- Avx Corporation v. Greatbatch LtdAll claims unpatentablePTAB · Dec 30, 2015 · IPR2014-01361 · APJ Jon B Tornquist · IPR · Final written decision
Claims 1–43 are unpatentable under § 103; proposed substitute claims 44 and 45 are not shown patentable, and the Second Motion to Amend is denied.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“In our Decision on Institution, we discussed the meaning of the transitional phrase “consisting essentially of,” but otherwise found that no claim terms required express construction. Dec. on Inst. 4. In its Second Motion to Amend, Patent Owner does not dispute our interpretation of “consisting essentially of,” or propose constructions for any additional claim terms. Upon review of Patent Owner’s evidence and arguments, we conclude that no explicit constructions are required in order to resolve the issues pending before the Board.” slip op. at 6
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, deniedDenied
“establishing that it is entitled to add proposed substitute claims 44 and 45. 37 C.F.R. § 42.20(c). As part of this showing, Patent Owner must demonstrate (1) the amendment responds to a ground of unpatentability involved in the trial; (2) the amendment does not seek to enlarge the scope of the claims of the patent or introduce new subject matter; (3) the amendment proposes a reasonable number of substitute claims; and (4) the proposed claims are supported in the original disclosure. 37 C.F.R. § 42.121. Upon review of the Second Motion to Amend, we are persuaded that the requirements of 37 C.F.R. § 42.121 have been met. For example, Patent Owner seeks to add only two substitute claims, each of which serves to narrow the scope of original claim 18. Mot. 17–18. Patent Owner also identifies exemplary electrolytes disclosed in the originally-filed application that fall within the scope of proposed substitute claims 44 and 45. Id. at 9 (citing Ex. 1010, 33, 35–36 (disclosing an electrolyte containing ethylene glycol, water, isobutyric acid, and ammonium hydroxide (which results in an ammonium salt of the organic acid) with a pH of 4.9, a conductivity of 7.1 mS/cm, and an anode breakdown voltage of 395 volts)). Thus, we focus on whether Patent Owner has met its burden of proof to show that proposed substitute claims 44 and 45 are patentable over the prior art of record.” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundNot shown unpatentable
“Clark, however, discloses successfully substituting acetic acid in an electrolyte solution with “other low molecular weight paraffin acids,” including butyric, propionic, and lactic acids, as well as forming corresponding ammonium salts of these organic acids. Ex. 1003, 2:40–46, 3:46–61. Likewise, GB 466,193 broadly discloses that acetic acid may be replaced in an electrolyte solution with organic acids of the aliphatic series, including butyric acid and isobutyric acid. Ex. 1015, 3:73–79. In its Second Motion to Amend, Patent Owner does not point to any persuasive evidence to support or explain why a person of ordinary skill in the art would not have considered isobutyric acid, as implied in Clark and expressly identified in GB 466,193, to be a suitable substitute for acetic acid in the electrolyte of Shah. Indeed, similar to the disclosures of Clark and GB 466,193, the ’117 patent discloses that “other relatively weak organic acids of the general formula cnH2+nO2 (where n=2 to 7) are acceptable.”9 Thus, we are not persuaded that Shah, Clark, and GB 466,193 fail to teach or suggest every limitation of proposed substitute claim 44.” slip op. at 10
- Obviousness (§103) › Objective indicia / secondary considerations › Unexpected resultsObjective indicia no nexusNot shown unpatentable
“1 of Shah is ten times higher than electrolyte 2 of the ’117 patent, and the resulting conductivity (47.5 mS/cm) is 6.7 times higher than that of electrolyte 2 of the ’117 patent (7.1 mS/cm). First Mot. to Amend 9 (Table 3); Ex. 1001, 2:14–16 (confirming that the ammonium salt “provides electrical conductivity” in the electrolyte). Given the disclosure of Evans that anode breakdown voltage decreases with increasing conductivity (conductivity being the inverse of resistivity), Patent Owner does not explain persuasively why the 150 volt difference in anode breakdown voltage between electrolyte 1 of Shah and electrolyte 2 of the ’117 patent is “contrary to” the teachings of Evans. First Mot. to Amend 9 (Table 3),11; Ex. 2004, 3 (Figure 4). Nor does Patent Owner explain why a person of ordinary skill in the art could not use the disclosure of Evans to modify the resistivity of the electrolyte of Shah, Clark, and GB 466,193 to obtain an anode breakdown voltage within the 370 to 400 volt range of proposed substitute claim 45. Thus, we are not persuaded that the 150 volt difference between electrolyte 1 of Shah and electrolyte 2 of the ’117 patent is nonobvious or surprising. Patent Owner also contends that if acetic acid was equivalent to isobutyric acid, such that it could be replaced interchangeably, “a substantially similar anode breakdown voltage would have been achieved in both Shah’s electrolyte and the ’117 Patent electrolyte, both of which have almost identical pH~4.9.” First Mot. to Amend 11. We note, however, that, as set forth in Table 3 above, electrolyte 1 of Shah has a conductivity that is 6.7 times higher than electrolyte 2 of the ’117 patent, as well as ten times the ammonium constituent, two and a half times the acid constituent, half the ethylene glycol, and five times the phosphoric acid as compared to electrolyte 2 of the ’117 patent. In view of the wide difference in constituents and resulting conductivity levels between the two electrolytes, and in view of the teaching of Evans that anode breakdown voltage depends on the resistivity of the electrolyte, Patent Owner provides insufficient argument or evidence to explain why one of ordinary skill in the art would expect that “[i]f acetic acid were equivalent to isobutyric acid . . . a substantially similar anode breakdown voltage would have been achieved in both Shah’s electrolyte and the ’117 patent electrolyte . . . .” First Mot. to Amend 11. Accordingly, even if arguments made in the First Motion to Amend were considered, we would still not be persuaded that proposed substitute claim 45 is patentable over the prior art. Thus, we are not persuaded that Patent Owner has carried its burden to demonstrate, by a preponderance of the evidence, that proposed substitute claim 45 is patentable over the prior art of record.” slip op. at 16
Patent outcomesUS 6,687,117 unpatentableClaim construction§ 103 obviousnesscites KSRPatents in suitUS 6,687,117 - PTAB · Dec 29, 2015 · IPR2015-01499 · APJ Michael R Zecher · IPR · Institution
The Board denied institution because the Petition did not show a reasonable likelihood that claims 1–9 were obvious over Satou and Noguchi.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“5. Summary Based on the record before us, SDC has not demonstrated a reasonable likelihood that it would prevail on its assertion that claims 1–9 would have been obvious over the combination of Satou and Noguchi because SDC does not provide a sufficient rationale to combine the respective teachings of these asserted references. III. CONCLUSION Taking into account the arguments presented in Gold Charm’s Preliminary Response, we conclude that the information presented in the Petition does not demonstrate that there is a reasonable likelihood that SDC would prevail in challenging claims 1–9 of the ’534 patent as unpatentable under § 103(a). IV. ORDER In consideration of the foregoing, it is ORDERED that the Petition is DENIED and no trial is instituted.” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“On the present record, we are not persuaded that SDC has articulated a sufficient rationale to combine the teachings of Satou and Noguchi. With respect to SDC’s assertion that the teachings of Satou and Noguchi are capable of being combined because both of these references solve the same problem using essentially the same structure, this assertion, at best, indicates that Satou and Noguchi are analogous art to each other. Merely asserting that these prior art references are analogous art to each other, however, does not suffice as an articulated reason with a rational underpinning to combine their respective teachings—more is required to support the legal conclusion of obviousness. See KSR, 550 U.S. at 418. With respect to SDC’s assertion that one of ordinary skill in the art would have implemented components of Satou’s active matrix substrate in accordance with the configurations taught by Noguchi, this assertion lacks a convincing rationale as to why one of ordinary skill in the art would have looked to Noguchi for guidance as to how these components disclosed in Satou should be re-configured in the manner required by independent claim 1. Based on this assertion, we understand SDC to argue that the components disclosed in Satou’s active matrix substrate account for all the features required by independent claim 1, but these components are not configured in the same manner required by this claim. We further understand SDC to argue that one of ordinary skill in the art would have looked to the configurations taught by Noguchi in order to achieve the particular configuration of features required by independent claim 1. Without engaging in impermissible hindsight reconstruction, it is not clear to us why one of ordinary skill in the art would have looked to the configurations taught by Noguchi, especially given that, according to SDC, Noguchi solves the same problem as Satou using essentially the same structure. See Grain Processing Corp. v. Am.-Maize Prods. Co., 840 F.2d 902, 907 (Fed. Cir. 1988) (quoting Orthopedic Equip. Co. v. United States, 702 F.2d 1005, 1012 (Fed. Cir. 1983)) (“Care must be taken to avoid hindsight reconstruction by using ‘the patent in suit as a guide through the maze of prior art references, combining the right references in the right way so as to achieve the result of the claims in suit.”’).” slip op. at 15
