• Fujifilm Corporation v. Sony CorporationNo claims unpatentable
  PTAB · Dec 3, 2018 · IPR2017-01390 · APJ Jeffrey W Abraham · IPR · Final written decision

  The Board held that claims 1–18 were not shown unpatentable because the prior art did not establish the claimed volume concentration in the formed magnetic layer.

  RulingsFinal written decision

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

    “define the term “volume concentration.” In the context of the ’331 patent, “volume concentration” refers to the volume concentration of the magnetic particles in the formed magnetic layer.” slip op. at 13

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “(1) a bachelor’s degree in materials science, physics, electrical engineering, mechanical engineering, chemistry, or a closely related field, and at least five years of experience in the field of magnetic recording, or (2) a Master’s degree or higher in materials science, physics, electrical engineering, mechanical engineering, chemistry, or a closely related field, with an emphasis in magnetic recording, and at least three years of experience in the field of magnetic recording. Pet. 12; Ex. 1017 ¶ 60. Although Patent Owner does not expressly define the appropriate level of skill in the art in the Patent Owner Response or its Supplemental Response, Patent Owner’s declarant, Dr. Bain, presents a definition of a person of ordinary skill in the art in his declaration that is nearly identical to Petitioner’s definition. Ex. 2001 ¶ 44. In view of this, for purposes of this Decision, we adopt Petitioner’s definition of a person of ordinary skill in the art.” slip op. at 16

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “information, is not sufficient evidence to establish that Mori discloses the “volume concentration” recited in claim 1. Patent Owner does not dispute that there is some magnetic alloy present “in the magnetic layer” of Mori. The relevant question, however, is how much and how Mori’s disclosed values were determined. Unlike the term “volume concentration,” for which the parties offered undisputed evidence regarding accepted meanings of the term in the art (i.e., packing fraction and pigment volume concentration), we have not been directed to similar evidence regarding the phrase “fill rate”/“filling rate” in Mori. Thus, although Mori states “[t]he filling rate by volume of the strongly magnetic alloy powder in the magnetic layer can be equal to or higher than 30%” (Ex. 1003 ¶ 11 (emphasis added)), Petitioner has not offered sufficient evidence demonstrating that the term “filling rate” in Mori refers to a final product-based value. As a result, we find that this language in Mori does not establish, by a preponderance of evidence, that Mori discloses the “volume concentration” recited in claim 1.” slip op. at 21

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

    “For all of the foregoing reasons, we find that Petitioner has failed to demonstrate, by a preponderance of evidence, that the combined teachings of Aonuma and Mori disclose or suggest “[a] dual layer magnetic recording medium comprising . . . a magnetic upper recording layer formed over [a] lower support layer, the magnetic upper recording layer comprising a volume concentration of at least about 35% of a primary magnetic particulate pigment,” as recited in independent claims 1 and 16. Ex. 1001, 11:14–20, 12:25–31. Claims 2–15, 17, and 18 depend from claim 1 or claim 16, and, therefore, include the “volume concentration” limitation of claims 1 and 16. As a result, we find that Petitioner has failed to demonstrate that Aonuma and Mori disclose or suggest each limitation of claims 1–18, and, therefore, has not demonstrated by a preponderance of evidence that claims 1–18 are unpatentable as obvious over Aonuma and Mori.” slip op. at 26

  Patent outcomesUS 7,115,331 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 7,115,331
• Fujifilm Corporation v. Sony CorporationSome claims unpatentable
  PTAB · Nov 7, 2018 · IPR2017-01268 · APJ Jo-Anne M Kokoski · IPR · Final written decision

  Claims 15 and 17 are unpatentable as anticipated by Ishikawa; the petitioner did not show claims 1–11, 16, and 18–20 unpatentable over Aonuma or Aonuma and Abe.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “(“POSITA”) at the time of the ’774 patent would have had “a bachelor’s degree in materials science, electrical engineering, mechanical engineering, chemistry, or a closely related field, and at least five years of experience” in industry or academic research relating to magnetic tape, or “a master’s degree or higher” in the same fields and at least three years of experience relating to magnetic tape. Pet. 13 (citing Ex. 1003 ¶ 65; Ex. 1018 ¶ 60). Patent Owner does not dispute Petitioner’s assessment in its Response, and Dr. Talke agrees that it “is reasonable.” Ex. 2026 ¶¶ 25–26. Petitioner’s assessment appears consistent with the level of ordinary skill in the art at the time of the invention as reflected in the prior art in this proceeding. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163–64 (Fed. Cir. 1985))). Accordingly, we adopt Petitioner’s assessment of the level of ordinary skill in the art.” slip op. at 8

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

    “the broadest reasonable construction, claim terms are presumed to have their ordinary and customary meaning as understood by a person of ordinary skill in the art in the context of the entire patent disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Only those terms in controversy need to be construed, and only to the extent necessary to resolve the controversy. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). For the purposes of the Decision on Institution, we determined that, based on the record at that time, no claim term required express construction (Dec. on Inst. 7), and we see no reason to modify that determination in light of the record developed during trial. C.” slip op. at 9

