• EMC Corporation / EMC International US. Holdings, Inc. et al. v. Clouding Corp.All claims unpatentable
  PTAB · Oct 17, 2017 · IPR2014-01309 · APJ Rama G Elluru · IPR · Remand

  Claims 6, 8, and 14 are unpatentable because Barnett alone, or Barnett combined with Allen ’664, teaches or suggests saving a state of the computer system.

  RulingsRemand decision

  • RemandOther

    “On May 1, 2017, the Federal Circuit issued a decision, vacating and remanding our Final Decision. EMC, 686 F. Appx. 858. The Federal Circuit determined we erred, and in particular determined that Petitioner properly argued, and Patent Owner did not dispute, that the combination of Barnett and Allen ’664 teaches the condition “when a likely solution [to a problem in the computer system] cannot be determined.” Id. at 860–62. 1 U.S. Patent 5,664,093 (Ex. 1005). 2 U.S. Patent 5,581,664 (Ex. 1006). The Federal Circuit further determined that Patent Owner admitted that there would have been motivation to combine Barnett and Allen ’664. Id. at 863. Of relevance to this decision, the Federal Circuit determined that Patent Owner’s only argument to the Board in support of nonobviousness was that Petitioner’s proposed combination of Barnett and Allen ’664 would not yield a solution that involves “saving a state of a computer system,” as the second half of claim 6, step 5 requires. Id. Because there is no claim of secondary considerations, the Federal Circuit remanded for us to answer only one question: “whether Barnett and Allen, considered in combination, would [have] suggest[ed] to a person of ordinary skill in the art ‘saving a state of the computer system.’” Id. The mandate issued on June 7, 2017.” slip op. at 2

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner

    “The Federal Circuit further determined that Patent Owner admitted that there would have been motivation to combine Barnett and Allen ’664. Id. at 863. Of relevance to this decision, the Federal Circuit determined that Patent Owner’s only argument to the Board in support of nonobviousness was that Petitioner’s proposed combination of Barnett and Allen ’664 would not yield a solution that involves “saving a state of a computer system,” as the second half of claim 6, step 5 requires. Id. Because there is no claim of secondary considerations, the Federal Circuit remanded for us to answer only one question: “whether Barnett and Allen, considered in combination, would [have] suggest[ed] to a person of ordinary skill in the art ‘saving a state of the computer system.’” Id. The mandate issued on June 7, 2017.” slip op. at 3

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

    “determine that Petitioner has shown by a preponderance of the evidence that the combination of Allen ’664 teaches and Barnett teaches the limitation at issue. Patent Owner’s argument is not persuasive because it is based improperly on what Allen ’664 teaches individually, and not on the teachings of the combined references. As the Federal Circuit has explained, “[t]he test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference . . . . Rather, the test is what the combined teachings of those references would have suggested to those of ordinary skill in the art.” In re Keller, 642 F.2d 413, 425 (CCPA 1981). In the combined system of Barnett and Allen ’664 proposed by Petitioner, a case template would be created, “when there is a fault in the computer system, to search for a case whose symptoms (i.e., the state of the computer system) match the fault.” Pet. Reply 12 (citing Ex.1024 ¶¶ 22–23, 25; Ex. 1006, 8:31–40). As Petitioner reasons, Allen ’664 teaches “saving of the case template of a problem,” and thus, the case template would comprise facts about the state of the faulty computer system. Id. at 12–13 (citation omitted) (emphasis added); see id. at 13 (Petitioner argues that a skilled artisan would understand that “the case retrieval step in the standard case-based reasoning cycle entails comparing a digital model of the presenting situation with the digital model of each of a collection of cases, and determining if there is a match.”). Petitioner avers, “[t]o match a problem to the cases in the case base [in the combined Barnett and Allen ’664 system], the case template may be constructed for the problem with attribute-value pairs which correspond to notable parameters of the problem.” Pet. Reply 13 (citing Ex. 1006, 5:2–6). Allen ’664 discloses that “[e]ach case 105 may comprise a set of attributes 301, each of which has a value 302. Attributes 301 and values 302 are typically manipulated as an attribute-value pair 303.” Ex. 1006, 4:32–36. Dr. Sacerdoti states that a skilled artisan “would understand that the attributes whose values describe a case template are the same attributes that describe a case that is stored in the case database.” Ex. 1024 ¶ 27. Allen ’664 further discloses that “[t]o match a problem 311 to the cases 105 in the case base 104, a case template 312 may be constructed for the problem 311 with attribute-value pairs 303[,] which correspond to notable parameters of the problem 311.” Ex. 1006, 5:2–6. Thus, we agree with Petitioner that when applying the teachings of Allen ’664 to Barnett, which teaches a fault management for any computer system, the case template includes the “information about the state of the faulty computer system.” See id. at 12; Ex. 1024 ¶¶ 22–26. Furthermore, Allen ’664 teaches saving the “case template” of a problem, as a “new case,” for which it cannot find a solution. Specifically, Allen ’664 teaches that: [T]he inference engine 111 may determine that there is no case 105 which is a good match for the case template 312. The inference engine 111 may create a new case 105 which partly or fully copies the case template 312 and may ask the user 119 (by means of the user interface 118) what the prescribed action 309 for the case 105 should be. The inference engine 111 may add the new case 105 to the case base 104 and proceed to another problem 311 with an augmented case base 104. Ex. 1006, 8:22–30. Thus, we further agree that in the combined Barnett and Allen ’664 system, when Allen ’664’s case template is saved as a “new case,” the “state of the computer system” would also be saved. See Pet. Reply 13–14. Accordingly, we further find that the combination of Barnett and Allen ’664 teaches or suggests “saving a state of the computer system.”” slip op. at 11

