• Haag-Streit AG v. Eidolon Optical, LLCNo claims unpatentable
  PTAB · Dec 19, 2019 · IPR2018-01311 · APJ Eric C Jeschke · IPR · Final written decision

  Claims 1, 5, 6, 8–10, 14–16, and 19 were not shown unpatentable because the cited references did not disclose an LED itself generating blue light energy.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “In the Decision on Institution, we adopted Petitioner’s proposed level of ordinary skill in the art, stating that it “appear[ed] consistent with the record at th[at] stage of the proceeding.” Dec. Inst. 6. Patent Owner does not address or dispute Petitioner’s proposed definition of the level of ordinary skill in the art. See generally PO Resp.; Sur-reply. Petitioner did not further address this issue in the Reply. See generally Pet. Reply. We continue to apply Petitioner’s proposed level of ordinary skill in the art in the analysis below.” slip op. at 7

  • ExcludeOther

    “As discussed above (see supra § II.C.3.a), to resolve the dispute between the parties here, we need not make a determination one way or the other regarding Patent Owner’s assertion as to the specific amount of power necessary to cause sodium fluorescein to fluoresce. Instead, the outcome here follows from the determination that Petitioner (who has the overall burden of persuasion as to unpatentability) has not persuasively established the existence, as of February 5, 1992, of a blue LED having sufficient power output to cause sodium fluorescein to fluoresce. Accordingly, we dismiss Petitioner’s motion as to Exhibit 2014 as moot because we need not rely on that exhibit (or the specific statement highlighted by Petitioner) in this Decision. See TPG 79–80.” slip op. at 43

  • Strike new argumentNew argument disregardedDecided for patent owner

    “commercially available by CREE, Inc. in 1992” and asserts that “Patent Owner’s arguments are wrong in that blue LEDs having sufficient output power to cause sodium fluorescein to fluoresce existed in 1992 at the time of Longobardi.” Pet. Reply 28, 32. When asked, during the oral hearing, for evidentiary support for these statements, Petitioner attempted to rely on Exhibit 2024. See Tr. 13:14–14:18 (counsel for Petitioner generally discussing Exhibit 2024 as potential support). That exhibit, however, was not discussed or relied on in either of Petitioner’s briefs. Id. at 38:22–39:20 (counsel for Petitioner discussing Exhibit 2024, but also acknowledging that it was not cited in either brief). We will not further consider Petitioner’s untimely argument as to Exhibit 2024. See Dell Inc. v. Acceleron, LLC, 884 F.3d 1364, 1369 (Fed. Cir. 2018) (noting that the “Board was obligated to dismiss [the petitioner’s] untimely argument . . . raised for the first time during oral argument”); Patent Trial and Appeal Board Consolidated Trial Practice Guide (“TPG”) 85–86 (Nov. 2019) (discussing how, at the oral hearing, a party “may only present arguments relied upon in the papers previously submitted”), available at https://www.uspto.gov/sites/default/ files/documents/tpgnov.pdf. Petitioner did not identify any other record support for the two assertions as to the alleged state of the art in 1992.” slip op. at 30

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “one of ordinary skill in the art would have understood Longobardi as implicitly disclosing the presence of a blue LED is that, as argued by Patent Owner, none of the declaration testimony of Dr. Jiao supports that position. See PO Sur-reply 5 (“Petitioner lacks evidence that Longobardi implicitly or inherently teaches an LED sufficient to generate blue light energy itself as required by claim 1. Petitioner’s expert does not testify as to this fact.” (emphasis added)), 7 (“Petitioner fails to provide any expert testimony . . . that Longobardi teaches a blue light energy created by the LED.”). Indeed, in the entire section of the Reply Brief discussing why Longobardi allegedly implicitly discloses a blue LED, Petitioner never cites to Dr. Jiao’s testimony as evidence of how one of ordinary skill in the art would have understood the highlighted passages. See Pet. Reply 18–22; see also PO Sur-reply 14 (“Petitioner’s attorney arguments that Longobardi implicitly discloses the limitation of at least one LED sufficient to generate blue light energy itself as required by claim 1 are unreasonable.”). “Attorney argument is not evidence.” Icon Health & Fitness, Inc. v. Strava, Inc., 849 F.3d 1034, 1043 (Fed. Cir. 2017); see also Elbit Sys. of Am., LLC v. Thales Visionix, Inc., 881 F.3d 1354, 1359 (Fed. Cir. 2018) (citing this aspect of Icon Health in the context of an appeal from an inter partes review). In addition, the testimony in Dr. Jiao’s Reply Declaration that is cited in Petitioner’s Reply (in the part discussing the state of the art of blue LEDs “[i]n 1992” (Pet. Reply 26)) does not actually support Petitioner on the ultimate factual issue here. See Pet. Reply 26–32 (citing Jiao Reply. Decl. ¶¶ 11–21). Instead, most of Dr. Jiao’s testimony in these paragraphs summarizes and addresses Dr. Lebby’s position on the 1-milliwatt issue (discussing Exhibits 1021 and 1022). See Jiao Reply Decl. ¶¶ 11–20. After that discussion, Dr. Jiao concludes with a paragraph taking the position that one of ordinary skill in the art “at the time of the invention would have found that Longobardi teaches and suggests the use of a blue LED having sufficient power to cause sodium fluorescein to fluoresce.” Id. ¶ 21. None of Dr. Jiao’s testimony, however, actually addresses the state of the art of blue LEDs in 1992, which, as acknowledged by Petitioner, is the relevant point in time to assess the alleged implicit disclosures in Longobardi.” slip op. at 27

