- Ricoh Americas Corporation / Xerox Corporation v. MPHJ Technology Investments, LLCSome claims unpatentablePTAB · Nov 19, 2014 · IPR2013-00302 · APJ Karl D Easthom · IPR · Final written decision
Claims 1–5 and 7–11 are unpatentable because the XNS Manual anticipates them; Petitioner did not show that the XNS Manual or Salgado anticipates claim 6.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“Accordingly, a “software application” is a program, or group of programs, which operate together in a system to perform a function or functions, and the programs can be stored in a variety of places on a variety of devices, and operate in a distributed manner. An application may include software and hardware and performs a function or functions.” slip op. at 13
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed
“Patent Owner’s arguments are not persuasive. As explained in the Overview section, the application layer itself contains multiple protocols for each application, i.e., mailing, printing, filing, and gateway access. See Ex. 1002, 14–16, Fig. 2-4. Even if lower layer protocols do not “disturb[]” upper layer protocols, as Patent Owner contends, and even if an application layer does not contain multiple protocols (which Patent Owner does not contend), different layers of protocols generally communicate with, or at least “use the resources of,” lower layers through “interfaces.” Id. at 14, 11 (“[A] commonly-accepted perspective is that the functions of one layer use the resources of the lower layers to complete their assigned tasks.”). In any event, the application layer protocols comprise several types of application protocols. Id. at 15 (Fig. 2-4), 16.” slip op. at 25
- ExcludeMotion to exclude, deniedDenied
“III. MOTION TO EXCLUDE Patent Owner moves to exclude Dr. Melen’s testimony on re-direct during his deposition. Paper 40. We do not consider any of the re-direct testimony, rendering the motion moot. Therefore, we dismiss it.” slip op. at 49
- Expert testimonyPetitioner expert creditedPatent owner expert creditedDecided for petitioner
“Even if Patent Owner’s assertions raise doubt as to Dr. Melen’s use of the XNS Manual to support his opinion that it anticipates claim 6, see id. at 9–12, Patent Owner does not show how this translates to undermining Dr. Melen’s opinion regarding the other claims. Throughout his analysis of the XNS Manual, Dr. Melen’s declaration provides specific and accurate citations to the XNS Manual (Ex. 1002), supporting his opinion and showing that he relies on the XNS Manual’s disclosure. See Ex. 1008 ¶¶ 29–47. In addition, because Petitioner has not shown that the XNS Manual or Salgado anticipates claim 6, Dr. Melen’s opinion about claim 6 is not of significant consequence. In reciprocal fashion, Petitioner maintains that “the Board should give no weight to Mr. Weadock’s Declaration.” Pet. Reply 7–8. Mr. Weadock’s testimony is not necessary to reach our decision with regard to claim 6, and we did not consider it in reaching the decision about claim 6. Given the finding of anticipation of claims 1–5 and 7–11, the issue is moot. Nevertheless, as this Final Decision implies, we afforded Mr. Weadock’s declaration and Dr. Melen’s declaration due weight in reaching the finding that the XNS Manual anticipates claims 1–5 and 7–11.” slip op. at 50
Patent outcomesUS 7,986,426 mixedClaim construction§ 102 anticipationPatents in suitUS 7,986,426 - Hewlett-Packard Co. v. MPHJ Technology Investments, LLCSome claims unpatentablePTAB · Nov 19, 2014 · IPR2013-00309 · APJ Karl D Easthom · IPR · Final written decision
Claims 1–12, 14, and 15 are unpatentable as anticipated by Cotte; Petitioner did not show claim 13 unpatentable over Cotte or SJ5.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther
“In our Institution Decision, we interpreted phrases of the type “at least one of A and B” and “at least A and B” in the alternative, i.e., “one or more A or B.” Dec. on Inst. 11. The parties do not challenge this interpretation. Patent Owner agreed with it during the oral hearing, stating that “as Petitioner stated, these are alternative claim elements. Patent Owner takes no issue with that interpretation, that either - - that claim element 1.3 [at least one input module] and 1.4 [at least one module communicable] are claimed in the alternative.” Tr. 31:6–9 (see supra claim 1). Patent Owner’s declarant, Mr. Weadock, also agrees with this general construction outlined in the Petition. See Ex. 2002 ¶ 17.” slip op. at 7
- Skill levelSkill level petitioner adoptedDecided for petitioner
“The record shows that Mr. Wibbels possesses “at least . . . ‘ordinary skill in the art’” (Ex. 1005 ¶ 20): the level of ordinary skill in the art of the ’381 [Patent] at the time of the effective filing date is a person with a bachelor of science degree and two years experience in research or development (e.g., engineering, product development, requirements analysis) in fields or industries pertinent to the art (e.g., digital imaging systems, such as scanners or printers). With more education, for example post-graduate degrees and/or study, less industry experience is needed to attain an ordinary level of skill. Id. ¶ 19. The claims of the ’381 Patent generally recite systems for processing and transmitting electronic images with “counterparts” in conventional printing systems. The ’381 Patent Specification also summarizes the disclosed invention as involving C-level software. See Ex. 1001, col. 3, ll. 35–67. Firmware skill, contrary to Patent Owner’s arguments, skill in creating computer algorithms, and other languages, including C-level, represent relevant skill. Mr. Weadock testifies that the requisite level of skill incudes experience in “printing, networking, scanning, and e-mail.” Ex. 2002 ¶ 15. Patent Owner acknowledges that Mr. Wibbels had “formal education” in software languages including C-level. PO Resp. 10. The record, including the prior art, which is directed to similar systems as the claimed invention, show that Mr. Wibbels has the requisite engineering education, and experience at least in imaging art, encompassing printer, scanning, and networking––“digital imaging systems.” Ex. 1005 ¶ 19. Mr. Wibbels invented systems as specified in several relevant patents generally involving computer based imaging. See Ex. 1012, 1–2. Patent Owner has not demonstrated through cross-examination or otherwise that Mr. Wibbels’s testimony is unreliable. Mr. Wibbels qualifies to aid in the Board’s understanding and his opinion is entitled to due weight.” slip op. at 23