- Expert testimonyPetitioner expert discountedDecided for patent owner
“We also are not persuaded by the supporting testimony of Mr. Credelle regarding SDC’s rationale to combine the teachings of Satou and Noguchi because it essentially repeats the arguments advanced by SDC in its Petition. Compare Pet. 38–40, with Ex. 1006 ¶¶ 76, 77. For instance, Mr. Credelle testifies that one of ordinary skill in the art would have combined the teachings of Satou and Noguchi because they solve the same problem using essentially the same structure. Ex. 1006 ¶ 76 (citing Ex. 1003, 1:52– 56; Ex. 1004, 2:38–41). Similar to our explanation above, simply demonstrating that these prior art references are analogous art to each other does not suffice as an articulated reason with a rational underpinning to combine their respective teachings—more is required to support the legal conclusion of obviousness. See KSR, 550 U.S. at 418. Mr. Credelle also testifies that one of ordinary skill in the art would have implemented components of Satou’s active matrix substrate in accordance with the configurations taught by Noguchi. Ex. 1006 ¶ 76. Similar to our explanation above, without engaging in impermissible hindsight reconstruction, it is not clear to us why one of ordinary skill in the art would have looked to the configurations taught by Noguchi, especially given that, according to SDC, Noguchi solves the same problem as Satou using essentially the same structure. See Grain Processing, 840 F.2d at 907.” slip op. at 17
§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,211,534 - PTAB · Dec 28, 2015 · IPR2015-01479 · APJ Charles J Boudreau · IPR · Institution
The Board denied institution on all challenged claims because the Petition did not show a reasonable likelihood of prevailing on any asserted ground.
RulingsInstitution decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“We agree with Patent Owner that “[t]he use of the term ‘backlight’ rather than simply ‘light’ indicates that something is being illuminated from behind.” Id. at 28. Petitioner’s proposed constructions (Pet. 13–16) are unreasonably broad insofar as they do not account for the use of the term “backlight.” We also agree with Patent Owner (see id.) that it is clear in the context of the ’833 patent that the recited backlights are in a liquid crystal display apparatus. See Toro Co. v. White Consol. Indus. Inc., 199 F.3d 1295, 1301 (Fed. Cir. 1999) (words used in a claim are not construed in a “lexicographic vacuum, but in the context of the specification and drawings”); In re Marosi, 710 F.2d 799, 802 (Fed. Cir. 1983) (“[C]laims are not to be read in a vacuum, and limitations therein are to be interpreted in light of the specification in giving them their ‘broadest reasonable interpretation.’” (emphasis omitted) (quoting In re Okuzawa, 537 F.2d 545, 548 (CCPA 1976)). Petitioner, and its expert Dr. Silzars, recognize in their statements regarding the level of ordinary skill in the art that the relevant art here is “display technologies.” See Pet. 12; Ex. 1002 ¶ 13. Notably, however, despite Petitioner’s assertions and Dr. Silzars’ opinions that “[t]he alleged invention boils down to a method for minimizing the electrical noise generated when simultaneously driving multiple lights,” that the “‘liquid crystal display’ modifier” in the preambles of the challenged claims “merely states a purpose or intended use of the invention” (Pet. 20–22; Ex. 1002 ¶¶ 58–59), and that “there is no structure that is specific to LCDs recited in the body of any of the claims,” neither Petitioner nor Dr. Silzars identifies any context in which backlights would be employed by those of ordinary skill in the art of display technologies, other than in an LCD. Accordingly, on this record and for purposes of this Decision, we determine that the broadest reasonable interpretation of the term “backlight” is “a lamp or set of lamps that illuminates a liquid crystal display from behind.” Because the claims already explicitly define the relationship between the “first backlight” and the “second backlight”—for example, claim 1 recites, in relevant part, that the second backlight is “driven simultaneously with said first backlight” and “ha[s] an oscillation wave whose phase is inverted with respect to an oscillation wave of the first backlight”—we discern no need to provide separate interpretations of “first backlight” and “second backlight.” We also decline to adopt Patent Owner’s proposal to limit the “second backlight” to include “all remaining lamps of the . . . apparatus that are not in the first backlight.” Because independent claims 1 and 16 use the open-ended transitional phrase “comprising,” those claims do not exclude additional, unrecited elements and method steps, respectively. See Manual of Patent Examining Procedure § 2111.03 (9th ed., Rev. 07.2015 Nov. 2015). 2. Other Claim Terms For purposes of this Decision, no other claim terms require express interpretation. Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“claim terms need only be construed ‘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))).” slip op. at 10
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)
“B. Anticipation and Obviousness “A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). The elements must be arranged as required by the claim, but this is not an ipsissimis verbis test. In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). [U]nless a reference discloses within the four corners of the document not only all of the limitations claimed but also all of the limitations arranged or combined in the same way as recited in the claim, it cannot be said to prove prior invention of the thing claimed[,] and thus, cannot anticipate under 35 U.S.C. § 102. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008); accord In re Arkley, 455 F.2d 586, 587 (CCPA 1972). Moreover, “it is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom.” In re Preda, 401 F.2d 825, 826 (CCPA 1968).” slip op. at 12
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)
“A patent claim is unpatentable under 35 U.S.C. § 103(a) if the differences between the claimed subject matter 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.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations, including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of skill in the art; and (4) objective evidence of nonobviousness, i.e., secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). We analyze the asserted grounds with the principles identified above in mind.” slip op. at 13
- PTAB / AIA Trials › Real party in interest / privityNot reached
“D. Remaining Contentions The above determination makes it unnecessary to resolve any other disputes, including Patent Owner’s assertion that Petitioner failed to list all of the real parties in interest. See Prelim. Resp. 4–14; Petitioners’ Reply to Patent Owner’s Preliminary Response, Paper 9; Patent Owner’s Sur-Reply to Petitioners’ Reply, Paper 10.” slip op. at 33
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,417,833 - Microsoft Corporation v. Bradium Technologies LLCInstitution deniedPTAB · Dec 23, 2015 · IPR2015-01434 · APJ Brian J Mcnamara · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of prevailing on any challenged claim under the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“to institute an inter partes review of claims 1–20 (the “challenged claims”) of U.S. Patent No. 7,908,343 B2 (“the ’343 Patent”). 35 U.S.C. § 311. Bradium Technologies LLC (“Patent Owner”) timely filed a Preliminary Response, Paper 12 (“Prelim. Resp.”), contending that the Petition should be denied as to all challenged claims. We have jurisdiction under 37 C.F.R. § 42.4(a) and 35 U.S.C. § 314, which provides that an inter partes review may not be instituted unless the information presented in the Petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.”” slip op. at 2
