- PTAB · Nov 24, 2014 · PGR2014-00010 · APJ Jon B Tornquist · PGR · Order
The Board granted the parties’ joint motion and terminated PGR2014-00010 without a final decision; it also granted confidential treatment of the settlement agreement.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“Patent Owner’s preliminary response is not yet due. On November 20, 2014, the parties filed a joint motion to terminate the proceeding (Paper 7) and a copy of their written settlement agreement (Ex. 2001). Along with the motion to terminate, the parties also filed a joint motion to treat the settlement agreement as business confidential information and keep it separate from the file of U.S. Patent No. 8,598,219 (“the ’219 patent”) pursuant to 35 U.S.C. § 327(b) and 37 C.F.R § 42.74(c). Paper 8, 1.” slip op. at 2
NonePatents in suitUS 8,598,219 - Sdi Technologies, Inc. v. Bose Corp.All claims unpatentablePTAB · Nov 7, 2014 · IPR2013-00465 · APJ David C Mckone · IPR · Final written decision
Claims 1–21, 24, 27, 29–47, 50, 63, 64, 68–70, 73, 74, 77, and 78 are unpatentable under §103 over WinAmp, Irman Web Pages, Altec Lansing Manual, and, for some claims, Looney.
RulingsFinal written decision- ExcludeMotion to exclude, grantedMotion to exclude, deniedGranted in part
“standard affidavit from the Internet Archive would have provided sufficient authentication. See Tr. 87:4–21. The Internet Archive’s standard affidavit, however, merely attests to the general procedures of the Internet Archive and the general characteristics of archived web pages on the Wayback Machine and states that the particular web page is part of its records. Ex. 3004. As Petitioner points out, however, we can follow the URL reproduced in Irman Web Pages and verify that Irman Web Pages is part of the Internet Archive’s records. Pet. Opp. to Mot. to Exclude 8. Thus, Patent Owner’s argument reduces to the contention that Petitioner has not provided an affidavit from Internet Archive attesting to its general procedures. As the Keystone case explains, “[t]he Internet Archive has existed since 1996, and federal courts have regularly accepted evidence from the Internet Archive.” 2011 WL 6436210, at *9 n.9. At the hearing, counsel for Patent Owner was asked to explain why we should consider Irman Web Pages unreliable, and, specifically, why we should consider unreliable the indication that Irman Web Pages was archived on May 8, 1999. Tr. 81:13–22; 82:21–83:9; 85:13–86:9; see also Fed. R. Evid. 807. Patent Owner did not articulate anything about the document itself that would indicate unreliability. Instead, as indicated above, Patent Owner essentially contends that Petitioner committed a technical violation of the Rules of Evidence by not obtaining a standard affidavit from Internet Archive to show that “the web contents [were] available on that particular date.” See Tr. 83:1–2; 85:13– 86:9. Such an affidavit would not have added materially to the record for the reasons outlined above. Petitioner shows that the date on the Irman Web Pages facially appears authentic and is authenticated further by accessing the website. Patent Owner has not carried the burden on its motion to show that Irman Web Pages is not authentic. Therefore, we deny Patent Owner’s Motion to Exclude, with respect to Irman Web Pages.” slip op. at 15
- Expert testimonyPetitioner expert creditedDecided for petitioner
“[t]o reach a non-hindsight driven conclusion as to whether a person having ordinary skill in the art at the time of the invention would have viewed the subject matter as a whole to have been obvious in view of multiple references, the Board must provide some rationale, articulation, or reasoned basis to explain why the conclusion of obviousness is correct. In re Kahn, 441 F.3d 977, 987 (Fed. Cir. 2006). Thus, the issue is not whether Dr. Lippman described combinations of the references that would not have rendered the claims obvious; instead, the issue is whether Dr. Lippman provided a reason, with rational underpinning, for combining the references in the way he proposes. Cf. id at 988 (“[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.”). 