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “Ex. 1005, 6:66–7:6. According to Dr. Sacerdoti, “it would be clear to a person of ordinary skill in the art that in order for the programmer or user to understand how and when [] additional rules should be added, a state of the computer system should be saved when the AI engine fails to determine a likely solution, so that the programmer or user can later determine the context in which the failure took place.” Ex. 1007 ¶ 75. Dr. Sacerdoti further states that “[because] actions such as this are implemented via rules in a rule-based system, it would be natural and obvious to a skilled artisan to add a rule to the rule base that states that when a likely solution cannot be found, such a state of the computer system should be saved.” Id. With regard to saving a state of the computer system, Dr. Sacerdoti, also opines as follows: It is known in the art that an effective means of enabling the debugging and improvement of virtually any software program is to save the state of the computer system at the point when a failure occurs. If an embodiment of the Barnett patent were not to have such a capability, it would be obvious to a skilled artisan to include this capability when implementing the invention disclosed in Barnett. Id. ¶ 74. We are persuaded by Dr. Sacerdoti’s testimony and determine that Petitioner has demonstrated that it was known that an effective means of enabling the debugging and improvement of almost any software program was to save the state of the computer system when a fault (i.e., failure) occurred, and a skilled artisan would have applied this teaching to Barnett’s fault management system. Accordingly, we find that Barnett alone teaches or suggests “saving a state of the computer system.”” slip op. at 9

  Patent outcomesUS 5,944,839 unpatentable
  § 103 obviousness
  Patents in suitUS 5,944,839
• Autodesk, Inc. v. Uniloc USA, Inc. And Uniloc Luxembourg, S.A.All claims unpatentable
  PTAB · Sep 11, 2017 · CBM2016-00043 · APJ Christopher M Kaiser · CBM · Final written decision

  Claims 1, 2, 4–7, and 12–19 are unpatentable under § 101; claims 3, 8–11, and 20 are subject to adverse judgment after disclaimer.

  RulingsFinal written decision

  • Adverse judgmentAdverse judgmentGranted

    “B. Statutory Disclaimer During the pendency of this proceeding, Patent Owner filed a disclaimer pursuant to 35 U.S.C. § 253(a) and 37 C.F.R. § 1.321(a). Ex. 2014. According to this disclaimer, Patent Owner disclaims claims 3, 8–11, and 20 of the ’820 patent. Id.; see also Resp. 1 (“Contemporaneously with the filing of this Response, Patent Owner is disclaiming claims 3, 8, 9, 10, 11, and 20 of the ’820 Patent.”). Our rules provide for entry of adverse judgment against a Patent Owner who disclaims “a claim such that the party has no remaining claim in the trial.” 37 C.F.R. § 42.73(b)(2). Although Patent Owner does not disclaim all the challenged claims, and although Patent Owner therefore has some claims remaining in this trial, we construe the disclaimer of claims 3, 8–11, and 20 as a request for the entry of adverse judgment solely with respect to those claims. We grant the request and enter adverse judgment with respect to claims 3, 8–11, and 20.” slip op. at 11

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed patent owner constructionDecided for patent owner

    “1. Add-On Computer Software Code Both parties propose construing “add-on computer software code,” a term that appears in every challenged claim. Ex. 1001, 78:43–82:36. Petitioner argues that this term should be interpreted as a “set of computer code that cannot be run independently from a parent program.” Pet. 22. Patent Owner argues that the term should be interpreted as “set of computer code that is designed to run within a parent computer software application or code, particularly architectural CAD software (or another architectural, civil, industrial, or other software design tool), as an internal component.” Resp. 42–43. We agree with Patent Owner. Patent Owner’s construction is taken directly from the written description of the ’820 patent, which provides a reasonably clear, deliberate, and precise definition of the term. See Paulsen, 30 F.3d at 1480; Ex. 1001, 61:42–51 (“The plug-in (add-on) computer software code is . . . .”). To the extent that Petitioner’s proposed construction seeks to limit add-on software code further by requiring that the software code be incapable of running independently from a parent program, as opposed merely to being designed to run within the parent program as an internal component, this further limitation is inconsistent with the lexicography undertaken by the patentee of the ’820 patent. Accordingly, we construe “add-on computer software code” as a “set of computer code that is designed to run within a parent computer software application or code, particularly architectural CAD software (or another architectural, civil, industrial, or other software design tool), as an internal component.”” slip op. at 6

  • Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionUnpatentable

    “As discussed above, the ’820 patent describes solving problems with the generation of cost estimates of construction projects, including that the process takes significant time and effort, that the estimates produced are difficult to revise, and that the estimates can be inaccurate, leading to cost overruns and difficulties obtaining construction loans. Ex. 1001, 1:15–62. The claims recite a computer readable medium or system for automating the process of generating a price schedule, which is used to develop the overall project cost estimate. Id. at 78:43–82:36. In so doing, the claims do not recite any “specific asserted improvement in computer capabilities,” such as the “self-referential table for a computer database” in Enfish, 822 F.3d at 1336. Instead, the claims of the ’820 patent “invoke[]” known aspects of computer technology, including “[a] non-transitory computer readable medium,” “a computer that includes a processor and a memory,” “an add-on computer software code,” “a software design tool,” and “a database,” “merely as a tool” for solving the problem of improving the known process of generating construction project cost estimates. Id.; Ex. 1001, 78:43–60. Accordingly, the claims of the ’820 patent are not like those considered in Enfish, where the claims were determined at the first step of the Alice framework not to be directed to abstract ideas because they were directed to “[a] specific asserted improvement in computer capabilities.” 822 F.3d at 1336. Instead, Petitioner has shown by a preponderance of the evidence that the challenged claims of the ’820 patent are focused “on a process that qualifies as an ‘abstract idea.’” Id. The ’820 patent makes clear that the heart of the claimed subject matter is generating prices for construction projects, a process that can be accomplished without automation technology. Ex. 1001, 1:15–62. The claims themselves recite “[a] non-transitory computer readable medium [that] causes [a] computer to generate a price schedule” and “[a] system for creating a pricing schedule.” Id. at 78:43–51, 82:4. As discussed above, the computer technology recited in the claims is used merely as a tool to automate the process of determining the price of a construction project. Determining a price is an abstract idea. See Versata Dev. Grp., 793 F.3d at 1333–34 (Fed. Cir. 2015). Thus, on the current record, Petitioner has made a sufficient showing that the claims of the ’820 patent are directed to an abstract idea under the first step of the Alice analysis.” slip op. at 20

  • Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptStep2 no inventive conceptUnpatentable

    “application of an abstract idea. Mayo, 566 U.S. at 78. Petitioner argues that the challenged claims have no such elements, because “the challenged claims add nothing more than well-understood, routine, conventional activity to the abstract idea of calculating a price.” Pet. 32–48. Patent Owner argues that the presence of the add-on computer software code limitations in the challenged claims transforms those claims into patent-eligible applications. Resp. 49–50. We are persuaded that Petitioner has shown by a preponderance of the evidence that the challenged claims of the ’820 patent do not add an inventive concept sufficient to ensure that the patent in practice amounts to significantly more than a patent on the abstract idea itself. Alice, 134 S. Ct. at 2355.” slip op. at 23

  Patent outcomesUS 8,515,820 unpatentable
  Claim construction§ 101 eligibilitycites Alice · Mayo · Enfish
  Patents in suitUS 8,515,820
• Mylan Pharmaceuticals Inc. / Wockhardt Bio AG et al. v. Astrazeneca ABNo claims unpatentable
  PTAB · Aug 18, 2017 · IPR2015-01340 · APJ Rama G Elluru · IPR · Final written decision

  Petitioners failed to prove claims 1, 2, 4, 6–22, 25–30, 32–37, and 39–42 unpatentable under the instituted §103 grounds, chiefly because the proposed modifications lacked a reasonable expectation of success.

  RulingsFinal written decision

  • Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner

    “C. Credibility of the Experts We give more weight to the testimony of Patent Owner’s expert, Dr. Weber, over that of Petitioners’ expert, Dr. Rotella, with respect to testimony that is in direct conflict. We favor Dr. Weber’s testimony because of her extensive experience in the design and development of DP 4 inhibitors for type-2 diabetes treatment. See Ex. 2056 ¶¶ 9–12; Ex. 2210, 1– 2. Moreover, Dr. Weber entered the DP 4 field at the relevant time, i.e., the time of invention, around 2000. Ex. 1073, 108:16–21; Tr. 35:16–22. We find that her testimony has been consistent, not just throughout this proceeding, but also with evidence predating this proceeding. See, e.g., Ex. 2056 ¶¶ 88, 115–118; 154–162; Ex. 1073, 51:2–54:14, 113:6–16, 119:19– 121:9; Ex. 2161, 558.” slip op. at 9

  • Skill levelSkill level board ownOther

    “The parties’ formulations as to the level of ordinary skill in the art are similar, and neither side identifies with specificity an error in the opposing side’s formulation. See PO Resp. 21; Pet. Reply 10. On the record presented, we hold that the cited prior art is representative of the level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the level of ordinary skill in the art may be evidenced by the cited references themselves). Specifically, the references are consistent with the parties’ formulations and demonstrate the level of skill in the art. Our determinations regarding the patentability of the challenged claims would remain the same under either side’s proposed formulation.” slip op. at 8

