- Emerson Electric Co. v. Sipco, LLCSome claims unpatentablePTAB · Nov 28, 2018 · IPR2017-00359 · APJ Bryan F Moore · IPR · Final written decision
Claims 32, 34, 37–38, 55–57, and 59 are unpatentable over Cunningham; claims 1, 3–8, 11–14, 24–31, 36, 42, 43, 46–49, 51–54, and 60–64 were not shown unpatentable.
RulingsFinal written decision- BurdenNot shown unpatentable
“This argument is conclusory and not supported by sufficient evidence. Moreover, the stated conclusion is vague with respect to the limitation at issue. Petitioner argues that “the node 18 must translate messages” (id. (emphasis added)), but does not explicitly argue that all three recited pieces of information—“the select information, the transmitter identification information, and transceiver identification information”—must be translated. Even assuming Mason’s node must translate all three recited pieces of information, Petitioner does not show that all such translated pieces of information must be further transmitted to the AMR server over the WAN. In particular, Petitioner does not show that transceiver identification information would have to be further transmitted.” slip op. at 21
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“Moreover, we agree with Petitioner that such a construction is “non- specific, vague and unhelpful” in the context of the ’692 patent. Reply. 16. Patent Owner’s construction limits “low power” to signals having a “limited transmission range,” but provides no guidance of what “limited” means, or what its boundaries might be. Petitioner argues correctly that Patent Owner’s construction fails to address questions its proposed construction raises, such as, what a ‘limited’ transmission range means and how ‘limited’ the range must be (i.e., what the range’s distance should be), whether the transmission range depends on the particular system or application, and whether other factors should be considered in determining whether the transmission range is limited.” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable
“Notably, Petitioner says these contentions are “further evidence” but does not explain how this evidence is to be used to buttress Cunningham’s disclosure or how it is to be combined with Cunningham’s disclosure. Specifically, given the limited contentions in the Petition detailed above, Petitioner does not explain how Energy Management Services or the “routines” described in the Provisional send control signals from the computer to the actuator as required by the claims. For example, even if we to accept that the “Williams Network Control Center” creates control signals as required by the claim Petitioner has not explained how those signals are translated from network transfer protocol to RF signals and then translated to an analog signal that can be used at an actuator. Even though the ’978 Provisional is allegedly incorporated by reference, an obviousness determination still requires--“[w]hether a [obviousness challenge] is based on combining disclosures from multiple references, combining multiple embodiments from a single reference, or selecting from large lists of elements in a single reference[--] a motivation to make the combination and a reasonable expectation that such a combination would be successful, otherwise a skilled artisan would not arrive at the claimed combination.” In re Stepan Co., 868 F.3d 1342, 1346 n. 1 (Fed. Cir. 2017); c.f. Boston Sci. Scimed, Inc. v. Cordis Corp., 554 F.3d 982, 991 (Fed. Cir. 2009) (finding obviousness shown despite fact that “all of the limitations are found in two separate embodiments pictured side by side in the patent, not in one embodiment” because the party showed motivation to combine and reasonable likelihood of success). Additionally, “there must be evidence presented on the obviousness of the claim as a whole.” Circuit Check Inc. v. QXQ Inc., 795 F.3d 1331, 1337 (Fed. Cir. 2015) (citing KSR, 550 U.S. at 420, 127 S.Ct. 1727); see also Acorda Therapeutics, Inc. v. Roxane Labs., Inc., 903 F.3d 1310, 1352 (Fed. Cir. 2018) (“The determination of obviousness is made with respect to the subject matter as a whole, not separate pieces of the claim”). Here, the “routines” described in the ’978 Provisional work differently than the “utility prices” embodiment of Cunningham. Petitioner has not explained how those would work together to meet the claim limitations.” slip op. at 30
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed
“Patent Owner’s argument is inapposite, as it is premised on reading a limitation into the claims, namely that the information encoded in the RF signal must be translated in real time. Further, we agree with Petitioner, that even under such an erroneously narrow construction, Cunningham would meet the limitation. In that regard, Petitioner argues that, “although Cunningham discloses sending cumulative data readings, individual signals from the sensor are identified by the gateway and this information is then transmitted (with transmitter identification information) to a computer on the WAN.” Reply 6 (citing Ex. 1046 ¶¶31–32; Ex. 1004, 31:6–28). Petitioner argues, and we are persuaded, that “Cunningham explains that the ‘most current cumulative reading’ is the current absolute ‘reading’ (i.e., information signal) from the sensor (Ex. 1004, 13:44–46) and that two cumulative readings can be used to ‘interpolate’ and ‘recover’ a missed reading (i.e., a signal from the sensor).” Reply 7 (citing Ex. 1004, 13:44–56; 31:6–27; Pet. 75; Ex. 1002 ¶¶115, 152; Ex. 1046 ¶32). We are persuaded that Cunningham discloses this limitation. Lastly, claim 32 also recites “a computer configured to execute at least one computer program that formats and stores select information responsive to the electrical signal for retrieval upon demand from a remotely located device.” To meet this limitation, Petitioner accurately points out that “Cunningham discloses that[,] in response to receiving information from the sensor interface module through the data collection modules, the host module compiles the information into a user specified readable format and stores it for later retrieval upon demand from a customer computer or workstation.” Pet. 83 (citing Ex. 1004, 7:19–27, 44:12–41, 44:53–64, 46:44–61, 47:44–54, Ex. 1002 ¶¶138–140). Patent Owner does not contest that Cunningham discloses “a computer configured to execute at least one computer program that formats and stores select information responsive to the electrical signal for retrieval upon demand from a remotely located device.” See PO Resp. 22–29, 41–46. We are persuaded that Cunningham discloses this limitation. For the forgoing reasons, Petitioner has shown by a preponderance of” slip op. at 37
Patent outcomesUS 6,437,692 mixedClaim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 6,437,692 - Motorola Mobility LLC v. Intellectual Ventures II LLCRehearing deniedPTAB · Nov 16, 2018 · IPR2014-00504 · APJ Patrick R Scanlon · IPR · Rehearing
The Board denied Patent Owner’s request for rehearing of the SAS Order, leaving review instituted on all challenged claims and all grounds in the Petition.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW A party requesting rehearing bears the burden of showing the decision should be modified. 37 C.F.R. § 42.71(d). In particular, “[t]he 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.” Id.” slip op. at 3
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)New argument disregardedDenied
“overlooked express statutory requirements that the Board was obligated to assess before considering the Petition for re-institution.” Reh. Req. 10 (citing 35 U.S.C. § 312(a)). Specifically, Patent Owner argues “the Petition fails to meet the particularity requirement [of 35 U.S.C. § 312(a)(3)] at least with respect to the multiple grounds identified on pages 47–59 of the Petition” because of the “vague formulation” (i.e., Veeck in view of Kellerer, Boehm, and/or Mitchell). Id. at 12. Patent Owner, however, does not identify where this “matter was previously addressed in a motion, an opposition, or a reply,” as required by 37 C.F.R. § 42.71(d). We could not have misapprehended or overlooked something that was not presented previously. A Request for Rehearing is not an opportunity to raise new arguments against a petition. To the extent Patent Owner believes the grounds newly instituted in the SAS Order lack sufficient particularity under 35 U.S.C. § 312(a)(3), it can make such arguments in its supplemental briefing.” slip op. at 10
- Director reviewOther
“The standard operating procedure exemplifies some of the reasons for which the Chief Judge may expand a panel. PTAB SOP 1, 15 (§ III.M). For example, the Chief Judge may expand a panel “where appropriate, to secure and maintain uniformity of the Board’s decisions, e.g., in related cases ordinarily involving different three judge panels.” Id. (§ III.M.1). In this case, the acting-Chief Judge has considered Patent Owner’s suggestion for an expanded panel, but has determined that an expanded panel is not warranted.” slip op. at 12