  Patent outcomesUS 6,547,394 not shown unpatentable
  § 102 anticipation§ 103 obviousnesscites Phillips
  Patents in suitUS 6,547,394
• Apple Inc. v. Universal Secure Registry, LLCNo claims unpatentable
  PTAB · Nov 5, 2019 · IPR2018-00812 · APJ Jason W Melvin · IPR · Final written decision

  The Board found claims 1–3, 16, 21–24, 37, and 38 not shown unpatentable over Reber and Franklin because the combination did not establish the claimed access restrictions and information handling.

  RulingsFinal written decision

  • Skill levelOther

    “invention for the ’539 patent “would have a Bachelor’s Degree in electrical engineering, computer science, or a related scientific field, and approximately two years of work experience in the computer science field including, for example, operating systems, database management, encryption, security algorithms, and secure transaction systems, though additional education can substitute for less work experience and vice versa.” Pet. 10 (citing Ex. 1102 ¶¶ 61–62). Patent Owner submits that the level of skill would involve “a Bachelor of Science degree in electrical engineering and/or computer science, and three years of work or research experience in the fields of secure transactions and encryption, or a Master’s degree in electrical engineering and/or computer science and two years of work or research experience in related fields.” PO Resp. 17 (citing Ex. 2018 ¶¶ 16– 20). Patent Owner agrees that its “description of the level of ordinary skill in the art is essentially the same as that of the Petitioner, except that Petitioner’s description requires two years of work or research experience (as compared to three years).” Id. at 17–18. We do not understand any of the parties’ disputes to turn on a precise definition of the level of skill in the art and apply the level of skill as defined by the parties.” slip op. at 6

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Other

    “To support our analysis of the disputed issues below, we construe “account identifying information” and “third party.” We conclude that there is no need to construe any other term to resolve the issues in this decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).” slip op. at 7

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

    “We agree the claim language supports that the separately recited “third party” must be different from the claimed “provider” and “entity.” As to the secure registry itself, we agree further with Patent Owner that the claim language mandates that the “third party” cannot be the secure registry system. The claims recite that the secure-registry processor is configured such that “account identifying information is provided to a third party.” By using “provided,” the claim instructs that the secure registry must send account-identifying information somewhere, not simply perform an additional operation on the information.5 Patent Owner further focuses on the party at issue. According to Patent Owner, the “third party” should be “a party other than one of these other parties already recited in the claims.” PO Resp. 24. Although the claims recite the “secure registry” as a system, as opposed to the “provider” and “entity,” which it recites as “parties,” we agree with Patent Owner that for a third party to be distinct from the secure registry, it should be distinct from whomever operates the secure registry. See id. at 24–25, 47–48 n.8; infra at 21. Accordingly, we construe “third party” as “a party that is not the secure registry, the entity, or the provider.”” slip op. at 9

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

    “The Petition states that it would have been obvious to perform merchant validation at the processor and database, but gives no reason for making that change. See Pet. 37. Instead, the Petition states a skilled artisan “would have applied the known techniques of Franklin to improve the security of the Reber system” and that doing so would have reduced fraud by merchants. Id. (citing Ex. 1102 ¶ 114). As explained, “the known techniques of Franklin” were to perform merchant validation at the merchant’s bank, not at the secure registry. Ex. 1132, 11:43–46 (“The acquiring bank validates the authorization request by verifying that the merchant is a valid merchant and that the credit card number represents a valid number.”). Thus, a reason to use Franklin’s techniques does not further justify modifying Franklin’s teaching to perform validation at the secure registry as claimed. Petitioner attempts to justify the combination in the Reply, arguing that, in Franklin, “it would have been obvious simply to perform the merchant validation procedure at the issuing bank, depending on the needs of a particular implementation (for example, where the issuing bank and the acquiring bank are the same).” Pet. Reply 12–13. Petitioner reasons that “organizing the system in this way would . . . increase efficiency by reducing the overall number of computations (e.g., conducting only one validation/compliance operation and not two separate operations at two separate places).” Id. at 13. Those statements serve to highlight the deficiency of the Petition. Petitioner’s arguments in the Reply do not respond to Patent Owner, other than attempting to fill in a gap in the we conclude Petitioner’s showing regarding access restrictions at the secure registry is inadequate regardless of the construction of “access restrictions for the provider to secure data for the entity.” Petition. We agree with Patent Owner that Petitioner’s Reply arguments go too far beyond those of the Petition. See PO Sur-reply 15–16; 37 C.F.R. § 42.23(b) (2017); Trial Practice Guide Update 14–15 (Aug. 2018), https://go.usa.gov/xU7GP (“[A] reply . . . that raises a new issue or belatedly presents evidence may not be considered. . . . Examples of new issues are new theories or arguments necessary to make out petitioner’s case-in-chief . . . , such as a newly raised rationale to combine . . . that was not expressed in the petition.”); Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369–70 (Fed. Cir. 2016) (holding that the Board did not err in excluding a reply as improper under 37 C.F.R. § 42.23(b) because Petitioner relied on a new rationale to combine). Petitioner failed to make an adequate showing in the Petition regarding a plain requirement of the claims. The Petition identifies no prior-art disclosure that taught or suggested to skilled artisans to implement access restrictions at the secure registry, and provides insufficient reasons why a skilled artisan would have had reason to do so. Thus, Petitioner fails to show that challenged claims 1, 22, or 37” slip op. at 13