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

    “On the full record before us, we determine that Petitioners have not demonstrated by a preponderance of the evidence that a skilled artisan would have chosen Ashworth I’s compound 25 as a “lead compound.” Although Ashworth I indicates that compounds 24–29 were non-toxic in T cell assays up to 72 hours, and further indicates compound 25 was one among four compounds that were comparable to boroprolines, no further data is provided to guide the skilled artisan to select compound 25 among the other 2-cyanopyrrolidides as a lead compound for further modification to develop a DP 4 inhibitor. Ex. 1007, 1165–66. More importantly, the data reported in Ashworth I was based on in vitro data at room temperature, not in vivo data. PO Resp. 25 (citing Ex. 2174, 82:23–83:11). Indeed, Dr. Rotella states, “those studies were carried out at room temperature, which is roughly 20 degrees [Celsius]. I’ll point out that body temperature is higher than that, and that temperature has a direct effect on half-life. As you elevate temperature, you can expect half-life to decrease.” Ex. 2174, 82:23-83:11. Dr. Rotella further admits that he is not aware of any disclosure describing testing of Ashworth compounds in humans. Ex. 2174, 60:23-61:9. In addition, Ashworth I acknowledged that these compounds exhibited an intramolecular cyclization problem and that further work on optimization of the pyrrolidine ring was necessary and would be reported shortly. Ex. 1007, 1163–65. Others in the prior art also continued to seek solutions to the problem of intramolecular cyclization, such as those posed by Ashworth I compounds. See PO Resp. 27–28.” slip op. at 16

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

    “(4) No Reasonable Expectation of Increasing Stability We are not persuaded that the skilled artisan would have had a reasonable expectation of success in achieving increased stability of Ashworth I’s compound 25 based on Hanessian I’s teachings concerning the cyclopropanation of proline. See Pet. 29. There was no disclosure in the prior art of cylopropanating the pyrrolidine ring of compound 25, or any similar compound. Indeed, Dr. Rotella admitted “that there wasn’t anything in the literature prior to the invention of saxagliptin that actually suggested that cyclopropanation of an Ashworth-One type DPP4 inhibitor would improve its stability.” Ex. 2174, 142:3-9. In addition, there is not sufficient evidence as to how the modified cyano-moiety would have been understood to affect compound 25’s stability. Given the structural differences, we find there is insufficient evidence suggesting that the skilled artisan could have reasonably predicted how cyclopropanating compound 25’s P1 group (as opposed to the proline compound discussed in Hanessian I) would have affected the cyano moiety’s (as opposed to the substituent in Hanessian I) orientation in space. Furthermore, there is insufficient evidence as to whether that modified orientation would have sufficiently decreased intramolecular cyclization. Indeed, Dr. Rotella testified that: [I]n the process of that modification of orientation in space [when you fuse two rings together], you may observe effects on potency, you may observe effects on solution stability, you may observe other effects on other properties that one might measure in connection with a drug discovery project. Ex. 2174, 119:10–120:2. When asked, “[a]nd those effects might be either positive or negative; correct?” Dr. Rotella replied, “[t]hey might be, yes.” Ex. 2174, 120:3–5. Dr. Rotella also testified that at the time of the invention, the objective of adding a cyclopropyl substituent to the pyrrolidine ring of compound 25 would have been exploratory. He testified: Q. Well, what is the objective of putting the cyclopropane on the molecule, in your opinion? A. There are two possible objectives based on the data -- there are at least two possible objectives based on the data available surrounding compound 25. Q. And what are they? A. One would be to explore whether or not you could improve potency. A second would be whether or not you could improve solution stability. One might also explore how that -- those changes, either by themselves or in combination with two changes, might also improve or change -- sorry -- to improve solid-state stability. Furthermore, since nothing is known, at least at this point in time, about other properties associated with compound 25, you’d want to understand what those properties were and adjust them as need be. Generally speaking, those properties are things that we call, collectively, pharmaceutical properties. Ex. 2174, 115:11–116:13 (emphasis added). This testimony does not sufficiently support Petitioners’ contention that a skilled artisan would have reasonably expected cyclopropanating the pyrrolidine ring of compound 25 to increase its stability.” slip op. at 26

  Patent outcomesUS RE44,186 not shown unpatentable
  § 103 obviousnesscites KSR · Graham
• Zepp Labs, Inc. v. Blast Motion, Inc.No claims unpatentable
  PTAB · Aug 14, 2017 · IPR2016-00675 · APJ Rama G Elluru · IPR · Final written decision

  Claims 1, 7, 13, 14, 19–22, and 32 were not shown unpatentable because the petition did not establish the claimed remote database.