NonePatents in suitUS 7,382,771 - Google Inc. v. Intellectual Ventures II LLCRehearing deniedPTAB · Nov 16, 2018 · IPR2014-00787 · APJ Patrick R Scanlon · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving in place the SAS Order instituting review on all challenged claims and all petition grounds.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW A party requesting rehearing bears the burden of showing the decision should be modified. 37 C.F.R. § 42.71(d). In particular, “[t]he 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.” Id.” slip op. at 3
- Other 314aDecided for petitioner
“Our governing statutes and regulations do not provide for parties to request, or panels to authorize, an expanded panel. See generally 35 U.S.C. § 6; 37 C.F.R. §§ 41.1–42.412. The Chief Judge may consider panel expansions upon a “suggestion” from a judge, panel, or party. PTAB SOP 1, 15; see also Apple Inc. v. Rensselaer Polytechnic Inst., Case IPR2014- 00319, slip op. at 2 n.1 (PTAB Dec. 12, 2014) (Paper 20) (expanded panel) (per curiam). The standard operating procedure exemplifies some of the reasons for which the Chief Judge may expand a panel. PTAB SOP 1, 15 (§ III.M). For example, the Chief Judge may expand a panel “where appropriate, to secure and maintain uniformity of the Board’s decisions, e.g., in related cases ordinarily involving different three judge panels.” Id. (§ III.M.1). In this case, the acting-Chief Judge has considered Patent Owner’s suggestion for an expanded panel, but has determined that an expanded panel is not warranted.” slip op. at 11
Discretionary denialPatents in suitUS 6,121,960 - Fasteners For Retail, Inc. v. RTC Industries, Inc.Rehearing deniedPTAB · Nov 15, 2018 · IPR2018-00744 · APJ Michael L Woods · IPR · Rehearing
The Board denied Fasteners for Retail’s rehearing request, leaving institution denied because it failed to identify Olympus as a real party in interest.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“Petitioner’s argument is without merit because it mischaracterizes our Order. Contrary to Petitioner’s assertion (Request 5), our Order does not “instruct” or “direct” Petitioner to file a reply brief if it believes Olympus is not an unnamed RPI. Rather, our Order explicitly provides that if “Petitioner does not believe that Olympus is an unnamed real party in interest, in lieu of updating its mandatory notices, Petitioner may file a reply brief.” Order 3 (emphasis added). In other words, the Order does not state “Petitioner must file a reply brief,” as Petitioner’s argument would have us believe. The Order further provides:” slip op. at 4
- PTAB / AIA Trials › Real party in interest / privityDecided for patent owner
“We entered a decision denying institution (Paper 25, “DDI”), in which we explained that Petitioner failed to persuade us that Olympus was not an RPI. DDI 14.” slip op. at 2
Discretionary denialPatents in suitUS 9,635,957 - Fasteners For Retail, Inc. v. RTC Industries, Inc.Rehearing deniedPTAB · Nov 15, 2018 · IPR2018-00743 · APJ Michael L Woods · IPR · Rehearing
The Board denied Fasteners for Retail’s rehearing request and left institution denied because it failed to identify Olympus as a real party in interest.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“Petitioner’s argument is without merit because it mischaracterizes our Order. Contrary to Petitioner’s assertion (Request 5), our Order does not “instruct” or “direct” Petitioner to file a reply brief if it believes Olympus is not an unnamed RPI. Rather, our Order explicitly provides that if “Petitioner does not believe that Olympus is an unnamed real party in interest, in lieu of updating its mandatory notices, Petitioner may file a reply brief.” Order 3 (emphasis added). In other words, the Order does not state “Petitioner must file a reply brief,” as Petitioner’s argument would have us believe. The Order further provides: ORDERED that within 7 days of the entry of this Order, Petitioner may amend its mandatory notices to name other parties, including Olympus as a real party in interest in each [proceeding] . . . FURTHER ORDERED that in lieu of updating its mandatory notices, Petitioner may file a 7-page reply brief to address Patent Owner’s RPI arguments in each [proceeding].” slip op. at 4
- PTAB / AIA Trials › Real party in interest / privityInstitution denied rpiDecided for patent owner
“We entered a decision denying institution (Paper 25, “DDI”), in which we explained that Petitioner failed to persuade us that Olympus was not an RPI. DDI 14.” slip op. at 2