  • Expert testimonyPetitioner expert creditedMixed

    “considerably greater than Ishikawa’s stylus load of 50–300 μN (Ex. 1015 ¶ 45). The Talke Declaration does not address this discrepancy, and Dr. Talke stated during his deposition that reducing the stylus load would reduce scratching of the magnetic tape surface. Ex. 1030, 108:14–19 (“Q: Would reducing the contact pressure for the stylus instrument reduce the scratching of the magnetic tape surface by the stylus? A: Yes, it would, but you have to remember the other problem is the diameter and size of the stylus.”). Moreover, Petitioner provides evidence that it was not uncommon to use stylus-type profilometers to measure the properties of magnetic tape, even after Bhushan was published in 1996. See Reply 6. In particular, Petitioner points to Saliba,6 which describes using a stylus-type profilometer, under identical conditions to those used in Ishikawa, to measure the surface characteristics (including peak-to-valley roughness) of the backcoating of magnetic tape. Ex. 1027, 7:28–40, 57–60. Petitioner further points to Ohno,7 which also describes using “a stylus type 3D profilometer in accordance with JIS B0601” to measure the surface roughness characteristics of magnetic tape. Ex. 1028 ¶ 36; see also Ex. 1015 ¶ 45 (Ishikawa explaining that surface roughness characteristics were measured “in accordance with JIS-B0601-1994”); Ex. 1027, 7:28–39 (Saliba explaining that surface roughness characteristics where measured “in accordance with JIS-B0601-1994”). Accordingly, we are persuaded that the 6 US Patent No. 6,558,774 B1, issued May 6, 2003 (Ex. 1027). 7 U.S. Patent App. Pub. No. US 2005/0175866 A1, published Aug. 11, 2005 (Ex. 1028). evidence establishes that a stylus-type profilometer is a suitable device for measuring the surface characteristics of magnetic tape.” slip op. at 19

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “We agree with Petitioner that Ishikawa teaches “peak-to-valley roughness less than about 325 nm” as recited in claim 15. Pet. 24–25; Reply 5–8; Ex. 1003 ¶ 216. In particular, Ishikawa teaches a backcoating layer of a magnetic tape that has a peak-to-valley roughness “Rz of 40 to 250 nm, particularly 50 to 200 nm.” Ex. 1015 ¶ 44. Ishikawa provides five example embodiments of its magnetic tape, and reports the measurements of a number of characteristics of the backcoat layer for each example, including peak-to-valley roughness Rz. Id. ¶¶ 120–134, Table 1. Ishikawa discloses that peak-to-valley roughness Rz was measured using a stylus-type profilometer under the following conditions: Stylus: diameter: 1.5 to 2.5 μm; curvature: 60º Contact pressure: 50 to 300 μN Cut-off length: 80 μm Sampling length: 80 μm Assessment length: 400 μm Id. ¶¶ 45, 49. The reported peak-to-valley roughness Rz values for the five examples ranged from 58 to 87 nm, as shown in the annotated portion of Ishikawa Table 1 from the Petition, reproduced below: Pet. 24 (citing Ex. 1015, Table 1). The annotated portion of Ishikawa Table 1 shows the results for the measured characteristics of the backcoat layer of Examples 1–5, with the peak-to-valley roughness Rz values highlighted by a red box. Id. Because Ishikawa teaches that the backcoating layer of its magnetic tape should have a peak-to-valley roughness “Rz of 40 to 250 nm, particularly 50 to 200 nm,” and because Ishikawa presents examples of magnetic tape with backside surfaces having a peak-to-valley roughness of 87 nm or less, Ishikawa discloses “a peak-to-valley roughness less than about 325 nm” as recited in claim 15.” slip op. at 16

  Patent outcomesUS 7,029,774 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,029,774
• Technical Consumer Products, Inc. / Nicor Inc. et al. v. Lighting Science Group Corp.Some claims unpatentable
  PTAB · Oct 31, 2018 · IPR2017-01280 · APJ John A Hudalla · IPR · Final written decision

  Claims 1–3, 5, 7–9, 11, 12, 14, 16, 17, 19, and 21–24 are unpatentable under § 103; claims 3 and 4 were not shown unpatentable over Zhang, Soderman, and Silescent.

  RulingsFinal written decision

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

    “(collectively, “Lead Petitioner”) filed a Petition (Paper 1, “Pet.”) requesting an inter partes review of claims 1–5, 7–9, 11, 12, 14, 16, 17, 19, and 21–24 of U.S. Patent No. 8,967,844 B2 (Ex. 1001, “the ’844 patent”) pursuant to 35 U.S.C. §§ 311–319. Patent Owner, Lighting Science Group Corp. (“Patent Owner”), did not file a Preliminary Response to the Petition. We determined that the information presented in the Petition established that there was a reasonable likelihood that Lead Petitioner would prevail in challenging claims 1–5, 7–9, 11, 12, 14, 16, 17, 19, and 21–24 of the ’844 patent under 35 U.S.C. § 103(a). Pursuant to 35 U.S.C. § 314, we instituted this proceeding on November 1, 2017, as to claims 1–5, 7–9, 11, 12, 14, 16, 17, 19, and 21–24 of the ’844 patent. Paper 10 (“Dec. on Inst.”).” slip op. at 2