- BurdenOther
“map each claim element to a particular teaching of an asserted reference. In particular, Patent Owner notes that, rather than state the claim language in the Petition, Petitioner provides Exhibit 1013, which breaks the claims into specific phrases and assigns each phrase a designation, e.g., 1.A, 1.B. Prelim. Resp. 32. Patent Owner argues that Petitioner’s approach improperly incorporates the claims by reference and that no relief can be granted unless the arguments in the Petition itself, of which the claims are an essential part, support granting the relief. Id. at 33. We agree that Petitioner’s use of an Exhibit to specify the claim elements and its failure to include the claim language anywhere in the Petition is an improper incorporation by reference. Nevertheless, although the claim language is not repeated in the Petition, the Petition contains a paragraph for most, if not all the claim element designations. Therefore, we do not dismiss the Petition on this basis alone.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther
“specification, neither “data parcel” nor “update data parcel” is defined explicitly in the ’343 Patent. The ’343 Patent refers to “source image data” being processed to obtain a series of K1-N derivative images of progressively lower image resolution. Ex. 1001, col. 6, ll. 6–6. The ’343 Patent also discloses the source image data corresponding to the series image K0 being subdivided into a regular array such that each resulting “image parcel” of the array has, for example, 64 by 64 pixel resolution, where the “image data” has a color or bit per pixel depth of 16 bits, which represents a “data parcel” size of 8 K bytes. Ex. 1001, col. 6, ll. 6–11. Thus, an image parcel is an element of a source image array that defines a source image and a data parcel is data that corresponds to an image parcel. In view of this disclosure, we construe “data parcel” to mean data that corresponds to an element of a source image array. We agree that no other specific claim construction is required and we accord the claim terms their ordinary meaning as used in the ’343 Patent specification.” slip op. at 9
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference is prior artReference not prior artMixed
“REFERENCES ARGUED AS NOT APPLICABLE PRIOR ART Patent Owner contends that Petitioner has failed to demonstrate that Potmesil (Ex. 1002) and Lindstrom (Ex. 1004) constitute applicable prior art references. Prelim. Resp. 3–12. We addressed the same arguments as those advanced by Patent Owner in this proceeding in our Decision to Institute in related proceeding Microsoft Corp. v. Bradium Technologies LLC, Case IPP2015-01432, slip op. at 10–14 (PTAB Dec. 23, 2015)(Decision to Institute)3 and Microsoft corp. v. Bradium Technologies LLC, Case IPR2015-01435, slip op. at 8–16 (PTAB Dec. XX, 2015)4. We arrive at the same result in this proceeding and find that, although Petitioner has established that Potmesil is applicable as prior art, Petitioner has not established Lindstrom is prior art that may be applied in Petitioner’s challenge.” slip op. at 9
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,908,343 - Microsoft Corporation v. Bradium Technologies LLCInstitution deniedPTAB · Dec 23, 2015 · IPR2015-01435 · APJ Minn Chung · IPR · Institution
The Board denied institution on all challenged claims because Petitioner did not show a reasonable likelihood of proving any claim unpatentable on the asserted grounds.
RulingsInstitution decision- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“Whether a reference qualifies as a “printed publication” involves a case-by-case inquiry into the facts and circumstances surrounding the reference’s disclosure to members of the public. In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). The key inquiry is whether the reference was made “sufficiently accessible to the public interested in the art” before the critical date. In re Lister, 583 F.3d 1307, 1311 (Fed. Cir. 2009) (quoting In re Cronyn, 890 F.2d 1158, 1160 (Fed. Cir. 1989)). A reference is considered “publicly accessible” upon a satisfactory showing that the 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.” Kyocera Wireless Corp. v. ITC, 545 F.3d 1340, 1350 (Fed. Cir. 2008) (citation and internal quotation marks omitted). Often, the determination of public accessibility turns on whether a reference is indexed and catalogued in a meaningful way. For example, an uncatalogued and unshelved thesis in a university library, notwithstanding its accessibility to a graduate committee, was not sufficiently accessible to the public to constitute a printed publication within the meaning of 35 U.S.C. § 102(b) because the “thesis could have been located in the university library only by one having been informed of its existence by the faculty committee, and not by means of the customary research aids available in the library.” In re Bayer, 568 F.2d 1357, 1361–62 (CCPA 1978). In contrast, a dissertation shelved in the stacks and indexed in the catalog at a university library was found to be a printed publication. In re Hall, 781 F.2d 897, 898–99 (Fed. Cir. 1986). However, indexing and cataloging must be prepared in a “meaningful” way, e.g., in relationship to the subject matter of the references, to allow an interested researcher exercising reasonable diligence to locate the prior art. See Cronyn, 890 F.2d at 1161.” slip op. at 9
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Ex. 1001, col. 12, ll. 47–52; col. 13, ll. 55–60; col. 14, ll. 57–62. For claim 1, Petitioner identifies this limitation as elements 1.H, 1.I, and 1.J.8 Ex. 1012, 1. Petitioner treats these elements separately as if they are three distinct limitations, each describing or capturing a discrete feature or concept. See Pet. 44–45. As discussed below, Petitioner’s analysis is fundamentally flawed because the common limitation set forth above must be considered as a whole. The reason is that the limitation captures a single concept described in the Specification—a concept that can be understood only when the limitation is considered as a whole. Petitioner’s omission of the actual claim language in its analysis and using the labels (e.g., claim elements 1.H, 1.I, or 1.J) in place of the claim language obscures the problem underlying Petitioner’s approach and reinforces the erroneous impression that the Petitioner-identified elements are separate and distinct limitations.” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Petitioner does not explain adequately the reasons to combine the references to teach elements 1.H, 1.I, and 1.J. An invention “composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.” KSR, 550 U.S. at 418. Petitioner must also show that there was a reason to combine those elements to achieve the claimed invention with a reasonable expectation of success. See PAR Pharm., Inc. v. TWi Pharms., Inc., 773 F.3d 1186, 1193 (Fed. Cir. 2014). First, we note that not all combinations elements 1.H and 1.I satisfy element 1.J, “such that each image parcel being of a fixed byte size.” For example, if the resolution increased by a factor of two while the array subdivision decreased by a factor of two from one image to the next in the series of images, the byte size of the image parcels would increase by a factor of four. In another example, reducing the resolution by a factor of four while reducing the array subdivision by a factor of eight would increase the byte size of the image parcels by a factor of two. In both examples, elements 1.H and 1.I would be satisfied but not element 1.J because each image parcel of the two successive images would not be of a fixed size as required by the claim. Hence, in order to show that the combination of Rutledge, Ligtenberg, and Cooper teaches the claimed feature of elements 1.H, 1.I, and 1.J, Petitioner must show how a person of ordinary skill would be motivated to combine the references to teach varying the resolution and array subdivision in a specific way, e.g., both decreasing by a factor of four, “such that each image parcel [is] of a fixed byte size.”” slip op. at 23
- Expert testimonyPetitioner expert discountedDecided for patent owner