  Patent outcomesUS 8,856,539 not shown unpatentable
  Claim construction§ 103 obviousness
  Patents in suitUS 8,856,539
• BMW Of North America, LLC v. Carrum Technologies, LLCInstitution denied
  PTAB · Nov 5, 2019 · IPR2019-00928 · APJ Lynne H Browne · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of prevailing on any challenged claim, relying on Winner’s existing methods for detecting turns.

  RulingsInstitution decision

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

    “review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the Petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.”” slip op. at 2

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

    “6. Analysis We agree with Patent Owner. As Winner discloses methods for identifying when a vehicle has entered a curve (measuring transverse acceleration and using the forward facing radar), it is not evident why one of ordinary skill in the art would have looked to Fukada to obtain additional Petitioner is relying on alleged AAPA7 to provide reasoning in support of the proposed combination, we note that identification of a problem “is not an admission that this problem was known or appreciated by others.” Endo Pharm. Inc. v. Actavis LLC, 922 F.3d 1365, 1376 (Fed. Cir. 2019) (quoting Innogenics, N.V. v. Abbott Labs., 512 F.3d 1363, 1373 (Fed. Cir. 2008))). Thus, we are not persuaded by Petitioner’s argument.” slip op. at 13

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

    “In view of our analysis discussed below, we do not discern a need to construe explicitly any claim term of the ’416 patent, because construing these terms is not necessary for us to assess the asserted grounds of unpatentability. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs. in the context of an inter partes review).” slip op. at 9

  • Skill levelSkill level petitioner adoptedOther

    “A person of ordinary skill in the art (“POSITA”) at the time the ’416 patent was filed would have a bachelor’s degree in electrical engineering, computer engineering, or a related engineering discipline and two to three years of industry experience in the field of automotive control systems or automotive engineering, or equivalent experience, education, or both.” Pet. 9 (citing Ex. 1004 ¶ 22). Petitioner asserts further that “[t]he person would also have knowledge or familiarity with in-vehicle computing.” Id. Patent Owner “does not dispute Petitioner’s definition of a POSA.” Prelim. Resp. 2 (citing Pet. 9). Accordingly, for the purposes of this Decision, we 6 We note that at this time no objective evidence of nonobviousness has been presented by Patent Owner. consistent with the evidence at this stage of the proceeding, including the ’416 patent and the asserted prior art.” slip op. at 7

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,925,416
• United Fire Protection Corp. v. Engineered Corrosion Solutions, LLCRehearing denied
  PTAB · Oct 10, 2019 · IPR2018-00991 · APJ Patrick R Scanlon · IPR · Rehearing

  The Board denied rehearing and left in place its discretionary denial of institution under § 314(a), concluding that the General Plastic factors supported denial.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “A party dissatisfied with a decision may file a single request for rehearing, without prior authorization from the Board. The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. We review our Decision under an abuse of discretion standard. 37 C.F.R. § 42.71(c). An abuse of discretion may arise if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000).” slip op. at 2

  • PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticDecided for patent owner

    “between Petitioner and the Prior Petitioners. Unlike the Valve case, however, the majority opinion did not find that the first factor favors denying institution. Rather, the majority opinion determined that the first factor weighs against exercising discretion to deny institution, but only moderately because of the complete overlap in the challenged claims between the Petition and the petition in the 136 IPR, as well as the overlap of many issues and arguments raised by the Petition and the 136 IPR petition. Dec. 12–13. Petitioner’s arguments do not establish that we overlooked or misapprehended anything, or used unreasonable judgment, in determining that the first factor weighs only moderately against exercising discretion to deny institution. Furthermore, even if we were to determine that the first factor heavily weighs against exercising discretion to deny institution, as advocated by Petitioner, this determination would not alter our overall weighing of the General Plastic factors.” slip op. at 8

  Discretionary denial
  Patents in suitUS 9,144,700
• Apple Inc. / Visa Inc. et al. v. Universal Secure Registry, LLCNo claims unpatentable
  PTAB · Oct 7, 2019 · IPR2018-00810 · APJ Patrick R Scanlon · IPR · Final written decision

  Claims 1, 2, 7, 8, 10, 11, 14, 15, 21, 22, 24, 26, 27, 30, 31, and 34 were not shown unpatentable under § 103 over Maritzen, Jakobsson, and Niwa.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Factual indicators of the level of ordinary skill in the art include “the various prior art approaches employed, the types of problems encountered in the art, the rapidity with which innovations are made, the sophistication of the technology involved, and the educational background of those actively working in the field.” Jacobson Bros., Inc. v. United States, 512 F.2d 1065, 1071 (Ct. Cl. 1975); see also Orthopedic Equip. Co. v. United States, 702 F.2d 1005, 1011 (Fed. Cir. 1983) (quoting with approval Jacobson Bros.). The parties’ respective proposals are substantially similar such that there is no apparent dispute between the parties. Also, based on our review of the record before us, we find that Petitioner’s stated level of ordinary skill in the art is reasonable because it is consistent with the evidence of record, including the asserted prior art. Thus, for the purposes of this Decision, we adopt Petitioner’s definition. We note, however, that our findings in this proceeding would not differ under Patent Owner’s proposed definition.” slip op. at 8