  • Skill levelSkill level board ownDecided for patent owner

    “The parties’ definitions of the level of skill differ in minor respects, including the number of years of experience and whether or not a 5 Patent Owner has not put forth any evidence or argument related to secondary considerations of nonobviousness. background in chemical engineering should be included. At his deposition, Dr. Bretschneider testified that he included a degree in chemical engineering in his definition because that degree confers expertise in heat transfer. Ex. 1023, 37:14–22. We find this testimony persuasive. Regarding the difference in years of experience, both declarants agree that three years of experience is appropriate. For these reasons, we define the person of ordinary skill in the art as having a bachelor’s degree in electrical engineering, mechanical engineering, chemical engineering, physics, or a related field and three years of experience in designing LED lighting products or fixtures. We are satisfied that this definition comports with the qualifications a person would have needed to understand and implement the teachings of the ’844 patent and the prior art of record.” slip op. at 12

  • Expert testimonyPatent owner expert creditedDecided for patent owner
  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable

    “We agree with Petitioner (Pet. Reply 8–9), however, that an ordinarily skilled artisan would not have read Chou as narrowly as Patent Owner contends. Not only does Chou state that its fixture “may be configured to be installed into a recessed can housing having other geometries,” but also “recessed housings . . . developed with different geometries.” Ex. 1012, 3:65–4:7 (emphasis added). In light of this express teaching in Chou, we do not agree that Chou’s teachings are confined to 5- and 6-inch can lights, or even can lights in general. Junction boxes represent another geometry that can serve as a recessed housing for an LED light fixture. See Ex. 1023, 30:17–31:7 (Dr. Bretschneider testifying that, by 2009, LED light fixtures attached to junction boxes were known with “certain parts” inside the box). In addition, the fact that certain figures of Chou might depict a junction box external to a can light does not mean that junction boxes are excluded from the universe of “recessed housings” contemplated in the quotation above. In addition, Patent Owner contends Petitioner has provided no reason or motivation to combine Wegner with Chou. PO Resp. 10–11. Patent Owner also contends an ordinarily skilled artisan would not have combined Wegner with Chou because Wegner pertains to a light with a tall reflector, which must be installed in a can light fixture (and not a junction box). Id. at 11–12 (citing Ex. 2001 ¶¶ 74–75, 133–137). Yet Petitioner only cites Wegner for its teaching of removing an Edison base from an LED light fixture to facilitate direct wiring, and not for anything to do with reflectors. Pet. 24 (citing Ex. 1002 ¶ 53; Ex. 1016, 11:3–32). As such, Patent Owner’s arguments regarding Wegner’s light reflectors amounts to a bodily incorporation argument, which is not the test for obviousness. See In re Keller, 642 F.2d 413, 425 (CCPA 1981) (“The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference.”). We are persuaded that, based on Wegner, an ordinarily skilled artisan would have known to remove the Edison base of Chou’s fixture regardless of the type of reflector and housing used in Wegner’s fixture. See Ex. 1002 ¶ 53. Regarding motivation, Petitioner posits a market-based rationale, namely, that an ordinarily skilled artisan would have been motivated to make a version of Chou’s luminaire to fit nominally sized junction boxes to serve the new construction market. Pet. 25 (citing Ex. 1002 ¶ 54). Dr. Coleman testifies that the Edison base would have been removed to make Chou’s luminaire work in a junction box. Ex. 1002 ¶ 53. We are persuaded that an ordinarily skilled artisan wanting to modify Chou for use in junction boxes would have known to make this modification.” slip op. at 19

  Patent outcomesUS 8,967,844 mixed
  § 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,967,844
• Fujifilm Corporation v. Sony CorporationNo claims unpatentable
  PTAB · Oct 22, 2018 · IPR2017-01267 · APJ Jo-Anne M Kokoski · IPR · Final written decision

  The Board held claims 1–13 and 15–20 not shown unpatentable over Law and Sasaki because the evidence did not establish the claimed surface properties.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “degree in materials science, electrical engineering, mechanical engineering, chemistry, or a closely related field, and at least five years of experience” in industry or academic research relating to magnetic tape, or “a master’s degree or higher” in the same fields and at least three years of experience relating to magnetic tape. Pet. 17–18 (citing Ex. 1003 ¶ 65). Patent Owner does not dispute Petitioner’s assessment in its Response, and Dr. Talke agrees that it “is reasonable.” Ex. 2026 ¶¶ 25–26. Petitioner’s assessment appears consistent with the level of ordinary skill in the art at the time of the invention as reflected in the prior art in this proceeding. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985))). Accordingly, we adopt Petitioner’s assessment of the level of ordinary skill in the art. B.” slip op. at 8

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

    “reasonable construction in light of the specification of the patent in which [the claims] appear[].” 37 C.F.R. § 42.100(b) (May 2, 2016); see Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016). Consistent with the broadest reasonable construction, claim terms are presumed to have their ordinary and customary meaning as understood by a person of ordinary skill in the art in the context of the entire patent disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Only those terms in controversy need to be construed, and only to the extent necessary to resolve the controversy. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). For the purposes of the Institution Decision, we determined that, based on the record at that time, no claim term required express construction (Dec. on Inst. 7), and we see no reason to modify that determination in light of the record developed during trial. C.” slip op. at 8