Discretionary denialPatents in suitUS 9,504,321 - Fasteners For Retail, Inc. v. RTC Industries, Inc.Rehearing deniedPTAB · Nov 15, 2018 · IPR2018-00742 · APJ Michael L Woods · IPR · Rehearing
The Board denied the rehearing request in all four proceedings, upholding denial of institution because Petitioner failed to identify Olympus as a real party in interest.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“b. Standard for Reconsideration The party filing a request for rehearing has the burden of showing a decision should be modified, and the request for rehearing must specifically identify all matters the party believes the Board misapprehended or overlooked and the place where each matter was previously addressed in its papers. 37 C.F.R. § 42.71(d). Therefore, Petitioner bears the burden of establishing that we misapprehended or overlooked the matters that it requests that we review. When rehearing a decision whether to institute a trial, the Board reviews the decision for an abuse of discretion. 37 C.F.R. § 42.71(c).” slip op. at 3
- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for patent ownerDecided for patent owner
“I. INTRODUCTION a. Background Fasteners for Retail, Inc. (“Petitioner”), filed four petitions (IPR2018- 00741, IPR2018-00742, IPR2018-00743, and IPR2018-00744) requesting inter partes review of claims in U.S. Patent Nos. 9,173,505, 9,149,132, 9,504,321, and 9,635,957. Paper 1.2 RTC Industries, Inc. (“Patent Owner”), filed a Preliminary Response (Paper 8, “Prelim. Resp.”) arguing that Petitioner failed to identify Olympus Partners LP (“Olympus”) as a real party-in-interest (“RPI”). Prelim. Resp. 28–39. After receiving the Preliminary Response, we issued an order (Paper 13, “Order”) permitting Petitioner to either: (1) amend its mandatory notices within 7 days to name Olympus as an RPI; or (2) file a reply brief within 7 days to address Patent Owner’s RPI argument. Order 4. Although it amended its mandatory notices to add certain additional RPIs (Paper 14), Petitioner chose to file a reply brief (Paper 15, “Reply”) rather than name Olympus as an RPI. We entered a decision denying institution (Paper 25, “DDI”), in which we explained that Petitioner failed to persuade us that Olympus was not an RPI. DDI 14.” slip op. at 2
Discretionary denialPatents in suitUS 9,149,132 - Fasteners For Retail, Inc. v. RTC Industries, Inc.Rehearing deniedPTAB · Nov 15, 2018 · IPR2018-00741 · APJ Michael L Woods · IPR · Rehearing
The Board denied Fasteners for Retail’s rehearing request, leaving institution denied because Petitioner failed to identify Olympus as a real party in interest.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“b. Standard for Reconsideration The party filing a request for rehearing has the burden of showing a decision should be modified, and the request for rehearing must specifically identify all matters the party believes the Board misapprehended or overlooked and the place where each matter was previously addressed in its papers. 37 C.F.R. § 42.71(d). Therefore, Petitioner bears the burden of establishing that we misapprehended or overlooked the matters that it requests that we review. When rehearing a decision whether to institute a trial, the Board reviews the decision for an abuse of discretion. 37 C.F.R. § 42.71(c).” slip op. at 3
- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for patent ownerDecided for patent owner
“Moreover, the 7-day period for amending its mandatory notices to name Olympus as an RPI expired on July 27, 2018, (Order 4), and we entered our decision denying institution based on Petitioner’s failure to name Olympus as an RPI on September 12, 2018, (DDI 14). To permit Petitioner to now amend its mandatory notices to cure its failure to name Olympus as an RPI would be unfair to Patent Owner and would encourage gamesmanship by allowing petitioners to refrain from naming all RPIs until if and after such unnamed RPI is the cause for denying institution. Indeed, we are not aware of any Board decision that has permitted such amendment to mandatory notices after a decision denying institution. Accordingly, Petitioner’s Request is denied.” slip op. at 5
Discretionary denialPatents in suitUS 9,173,505 - Fanduel, Inc. / Draftkings, Inc. v. Interactive Games LLCSome claims unpatentablePTAB · Nov 8, 2018 · IPR2017-01333 · APJ George R Hoskins · IPR · Final written decision
Claims 1–3 are unpatentable as obvious over Carter and Barton; claim 6 is unpatentable as obvious over Carter, Barton, and Walker. Claims 1–3 and 6 were not shown unpatentable over Carter and Martin.
