- Avx Corporation v. Greatbatch LtdAll claims unpatentablePTAB · Dec 30, 2015 · IPR2014-01361 · APJ Jon B Tornquist · IPR · Final written decision
Claims 1–43 are unpatentable under § 103; proposed substitute claims 44 and 45 are not shown patentable, and the Second Motion to Amend is denied.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“In our Decision on Institution, we discussed the meaning of the transitional phrase “consisting essentially of,” but otherwise found that no claim terms required express construction. Dec. on Inst. 4. In its Second Motion to Amend, Patent Owner does not dispute our interpretation of “consisting essentially of,” or propose constructions for any additional claim terms. Upon review of Patent Owner’s evidence and arguments, we conclude that no explicit constructions are required in order to resolve the issues pending before the Board.” slip op. at 6
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, deniedDenied
“establishing that it is entitled to add proposed substitute claims 44 and 45. 37 C.F.R. § 42.20(c). As part of this showing, Patent Owner must demonstrate (1) the amendment responds to a ground of unpatentability involved in the trial; (2) the amendment does not seek to enlarge the scope of the claims of the patent or introduce new subject matter; (3) the amendment proposes a reasonable number of substitute claims; and (4) the proposed claims are supported in the original disclosure. 37 C.F.R. § 42.121. Upon review of the Second Motion to Amend, we are persuaded that the requirements of 37 C.F.R. § 42.121 have been met. For example, Patent Owner seeks to add only two substitute claims, each of which serves to narrow the scope of original claim 18. Mot. 17–18. Patent Owner also identifies exemplary electrolytes disclosed in the originally-filed application that fall within the scope of proposed substitute claims 44 and 45. Id. at 9 (citing Ex. 1010, 33, 35–36 (disclosing an electrolyte containing ethylene glycol, water, isobutyric acid, and ammonium hydroxide (which results in an ammonium salt of the organic acid) with a pH of 4.9, a conductivity of 7.1 mS/cm, and an anode breakdown voltage of 395 volts)). Thus, we focus on whether Patent Owner has met its burden of proof to show that proposed substitute claims 44 and 45 are patentable over the prior art of record.” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundNot shown unpatentable
“Clark, however, discloses successfully substituting acetic acid in an electrolyte solution with “other low molecular weight paraffin acids,” including butyric, propionic, and lactic acids, as well as forming corresponding ammonium salts of these organic acids. Ex. 1003, 2:40–46, 3:46–61. Likewise, GB 466,193 broadly discloses that acetic acid may be replaced in an electrolyte solution with organic acids of the aliphatic series, including butyric acid and isobutyric acid. Ex. 1015, 3:73–79. In its Second Motion to Amend, Patent Owner does not point to any persuasive evidence to support or explain why a person of ordinary skill in the art would not have considered isobutyric acid, as implied in Clark and expressly identified in GB 466,193, to be a suitable substitute for acetic acid in the electrolyte of Shah. Indeed, similar to the disclosures of Clark and GB 466,193, the ’117 patent discloses that “other relatively weak organic acids of the general formula cnH2+nO2 (where n=2 to 7) are acceptable.”9 Thus, we are not persuaded that Shah, Clark, and GB 466,193 fail to teach or suggest every limitation of proposed substitute claim 44.” slip op. at 10
- Obviousness (§103) › Objective indicia / secondary considerations › Unexpected resultsObjective indicia no nexusNot shown unpatentable
“1 of Shah is ten times higher than electrolyte 2 of the ’117 patent, and the resulting conductivity (47.5 mS/cm) is 6.7 times higher than that of electrolyte 2 of the ’117 patent (7.1 mS/cm). First Mot. to Amend 9 (Table 3); Ex. 1001, 2:14–16 (confirming that the ammonium salt “provides electrical conductivity” in the electrolyte). Given the disclosure of Evans that anode breakdown voltage decreases with increasing conductivity (conductivity being the inverse of resistivity), Patent Owner does not explain persuasively why the 150 volt difference in anode breakdown voltage between electrolyte 1 of Shah and electrolyte 2 of the ’117 patent is “contrary to” the teachings of Evans. First Mot. to Amend 9 (Table 3),11; Ex. 2004, 3 (Figure 4). Nor does Patent Owner explain why a person of ordinary skill in the art could not use the disclosure of Evans to modify the resistivity of the electrolyte of Shah, Clark, and GB 466,193 to obtain an anode breakdown voltage within the 370 to 400 volt range of proposed substitute claim 45. Thus, we are not persuaded that the 150 volt difference between electrolyte 1 of Shah and electrolyte 2 of the ’117 patent is nonobvious