5 For the reasons stated below, we disagree with Patent Owner’s argument. Moreover, Patent Owner has not persuaded us that testimony suffering from hindsight bias should be excluded as inadmissible. Rather, that would go to the weight we give to the testimony. Thus, we deny Patent Owner’s Motion to Exclude with respect to ¶¶ 39–44 of Dr. Lippman’s testimony. Dr. Lippman testified that a skilled artisan would have made the proposed combination “in order to reduce duplication and clutter, such that one remote would control both the speaker and the computer and using the IR receiver positioned in the speaker.” Ex. 1017 ¶ 41. We conclude that this reason has rational underpinning. Moreover, as explained in the Decision to Institute (Dec. 24–25), adding Patent Owner’s proposed combinations to Petitioner’s proposed combination renders the latter no more than an obvious selection from a finite number (here, three) of predictable solutions. The Federal Circuit has distinguished between circumstances where the challenger of a patent “merely throws metaphorical darts at a board filled with combinatorial prior art possibilities,” which is vulnerable to hindsight bias, and circumstances “where a skilled artisan merely pursues ‘known options’ from a ‘finite number of identified, predictable solutions,’” which evidences obviousness. In re Kubin, 561 F.3d 1351, 1359 (Fed. Cir. 2009) (quoting KSR, 550 U.S. at 421). We conclude that this case falls into the latter category. Patent Owner’s two combinations and Petitioner’s combination together constitute three rearrangements of the same elements, where each of those combinations is a predictable use of the elements for their intended purposes. Precisely how to arrange these known elements would have been an obvious matter of design choice. See also Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1331 (Fed. Cir. 2009) (“As the Supreme Court explained, if trying such a limited number of solutions ‘leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense.’” (quoting KSR, 550 U.S. at 421)).” slip op. at 22
- Prior constructionPrior construction adoptedDecided for patent owner
“term is necessary. Reply 3. Nevertheless, Petitioner argues that “[t]he claims . . . mean that the assemblages are based on types of metadata (for example, artist, album, genre, etc.), not the metadata (‘The Beatles,’ ‘Abby Road,’ ‘Here Comes the Sun,’ ‘Rock’) itself.” Id. at 11. In essence, Petitioner argues that the claims are directed to assemblages of files based on categories that might be included in metadata, although the files themselves might not include metadata. Petitioner’s position is contrary to the plain language of the claims, which recites that an assemblage is “based on . . . a first type of metadata included in the music files.” Moreover, consistent with the claim language, the ’295 patent describes creating assemblages from metadata contained within the files that store the audio data: A second type of assemblage includes recorded units with common identifying characteristics, sometimes referred to as common “metadata” values. “Metadata” values are typically in file header information of music files in many popular music file formats. Metadata values may include the artist, the composer, the type of music, and others. . . . For example, if an assemblage contains music files having a common composer metadata value of “Beethoven”, each time the assemblage is requested, a computer database program may search all the music files for the metadata value of “Beethoven” as the composer. In this manner, each time a new music file is recorded with “Beethoven” as the composer, it is automatically added to the assemblage. Ex. 1001, col. 7, ll. 21–44. In light of the claim language and the description in the specification, and consistent with the district court in the ’682/’295 patent litigation, we construe “an assemblage of music files based on a first type of metadata included in the music files” to mean “a first group of music files that is based on a first type of metadata that is located in the music file, which may be in the file header or elsewhere in the file.” We recognize the differences in the claim construction framework employed by district courts, but nevertheless are persuaded that the district court’s construction is the broadest reasonable interpretation.” slip op. at 11
- Skill levelOther
“B. The Level of Ordinary Skill in the Art The declarants for Petitioner and Patent Owner essentially agree that a person of ordinary skill in the art would have had a bachelor’s degree in electrical engineering and several years (e.g., three years) of experience with audio systems. Compare Declaration of Andrew B. Lippman (Ex. 1017, “Lippman Decl.”) ¶ 19, with Declaration of Dr. Robert L. Stevenson (Ex. 2026, “Stevenson Decl.”) ¶ 20.” slip op. at 12
Patent outcomesUS 8,364,295 unpatentableClaim construction§ 103 obviousnesscites KSRPatents in suitUS 8,364,295 - Sdi Technologies, Inc. v. Bose CorporationAll claims unpatentablePTAB · Nov 7, 2014 · IPR2013-00350 · APJ David C Mckone · IPR · Final written decision
Claims 1–21, 24, 27, 28, 30–48, 51, 54, 62, 63, 67–70, 73, 74, and 76 are unpatentable as obvious under §103.