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Patent Owner’s assertions bolster the record evidence and show that Mr. Wibbels has experience and education in software. Patent Owner does not qualify “high level” software. Patent Owner had the opportunity to challenge the declaration of Mr. Wibbels through cross-examination and competing testimony. See In re TMI Litig., 193 F.3d 613, 692 (3d Cir. 1999) (“So long as the expert’s testimony rests upon ‘good grounds,’ it should be tested by the adversary process—competing expert testimony and active cross-examination.” (quoting Ruiz-Troche v. Pepsi Cola of P. R. Bottling Co., 161 F.3d 77, 85 (1st Cir.1998))). In addition to having a Master’s degree in engineering, Mr. Wibbels has been a “Distinguished Technologist/Strategist” at Hewlett Packard Company since 2004. Mr. Wibbels is “an inventor of 17 issued U.S. Patents” and has “spent approximately 20 years working on product development of HP scanning and printing solutions.” Ex. 1012, 1–2; Ex. 1005, 2.” slip op. at 22
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed
“claim 13. In its Reply, Petitioner contends that “[c]laim 13 . . . only references other modules in a manner that lacks antecedent basis.” Pet. Reply 7. Claim 13 references “said . . . modules,” however, Petitioner’s explanation falls short of explaining how a list of modules cannot be afforded patentable weight. In its Petition, Petitioner asserts that Cotte discloses a list of menu options “used at startup of a copier.” Pet. 46 (citing Ex. 1011, col. 15, ll. 36–42, col. 18, ll. 43–51, col. 22, ll. 53–61, col. 23, ll. 19–25; Ex. 1005 ¶ 308). Nevertheless, Petitioner does not point out the specific list or show it is read on start-up. For example, the menu cited at column 15, lines 36–42, appears to be generated in response to an interrupt from the input device. See Ex. 1011, col. 15, ll. 30–32. Mr. Wibbels appears to rely on inherency “in a Windows implementation,” Ex. 1005 ¶ 308, but Petitioner does not provide a citation or persuasive evidence that shows that Cotte employs a Windows implementation. See PO Resp. 31. On this record, Petitioner does not show how Cotte discloses the claimed list of modules, or the list read on start-up. Petitioner thus does not show by a preponderance of evidence that Cotte anticipates claim 13.” slip op. at 45
Patent outcomesUS 6,771,381 mixedClaim construction§ 102 anticipationPatents in suitUS 6,771,381 - Linkedin Corp. v. Avmarkets Inc.All claims unpatentablePTAB · Nov 10, 2014 · CBM2013-00025 · APJ Michael P Tierney · CBM · Final written decision
Claims 1–3, 5–7, 9–11, and 13–15 are unpatentable under § 101 because they claim an abstract product catalog using routine computer technology.
RulingsFinal written decision- ExcludeMotion to exclude, deniedDenied
“While a Motion to Exclude may raise issues related to admissibility of evidence, it is not an opportunity to file a Sur-Reply, and also is not a mechanism to argue that a Reply contains new arguments or relies on evidence that should have been included in the prima facie case. Here, AvMarkets’ Motion to Exclude contains such improper arguments, and is in the nature of a Sur-Reply. Moreover, as discussed below, AvMarkets’ arguments also are without merit.” slip op. at 5
- Skill levelSkill level board ownDecided for patent owner
“We also hold that both Mr. Pollastro and Dr. Freedman are qualified to testify as to the level and knowledge of one of ordinary skill in the art as of 2007, the time of the invention. Specifically, one of ordinary skill in the art would have at least a bachelor’s degree in computer science or equivalent experience in the art of software and hardware development, including the development of Web applications. Ex. 1012 ¶ 3; Ex. 2001 ¶ 4. Mr. Pollastro is qualified to testify as, at the time of the invention, he was a Microsoft Certified Professional who had years of experience building and managing servers for an in-house network. Ex 2001 ¶¶ 2–3. Dr. Freedman is qualified to testify as, at the time of the invention, he possessed a Bachelor’s degree and Master’s degree from the Massachusetts Institute of Technology in Computer Science and Engineering, and a Ph.D. in Computer Science from New York University. Ex. 1012 ¶ 3.” slip op. at 7
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“We find that the claimed invention merely requires the use of a general-purpose computer. This finding is based on the teachings of the ’430 patent Specification and Dr. Freedman’s testimony. We credit the testimony of Dr. Freedman over that of Mr. Pollastro, as Dr. Freedman’s testimony is consistent with the teachings of the ’430 Specification and provides a thorough, well-reasoned analysis as to why the ’430 claims require nothing more than a general-purpose computer.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Other
“See Dec. on Inst. 4–6. The parties do not dispute these interpretations in their Patent Owner Response and Reply. We adopt the above claim constructions based on our previous analysis, and see no reason to deviate from those constructions for purposes of this decision.” slip op. at 8
Patent outcomesUS 7,856,430 unpatentableClaim construction§ 101 eligibilitycites Alice · Mayo · PhillipsPatents in suitUS 7,856,430 - Apple Inc. v. Sightsound Technologies, LLCAll claims unpatentablePTAB · Oct 7, 2014 · CBM2013-00020 · APJ Justin T Arbes · CBM · Final written decision
Claims 1, 2, 4, and 5 are unpatentable as obvious over the CompuSonics publications; Apple did not prove anticipation by the CompuSonics system.