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

    “We agree with Petitioner that the Specification identifies fingerprint, voice print, signature, iris or facial scan, DNA analysis, and possibly a picture of a person as examples of biometric information. Furthermore, we credit Dr. Shoup’s testimony that biometric information falls into the category of “things a person is.” See Ex. 1002 ¶ 33. Therefore, in the context of the claims and the Specification of the ’826 patent, we construe the term “biometric information” to mean “information about a user’s physical characteristics, such as fingerprint, voice print, signature, iris or facial scan, DNA analysis, or personal photograph.”” slip op. at 10

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

    “We agree Maritzen does not disclose expressly that PTD 100 is a handheld device. The only disclosure from Maritzen cited in the Petition, ¶ 63, describes the architecture for PTD 100 but makes no mention that PTD 100 is a handheld device. Ex. 1004 ¶ 63. The Petition does not direct us to any other disclosure in Maritzen that explicitly describes any of the disclosed PTD embodiments as being handheld, and we are not aware of any such disclosure. Furthermore, the testimony of Dr. Shoup cited by Petitioner merely repeats the same assertion that Maritzen’s PTD 100 is the first handheld device without providing any support or explanation for this assertion, other than citing the same ¶ 63 of Maritzen. Ex. 1002 ¶ 49.” slip op. at 13

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

    “We agree with Patent Owner. Maritzen discloses that clearing house 130 verifies that the biometric key (transmitted by PTD 100) is valid by comparing the biometric key to a known biometric key maintained within the clearing house. Ex. 1004 ¶ 48; see also id. at 81 (“Clearing house 130 also validates biometric key 350 against pre-established biometric key 950.”). Maritzen also discloses that “[p]rivacy card 110 only transmits the biometric key. The biometric information identifying the user is not transmitted at any time.” Id. ¶ 44. This disclosure indicates that the biometric key does not contain biometric information. In other words, the biometric key is something different than biometric information, which we have construed to mean “information about a user’s physical characteristics, such as fingerprint, voice print, signature, iris or facial scan, DNA analysis, or personal photograph.” See supra § III.C. Thus, we find that one of ordinary skill in the art would not consider replacing the known biometric key in clearing house 103 with second biometric information as taught by Jakobsson because comparing the biometric key to biometric information, rather than the known biometric key, would not be effective to verify the biometric key. In other words, because the biometric key does not contain biometric information, it could not be compared meaningfully to the second biometric information.” slip op. at 23

  Patent outcomesUS 9,100,826 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 9,100,826
• Illumina, Inc. v. The Trustees Of Columbia University In The City Of New YorkAll claims unpatentable
  PTAB · Sep 9, 2019 · IPR2018-00797 · APJ Michelle N Ankenbrand · IPR · Final written decision

  Claims 1 and 2 are unpatentable as obvious over the instituted grounds; the Board also denied Petitioner’s motion to exclude and found no estoppel against Patent Owner.

  RulingsFinal written decision

  • ExcludeMotion to exclude, deniedDenied

    “II. PETITIONER’S MOTION TO EXCLUDE In support of its briefing, Patent Owner provided a declaration of” slip op. at 9

  • PTAB / AIA Trials › §315(e) estoppelEstoppel does not applyDecided for patent owner

    “proceedings or would otherwise have a collateral estoppel effect on the current proceedings. See Paper 59, 4–5. For the reasons set forth below, we determine that the claims of the ’985 patent have material differences from the claims at issue in the previous proceedings, and that there is no inconsistency between Patent Owner’s positions in the current proceeding and in the previous proceedings. Accordingly, we determine that there is no estoppel attaching to Patent Owner with respect to the present inter partes reviews. Below, we provide a brief history of the previous proceedings and then address Petitioner’s contentions.” slip op. at 61

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable

    “analogues for SBS, and Metzker reports actually achieving such a molecule. Accordingly, the preponderance of the evidence supports our determination that a person of ordinary skill in the art would have had a reasonable expectation of success and reasonable likelihood of success in “meet[ing] the limitations” of claim 1 to the extent the claim requires using such an analogue. Intelligent Bio-Systems, Inc., 821 F.3d at 1367.” slip op. at 50

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for patent owner

    “analogues for SBS, and Metzker reports actually achieving such a molecule. Accordingly, the preponderance of the evidence supports our determination that a person of ordinary skill in the art would have had a reasonable expectation of success and reasonable likelihood of success in “meet[ing] the limitations” of claim 1 to the extent the claim requires using such an analogue. Intelligent Bio-Systems, Inc., 821 F.3d at 1367.” slip op. at 50

  Patent outcomesUS 9,868,985 unpatentable
  § 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,868,985
• Garmin International, Inc. / Garmin USA, Inc. v. Logantree, LPNo claims unpatentable
  PTAB · Aug 28, 2019 · IPR2018-00565 · APJ Patrick R Scanlon · IPR · Final written decision

