- SAP America, Inc. v. Lakshmi ArunachalamAll claims unpatentablePTAB · Dec 21, 2017 · CBM2016-00081 · APJ Kevin F Turner · CBM · Final written decision
Claims 20 and 21 are unpatentable under § 101 and § 103; the motion to amend proposing claims 22–49 is denied.
RulingsFinal written decision- Skill levelSkill level board ownDecided for petitioner
“Petitioner argues that “[b]ased on the technologies disclosed in the ’506 patent, one of ordinary skill in the art at the time of the alleged invention would have had the equivalent of a Bachelor’s degree or higher in computer science or computer engineering, as well as at least 3–5 years of academic or industry experience in the relevant field.” Pet. 10 (citing Ex. 1002 ¶ 22). Although Patent Owner does not address the level of ordinary skill in its Patent Owner’s Response, Patent Owner does opine about the same in its Motion to Amend. Therein, Patent Owner argues that: a person of ordinary skill in the art in 1995 would have been a person who had a degree in computer science, or the equivalent of that degree, and some substantive experience with Web technologies then being developed and considered by persons then working on internet systems. [Ex. 2006, 23] It would have been very rare to find anyone to have had a computer degree and as much as three to five years of experience in the area of Web technology as of November 1995. (Id.) Mot. Amend 5–6. Based on the positions of Petitioner and Patent Owner, we find mostly agreement as to the level of skill of such ordinarily skilled artisans and we are persuaded that one of ordinary skill in the art at the time of the invention would have had the equivalent of a degree in computer science or computer engineering, as well as some substantive experience 29 with Web technologies then being developed and considered by persons then working on Internet systems. This level of skill is considered and applied in the grounds below.” slip op. at 29
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionNo construction neededOther
“networked object,” and that we “willfully left out ‘Individual’ and only construed ‘Network Object.’” PO Resp. 36. Patent Owner is correct that we did not construe “individual networked object.” The reason is that it is not a term recited in the challenged claims, nor claim 14, from which the challenged claims depend. We construed “networked object,” i.e., without “individual,” because it is a term recited in the claims. Patent Owner also argues that the proper construction of “networked object” is “the information entries and attributes in a DOLSIB [distributed on-line service information base].” Id. (citing Ex. 1001, 8:50–54). We do not agree. Although the specification of the ’506 Patent details that “[t]he networked object identity 11 identifies the information entries and attributes in the DOLSIB as individual networked objects,” that is not a definition of “network objects.” We continue to find that the broadest reasonable construction, in view of the specification, of “networked object” is “an object that operates within a network or transmitted over a network.” We are not persuaded that “individual networked object” need be construed because it is not a claim term, and we are not persuaded that every recitation of “networked object” must refer to an “individual networked object.” Patent Owner argues that we did not construe the claim term “attributes,” which should be understood as “characteristics of an object.” Id. at 36–37 (citing Ex. 1001, 4:45–58, 23:19–25). Petitioner counters that the passages cited by Patent Owner do not support the proffered definition, because those passages do not contain the word “attribute.” Pet. Reply 4. Although Patent Owner’s construction is not unreasonable, claim 14 already recites that the step of “associating an object identity with information entries and attributes,” so that “attributes” need not be referred to as “characteristics of an object,” since such an association is already directly recited in the claims. As such, we are not persuaded that the claim term “attributes” needs explicit construction. Similarly, Patent Owner argues that “information entries” should be construed as “values of the characteristics of an object.” PO Resp. 37 (citing Ex. 1001, 4:45–58, 23:19–25). Again, we find it unnecessary to tie “information entries” to an object, since the association is already provided 12 in claim 14. Therefore, we are not persuaded that the claim term “information entries” needs explicit construction. With respect to the claim term “virtual information store,” we construed that term as “an information store in which information entries and attributes are associated with a networked object identity,” as discussed above. Patent Owner argues that we have not given proper effect to the word “virtual,” arguing that the proper construction is “a transient information store that is temporarily created and which contains information entries and attributes associated with a networked object identity.” PO Resp. 39–41. Patent Owner cites to the specification of the ’506 Patent (Ex. 1001, 3:1–5, 8:47–54), and “[t]he IBM Computer Dictionary” (id.), but, as Petitioner points out, Patent Owner has not “submitted this dictionary