“testifies that “[s]ince each tile in a layer has the same size (‘fTileSize’) . . . it would be obvious that each image parcel could have the same fixed byte size.” Ex. 1009 ¶ 218. However, the cited portion in column 13 of Ligtenberg appears to be a listing of C language source code, which shows that “fTileSize” is a variable for storing 16-bit integer values. See Ex. 1005, col. 13, ll. 30–37 (“UInt16 fTileSize;”). Dr. Michalson does not cite any disclosure in Ligtenberg that requires this value to remain constant for all layers of resolution. Instead, Dr. Michalson asserts that “it would be obvious that each image parcel could have the same fixed byte size” because “using a fixed size . . . could improve predictability of the system” by making “the caching process more straightforward.” Ex. 1009 ¶ 218 (emphases added). However, “obviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.” Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. Nov. 5, 2015) (citing InTouch Technologies, Inc. v. VGO Communications, Inc., 751 F.3d 1327, 1352 (Fed. Cir. 2014)). Dr. Michalson justifies his “could have” reasoning by making an analogy to stacking cubic boxes of the same size in a room. Ex. 1009 ¶ 218. We are not persuaded by Dr. Michalson’s testimony because it is conclusory and provides insufficient explanation why a person of ordinary skill would have modified Ligtenberg to teach the claimed feature, i.e., each image parcel having the same byte size for any resolution layer or across all resolution layers. The lack of adequate reasoning in Dr. Michalson’s testimony indicates that Dr. Michalson relies on impermissible hindsight. See KSR, 550 U.S. at 421 (“A factfinder should be aware, of course, of the distortion caused by hindsight bias and must be cautious of arguments reliant upon ex post reasoning.”); Plantronics, Inc. v. Aliph, Inc., 724 F.3d 1343, 1354 (Fed. Cir. 2013) (“Where, as here, the necessary reasoning is absent, we cannot simply assume that ‘an ordinary artisan would be awakened to modify prior art in such a way as to lead to an obviousness rejection.’ It is in such circumstances, moreover, that it is especially important to guard against the dangers of hindsight bias.” (citation omitted)); ActiveVideo Networks, Inc. v. Verizon Communications, Inc., 694 F.3d 1312, 1327 (Fed. Cir. 2012) (“[T]he expert’s testimony on obviousness was essentially a conclusory statement that a person of ordinary skill in the art would have known, based on the ‘modular’ nature of the claimed components, how to combine any of a number of references to achieve the claimed inventions. This is not sufficient and is fraught with hindsight bias.”). Therefore, we are not persuaded that Petitioner has demonstrated Ligtenberg teaches element 1.J, “such that each image parcel being of a fixed byte size,” as recited in claim 1.” slip op. at 22
§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,924,506 - Geox S.P.A. v. Outdry Technologies CorporationAll claims unpatentablePTAB · Dec 18, 2015 · IPR2014-01244 · APJ Donna M Praiss · IPR · Final written decision
Claims 1–15 are unpatentable as obvious under § 103(a); the motion to amend claims 16 and 17 is denied for failure to establish written-description support and patentability.
RulingsFinal written decision- Skill levelSkill level board ownOther
“difference between Petitioner’s and Patent Owner’s proposed levels of ordinary skill in the art that would impact our ultimate conclusions. Petitioner contends that a person of ordinary skill in the art is evidenced by the references. Pet. 11. Patent Owner asserts that “[w]aterproofing leather is not a sophisticated technology, and the education level of a PHOSITA working in the industry is likely a four year degree.” PO Resp. 30. According to Patent Owner, a PHOSITA likely would have knowledge related to making apparel from leather, waterproofing leather using sprays and liners, as well as knowledge of adhesives and bonding leather apparel, and also knowledge of waterproof breathable membranes of various types. Id. We consider the cited prior art as representative of the level of ordinary skill in the art, which Patent Owner essentially summarizes as the knowledge of a PHOSITA. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (finding the absence of specific findings on “level of skill in the art does not give rise to reversible error ‘where the prior art itself reflects an appropriate level and a need for testimony is not shown’”) (quoting Litton” slip op. at 5
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“interpreted to include either a temporary support that is removed, such as a release sheet, or one that becomes part of the final product, such as a liner. Pet. 11. Patent Owner contends that the term should be construed to be limited to “sheets” because “[n]o other material forms are disclosed other than ‘sheets,’ which include paper and fabric support sheets.” PO Resp. 7 (citing Ex. 1001, 2:58–67). According to Patent Owner, the broadest reasonable construction, therefore, “includes any sheet of flexible fabric or fibrous material that is generally fastened to the membrane for structural support or as a lining in the finished product and the attachment is either detachable or firmly fastened to the semi-permeable membrane.” Id. at 7–8. In the Decision on Institution, we construed “support sheet” as “includ[ing] any material that is generally fastened to the membrane for structural support or as a lining in the finished product and the attachment is either detachable or firmly fastened to the semi-permeable membrane.” Dec. on Inst. 6. This construction is based on the Specification, which describes multiple embodiments of the support sheet, including a detachable sheet and an internal liner. Ex. 1001, 2:58–67. The Specification also describes the use of “different materials” to make the support sheet. Id. at 2:63–64. Accordingly, we conclude that the broadest reasonable construction of “support sheet” is not limited to a sheet of fabric or fibrous material as Patent Owner contends, but, rather, explicitly includes “different materials” that can be fastened generally to the membrane for structural support or as a lining in the finished product and the attachment is either detachable or firmly fastened to the semi-permeable membrane. Therefore, consistent with the Specification, we construe “support sheet” to mean a sheet of any material that is generally fastened to the membrane for structural support or as a lining in the finished product and the attachment is either detachable or firmly fastened to the semi-permeable membrane.” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageTerm construed board ownDecided for petitioner
“required degree of contact between the membrane and the leather in the regions that are between the dots of adhesive. The ’171 patent summarizes the invention as enabling a membrane to be applied directly to leather by providing a surface of the membrane with a glue pattern. Ex. 1001, 1:56–61. The invention is said to “avoid the use of a semipermeable lining and the water penetration between leather and lining.” Id. at 1:60–61. The title of the invention states “Process for Waterproofing Leather” and describes the leather used in the process as “leather waterproofed by said process.” Id. at 2:27–28. These disclosures do not define either the word “waterproof” as used in the Specification or the word “directly” as recited in independent claims 1 and 9 to mean that there is constant contact between the membrane and leather such that no water permeates the leather, as Patent Owner contends. In an embodiment of the invention, heating of the membrane during pressing is said to result in “a perfect adhesion” that does not plug the pores with glue. Id. at 2:31–42–45. Heating of the membrane during pressing is carried out also in the single example disclosed in the ’171 patent. Id. at 3:12. The leather samples in the example are said to have been “waterproofed by the process according to the present invention” and “hot-pressed with a hydrophilic non-porous semi-permeable membrane of polyurethane material having a thickness of 10 µm.” Id. at 3:9–14. These disclosures of an embodiment and an example do not define “directly pressing” or “waterproofing” or even “perfect adhesion” to mean constant contact between the leather and the membrane or that no water permeates the leather. Therefore, we decline to import such limitations into the term “directly pressing” based on Patent Owner’s argument that these properties are present inherently in the embodiment of the example in the ’171 patent. Accordingly, we construe “directly pressing” to mean applying pressure without any intervening materials or layers other than the recited adhesive.