RulingsFinal written decision- Prior constructionPrior construction adoptedDecided for petitioner
“It “remains true in construing patent claims before the PTO” that “the prosecution history . . . serves as intrinsic evidence for purposes of claim construction.” Tempo Lighting, Inc. v. Tivoli, LLC, 742 F.3d 973, 977 (Fed. Cir. 2014). “The PTO should also consult the patent’s prosecution history in proceedings in which the patent has been brought back to the agency for a second review,” such as the present inter partes review. Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015), overruled on other grounds by Aqua Prods., Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017). Upon our review of the entire record, we agree with the construction of “selectable betting parameter” previously provided by the Board, during ex parte prosecution of the ’952 patent, as set forth above. Therefore, for the reasons provided in that previous Board decision, none of which are disputed here, we apply that construction here. 2.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer not foundDecided for patent owner
“However, the Federal Circuit has “cautioned against reading limitations into a claim from the preferred embodiment described in the specification, even if it is the only embodiment described, absent clear disclaimer in the specification.” In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004); Teleflex, Inc. v. Ficosa North America Corp., 299 F.3d 1313, 1327–28 (Fed. Cir. 2002); In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). We find no such clear disclaimer in the ’952 patent specification that would require Patent Owner’s narrow interpretation of the “corresponding” claim term. In particular, while any given location in the cited example from the ’952 patent corresponds to one value of the parameter so the location “determines the bet input” (Ex. 1001, 2:20–22), there is no clear disclosure that other locations may not correspond to that same parameter. It is only in one “example” that each different location “corresponds to a different roulette number.” Id. at 2:22–24 (emphasis added). Thus, the ’952 patent disclosure does not clearly disclaim multiple different locations each corresponding to the same bet input (number or color). See id. at 2:12–31.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“After full consideration of the foregoing arguments, we conclude Patent Owner’s analysis of the scope of the claim limitation at issue is vague and confusing. That claim limitation is: the first and second selectable betting parameters are different such that selecting one would cause a different result for the bet than selecting the other. Ex. 1001, 35:23–28. Such language, on its own, presents a straight-forward claim requirement. Patent Owner’s overlying varnish suggesting that the claim requires a relationship between the first and second parameters, making them “comparable variables,” is not supported by the claim language at issue, and confuses Patent Owner’s analysis of the prior art at issue. We reject Patent Owner’s implicit claim construction of this claim limitation and determine no explicit claim construction of this limitation is needed to resolve the issues presented by the arguments and evidence of record. 4. Remaining Claim Terms The parties do not offer any further explicit claim constructions. We determine no further explicit claim constructions are needed to resolve the issues presented by the arguments and evidence of record. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (per curiam) (claim terms need to be construed “only to the extent necessary to resolve the controversy”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 16
- Skill levelSkill level petitioner adoptedDecided for petitioner
