• Guest-Tek Interactive Entertainment Ltd. v. Nomadix, Inc.Rehearing denied
  PTAB · Aug 22, 2018 · IPR2018-00392 · APJ Stephen C Siu · IPR · Rehearing

  The Board denied rehearing of its denial of institution on the obviousness ground over Slemmer and Vu, finding no abuse of discretion.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus., Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted). A 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.” 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

    “The Director may not authorize an inter partes review to be instituted unless the Director determines that the information presented in 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. 35 U.S.C. § 314(a). Notably, we must base our determination of a “reasonable likelihood” that Petitioner would “prevail” on “the information presented in the petition,” specifically. In the present case, Petitioner has not provided a basis, legal or otherwise, in support of its position that we must determine a “reasonable likelihood” based on information presented in some other petition, much less based on some other evidence of record in another proceeding. For example, in IPR2016-00077, the panel based its decision on a “Declaration by Mr. Keith Olsen.” That evidence is not of record in this proceeding.” slip op. at 3

  • BurdenDecided for patent owner

    “35 U.S.C. § 314(a). Notably, we must base our determination of a “reasonable likelihood” that Petitioner would “prevail” on “the information presented in the petition,” specifically. In the present case, Petitioner has not provided a basis, legal or otherwise, in support of its position that we must determine a “reasonable likelihood” based on information presented in some other petition, much less based on some other evidence of record in another proceeding. For example, in IPR2016-00077, the panel based its decision on a “Declaration by Mr. Keith Olsen.” That evidence is not of record in this proceeding.” slip op. at 3

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached

    “supporting Petitioner’s position that it would have been obvious to one of ordinary skill in the art to have combined the cited references. Req. Reh’g. 8–10. In particular, Petitioner reiterates previous arguments presented in the Petition such as “Vu is one of the first prior art references to teach the handshake” but that “other prior art references also teach it.” Req. Reh’g 8. These arguments were previously addressed. Decision 6–7. Although Petitioner may disagree with our resolution of the arguments that Petitioner presented in its Petition, such arguments were considered fully in our Decision.” slip op. at 4

  § 103 obviousness
  Patents in suitUS 8,725,899
• Guest-Tek Interactive Entertainment Ltd. v. Nomadix, Inc.Rehearing denied
  PTAB · Aug 22, 2018 · IPR2018-00376 · APJ Stephen C Siu · IPR · Rehearing

  The Board denied rehearing and upheld denial of institution on the Slemmer and Vu obviousness ground because the petition did not show a reasonable likelihood of prevailing.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “When rehearing a decision on a petition, the Board reviews the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus., Inc. v. Celanese Polymer Specialties Co.,, 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted). A 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.” 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

    “The Director may not authorize an inter partes review to be instituted unless the Director determines that the information presented in 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. 35 U.S.C. § 314(a). Notably, we must base our determination of a “reasonable likelihood” that Petitioner would “prevail” on “the information presented in the petition,” specifically. In the present case, Petitioner has not provided a basis, legal or otherwise, in support of its position that we must determine a “reasonable likelihood” based on information presented in some other petition, much less based on some other evidence of record in another proceeding. For example, in IPR2016-00077, the panel based its decision on a “Declaration by Mr. Keith Olsen.” That evidence is not of record in this proceeding.” slip op. at 3

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached

    “supporting Petitioner’s position that it would have been obvious to one of ordinary skill in the art to have combined the cited references. Req. Reh’g. 8–10. In particular, Petitioner reiterates previous arguments presented in the Petition such as “Vu is one of the first prior art references to teach the handshake” but that “other prior art references also teach it.” Req. Reh’g 9. These arguments were previously addressed. Decision 7–8. Although Petitioner may disagree with our resolution of the arguments that Petitioner presented in its Petition, such arguments were considered fully in our Decision.” slip op. at 4

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

    “construction for the term ‘TCP connection hand shake completion data,’ which resulted in an incorrect determination.” Req. Reh’g. 5. In particular, Petitioner now proposes a broadest reasonable construction of the term “TCP connection hand shake completion data” to mean “two devices initiating a communication session by the first device sending information to a second device, and the second device then responding to the first device.” Req. Reh’g. 7. Based on this newly proposed construction of the term “TCP connection hand shake completion data,” Petitioner argues that Vu discloses this feature. Req. Reh’g. 6–8. Under 37 C.F.R. § 42.71(d), Petitioner must “identify all matters [Petitioner] believes the Board misapprehended or overlooked.” Petitioner did not present this proposed construction in the Petition. See generally Req. Reh’g.; see generally Pet. We could not have “misapprehended or overlooked” what was not presented.” slip op. at 4

  Claim construction§ 103 obviousness
  Patents in suitUS 8,266,266
• Intel Corporation v. Alacritech, Inc.Rehearing granted
  PTAB · Jan 25, 2018 · IPR2017-01395 · APJ Daniel N Fishman · IPR · Rehearing

  The Board partly granted Intel’s rehearing request to recognize the Stansbury Declaration as a compliant sworn affidavit, but otherwise denied rehearing and left institution denied.