as an exhibit or provided any further information to locate the dictionary.” Further, the sections of the ’506 Patent cited by Patent Owner are not explicit about the store being “transient” or “temporarily created;” this is an inference drawn by Patent Owner. See PO Resp. 40. The introduction of the terms “transient” and “temporarily” to the construction adds more ambiguity to the claim term because the specification of the ’506 Patent does not discuss how long any “virtual information store” would be stored or maintained. In addition, we are not persuaded that Patent Owner’s provision of affirmatively containing the information entries and attributes is necessary because having a store in which the information entries and attributes are associated with a networked object identity would have been understood by ordinarily skilled artisans as being a store containing those elements. 13 Therefore, we are not persuaded that the claim term “virtual information store” requires a different construction and we maintain the construction provided in the Institution Decision, which is reproduced above.” slip op. at 11
- BurdenUnpatentable
“not have been obvious to make any changes to Lawlor’s system,” and that “the whole purpose of Lawlor is to establish a system built upon an existing software and infrastructure that would require no changes.” PO Resp. 80–81 (emphasis in original). We do not agree. We agree with Petitioner that Patent Owner misinterprets Lawlor’s teachings, “improperly concluding that Lawlor teaches away from any combination or modification.” Pet. Reply 24 (emphasis in original). Lawlor explains that “[b]ecause the central computer interacts with the user's bank as a standard POS or ATM network node, no significant software changes are required at the banks’ computers,” demonstrating that Lawlor makes use of a standard ATM network and existing external systems without significant modification. Ex. 1004, Abstr. As explained by Dr. Sirbu, incorporation of techniques described in CORBA into Lawlor’s system would not require modification to the external systems of Lawlor or additional processing at the central computer of Lawlor. Ex. 1002 ¶ 72. Lawlor system does not restrict or disparage modification, and Patent Owner has not pointed out any portion that purportedly restricts or disparages modification. Patent Owner also argues that Lawlor does not disclose “an OSI Layer 7 application layer switch as is the VAN Switch in FIG. 5B.” PO Resp. 79. As discussed above, however, challenged claims 20 and 21 do not recite a VAN switch, and the only consideration of such a switch comes from Patent Owner’s claims constructions that we do not adopt. As such, we are persuaded that Petitioner has shown by a 45 preponderance of the evidence that claim 20 is unpatentable over the combination of Lawlor and CORBA, and that the subject matter of claim 21 is unpatentable over the combination of Lawlor, CORBA and Billings.” slip op. at 45
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, deniedDenied
“2. 37 C.F.R. § 42.221(a)(2)(i) Rule 221(a)(2)(i) requires that the amendments in a motion to amend must respond to a ground of unpatentability involved in the trial. Patent Owner’s new claims do not respond to any ground of unpatentability in the trial. Those grounds are based on 35 U.S.C. §§ 101, 103 and directed at claims 20 and 21. Pet. 28–73. Both claims 20 and 21 depend on claim 14 and the grounds of unpatentability consider all of the elements of claim 14. Thus, for example, new claim 25, which recites “[t]he apparatus of claim 14, wherein the user device is a multi-media device,” does not purport to demonstrate that such a claim brings the subject matter into the scope of § 101, nor that such a multi-media device would not be obvious over Lawlor, CORBA, and Billings. See Mot. Amend 9–17. Patent Owner’s analysis addresses claims 22–49 as a group and does not address all of the elements of the new claims. Id. Patent Owner also fails to indicate if any of the new claims include any feature of the challenged claims. For at least these reasons, we find that Patent Owner has not complied with the substantive requirements of 37 C.F.R. § 42.221(a)(2)(i). 3. 37 C.F.R. § 42.221(a)(2)(ii) and 35 U.S.C. § 326(d)(3) Rule 221(a)(2)(i) requires that the amendment may not seek to enlarge the scope of the claims of the patent. We also note that this rule is fully supported by 35 U.S.C. § 326(d)(3), which details that “[a]n amendment under this subsection may not enlarge the scope of the claims of the patent.” Patent Owner appears to take this rule as merely requiring that “the new claims do not enlarge the scope of any of the old claims.” Mot. Amend 3. 