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

    “The evidence, however, does not establish that a backside surface having a skew less than about 0.5 and a kurtosis less than about 4.0 necessarily results from reducing the size and prevalence of the protrusions on the backside surface of Law’s magnetic tape. As Petitioner agrees, Law and Sasaki do not discuss skew and kurtosis values. See Pet. 29 (stating that Law does not expressly disclose skew or kurtosis values); Reply 23 (recognizing that neither Law nor Sasaki contain express disclosures of skew and kurtosis); Tr. 18:22–23 (Petitioner’s counsel noting that there are no reported skew and kurtosis values in Law or Sasaki). Thus, Petitioner relies on Mr. Isobe’s testimony to establish that reducing the protrusions on Law’s backside surface would result in a skew less than about 0.5 and a kurtosis less than about 4.0. See Pet. 45–49; Ex. 1003 ¶¶ 79–81, 170–174. In that regard, Mr. Isobe testified as follows:” slip op. at 17

  • Obviousness (§103) › KSR rationalesNot shown unpatentableNot shown unpatentable

    “At best, the evidence establishes that reducing protrusions in Law’s backside coating may result in the surface approaching a Gaussian distribution (namely, a skew of 0 and a kurtosis of 3). See Ex. 1003 ¶ 171 (“By reducing the number of peaks the overall surface may become closer to a Gaussian distribution, which by definition has a skew of zero.” (emphasis added)), ¶ 174 (“As the frequency of large protrusions is reduced, the skew of the backcoat surface approaches 0 and the kurtosis becomes closer to 3.” (emphases added)). There is no evidence of record, however, that establishes the skew and kurtosis values of Law’s backside coating before reducing the protrusions as Petitioner proposes. While it is possible that reducing Law’s protrusions could result in skew and kurtosis values within the claimed range, it is also possible that reducing the protrusions could result in a surface that approaches a Gaussian distribution but still has a skew above 0.5 and a kurtosis above 4.0. See Ex. 2026 ¶¶ 36–60, 77–83, 90; see also PAR Pharm., 773 F.3d at 1195 (Inherency “may not be established by probabilities or possibilities.”). Thus, even if reducing the protrusions on Law’s backside coating caused the surface to approach a Gaussian distribution, that is not sufficient to establish that it necessarily results in a skew less than about 0.5 and a kurtosis less than about 4.0 as claimed. The skew and kurtosis values recited in claims 1 and 20 are not simply properties possessed by any backside coating that otherwise satisfies the structural limitations. Instead, they are recited as limitations on which magnetic recording media fall within the scope of the claims. The evidence of record does not establish that reducing the protrusions in Law’s backside coating, as taught by Sasaki, “would have naturally led to a backside surface having a skew less than about 0.5 and a kurtosis less than about 4.0” as Petitioner contends. Pet. 45. Accordingly, on the record before us, we find that Petitioner has not established that claims 1 and 20 would have been obvious over the combined teachings of Law and Sasaki.” slip op. at 21

  Patent outcomesUS 7,029,774 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,029,774
• Netapp, Inc. / Lenovo (United States) Inc. et al. v. Intellectual Ventures II, LLCRehearing denied
  PTAB · Oct 17, 2018 · IPR2017-00467 · APJ Kamran Jivani · IPR · Rehearing

  The Board denied rehearing, leaving institution denied because the Uchida and Bramhill combination did not show the claimed write restriction for claims 15, 18, 24, and 25.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “The burden of showing a decision should be modified lies with the party challenging the decision.” 37 C.F.R. § 42.71(d). We “review [our] decision for an abuse of discretion.” Id. § 42.71(c). The request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id. § 42.71(d). slip op. at 2

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Not shown unpatentable

    “In our Decision, we determined Petitioner failed to show a reasonable likelihood of success on its challenges combining Uchida and Bramhill because Petitioner failed to show teachings or suggestions sufficient to meet the following limitation of independent claim 15: “providing restricted-access to the storage device when the storage device does not store the device-specific security information by preventing the digital data from being written to the storage device during the write access.” Dec. 13–15. We similarly determined Petitioner failed to show teachings or suggestions sufficient to meet the commensurate limitation recited in independent claim 18: “configuring the storage drive to prevent write access to the storage device when the security information is not sensed.” Id. at 15.” slip op. at 3

  None
  Patents in suitUS 6,968,459
• Huawei Technologies Co., Ltd. v. Samsung Electronics Co., Ltd.Rehearing denied
  PTAB · Oct 11, 2018 · IPR2017-01979 · APJ Kamran Jivani · IPR · Rehearing

