- SK Hynix Inc. / SK Hynix America Inc. et al. v. Netlist, Inc.Rehearing deniedPTAB · Oct 30, 2017 · IPR2017-00730 · APJ Matthew R Clements · IPR · Rehearing
The Board denied Petitioner’s rehearing request, leaving in place the denial of institution on claims 1–5, 12–14, and 19–20 over Saito and Swain, and claims 3 and 13–14 over Saito, Swain, and Kim.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). The party must identify specifically all matters we misapprehended or overlooked, and the place where each matter was addressed previously in a motion, an opposition, or a reply. Id. When rehearing a decision on a petition, we review the decision for an abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion may be indicated if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. See Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Not reached
“Ex. 1005 ¶ 101. Paragraph 101 describes Figure 7. See id. ¶¶ 100, 101. Recognizing that the timing of signals DQ-Pre (between memory controller and data buffer 300 on connectors 120) and the timing of signals DQ-Post (between data buffer 300 and memory chips 200 on data lines L1 or L2) is “off” because “data DQ is buffered by the data register buffer 300,” Saito teaches that “it is required to perform a timing adjustment between the memory chips 200 and the data register buffer 300 and a timing adjustment between the data register buffer 300 and the memory controller in a separate manner.” Ex. 1005 ¶ 101. This paragraph, therefore, does not teach that retiming from CL=5 to CL=6 is based on “time intervals from the leveling operations,” as Petitioner contends. Req. Reh’g 7. To the contrary, it explicitly teaches the necessity of a “separate manner” for adjusting timing between a data buffer and memory chip (i.e., for “signals received by the each respective buffer circuit during a memory write operation,” as recited in claim 1) and adjusting timing between a data buffer and a memory controller (i.e., for “transmission of a respective set of read data signals received from the respective group of memory devices,” as recited in claim 1).” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“We disagree. Neither paragraph teaches that the re-timing from CL=5 to CL=6 is “based on signals received by the each respective buffer circuit during a memory” read or write “operation,” as required by the claims. Paragraph 101 of Saito is reproduced below. Although the data DQ-Pre and the data DQ-Post have the same content, because the data DQ is buffered by the data register buffer 300, the timing is off between the data DQ-Pre and the data DQ-Post. The same is true for a relationship between the data strobe signal DQS-Pre and the data strobe signal DQS-Post. Therefore, in the present embodiment, it is required to perform a timing adjustment between the memory chips 200 and the data register buffer 300 and a timing adjustment between the data register buffer 300 and the memory controller in a separate manner. Details on the timing adjustments will be described later. Ex. 1005 ¶ 101. Paragraph 101 describes Figure 7. See id. ¶¶ 100, 101. Recognizing that the timing of signals DQ-Pre (between memory controller and data buffer 300 on connectors 120) and the timing of signals DQ-Post (between data buffer 300 and memory chips 200 on data lines L1 or L2) is “off” because “data DQ is buffered by the data register buffer 300,” Saito teaches that “it is required to perform a timing adjustment between the memory chips 200 and the data register buffer 300 and a timing adjustment between the data register buffer 300 and the memory controller in a separate manner.” Ex. 1005 ¶ 101. This paragraph, therefore, does not teach that retiming from CL=5 to CL=6 is based on “time intervals from the leveling operations,” as Petitioner contends. Req. Reh’g 7. To the contrary, it explicitly teaches the necessity of a “separate manner” for adjusting timing between a data buffer and memory chip (i.e., for “signals received by the each respective buffer circuit during a memory write operation,” as recited in claim 1) and adjusting timing between a data buffer and a memory controller (i.e., for “transmission of a respective set of read data signals received from the respective group of memory devices,” as recited in claim 1).” slip op. at 3
- Strike new argumentNew argument disregardedDenied