RulingsFinal written decision- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“persuaded that they disclose a single, publicly known system that anticipates the challenged claims. Anticipation requires that every limitation of the claim at issue be disclosed in a prior art disclosure and “arranged or combined in the same way as recited in the claim.” Net MoneyIN, Inc. v. 4 Section 18(a)(1)(C) of the Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) (“AIA”), provides that a covered business method patent review may be based on “prior art that is described by section 102(a)” as in effect before March 16, 2013. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008). “[I]t is not enough that the prior art reference . . . includes multiple, distinct teachings that the artisan might somehow combine to achieve the claimed invention.” Id.; see also Kyocera Wireless Corp. v. ITC, 545 F.3d 1340, 1351–52 (Fed. Cir. 2008) (concluding that a set of eleven specifications pertaining to the same telecommunication standard did not constitute a “single prior art reference”). Apple does not argue that a single prior art reference discloses all limitations of the challenged claims, instead relying on different materials as allegedly disclosing different limitations. See Pet. 43–55. The cited materials undoubtedly are similar, as they all describe technology developed by CompuSonics and pertain generally to the recording of digital audio or video. There are differences, however. For example, the materials describe different models of DSPs with slightly different features and capabilities. Certain materials discuss the recording of digital audio on DSP-1000 series devices with floppy disks, e.g., Ex. 4113, whereas others disclose storage on DSP-2000 series devices with a hard disk, e.g., Ex. 4119. Given that the prior art teachings and suggestions are found in references describing a family of device models, as opposed to a single device model, we find that one skilled in the art would not have at once envisaged the claimed arrangement of known components in a manner consistent with anticipation under 35 U.S.C. § 102(a). Apple has not demonstrated, by a preponderance of the evidence, that claims 1, 2, 4, and 5 of the ’573 patent are anticipated by the CompuSonics system.” slip op. at 23
- Obviousness (§103) › Analogous artAnalogous artUnpatentable
“limitations of claim 1, we turn to whether a person of ordinary skill in the art would have had reason to combine the teachings of the references to achieve the claimed method. We are guided by the Supreme Court’s decision in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007). “Section 103(a) forbids issuance of a patent when ‘the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.’” Id. at 405. “[W]hen a patent ‘simply arranges old elements with each performing the same function it had been known to perform’ and yields no more than one would expect from such an arrangement, the combination is obvious.” Id. at 417 (citation omitted). “If a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability. . . . [A] court must ask whether the improvement is more than the predictable use of prior art elements according to their established functions.” Id. A determination of obviousness, though, requires identifying “‘some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.’” Id. at 417–18 (citation omitted). The evidence of record demonstrates that the CompuSonics publications describe prior art elements operating according to their known functions and yielding predictable results. See supra II.B; Pet. 33–51; Ex. 4132 ¶¶ 17–40, App. C at 1–7; PO Resp. 31 (acknowledging that “the components needed to practice the claims were available prior to 1988”). The disclosed DSPs would store digital signals and communicate digital signals electronically over a telephone line in a known manner. A floppy disk used by a DSP would function for its known purpose of storing digital data. Allowing the user to telephone the music provider and provide a credit card number for payment would have functioned just like other known payment systems of the time. See Ex. 4132 ¶¶ 26–27; Ex. 4262 ¶¶ 14–25. A person of ordinary skill in the art, having the educational background and work experience described above, see supra Section II.D.2, would have recognized that the predictable result of using these elements was a system that allowed users to purchase and download music, as expressly contemplated by the references themselves.” slip op. at 37
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Based on our review of the ’573 patent, the types of problems and solutions described in the ’573 patent and cited prior art, and the testimony of the parties’ declarants, we agree with Dr. Kelly’s assessment and conclude that a person of ordinary skill in the art would have had a bachelor’s degree or equivalent in computer engineering or computer science and approximately two years of experience in developing software and hardware that transmit and receive files over a network. See, e.g., Ex. 4101, col. 1, l. 9–col. 2, l. 9 (describing alleged problems in the prior art, and stating that the ’573 patent describes “a method [by] which a user may purchase and receive digital audio or video signal[s] from any location which the user has access to a telecommunications line”); col. 4, ll. 16–22 (stating that certain components, such as hard disks 10 and 60, telephone lines 30, compact disc player 40, video display unit 70, and stereo speakers 80, were “already commercially available”); Ex. 4132 ¶¶ 2–7 (describing the background of Dr. Kelly); Ex. 2153 ¶¶ 3–13 (describing the background of Mr. Snell). In particular, Dr. Kelly’s definition is appropriate because it requires some level of specific experience with transmitting and receiving data over a network, consistent with the recitation in the claims of connecting electronically and transmitting data over a telecommunication line.” slip op. at 28