  Claims 1, 2, 4, 5, 7–14, 56–58, 140, 144, and 146 were not shown unpatentable under § 103 over the instituted combinations.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “The parties’ respective proposals are substantially similar such that there is no apparent dispute between the parties. Also, based on our review of the record before us, we find that Petitioner’s stated level of ordinary skill in the art is reasonable because it is consistent with the evidence of record, including the asserted prior art. Thus, for the purposes of this Decision, we adopt Petitioner’s definition. We note, however, that our findings in this proceeding would not differ under Patent Owner’s proposed definition.” slip op. at 9

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

    “The ’576 patent does not include an explicit definition for “interpreting.” See generally Ex. 1001. We note, however, that claims 1 and 13 recite “a “microprocessor capable of . . . interpreting . . . said movement data.” With this language in mind, the ’576 patent discloses that the device “employs a user-programmable microprocessor which receives, interprets, stores and responds to the movement data.” Id. at 2:13–15; see also id. at Abstract (making substantially similar statement). These disclosures indicate that “interpreting” is distinct from receiving, storing, and responding to the data, and are consistent with claims 1 and 13, which recite “interpreting” distinctly from receiving, storing, and responding. Furthermore, the ’576 patent discloses that microprocessor 32 “receives the signals generated by the movement sensor 30 for analysis and subsequent processing” and “analyzes and responds to the movement data signals from the sensor 30.” Id. at 4:52–57 (emphases added). Therefore, in the context of the claims and the Specification of the ’576 patent, we determine that the ordinary and customary meaning of the phrase “interpreting . . . said movement data” is “analyzing the movement data.”” slip op. at 11

  • PTAB / AIA Trials › Constitutional / APA (Arthrex, Oil States, due process)Decided for petitioner

    “We note, however, that Federal Circuit has recently held that “the retroactive application of IPR proceedings to pre-AIA patents is not an unconstitutional taking under the Fifth Amendment.” Celgene Corp. v. Peter, No. 2018-1167, 2019 WL 3418549, at *16 (Fed. Cir. July 30, 2019). The Federal Circuit addressed arguments made under both the due process and takings clauses of the Fifth Amendment in so holding. Id. at *11–16. We discern no other argument from Patent Owner in this case other than those expressly rejected by the Federal Circuit. Thus, in view of Celgene, we find Patent Owner’s argument unpersuasive.” slip op. at 13

  • BurdenNot shown unpatentable

    “On balance, we are not persuaded on the full record that Stewart discloses that processor 52 controls the comparing function. Accordingly, we determine that Petitioner has not met its burden of establishing that Stewart’s processor 52 interprets movement data. Regarding the limitation of the microprocessor being capable of “detecting a first user-defined event based on the movement data and at least one of the user-defined operational parameters regarding the movement data,” Petitioner asserts that Stewart discloses a processor detecting an event, such as a spearing movement in football, based on acceleration data and a defined/predetermined threshold. Pet. 25 (citing Ex. 1004, 5:4–7, 14:6–11). Petitioner also asserts that it would have been obvious to one of ordinary skill in the art to modify Stewart’s system to enable user adjustment of the predetermined threshold to accommodate different users as taught by Rush. Id. at 25 (citing Ex. 1010 ¶¶ 59). As an initial point, we note that Petitioner relies on the same disclosures from Stewart (i.e., Ex. 1004, 5:4–7, 14:6–11) for disclosing both interpreting data and detecting an event, but does not provide a sufficient explanation of how these same disclosures teach two different claim limitations. Moreover, we disagree that Stewart expressly discloses that processor 52 detects an event such as spearing. Stewart merely discloses that it may be “possible to determine if a football player is improperly using his helmet (e.g., illegal spearing)” without specifying that such determination is performed by processor 52. See Ex. 1004, 14:4–14). As discussed above, Stewart’s disclosure with respect to the accelerometer responses exceeding a predetermined threshold indicates that this processing is accomplished by a receiver remote from the self-contained helmet system and, thus, is not performed by the processor. See id. at 14:6–9 (disclosing that when correlating accelerometer responses “with desirable punches exceeding a predetermined threshold,” the responses are “processed and scored at a ringside receiver”). For these reasons, we determine that Petitioner has not shown that the combination of Stewart and Rush teaches or suggests the detecting limitation of claim 1.” slip op. at 21

  Patent outcomesUS 6,059,576 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 6,059,576
• Garmin International, Inc. / Garmin USA, Inc. v. Logantree, LPNo claims unpatentable
  PTAB · Aug 28, 2019 · IPR2018-00564 · APJ Patrick R Scanlon · IPR · Final written decision

  Claims 20–26, 29, 104–107, 110, 113–122, 126–128, 134–138, and 175 were not shown unpatentable because the asserted combinations failed to teach claim 20’s interpreting and detecting limitations.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Factual indicators of the level of ordinary skill in the art include “the various prior art approaches employed, the types of problems encountered in the art, the rapidity with which innovations are made, the sophistication of the technology involved, and the educational background of those actively working in the field.” Jacobson Bros., Inc. v. U.S., 512 F.2d 1065, 1071 (Ct. Cl. 1975); see also Orthopedic Equip. Co. v. U.S., 702 F.2d 1005, 1011 (Fed. Cir. 1983) (quoting with approval Jacobson Bros.). The parties’ respective proposals are substantially similar such that there is no apparent dispute between the parties. Also, based on our review of the record before us, we find that Petitioner’s stated level of ordinary skill in the art is reasonable because it is consistent with the evidence of record, including the asserted prior art. Thus, for the purposes of this Decision, we adopt Petitioner’s definition. We note, however, that our findings in this proceeding would not differ under Patent Owner’s proposed definition.” slip op. at 9