52 The “old claims,” however, are the only two claims existing in the ’506 Patent, namely claims 20 and 21. They are the “scope of the claims of the patent,” and the scope cannot refer to any claim that might have existed during the prosecution of the ’506 Patent. See Arlington Industries, Inc. v. Bridgeport Fittings, Inc., 345 F.3d 1318, 1329–30 (Fed. Cir. 2003). Therefore, we look to the scope of claims 20 and 21 to determine the scope of the claims of a patent. Proposed new claims in the Motion to Amend improperly enlarge the scope of claims 20 and 21. For example, new claim 27 recites “[t]he apparatus of claim 14, wherein the service is configurable specific to the context of a Web merchant.” This proposed claim is broader, in at least one aspect, than claims 20 and 21, which also depend from claim 14, because it contains none of the elements of claims 20 and 21, although it adds an additional element, i.e., “the service is configurable specific to the context of a Web merchant.” For at least these reasons, we find that Patent Owner has not complied with the substantive requirements of 37 C.F.R. § 42.221(a)(2)(ii) or 35 U.S.C. § 326(d)(3). 4. § 42.221(a)(3) and 35 U.S.C. § 326(d)(1)(B) Section (a)(3) of Rule 221 discusses that a patent owner must propose a reasonable number of substitute claims, and goes on to discuss that “[t]he presumption is that only one substitute claim would be needed to replace each challenged claim, and it may be rebutted by a demonstration of need.” The claims subject to the instant proceeding are claims 20 and 21, such that the normal presumption would be for the inclusion of two substitute claims. 53 Patent Owner does not address why the proposed 28 claims are a reasonable number of substitutes for the 2 challenged claims, so Patent Owner cannot be said to have rebutted the one for one presumption by any demonstration of need. We also note that this rule is fully supported by 35 U.S.C. § 326(d)(1)(B), which details that for the amendment of a patent, for each challenged claim, “a reasonable number of substitute claims” must be proposed. Petitioner points out that the meaning of “reasonable number of substitute claims” has been previously addressed by the Board, providing “in the absence of special circumstance, a challenged claim can be replaced by only one claim, and a motion to amend should, for each proposed substitute claim, specifically identify the challenged claim which it is intended to replace.” Opp. 1–2 (citing Idle Free at 5). Furthermore, as Petitioner addresses, Patent Owner has failed to identify which of the challenged claims are intended to be replaced by the new claims. Id. Patent Owner’s response appears to be that “PO does not propose a reasonable number of substitute claims, because it is not necessary.” PO Reply 2. This, however, is not responsive. For at least these reasons, we find that Patent Owner has not complied with the substantive requirements of 37 C.F.R. § 42.221(a)(3) or the statutory requirements of § 326(d)(1)(B). 5. 37 C.F.R. § 42.221(b)(1) Rule 221(b)(1) requires that a motion to amend must show the changes clearly and set for the support in the original disclosure of the patent for claim that is added. In the case of new claims 22–49, Patent Owner does 54 not indicate any changes from the claims subject to the present proceeding. The claims are indicated as being new, so that no changes from the pending claims are discussed at all. See Claim App’x. In addition, Patent Owner argues that written description support for the new claims can be found in a chart provided in a reexamination of the patent. Mot. Amend 3 (citing inter partes Reexamination Control No. 95/001,129). We note that such incorporation by reference is not permitted under our rules. 37 C.F.R. § 42.6(a)(3). As well, as Petitioner points out, Patent Owner has not demonstrated that the claims provided in the chart are the same as the new claims. Opp. 4. Given this deficit, Patent Owner cannot successfully meet the regulatory requirements under 37 C.F.R. § 42.221(a) or (b)(1) regarding written description support, based on the present record. Additionally, Patent Owner has failed to provide any mapping of the new claims to those old claims, and, as Petitioner points out, the Board determined during the cited inter partes reexamination that no written description support was provided for a number of limitations identical to those recited in the new claims. Id. (citing Ex. 1007, 32–36). For at least these reasons, we find that Patent Owner has not complied with the substantive requirements of 37 C.F.R. § 42.221(b)(1). 6. Conclusion As discussed above, Patent Owner has not demonstrated compliance with 37 C.F.R. §§ 42.221(a), 42.221(a)(2)(i), 42.221(a)(2)(i), 42.221(a)(3), or 42.221(b)(1) or 35 U.S.C. § 326(d)(1)(B) and (3). As such, Patent Owner has failed to meet the substantive requirements for a motion to amend.” slip op. at 52
Patent outcomesUS 7,340,506 unpatentableClaim construction§ 101 eligibility§ 103 obviousnesscites Alice · Mayo · Enfish · KSR · GrahamPatents in suitUS 7,340,506 - Securus Technologies, Inc. v. Global Tel*link CorporationNo claims unpatentablePTAB · Nov 16, 2017 · IPR2016-01123 · APJ Georgianna W Braden · IPR · Final written decision