or surprising. Patent Owner also contends that if acetic acid was equivalent to isobutyric acid, such that it could be replaced interchangeably, “a substantially similar anode breakdown voltage would have been achieved in both Shah’s electrolyte and the ’117 Patent electrolyte, both of which have almost identical pH~4.9.” First Mot. to Amend 11. We note, however, that, as set forth in Table 3 above, electrolyte 1 of Shah has a conductivity that is 6.7 times higher than electrolyte 2 of the ’117 patent, as well as ten times the ammonium constituent, two and a half times the acid constituent, half the ethylene glycol, and five times the phosphoric acid as compared to electrolyte 2 of the ’117 patent. In view of the wide difference in constituents and resulting conductivity levels between the two electrolytes, and in view of the teaching of Evans that anode breakdown voltage depends on the resistivity of the electrolyte, Patent Owner provides insufficient argument or evidence to explain why one of ordinary skill in the art would expect that “[i]f acetic acid were equivalent to isobutyric acid . . . a substantially similar anode breakdown voltage would have been achieved in both Shah’s electrolyte and the ’117 patent electrolyte . . . .” First Mot. to Amend 11. Accordingly, even if arguments made in the First Motion to Amend were considered, we would still not be persuaded that proposed substitute claim 45 is patentable over the prior art. Thus, we are not persuaded that Patent Owner has carried its burden to demonstrate, by a preponderance of the evidence, that proposed substitute claim 45 is patentable over the prior art of record.” slip op. at 16
Patent outcomesUS 6,687,117 unpatentableClaim construction§ 103 obviousnesscites KSRPatents in suitUS 6,687,117 - Emnos USA Corp. v. Dunnhumby LimitedInstitution deniedPTAB · Dec 30, 2015 · CBM2015-00162 · APJ Timothy J Goodson · CBM · Institution
The Board denied institution on all challenged claims because the Petition did not establish that the ’246 patent qualifies as a covered business method patent.
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. § 324. Pursuant to 35 U.S.C. § 324(a), the Director may not authorize a covered business method patent review unless the information in the petition, if unrebutted, “would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” As explained below, we do not institute a covered business method patent review because the Petition does not establish that the ’246 patent qualifies as a covered business method patent.” slip op. at 2
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“remains deficient. The Petition relies on the Oracle Pro*C reference as disclosing the script template limitations of the independent claims, but as Patent Owner points out, the Petition does not present evidence establishing that Oracle Pro*C qualifies as a prior art printed publication. See Pet. 32– 34; Prelim. Resp. 50–53. Petitioner asserts that Oracle Pro*C “was published in 2002” but does not point to any specific evidence of its publication or public availability in 2002. Id. at 33. If Petitioner’s assertion is based on the “March 2002” statement that appears on the cover of the Oracle Pro*C reference, that statement is hearsay, and Petitioner does not argue that any hearsay exception or exclusion applies. See Ex. 1041, 1; see also ServiceNow, Inc. v. Hewlett-Packard Co., Case IPR2015-00716, slip op. at 16 (PTAB Aug. 26, 2015) (Paper 13) (“To the extent that Petitioner relies on the date on the face of each exhibit and the indications of availability of these references for download . . . for the truth of that information, and considering that Petitioner has not established that any hearsay exception or exclusion applies, we agree [that the statements are inadmissible hearsay].”). Petitioner also argues, with citation to the testimony of Dr. Smyth, that Oracle Pro*C is a reference used by programmers who develop applications in Oracle database environments. Pet. 33 (citing Ex. 1030 ¶ 57). However, neither the Petition nor Dr. Smyth explains how or when the specific Programmer’s Guide, Release 9.2 that Petitioner relies on as the Oracle Pro*C reference (Ex. 1041) was made available to skilled artisans. Because the Petition does not establish that Oracle Pro*C qualifies as prior art, Section VIII.B. of the Petition does not remedy the deficient showing in Section III.D. of the Petition on the first consideration of the technological” slip op. at 11
§ 102 anticipationDiscretionary denialPatents in suitUS 8,214,246 - Geox S.P.A. v. Outdry Technologies CorporationAll claims unpatentablePTAB · Dec 18, 2015 · IPR2014-01244 · APJ Donna M Praiss · IPR · Final written decision
Claims 1–15 are unpatentable as obvious under § 103(a); the motion to amend claims 16 and 17 is denied for failure to establish written-description support and patentability.