  RulingsRehearing decision

  • RehearingRehearing, grantedRehearing, deniedGranted in part

    “When considering a request for rehearing, we review the Decision for an abuse of discretion. 37 C.F.R. § 42.71(c). The party requesting rehearing bears the burden of showing that the Decision should be modified, and “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked.” 37 C.F.R. § 42.71(d). A request for rehearing is not an opportunity to present new arguments. See id. 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 › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “the information presented in the petition . . . and any 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). In the Decision, the Board determined that the record before it was insufficient to show that Stevens21 is a prior art printed publication under 35 U.S.C. §§ 102, 311(b) with respect to the ’948 patent. Stevens2 is one of the references relied upon in the sole asserted ground of unpatentability in the Petition. Accordingly, the Board concluded that Petitioner did not slip op. at 2

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable

    “Stevens2 was published no later than April 7, 1995 and is prior art under 102(b).” Pet. 45 n.9 (citing Ex. 1063 in support thereof (the “Stansbury Declaration”)). The Petition, per se, provides no other evidence or argument to establish a threshold showing that Stevens2 is a printed publication— publicly accessible by an interested person of ordinary skill in the art before the critical date. slip op. at 3

  • Expert testimonyOther

    “attested that Stevens2 was ‘standard reference book on TCP/IP’ that was ‘widely cited and relied upon,’ ‘well known resources to a [person of ordinary skill in the art]’ (Petition at 15 (citing Ex.1003 at ¶¶21-88, including ¶¶27, 60, and FN3), 45 (citing Ex.1003 at ¶1212), FN9).” Req. 12. Initially we observe the Petition cites these paragraphs of Dr. Horst’s Declaration as part of the “Background Of Technology” discussion rather than as support for public accessibility of Stevens2. See Pet. 15–24. Furthermore, incorporating by reference such a substantial portion of Dr. Horst’s Declaration (paragraphs 21–88) is improper under our rules. See 37 C.F.R. § 42.6(a)(3). Regardless, even if we consider Dr. Horst’s description of well-known background material (including Stevens2) as support for public accessibility of Stevens2, his testimony does not indicate” slip op. at 5

  § 102 anticipation
  Patents in suitUS 8,805,948
• SK Hynix Inc. / SK Hynix America Inc. et al. v. Netlist, Inc.Rehearing denied
  PTAB · 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 obviousness
  Patents in suitUS 9,128,632
• Apple Inc. v. Virnetx Inc.All claims unpatentable
  PTAB · 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 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR
  Patents in suitUS 8,504,696
• Pny Technologies, Inc. v. Phison Electronics Corp.All claims unpatentable
  PTAB · Feb 4, 2015 · IPR2014-00150 · APJ Kevin F Turner · IPR · Final written decision

  Claims 1–21 are unpatentable: claims 1, 3–9, and 11–21 as obvious over Elbaz and Deng; claims 2 and 10 as obvious over Elbaz, Deng, and Admitted Art.

  RulingsFinal written decision

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

    “persuaded that construing “concave” as only “curving inwards from a housing” does not conform to the ordinary meaning of the term. We stated in the second Decision to Institute that a recess “cannot act as a prop, . . . [t]he portion that acts as a prop is the portion that extends inwardly from the housing,” and “that ‘concave’ need not require the formation of a recess.” 2nd Dec. 7. We are now persuaded that construing “concave” such that a convex protrusion that acts as a prop, without a concave portion, impermissibly “reads out” the concave aspect of “concave prop.” We also are persuaded that there is not sufficient evidence in the instant record that shows that Phison acted as its own lexicographer, redefining the term “concave prop.”” slip op. at 6

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

    “We have determined previously that Minneman does not disclose that the captivating indentations are curving or that it would have been inherent for them to have curvature based on their formation process. Paper 16, 3. The rationale for altering the stand-offs of Minneman to have curvature comes from the curved protrusions disclosed in Takahashi. 1st Dec. 13. We have acknowledged as well that protrusions in Takahashi do not disclose a recess as a part thereof. Id. Based on our construction of “concave prop,” we are not persuaded that one of ordinary skill in the art would have modified Minneman’s stand-offs to be curved and have recesses based on the disclosure of Takahashi.” slip op. at 11