“These arguments were not in the Petition so we could not have misapprehended or overlooked them. To the extent that Petitioner is arguing that these paragraphs of our Decision indicate a misapprehension of what was argued in the Petition, we disagree. Specifically, we are unpersuaded by Petitioner’s contention that Saito’s teaching to use time A to time reception of read data by “input buffer circuit INB and the like” (Ex. 1005 ¶ 149) teaches using that same interval “to time transmission” of read data, as claimed, merely because data is received by that input buffer circuit before, at some later point, being transmitted to the memory controller. Req. Reh’g. 8–9. We also are not persuaded that Saito’s use of “and the like” extends to the timing of the output of read data from buffer 300 in the manner argued. Req. Reh’g 9–11. This argument is particularly unpersuasive because, as our Decision points out (Dec. 13–14), Saito discloses an alternative to timing the output of read data from data buffer 300, which is a read leveling operation by the memory controller. Thus, although “Petitioner does not rely on those data buffer-memory controller operations for any of its arguments” (Req. Reh’g 13), they are nevertheless relevant because they corroborate that Saito does not teach its data buffer 300 using a time interval “based on signals received by [it]” for the purpose of “tim[ing] transmission of a respective set of read data signals.”” slip op. at 5
§ 103 obviousnessPatents in suitUS 9,128,632 - Samsung Electronics Co. Ltd. / Samsung Electronics America, Inc. et al. v. Rosetta-Wireless CorporationRehearing deniedPTAB · Oct 20, 2017 · IPR2016-00622 · APJ John A Hudalla · IPR · Rehearing
The Board denied Rosetta’s rehearing request, finding it had not shown the Board overlooked or misapprehended its § 318(a) and constitutional arguments.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“should be modified, which includes specifically identifying all matters the party believes we misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. See 37 C.F.R. § 42.71(d).” slip op. at 2
- PTAB / AIA Trials › Constitutional / APA (Arthrex, Oil States, due process)Not reached
“property right. Req. Reh’g 4–5. Thus, Rosetta contends “[i]nter partes review is an adjudicatory proceeding which, as in this case, may result in extinguishment of a patentee’s property rights by action of the Board and without the right to trial by jury.” Id. at 3. According to Rosetta, this violates the Seventh Amendment and Article III of the Constitution. Id. Rosetta cites to a pending case before the U.S. Supreme Court that has taken up this issue. Id. (citing Oil States Energy Servs., LLC v. Greene’s Energy Grp., LLC, 137 S. Ct. 2239 (2017)). Accordingly, Rosetta asks us to vacate our Final Written Decision. Id. at 6. Rosetta never made arguments during trial about the purported unconstitutionality of inter partes review. Nor does Rosetta’s request for rehearing attempt to identify such arguments in the trial record. As such, we could not have misapprehended or overlooked this issue.” slip op. at 4
NonePatents in suitUS 7,149,511 - Smith & Nephew, Inc. v. Conformis, Inc.Institution deniedPTAB · Sep 12, 2017 · IPR2017-00984 · APJ James A Worth · IPR · Institution
The Board denied institution after finding no reasonable likelihood that claims 1–25, 28, 29, 32–46, and 50–64 were unpatentable under the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Institution of an inter partes review is authorized by statute when “the information presented in the petition filed under [35 U.S.C. §] 311 and any response filed under [35 U.S.C. §] 313 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); see also 37 C.F.R. § 42.108. For the reasons set forth below, we determine that Petitioner has not demonstrated a reasonable likelihood that claims 1–25, 28, 29, 32–46, and 50–64 are unpatentable. Accordingly, we do not institute an inter partes review of claims 1–25, 28, 29, 32–46, and 50–64 of the ’827 patent based on the grounds asserted in the petitions.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“As to “references the osteophyte,” Petitioner states that the ’827 patent does not define the term “reference,” but argues the broadest reasonable construction of the limitation includes “at least a patient-specific surface that engages or avoids an osteophyte.” Id. Patent Owner does not address this issue directly in this proceeding. For purposes of this Decision, we determine that the broadest reasonable construction of the “references the osteophyte” limitation includes a patient specific surface that “engages or avoids the osteophyte,” consistent with the embodiments of Figures 32 and 33 of the ’827 patent. We note that dependent claims 2 and 3 use the phrase “not engage” with respect to a “second osteophyte.” Ex. 1001, 119:30, 119:36–37 (claims 2, 3). Nevertheless, dependent claims 4 and 5 require that the patient-specific surface “substantially engage[s]” an osteophyte (id. at 119:41–46), and therefore the principle of claim differentiation indicates that independent claim 1 has a broader scope than dependent claims 4 and 5.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundReasonable expectation not foundNot shown unpatentable