RulingsFinal written decision- ExcludeMotion to exclude, grantedGranted in part
“from the Wayback Machine were found to be authenticated and not hearsay, the party proffering the printouts also offered proof of its accessibility. PO Mot. to Exclude 8–9. At the hearing, Patent Owner clarified that a standard affidavit from the Internet Archive would have provided sufficient authentication. See Tr. 87:4–21. The Internet Archive’s standard affidavit, however, merely attests to the general procedures of the Internet Archive and the general characteristics of archived web pages on the Wayback Machine and states that the particular web page is part of its records. Ex. 3004. As Petitioner points out, however, we can follow the URL reproduced in Irman Web Pages and verify that Irman Web Pages is part of the Internet Archive’s records. Pet. Opp. to Mot. to Exclude 8. Thus, Patent Owner’s argument reduces to the contention that Petitioner has not provided an affidavit from Internet Archive attesting to its general procedures. As the Keystone case explains, “[t]he Internet Archive has existed since 1996, and federal courts have regularly accepted evidence from the Internet Archive.” 2011 WL 6436210, at *9 n.9. At the hearing, counsel for Patent Owner was asked to explain why we should consider Irman Web Pages unreliable, and, specifically, why we should consider unreliable the indication that Irman Web Pages was archived on May 8, 1999. Tr. 81:13–22; 82:21–83:9; 85:13–86:9; see also Fed. R. Evid. 807. Patent Owner did not articulate anything about the document itself that would indicate unreliability. Instead, as indicated above, Patent Owner essentially contends that Petitioner committed a technical violation of the Rules of Evidence by not obtaining a standard affidavit from Internet Archive to show that “the web contents [were] available on that particular date.” See Tr. 83:1–2; 85:13– 86:9. Such an affidavit would not have added materially to the record for the reasons outlined above. Petitioner shows that the date on the Irman Web Pages facially appears authentic and is authenticated further by accessing the website. Patent Owner has not carried the burden on its motion to show that Irman Web Pages is not authentic. Therefore, we deny Patent Owner’s Motion to Exclude, with respect to Irman Web Pages.” slip op. at 17
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“construing “audio signal processing circuitry” to include amplifiers would render these two claims identical in scope. Petitioner points out, however, that, if audio signal processing circuitry includes amplifiers, it would be broader in scope than amplifiers, rather than commensurate in scope, rendering claim differentiation inapplicable. Reply 3. We agree with Petitioner; the doctrine of claim differentiation is not applicable here. Thus, we are persuaded that the claimed audio signal processing circuitry may include amplifiers. Further, Patent Owner’s additional arguments are unavailing. Patent Owner argues that the specification of the ’682 patent describes audio signal processing circuitry separately from powered speakers and that the specification uses the term audio signal processing circuitry to refer to techniques, such as bass and treble adjustments, used to modify an audio signal. PO Resp. 11–12 (citing the testimony of its declarant, Dr. Robert Stevenson, Ex. 2026 ¶¶ 78–81). The specification, however, does not distinguish between audio signal processing circuitry and powered speakers. Rather, the patent refers to a powered speaker as an abstract logical unit, while providing a more detailed description of a powered speaker that includes such features as audio signal processing circuitry 14, control electronics circuitry 16, and electroacoustical transducer 18. Ex. 1001, col. 3, ll. 28–35. In any event, Patent Owner has pointed to no disclosure that distinguishes amplifiers from audio signal processing circuitry.” slip op. at 11
- Prior constructionPrior construction adoptedDecided for patent owner
“In light of the claim language and the description in the specification, and consistent with the district court in the ’682/’295 patent litigation, we construe “an assemblage of music files based on a first type of metadata included in the music files” to mean “a first group of music files that is based on a first type of metadata that is located in the music file, which may be in the file header or elsewhere in the file.” We recognize the differences in the claim construction framework employed by district courts, but nevertheless are persuaded that the district court’s construction is the broadest reasonable interpretation.” slip op. at 14
- Skill levelOther