  RulingsFinal written decision

  • BurdenNot shown unpatentable

    “We determine that Petitioner’s evidence and argument are insufficient to demonstrate that Mahajan teaches a “remote database.” As an initial matter, Petitioner does not explain sufficiently how Mahajan’s teaching of storing information informs a skilled artisan that that storage is a “database,” as required by claim 1. See Pet. 27; Pet. Reply 14–15. Petitioner also does not adequately explain why a storage medium, such as a hard drive or a server, sufficiently equates with a “database.” Id. Indeed, in response to the question—“[s]o Mahajan’s disclosure of a remote server is not the same thing as disclosing a remote database, correct?”—Dr. Nesbitt testified, “[n]ot exclusively.” Ex. 2011, 123:8–12; see id. at 120:19–21. Dr. Nesbitt further testified that, [a] server would be more of a hardware device, where a database would be more of a software. It would be a place where the data is actually stored within a remote computer or remote server. So it’s the hardware versus what’s in the hardware is the distinction” slip op. at 13

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

    “Although we acknowledge that Mahajan discloses that its system can be used in conjunction with database systems generally, Petitioner does not explain sufficiently why a skilled artisan would have modified Mahajan to include a “remote database.” See Pet. 27; Pet. Reply 14–15; Ex. 1003 ¶ 165 (emphasis added). Similarly, Petitioner also does not explain sufficiently why a skilled artisan would have modified the disclosed remote “server” of Mahajan to include a “database.” See id.” slip op. at 14

  Patent outcomesUS 8,941,723 not shown unpatentable
  § 103 obviousnesscites KSR
  Patents in suitUS 8,941,723
• Zepp Labs, Inc. v. Blast Motion, Inc.Some claims unpatentable
  PTAB · Aug 14, 2017 · IPR2016-00676 · APJ Rama G Elluru · IPR · Final written decision

  Claims 1, 7–9, and 12–15 were held unpatentable as obvious; claims 5 and 6 were not shown unpatentable because the evidence did not establish the claimed database limitation.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for petitioner

    “to the ’855 patent is “a person with a Bachelor’s degree in mechanical or electrical engineering or a related field with two to three years of experience working with data acquisition systems.” Pet. 9 (citing Ex. 1003 ¶ 19). According to Petitioner, “[w]ith more education, such as additional graduate degrees and/or study, less experience is needed to attain the ordinary level of skill.” Id.” slip op. at 7

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

    “The Supreme Court has made clear that “[t]hroughout this Court’s engagement with the question of obviousness, our cases have set forth an expansive and flexible approach inconsistent with the way the Court of Appeals applied its TSM test here.” KSR, 550 U.S. at 415. In direct contrast, Patent Owner’s assertions of law, by use of the terms “unnecessary” and “unneeded,” harkens back to the rigid TSM test, which the Supreme Court held explicitly as being incorrect. The Supreme Court further opined as follows: Neither the enactment of § 103 nor the analysis in [Graham v. John Deere Co. of Kansas City, 383 U.S. 1 (1966)] disturbed this Court’s earlier instructions concerning the need for caution in granting a patent based on the combination of elements found in the prior art. For over a half century, the Court has held that a “patent for a combination which only unites old elements with no change in their respective functions . . . obviously withdraws what is already known into the field of its monopoly and diminishes the resources available to skillful men.” Great Atlantic & Pacific Tea Co. v. Supermarket Equipment Corp., 340 U.S. 147, 152, 71 S.Ct. 127, 95 L.Ed. 162 (1950). This is a principal reason for declining to allow patents for what is obvious. The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results. Id. at 415–416. Contrary to Patent Owner’s assertions of law, there is no use of terms similar to “unnecessary,” “unneeded,” or even “goals” in the obviousness analysis. Instead, the Supreme Court’s inquiry is straightforward: (1) if the elements are found in the prior art, and (2) if the combination results in “no change in respective function” and “does no more than yield predictable results,” i.e., a predictable reason to combine for a predictable advantage, then the resulting combination is “likely to be obvious.” Id.” slip op. at 14

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

    “Patent Owner asserts further that “Mahajan teaches such a person of skill in the art not to include a memory, as its real-time data transmission system is described as preferable to a memory-based system such as Lee’s.” PO Resp. 28 (emphasis omitted). We disagree. While Mahajan does disclose such a general preference in one embodiment, we find that it, at the same time, expressly acknowledges the possibility of the alternative. Ex. 1005 ¶ 42 (“The hardware device need not have an on-board memory for storing the orientation and position information.”). See, e.g., Merck & Co. v. Biocraft Labs, 874 F.2d 804, 807 (Fed. Cir. 1989) (non-preferred embodiments can be the basis for an obviousness analysis). Specifically, we find that the words “need not” actually conveys the following meaning in the context of the Mahajan: “may, but need not.” This understanding is further underscored by the fact that Mahajan expressly incorporates-by-reference Lee, and, in describing Lee, asserts the following: “A distinctive feature of this instrumented golf club is the use of a data storage memory device located within the golf club that eliminates the need for radio transmission hardware.” Ex. 1005 ¶ 6. Indeed, not only does Mahajan acknowledge that an alternative of adding memory was known, it even identifies an advantage for that alternative. The argument that such an advantage may be allegedly contrary to the goals of Mahajan is unpersuasive, for the reasons set forth above. Finally, insofar as Patent Owner is asserting that Mahajan teaches away from the proffered modification, we disagree for the same reasons. See Galderma Labs., L.P. v. Tolmar, Inc., 737 F.3d 731, 738 (Fed. Cir. 2013) (a reference that “merely expresses a general preference for an alternative invention but does not criticize, discredit, or otherwise discourage investigation into” the claimed invention does not teach away).” slip op. at 22