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “Ex. 2008 ¶¶ 44–48. Although Mr. Visser argues that the “guiding means 515 could loosely receive the module, allowing some movement of the module 5 between the guiding means 515 and between the guiding means 16 515 and means for raising 516, yet still provide guidance to the module 5,” (Ex. 2008 ¶ 48), for example, we do not find this testimony persuasive. Although the Elbaz drawings and specification do not provide tolerances or dimensions, we are persuaded that one of ordinary skill in the art would have arrived at the conclusion that the module was received in the adaptor through the guiding means and the raising means and maintained securely such that vertical movement would not occur. Further, Mr. Visser acknowledges that the guiding means and the raising means act to properly position the module (Ex. 1008, 133:8–19), so that those aspects of the adaptor would need to at least touch and come in contact with the module. As such, we are not persuaded by Mr. Visser’s testimony that one of ordinary skill in the art would not have understood that the module in Elbaz would have been inserted and secured in position through the guiding means and the raising means.” slip op. at 16

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

    “Phison provides no evidence of the relative costs of PCBAs and chip cards, such that an increase in manufacturing costs has not been demonstrated. Although the use of a PCBA may require shielding and not provide the same attack resistance, such disadvantages may be offset by the lower relative cost of the PCBA. We also do not agree that Elbaz teaches away, as a reference must criticize, discredit, or otherwise discourage the solution claimed to constitute a teaching away. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). The preferences and objectives of Elbaz are not teachings that disparage or discourage the use of alternate electronic components.” slip op. at 19

  Patent outcomesUS 7,518,879 unpatentable
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 7,518,879
• Pny Technologies, Inc. v. Phison Electronics Corp.All claims unpatentable
  PTAB · Feb 4, 2015 · IPR2013-00472 · APJ Kevin F Turner · IPR · Final written decision

  Claims 1–21 are unpatentable under § 103: claims 1, 3–9, and 11–21 over Elbaz and Deng, and claims 2 and 10 over Elbaz, Deng, and Admitted Art.

  RulingsFinal written decision

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

    “persuaded that construing “concave” as only “curving inwards from a housing” does not conform to the ordinary meaning of the term. We stated in the second Decision to Institute that a recess “cannot act as a prop, . . . [t]he portion that acts as a prop is the portion that extends inwardly from the housing,” and “that ‘concave’ need not require the formation of a recess.” 2nd Dec. 7. We are now persuaded that construing “concave” such that a convex protrusion that acts as a prop, without a concave portion, impermissibly “reads out” the concave aspect of “concave prop.” We also are persuaded that there is not sufficient evidence in the instant record that shows that Phison acted as its own lexicographer, redefining the term “concave prop.” PNY argues that the ’879 Patent fails to describe the term “concave” as including a recess and that Phison should not be allowed “to impart the ‘recess’ limitation into its construction of concave.” Reply 2. We do not agree that including the recess aspect can only be proper if explicitly recited in the Specification. The plain, ordinary meaning of “concave,” in the context of the claim language, includes the meaning of having a recess, thus, one of ordinary skill in the art would have included that aspect in any” slip op. at 6

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

    “require the inclusion of shielding elements, and would increase manufacturing costs. Id. Phison also takes exception to our characterization that “Elbaz provides a preference for the use of an integrated circuit chip card [that] does not rise to the level of teaching away.” 2nd Dec. 15. We do not agree. Phison provides no evidence of the relative costs of PCBAs and chip cards, such that an increase in manufacturing costs has not been demonstrated. Although the use of a PCBA may require shielding and not provide the same attack resistance, such disadvantages may be offset by the lower relative cost of the PCBA. We also do not agree that Elbaz teaches away, as a reference must criticize, discredit, or otherwise discourage the solution claimed to constitute a teaching away. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). The preferences and objectives of Elbaz are not teachings that disparage or discourage the use of alternate electronic components.” slip op. at 19

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

    “We have determined previously that Minneman does not disclose that the captivating indentations are curving or that it would have been inherent for them to have curvature based on their formation process. Paper 16, 3. The rationale for altering the stand-offs of Minneman to have curvature comes from the curved protrusions disclosed in Takahashi. 1st Dec. 13. We have acknowledged as well that protrusions in Takahashi do not disclose a recess as a part thereof. Id. Based on our construction of “concave prop,” we are not persuaded that one of ordinary skill in the art would have modified Minneman’s stand-offs to be curved and have recesses based on the disclosure of Takahashi.” slip op. at 11