RulingsFinal written decision- Skill levelSkill level board ownOther
“difference between Petitioner’s and Patent Owner’s proposed levels of ordinary skill in the art that would impact our ultimate conclusions. Petitioner contends that a person of ordinary skill in the art is evidenced by the references. Pet. 11. Patent Owner asserts that “[w]aterproofing leather is not a sophisticated technology, and the education level of a PHOSITA working in the industry is likely a four year degree.” PO Resp. 30. According to Patent Owner, a PHOSITA likely would have knowledge related to making apparel from leather, waterproofing leather using sprays and liners, as well as knowledge of adhesives and bonding leather apparel, and also knowledge of waterproof breathable membranes of various types. Id. We consider the cited prior art as representative of the level of ordinary skill in the art, which Patent Owner essentially summarizes as the knowledge of a PHOSITA. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (finding the absence of specific findings on “level of skill in the art does not give rise to reversible error ‘where the prior art itself reflects an appropriate level and a need for testimony is not shown’”) (quoting Litton” slip op. at 5
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“interpreted to include either a temporary support that is removed, such as a release sheet, or one that becomes part of the final product, such as a liner. Pet. 11. Patent Owner contends that the term should be construed to be limited to “sheets” because “[n]o other material forms are disclosed other than ‘sheets,’ which include paper and fabric support sheets.” PO Resp. 7 (citing Ex. 1001, 2:58–67). According to Patent Owner, the broadest reasonable construction, therefore, “includes any sheet of flexible fabric or fibrous material that is generally fastened to the membrane for structural support or as a lining in the finished product and the attachment is either detachable or firmly fastened to the semi-permeable membrane.” Id. at 7–8. In the Decision on Institution, we construed “support sheet” as “includ[ing] any material that is generally fastened to the membrane for structural support or as a lining in the finished product and the attachment is either detachable or firmly fastened to the semi-permeable membrane.” Dec. on Inst. 6. This construction is based on the Specification, which describes multiple embodiments of the support sheet, including a detachable sheet and an internal liner. Ex. 1001, 2:58–67. The Specification also describes the use of “different materials” to make the support sheet. Id. at 2:63–64. Accordingly, we conclude that the broadest reasonable construction of “support sheet” is not limited to a sheet of fabric or fibrous material as Patent Owner contends, but, rather, explicitly includes “different materials” that can be fastened generally to the membrane for structural support or as a lining in the finished product and the attachment is either detachable or firmly fastened to the semi-permeable membrane. Therefore, consistent with the Specification, we construe “support sheet” to mean a sheet of any material that is generally fastened to the membrane for structural support or as a lining in the finished product and the attachment is either detachable or firmly fastened to the semi-permeable membrane.” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageTerm construed board ownDecided for petitioner
“required degree of contact between the membrane and the leather in the regions that are between the dots of adhesive. The ’171 patent summarizes the invention as enabling a membrane to be applied directly to leather by providing a surface of the membrane with a glue pattern. Ex. 1001, 1:56–61. The invention is said to “avoid the use of a semipermeable lining and the water penetration between leather and lining.” Id. at 1:60–61. The title of the invention states “Process for Waterproofing Leather” and describes the leather used in the process as “leather waterproofed by said process.” Id. at 2:27–28. These disclosures do not define either the word “waterproof” as used in the Specification or the word “directly” as recited in independent claims 1 and 9 to mean that there is constant contact between the membrane and leather such that no water permeates the leather, as Patent Owner contends. In an embodiment of the invention, heating of the membrane during pressing is said to result in “a perfect adhesion” that does not plug the pores with glue. Id. at 2:31–42–45. Heating of the membrane during pressing is carried out also in the single example disclosed in the ’171 patent. Id. at 3:12. The leather samples in the example are said to have been “waterproofed by the process according to the present invention” and “hot-pressed with a hydrophilic non-porous semi-permeable membrane of polyurethane material having a thickness of 10 µm.” Id. at 3:9–14. These disclosures of an embodiment and an example do not define “directly pressing” or “waterproofing” or even “perfect adhesion” to mean constant contact between the leather and the membrane or that no water permeates the leather. Therefore, we decline to import such limitations into the term “directly pressing” based on Patent Owner’s argument that these properties are present inherently in the embodiment of the example in the ’171 patent. Accordingly, we construe “directly pressing” to mean applying pressure without any intervening materials or layers other than the recited adhesive.