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

    “We determine that Petitioner’s evidence and argument is insufficient to demonstrate that Mahajan teaches the limitation of claim 5. As an initial matter, Petitioner does not explain sufficiently how Mahajan’s teaching of storing information informs a skilled artisan that that storage is a “database,” as required by claim 5. See Pet. 32–33; Pet. Reply 14–15. Petitioner does not adequately explain why a storage medium, such a hard drive or a server, sufficiently equates with a “database.” Indeed, in response to the question— “[s]o Mahajan's disclosure of a remote server is not the same thing as disclosing a remote database, correct?”—Dr. Nesbitt testified, “[n]ot exclusively.” Ex. 2011, 123:8–12; see id. at 120:19–21. Dr. Nesbitt further testified that, [a] server would be more of a hardware device, where a database would be more of a software. It would be a place where the data is actually stored within a remote computer or remote server. So it’s the hardware versus what’s in the hardware is the distinction between the two. Id. at 122:17–23; see Ex. 2001 ¶ 63 (Patent Owner’s expert opining that “[d]isclosure of sending data to remote server for storage, without more, is insufficient to convey to a person of ordinary skill in the art that the server contains a database.”). The ’855 patent also distinguishes between a “remote database” and a “remote server.” See Ex. 1001, 8:33–34 57 (“[t]he data uploaded to the Internet, i.e., a remote database or remote server or memory remote to the system”); id. at 26:48–51. At oral argument,” slip op. at 30

  Patent outcomesUS 8,905,855 mixed
  § 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,905,855
• Zepp Labs, Inc. v. Blast Motion, Inc.All claims unpatentable
  PTAB · Aug 14, 2017 · IPR2016-00677 · APJ Michael W Kim · IPR · Final written decision

  Claims 1, 2, 4, 7, and 8 are unpatentable: claims 1, 4, 7, and 8 as obvious over Mahajan, and claim 2 as obvious over Mahajan and Dugan.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for petitioner

    “Based on the above, we modify Petitioner’s proffered level of ordinary skill as follows: “a person with a Bachelor’s degree in mechanical or electrical engineering or a related field with two to three years of experience working with data acquisition systems, including motion data captured using markers and sensors.” We decline, however, to limit the level of ordinary skill to “designing wireless motion capture sensors,” as the ’928 Patent does not disclose being limited to “design” and “wireless” sensors. We note, however, that, in this case, the prior art itself reflects an appropriate skill level. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). For example, the prior art of record, such as Mahajan, has been shown to relate to the field of data acquisition systems, and, in particular, motion capture sensors.” slip op. at 8

  • Expert testimonyOther

    “basis for the proposed modification, nor identifies any benefit. PO Resp. 17–23. We disagree. The relevant portion of the Petition cites expressly to paragraphs 42 and 127 of Mahajan, and in quoting paragraph 127, Petitioner bolds the following: “‘[t]he apparatus can be used alone or in conjunction with other hardware . . . or software . . . and may be adapted for wired transmission of data, wireless transmission of data, or for storage of data on the apparatus.’” Pet. 17. The next sentence of the Petition then reads “[t]hus, Mahajan teaches that the on-board memory component for storage of data on the apparatus is an obvious design choice.” Pet. 17. This statement is supported by Dr. Nesbitt’s testimony, with which we agree, explaining that Mahajan provides the option to include on-board memory and leaves it to the designer to include it, considering that it was common to include memory in data capture systems to store the captured data. Ex. 1003 ¶ 115. We are unclear as to how this portion of the Petition can be read as asserting anything other than coupling memory for the purpose of data storage would have been, as Petitioner phrases it, an “obvious design choice” to one of ordinary skill at the time of the invention.” slip op. at 17

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

    “its broadest reasonable construction in light of the specification of the patent in which it appears. 37 C.F.R. § 42.100(b); see also Cuozzo Speed Techs., LLC v. Lee, 136 S.Ct. 2131, 2142 (2016) (affirming that USPTO has statutory authority to construe claims according to 37 C.F.R. § 42.100(b)). Under the broadest reasonable construction standard, claim terms are generally given their ordinary and customary meaning, as would have been 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). Any special definition for a claim term must be set forth in the specification with reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). We must be careful not to read a particular embodiment appearing in the written description into the claim if the claim language is broader than the embodiment. In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). For the purposes of this Decision, we determine that no claim term needs express interpretation. 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.”).” slip op. at 6