  The Board denied Huawei’s rehearing request, finding no abuse of discretion in denying institution on grounds 4–6 because the Petition did not adequately explain how to harmonize the references’ conflicting teachings.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “The burden of showing a decision should be modified lies with the party challenging the decision.” 37 C.F.R. § 42.71(d). We “review [our] decision for an abuse of discretion.” Id. § 42.71(c). The request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id. § 42.71(d). After considering the Request for Rehearing, we determine that Petitioner has not demonstrated that we abused our discretion in denying institution. We deny the Request for Rehearing for the reasons that follow. slip op. at 2

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

    “Id. Figure 1 of R1-071000 identifies the scope of its contribution as limited to transmission of control information together with data information. Id. Thus, R1-071000, on its face, is directed to the opposite scenario of R1- 072122, which is directed to transmitting control information without data. Id.; see also Dec. 14–15 citing (Ex. 1008, 1 (Title: “Data non-associated control signal transmission with UL data.”)). Even if we were to accept arguendo Petitioner’s first argument that R1-071000 invites skilled artisans to expand and apply the data mapping scheme of R1-072122, such an invitation does not remedy Petitioner’s failure to explain sufficiently how one with ordinary skill in the art would have modified the system of R1- 072122 to transmit control signals with data, contrary to the express teachings of that reference. See Reh’g Req. 4; Pet. 85–86. For instance, Petitioner does not address how one would reconcile the two references’ diametrically opposed teachings regarding placement of the ACK/NAK. As we stated: Finally, although the cited portions of R1-071000 teach placing data in the symbols directly adjacent to the symbol containing the reference signal, R1-071000 depicts placing the ACK/NAK in the symbols farthest from the symbol containing the reference signal––directly opposite to the cited teachings of R1-072122 describing placing the ACK/NAK in the symbols directly adjacent to the reference signal. Ex. 1008, Figs. 4, 5. Here too, Petitioner and Dr. Akl do not address how or why an ordinarily skilled artisan would have harmonized the disparate teachings of these two references. Dec. 15 (bold emphasis added; italics original). Absent sufficient evidence and explanation, Petitioner’s argument amounts to impermissible hindsight reconstruction of the challenged claims. See, e.g., In re NTP, Inc., 654 F.3d 1279, 1299 (Fed. Cir. 2011) (cautioning against the use of hindsight).” slip op. at 5

  • Strike new argumentNew argument disregardedDecided for patent owner

    “Rehearing. Reh’g Req. 4–6. A request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id. § 42.71(d). Petitioner identifies a single page of its Petition as “the place where [that argument] was previously addressed.” Reh’g Req. 4–6 (citing Pet. 86). The cited page of the Petition, recites only a single sentence and string citation related to this argument: “Further, a number of 3GPP contributions, including both R1- 071000 and R1-072122, expressly disclose and teach that it is advantageous to limit the number of different transmission formats due to complexity of UE design.” Pet. 86 (citing Ex. 1008, 2, 5; Ex. 1006, 2; Ex. 1009, 5; Ex. 1003 ¶ 225). A request for rehearing is not an opportunity to present new arguments. See 37 C.F.R. § 42.71(d); see also, e.g., Captioncall, Inc. v. Ultratec, Inc., IPR2014-00780, Paper No. 40 (PTAB May 19, 2016) (discussing that a rehearing request is “not intended as a vehicle simply to disagree with [the] outcome or to provide new arguments”). Contrary to Petitioner’s assertions on rehearing, the cited portion of the Petition does not provide sufficient explanation for the following statements made in the Request for Rehearing: that “R1-072122 also expressly teaches that a single mapping scheme for control information is preferred”; that “R1-070998, another contemporaneous 3GPP contribution, provides a similar statement”; or that “skilled artisans would have been motivated to apply the same control mapping scheme regardless of the presence of data.” Compare Reh’g Req. 4–6 with Pet. 86. Indeed, the cited page of the Petition does not discuss R1-070777or R1-070998. See Pet. 86. Because Petitioner’s second argument was not presented in its Petition, we do not consider it on rehearing. 37 C.F.R. § 42.71(d). To the extent Petitioner contends its declarant Dr. Akl presented the extensive argument that Petitioner now puts forth in its Request for Rehearing, our rules particularly require identification of “the place where [that argument] was previously addressed in a motion, an opposition, or a reply.” Id. (emphasis added); see also 37 C.F.R. § 42.6(3) (prohibiting incorporation of arguments by reference).” slip op. at 6

  § 103 obviousness
  Patents in suitUS 8,761,130
• Unified Patents Inc. v. Intellectual Ventures II, LLCRehearing denied
  PTAB · Sep 27, 2018 · IPR2016-01404 · APJ Kamran Jivani · IPR · Rehearing