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“combination of Thornton, Scott, and Hayton. Petitioner has established that Thornton’s process for waterproofing leather by using spaced dots of adhesive in a discontinuous configuration on a semi-permeable membrane that is pressed against the leather meets the requirements of claims 1 and 9 but for the dot density and dot size ranges specified by the claims, respectively. Petitioner also provided a rational underpinning for combining the disclosures of Scott and Hayton, which provide guidance for the density and size of adhesive dots to adhere a semi-permeable membrane to a porous layer. We are not persuaded by Patent Owner’s argument that the teachings of Scott and Hayton are unrelated to the problem of adhering a membrane to a leather layer in view of Thornton’s disclosure that both leather and fabric material are amenable to its process for waterproofing breathable articles of clothing. Ex. 1003, 7:58–62. We also are not persuaded by Patent Owner that the combination of Thornton, Scott, and Hayton does not disclose all of the limitations of claims 1 and 9. The ranges explicitly disclosed in Hayton overlap with the ranges recited in claims 1 and 9. Patent Owner does not argue, and the Specification does not indicate, any criticality associated with the portion of the ranges that are not encompassed by Hayton’s ranges. See In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990). Rather, the claimed ranges appear once in the Specification as a preferred embodiment when the pattern of thermoadhesive glue is dots of polyurethane glue. Ex. 1001, 2:37–42. Patent Owner’s arguments distinguishing Thornton on the basis that it does not teach constant contact between the membrane and the leather in the regions between the spaced dots of adhesive is not persuasive for the reasons discussed above in connection with Patent Owner’s claim construction argument that this is required by the claim term “directly pressing.” In addition, we find that Thornton’s semi-permeable membrane completely covers the leather layer in the sense that the leather layer surface faces the membrane surface to form a composite. Thornton explicitly describes drawing the membrane barrier component over a former, applying adhesive to the outer surface of the film, drawing the outer glove layer onto the former, and bonding the layers by pressing. Ex. 1003, 21:64–22:8; Reply 9. Thornton also discloses layers on the former are placed in register (Ex. 1003, 21:33–35) and that the composite can be formed face to face in sheets (id. at 6:62–66, 7:13–31; Reply 8).” slip op. at 15
Patent outcomesUS 6,855,171 unpatentableClaim construction§ 103 obviousnessPatents in suitUS 6,855,171 - Petroleum Geo-Services Inc. / Ion Geophysical Corporation And Ion International S.A.R.L. v. Westerngeco LLCAll claims unpatentablePTAB · Dec 15, 2015 · IPR2014-00689 · APJ Scott A Daniels · IPR · Final written decision
Claims 1, 2, 18, and 19 are unpatentable: claims 1 and 18 are anticipated by Workman, and all four claims are obvious over Workman.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“In the feather angle control mode, the global control system 22 attempts to keep each streamer in a straight line offset from the towing direction by a certain feather angle. The feather angle could be input either manually, through use of a current meter, or through use of an estimated value based on the average horizontal bird forces. Only when the crosscurrent velocity is very small will the feather angle be set to zero and the desired streamer positions be in precise alignment with the towing direction. Ex. 1001, 10:29–37. Although this passage indicates that there may be various ways, e.g. estimation, manual input, current measurement, to input or determine the feather angle, it is clear that the “feather angle” itself exists as a value used by global control system 22 to control the streamers positions.” slip op. at 11
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Control Mode Patent Owner’s arguments with respect to anticipation each turn around an erroneous claim construction of “control mode.” Patent Owner argues that different from the claimed control modes which actively control the streamers, “Workman is concerned with noise minimization rather than generating noise through actively controlling streamer positioning devices.” PO Resp. 19. The correct interpretation of “control mode” does not include any aspect, state or condition that requires “active control.” We construed “control mode” to mean “operational state.” Whether Workman’s network solution system 10 or streamer control processor 40 does, or does not disclose “active control” in any of its operations is irrelevant because we are not persuaded that “control mode” in either claim 1 or 18 includes “active control.” Turning to Patent Owner’s next argument that “control mode” is “a goal-oriented automated configuration,” not disclosed by Workman, this argument is similarly unpersuasive. PO Resp. 19–20. As discussed above, the appropriate claim construction of “control mode” is “operational state.” Workman clearly discloses a computerized streamer control system having an operational state, being “a network solution system 10 for determining the position of the streamer cables 13 and seismic sources 12, and a streamer cable controller 16 for controlling the streamer positioning devices.” Ex. 1004, 3:40–43. To the extent that Patent Owner’s explanation of a control mode having “a goal-oriented automated configuration” is even relevant to the comparison with Workman we are still not apprised of a substantive difference between the claims and the prior art. Workman discloses that “the network solution system 10 implements a Kalman filter solution on the signals it receives . . . output[ing] real time streamer cable shapes, streamer cable positions, and streamer cable separations.” Id. at 3:46–51. A Kalman filter is explicitly part of the automated computer network solution system 10 performing data acquisition and determination of various output values, directed to the goal of controlling the streamers and their separations from one another. Workman therefore discloses an operational state of a computer system that, as specifically stated by Workman, determines streamer shapes, positions, and separations. Streamer Separation Mode As discussed above, we are not persuaded that streamer separation mode is properly defined as having a streamer spacing “set and maintain[ed]” as Patent Owner promotes. The appropriate claim construction of “streamer separation mode” is “a mode to control separation, or spacing, between streamers.” Patent Owner contends that under the proper definition the threshold spacing parameters disclosed by Workman “fails to control any separation or spacing (or set and maintain separation or spacing, for that matter).” PO Resp. 22 (citing Ex. 2042 ¶¶ 193–194.) Patent Owner’s own arguments, however, contradict this position. Patent Owner states that “Workman’s system is purely reactionary; it lies in wait and attempts to reposition the streamers only in the event that a certain threshold value is violated.” Id. This argument asserts, in effect, the operational state occurring under certain conditions, e.g. violation of a spacing threshold, the streamer is “repositioned” to control separation or spacing between streamers as the proper construction elucidates. Indeed Dr. Triantafyllou’s testimony supports our understanding where he states that “Workman does not move the streamers unless it violates a minimum threshold.” Ex. 2042 ¶ 194. Moreover, the fact that an additional parameter such as a high noise level might restrain the system from repositioning the streamers even if the threshold is exceeded makes no difference in our understanding that under appropriate operating conditions Workman controls streamer separation. PO Resp. 23. Patent Owner argues further that “[t]here is also no teaching in Workman of how much to correct, or where the streamers will end up once the violation is remedied.” Id. This is not persuasive because neither claim 1 nor claim 18, nor the proper construction of “streamer separation mode” includes any definition or limitation relating to a magnitude of correction or control. In addition to disclosing an array of streamers and streamer positioning devices, the evidence shows that Workman expressly teaches an operational state of a streamer control system that is no different than the claimed “control system configured to use a control mode selected from . . . a streamer separation mode” as recited in 18, or as called for in claim 1, “controlling the streamer positioning devices with a control system configured to operate in one or more control modes selected from . . . a streamer separation mode.” We are persuaded by the complete record before us that Petitioner has shown by a preponderance of the evidence that each of the limitations of independent claims 1 and 18 are disclosed by Workman.” slip op. at 21
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentableUnpatentable
“The question of obviousness in this proceeding for claims 2 and 19 rests on whether Dr. Evans has provided a persuasive articulated reasoning based on rational underpinnings to support the contention that one of ordinary skill in the art having familiarity with the design and operation of marine seismic surveys, seismic survey arrays including sensors such as hydrophones, streamers, streamer positioning devices and the associated electronic equipment, would have modified Workman to use a feather angle to control streamer positioning. Without this, Petitioner’s contentions would therefore appear to be the result of hindsight analysis as Patent Owner asserts. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), (cited with approval in KSR, 550 U.S. at 418.) Dr. Evans testifies persuasively that during collection of seismic data it was important to attempt to achieve a fairly consistent and straight streamer array behind the boat towing the array and along the plotted survey route, or line, and that maintaining “uniform streamer separation along the course of a planned survey line was a predictable solution to a problem that had been known in the art, because it would lead to a collection of the data at set streamer separations along the planned and desired survey line.” Ex. 1002 ¶ 146. Dr. Evans also testifies persuasively that streamer feathering was a known factor in seismic surveys where currents forced the streamers out of alignment behind the boat and “a marine seismic surveyor must be prepared to correct the recorded data where streamers are feathered and data collection does not follow the predetermined survey path.” Id. Based on this, Dr. Evans states that in order to optimize data collection, “a person of ordinary skill would have been motivated to, at minimum, set and maintain the streamers at a zero degree feather angle offset.” Id. at ¶ 149. What is not immediately clear from Petitioner’s argument is why prescribing a specific offset “feather angle” value to the streamers positioning determination system would have been apparent to one of skill in the art. But to this point, Dr. Evans directs us to Workman for evidence that it was a “well-known problem that the noise produced by streamer positioning devices can reduce seismic data quality in certain situations.” Id. at ¶ 150 (citing Ex. 1004, 1:62–2:9). We further ascertain from Dr. Evans testimony that when streamers are offset from the line of survey for instance by five degrees, “[i]n this situation, attempting to return the streamers to a zero degree feather angle against the current may generate hydrophone noise that adversely affects data quality.” Id. Based on these evidentiary underpinnings, Dr. Evans reasons that A person of ordinary skill would understand that it may be more desirable to maintain the streamers at a constant two degree feather angle than to return the streamers to the zero degree feather angle position. It was well-known to persons of ordinary skill that maintaining a straight and constant feather angle—even if non-zero—would produce more reliable seismic data than data retrieved from a cable that was not set and maintained in a straight configuration. Id. This reasoning is persuasive because it explains why one of ordinary skill in the art would have been motivated to use a specific feather angle value to determine streamer positioning apart from that imparted by a crosscurrent (five degrees) and different also from the streamers being repositioned to an alignment straight behind the boat towing the array i.e. zero degrees. In this scenario, by moving the streamers from five degrees, to a two degree feather angle, the data collection quality would be better and the noise generated by the SPD’s would not be as great as if the streamers were returned to the zero degree offset straight behind the boat and aligned with the plotted survey line.” slip op. at 30
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“Patent Owner argues that the Declaration of Robin Walker is firsthand evidence of industry praise “and how WesternGeco’s revolutionary lateral steering technology satisfied a longfelt need in the industry (Ex. 2077, ¶¶ 12–37) and ultimately contributed to billions of dollars in revenue (Ex. 2077, ¶¶ 47–51).” PO Resp. 48. Patent Owner, however, does not explain adequately how the Q-Marine product allegedly embodies the challenged claims in the ’520 patent. Mr. Walker states specifically that [t]hrough its provision of WesternGeco’s patented lateral steering technology, Q-Marine satisfied a significant, previously unmet need in the industry for better quality data and more cost-effective surveys by offering numerous benefits, including those detailed below. Ex. 2077 ¶ 12. The benefits described in the subsequent paragraphs of Mr. Walker’s Declaration are apparently based on lateral steering technology, with the result that “better data quality could be achieved without the risk of costly downtime and damage due to streamer tangling.” Id. at ¶ 15. It may be that Q-Marine provides a better, faster, more reliable and commercially successful 4D survey, but any commercial success enjoyed by the Q-Marine product is relevant only if the challenged claims are shown to embody those products. Patent Owner has not made out that critical showing. See In re DBC, 545 F.3d 1373, 1384 (Fed. Cir. 2008) (finding no nexus, absent evidence that “the driving force behind [the allegedly successful product’s sales] was the claimed combination”); Ormco Corp. v. Align Technology Inc., 463 F.3d 1299, 1311–12 (Fed. Cir. 2006) (requiring a “nexus between the claimed invention and the commercial success”); Huang, 100 F.3d at 140 (requiring proof that sales were a “direct result of the unique characteristics of the claimed invention”). In the alternative, Patent Owner’s evidence of commercial success does not outweigh the strong showing of obviousness made out by Petitioner in view of Workman. See Sud-Chemie, Inc. v. Multisorb Techs., Inc., 554 F.3d 1001, 1009 (Fed. Cir. 2009) (“evidence of unexpected results and other secondary considerations will not necessarily overcome a strong prima facie showing of obviousness”). Accordingly, the alleged commercial success of the Q-Marine product does not support a conclusion of nonobviousness of the challenged claims in this case.” slip op. at 34
Patent outcomesUS 7,293,520 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,293,520 - Petroleum Geo-Services Inc. / Ion Geophysical Corporation et al. v. Westerngeco LLCAll claims unpatentablePTAB · Dec 15, 2015 · IPR2014-00687 · APJ Scott A Daniels · IPR · Final written decision
Claims 1 and 15 are unpatentable as anticipated by and obvious over the ’636 PCT.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“all SPD’s is a requirement of claim 1 imparted by the term “global control system.” Accordingly, we do not construe “global positioning system” to require all streamer positioning devices to be controlled and we decline to adopt Patent Owner’s construction. See SuperGuide Corp. at 875 (“a particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment.”). We are also not persuaded to read the word “coordinate” as advocated” slip op. at 13
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros. Inc., v. Union Oil Co., 814 F.2d 628, 631 (Fed. Cir. 1987). “The identical invention must be shown in as complete detail as is contained in the . . . claim.” Richardson v. Suzuki Motor Co., 868 F.2d 1226, 1236 (Fed. Cir. 1989). The elements must be arranged as required by the claim, but this is not an ipsissimis verbis test, i.e., identity of terminology is not required. In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). [U]nless a reference discloses within the four corners of the document not only all of the limitations claimed but also all of the limitations arranged or combined in the same way as recited in the claim, it cannot be said to prove prior invention of the thing claimed and, thus, cannot anticipate under 35 U.S.C. § 102. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008). slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableUnpatentable
“The tests for anticipation and obviousness are different. Cohesive, 543 F.3d at 1364. Obviousness generally requires an analysis under the Graham factors. Id. In the instant case, however, we agree with Petitioner that the ’636 PCT, as a standalone reference discloses all of the limitations of claims 1 and 15 including a “global control system” as construed above. In other words, there is no element of claims 1 and 15 missing from the ’636 PCT as discussed above in relation to anticipation that necessitates modification, additional rationale, or articulated reasoning. Inasmuch as the ’636 PCT is relied upon as the sole reference for both anticipation and obviousness grounds and is directed to the same field of endeavor seeking to solve the same, or similar problem of controlling birds, i.e. SPD’s, in a towed seismic survey array as in the ’967 patent, so that “[d]uring the seismic survey, the streamers are intended to remain straight, parallel to each other and equally spaced” (Ex. 1004, 2), this case is particularly appropriate for application of the maxim that anticipation is the epitome of obviousness. Fracalossi, 681 F.2d at 794. All that remains is to address secondary considerations.” slip op. at 29
