted against the ’186 patent were going forward already in a related proceeding (namely, the grounds in IPR2016-00802) against a very similar patent. Id. As such, we saw little substantive burden in proceeding on the merits. Id. Further, denying institution here causes additional inefficiencies, as it leaves to the district court issues that we are going to resolve on a closely related patent. Id. Patent Owner points to other cases having different facts in which petitions were denied. See Req. Reh’g 9–11. Different facts will give different results, especially in a multi-factor test such as that involved in § 325(d). Patent Owner does not address any facts that would make us reconsider our Decision. Patent Owner then points out that more cases were filed against it after this particular proceeding was filed (Req. 11–14); this is immaterial as to our decision regarding this proceeding. See 35 U.S.C. § 325(d) (referring to “prior art or arguments [that] previously were presented to the Office”) (emphasis added).” slip op. at 3

  Discretionary denial
  Patents in suitUS 8,454,186
• Ancestry.Com Dna, LLC v. Dna Genotek Inc.Institution denied
  PTAB · Nov 23, 2016 · IPR2016-01152 · APJ Michelle N Wormmeester · IPR · Institution

  The Board denied institution on all challenged claims 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

    “It is not sufficient, however, for Petitioner to demonstrate that each of the claim elements is known. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Petitioner must also provide “some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). In that regard, Petitioner directs us to where Birnboim describes a container with a barrier, which may be a septum that separates a composition from a fluid until the septum is pierced or punctured. Pet. 36 (citing Ex. 1008, 9:11, 23:29–31). Petitioner also directs us to where Birnboim teaches that “the means for closing the container may be coupled to the disestablishment of the barrier.” Id. (citing Ex. 1008, 24:8–9). According to Petitioner, however, “Birnboim does not disclose how, in such embodiment, the ‘means for closing the container may be coupled to the disestablishment of the barrier.’” Id. Thus, Petitioner argues, a POSITA would have looked to analogous art “for a solution that would complete” Birnboim’s embodiment, and would have “recognized [O’Donovan] as providing a particularly relevant solution to the identified problem because, like Birnboim, O’Donovan is explicitly directed to a container system for use in analyzing biological samples.” Id. at 36–37 (citing Ex. 1003 ¶ 111).” slip op. at 8

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable

    “We are unpersuaded by Petitioner’s argument. As Patent Owner points out, Petitioner does not explain sufficiently why one of ordinary skill in the art would have considered combining the container of Birnboim with certain features of the container of O’Donovan to arrive at the claimed invention. Prelim. Resp. 35. The mere fact that both Birnboim and O’Donovan are in the same field of endeavor falls short of an adequate rationale. The same field of endeavor analysis is merely the jumping-off point in reaching the determination of whether a claimed invention is obvious. See K-TEC, Inc. v. Vita-Mix Corp., 696 F.3d 1364, 1375 (Fed. Cir. 2012) (to qualify as prior art in an obviousness analysis, references must be analogous art—either from the same field of endeavor, or reasonably pertinent to the problem with which the inventor is involved). Petitioner further argues that combining the teachings of Birnboim and O’Donovan “would have required no more than ‘[a]pplying a known technique to a known device (method, or product) ready for improvement to yield predictable results,’” noting that “‘[a] person with ordinary skill in the art is a person of ordinary creativity, not an automaton, and in many cases . . . will be able to fit the teachings of multiple patents together like pieces of a puzzle.’” Pet. 37 (citing Ex. 1003 ¶ 112). We also are unpersuaded by this argument. Petitioner’s conclusory statements are nothing more than a restatement of basic tests identified by the Supreme Court for determining whether an invention would have been obvious. See KSR, 550 U.S. at 417 (“whether the improvement is more than the predictable use of prior art elements according to their established functions”); id. (whether “the claimed subject matter may involve more than . . . the mere application of a known technique to a piece of prior art ready for the improvement”); see also id. at 421 (“A person of ordinary skill is also a person of ordinary creativity, not an automaton.”). General principles on what may constitute a supporting rationale cannot substitute for specific application of those principles to the facts. Petitioner does not provide a persuasive, fact-based analysis to support the proposed combination of Birnboim and O’Donovan. Notably, it is not clear which features of O’Donovan’s container are to be incorporated into Birnboim’s container, or how, or why.” slip op. at 9

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “Petitioner provides proposed interpretations for various limitations of the claims. See Pet. 16–26. Patent Owner responds. Prelim. Resp. 6. For purposes of this Decision, we conclude that no term requires express interpretation at this time to resolve any controversy in this proceeding. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”).” slip op. at 6

  Claim construction§ 103 obviousness
  Patents in suitUS 8,221,381
• Mastercraft Boat Company, LLC v. Malibu Boats, LLCInstitution denied
  PTAB · Nov 16, 2016 · IPR2016-01058 · APJ Josiah C Cocks · IPR · Institution

  The Board denied institution because MasterCraft did not show a reasonable likelihood of success on any challenge to claims 27–29.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “An inter partes review may not be instituted unless the information presented in the Petition shows “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). For the reasons set forth below, we conclude that the information presented in the Petition does not establish a reasonable likelihood of success with respect to claims 27–29 of the ’873 patent. 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