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“combination of Thornton, Scott, and Hayton. Petitioner has established that Thornton’s process for waterproofing leather by using spaced dots of adhesive in a discontinuous configuration on a semi-permeable membrane that is pressed against the leather meets the requirements of claims 1 and 9 but for the dot density and dot size ranges specified by the claims, respectively. Petitioner also provided a rational underpinning for combining the disclosures of Scott and Hayton, which provide guidance for the density and size of adhesive dots to adhere a semi-permeable membrane to a porous layer. We are not persuaded by Patent Owner’s argument that the teachings of Scott and Hayton are unrelated to the problem of adhering a membrane to a leather layer in view of Thornton’s disclosure that both leather and fabric material are amenable to its process for waterproofing breathable articles of clothing. Ex. 1003, 7:58–62. We also are not persuaded by Patent Owner that the combination of Thornton, Scott, and Hayton does not disclose all of the limitations of claims 1 and 9. The ranges explicitly disclosed in Hayton overlap with the ranges recited in claims 1 and 9. Patent Owner does not argue, and the Specification does not indicate, any criticality associated with the portion of the ranges that are not encompassed by Hayton’s ranges. See In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990). Rather, the claimed ranges appear once in the Specification as a preferred embodiment when the pattern of thermoadhesive glue is dots of polyurethane glue. Ex. 1001, 2:37–42. Patent Owner’s arguments distinguishing Thornton on the basis that it does not teach constant contact between the membrane and the leather in the regions between the spaced dots of adhesive is not persuasive for the reasons discussed above in connection with Patent Owner’s claim construction argument that this is required by the claim term “directly pressing.” In addition, we find that Thornton’s semi-permeable membrane completely covers the leather layer in the sense that the leather layer surface faces the membrane surface to form a composite. Thornton explicitly describes drawing the membrane barrier component over a former, applying adhesive to the outer surface of the film, drawing the outer glove layer onto the former, and bonding the layers by pressing. Ex. 1003, 21:64–22:8; Reply 9. Thornton also discloses layers on the former are placed in register (Ex. 1003, 21:33–35) and that the composite can be formed face to face in sheets (id. at 6:62–66, 7:13–31; Reply 8).” slip op. at 15
Patent outcomesUS 6,855,171 unpatentableClaim construction§ 103 obviousnessPatents in suitUS 6,855,171 - NVIDIA Corp. v. Samsung Electronics Co., Ltd.Institution deniedPTAB · Dec 9, 2015 · IPR2015-01316 · APJ Patrick R Scanlon · IPR · Institution
The Board denied institution because Petitioner did not show that VESA P&D and VESA Flat Panel were publicly accessible printed publications, so claims 6–10 could not rely on them.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“partes review may not be instituted unless “the information presented in the petition . . . and any [preliminary] response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Upon consideration of the arguments and evidence presented by Petitioner and Patent Owner, we are not persuaded that Petitioner has demonstrated, under 35 U.S.C. § 314(a), a reasonable likelihood that it would prevail in showing the unpatentability of any of claims 6–10 of the ’724 patent. Accordingly, we do not institute an inter partes review of any claim.” slip op. at 2
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“We find Patent Owner’s arguments persuasive. Petitioner does not explain adequately whether or how the VESA documents were made “sufficiently accessible to the public interested in the art.” Lister, 583 F.3d at 1311. Instead, Petitioner merely asserts that “VESA is a well-known standards setting organization that promulgates standards relating to video in electronics.” Pet. 14 (citing Ex. 1003 ¶ 58); id. at 22 (citing Ex. 1003 ¶ 75). As such, we determine that Petitioner has not made a sufficient showing that the VESA documents are printed publications under § 102(b). See Lister, 583 F.3d at 1317 (burden is on the proponent to show the purported reference was publicly available). Therefore, based on the record before us, we conclude Petitioner has not made a sufficient showing that either VESA P&D or VESA Flat Panel may be relied upon as prior art with respect to claims 6–10 of the ’724 patent.” slip op. at 6