“B. The Level of Ordinary Skill in the Art The declarants for Petitioner and Patent Owner essentially agree that a person of ordinary skill in the art would have had a bachelor’s degree in electrical engineering and several years (e.g., three years) of experience with audio systems. Compare Declaration of Andrew B. Lippman (Ex. 1017, “Lippman Decl.”) ¶ 19, with Stevenson Decl., Ex. 2026 ¶ 20.” slip op. at 15
Patent outcomesUS 8,401,682 unpatentableClaim construction§ 103 obviousnesscites KSRPatents in suitUS 8,401,682 - Athena Automation Ltd. v. Husky Injection Molding Systems Ltd.Some claims unpatentablePTAB · Oct 23, 2014 · IPR2013-00290 · APJ Jennifer S Bisk · IPR · Final written decision
Claims 1, 4–16, and 20–22 are unpatentable as anticipated by Arend; claims 2, 3, 17, and 19 were not shown unpatentable, and the motion to amend was denied.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“We agree with Petitioner. We are not persuaded that the ’536 patent limits the required movement of the “rod that is movable” to axial movement of the entire rod. For its proposed construction, Patent Owner relies on figures and description from the ’536 patent that are explicitly described as exemplary embodiment or embodiments. PO Resp. 21 (citing Ex. 1001, Fig. 6C, 7B, 8B, 12:59–64); PO Resp. 26 (citing Ex. 1001, Fig. 7A, 10:26–30, 13:30–37). The ’536 patent, however, clearly identifies Figure 7A (and the rest of the figures), as well as the corresponding description, as exemplary embodiments of the invention, stating explicitly that “[r]eference herein to details of the illustrated embodiments is not intended to limit the scope of the claims.” Ex. 1001, 16:4–8; see also 7:20–25. The testimony of Patent Owner’s declarant, George Markus, is based on these same portions of the ’536 patent that describe exemplary embodiments. Ex. 2009 ¶¶ 34–38. Patent Owner does not, however, point us to any language of the ’536 patent that evidences a clear intention to limit the claims to an exemplary embodiment. Thus, we are not persuaded that the language in the specification pointed to by Patent Owner limits the scope of the term at issue here. See, e.g. Phillips, 415 F.3d at 1323 (“[A]lthough the specification often describes very specific embodiments of the invention, we have repeatedly warned against confining the claims to those embodiments.”); DSW v. Shoe Pavilion, 537 F.3d 1342, 1348 (Fed. Cir. 2008) (“[W]hen claim language is broader than the preferred embodiment, it is well-settled that claims are not to be confined to that embodiment.”).” slip op. at 17
- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageTerm construed petitioner constructionDisclaimer not foundDecided for petitioner
“We agree with Petitioner that Patent Owner’s proposed modifications improperly limit the claim terms. See Reply 6–9. Petitioner asserts, and we agree, that while the patent discloses that it is preferable to engage the lock member teeth in a lower flex zone, it does not restrict the invention to that situation. Id. at 7. For example, Mr. Markus admits that there is some benefit of reduced wear even if only some, but not all, of the teeth of the lock members engage in the relatively lower flex zone. Id. (citing deposition testimony of Patent Owner’s expert, Mr. Markus, Ex. 1011, 219:14–22, 222:2–12; 224:7–11, 225:12–25). Thus, a broader interpretation of the term “relatively higher flex zone” is also consistent with the ’536 patent’s stated objection to reduce wear. Even more telling, the ’536 patent itself states, in its description of an exemplary embodiment, “the complementary lock member 512 is lockably engaged with the lock member 510 at a position that is proximate, at least in part, to the zone 514.” Ex. 1001, 14:11–16 (emphasis added). We, therefore, are not persuaded that the ’536 patent “specifically disavows” engagement outside the relatively higher flex zone, as asserted by Patent Owner. See PO Resp. 36–37. To the contrary, we are persuaded that the ’536 patent explicitly contemplates that the teeth may, at least in part, not engage within the relatively higher flex zone. We also agree with Petitioner that the claim language does not require comparison of adjacent flex zones. Id. (citing Ex. 1011, 227:10–24, 230:10–231:3). While the word adjacent is recited in the claims (e.g., “the relatively lower flex zone of the platen being a portion of the platen adjacent to the rod”) it refers to a flex zone being adjacent the rod, not another flex zone. See Ex. 1011, 227:10–24. Patent Owner’s reliance on Figure 8D as supporting the proposed restriction does not persuade us otherwise. As discussed above, Figure 8D describes an exemplary embodiment, and Patent Owner does not point to any language indicating that the claims should be limited to this embodiment. We also are not persuaded by Patent Owner’s unexplained and unsupported statement that “[o]nly by comparing zones that are adjacent, can such location of the engagement [in the lower flex zone] be accurately pinpointed.” PO Resp. 38 (citing Ex. 2009 ¶¶ 45–47).5” slip op. at 22