Claims 1–11 were not shown unpatentable under either § 103 ground because Petitioner failed to explain adequately why or how a skilled artisan would combine the references.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Petitioner proposes constructions for the claim terms “continuous noise detection algorithm” and “power distribution filter algorithm.” Pet. 24–28. Patent Owner disputes Petitioner’s proposed constructions for these terms. Prelim. Resp. 8–11. After analyzing the claims and supporting specification of the ’726 patent, we determine that we need not provide express constructions for the disputed claim terms in order to reach our decision.” slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not dispute Dr. Williams’ testimony. See generally Prelim. Resp. Patent Owner’s Declarant, Dr. Leonard J. Forys (“Dr. Forys”), however, proffers his own assessment regarding a person of ordinary skill in the art relevant to the ’726 patent. According to Dr. Forys, one of ordinary skill in the art would have had “a B.S. degree in Electrical Engineering, Computer Science, or an equivalent field as well as at least 3–5 years of academic or industry experience in communications systems, or comparable industry experience.” Ex. 2002 ¶ 29. Dr. Forys does not address Dr. Williams’ testimony in this regard or otherwise indicate whether his analysis would change if Dr. Williams’ proffered level of ordinary were adopted. Id. We have reviewed the ’726 patent, the types of problems and solutions described in the ’726 patent and cited prior art, and the testimony of Dr. Williams and Dr. Forys (who mostly agree as to the level of skill of an ordinarily skill artisan). Based on our review, we adopt and apply Dr. Williams’s definition of a person of ordinary skill in the art at the time of the claimed invention for purposes of this Decision. In addition, our analysis would not change if Dr. Forys’ proffered level of ordinary skill were adopted.” slip op. at 14
- Expert testimonyPetitioner expert discountedDecided for patent owner
“time of the ’726 patent would likely understand the relationship between power and energy. We also agree that there is a relationship between power and energy, and that it is possible to derive information about one from the other. See Ex. 1012, 18:14–25:8; Ex. 2001, 25:10–27:14; Ex. 2005, 238. Based on the evidence of record, we do not agree, however, that power and energy “are essentially equivalent and can be used interchangeably” as asserted in the Petition. See id.; see Pet. 36 (citing Ex. 1009 ¶¶ 174–177). Nor do we agree one of ordinary skill in the art would have understood that the Gupta energy threshold is the same as the power level threshold disclosed in Li. See Ex. 1012, 18:14–25; Ex. 2001, 25:10–27:14; Ex. 2005, 238. Petitioner’s reliance on Dr. Williams’s testimony regarding Gupta’s disclosure that “[a] minimum energy threshold may be programmed to [the cadence tone’s] required power level for a valid signal on a line” is equally unpersuasive. Ex. 1009 ¶ 181 (citing Ex. 1004, 6:41–44). We are unpersuaded because neither Petitioner nor Dr. Williams explains sufficiently how Gupta’s minimum energy threshold relates to a required power level or how it relates to Li’s power estimator and the purpose of Li’s power estimators. Given the lack of equivalence between power and energy, we find Petitioner fails to present sufficient evidence explaining why a person of ordinary skill in the art would have switched from detecting a power threshold, such as that described in Li and required by the challenged claims, to detecting an energy threshold as disclosed in McNitt and Gupta. Petitioner must articulate a reason why a person of ordinary skill in the art would combine the prior art references. Personal Web Techs. v. Apple, 848 F.3d 987, 991–92 (Fed. Cir. 2017); In re NuVasive, 842 F.3d 1376, 1382 (Fed. Cir. 2016); Metalcraft of Mayville, Inc. v. The Toro Company, 848 F.3d 1358, 1366 (Fed. Cir. 2017) (“[I]t is insufficient to simply conclude the [prior art] combination would have been obvious without identifying any reason why a person of skill in the art would have made the combination.”); see Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (“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”). Conclusory statements alone, even those provided by a declarant, are inadequate to demonstrate a rationale for why a person of ordinary skill in the art would combine the teachings from prior art references. NuVasive, 842 F.3d at 1383. Instead, Petitioner’s arguments must be supported by a “reasoned explanation.” Id. (citing In re Lee, 277 F.3d 1338, 1342, 1345 (Fed. Cir. 2002)). We understand that a person of ordinary skill is a person of ordinary creativity, not an automaton, but “[w]ithout any explanation as to how or why the references would be combined to arrive at the claimed invention, we are left with only hindsight bias that KSR warns against.” Metalcraft, 848 F.3d at 1367 (“‘[T]he obviousness analysis cannot be confined by a formalistic conception of the words teaching, suggestion, and motivation,’ we also recognize that we cannot allow hindsight bias to be the thread that stitches together prior art patches into something that is the claimed invention” (quoting KSR, 550 U.S. at 420–21)).” slip op. at 30
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundReasonable expectation not foundNot shown unpatentable