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

    “The ’576 patent does not include an explicit definition for “interpreting.” See generally Ex. 1001. We note, however, that claim 20 recites “interpreting, using a microprocessor.” With this language in mind, the ’576 patent discloses that the device “employs a user-programmable microprocessor which receives, interprets, stores and responds to the movement data.” Id. at 2:13–15; see also id. at Abstract (making substantially similar statement). These disclosures indicate that “interpreting” is distinct from receiving, storing, and responding to the data. Furthermore, the ’576 patent discloses that microprocessor 32 “receives the signals generated by the movement sensor 30 for analysis and subsequent processing” and “analyzes and responds to the movement data signals from the sensor 30.” Id. at 4:52–57 (emphases added). Therefore, in the context of the Specification of the ’576 patent, we determine that the ordinary and customary meaning of the phrase “interpreting . . . said physical movement data” is “analyzing the physical movement data.”” slip op. at 11

  • PTAB / AIA Trials › Constitutional / APA (Arthrex, Oil States, due process)Decided for petitioner

    “In general, “administrative agencies do not have jurisdiction to decide the constitutionality of congressional enactments,” and “[a] finding that the agency lacks jurisdiction to decide constitutional questions is especially likely when the constitutional claim asks the agency to act contrary to its statutory charter.” Riggin v. Office of Senate Fair Emp’t Practices, 61 F.3d 1563, 1569 (Fed. Cir. 1995); see also Harjo v. Pro-Football, Inc., 50 USPQ2d 1705, 1710 (TTAB 1999) (“[T]he Board has no authority . . . to declare provisions of the Trademark Act unconstitutional.”), rev’d on other grounds, 284 F. Supp. 2d 96 (D.D.C. 2003). But see Am. Express Co. v. Lunenfeld, Case CBM2014-00050, slip op. at 9–10 (PTAB May 22, 2015) (Paper 51) (“[F]or the reasons articulated in Patlex [Corp. v. Mossinghoff, 758 F.2d 594 (Fed. Cir. 1985)], we conclude that covered business method patent reviews, like reexamination proceedings, comply with the Seventh Amendment.”). We note, however, that Federal Circuit has recently held that “the retroactive application of IPR proceedings to pre-AIA patents is not an unconstitutional taking under the Fifth Amendment.” Celgene Corp. v. Peter, No. 2018-1167, 2019 WL 3418549, at *16 (Fed. Cir. July 30, 2019). The Federal Circuit addressed arguments made under both the due process and takings clauses of the Fifth Amendment in so holding. Id. at *11–16. We discern no other argument from Patent Owner in this case other than those expressly rejected by the Federal Circuit. Thus, in view of Celgene, we find Patent Owner’s argument unpersuasive.” slip op. at 12

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

    “detecting limitation”), Petitioner asserts that Stewart discloses a processor detecting an event, such as a spearing movement in football, based on acceleration data and a predetermined threshold. Pet. 22–23 (citing Ex. 1004, 5:4–7, 14:6–11). Noting that Stewart does not disclose expressly that the predetermined threshold is set by user commands, Petitioner argues that Rush discloses a monitoring device that detects axial loads, such as a spearing movement, in which the threshold value for detecting the spearing movement can be adjustable to accommodate users of different ages and sizes. Id. at 23 (citing Ex. 1006, 3:13–18, 9:48–50, 9:54–58). Thus, according to Petitioner, it would have been obvious to one of ordinary skill in the art to modify Stewart’s system to enable user adjustment of the predetermined threshold to accommodate different users as taught by Rush. Id. at 23–24 (citing Ex. 1010 ¶¶ 61, 62). In this analysis, Petitioner maps Stewart’s predetermined threshold to the recited user-defined operational parameters. This claim limitation, however, recites at least one of the user-defined operational parameters. In other words, the detection of a first user-defined event must be based on at least one of the same user-defined operational parameters upon which the interpretation of the movement data was based. But, as discussed above, Petitioner maps the user-defined operational parameters of the interpreting limitation to Stewart’s user-defined time commands that cause the processor to start and stop the recording of movement data. Pet. 20. By inconsistently relying on different parameters in Stewart to satisfy the claimed user-defined operational parameters, Petitioner has not met its burden of establishing that the combination of Stewart and Rush meets the subject matter of claim 20. In addition, we disagree that Stewart expressly discloses that processor 52 detects an event such as spearing. Stewart merely discloses that it may be “possible to determine if a football player is improperly using his helmet (e.g., illegal spearing)” without specifying that such determination is performed by processor 52. See Ex. 1004, 14:4–14. Furthermore, as discussed above, Stewart’s disclosure with respect to the accelerometer responses exceeding a predetermined threshold indicates that this processing is accomplished by a receiver remote from the self-contained helmet system and, thus, is not performed by the processor. See id. at 14:6– 9 (disclosing that when correlating accelerometer responses “with desirable punches exceeding a predetermined threshold,” the responses are “processed and scored at a ringside receiver”). For these reasons, we determine that Petitioner has not shown that Stewart teaches or suggests the detecting limitation of claim 20.” slip op. at 23

  Patent outcomesUS 6,059,576 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 6,059,576
• Nelson Products, Inc. v. Bal Seal Engineering, Inc.Institution denied
  PTAB · Aug 12, 2019 · IPR2019-00630 · APJ Benjamin D M Wood · IPR · Institution

  The Board denied institution because the petition did not show a reasonable likelihood of proving any challenged claim obvious, including failure to show the required spring spacing or a reason to combine the cited art.