  The Board granted the motion to excuse late filing and denied rehearing, maintaining that claims 1, 2, 13, 14, 33, 34, 39, 46, and 48 were not shown unpatentable over Bensimon.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “The burden of showing a decision should be modified lies with the party challenging the decision . . .” who “must specifically identify all matters the party believes [we] misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” 37 C.F.R. § 42.71(d). Petitioner’s argument is predicated upon a mischaracterization of our factual findings. Petitioner asserts that we found Bensimon “taught all of the elements of the claim in ‘one possible mode of operation.’” Reh’g Req. 1 (citing Decision 17). We, however, made no such finding. The phrase that Petitioner attributes to us—namely, “one possible mode of operation”—does not appear anywhere in our Final Written Decision. Compare Reh’g Req. 1 (citing Decision 17) to Decision 17. Contrary to Petitioner’s assertions, we did not find “that Bensimon sometimes teaches all of the elements of the claim” nor did we find “that Bensimon discloses a ‘restricted-access mode’ by disclosing a ‘write protection’ mode.” Reh’g Req. 1–3 (citing Decision, 16–17). Rather, we found the exact opposite—that Bensimon fails to disclose the claimed restricted-access mode because, as claimed, that mode requires the absence of the claimed device-specific security information (i.e. the read/write password, or alternatively the combination of the read/write password and password-enabling flag). Decision 16–17 (citing Reply 16– 22) (“Petitioner identifies Bensimon’s read/write password, alone or in combination with the password-enabling flag, as the device-specific security information, yet Petitioner does not identify in Bensimon an explicit disclosure that Bensimon’s storage device operates in the claimed restricted-access mode when the read/write password is absent from the device.”) (bolding added; italics original). slip op. at 5

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “claim” nor did we find “that Bensimon discloses a ‘restricted-access mode’ by disclosing a ‘write protection’ mode.” Reh’g Req. 1–3 (citing Decision, 16–17). Rather, we found the exact opposite—that Bensimon fails to disclose the claimed restricted-access mode because, as claimed, that mode requires the absence of the claimed device-specific security information (i.e. the read/write password, or alternatively the combination of the read/write password and password-enabling flag). Decision 16–17 (citing Reply 16– 22) (“Petitioner identifies Bensimon’s read/write password, alone or in combination with the password-enabling flag, as the device-specific security information, yet Petitioner does not identify in Bensimon an explicit disclosure that Bensimon’s storage device operates in the claimed restricted-access mode when the read/write password is absent from the device.”) (bolding added; italics original).” slip op. at 6

  § 102 anticipation
  Patents in suitUS 6,968,459
• Dexcom, Inc. v. Waveform Technologies, Inc.Some claims unpatentable
  PTAB · Sep 12, 2018 · IPR2017-01051 · APJ Elizabeth M Roesel · IPR · Final written decision

  Claims 1, 4–12, and 15–19 were held unpatentable as obvious over Hagiwara; claims 2, 3, 13, and 14 were not shown unpatentable. The motion to amend was granted in part.

  RulingsFinal written decision

  • PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend granted in partGranted in part

    “j. Conclusion Regarding Obviousness Based on Hagiwara (Proposed Substitute Claims) We conclude that Petitioner has shown by a preponderance of the evidence that proposed substitute claims 20, 22, 23, and 26–29 are unpatentable as obvious in view of Hagiwara. We conclude that Petitioner has not shown by a preponderance of the evidence that proposed substitute claims 21, 24 and 25 are unpatentable as obvious in view of Hagiwara. 2. Remaining Grounds of Unpatentability Asserted by Petitioner (Proposed Substitute Claims) In view of our determination that Petitioner has shown by a preponderance of the evidence that proposed substitute claims 20, 22, 23, and 26–29 are unpatentable as obvious in view of Hagiwara, we do not reach Petitioner’s remaining grounds of unpatentability as to these claims. Regarding proposed substitute claims 24 and 25, Petitioner’s contentions regarding the Handbook, Wilson, and Say do not remedy the deficiencies in Petitioner’s contentions regarding Hagiwara, as discussed above. Accordingly, we conclude that a preponderance of the evidence does not show that proposed substitute claims 24 and 25 are unpatentable as obvious based on Hagiwara in view of the Handbook, Wilson, or Say. H.” slip op. at 71

  • ExcludeOther

    “As discussed above, we do not reach the Wilson-Based Grounds with respect to claims 1, 4–12, and 15–19 of the ’574 patent. As for claims 2, 3, 13, and 14, we determine that Petitioner has not shown unpatentability based on the Wilson-Based Grounds, even if Exhibit 1037 and the corresponding portions of Petitioner’s Reply (Paper 37) are not excluded, because Petitioner does not offer Exhibit 1037 to cure the deficiency we noted in Wilson. See Section II.F, supra. For this reason, we dismiss as moot Patent Owner’s motion.” slip op. at 72

  • Expert testimonyPetitioner expert discountedPatent owner expert discountedDecided for patent owner