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“considerations which we address here. PO Resp. 32–35. The factual inquiries for obviousness include secondary considerations based on evaluation and crediting of objective evidence. Graham v. John Deere Co., 383 U.S. 1, 17 (1966). However, to accord substantial weight to objective evidence requires the finding of a nexus between the evidence and the merits of the claimed invention. In re GPAC Inc., 57 F.3d 1573, 1580 (Fed. Cir. 1995); see also In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996) (“success is relevant in the obviousness context only if there is proof that the sales were a direct result of the unique characteristics of the claimed invention.”). “Nexus” is a legally and factually sufficient connection between the objective evidence and the claimed invention, such that the objective evidence should be considered in determining nonobviousness. Demaco CorpF. Von Langsdorff Licensing Ltd., 851 F.2d 1387, 1392 (Fed. Cir. 1988). The burden of showing that there is a nexus lies with the patent owner. Id.; see In re Paulsen, 30 F.3d 1475, 1482 (Fed. Cir. 1994).” slip op. at 30
Patent outcomesUS 7,162,967 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 7,162,967 - Petroleum Geo-Services Inc. / Ion Geophysical Corporation et al. v. Westerngeco LLCAll claims unpatentablePTAB · Dec 15, 2015 · IPR2014-00688 · APJ Scott A Daniels · IPR · Final written decision
Claims 1 and 15 are unpatentable as anticipated by Workman and obvious over Workman alone and Workman combined with Elholm.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownPlain and ordinary meaningDecided for petitioner
“Inst. Dec. 9. Our claim construction relies specifically on the nature of the temporal component described in the ’607 patent specification which states “the global positioning system runs position predictor software to estimate the actual locations of each of the birds 18.” Ex. 1001, 4:51–55. Based on the specification, the estimated “actual locations” recited in our construction is a future prediction relative to the old (measured) position data that takes into account the time delay, or lag, and as stated in Patent Owner’s point (1) above. The “actual location” in our claim construction is “where the streamer positioning device will be at the time when commands are received at the device” as contended by Patent Owner. See PO Resp. 7.” slip op. at 12
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“This argument is not persuasive because Workman clearly describes that the Kalman filter would first receive signals including vessel positioning and location sensing device signals, i.e. position and location signals, and that the network solution 10 would make use of such signals to determine “real time . . . streamer cable positions.” Ex. 1004, 3:46–51, see also Ex. 1092, 434. We further understand the term “real time” cable positions to mean a cable position as a function of time and signal processing delay time, and that is most reasonably understood in context as current, actual, or some future estimated time relative to when the data i.e. old data, used to compute the “real time” cable position was observed. Thus, we interpret Workman to disclose a Kalman filter that provides an estimate of real time, i.e. actual, streamer positions based on previously observed location data, an interpretation that falls squarely within an “estimate of an actual position” as determined in our claim construction for the “predict[ing] positions” limitation in claims 1 and 15.” slip op. at 26
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“Despite Patent Owner’s arguments, we agree with Petitioner’s analysis as supported by Dr. Evans testimony, that one of ordinary skill in the art would have had reason to combine the teachings of Workman and Elholm to achieve the invention recited in challenged claims 1 and 15 with a reasonable expectation of success. Workman teaches every aspect of the claimed invention including towing an array of streamers, each streamer having a plurality of streamer positioning devices, predicting the positions of at least the streamers (if not the streamer positioning devices) and calculating changes in position of the streamer so as to control a streamer positioning device to affect the streamers. Based on Dr. Evans testimony, we are persuaded that one of skill in the art would have been motivated to modify Workman, by measuring, observing and changing the position of an SPD itself (as opposed to merely the streamer) as taught by Elholm, in order to accurately and precisely control the streamer. We agree that a person of ordinary skill in the art would have looked to Elholm’s teaching of an observable and controllable SPD via a “computer programme,” as a compatible streamer positioning device providing more accurate positional control of a streamer along its length, in the manner of Workman’s streamer control processor as it controls an array of streamers via multiple SPD’s on each streamer. We are not persuaded by Patent Owner’s position that Elholm only discloses a single SPD at the front of a streamer array because Petitioner is relying on Elholm for its teaching of an observable and controllable SPD, whereas it is Workman that teaches multiple SPD’s along the length of each streamer. See KSR, 550 U.S. at 420 (“[F]amiliar items may have obvious uses beyond their primary purpose, and in many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle.”). Additionally, Patent Owner is arguing the references individually and these arguments fail to consider the collective teachings of Workman and Elholm from the perspective of one of ordinary skill in the art. See PO Resp. 40–43. Nonobviousness cannot be established by attacking the references individually when a challenge is predicated upon a combination of prior art disclosures. See In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). In attacking Elholm individually, Patent Owner fails to address Petitioner’s actual challenges or, therefore, establish an insufficiency in the combined teachings of the references. Accordingly, we conclude Petitioner has established by a preponderance of evidence that claims 1 and 15 would have been obvious under 35 U.S.C. § 103 in view of the disclosures of Workman and Elholm.” slip op. at 37
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“Id. Patent Owner argues that these references to trial testimony from district court litigation support a finding of long-felt need but does not explain with any detail why, or how, the referenced testimony, evidences a long-felt need, failure of others, or industry praise. In this regard, we limit our review to evidence actually discussed in Patent Owner’s Response. We will not play archeologist with the record to discover evidentiary support for bare attorney argument made in such a response. See Google Inc. v. ART+COM Innovationpool GmbH, Case IPR2015-00788, slip. op. at 10 (PTAB Sept. 2, 2015) (Paper 7) (citing 37 C.F.R. § 42.104(b)(5) (“The Board may exclude or give no weight to the evidence where a party has failed to state its relevance or to identify specific portions of the evidence that support the challenge.”)). We decline to consider, moreover, information presented in an Exhibit, but not discussed sufficiently in Patent Owner’s Response. See PO Resp. 48 (citing Ex. 2035 and 2036, without any discussion of that evidence). Among other reasons, doing so would permit the use of declarations to circumvent our rules relating to page limits. In that regard, our rules prohibit a party from incorporating by reference from one document (such as a supporting declaration) into another document (such as Patent Owner’s Response). See 37 C.F.R. § 42.6(a)(3). Patent Owner argues that the Declaration of Robin Walker is firsthand evidence of industry praise “and how WesternGeco’s revolutionary lateral steering technology satisfied a long-felt need in the industry (Ex. 2077, ¶¶ 12–37) and ultimately contributed to billions of dollars in revenue (Ex. 2077, ¶¶ 47–51).” PO Resp. 48–49. Patent Owner, however, does not explain adequately how the Q-Marine product allegedly embodies the challenged claims in the ’607 patent. Mr. Walker states specifically that [t]hrough its provision of WesternGeco’s patented lateral steering technology, Q-Marine satisfied a significant, previously unmet need in the industry for better quality data and more cost-effective surveys by offering numerous benefits, including those detailed below. Ex. 2077 ¶ 12. The benefits described in the subsequent paragraphs of Mr. Walker’s Declaration are apparently based on lateral steering technology, with the result that “better data quality could be achieved without the risk of costly downtime and damage due to streamer tangling.” Id. at ¶ 15. It may be that Q-Marine provides a better, faster, more reliable and commercially successful 4D survey, but any commercial success enjoyed by the Q-Marine product is relevant only if the challenged claims are shown to embody those products. Patent Owner has not made out that critical showing. See In re DBC, 545 F.3d 1373, 1384 (Fed. Cir. 2008) (finding no nexus, absent evidence that “the driving force behind [the allegedly successful product’s sales] was the claimed combination”) (emphasis added); Ormco Corp. v. Align Technology Inc., 463 F.3d 1299, 1311–12 (Fed. Cir. 2006) (requiring a “nexus between the claimed invention and the commercial success”); Huang, 100 F.3d at 140 (requiring proof that sales were a “direct result of the unique characteristics of the claimed invention”). In the alternative, Patent Owner’s evidence of commercial success does not outweigh the strong showing of obviousness made out by Petitioner in view of anticipation by Workman, and also Workman and Elholm. See Sud-Chemie, Inc. v. Multisorb Techs., Inc., 554 F.3d 1001, 1009 (Fed. Cir. 2009) (“evidence of unexpected results and other secondary considerations will not necessarily overcome a strong prima facie showing of obviousness”). Accordingly, the alleged commercial success of the Q-Marine product does not support a conclusion of nonobviousness of the challenged claims in this case.” slip op. at 42