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“The determination of whether a document is a “printed publication” under 35 U.S.C. § 102 involves a case-by-case inquiry into the facts and circumstances surrounding its disclosure to members of the public. In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). To qualify, a document must have been sufficiently accessible to the public interested in the art. Kyocera, 545 F.3d at 1350–51 (a “reference is publicly accessible ‘upon a satisfactory showing that such document has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it’”) (citation omitted). The evidence of record indicates that the diagrams were displayed, publicly and repeatedly, at trade shows, lectures, and similar events, and that those events were of the type that would have been attended by persons of ordinary skill in the art. The diagrams were displayed multiple times at multiple events, unlike the situation where a slide is displayed only one time at an oral presentation. See Klopfenstein, 380 F.3d at 1349 n.4. Further, each diagram is a relatively simple display of components on a single page, and there is no indication in the record that attendees at the various events could not have copied the diagrams. See id. at 1351 (“The more complex a display, the more difficult it will be for members of the public to effectively capture its information. The simpler a display is, the more likely members of the public could learn it by rote or take notes adequate enough for later reproduction.”). Apple has established that Exhibits 4112 and 4117 qualify as prior art printed publications under 35 U.S.C. § 102(a).” slip op. at 30
Patent outcomesUS 5,191,573 unpatentable§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 5,191,573 - Apple Inc. v. Sightsound Technologies, LLCAll claims unpatentablePTAB · Oct 7, 2014 · CBM2013-00023 · APJ Justin T Arbes · CBM · Final written decision
Claims 1, 64, and 95 were not shown anticipated by the CompuSonics system but were held unpatentable as obvious over the CompuSonics publications.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageTerm construed petitioner constructionDisclaimer not foundDecided for petitioner
“memory” to a hard disk. The Specification describes the use of a hard disk in the context of describing a preferred embodiment, not defining the “second memory” recited in the claims. See, e.g., id. at col. 3, l. 55–col. 4, l. 28 (describing hard disk 60 of the user in a section titled “Description of the Preferred Embodiment”); col. 6, ll. 10–16 (stating that the description and drawings “shall be interpreted as illustrative, and not in a limiting sense”). We do not see anything in the Specification indicating that the disclosed method requires a hard disk, as opposed to merely treating it as a preferred type of memory. Nor are we persuaded that the Specification limits “second memory” to only non-removable devices. The Specification does not use the term “removable” or state that any memory must be incapable of being removed. Indeed, hard disks, which are the preferred embodiment disclosed in the Specification, were available at the time of the ’440 patent as removable and non-removable devices, as SightSound’s declarant, Mr. Snell, acknowledges. See Ex. 4366 at 107:20–108:2. Further, the Specification’s description of disadvantages of certain types of removable storage media (i.e., records, tapes, and CDs) does not mean necessarily that the term “second memory” excludes such devices. See Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1366 (Fed. Cir. 2012) (“Mere criticism of a particular embodiment encompassed in the plain meaning of a claim term is not sufficient to rise to the level of clear disavowal.”). The Specification does not indicate that the identified disadvantages extend to all removable media or that the disadvantages occur specifically because the devices are removable. See Ex. 4301, col. 1, l. 24–col. 2, l. 21. To the contrary, some of the identified disadvantages, like limited capacity and playback capability, have nothing to do with whether the device can be removed. See id. at col. 1, ll. 27–44. Thus, we do not see any basis in the Specification for limiting “second memory” to only non-removable devices.” slip op. at 12
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“persuaded that they disclose a single, publicly known system that anticipates the challenged claims. Anticipation requires that every limitation of the claim at issue be disclosed in a prior art disclosure and “arranged or combined in the same way as recited in the claim.” Net MoneyIN, Inc. v. 4 Section 18(a)(1)(C) of the Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) (“AIA”), provides that a covered business method patent review may be based on “prior art that is described by section 102(a)” as in effect before March 16, 2013. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008). “[I]t is not enough that the prior art reference . . . includes multiple, distinct teachings that the artisan might somehow combine to achieve the claimed invention.” Id.; see also Kyocera Wireless Corp. v. ITC, 545 F.3d 1340, 1351–52 (Fed. Cir. 2008) (concluding that a set of eleven specifications pertaining to the same telecommunication standard did not constitute a “single prior art reference”). Apple does not argue that a single prior art reference discloses all limitations of the challenged claims, instead relying on different materials as allegedly disclosing different limitations. See Pet. 50–64. The cited materials undoubtedly are similar, as they all describe technology developed by CompuSonics and pertain generally to the recording of digital audio or video. There are differences, however. For example, the materials describe different models of DSPs with slightly different features and capabilities. Certain materials discuss the recording of digital audio on DSP-1000 series devices with floppy disks, e.g., Ex. 4316, whereas others disclose storage on DSP-2000 series devices with a hard disk, e.g., Ex. 4324. Given that the prior art teachings and suggestions are found in references describing a family of device models, as opposed to a single device model, we find that one skilled in the art would not have at once envisaged the claimed arrangement of known components in a manner consistent with anticipation under 35 U.S.C. § 102(a). Apple has not demonstrated, by a preponderance of the evidence, that claims 1, 64, and 95 of the ’440 patent are anticipated by the CompuSonics system.” slip op. at 22
- BurdenDecided for patent owner