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“member is engagable with the lock member within a relatively lower flex zone of the platen” (“the engagement limitation”).6 In the Decision to Institute, we adopted a broadest reasonable construction of this term encompassing the situation in which the complementary lock member and the lock member are capable of interlocking or meshing at least in part within or proximate to a relatively lower flex zone of the platen. Dec. to Inst. 10–12. Neither party explicitly addresses the broadest reasonable determine which is the relatively high flex zone and which is the relatively low flex zone.”). The other cited paragraphs are not related to the statement they are cited to support. See id. ¶¶ 46–47. Nor could we find, upon review of the complete declaration, any other support for Patent Owner’s assertion. 6 Independent claims 1 and 12 recite this limitation as quoted. Independent claim 18 includes a similar limitation, “engaging a lock member associated with the rod with a complementary lock member associated with the platen at a position located proximate to a relatively lower flex zone of the platen.” construction of this claim term in their post-institution briefing. We conclude that no additional construction of the term is necessary.” slip op. at 24
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“reference—in order to anticipate under 35 U.S.C. § 102—must not only disclose all elements of the claim within the four corners of the document, but must also disclose those elements arranged as in the claim.” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008) (internal quotation marks omitted). Accordingly, an anticipatory reference must show all of the limitations of the claims “arranged or combined in the same way as recited in the claims.” Id. at 1370; see Finisar Corp. v DirecTV Group, Inc., 523 F.3d 1323, 1334–37 (Fed. Cir. 2008); Ecolochem, Inc. v. Southern California Edison Co., 227 F.3d 1361 (Fed. Cir. 2000). Petitioner asserts that Choi’s teeth 38 correspond to the claimed lock member, teeth 48 correspond to the claimed complementary lock member, and tie bar 20 corresponds to the claimed rod. Pet. 36. In addition, according to Petitioner, Choi’s securing/clamping assembly 22 corresponds to the claimed clamp assembly. Id. Petitioner reasons that these elements of Choi are part of the machine disclosed in Glaesener because of the following sentence: “The tie-bar nuts can be secured to the rear wall 16 by any appropriate mechanism, such as the pineapple and toothed-ring mechanism described in [Choi].” Pet. 25, 36. Petitioner, however, does not explain how the relied upon elements of Choi’s device secure the tie-bar nuts of Glaesener to rear wall 16 of Glaesener’s platen. In fact, Petitioner does not direct us to any disclosure in Choi of tie-bar nuts or their equivalent. See Pet. 32–41. Moreover, there is no dispute that Choi does not use the term “pineapple and toothed-ring mechanism.” Tr. 16:7–10. And Petitioner does not provide persuasive evidence as to what part of Choi is included in the term “pineapple and toothed-ring mechanism.” See Tr. 16:7–12 (arguing for the first time that what “pineapple and tooth mechanism” in Glaesener refers to is Figure 3A in Choi with no reference to the record); Tr. 60:14–22 (explaining that Petitioner does not provide evidence of what the pineapple and toothed-ring mechanism is). Without such explanation and supporting evidence, we are not persuaded that Petitioner has met its burden to show that the various portions of Choi and Glaesener, on which it relies, are combined in the same way as recited in the challenged claims. See Lindemann Maschinenfabrik GMBH v. American Hoist & Derrick Co., 730 F.2d 1452, 1458 (Fed. Cir. 1984) (holding that although the prior art reference could be said to contain all of the elements of the claimed invention, it did not anticipate under 35 U.S.C. § 102 because it “disclose[d] an entirely different device, composed of parts distinct from those of the claimed invention, and operating in a different way to process different material differently.”). The Federal Circuit has expressly warned against treating patent “claims as mere catalogs of separate parts” without regard for the “part-to-part relationships set forth” therein. NetMoneyIN, 545 F.3d at 1370 (quoting Lindemann, 730 F.2d at 1459).” slip op. at 30
Patent outcomesUS 7,670,536 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites PhillipsPatents in suitUS 7,670,536 - Target Corporation v. Destination Maternity CorporationInstitution deniedPTAB · Sep 25, 2014 · IPR2014-00509 · APJ Michael J Fitzpatrick · IPR · Institution
The Board denied institution because the petition was filed more than one year after Target was served with an infringement complaint, barring review under § 315(b).