Patent outcomesUS 7,080,607 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 7,080,607 - Petroleum Geo-Services Inc. / Ion Geophysical Corporation And Ion International S.A.R.L. v. Westerngeco LLCAll claims unpatentablePTAB · Dec 15, 2015 · IPR2015-00567 · APJ Scott A Daniels · IPR · Final written decision
Claims 1 and 15 are unpatentable as anticipated by Workman and obvious over Workman alone and Workman combined with Elholm.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“Id. at 7. First, we note that neither claim 1 nor claim 15 recites “predictive control” as stated here by Patent Owner. See Ex. 1001, 11:15–24, 12:26–34. Second, with respect to point (1), our claim construction accounts for exactly this temporal, i.e. future, aspect of “predicting.” As explained in our Decision to Institute: the received position data of any bird 18 is old, i.e., not instantaneous, or current, but is used to estimate a position of bird 18, and assess the estimate as an actual position of bird 18. Inst. Dec. 9. Our claim construction relies specifically on the nature of the temporal component described in the ’607 patent specification which states “the global positioning system runs position predictor software to estimate the actual locations of each of the birds 18.” Ex. 1001, 4:51–55. Based on the specification, the estimated “actual locations” recited in our construction is a future prediction relative to the old (measured) position data that takes into account the time delay, or lag, and as stated in Patent Owner’s point (1) above. The “actual location” in our claim construction is “where the streamer positioning device will be at the time when commands are received at the device” as contended by Patent Owner. See PO Resp. 7.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“the streamer on which the streamer positioning device is located, but also the complete streamer array.” PO Resp. 12. We are not persuaded to read such a limitation into this claim phrase. First, in the context of both claim 1 and claim 15, the phrase is more completely, “calculate desired changes in positions.” The plain meaning of, “calculate,” is essentially interchangeable with “determine,” thus we see no reason to clarify this aspect of the claim language. The direct object of the verb “calculate” is “changes in position” of the SPD, thus the proposed claim construction would substitute “forces based on streamer and array behavior” for “changes in position.” The asserted claim construction, however, naturally expresses how changes in position are, or could be accomplished. For example, “force” acting on an object is, from a physics perspective, a different quantity than the “position” of the object. A certain force may cause a change in position but it is not the “change in position” itself. We are, therefore, not persuaded by the plain meaning of the claim language that “changes in position” is required to be limited to any particular causational definition or quantity. Patent Owner’s claim construction relies upon preferred embodiments from the specification, for example, the specification states that “[t]he global control system 22 preferably calculates the desired vertical and horizontal forces based on the behavior of each streamer and also takes into account the behavior of the complete streamer array.” See PO Resp. 13 (citing Ex. 1001, 4:48–51). Furthermore, to the extent that Patent Owner is relying on the “global control system 22” as predicting or calculating such forces, the specification includes an alternative embodiment where the global control system does not calculate the forces, but alternatively, “can transmit location information to the local control system 36 instead of force information.” Ex. 1001, 6:38–39. Accordingly, we determine based on the specification, claim language, and evidence from the complete record before us, that under the broadest reasonable interpretation, and giving the words their plain and ordinary meaning consistent with the specification, that the phrase “calculating desired changes in position” needs no construction and should be accorded its plain and ordinary meaning.” slip op. at 17
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“This argument is not persuasive because Workman clearly describes that the Kalman filter would first receive signals including vessel positioning and location sensing device signals, i.e. position and location signals, and that the network solution 10 would make use of such signals to determine “real time . . . streamer cable positions.” Ex. 1004, 3:46–51, see also Ex. 1092, 434. We further understand the term “real time” cable positions to mean a cable position as a function of time and signal processing delay time, and that is most reasonably understood in context as current, actual, or some future estimated time relative to when the data i.e. old data, used to compute the “real time” cable position was observed. Thus, we interpret Workman to disclose a Kalman filter that provides an estimate of real time, i.e. actual, streamer positions based on previously observed location data, an interpretation that falls squarely within an “estimate of an actual position” as determined in our claim construction for the “predict[ing] positions” limitation in claims 1 and 15.” slip op. at 26
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“Despite Patent Owner’s arguments, we agree with Petitioner’s analysis as supported by Dr. Evans testimony, that one of ordinary skill in the art would have had reason to combine the teachings of Workman and Elholm to achieve the invention recited in challenged claims 1 and 15 with a reasonable expectation of success. Workman teaches every aspect of the claimed invention including towing an array of streamers, each streamer having a plurality of streamer positioning devices, predicting the positions of at least the streamers (if not the streamer positioning devices) and calculating changes in position of the streamer so as to control a streamer positioning device to affect the streamers. Based on Dr. Evans testimony, we are persuaded that one of skill in the art would have been motivated to modify Workman, by measuring, observing and changing the position of an SPD itself (as opposed to merely the streamer) as taught by Elholm, in order to accurately and precisely control the streamer. We agree that a person of ordinary skill in the art would have looked to Elholm’s teaching of an observable and controllable SPD via a “computer programme,” as a compatible streamer positioning device providing more accurate positional control of a streamer along its length, in the manner of Workman’s streamer control processor as it controls an array of streamers via multiple SPD’s on each streamer. We are not persuaded by Patent Owner’s position that Elholm only discloses a single SPD at the front of a streamer array because Petitioner is relying on Elholm for its teaching of an observable and controllable SPD, whereas it is Workman that teaches multiple SPD’s along the length of each streamer. See KSR, 550 U.S. at 420 (“[F]amiliar items may have obvious uses beyond their primary purpose, and in many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle.”). Additionally, Patent Owner is arguing the references individually and these arguments fail to consider the collective teachings of Workman and Elholm from the perspective of one of ordinary skill in the art. See PO Resp. 40–43. Nonobviousness cannot be established by attacking the references individually when a challenge is predicated upon a combination of prior art disclosures. See In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). In attacking Elholm individually, Patent Owner fails to address Petitioner’s actual challenges or, therefore, establish an insufficiency in the combined teachings of the references. Accordingly, we conclude Petitioner has established by a preponderance of evidence that claims 1 and 15 would have been obvious under 35 U.S.C. § 103 in view of the disclosures of Workman and Elholm.” slip op. at 37
Patent outcomesUS 7,080,607 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 7,080,607
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