“persuaded that they disclose a single, publicly known system that anticipates the challenged claims. Anticipation requires that every limitation of the claim at issue be disclosed in a prior art disclosure and “arranged or combined in the same way as recited in the claim.” Net MoneyIN, Inc. v. 4 Section 18(a)(1)(C) of the Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) (“AIA”), provides that a covered business method patent review may be based on “prior art that is described by section 102(a)” as in effect before March 16, 2013. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008). “[I]t is not enough that the prior art reference . . . includes multiple, distinct teachings that the artisan might somehow combine to achieve the claimed invention.” Id.; see also Kyocera Wireless Corp. v. ITC, 545 F.3d 1340, 1351–52 (Fed. Cir. 2008) (concluding that a set of eleven specifications pertaining to the same telecommunication standard did not constitute a “single prior art reference”). Apple does not argue that a single prior art reference discloses all limitations of the challenged claims, instead relying on different materials as allegedly disclosing different limitations. See Pet. 50–64. The cited materials undoubtedly are similar, as they all describe technology developed by CompuSonics and pertain generally to the recording of digital audio or video. There are differences, however. For example, the materials describe different models of DSPs with slightly different features and capabilities. Certain materials discuss the recording of digital audio on DSP-1000 series devices with floppy disks, e.g., Ex. 4316, whereas others disclose storage on DSP-2000 series devices with a hard disk, e.g., Ex. 4324. Given that the prior art teachings and suggestions are found in references describing a family of device models, as opposed to a single device model, we find that one skilled in the art would not have at once envisaged the claimed arrangement of known components in a manner consistent with anticipation under 35 U.S.C. § 102(a). Apple has not demonstrated, by a preponderance of the evidence, that claims 1, 64, and 95 of the ’440 patent are anticipated by the CompuSonics system.” slip op. at 22
- ExcludeMotion to exclude, deniedMixed
“Apple argues that Mr. Snell is not qualified to offer opinions on the alleged commercial success of the iTMS, and does not provide a sufficient factual “basis” for his opinions. Pet. Mot. to Exclude 3–5. For instance, Apple contends that Mr. Snell applied an erroneous interpretation of “second memory” in the claims, and gave opinions that contradict the prosecution history of the application that issued as the parent ’573 patent. Id. at 12–15. We have reviewed the cited portions of Mr. Snell’s testimony and see no basis on which they would warrant the extreme remedy of exclusion. Apple’s arguments indicate a mere disagreement with Mr. Snell’s testimony and pertain to the weight to be given to that testimony, which we are able to assess without excluding it, as explained above. Apple’s Motion to Exclude is denied.” slip op. at 59
Patent outcomesUS 5,966,440 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 5,966,440 - Rackspace Hosting, Inc. v. Rotatable Technologies LLCAll claims unpatentablePTAB · Sep 19, 2014 · IPR2013-00248 · APJ Michael W Kim · IPR · Final written decision
Claims 1–18 are unpatentable under § 103 over Martinez and Capps, with Adobe added for claims 5, 10, 15, and 17; the contingent motion to amend is denied.
RulingsFinal written decision- Expert testimonyPetitioner expert creditedDecided for patent owner
“In my opinion, the level of ordinary skill in the art needed to have the capability of understanding the scientific and engineering principles applicable to the ’978 Patent is a bachelor’s degree in computer engineering or computer science; or equivalent industry or trade school experience as one programming software applications. Ex. 1009 ¶ 12; see also Ex. 2003, 32:1-33:7. According to Patent Owner, a person possessing this level of skill at the time of the invention would have been unable to make the then-considered-complicated technical programming modifications necessary to combine the rotating window system of Martinez with the crank rotating system of Capps. We are not persuaded for several reasons. First, it is undisputable that both Martinez and Capps are directed to rotating objects. Accordingly, we are not persuaded that one of ordinary skill, even at the time of the invention, would not have known, given Martinez and Capps, that objects could be rotated using different techniques. Second, Patent Owner does not explain, or provide sufficient evidence, as to what was deficient about the level of ordinary skill at the time of the invention that would have rendered incapable the implementation of the proffered modifications. In particular, Patent Owner does not explain persuasively, or provide any supporting evidence, as to why the cited technical level would have been sufficient for one of ordinary skill to practice each of Martinez and Capps individually, but insufficient to practice the combination. Finally, Capps, in it is introductory paragraph, notes that it is directed to “methods of rotating, scaling and otherwise altering the image of an object on the screen using an icon-based tool.” Ex. 1007, 1:8-10. With this explicit reference to the rotation of a generic “object” made known to one of ordinary skill, we are not persuaded that there would be any reason to exclude the windows of Martinez from the class of objects to be rotated.” slip op. at 33
- Skill levelOther
“In my opinion, the level of ordinary skill in the art needed to have the capability of understanding the scientific and engineering principles applicable to the ’978 Patent is a bachelor’s degree in computer engineering or computer science; or equivalent industry or trade school experience as one programming software applications. Ex. 1009 ¶ 12; see also Ex. 2003, 32:1-33:7. According to Patent Owner, a person possessing this level of skill at the time of the invention would have been unable to make the then-considered-complicated technical programming modifications necessary to combine the rotating window system of Martinez with the crank rotating system of Capps. We are not persuaded for several reasons. First, it is undisputable that both Martinez and Capps are directed to rotating objects. Accordingly, we are not persuaded that one of ordinary skill, even at the time of the invention, would not have known, given Martinez and Capps, that objects could be rotated using different techniques. Second, Patent Owner does