RulingsInstitution decision- PTAB / AIA Trials › §315(b) time barInstitution denied time barDenied
“The instant Petition, accorded a filing date of March 14, 2014, was filed more than one year after Petitioner was served with the complaint alleging infringement of the ’531 patent. See Paper 5. We may not institute an inter partes review when “the petition . . . is filed more than 1 year after the date on which the petitioner, . . . is served with a complaint alleging infringement of the patent.” 35 U.S.C. § 315(b). Section 315(b) further states this “time limitation . . . shall not apply to a request for joinder under subsection (c).” Id. Thus, it does not apply to a person’s request to “join as a party to that [i.e., a previously instituted] inter partes review.” 35 U.S.C. § 315(c).2 However, the time limitation does apply to that person’s petition.” slip op. at 3
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“filed more than one year after Petitioner was served with the complaint alleging infringement of the ’531 patent. See Paper 5. We may not institute an inter partes review when “the petition . . . is filed more than 1 year after the date on which the petitioner, . . . is served with a complaint alleging infringement of the patent.” 35 U.S.C. § 315(b). Section 315(b) further states this “time limitation . . . shall not apply to a request for joinder under subsection (c).” Id. Thus, it does not apply to a person’s request to “join as a party to that [i.e., a previously instituted] inter partes review.” 35 U.S.C. § 315(c).2 However, the time limitation does apply to that person’s petition.” slip op. at 3
Discretionary denial - Handi Quilter, Inc. / Tacony Corporation v. Bernina International AGAll claims unpatentablePTAB · Sep 25, 2014 · IPR2013-00364 · APJ Michael J Fitzpatrick · IPR · Final written decision
Claims 1, 2, 5–7, 10, 12, 13, 17–21, 23–29, 31, 33, and 34 are unpatentable as anticipated by Watabe or obvious over Watabe and Reed.
RulingsFinal written decision- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportReference is prior artDecided for petitioner
“To show prior invention, Patent Owner must show that either (1) Mr. Koerner reduced his invention to practice before October 8, 2002, or (2) he conceived of the invention before October 8, 2002, and exercised reasonable diligence in reducing that invention to practice. See Teva Pharm. Indus. Ltd. v. AstraZeneca Pharms. LP, 661 F.3d 1378, 1383 (Fed. Cir. 2011). Patent Owner argues the latter. PO Resp. 5. Thus, Patent Owner must prove both prior conception and reasonable diligence. Teva, 661 F.3d at 1383.” slip op. at 8
- BurdenUnpatentable
“We are not persuaded by Patent Owner’s argument. Watabe discloses and illustrates a sewing machine (Ex. 1004, Fig. 1), and specifically discusses the mechanics of the needle during sewing. Id. at ¶ 11. A sewing machine needle inherently is capable of stitching through two layers, so as to sew them together. Further, none of the claims limits the thickness or hardness of the layers (or fabric) to be stitched. Thus, if a sewing machine is capable of inserting a stitch into a single layer of a fabric material (which is beyond dispute), it necessarily is capable of inserting a stitch into two layers of that same material, if each layer is half as thick as the single layer.” slip op. at 20
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“We are not persuaded by Patent Owner’s argument. Watabe discloses and illustrates a sewing machine (Ex. 1004, Fig. 1), and specifically discusses the mechanics of the needle during sewing. Id. at ¶ 11. A sewing machine needle inherently is capable of stitching through two layers, so as to sew them together. Further, none of the claims limits the thickness or hardness of the layers (or fabric) to be stitched. Thus, if a sewing machine is capable of inserting a stitch into a single layer of a fabric material (which is beyond dispute), it necessarily is capable of inserting a stitch into two layers of that same material, if each layer is half as thick as the single layer.” slip op. at 20
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“In asserting unpatentability over Watabe and Reed, Petitioner does not propose modifying the Watabe sewing machine in view of Reed. Rather, Petitioner relies on Reed for providing an express teaching to the person of ordinary skill in the art that the Watabe prior art-sewing machine can be used to stitch together multiple layers of fabric such as in quilting. Pet. 31. Patent Owner argues against Petitioner’s obviousness ground by asserting that Reed and Watabe “are not combinable” because “Reed is an older reference that teaches the use of a movable sewing machine and hand controls for stitching in ‘free-hand quilting.’” PO Resp. 25. Patent Owner further states that “the Board’s Decision recognizes that there is no effort to demonstrate that Reed’s sewing machine is interchangeable with Watabe’s sewing machine, and there is nothing in Watabe or Reed to suggest that they could be combinable.” Id. at 26. Patent Owner’s arguments are not responsive to Petitioner’s application of