    “wake surfing” appears in the preamble of claim 27, the body of the claim includes recitation of particular structures, i.e. “first and second upright wake modifiers” that operate to form left side and right side “asymmetrical wakes.” We determine that the preamble of claim 27 provides informative context for the type of asymmetrical wakes that are generated by the upright wake modifiers. In that respect, the produced asymmetrical wakes must be understood as suitable for surfing. Indeed, that determination is also consistent with other language of claim 27. In particular, the body of claim 27 further recites that each of the asymmetrical wakes generated are “different from a non-surf wake.” It follows logically that if asymmetrical wakes must be different from non-surf wakes, then the asymmetrical wakes are understood as surf wakes, or wakes suitable for surfing. Accordingly, we conclude that the asymmetrical wakes produced by the upright wake modifiers in claim 27 must be those recognizable as suitable for surfing. We turn now to the meaning of “wakes suitable for surfing”” slip op. at 8

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner

    “suitable for surfing.” For the following reasons, we agree with the meaning that is offered by Malibu. At the outset, we do observe that the ’873 patent describes that “[o]ne aspect of the present invention is directed to a surf wake system for modifying a wake formed by a watercraft travelling through water.” Ex. 1001, 2:11–13. We, however, do not share MasterCraft’s view that such description establishes the meaning of the type of “wakes” described in claim 27. We agree with Malibu that an asymmetrical wake of claim 27 that is “different from a non-surf wake” and which is characterized as being “suitable for surfing” is a wake that must be suitable for surfing. MasterCraft’s proposal that simply any wake that has been “modified” amounts to a “wake suitable for surfing” is not correct, in our view, as that meaning would encompass wakes that, although modified, are not suitable for surfing.” slip op. at 9

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)Not reached

    “plus-function limitation subject to 35 U.S.C. § 112, ¶6 (pre-AIA), because it fails to ‘recite sufficiently definite structure’ and recites ‘function without reciting sufficient structure for performing that function.’” Pet. 5 (citations omitted). To that end, MasterCraft contends that the allegedly corresponding structure disclosed in the Specification are variants of types of “water diverters” or “flaps.” Id. at 8. Malibu disagrees that the noted phrase invokes § 112, ¶ 6, contending instead that the noted phrase describes structural details of a wake modifier. PO Resp. 26–27. For purposes of this Decision, we determine that it is not necessary to ascertain whether the pertinent phrase is a means-plus-function limitation. In particular, we determine that it is only necessary to consider that the noted phrase requires that the wake modifiers are components that are structured and configured to create asymmetrical wakes that are suitable for surfing.” slip op. at 11

  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 8,578,873
• Mastercraft Boat Company, LLC v. Malibu Boats, LLCInstitution denied
  PTAB · Nov 16, 2016 · IPR2016-01057 · APJ Josiah C Cocks · IPR · Institution

  The Board denied institution because MasterCraft did not show a reasonable likelihood that claims 1, 2, 6, 7, 17–20, 22, and 23 were unpatentable on any asserted ground.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “An inter partes review may not be instituted unless the information presented in the Petition shows “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). For the reasons set forth below, we conclude that the information presented in the Petition does not establish a reasonable likelihood of success with respect to claims 1, 2, 6, 7, 17–20, 22, and 23 of the ’873 patent. We do not institute an inter partes review.” slip op. at 2

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner

    “At the outset, we observe that the ’873 patent describes that “[o]ne aspect of the present invention is directed to a surf wake system for modifying a wake formed by a watercraft travelling through water.” Ex. 1001, 2:11–13. We, however, do not share MasterCraft’s view that such description establishes the meaning of “surf wake.” We agree with Malibu that, at its core, a surf wake must be a wake that is suitable for surfing. MasterCraft’s proposal that simply any wake that has been “modified” amounts to a “surf wake” is not correct as that meaning would encompass wakes that, although modified, are not suitable for surfing.” slip op. at 9

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)

    “2. Anticipation by Svensson Anticipation is established only when a single prior art reference discloses all elements of the claimed invention. In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990). Here, MasterCraft contends that all of the features of” slip op. at 12

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation not found

    “In light of that testimony, we understand that Dr. Savander’s computer modeling is based on specific assumptions as to sizing and positioning of flaps when placed on a vessel hull so as to allegedly produce a surf wake. Dr. Savander provides no persuasive reasoning as to why those assumptions are derived appropriately from the teachings of the prior art. Indeed, while noting that Svensson, itself, provides “no geometric guidance as to the height and width of the flaps,” as noted above, Dr. Savander proceeds to “estimate[]” without adequate reasoning that a flap height of “approximately 50% of the hull side height, or 18.2 inches” would be used “in order for the flap to start at the lower chine and extend above the water surface.” Id. Dr. Savander also theorizes that flap width would “fall into the range of 2, 3, and 4 inches.” Id. It simply does not follow on the record before us that the particular flap dimensions and positioning would have been derived from the teachings of the prior art. Yet, those parameters are crucial to MasterCraft’s position that claims of the ’873 patent would have been obvious based on Svensson. We are not satisfied that those obviousness challenges are guided by the teachings of the prior art rather than formulated, in-part, from hindsight with the intention of creating the upright water diverters disclosed in the ’873 patent. We also find lacking in the Petition suitable articulated reasoning as to why a skilled artisan would have adequate reason to combine the teachings of the prior art. In particular, MasterCraft simply concludes that Svensson’s teachings have “broad applicability” and on that basis a person of ordinary skill in the art generally would have been motivated to apply those teachings to any given boat hull, such as that disclosed in Clement. Pet. 31. That is not, in our view, sufficiently articulated reasoning with rational evidentiary underpinnings that is necessary to demonstrate an adequate reason to combine prior art teachings. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006).” slip op. at 15

  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 8,578,873

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