not explain, or provide sufficient evidence, as to what was deficient about the level of ordinary skill at the time of the invention that would have rendered incapable the implementation of the proffered modifications. In particular, Patent Owner does not explain persuasively, or provide any supporting evidence, as to why the cited technical level would have been sufficient for one of ordinary skill to practice each of Martinez and Capps individually, but insufficient to practice the combination. Finally, Capps, in it is introductory paragraph, notes that it is directed to “methods of rotating, scaling and otherwise altering the image of an object on the screen using an icon-based tool.” Ex. 1007, 1:8-10. With this explicit reference to the rotation of a generic “object” made known to one of ordinary skill, we are not persuaded that there would be any reason to exclude the windows of Martinez from the class of objects to be rotated.” slip op. at 33
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner
“1. Computer Display Window Independent claims 1, 9, and 14 each recite “computer display window.” The term “computer display window” is cited only in the preamble of these claims, but it is given patentable weight as it provides an antecedent basis for “the window” recited in the body of each of these claims. C.W. Zumbiel Co., Inc. v. Kappos, 702 F.3d 1371, 1385 (Fed. Cir. 2012) (citing Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002)) (the preamble constitutes a limitation when the claim(s) depend on it for antecedent basis).” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for patent owner
“To be sure, the proposed construction is broad. As Petitioner notes, however, the Specification recites explicitly that “[o]ne of ordinary skill in the art will realize that the window 10 may take any one of a number of configurations containing any one of a number of elements.” Ex. 1001, 2:60-64. Accordingly, Petitioner’s proposed construction comports with the Specification, in that the Specification itself indicates that “window” is to be construed broadly, and thus is the broadest reasonable construction in light of the Specification. Patent Owner asserts that no construction is necessary for a well- understood term such as “window.” PO Resp. 5-6. We disagree. Petitioner and Patent Owner disagree as to whether the “deformable window” identified in Bruder corresponds properly to the recited “computer display window.” Pet. 35; PO Resp. 35-38. Such a disagreement indicates that “window” is not a well-understood term, and, thus, that an express construction is warranted.” slip op. at 8
Patent outcomesUS 6,326,978 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,326,978 - PTAB · Sep 4, 2014 · CBM2013-00042 · APJ Trevor M Jefferson · CBM · Order
The Board granted the joint motion to terminate the proceeding and the request to keep the settlement agreement confidential.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“Under 35 U.S.C. § 327(a), “[a] post grant review instituted under this chapter shall be terminated with respect to any petitioner upon the joint request of the petitioner and patent owner, unless the Office has decided the merits of the proceeding before the request for termination is filed.” The parties stated in their motion that they have settled their dispute and have reached agreement to terminate this inter partes review and the co-pending litigation. Paper 40, 4. The parties further indicate that they have agreed to resolve all disputes between the parties related to US Patent No. 5,878,400. Paper 40, 4. The parties are reminded that the Board is not a party to the settlement, and may independently identify any question of patentability. 37 C.F.R § 42.74(a). Generally, however, the Board expects that a proceeding will terminate after the filing of a settlement agreement. See, e.g., Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). The Board is persuaded that, under these circumstances, it is appropriate to terminate this proceeding without rendering a final written decision. 37 C.F.R. § 42.72.” slip op. at 2
NonePatents in suitUS 5,878,400 - The Scotts Company LLC v. Encap, LLCAll claims unpatentablePTAB · Jun 24, 2014 · IPR2013-00110 · APJ Michael P Tierney · IPR · Final written decision
Claims 1–5, 7–11, 13, and 14 are unpatentable over Roth and Lowe; the motion to amend is denied.
RulingsFinal written decision- Strike new argumentNew argument disregardedDecided for patent owner
“We find that Scotts Company’s Reply, and in particular, the supporting Declarations of Mr. Fredrick Sundstrom (Ex. 1039) and Mr. Krishna Pagilla (Ex. 1040) contain material outside the proper scope of a reply. 37 C.F.R. § 42.23(b) (reply is limited to arguments raised in Patent Owner’s Response). Specifically, both Declarations contain materials in support of Scotts Company’s Petition, and therefore, untimely filed. For example, Mr. Sundstrom includes analyses of claim construction (e.g., Ex. 1039 ¶¶ 7-9), as well as analyses of the Schreiber (e.g., id. at ¶¶ 10-13), Matthews (e.g., id. at ¶¶ 28, 29), Roth (e.g., id. at ¶ 34), Simmons (id. at ¶¶ 36, 38), and Evans (id. at ¶¶ 43, 44, 46, 48) references. Likewise, Mr. Pagilla addresses claim construction, as well as the references upon which Scotts Company sought institution. See, e.g., Ex. 1040 ¶¶ 9-13, 23-27, 32, 33, 36-38. Specifically, we hold that the new evidence could have been included with the motion. By waiting to serve this evidence on Encap in Scotts Company’s Reply, Encap was denied the opportunity to file responsive evidence. Thus, we have not considered the untimely Declarations of Mr. Sundstrom and Mr. Pagilla, nor the arguments based thereon.3” slip op. at 5
- ExcludeMotion to exclude, grantedGranted in part