§ 102 anticipationcites PhillipsPatents in suitUS 6,804,724 - NVIDIA Corp. v. Samsung Electronics Co., Ltd.Institution deniedPTAB · Dec 9, 2015 · IPR2015-01315 · APJ Patrick R Scanlon · IPR · Institution
The Board denied institution because Petitioner did not show that Lai qualified as prior art, defeating both asserted grounds for claims 1, 3, and 26–29.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“partes review may not be instituted unless “the information presented in the petition . . . and any [preliminary] response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a).” slip op. at 2
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference not prior artNot shown unpatentable
“Lai issued from U.S. Patent Application No. 10/236,794, which was filed on September 6, 2002 and claims the benefit of U.S. Provisional Application No. 60/328,284, filed on October 9, 2001 (Ex. 1004, “the Lai Provisional”). Ex. 1003, [21], [22], [60], 1:8–12. Because Lai’s filing date postdates the effective filing date of the ’602 patent, Lai must be entitled to the benefit of the Lai Provisional filing date to qualify as prior art under 35 U.S.C. § 102(e). Lai is entitled to the benefit of the Lai Provisional filing date if the disclosure of the Lai Provisional supports the claimed subject matter of Lai in accordance with 35 U.S.C. § 112, ¶ 1.1 See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1381 (Fed. Cir. 2015) (“A reference patent is only entitled to claim the benefit of the filing date of its provisional application if the disclosure of the provisional application provides support for the claims in the reference patent in compliance with § 112, ¶ 1.”).” slip op. at 5
- Strike new argumentNew argument disregardedOther
“In a conference call with the parties, the panel authorized Petitioner to submit a five-page, non-argumentative claim chart showing how the claims of a reference patent asserted by Petitioner are supported by a provisional application. Paper 9, 3. The panel also authorized Patent Owner to file a five-page response to Petitioner’s claim chart. Id. at 4. Petitioner filed a claim chart. Paper 8. Paper 8 included two pages of text in addition to the five-page claim chart. Because these two additional pages are not in compliance with our Order (see Paper 9), we have considered the claim chart only and none of the arguments presented in the additional two pages. Patent Owner subsequently filed a response to Petitioner’s claim chart. Paper 10.” slip op. at 2
§ 102 anticipationcites PhillipsPatents in suitUS 6,819,602 - Google Inc. v. Intellectual Ventures II LLCSome claims unpatentablePTAB · Nov 20, 2015 · IPR2014-00787 · APJ Patrick R Scanlon · IPR · Final written decision
Claims 19–22 and 24–30 are unpatentable as anticipated by Gough; claims 1–3, 5, 7–10, 12–14, and 21 are not shown unpatentable over the asserted grounds.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“We agree with Petitioner. Although Figures 4 and 5 of the ’960 patent show keys that are partially surrounded by shadowing or shading, there is no suggestion in the Specification that the “blended shadow” recited in the claims should be limited to only this shadowing. The claim language itself, referring to a blended shadow of the representation of at least one key and the main image (see claim 24), indicates explicitly that the blended shadow incorporates both the key image and the main image and, thus, should not be limited to the shadowing surrounding the keys. Accordingly, based on the full record, we adopt Petitioner’s proposed construction of “blended shadow” as “a portion of a composite image in which the main image is visible through the overlaid image as a result of combining the data from corresponding pixels from the main and overlaid images” for the purpose of this Final Written Decision. B.” slip op. at 11
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed
“We agree with Patent Owner. Petitioner does not explain adequately where the detailed analysis set forth in the Reply is made in the Petition, and, in any event, we do not find the arguments persuasive. “A patent claim is anticipated if a single prior art reference expressly or inherently discloses every limitation of the claim.” DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1252 (Fed. Cir. 2014). Here, Petitioner does not describe sufficiently how Gough expressly discloses using logical operators to accomplish the blending process.6 We do not agree that either Gough’s description of the blending process depicted in Figures 10a–10f (Ex. 1007, 10:23–41) or Gough’s description of using the color look-up table (id. at 14:9–19) expressly discloses using logical operators, and such express disclosure is required for anticipation. At best, Petitioner’s arguments suggest how Gough could be envisioned as using logical operators, but do not explain adequately where or how Gough expressly discloses using logical operators to carry out the blending process. For these reasons, we are not persuaded that Petitioner has shown, by a preponderance of the evidence, that independent claim 1, and claims 2, 3, 5, 7–10, and 12–14 depending therefrom, are anticipated by Gough.” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“3. Harrison Petitioner also argues Harrison teaches certain limitations. Pet. 44, 48, 52–55. Petitioner does not explain what Harrison adds to what is taught by Buxton. See id. at 48 (“[t]o the extent that these features may not be fully disclosed in Buxton, they are clearly disclosed in Harrison”). For purposes of this Final Written Decision, we determine the teachings of Harrison are cumulative to the teachings of Buxton, and therefore, do not address Harrison further.7 4. Claims 1–3, 5, 7–10, and 12–14 Petitioner argues that “Buxton discloses nearly all of the elements and limitations” of the challenged claims. Pet. 42. With respect to claim 1, Petitioner argues that Buxton discloses using alpha blending in accordance with the equation I = αI1 + (1-α)I2, where I is the resulting color intensity, I1 is the color intensity of the foreground image pixel, I2 is the color intensity of the background image pixel, and α is the specified transparency level between 0 and 1. Id. at 43–44 (citing Ex. 1009, 17:17–28). Petitioner argues that Buxton’s alpha blending “permits pixels to be ‘dedicated simultaneously’ to both images in order to produce a composite image” and is an “example of an operation using logical operators to provide different blending effects.” Id. at 44 (citing Ex. 1009, 16:63–17:4). Petitioner contends that although “Buxton may lack explicit disclosure of . . . a touchactivated device (required in claims 1 and 26),” Bier discloses that a touch screen is interchangeable with a mouse. Id. at 44–45. Petitioner also contends that Bier discloses a keyboard superimposed over a display. Id. at 7 Because the asserted ground includes Harrison, we continue to include it as part of our overall analysis.” slip op. at 23
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed
“After considering all evidence and arguments, we agree with Patent Owner. In particular, we determine that Petitioner’s arguments do not persuade us that Buxton’s alpha blending equation uses operators that manipulate binary values at the bit level, consistent with our construction of “logical operators.” The alpha blending equation unquestionably involves arithmetic operations, which we find differ from logical operations. Furthermore, Petitioner has not shown persuasively whether any logical operations overlap with any arithmetic operations. Therefore, we agree with Patent Owner’s contention that Buxton’s alpha blending equation does not use logical operators.” slip op. at 24
Patent outcomesUS 6,121,960 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites PhillipsPatents in suitUS 6,121,960 - Avx Corporation v. Greatbatch Ltd.Adverse judgmentPTAB · Nov 19, 2015 · IPR2015-00713 · APJ Jon B Tornquist · IPR · Adverse judgment
The Board granted Patent Owner’s request for adverse judgment and cancelled claims 1, 2, 8, 9, 23, 24, 30, and 31.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“proceeding. 37 C.F.R. § 42.73(b). Actions construed to be a request for adverse judgment include disclaimer of the involved application or patent and cancellation or disclaimer of a claim such that the party has no remaining claim in the trial. Id. In light of Patent Owner’s disclaimer of claims 1–44 of the ’077 patent, we determine that entry of judgment against Patent Owner with respect to claims 1, 2, 8, 9, 23, 24, 30, and 31 of the ’077 patent is appropriate.” slip op. at 2
NonePatents in suitUS 7,035,077 - United States Department Of Homeland Security v. Larry GoldenRehearing deniedPTAB · Nov 17, 2015 · IPR2014-00714 · APJ Kevin W Cherry · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving in place denial of substitute claims 154–156 because they were broader, lacked written description support, and were not shown patentable over the prior art.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“without prior authorization from the Board.” 37 C.F.R. § 42.71(d). “The burden of showing [the] decision should be modified lies with the party challenging the decision.” Id. 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 a motion, an opposition, or a reply.” Id.” slip op. at 2
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, deniedDenied