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

    “Accordingly, given our above findings that (1) Mahajan discloses a microcontroller and (2) coupling memory for the purpose of data storage was known to one of ordinary skill at the time of the invention, we have little trouble in concluding that it would have been obvious to modify microcontroller 50 of Mahajan by coupling memory thereto for the purpose, i.e., the predictable reason to combine of, of data storage. With no persuasive evidence of unpredictability or change in function of the microcontroller with memory combination, nothing more is required under KSR, nor under other Federal Circuit precedent. See Broadcom Corp. v. Emulex Corp., 732 F.3d 1325, 1335 (Fed. Cir. 2013) (quoting Power-One, Inc. v. Artesyn Techs., Inc., 599 F.3d 1343, 1351 (Fed. Cir. 2010)) (“a finding of obviousness at the time of invention requires a ‘plausible rational [sic] as to why the prior art references would have worked together’” (citation omitted)).” slip op. at 16

  Patent outcomesUS 8,944,928 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,944,928
• Neste Oil Oyj v. Reg Synthetic Fuels, LLCSome claims unpatentable
  PTAB · Jul 26, 2017 · IPR2013-00578 · APJ Christopher L Crumbley · IPR · Remand

  Claims 1, 3, 4, and 8 are unpatentable as anticipated by Craig; claims 2 and 5 are not proven unpatentable because Dindi is not prior art.

  RulingsRemand decision

  • RemandDecided for patent owner

    “To remove Dindi as a prior art reference, the record must establish either: (1) a conception and reduction to practice before the filing date of Dindi; or (2) a conception before the filing date of the Dindi patent combined with diligence and reduction to practice after that date. See Taurus IP, LLC v. DaimlerChrysler Corp., 726 F.3d 1306, 1323 (Fed. Cir. 2013). The Federal Circuit held that the record before us establishes, with sufficient corroboration, that Mr. Abhari conceived of the invention of claims 2 and 5 of the ’804 patent on April 29, 2008. REG Synthetic Fuels, 841 F.3d at 963. It is undisputed that Dindi was filed on June 13, 2008, and that Mr. Abhari filed on December 4, 2008 the application that issued as the ’804 patent. Dindi is not prior art—and, therefore, Neste’s ground of unpatentability fails—if either: (1) Mr. Abhari actually reduced to practice the invention of claims 2 and 5 between April 29 and June 13, 2008, or (2) Mr. Abhari exercised reasonably continuous diligence between June 13 and December 4, 2008, when the invention was constructively reduced to practice by filing of a patent application. Because, as set forth below, we find sufficient evidence of actual reduction to practice, we do not address Mr. Abhari’s alleged diligence.” slip op. at 5

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedNot shown unpatentableNot shown unpatentable

    “To remove Dindi as a prior art reference, the record must establish either: (1) a conception and reduction to practice before the filing date of Dindi; or (2) a conception before the filing date of the Dindi patent combined with diligence and reduction to practice after that date. See Taurus IP, LLC v. DaimlerChrysler Corp., 726 F.3d 1306, 1323 (Fed. Cir. 2013). The Federal Circuit held that the record before us establishes, with sufficient corroboration, that Mr. Abhari conceived of the invention of claims 2 and 5 of the ’804 patent on April 29, 2008. REG Synthetic Fuels, 841 F.3d at 963. It is undisputed that Dindi was filed on June 13, 2008, and that Mr. Abhari filed on December 4, 2008 the application that issued as the ’804 patent. Dindi is not prior art—and, therefore, Neste’s ground of unpatentability fails—if either: (1) Mr. Abhari actually reduced to practice the invention of claims 2 and 5 between April 29 and June 13, 2008, or (2) Mr. Abhari exercised reasonably continuous diligence between June 13 and December 4, 2008, when the invention was constructively reduced to practice by filing of a patent application. Because, as set forth below, we find sufficient evidence of actual reduction to practice, we do not address Mr. Abhari’s alleged diligence.” slip op. at 5

  • ExcludeNot reached

    “As noted above, the Federal Circuit vacated our decision on Neste’s Motion to Exclude as to Exhibits 2012, 2013, 2057, and 2062, for further consideration of the hearsay objections in light of the decision on appeal, “because [they] may be relevant for diligence and reduction to practice.” REG Synthetic Fuels, 841 F.3d at 965. Upon review, however, we have determined that we need not rely on any of the exhibits in question to reach our decision in REG’s favor. For this reason, Neste’s objections to the exhibits are moot, as we would have found against Neste on the merits regardless of the outcome of the Motion.” slip op. at 19

  Patent outcomesUS 8,231,804 mixed
  § 102 anticipation
  Patents in suitUS 8,231,804
• Black Swamp IP, LLC v. Virnetx Inc.Rehearing denied
  PTAB · 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

  None
  Patents in suitUS 7,921,211
• Black Swamp IP, LLC v. Virnetx Inc.Rehearing denied
  PTAB · 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