“The next question is whether referencing osteophytes is the “natural result flowing from” Radermacher’s technique, under the aforementioned Oelrich test, or whether it otherwise would have been obvious to apply Radermacher’s technique to a bone surface with osteophytes. Petitioner argues that it would have been obvious to apply Radermacher’s technique to a bone surface with osteophytes because (1) such a template would be a negative of the “natural (i.e. not pre-treated) surface”; (2) referencing any osteophyte would, in some cases, aid in alignment because the unique structure of the osteophyte would help ensure that the template was placed in the proper position; and (3) it would eliminate the need to pre-treat the joint to remove the osteophyte in a preliminary surgical step, thus reducing surgical time and improving patient safety. Pet. 30 (citing, e.g., Ex. 1003, 10, 12; Ex. 1002 ¶¶ 116–117).” slip op. at 14
- BurdenNot shown unpatentable
“Thus, the prior art relied upon in the asserted ground does not disclose referencing an osteophyte, expressly or inherently. Additionally, Petitioner does not provide adequate evidence that it would have been obvious to apply the technique of Radermacher in patients with osteophytes to engage (or avoid or reference) the osteophyte, as opposed to performing an alternate technique, such as first removing the osteophytes. In particular, Petitioner has not provided adequate evidence of a reasonable likelihood of success of applying Radermacher’s technique to a bone surface with osteophytes beyond unsupported and conclusory assertions thereof. For these reasons, we determine that Petitioner has not demonstrated a reasonable likelihood that the combination of Radermacher and Alexander renders obvious independent claim 1. Accordingly, we determine that Petitioner has failed to establish a reasonable likelihood that it would prevail in its assertion that independent claim 1, or dependent claims 2–13, 32, 38, and 44–46, are unpatentable as obvious over Radermacher and Alexander.5” slip op. at 17
Claim construction§ 103 obviousnessPatents in suitUS 8,657,827 - Smith & Nephew, Inc. v. Conformis, Inc.Institution deniedPTAB · Sep 12, 2017 · IPR2017-00983 · APJ James A Worth · IPR · Institution
The Board denied both petitions and instituted no trial, finding no reasonable likelihood that claims 1–25, 28, 29, 32–46, or 50–64 were unpatentable on the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Institution of an inter partes review is authorized by statute when “the information presented in the petition filed under [35 U.S.C. §] 311 and any response filed under [35 U.S.C. §] 313 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); see also 37 C.F.R. § 42.108. For the reasons set forth below, we determine that Petitioner has not demonstrated a reasonable likelihood that claims 1–25, 28, 29, 32–46, and 50–64 are unpatentable. Accordingly, we do not institute an inter partes review of claims 1–25, 28, 29, 32–46, and 50–64 of the ’827 patent based on the grounds asserted in the petitions.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“unexpired patent according to the broadest reasonable construction in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b); see Cuozzo Speed Techs. v. Lee, LLC, 136 S. Ct. 2131, 2142–46 (2016). Under that standard, and absent any special definitions, we give claim terms their ordinary and customary meaning, as would be understood by one of ordinary skill in the art at the time of the invention. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Any special definitions for claim terms must be set forth with reasonable clarity, deliberateness, and precision. See In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). We construe claim terms only as relevant to the parties’ contentions and only to the extent necessary to resolve the issues in dispute. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). Petitioner requests a construction of the term “references the osteophyte.” Pet. 17–18. Patent Owner does not propose construction of any terms. As to “references the osteophyte,” Petitioner states that the ’827 patent does not define the term “reference,” but argues the broadest reasonable construction of the limitation includes “at least a patient-specific surface that engages or avoids an osteophyte.” Id. Patent Owner does not address this issue directly in this proceeding. For purposes of this Decision, we determine that the broadest reasonable construction of the “references the osteophyte” limitation includes a patient specific surface that “engages or avoids the osteophyte,” consistent with the embodiments of Figures 32 and 33 of the ’827 patent. We note that dependent claims 2 and 3 use the phrase “not engage” with respect to a “second osteophyte.” Ex. 1001, 119:30, 119:36–37 (claims 2, 3). Nevertheless, dependent claims 4 and 5 require that the patient-specific surface “substantially engage[s]” an osteophyte (id. at 119:41–46), and therefore the principle of claim differentiation indicates that independent claim 1 has a broader scope than dependent claims 4 and 5.” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundReasonable expectation not foundNot shown unpatentable