“three independent reasons: (1) substitute claims 154–156 are impermissibly broader than the claims they replaced; (2) Patent Owner failed to show written description support for substitute claims 154–156 as a whole; and (3) Patent Owner failed to show that claims 154–156 were patentable over the prior art of record. Final Dec. 15–21 (improper broadening), 21–22, (written description), 22–31 (prior art of record). Therefore, to succeed on this Rehearing Request, Patent Owner must show that we misapprehended or overlooked matters in reaching each of these determinations. Patent Owner has not done so. We address Patent Owner’s arguments in detail below.” slip op. at 3
- ScopeDenied
“In any event, this priority date argument does not contain any reason why our determination that substitute claims 154–156 are broader in scope than cancelled claims 11, 74, and 81 that they seek to replace was in error. Reh’g Req. 4–5. To the extent that Patent Owner does contest our finding that the claims are broader in scope, we do not find it persuasive because Patent Owner does not show amending a claim to replace a particular species with an entire genus would not be broadening. Thus, this argument regarding priority date does not persuade us that we erred in denying Patent Owner’s motion to amend.” slip op. at 4
- 112 supportDenied
“B. Lack of Written Description Support Patent Owner argues that we should also excuse Patent Owner’s failure to identify written description support for the entire claim because of the “special circumstances” discussed above. Reh’g Req. 2–3. Without determining whether such an exception exists for the requirement of providing written description support for the entire claim, Patent Owner fails to identify anywhere in the Patent Owner Response or Motion to Amend where this argument was raised. Because the argument was not raised, we could not have misapprehended or overlooked it. Thus, we determine that Patent Owner has failed to show that we erred in our determination that the Motion to Amend failed to show written description support for the claim as a whole.” slip op. at 5
§ 102 anticipation - Apple Inc. v. Contentguard Holdings, Inc.Rehearing deniedPTAB · Nov 2, 2015 · IPR2015-00448 · APJ Karl D Easthom · IPR · Rehearing
The Board denied rehearing and left in place the denial of institution on claims 1–18 because Apple did not show an abuse of discretion in the Board’s merits decision.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“an abuse of discretion.” 37 C.F.R. § 42.71(c). “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.” 37 C.F.R. § 42.71(d).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“proposed modifications were, how they were to be made, and why a person of ordinary skill would have made them. See Dec. 11–21. Petitioner’s Rehearing Request—characterizing the modifications as “a single change” as noted—neither clarifies the Petition nor shows that the Board overlooked or misapprehended a matter. Petitioner correctly notes that the need for extensive modification, alone, does not necessarily doom a proposed ground of obviousness, see Reh’g Req. 5–6; however, extensive modification was just one of many problems obfuscating the asserted ground. The Decision explains that combined with the many other deficiencies of the Petition, Petitioner had not shown a reasonable likelihood of prevailing on any of the challenged claims. See Dec. 11–21 (discussing the Petition’s vague, nested string citations to broad swaths of references; clarity problems created by pervasive use of internal cross-references and nested citations; improper incorporation by reference of the Sherman Declaration to support conclusory statements, thin analysis, and inadequate reasoning; and lack of sufficient information to enable a proper Graham analysis).” slip op. at 3
NonePatents in suitUS 8,370,956 - Dr. Michael Farmwald / RPX Corporation v. Parkervision, Inc.Adverse judgmentPTAB · Oct 29, 2015 · IPR2014-00948 · APJ Jon B Tornquist · IPR · Adverse judgment
The Board granted Patent Owner’s adverse-judgment motion, entered judgment against Patent Owner, and cancelled claims 2, 22, 23, and 25.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“A party may request entry of adverse judgment against itself at any time during a proceeding. 37 C.F.R. § 42.73(b). “Judgment” is defined as “a final written decision by the Board, or a termination of a proceeding.” 37 C.F.R. § 42.2. Although Patent Owner uses the term “termination” in its Motion, it did not submit the Motion under 37 C.F.R. § 42.72 and it did not explain why termination is appropriate in this circumstance. See 37 C.F.R. § 42.72 (noting that the Board may terminate a trial without rendering a final written decision “where appropriate,” such as when the trial is consolidated with another proceeding or pursuant to a settlement under 35 U.S.C. § 317(a)). Under the circumstances presented here, we see no reason not to grant Patent Owner’s Motion. Additionally, for the reasons discussed above, this Decision is a Final Written Decision, not a termination of the proceeding.1” slip op. at 3
NonePatents in suitUS 6,370,371
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.