  • Expert testimonyPatent owner expert discountedDecided for petitioner

    “his deposition that the “props” of Minneman could be shaped so that they are concave, and that this is clear evidence that one of ordinary skill in the art would have viewed shaping the structures of Minneman so that they are concave as an obvious design choice. Reply 8; Ex. 1008, 90:11–16, 98:23– 99:1. Mr. Visser’s testimony is not persuasive, however, because he merely acknowledges that Minneman’s stand-offs could be formed by forming a recess in the housing, and that they could be curved in shape. This does not address why the combination would have props which are concave with a 11 recess when Takahashi’s elements are solid and it is not clear that Minneman’s stand-offs have a recess. We find neither statement by Mr. Visser to be persuasive.” slip op. at 11

  Patent outcomesUS 7,518,879 unpatentable
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 7,518,879
• Cardiocom, LLC v. Robert Bosch Healthcare Systems, Inc.All claims unpatentable
  PTAB · Jan 15, 2015 · IPR2013-00449 · APJ Justin T Arbes · IPR · Final written decision

  Claims 1–5 are unpatentable under § 103: claim 1 over Crawford and Tallman; claims 2–5 over Crawford, Tallman, and Goodman.

  RulingsFinal written decision

  • Skill levelSkill level board ownOther

    “ordinary skill in the art at the time of the ’420 patent (October 16, 1996, when the parent application of the ’420 patent was filed), and neither party contends that the minor differences between those definitions impact the obviousness analysis. Petitioner’s declarant, Robert T. Stone, Ph.D., testifies that a person of ordinary skill would have had (1) “a bachelor’s degree in Electrical Engineering or Computer Science, or its equivalent, and at least 2 years of experience with the design and programming of patient monitoring systems,” and (2) “at least 1 year of experience with the design or programming of networked systems.” Ex. 1008 ¶ 22; see Pet. 6; Ex. 1022 ¶¶ 19–21. Patent Owner’s declarant, Dr. David, agrees with the first portion of Dr. Stone’s definition, but disagrees as to the second portion, testifying that a person of ordinary skill would not have had experience with the design or programming of networked systems. Ex. 2010 ¶ 24. Based on our review of the ’420 patent, the types of problems and solutions described in the ’420 patent and cited prior art, and the testimony of the parties’ declarants, we conclude that a person of ordinary skill in the art would have had a bachelor’s degree in electrical engineering or computer science (or its equivalent), and at least two years of experience with the design and programming of patient monitoring systems. See, e.g., Ex. 1001, col. 1, l. 23–col. 2, l. 67 (describing prior art medical monitoring systems that collected data from remote monitoring devices, and stating that the ’420 patent describes “computer systems for managing healthcare”); Ex. 1008 ¶¶ 1–5 (background of Dr. Stone); Ex. 2010 ¶¶ 1–9 (background of Dr. David). We do not include a requirement of one year of experience with the design or programming of networked systems. Although the challenged claims recite “transmitting a communication” to a patient via “electronic mail message” or “telephone message,” the Specification describes such communications only at a high level of generality. See, e.g., Ex. 1001, col. 4, ll. 50–52 (“Clinic server 12 is coupled to a modem M1 for connecting server 12 to a communication network 34, preferably a public telephone network or similar data transmission network.”); col. 8, ll. 53–55 (“mail server application 16 transmits each message 78 through network 34 to the corresponding patient”). A person of ordinary skill in the art would have had at least two years of experience with the design and programming of patient monitoring systems, and, therefore, would have had at least some familiarity with the use of networked systems (e.g., to communicate with monitored patients), but may not have had one year of specific experience designing or programming the underlying networked systems that enable electronic mail or telephone message communication with patients.” slip op. at 13

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner

    “2. “Data Point” The parties do not propose any specific interpretations for the term “data point” in claim 1. In attempting to distinguish one of the prior art references at issue (Crawford), however, Patent Owner argues that each “data point” in claim 1 must be “separate” from its corresponding “icon,” and that the “data point distribution” in the recited chart must be “dynamic” (i.e., data points change location over time). PO Resp. 36–38. Petitioner disagrees with both assertions. Reply 9–11. We conclude that interpretation of “data point” is necessary to resolve the dispute.” slip op. at 9

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
  • Obviousness (§103) › Analogous artAnalogous artDecided for petitioner

    “analogous art to the ’420 patent. “A reference qualifies as prior art for an obviousness determination under § 103 only when it is analogous to the claimed invention.” In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011). “Two separate tests define the scope of analogous prior art: (1) whether the art is from the same field of endeavor, regardless of the problem addressed and, (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved.” In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). “A reference is reasonably pertinent if . . . it is one which, because of the matter with which it deals, logically would have commended itself to an inventor’s attention in considering his problem.” Innovention Toys, LLC v. MGA Entm’t, Inc., 637 F.3d 1314, 1321 (Fed. Cir. 2011) (citation and internal quotation marks omitted).” slip op. at 18

  Patent outcomesUS 7,840,420 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,840,420

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