“The next question is whether referencing osteophytes is the “natural result flowing from” Radermacher’s technique, under the aforementioned Oelrich test, or whether it otherwise would have been obvious to apply Radermacher’s technique to a bone surface with osteophytes. Petitioner argues that it would have been obvious to apply Radermacher’s technique to a bone surface with osteophytes because (1) such a template would be a negative of the “natural (i.e. not pre-treated) surface”; (2) referencing any osteophyte would, in some cases, aid in alignment because the unique structure of the osteophyte would help ensure that the template was placed in the proper position; and (3) it would eliminate the need to pre-treat the joint to remove the osteophyte in a preliminary surgical step, thus reducing surgical time and improving patient safety. Pet. 30 (citing, e.g., Ex. 1003, 10, 12; Ex. 1002 ¶¶ 116–117).” slip op. at 14
Claim construction§ 103 obviousnessPatents in suitUS 8,657,827 - Black Swamp IP, LLC v. Virnetx Inc.Rehearing deniedPTAB · Jul 24, 2017 · IPR2016-00957 · APJ Stephen C Siu · IPR · Rehearing
The Board denied VirnetX’s rehearing request, leaving claims 27 and 51 unpatentable as anticipated by Kiuchi.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“path to address the claimed ‘first location’” and relies on In re Magnum Oil Tools Int’l., Ltd., 829 F.3d 1364 (Fed. Cir. 2016) to support Patent Owner’s implied contention that the Final Decision may not address new arguments raised by Patent Owner in Patent Owner’s Preliminary Response and/or Patent Owner’s Response. Req. Reh’g. 6. We disagree. In the present matter and in accordance with Magnum Oil, the ultimate burden of proof remained with Petitioner and was never shifted to Patent Owner at any time during the proceedings and, as discussed above, at no time was an “entirely new path to address the claimed ‘first location’” introduced in the Decision.” slip op. at 3
- BurdenDecided for petitioner
“path to address the claimed ‘first location’” and relies on In re Magnum Oil Tools Int’l., Ltd., 829 F.3d 1364 (Fed. Cir. 2016) to support Patent Owner’s implied contention that the Final Decision may not address new arguments raised by Patent Owner in Patent Owner’s Preliminary Response and/or Patent Owner’s Response. Req. Reh’g. 6. We disagree. In the present matter and in accordance with Magnum Oil, the ultimate burden of proof remained with Petitioner and was never shifted to Patent Owner at any time during the proceedings and, as discussed above, at no time was an “entirely new path to address the claimed ‘first location’” introduced in the Decision.” slip op. at 3
NonePatents in suitUS 7,921,211 - Black Swamp IP, LLC v. Virnetx Inc.Rehearing deniedPTAB · Jul 24, 2017 · IPR2016-00693 · APJ Stephen C Siu · IPR · Rehearing
The Board denied VirnetX’s rehearing request, leaving intact its determination that claims 27 and 51 are anticipated by Kiuchi.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“path to address the claimed ‘first location’” and relies on In re Magnum Oil Tools Int’l., Ltd., 829 F.3d 1364 (Fed. Cir. 2016) to support Patent Owner’s implied contention that the Final Decision may not address new arguments raised by Patent Owner in Patent Owner’s Preliminary Response and/or Patent Owner’s Response. Req. Reh’g. 6. We disagree. In the present matter and in accordance with Magnum Oil, the ultimate burden of proof remained with Petitioner and was never shifted to Patent Owner at any time during the proceedings and, as discussed above, at no time was an “entirely new path to address the claimed ‘first location’” introduced in the Decision.” slip op. at 3
- BurdenDecided for petitioner
“path to address the claimed ‘first location’” and relies on In re Magnum Oil Tools Int’l., Ltd., 829 F.3d 1364 (Fed. Cir. 2016) to support Patent Owner’s implied contention that the Final Decision may not address new arguments raised by Patent Owner in Patent Owner’s Preliminary Response and/or Patent Owner’s Response. Req. Reh’g. 6. We disagree. In the present matter and in accordance with Magnum Oil, the ultimate burden of proof remained with Petitioner and was never shifted to Patent Owner at any time during the proceedings and, as discussed above, at no time was an “entirely new path to address the claimed ‘first location’” introduced in the Decision.” slip op. at 3
NonePatents in suitUS 7,418,504 - Apple Inc. v. Virnetx Inc.All claims unpatentablePTAB · Jun 22, 2017 · IPR2016-00332 · APJ Karl D Easthom · IPR · Final written decision
Claims 1–11, 14–25, 28, and 30 are unpatentable based on the instituted grounds.