“Reading Mr. Krysiak’s Second Declaration, it is clear that the majority of the Declaration is in support of Encap’s Motion to Amend rather than in rebuttal to Scotts Company’s Opposition to Encap’s Motion to Amnd or the Declarations and deposition testimony4 of Mr. Sundstrom and Mr. Pagilla, and is thus, untimely. For example, paragraphs 2-3 relate to written description and claim construction, which Encap has the burden of proving in its Motion to Amend. Additionally, paragraphs 6-12 describe the background of the technology, which could have been submitted with Encap’s Motion to Amend opening brief, and thus, are not in rebuttal to testimony from Mr. Sundstrom or Mr. Pagilla. Likewise, paragraphs 25-53 and Schedule A attempt to distinguish over Matthews and Schreiber, which Encap should have done in Patent Owner’s Motion to Amend. Furthermore, to the extent that portions of Mr. Krysiak’s Second Declaration are in response to the 4 While not addressed, we do not suggest that filing a declaration in rebuttal to deposition testimony is appropriate. Declarations of Mr. Sundstrom and Mr. Pagilla, which were excluded, they should likewise be excluded. Those errors were not corrected in the Supplemental Evidence (i.e., Ex. 2016) submitted by Encap. In addition, Encap attempts to incorporate Mr. Krysiak’s Second Declaration into its Reply to Scott’s Opposition to the Motion to Amend by merely stating, “The proposed claims define over the prior art succinctly. Id. [Mr. Krysiak’s Second Declaration] at ¶¶ 14-53.” Reply Mot. Amend 5. In our Order of August 27, 2013, we admonished Encap to refrain from attempting to use an expert declaration in such fashion. We stated, “Encap’s motion to amend may be supported by an expert declaration, but that the motion itself should set forth the arguments and explanations with appropriate pinpoint citations to the expert declaration, rather than incorporating by reference the expert declaration.” Paper 17, 2-3. Thus, Scotts Company’s Motion to Exclude Mr. Krysiak’s Second Declaration (Ex. 2012) is granted, as Mr. Krysiak’s Corrected Second Declaration (Ex. 2016) did not remedy the issues, it is not considered.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for petitioner
“modify the soil in some way, other than directly providing plant nutrients. The second sentence is an observation of benefits provided by “this invention;” it does not require the invention provide the observed benefits; much less require just the soil conditioning material of the invention provide such benefits. Encap relies upon its experts, Mr. John Katers, Mr. Daniel Madigan, and Mr. Michael Krysiak, all of whom provide identical claim constructions, in support of its position. Ex. 2007 ¶ 11; Ex. 1020 ¶ 10; Ex. 1022 ¶ 13. The experts provide, however, no credible analysis in support of their claim constructions, and thus, are unpersuasive. Encap asserts also that the examples included in the Board’s preliminary claim construction should be omitted, because not all municipal or other sewage sludge, paper mill sludge, fly ash, or dust, necessarily modify the soil in a beneficial manner. PO Resp. 9. The Board’s preliminary construction, however, requires the soil conditioning materials “modify soil to which they are applied, in some way other than direct provision of nitrogen, phosphorous, and/or potassium or other plant nutrients.” The inclusion of the examples is intended to clarify, not modify, this requirement. Accordingly, the Board maintains its construction of “soil conditioning materials” as: Materials that beneficially modify soil to which they are applied, in some way other than direct provision of nitrogen, phosphorous, and/or potassium or other plant nutrients, including for example, municipal or other sewage sludge, paper mill sludge, fly ash, and dust.” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingNo construction neededDecided for petitioner
“First, the Abstract does not provide a definition for a “combination seed capsule,” but rather observes the benefits of the combination seed capsule. Second, the preamble term “combination seed capsule” is not limiting because the claim body describes a structurally complete invention. Catalina Mktg. Int’l v. Coolsavings.com Inc., 62 USPQ2d 1781, 1785 (Fed. Cir. 2002). Thus, we need not construe “combination seed capsule,” as it does not limit the claim.” slip op. at 13
Patent outcomesUS 6,209,259 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites GrahamPatents in suitUS 6,209,259 - PTAB · Feb 12, 2014 · IPR2013-00373 · APJ Jameson Lee · IPR · Order
The Board granted the joint motion and terminated the review as to Garmin, then exercised its discretion to terminate it as to Cuozzo without a final written decision.
RulingsOther- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedOther
“Under 35 U.S.C. § 317(a), “[a]n inter partes review instituted under this chapter shall be terminated with respect to any petitioner upon the joint request of the petitioner and patent owner, unless the Office has decided the merits of the proceeding before the request for termination is filed.” The requirement for terminating review with respect to Garmin, as petitioner, is met. The Board instituted trial on December 18, 2013 (Paper 12), and has not yet, in this proceeding, rendered a decision on the merits with respect to the patentability of any involved claim. Also under 35 U.S.C. § 317(a), “If no petitioner remains in the inter partes review, the Office may terminate the review or proceed to a final written decision under section 318(a).” Garmin is the sole petitioner. The Board has discretion to terminate this review with respect to the patent owner (“Cuozzo”).” slip op. at 2
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“The Board determines that in the particular circumstances of this case it is appropriate to terminate review both as to petitioner Garmin and patent owner Cuozzo without rendering a final written decision See 35 U.S.C. § 317(a); 37 C.F.R. § 42.72. It is ORDERED that the joint motion to terminate this proceeding with respect to Garmin GRANTED; FURTHER ORDERED that the Board exercises its discretion to terminate this proceeding also with respect to Cuozzo; FURTHER ORDERED that this inter partes review is hereby terminated as to all parties including both petitioner Garmin International Inc. and Garmin USA Inc., and patent owner Cuozzo Speed Technologies LLC; and FURTHER ORDERED that the parties’s joint request to have their settlement agreement (Exhibit 1116) treated as business confidential information under the 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) is GRANTED.” slip op. at 3
NonePatents in suitUS 6,778,074 - Motorola Mobility LLC v. Arnouse Digital Devices Corporation And Michael Arnouse Exclusive Licensee And Patent OwnerAll claims unpatentablePTAB · Feb 11, 2014 · IPR2013-00010 · APJ Joni Y Chang · IPR · Final written decision