“We agree with Patent Owner that Petitioner’s reference to video game experience, as opposed to some other computer gaming experience, is not required to achieve ordinary skill in the art pertinent to the ’952 patent. The ’952 patent is concerned principally with implementing different gaming rules via computer hardware and software as a mobile gaming device moves between jurisdictions; the specific technical implementation of presenting the game on a computer screen is only a secondary consideration. See, e.g., Ex. 1001, Abstract. However, even if we were to accept Petitioner’s position on this point, it would not affect the bases for our decision set forth below. We agree with Petitioner that ordinary skill here requires gaming experience, and does not encompass telecommunications experience without gaming experience. While wireless communication and location tracking are components of the ’952 patent’s claimed invention, the specifics of how such communication and tracking occur is only a secondary consideration. See, e.g., Ex. 1001, Abstract, 1:51–2:11, 7:48–8:12. However, even if we were to accept Patent Owner’s position on this point, it would not affect the bases for our decision set forth below. We determine a person of ordinary skill in the art pertaining to the ’952 patent would have a Bachelor of Science Degree in Electrical Engineering, Computer Engineering, or a similar field. Such a person, further, would have at least about two years of experience designing and developing computer hardware and software to be used for playing games.” slip op. at 18
Patent outcomesUS 9,306,952 mixedClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,306,952 - Marker Volkl USA, Inc. v. Kneebinding, Inc.All claims unpatentablePTAB · Oct 15, 2018 · IPR2017-01265 · APJ Matthew S Meyers · IPR · Final written decision
Claims 1 and 4–9 are unpatentable as anticipated by DE ’298 and obvious over Boussemart and DE ’298.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“Id. at 14.3 Petitioner disagrees with Patent Owner’s assertions, arguing that the ’867 patent’s claim language and Specification establish that the two elements “are inextricably linked.” Pet. Reply 1–9. Although we are not in complete agreement with either parties’ construction, we, nevertheless, agree generally with Petitioner, for the reasons set forth below, that the “lateral release assembly” and “upper heel housing” recited by claim 1 should not be construed as being separate functional parts of the upper heel assembly that separate and isolate lateral and vertical release forces, respectively. We begin our analysis with the express claim language. Specifically, claim 1 recites in part “a lower heel assembly attached to the ski” and “an upper heel assembly coupled to the lower heel assembly and having a lateral release assembly for applying lateral securing pressure to the ski boot, the upper heel assembly comprising an upper heel housing that is configured to compress the heel portion of the ski boot downward.” Ex. 1001, 11:36– 12:2. Thus, from the claim itself, we know that (1) the “upper heel assembly” is coupled to the “lower heel assembly” and, thus, attached to the ski; (2) this associated upper/lower heel assembly has a “lateral release assembly”; (3) the lateral release assembly is for “applying lateral securing pressure to the ski boot”; and (4) the upper heel assembly “is configured to compress the heel portion of the ski boot downward.” However, none of this claim language requires that the “lateral release assembly” and “upper heel housing” must be treated as separate functional parts of the upper heel assembly that separate and isolate lateral and vertical release forces,” slip op. at 7
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Regarding the level of skill in the art, Petitioner asserts: a POSA in the February 18, 2003 timeframe would be an individual with a Bachelor’s degree in mechanical engineering or related technology and three to five years of experience in either the design, fabrication, or manufacture of ski bindings and related equipment, research concerning ski bindings and related equipment, or the development of standards concerning ski bindings or related equipment, in addition to ten years or more of personal experience using ski bindings. Pet. 14–15 (citing Ex. 1006 ¶ 32). In response, “Patent Owner agrees with Petitioner’s definition of a person of ordinary skill in the art (‘POSITA’) for purposes of the ’867 patent.” PO Resp. 3 (citing Pet. 14–15). Having considered the evidence, we find that Petitioner’s articulation of the level of ordinary skill is correct. We also note that the cited references often reflect the appropriate level of skill at the time of the claimed invention, and that the references cited here appear to reflect the level agreed to by the parties. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“the prior art itself [can] reflect the appropriate level of skill in the art”).” slip op. at 11