RulingsFinal written decision- ExcludeMotion to exclude, deniedMixed
“Petitioner’s argument is persuasive. Patent Owner has not met its burden of explaining why Exhibits 1064 and 1065 must be excluded as hearsay. The statements are offered to show that skilled artisans believed the RFC 2401 document and other RFC documents were available at the time of publication. Patent Owner does not challenge the publication dates of the magazines as hearsay. As noted above, Patent Owner does not state what aspects of the documents are hearsay. See Paper 20, 7–10; Paper 24, 4 n.1 (Patent Owner “disagrees” with Petitioner about the documents status as hearsay). In any event, Petitioner shows that the documents also satisfy the residual hearsay exception. They have circumstantial guarantees of trustworthiness as written prior to litigation by disinterested parties in periodical trade magazines that almost qualify as ancient documents. Both magazine articles bear specific volumes and issue numbers along with the publication dates. See Ex. 1064 (Aug. 16, 1999, vol. 21, iss. 33); Ex. 1065 (March 15, 1999, vol. 16, no. 11); Paper 23, 3–8; Fed. Rule Evid. 803 (16) (ancient authentic documents of 20 years old are not hearsay). In addition,” slip op. at 84
Patent outcomesUS 8,504,696 unpatentableNonecites Phillips · KSRPatents in suitUS 8,504,696 - Apple Inc. v. Virnetx Inc.All claims unpatentablePTAB · Jun 22, 2017 · IPR2016-00331 · APJ Karl D Easthom · IPR · Final written decision
Claims 1–11, 14–25, and 28–30 are unpatentable as obvious over Beser and RFC 2401.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“Patent Owner’s contentions are not persuasive. Patent Owner fails to explain sufficiently why the notion of “performing an additional evaluation” constitutes an implicit part of the claimed intercept clause. Addressing similar arguments by Patent Owner, a Board panel made a similar determination in the ’237 FWD relied upon by Petitioner. ’237 FWD 11 (“the record show[s] that the additional functionality urged by Patent Owner should not be imported into the intercepting phrase”).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionOther
“broadest reasonable interpretation in light of the specification. 37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016) (upholding the use of the broadest reasonable interpretation standard under 37 C.F.R. § 42.100(b)). Under this standard, absent any special definitions, claim terms or phrases are given their ordinary and customary meaning, as would be understood by one of ordinary skill in the art, in the context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). For the purposes of this Decision, only the claim terms or clauses below need express construction. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (only those terms in controversy need to be construed and only to the extent necessary to resolve the controversy).” slip op. at 7
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“We find Dr. Tamassia’s testimony as to public accessibility of RFCs in general to be credible, especially given the independent support of RFC 2026 (Ex. 1036), the contents of which Patent Owner does not challenge.7 As part of routine discovery, see 37 C.F.R. § 42.51(b)(1)(ii), Patent Owner had the opportunity to cross-examine Dr. Tamassia, but does not point us to any discussion of this issue. Moreover, RFC 2401’s contents are consistent with the publication process described by RFC 2026 and Dr. Tamassia, including the inclusion of a date “November 1998” on the top right corner of the first page of the document. Ex. 1008, 1. In addition, this document—a request for suggestions and improvements for an Internet standards protocol, 7 As addressed below, Patent Owner