Claims 1, 3, 7, 15, 16, 18, and 20 are unpatentable as anticipated by Kobayashi and, separately, by Nelson.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“that the specification discloses other embodiments in which a reader is connected to a portable computer without using a reader slot or hole. For example, in one embodiment, the portable computer connector is attached merely to the housing of the readers. Ex. 1001, 7:60-62. The reader connector is configured to mate with a universal connector on the portable computer. Id. at 6:37-42; 7:66-8:2. In another example, as shown in Figures 4 through 6, the connector includes a wireless connection between the portable computer and reader—the portable computer has a wireless transmitter, and the reader has a receiver, or vice versa. Id. at 6:42-46. As described in the specification, the connection between a portable computer and a reader does not include necessarily a reader slot or hole. Therefore, we do not import the limitation of a reader slot or hole, as urged by ADDC, from the specification into the claims. 7 Even in cases where the specification describes only a single embodiment, we do not construe necessarily the claims as being limited to that embodiment. Thorner v. Sony Computer Entm’t Am. L.L.C., 669 F.3d 1362, 1365 (Fed. Cir. 2012) (It is not enough that the only embodiment, or all of the embodiments, contain a particular limitation.). Moreover, we decline to add limitations into the claims in absence of a special definition set forth in the specification. An inventor may set out a definition and act as its own lexicographer by providing a definition of the term in the specification with reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). Here, ADDC has not alleged that the inventor of the ’484 patent acted as his own lexicographer and provided a special definition in the specification for the claim term “connector” or the claim phrase “connector for connecting” that is different from its recognized meaning to one with ordinary skill in the art. In light of the specification and in the context of the claims, we construe the claim phrase “connector for connecting” broadly, but reasonably, as a device or configuration that establishes a wireless or physical communication connection between a reader and a portable computer.” slip op. at 7
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner
“For example, claim 15 recites “wherein the portable computer excludes means for a user to interact directly with the portable computer.” We determine that the “means for interacting” claim limitation is a means- 11 plus-function claim limitation that invokes 35 U.S.C. § 112, ¶ 6.1 We observe that: (1) the limitation uses the term “means for”; (2) the term “means for” is modified by functional language; and (3) the term “means for” is not modified by any structure recited in the claim to perform the claimed function. Personalized Media Commc’ns LLC v. Int’l Trade Comm’n, 161 F.3d 696, 703-04 (Fed. Cir. 1998) (A limitation that uses the term “means for” which creates a rebuttable presumption that the drafter intended to invoke 35 U.S.C. § 112, ¶ 6.); Sage Prods., Inc. v. Devon Indus., Inc., 126 F.3d 1420, 1427-28 (Fed. Cir. 1997) (The presumption is not rebutted if the term “means for” is modified by functional language, and it is not modified by any structure recited in the claim to perform the claimed function.). We identify the claimed function for this limitation to be “for a user to interact directly with the portable computer.” Based on the specification of the ’484 patent, the corresponding structure that performs the recited function is a component that allows a user to provide information to, or receive information from, the portable computer, directly—e.g., a keyboard, keypad, display, or voice input device, on the portable computer. See, e.g., Ex. 1001, 5:63-6:31.” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for petitioner
“to interact directly with the portable computer” similarly is recited in the preamble of claim 1— “a portable computer without input and output means for interacting directly therewith.” In general, a preamble limits the invention if it recites essential structure or steps, or if it is “necessary to give life, meaning, and vitality” to the claim. Pitney Bowes, Inc. v. Hewlett- Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999). Here, the preamble of 13 claim 1 is entitled to patentable weight as it recites additional structure that is not included in the claim body. As the claim construction chart submitted by the parties in the related district court litigation shows, the parties agree that the preamble of claim 1 is limiting. Ex. 1013 at 1, col. 1-3, row 1.” slip op. at 13
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“ADDC’s arguments are unavailing, as they are not commensurate with the scope of the claims. Specifically, they are premised on an overly narrow claim construction of the “reader configuration” limitation, requiring matching security protocols (id. at 22). As discussed above, we decline to adopt such an overly narrow construction, because it would import 16 limitations from the specification into the claims, improperly limiting the claims to a preferred embodiment. Rather, we construe the “reader configuration” limitation as the readers each having a non-universal design that limits the types of portable computers that may be used with the reader. In its petition, Motorola asserts that Kobayashi meets the “reader configuration” claim limitation. Pet. 10. Motorola points out that Kobayashi discloses that “[t]he PPM works after being connected to the docking stations through a multi-connector and is capable of being connected to several types of docking stations such as desktop, desk side or portable depending on the task to be undertaken by the user.” Id. (citing Ex. 1003, 3:55-60). We agree with Motorola, as its assertion is supported by a preponderance of the evidence. Indeed, Kobayashi describes a docking station that limits the types of computers that may be used with the docking station. See, e.g., Ex. 1003, 3:55-60. For instance, Kobayashi describes that the PPM and docking station are connected together by a processor independent of connection, such as the PC Peripheral Component Independent (PCI) Bus. Id. at 3:12-15.” slip op. at 16
Patent outcomesUS 7,516,484 unpatentableClaim construction§ 102 anticipationPatents in suitUS 7,516,484
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.