“Petitioner must articulate a reason why a person of ordinary skill in the art would combine the prior art references. Personal Web Techs. v. Apple, 848 F.3d 987, 991–92 (Fed. Cir. 2017); In re NuVasive, 842 F.3d 1376, 1382 (Fed. Cir. 2016); Metalcraft of Mayville, Inc. v. The Toro Company, 848 F.3d 1358, 1366 (Fed. Cir. 2017) (“[I]t is insufficient to simply conclude the [prior art] combination would have been obvious without identifying any reason why a person of skill in the art would have made the combination.”); see Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (“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”). Conclusory statements alone, even those provided by a declarant, are inadequate to demonstrate a rationale for why a person of ordinary skill in the art would combine the teachings from prior art references. NuVasive, 842 F.3d at 1383. Instead, Petitioner’s arguments must be supported by a “reasoned explanation.” Id. (citing In re Lee, 277 F.3d 1338, 1342, 1345 (Fed. Cir. 2002)). We understand that a person of ordinary skill is a person of ordinary creativity, not an automaton, but “[w]ithout any explanation as to how or why the references would be combined to arrive at the claimed invention, we are left with only hindsight bias that KSR warns against.” Metalcraft, 848 F.3d at 1367 (“‘[T]he obviousness analysis cannot be confined by a formalistic conception of the words teaching, suggestion, and motivation,’ we also recognize that we cannot allow hindsight bias to be the thread that stitches together prior art patches into something that is the claimed invention” (quoting KSR, 550 U.S. at 420–21)). We agree with Petitioner that the cited references do not need to be physically combinable to render claim 1 obvious. In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012) (“The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference.”); see also In re Etter, 756 F.2d 852, 859 (Fed. Cir. 1985) (en banc). Obviousness, however, “may not be established using hindsight or in view of the teachings or suggestions of the inventor.” Para-Ordnance Mfg. v. SGS Importers Int’l, 73 F.3d 1085, 1087 (Fed. Cir. 1995) (citing W.L. Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1551, 1553 (Fed. Cir. 1983)). Additionally, it is impermissible for Petitioner to “use the claimed invention as an instruction manual or ‘template’ to piece together the teachings of the prior art so that the claimed invention is rendered obvious.” In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) (citing In re Gorman, 933 F.2d 982, 987 (Fed. Cir. 1991)). Accordingly, Petitioner must set forth clearly in the Petition which references it is relying on for each specific limitation and how those combined teachings would render the challenged claims obvious. See 35 U.S.C. § 312(a)(3).” slip op. at 31
Patent outcomesUS 8,630,726 not shown unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,630,726 - Ford Motor Company v. Versata Development Group, Inc.Rehearing deniedPTAB · Oct 26, 2017 · CBM2016-00100 · APJ Sally C Medley · CBM · Rehearing
The Board denied Ford’s rehearing request and left in place the denial of CBM review of claims 1–20, treating disclaimed claims 5, 10, and 15 as if they never existed.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“§ 42.71(d). The party must identify specifically all matters we misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. Id. When reconsidering a decision on institution, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may be determined if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000).” slip op. at 4
- Adverse judgmentOther
“covered business method patent review of claims 1–20 of U.S. Patent No. 8,805,825 B1 (Ex. 1001, “the ’825 patent”). In its Preliminary Response, Patent Owner asserted, with supporting evidence, that prior to filing its Preliminary Response, Patent Owner filed a statutory disclaimer pursuant to 37 C.F.R. § 1.321(a), disclaiming claims 5, 10, 15, 16, and 20. See Prelim. Resp. 13–14; Ex. 2009. Subsequent to the parties’ submissions, we authorized Petitioner to file a Reply, addressing (1) the impact of Unwired Planet, LLC v. Google Inc., 841 F.3d 1376 (Fed. Cir. 2016), decided after Petitioner filed its Petition and cited by Patent Owner in its Preliminary Response, and (2) whether certain claims of the challenged patent, which were disclaimed statutorily by Patent Owner, should be considered in determining whether the challenged patent is eligible for a covered business method patent review. Paper 7. We authorized Patent Owner to file a sur-” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“In our Decision, we treated disclaimed claims 5, 10, and 15 as if they never existed, and, therefore, did not consider Petitioner’s arguments that the ’825 patent is eligible for CBM patent review based on claims 5, 10, and 15. Dec. 7–8. We also considered Petitioner’s arguments with respect to how claims 1, 6, and 11 allegedly demonstrate that the ’825 patent is eligible for CBM patent review. Dec. 9–11. We determined those arguments were not “persuasive given the generic, broad claims, and the corresponding broad disclosure in the Specification of the ’825 patent.” Id. at 11.” slip op. at 3
NonePatents in suitUS 8,805,825 - Comcast Cable Communications, LLC v. Rovi Technologies Corp.Institution deniedPTAB · Oct 16, 2017 · IPR2017-00990 · APJ Michael R Zecher · IPR · Institution
The Board denied institution because Comcast did not show a reasonable likelihood that claims 7–22 and 74 were obvious over the asserted prior-art combinations.