  None
  Patents in suitUS 7,418,504
• RPX Corporation v. Rothschild Connected Devices Innovations, LLCAll claims unpatentable
  PTAB · Jul 6, 2017 · IPR2016-00443 · APJ Scott C Moore · IPR · Final written decision

  Claims 1–8 are unpatentable under § 103: claims 1–7 over the Zimmerman-based combinations, and claims 1 and 8 over the Omnisphere- and Zimmerman-based grounds, respectively.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for petitioner

    “would have had an undergraduate degree in computer science, electrical engineering, or computer engineering, or an equivalent degree, and at least two years of experience with network control systems, or have an equivalent amount of relevant work or research experience. Pet. 10. In our Decision on Institution, we declined to adopt the specific formulation set forth by Petitioner, and instead treated the cited references as being representative of the level of ordinary skill in the art. Dec. on Inst. 12 n.5 (citing Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001)). In its Response, Patent Owner does not propose a specific formulation regarding the level of skill in the art, and does not object to treating the cited references as being representative of the level of ordinary skill in the art. Petitioner also does not object in its Reply to treating the cited references as being representative of the level of skill in the art. On this record, we decline to adopt a specific formulation regarding the level of ordinary skill in the art, and instead find that the cited references are representative of the level of ordinary skill in the art. See Okajima, 261 F.3d at 1355 (the level of ordinary skill in the art may be evidenced by the cited references themselves). However, our analysis of the issues below would have been the same had we adopted Petitioner’s proposed formulation.” slip op. at 8

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner

    “In general, preambles are not construed as claim limitations. Allen Eng’g Corp. v. Bartell Indus., Inc., 299 F.3d 1336, 1346 (Fed. Cir. 2002). “[W]here a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention, the preamble is not a claim limitation.” Rowe v. Dror, 112 F.3d 473, 478 (Fed. Cir. 1997). We find, on this record, that the body of claim 1 defines a structurally complete invention. In particular, the body of claim 1 defines a system that includes a remote server, and a predetermined product that includes a first communication module, wherein the remote server is configured to perform certain recited actions and to interact with the first communication module in the recited manner. Furthermore, the preamble of claim 1 recites “[a] system for customizing a product according to a user’s preferences.” That is, claim 1 recites a system with the intended purpose of customizing a product. We determine on this record that the preamble of claim 1 is a non-limiting statement of intended use.” slip op. at 10

  • Prior constructionPrior construction adoptedDecided for petitioner

    “Confirmation of Undisputed Claim Construction In our Decision on Institution, we expressly construed the claim term “predetermined product” by determining that this claim term “encompasses a type or class of product,” and rejecting “Patent Owner’s contention that this claim term is limited to a specific, unique product in customized form.” Dec. on Inst. 9. The parties do not dispute our prior construction of this claim term. Thus, on this record and to the extent necessary for our Final Written Decision, we see no reason to disturb our prior construction of “predetermined product,” and adopt the supporting reasoning from our Decision on Institution. See Dec. on Inst. 7–9. Accordingly, the claim term “predetermined product” encompasses a type or class of product, and is not limited to a specific, unique product in customized form. 3.” slip op. at 9

  • Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner

    “We determine that Patent Owner has not identified objective indicia of nonobviousness. For example, Patent Owner does not allege, much less persuasively show, that the cited mass customization literature demonstrates a long-felt but unresolved need that is satisfied by the claimed invention, or the failure of others to solve a problem addressed by the claimed invention. See PO Resp. 5–7. Patent Owner uses the cited mass customization literature to bolster its claim construction arguments, but does not offer any coherent or persuasive explanation of how this literature would constitute objective evidence that the claims of the ’090 patent are nonobvious. See id. at 4–7, 11–21. Patent Owner also has failed to establish any nexus between this alleged objective evidence of nonobviousness and the claims of the ’090 patent. Our reviewing court has held that objective evidence of nonobviousness must be “reasonably commensurate with the scope of the claims.” In re Kao, 639 F.3d 1057, 1068 (Fed. Cir. 2011). Patent Owner does not sufficiently explain how the mass customization literature relates to the claimed invention, or to any problem addressed by the claimed invention. For example, Patent Owner does not persuasively explain how the challenged claims relate to the specific need that is allegedly identified in the mass customization literature, i.e., to “kee[p] the products affordable.” PO Resp. 4. Patent Owner does not cite sufficient persuasive evidence that the inventor of the ’090 patent was attempting to address the issue of cost, or that the claimed invention would result in less-costly product as compared to the prior art. See id. at 4–7. Accordingly, even if Patent Owner had identified a specific secondary consideration that is evidenced by the cited mass customization literature, this evidence would not be entitled to substantial weight in the obviousness analysis. Wyers v. Master Lock Co., 616 F.3d 1231, 1246 (Fed. Cir. 2010) (“For objective evidence of secondary considerations to be accorded substantial weight, its proponent must establish a nexus between the evidence and the merits of the claimed invention.”); In re Kao, 639 F.3d at 1068 (same). 3.” slip op. at 13

  Patent outcomesUS 8,788,090 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,788,090

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.