  RulingsInstitution decision

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

    “inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). A decision to institute under 35 U.S.C. § 314 may not institute on fewer than all claims challenged in the petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018). Upon considering the Petition and the evidence currently of record, we determine that Petitioner has not shown a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims. Accordingly, we deny the Petition.” slip op. at 2

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “II. ANALYSIS A. Level of Ordinary Skill in the Art Patent Owner asserts that one of ordinary skill in the art of latching connectors “would be someone with at least a bachelor’s degree in engineering and at least three years of direct practical experience in designing latching connectors.” Prelim. Resp. 26–27 (citing Ex. 2001 ¶¶ 77–78). This definition is consistent with that proffered by Petitioner’s Declarant, Mr. Cook. Ex. 1011 ¶ 9. Accordingly, for purposes of determining whether to institute the Petition, we adopt Patent Owner’s definition. We also presume that the cited prior art references reflect the level of ordinary skill at the time of the invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 8

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner

    “Petitioner does not offer a construction for this term. Patent Owner also does not expressly construe this term, but in arguing that DM3M does not teach limitation (g), Patent Owner states that “[n]one of the cited figures of the DM3M catalog show spacing between the CCS [canted coil spring] and the flat bottom surface of the housing groove in the latched state.” Prelim. Resp. 51. Thus, Patent Owner implies that spacing the radial canted coil spring from the flat bottom surface of the housing groove requires that there be space between the spring and the flat bottom surface of the housing groove after the pin is moved to the latched position. This construction is consistent with the plain meaning of “space.” See https://www.merriam-webster.com/dictionary/space (last visited Aug. 2, 2019) (defining “space” (transitive verb) as “to place at intervals or arrange with space between”). It is also consistent with the Specification of the ’274 patent, because the figures depicting the connectors in a latched state appear to show space between the radial canted coil spring and the flat bottom surface of the housing groove. See, e.g., Ex. 1001, Figs. 5, 6, 13, 14. Therefore, for purposes of this Decision, we interpret “spacing the radial canted coil spring from the flat bottom surface of the housing groove” to mean providing space between the radial canted coil spring and the flat bottom surface of the housing groove when the connector is latched. We further determine that, at this stage of the proceeding, no other claim term requires express construction. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that only terms that are in controversy need to be construed, and “only to the extent necessary to resolve the controversy”).” slip op. at 9

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

    “As discussed above, we construe “spacing the radial canted coil spring from the flat bottom surface of the housing groove” to require providing space between the radial canted coil spring and the flat bottom surface of the housing groove when the connector is latched. Petitioner relies on DM3M- 13a to teach limitation (g). According to Petitioner, “DM3M-13a teaches a pin that can be inserted into a housing from right to left such that the canted coil spring is seated in the v-groove of the pin groove. The pin can also be disconnected from the housing from left to right.” Pet. 25. Patent Owner responds that both DM3M-13a and -13b “utilize grooves that constrain both the [outer diameter] and the [inner diameter] of the [spring] coils,” and therefore, the figures do not “show spacing between the CCS and the flat bottom surface of the housing groove in the latched state.” Prelim. Resp. 51 (citing Ex. 2001 ¶ 134) (emphasis omitted). On this record, Petitioner has not persuaded us that DM3M-13a teaches limitation (g). In particular, Petitioner has not explained how DM3M-13a teaches providing space between the radial canted coil spring and the flat bottom surface of the housing groove when the connector is latched. Accordingly, Petitioner has not satisfied its pleading requirement. See 37 C.F.R. § 42.104(b)(4) (“The petition must specify where each element of the claim is found in the prior art patents or printed publications relied upon”). Nor is such a space apparent from our independent review of the evidence.” slip op. at 14

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,561,274
• Unified Patents Inc. v. Iron Oak Technologies, LLCAll claims unpatentable
  PTAB · Jul 15, 2019 · IPR2018-00486 · APJ Arthur M Peslak · IPR · Final written decision

  Claims 1, 3, 4, 8, and 11 are unpatentable as obvious over Eriksson alone and over Eriksson and Schellinger.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent would have had at least a Master’s Degree in electrical engineering, computer science, or a related subject, or at least a Bachelor’s Degree in electrical engineering, computer science, or a related subject and three years of experience working with wireless networks and telephone systems. Pet. 13. Iron Oak does not dispute or comment on Unified’s assertion of the level of ordinary skill in the art or offer its own proposal regarding the level of ordinary skill in the art. See PO Resp. We adopt Unified’s proposed definition of the level of ordinary skill in the art because it appears reasonable and consistent with the ’658 Patent. We note that the asserted prior art of record also reflects this level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355” slip op. at 9