- BurdenUnpatentable
“Patent Owner responds that DE ’298 does not disclose an “upper heel assembly” that compresses the heel portion of the ski boot downward. PO Resp. 25–30. Patent Owner argues that “the disclosure of DE ’298 makes clear that the hold-down member 13 and heel holder 25 only resist upward motion by the ski boot heel – they do not ‘compress the heel portion of the ski boot downward’ by providing downward force on the heel.” PO Resp. 26. To support its position, Patent Owner provides an annotated copy of the annotated copy of Figure 2, provided by Petitioner and designated “Fig. Q” in the Petition. See Pet. 41. More particularly, Patent Owner annotated Petitioner’s “Fig. Q,” to show “a gap (circled in purple) between the top edge of the ski boot sole (which Petitioner added; the original figure in DE ’298 does not show the boot) and the bottom edge of arms 26 of heel holder 25.” PO Resp. 27–30 (citing Ex. 2001 ¶ 62). Figure 2, annotated, depicts the DE ’298 releasing/retaining device of a releasing ski binding. And, because there is a “gap” between the ski boot, superimposed by Petitioner in Fig. Q (see, e.g., Pet. 41), and arms 26 of heel holder 25, Patent Owner argues that DE ’298 “cannot provide downward force as the arms 26 do not touch the ski boot heel.” PO Resp. 28 (citing Ex. 2001 ¶ 63).4 Therefore, although Patent Owner acknowledges that DE ’298 discloses that its hold-down member “hold[s] the shoe down ‘against upwardly pivoting’” (PO Resp. 26–27 (citing Ex. 1004, 4), Patent Owner argues that merely “[o]pposing upward motion does not compress the ski boot downward as required by the challenged claims.” 5 PO Resp. 28. 4 The cited portions of Dr. Dodge’s Declaration largely mirror the language set forth in the corresponding portion of the Patent Owner Response. 5 Patent Owner submits that “[t]he plain and ordinary meaning of the term ‘compress’ means ‘to squeeze or press together’, or ‘to make smaller as if by squeezing.’” PO Resp. 28 (citing Ex. 2003). Petitioner responds that Patent Owner’s reading of DE ’298 is strained, that other portions of the reference make clear that DE ’298 discloses an “upper heel assembly” that does in fact compress the heel downward, and that any purported “gap” in the drawing is a red herring that does not comport with basic physics. Pet. Reply 15–18.” slip op. at 16
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Patent Owner responds that DE ’298 does not disclose an “upper heel assembly” that compresses the heel portion of the ski boot downward. PO Resp. 25–30. Patent Owner argues that “the disclosure of DE ’298 makes clear that the hold-down member 13 and heel holder 25 only resist upward motion by the ski boot heel – they do not ‘compress the heel portion of the ski boot downward’ by providing downward force on the heel.” PO Resp. 26. To support its position, Patent Owner provides an annotated copy of the annotated copy of Figure 2, provided by Petitioner and designated “Fig. Q” in the Petition. See Pet. 41. More particularly, Patent Owner annotated Petitioner’s “Fig. Q,” to show “a gap (circled in purple) between the top edge of the ski boot sole (which Petitioner added; the original figure in DE ’298 does not show the boot) and the bottom edge of arms 26 of heel holder 25.” PO Resp. 27–30 (citing Ex. 2001 ¶ 62). Figure 2, annotated, depicts the DE ’298 releasing/retaining device of a releasing ski binding. And, because there is a “gap” between the ski boot, superimposed by Petitioner in Fig. Q (see, e.g., Pet. 41), and arms 26 of heel holder 25, Patent Owner argues that DE ’298 “cannot provide downward force as the arms 26 do not touch the ski boot heel.” PO Resp. 28 (citing Ex. 2001 ¶ 63).4 Therefore, although Patent Owner acknowledges that DE ’298 discloses that its hold-down member “hold[s] the shoe down ‘against upwardly pivoting’” (PO Resp. 26–27 (citing Ex. 1004, 4), Patent Owner argues that merely “[o]pposing upward motion does not compress the ski boot downward as required by the challenged claims.” 5 PO Resp. 28. 4 The cited portions of Dr. Dodge’s Declaration largely mirror the language set forth in the corresponding portion of the Patent Owner Response. 5 Patent Owner submits that “[t]he plain and ordinary meaning of the term ‘compress’ means ‘to squeeze or press together’, or ‘to make smaller as if by squeezing.’” PO Resp. 28 (citing Ex. 2003). Petitioner responds that Patent Owner’s reading of DE ’298 is strained, that other portions of the reference make clear that DE ’298 discloses an “upper heel assembly” that does in fact compress the heel downward, and that any purported “gap” in the drawing is a red herring that does not comport with basic physics. Pet. Reply 15–18.” slip op. at 16