    “sensor would not have been a motivation to combine Hagiwara’s embodiments” because Hagiwara’s catheter prevents damage to the sensor during insertion and because a sensor with a side sensor window creates a greater risk of damage and vascular injury and reduces exposure to blood, as compared with a sensor with an end sensor window. PO Resp. 20–25. We have considered Patent Owner’s arguments, but, for the reasons discussed above, we are persuaded that Petitioner has established a motivation to combine, notwithstanding the conflicting expert testimony regarding the disadvantages of a side sensor window versus an end sensor window. Neither of the expert opinions on this topic is supported by objective facts or data. Ex. 1006 ¶ 155;13 Ex. 2008 ¶¶ 54–57, 87–95; Ex. 2009, 92:8–97:12. For this reason, we give little or no weight to either side’s expert testimony 13 Dr. Vachon cites “WO 01/13102, Vadgama” (Ex. 1006 ¶ 155), however, this reference was not submitted as an exhibit in this proceeding. on this topic. 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); Rohm & Haas Co. v. Brotech Corp., 127 F.3d 1089, 1092 (Fed. Cir. 1997) (nothing in the Federal Rules of Evidence or Federal Circuit jurisprudence requires the fact finder to credit unsupported assertions of an expert witness). As discussed above, however, there is no disagreement that a side sensor window was a known alternative to an end sensor window. Ex. 1006 ¶¶ 73, 155; Tr. 43:22–44:3. That undisputed fact, together with Petitioner’s other evidence, is sufficient to establish a motivation to combine.” slip op. at 42

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Level of Ordinary Skill in the Art For purposes of our Institution Decision, we accepted the definition of a person of ordinary skill in the art (“POSITA”) provided by Petitioner’s declarant, Dr. Vachon. Dec. 11 (citing Ex. 1006 ¶ 28). That definition is: a person having a bachelor’s degree or the equivalent training or experience in mechanical engineering, bioengineering, or related field and at least three years of experience relating to biosensor research and development, or a master’s degree or the equivalent training or experience in mechanical engineering, bioengineering, or related field, and at least one year of experience relating to biosensor research and development. Id. Patent (https://www.uspto.gov/sites/default/files/documents/guidance_on_motions_ to_amend_11_2017.pdf); Bosch Automotive Service Solutions, LLC v. Matal, 878 F.3d 1027 (Fed. Cir. 2017); Bosch Automotive Service Solutions, LLC v. Iancu, Order on Petition for Panel Rehearing, No. 2015-1928 (Fed. Cir. Mar. 15, 2018). Owner’s declarant accepts and applies this definition of a POSITA for purposes of his opinions. Ex. 2008 ¶ 30. Neither party’s declarant indicates that any proffered opinion would change depending on the level of ordinary skill in the art. Therefore, consistent with our Institution Decision, we adopt Dr. Vachon’s definition of a POSITA. Ex. 1006 ¶ 28. We also rely on the cited prior art references as reflecting the level of ordinary skill in the art at the time of the invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 20

  Patent outcomesUS 7,529,574 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,529,574
• Sumitomo Electric Industries, Ltd. v. United Technologies CorporationNo claims unpatentable
  PTAB · Sep 12, 2018 · IPR2017-00966 · APJ Christopher L Crumbley · IPR · Final written decision

  Claims 1–4, 8–13, 16, and 17 were not shown unpatentable under either § 103 ground because SEI did not establish a sufficient reason to combine the references.

  RulingsFinal written decision

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

    “We disagree. As the Federal Circuit has observed, “[a] preamble is not a claim limitation if the claim body ‘defines a structurally complete invention . . . and uses the preamble only to state a purpose or intended use for the invention.’” Georgetown Rail, 867 F.3d at 1236 (citing Rowe v. Dror, 112 F.3d 473, 478 (Fed. Cir. 1997)). The fact that the claims were amended to include storage tanks and recirculation loops actually cuts against UTC’s position, as the claim as amended describes a structurally complete invention and reliance on the preamble for this structure is unnecessary. UTC also points to the fact that the Examiner amended the preamble during prosecution, from merely reciting a “flow battery” to a “redox flow battery.” PO Resp. 15. While “clear reliance on the preamble during prosecution to distinguish the claimed invention from the prior art” (Catalina Mktg., 289 F.3d at 809) may be a reason to view the preamble as limiting, UTC directs us to no evidence here that the Examiner intended the amendment to distinguish the claims from the prior art. Indeed, as UTC acknowledges in its Response, a person of ordinary skill in the art would have understood the ’243 patent to use “‘redox flow battery’ and ‘flow battery’ to mean the same thing.” PO Resp. 13 (emphasis added). If, as UTC concedes, the Examiner’s amendment merely substituted one synonym for another, the amendment could not have changed the scope of the claim or distinguished over the prior art. For these reasons, we conclude that the preamble of the claims is not limiting, and, therefore, we need not construe the term redox flow battery.” slip op. at 10

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “SEI contends that the person of ordinary skill should not be limited to only a degree in chemistry or chemical engineering, because the claimed features of the flow batteries are not directed to chemistry. Pet. Reply 7. We agree, and adopt SEI’s definition of the relevant educational background. While the parties differ as to the number of years of experience in working with flow batteries, we do not consider the difference (one versus two years) to be significant. We find that a person of ordinary skill in the art at the time of invention would be a person with a degree in chemistry, physics, chemical engineering, electrical engineering, or mechanical engineering, who has at least one year of experience designing or testing flow batteries so as to obtain functional knowledge of their structure and operation. We have reviewed the level of skill reflected in the prior art and consider it consistent with this definition. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 15