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

    “Based on the foregoing, we decline to adopt Iron Oak’s proposed construction of “communication path” because it is not supported by sufficient intrinsic or extrinsic evidence that defines communication path or otherwise demonstrates a clear intention to limit the scope of communication path as “uniquely” defined by the elements of the path. Further, based on the complete record and for purposes of this Final Written Decision, we maintain our preliminary construction of “communication path,” and conclude that a communication path is “any suitable element over which communications are transmitted or received” for the reasons provided in our Decision to Institute. This construction is consistent with the ’658 Patent Specification which provides that a “communication path may be uniquely defined by any one or a combination of the following: a network of satellitebased or land-based transceivers, a public switched telephone network . . . a mobile communication switching office . . ., or any other suitable element for communications.” See Ex. 1001, 1:20–25. As discussed above, Unified agrees with this claim construction.” slip op. at 19

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner

    “First, Unified is correct that Iron Oak’s proposed construction seeks to add words to the claims. Essentially, Iron Oak requests that we narrow the scope of “a request for communication” to “a request for a specific communication.” Second, the portions of the Specification cited by Iron Oak do not support the proposed construction. Column 9, line 51 to column 10, line 5 describes, inter alia, that “mobile unit 32 may receive a request for communication,” that the request for communication “may specify various parameters for the communication,” and that the information relating to the parameters “may be conveyed in the form of one or more communication attributes.” Ex. 1001, 9:52–60. The cited passage describes a request for communication but it does not define a request for communication with respect to “a certain communication,” as Iron Oak asserts. Column 1, lines 10 to 39 describes various communication paths but does not mention the phrase “request for communication” let alone define the phrase as requested by Iron Oak. See id. 1:10–39. Figure 5 and 7 are flow charts detailing various processing steps including receiving a request for communication. Id. at Figs. 5, 7. However, neither figure provides support for Iron Oak’s proposed construction. For these reasons, we find that Iron Oak’s proposed construction is not suggested by the claim language or otherwise sufficiently supported by intrinsic evidence, and we decline to adopt this construction. Rather, we conclude that the term “request for communication” should be given its plain and ordinary meaning of a request that communication occur.” slip op. at 21

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

    “Ex. 1002, 5:55–57, 6:1–3, 6:26–56).8 For the following reasons, we determine that Unified presents persuasive arguments supported by convincing evidence to support a finding that Eriksson discloses the preamble of claim 1, including the recited communication paths, under either our construction or Iron Oak’s proposed construction of communication paths. Eriksson discloses an apparatus in which each of a plurality of cells is “served by at least one base station” where the base station includes transceiver 20, CPU 30, memory 40, and channel selector 50. Ex. 1002, 5:56–57, Fig. 1. Eriksson’s base station, thus, corresponds to an apparatus as appearing in the preamble of claim 1. Ex. 1003 ¶ 67. We note that Iron Oak does not address why Eriksson’s channels do not correspond to the recited communication paths under our construction of that term as set forth in the Decision to Institute and maintained herein. Further, Iron Oak does not squarely dispute the evidence presented by Unified in the Petition on this point. In particular, Unified’s expert, Dr. Haas, testifies by declaration that one of ordinary skill in the art “would have understood that the channels of Eriksson are communication paths.” Ex. 1003 ¶ 74. Dr. Haas supports this opinion with disclosure from Eriksson of “allocating channels for connections between base stations and mobiles” and selecting “a channel (‘communication path’) based on its characteristics.” Id. (citing Ex. 1002, Abstract, 7:50–53). Dr. Haas opines that this process is similar to the disclosure in the ’658 Patent of selecting “a ‘particular 8 As noted above, Iron Oak did not request leave to file a sur-reply and, thus, does not address Unified’s contentions and evidence submitted in the Petitioner Reply. communication path 16’ . . . based on its ‘characteristics.’” Id. (citing Ex. 1001, 4:4–9). Relying on various dictionary definitions and prior art references, Dr. Haas further opines that one of ordinary skill in the art “would have understood a ‘channel’ to be a ‘communication path’ based on ordinary usage of these terms.” Id. ¶ 75 (citations omitted). We find Dr. Haas’s testimony on this point to be credible and this testimony was not directly disputed by Iron Oak. Further, the Specification of the ’658 Patent supports Dr. Haas’s testimony by describing that “[c]ommunication over a communication path 16 may be implemented in a voice channel, control channel, paging channel part of a seized voice or data channel, . . . or other suitable technology.” Ex. 1001, 4:28–33. Based on the evidence presented by Unified including the declaration testimony of Dr. Haas discussed above that one of ordinary skill would have understood a channel to be a communication path as well as the reference to channels in the Specification of the ’658 Patent (see e.g., Ex. 1001, 4:28–33; Ex. 1003 ¶¶ 74–75), we find that Unified’s arguments and evidence establish that Eriksson’s channels correspond to communication paths as we have construed this term, because the channels constitute suitable elements over which communications are transmitted or received. See e.g,, Ex. 1002, Abstract, 6:23–26, 7:50–53.” slip op. at 30

  Patent outcomesUS 5,966,658 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 5,966,658

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.