Patent outcomesUS 8,955,867 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 8,955,867 - PTAB · Jul 26, 2018 · IPR2017-01903 · APJ Kamran Jivani · IPR · Rehearing
The Board denied Power Integrations’ rehearing request, leaving institution denied because it did not show Mammano and the SMP3 Datasheet were publicly accessible printed publications.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“A party dissatisfied with a decision may file a request for rehearing, without prior authorization from the Board. The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, opposition, or a reply. (Emphasis added.) See Office Trial Practice Guide, 77 Fed. Reg. 48756, 48768 (Aug. 14, 2012). Under 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” An abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus., Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted).” slip op. at 3
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“As we explained in the Institution Decision, “‘[p]ublic accessibility’ is the touchstone in determining whether a reference is a ‘printed publication.’” Inst. Dec. 9 (citing In re Hall, 781 F.2d 897, 898–99 (Fed. Cir. 1986)); see, e.g., L-3 Commc’n. Holdings, Inc. v. Power Survey, LLC, Case IPR2014- 00832, slip op. at 11–12 (PTAB Nov. 14, 2014) (Paper 9) (applied reference not shown to be publicly accessible); C&D Zodiac, Inc. v. B/E Aerospace, Inc., Case IPR2014-00727, slip op. at 20–22 (PTAB Oct. 29, 2014) (Paper 15) (applied reference shown to be publicly accessible). Consequently, “[a] reference will be considered publicly accessible if it was ‘disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it.”’ Inst. Dec. 9 (emphasis added) (citing Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1348 (Fed. Cir. 2016) (quoting Kyocera Wireless Corp. v. Int’l Trade Comm’n, 545 F.3d 1340, 1350 (Fed. Cir. 2008) (quoting SRI Int’l, Inc. v. Internet Sec. Sys., Inc., 511 F.3d 1186, 1194 (Fed. Cir. 2008))). The status of a reference as a printed publication is a legal conclusion “based on underlying factual determinations.” Blue Calypso, 815 F.3d at 1348 (citing In re Lister, 583 F.3d 1307, 1311 (Fed. Cir. 2009)).” slip op. at 4
- Strike new argumentNew argument disregardedDecided for patent owner
“we should find that Mammano is a printed publication consistent with the requirements of In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). Reh’g Req. 10; see id. at 7–10. We decline to draw now the conclusions argued for the first time in this Request for Rehearing. A request for rehearing is not an opportunity for the requestor to present new arguments or evidence. It goes without saying that we could not have overlooked or misapprehended arguments that Petitioner did not make, and it is not an abuse of discretion not to consider such arguments. Thus, Petitioner’s submission of new arguments and evidence in its Request for Rehearing is both improper and unpersuasive.” slip op. at 7
- BurdenDecided for patent owner
“Reh’g Req. 13–14. Although we did not require that Petitioner show “every possible detail,” we did require Petitioner to make a threshold showing. In finding that Petitioner failed to make the necessary threshold showing, we applied the standard clearly set forth by our reviewing court in Blue Calypso, Kyocera Wireless, and SRI International to Petitioner’s arguments and evidence. Inst. Dec. 9. A request for rehearing is not an opportunity to reargue positions, elaborate on previous positions, or to disagree with the analysis or conclusions of the panel. See Nestlé Purina Petcare Co. v. Oil-Dri Corp. of Amer., Case IPR2015-00737, slip op. at 8 (PTAB Feb. 9, 2017) (Paper 39) (“Merely disagreeing with our analysis or conclusions does not serve as a proper basis for a request for rehearing.”).” slip op. at 10
§ 102 anticipation
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.