objects and moves to dismiss a number of Exhibits based on hearsay and relevancy. See Paper 20 (Motion to Exclude). having no indication of being a mere draft or internal paper—is precisely the type of document whose very purpose is public disclosure, including on the Internet. Both of the magazine articles, Exhibits 1064 and 1065, further corroborate the indicia of availability on the face of RFC 2401, although they are not necessary to our finding of public accessibility. We do not rely on the testimony of Sandy Ginoza, Exhibits 1060 and 1063, which Patent Owner seeks to exclude as discussed further below.” slip op. at 12
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Patent Owner does not articulate a persuasive reason for giving Dr. Tamassia’s declaration, as a whole, little or no weight in our analysis. We agree with Petitioner that experts are not required to opine on every relevant factual and legal issue in order to be accorded substantial weight. The cases upon which Patent Owner relies do not show otherwise. For example, Patent Owner cites Schumer v. Laboratory Computer Systems, Inc., 308 F.3d 1304, 1315 (Fed. Cir. 2002), for the proposition that “[expert] testimony . . . ‘must identify each claim element, state the witnesses’ interpretation of the claim element, and explain in detail how each claim element is disclosed in the prior art reference.’” PO Resp. 52–53. Patent Owner’s quotation, however, mischaracterizes Schumer by omitting introductory words necessary to the meaning of the quoted sentence. In its entirety, the quoted portion of Schumer states the following: Typically, testimony concerning anticipation must be testimony from one skilled in the art and must identify each claim element, state the witnesses’ interpretation of the claim element, and explain in detail how each claim element is disclosed in the prior art reference. The testimony is insufficient if it is merely conclusory. Schumer, 308 F.3d at 1315–16. The Federal Circuit then adds that it is not the task of the courts to “attempt to interpret confusing or general testimony to determine whether a case of invalidity has been made out” and “if the testimony relates to prior invention and is from an interested party, as here, it must be corroborated.” Id. at 1316. So, instead of laying out a specific, required format for the content of all testimony regarding invalidity, as asserted by Patent Owner, this portion of Schumer confirms the unremarkable proposition that conclusory, overly general, confusing, and self-interested testimony should not be relied upon. Id.; see also Koito Mfg. Co., Ltd. v. Turn-Key-Tech, LLC, 381 F.3d 1142, 1152 (Fed. Cir. 2004) (“General and conclusory testimony, such as that provided by Dr. Kazmer in this case, does not suffice as substantial evidence of invalidity.”). Patent Owner does not show that the whole of Dr. Tamassia’s testimony suffers from any of these failings. Under 35 U.S.C. § 316(e), the preponderance of the evidence standard governs in determining whether Petitioner establishes unpatentability. We exercise discretion to determine the appropriate weight to accord the evidence presented, including expert opinions, based on the underlying facts supporting the opinion. We accord relevant portions of Dr. Tamassia’s testimony the appropriate weight based on that particular testimony and supporting evidence.” slip op. at 14
Patent outcomesUS 8,504,696 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 8,504,696 - Black Swamp IP, LLC v. Virnetx Inc.All claims unpatentablePTAB · Jun 12, 2017 · IPR2016-00693 · APJ Stephen C Siu · IPR · Final written decision
Claims 1, 2, 5, 6, 15, 16, 27, 33, 36, 37, 39, 40, 51, 57, and 60 are unpatentable as anticipated by Kiuchi under § 102.