  • ExcludeMotion to exclude, deniedDenied

    “evidence. Our Rule 42.64 provides that a motion to exclude is necessary to preserve any objection, and refers to those objections as “objections to the admissibility” of evidence. See 37 C.F.R. § 42.64(a), (c). The Board’s Trial Practice Guide further explains that a motion to exclude “must explain why the evidence is not admissible.” See Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,767. In other words, objections to the timing of late-arising evidence or procedural infirmities are not proper for a motion to exclude. For this reason, the objections raised in UTC’s motion to exclude are improper. First, UTC argues that Exhibit 1066 is untimely under 37 C.F.R. § 42.63(b), which requires a translation of a foreign-language document to be filed with the document. Mot. 5. By UTC’s reasoning, because the Supplemental Declaration revisits Mr. Yagaeshi’s prior translation, but was not submitted with the foreign-language document, it violates the Board’s rules. Id. As this is clearly a procedural objection to the timing of the evidence, as opposed to its admissibility, we deny the motion to exclude on this basis. In any event, even if it were procedurally proper, we would not exclude the Supplemental Declaration on this basis. The Board’s Rule requires only that the original foreign-language document be accompanied by a translation, and there is no dispute that is what happened here. We see nothing in Rule 42.63(b) that prohibits a party to revisit, or even modify, its translation at a later date, given sufficient notice and opportunity to respond by the opposing party. Here, we granted UTC the opportunity to submit its own responsive declaration and address the translation issue at the oral hearing, and UTC did so.” slip op. at 12

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner

    “character as a minus sign, which is consistent with Mr. Yagaeshi’s original translation, makes more grammatical sense in the context of the sentence. We take note of the fact that SEI only changed its position on the translation—and asked Mr. Yagaeshi to correct his prior translation—once UTC made arguments based on the original translation that might be detrimental to SEI’s case. While it is conceivable that SEI only became aware of the alleged error once UTC called attention to it in the Response, we consider it fair to hold SEI to its original interpretation, especially given that that original interpretation is in agreement with Mr. Baldwin’s translation, which has remained consistent since at least 2016. For these reasons, we will interpret the disputed passage of JP228 to read “the potential was negative 0.4V.”” slip op. at 19

  Patent outcomesUS 9,166,243 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,166,243
• Eset, LLC / Eset Spol S.R.O. v. Finjan, Inc.Rehearing denied
  PTAB · Aug 10, 2018 · IPR2017-01738 · APJ Patrick M Boucher · IPR · Rehearing

  The Board denied Patent Owner’s rehearing request, leaving review instituted on all challenged claims and all grounds presented in the Petition.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “Nevertheless, like Petitioner, the panel “is not aware of a single case where a partially-instituted IPR was de-instituted post-SAS, as requested by Patent Owner.” Opp. 5. The panel is sympathetic to the position in which institution of the Freund-based grounds places Patent Owner. If now faced with the Petition in the first instance, and understanding that we have only a “binary choice,” it may well be appropriate to deny the Petition in its entirety. But we have been instructed that the Office SAS Guidance is to be interpreted with the weight of Office policy as precluding termination of a partially instituted proceeding in response to SAS Institute. Given that constraint, we are not persuaded that we abused our discretion in our modification Order to include review of all challenged claims and all grounds presented in the Petition. See 37 C.F.R. § 42.71(c). Thus, notwithstanding the panel’s significant reservations, we continue to give effect to the Director’s policy guidance, and deny Patent Owner’s Rehearing Request.” slip op. at 10

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied

    “SAS procedure outlined herein and determines that the trial must be instituted on all grounds or none, Patent Owner requests that the proceedings be terminated pursuant to 35 U.S.C. § 325(d).” Req. Reh’g 10. In making this request, Patent Owner raises important issues regarding the interplay of SAS Institute and 35 U.S.C. § 325(d). The panel is sensitive to Patent Owner’s concern that Under the full-institution full-review paradigm laid out in the Board’s Modified Institution Order and envisioned by the Guidelines, Patent Owners will be forced to defend against the very types of harassing challenges that these sections of the America Invents Act [35 U.S.C. §§ 314(a) and 325(d)] were designed to prevent, namely to “prevent parties from mounting attacks on patents that raise issues that are substantially the same as issues that were already before the Office with respect to the patent.” Id. at 6 (quoting 157 Cong. Rec. S1360 at S1376 (Mar. 8, 2011) (remarks of Senator Kyl); citing H.R. Rep. No. 112-98, pt. 1, at 48 (2011) (warning the AIA’s procedures should not be used as tools for harassment)).5 Nevertheless, like Petitioner, the panel “is not aware of a single case where a partially-instituted IPR was de-instituted post-SAS, as requested by Patent Owner.” Opp. 5. The panel is sympathetic to the position in which institution of the Freund-based grounds places Patent Owner. If now faced with the Petition in the first instance, and understanding that we have only a “binary choice,” it may well be appropriate to deny the Petition in its entirety. But we have been instructed that the Office SAS Guidance is to be interpreted with the weight of Office policy as precluding termination of a partially instituted proceeding in response to SAS Institute. Given that constraint, we are not persuaded that we abused our discretion in our modification Order to include review of all challenged claims and all grounds presented in the Petition. See 37 C.F.R. § 42.71(c).” slip op. at 9

  Discretionary denial
  Patents in suitUS 7,975,305

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.