Watabe and Reed to the claims. Petitioner does not argue for physically combining the Watabe and Reed prior art-machines or modifying either of them in view of the other. Petitioner relies on Reed for providing an express teaching to the person of ordinary skill in the art that the Watabe prior art-sewing machine can be used to stitch together multiple layers of fabric. Pet. 31. Petitioner’s reasoning is persuasive, and it has demonstrated, by a preponderance of the evidence, that claims 1, 2, 5–7, and 23–27 would have been obvious over Watabe and Reed. more planar layers located beneath said stitch head.” See Dec. 20 (quoting Ex. 1001, claims 23 and 1). Thus, a teaching of actually penetrating multiple layers is not required to meet claims 1, 2, and 5–7.” slip op. at 25
Patent outcomesUS 6,883,446 unpatentable§ 102 anticipation§ 103 obviousnessPatents in suitUS 6,883,446 - PTAB · Sep 12, 2014 · IPR2013-00555 · APJ Christopher L Crumbley · IPR · Order
The Board granted the parties’ joint motions and terminated the five inter partes reviews without issuing final written decisions.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“Based on the present record, we determine that it is appropriate to terminate these inter partes reviews both as to Sealed Air and Pregis without rendering a final written decision. See 35 U.S.C. § 317(a); 37 C.F.R. § 42.72.” slip op. at 3
None - PTAB · Sep 12, 2014 · IPR2013-00557 · APJ Christopher L Crumbley · IPR · Order
The Board granted the parties’ joint motions and terminated the five related inter partes reviews without a final written decision.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“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.” In these proceedings, the Board instituted trial on March 6, 2014 (Paper 13), but has not yet reached a decision on the merits with respect to the patentability of any involved claim. Accordingly, the requirement for terminating the reviews with respect to Sealed Air, as Petitioner, is met.” slip op. at 2
NonePatents in suitUS 7,047,705 - PTAB · Sep 12, 2014 · IPR2013-00554 · APJ Christopher L Crumbley · IPR · Order
The Board granted the parties’ joint motions and terminated the five inter partes reviews without a final written decision.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“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.” In these proceedings, the Board instituted trial on March 6, 2014 (Paper 13), but has not yet reached a decision on the merits with respect to the patentability of any involved claim. Accordingly, the requirement for terminating the reviews with respect to Sealed Air, as Petitioner, is met. Also under 35 U.S.C. § 317(a), “[i]f 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).” Sealed Air is the sole Petitioner. The Board, therefore, has discretion to terminate these reviews with respect to Pregis. In their joint motions, the parties contend that the trials are at a “sufficiently early stage,” as Sealed Air has not yet filed its Replies to Pregis’ Patent Owner Responses, and no motions are outstanding at this time. Paper 45, 2-3. The parties also note that they have agreed to dismiss the co-pending district court action Pregis Innovative Packaging, Inc. v. Sealed Air Corporation (D. Del. Civil Action No. 13-1084-LPS), involving the patents and parties before us here. Id.” slip op. at 2
None - PTAB · Sep 12, 2014 · IPR2013-00556 · APJ Christopher L Crumbley · IPR · Order
The Board granted the joint motions and terminated the five inter partes reviews without a final written decision.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“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.” In these proceedings, the Board instituted trial on March 6, 2014 (Paper 13), but has not yet reached a decision on the merits with respect to the patentability of any involved claim. Accordingly, the requirement for terminating the reviews with respect to Sealed Air, as Petitioner, is met. Also under 35 U.S.C. § 317(a), “[i]f 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).” Sealed Air is the sole Petitioner. The Board, therefore, has discretion to terminate these reviews with respect to Pregis. In their joint motions, the parties contend that the trials are at a “sufficiently early stage,” as Sealed Air has not yet filed its Replies to Pregis’ Patent Owner Responses, and no motions are outstanding at this time. Paper 45, 2-3. The parties also note that they have agreed to dismiss the co-pending district court action Pregis Innovative Packaging, Inc. v. Sealed Air Corporation (D. Del. Civil Action No. 13-1084-LPS), involving the patents and parties before us here. Id. 1 Unless otherwise noted, citations are to the record of IPR2013-00554; similar papers may be found in the records of the other related proceedings. Based on the present record, we determine that it is appropriate to terminate these inter partes reviews both as to Sealed Air and Pregis without rendering a final written decision. See 35 U.S.C. § 317(a); 37 C.F.R. § 42.72.” slip op. at 2
NonePatents in suitUS 6,607,803
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.