RulingsFinal written decision- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“configured to “comprise an indication that the domain name service system supports establishing a secure communication link.” Patent Owner argues that “it is improper to equate establishing a secure communication link with indicating whether the domain name service system supports establishing a secure communication link” because claim 1 “separately recit[es] ‘establishing a secure communication link,’ . . . and ‘an indication that the domain name service system supports establishing a secure communication link.’” PO Resp. 22, 30 (citing Ex. 2015 ¶ 34, 46). Patent Owner does not explain sufficiently how a system that establishes a secure link somehow does not “indicate” that it supports doing so if the system establishes the secure link. One of skill in the art would have understood a system that establishes a secure link would support doing so at least as a matter of common sense. If the system did not support establishing a secure link, one of skill in the art would have expected such a system not to actually establish a secure link (the system not supporting such an action). This is contrary to Kiuchi’s system, for example, in which a secure link is established (thereby “indicating” that it supports doing so). For example, the “domain name service system” is recited in claim 1 as “establishing a secure communication link,” and comprising “an indication that the . . . system” may support the recited function of “establishing a secure communication link.” We do not observe, nor does Patent Owner point out in a meaningful way, any conflicts between a recited system comprising an “indication” that the system supports a recited function by performing the function that it supports and a recitation that the system is designed to perform that function.” slip op. at 6
- Strike new argumentNew argument consideredDecided for petitioner
“(“New Issue #1” and “New Issue #2”) in Petitioner’s Reply Brief. PO Identification 1–5. After careful consideration of Patent Owner’s arguments and for reasons set forth below, we determine that Patent Owner’s arguments regarding alleged New Issue #1 are moot because we do not rely upon Petitioner’s arguments regarding that issue in this opinion. We also determine that alleged New Issue #2 was responsive to arguments raised by Patent Owner.” slip op. at 14
Patent outcomesUS 7,418,504 unpatentable§ 102 anticipationPatents in suitUS 7,418,504 - Black Swamp IP, LLC v. Virnetx Inc.All claims unpatentablePTAB · Jun 12, 2017 · IPR2016-00957 · APJ Stephen C Siu · IPR · Final written decision
Claims 1, 2, 5, 6, 15, 16, 23, 27, 36, 37, 39, 40, 47, 51, and 60 are unpatentable as anticipated by Kiuchi under § 102.
RulingsFinal written decision- Strike new argumentNew argument consideredDecided for petitioner
“Given that Patent Owner raises this issue (that the claim terms “indicating” and “establishing” are separate and distinct) for the first time in Patent Owner’s Response, even assuming that Patent Owner is correct that Petitioner argues in the Reply Brief “that ‘the ‘indicate’/’indicating’ claim elements and the alleged ‘establishing’ claim elements are not separate claim elements’” (PO Identification 4 (citing Pet. Reply 14, 17)), such an argument by Petitioner would merely be responsive to Patent Owner’s arguments presented in Patent Owner’s Response and, therefore, would not “go beyond properly responding to VirnetX’s Patent Owner Response,” as Patent Owner alleges. PO Identification 1.” slip op. at 17
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“communication link.” Patent Owner argues that “it is improper to equate establishing a secure communication link with indicating whether the domain name service system supports establishing a secure communication link” because claim 1 “separately recit[es] ‘establishing a secure communication link,’ . . . and ‘an indication that the domain name service system supports establishing a secure communication link.’” PO Resp. 22, 30 (citing Ex. 2015 ¶¶ 34, 46). Patent Owner does not explain sufficiently how a system that establishes a secure link somehow does not “indicate” that it supports doing so if the system establishes the secure link. One of skill in the art would have understood a system that establishes a secure link would support doing so at least as a matter of common sense. If the system did not support establishing a secure link, one of skill in the art would have expected such a system not to actually establish a secure link (the system not supporting such an action). This is contrary to Kiuchi’s system, for example, in which a secure link is established (thereby “indicating” that it supports doing so).” slip op. at 6
- BurdenDecided for petitioner
“communication link.” Patent Owner argues that “it is improper to equate establishing a secure communication link with indicating whether the domain name service system supports establishing a secure communication link” because claim 1 “separately recit[es] ‘establishing a secure communication link,’ . . . and ‘an indication that the domain name service system supports establishing a secure communication link.’” PO Resp. 22, 30 (citing Ex. 2015 ¶¶ 34, 46). Patent Owner does not explain sufficiently how a system that establishes a secure link somehow does not “indicate” that it supports doing so if the system establishes the secure link. One of skill in the art would have understood a system that establishes a secure link would support doing so at least as a matter of common sense. If the system did not support establishing a secure link, one of skill in the art would have expected such a system not to actually establish a secure link (the system not supporting such an action). This is contrary to Kiuchi’s system, for example, in which a secure link is established (thereby “indicating” that it supports doing so).” slip op. at 6
Patent outcomesUS 7,921,211 unpatentable§ 102 anticipationPatents in suitUS 7,921,211
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.