RulingsInstitution decision- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for patent owner
“representing an operational state of the controlled computing device” turns, at least in part, on the scope and meaning of the term “state table.” In the specification of the ’281 patent, the terms SST and DST are used interchangeably to describe item 230 illustrated in Figure 3 (i.e., a state table). Compare Ex. 1201, 13:57–60, with id. at 28:41–49. The specification explicitly defines an SST as “[a] logical table consisting of rows of [Variable, Type, Legal Values, Default Value, Current Value] that represents the current electrical, mechanical, and/or logical state of a Service.” Id. at 8:53–56. By identifying the term SST amongst the list of terms that are discussed following the statement “[t]he detailed description that follows uses the terminology defined below” (id. at 6:20–21 (emphasis added)), the specification sets forth an explicit definition for the term SST with reasonable clarity, deliberateness, and precision. See Paulsen, 30 F.3d at 1480. Notably, nothing in the specification of the ’281 patent contradicts the definition of the term SST identified above or suggests another meaning for this term. For instance, the specification discloses that “SST layouts are logically specified in terms of rows of [Variable, Type, Legal Values, Default Value]. The actual instances of a SST would also include a Current Value field in every row.” Ex. 1201, 14:37–40. The specification also discloses the following: [an SST] logically consists of rows of: Variable, Type, Legal Values, Default Value, Current Value[.] Although entries of the [SST] in UPnP consist of these five items, the state table alternatively can contain fewer or additional items. Generally, each entry will minimally consist of a Variable name or identifier, and its current value. Id. at 16:12–18. According to the specification, representing Services in this way “ensures that the state of a Service is easily available in a common way to multiple User Control Points.” Id. at 16:44–46. In summary, we determine for purposes of this Decision that the broadest reasonable interpretation of the claim term “state table” is “a logical table consisting of rows of at least a variable identifier and a current value that represent the current electrical, mechanical, and/or logical state of a service or device,” which is consistent with the explicit definition of the term SST and other descriptions of a state table in the specification of the ’281 patent. We further clarify that, based on the plain language of independent claims 7, 11, 17, 18, and 20, the claimed “state table” includes content that “represent[s] an operational state of the controlled computing device.”” slip op. at 11
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“accounts for “a state table . . . representing an operational state of the controlled computing device,” as recited in independent claim 20. Accordingly, Comcast has not demonstrated a reasonable likelihood that it will prevail on its assertion that the subject matter of this independent claim would have been obvious over the teachings of Ludtke ’241. 4. Claim 74 By virtue of its dependency, claim 74 includes the same limitations as independent claim 20. Therefore, for the same reason discussed above with respect to independent claim 20, Comcast has not demonstrated a reasonable likelihood that it will prevail on its assertion that the subject matter of dependent claim 74 would have been obvious over the teachings of Ludtke ’241.” slip op. at 21
- BurdenNot shown unpatentable
“Comcast relies on for the recited “a state table . . . representing an operational state of the controlled computing device,” we agree with Rovi that Ludtke ’241 does not “expressly show[]” any of the data structures “in the form of a ‘table,’” as Comcast contends. See Prelim. Resp. 22 (citing Pet. 29). As explained above in Section II.A, we disagree with Comcast’s proposed construction of “state table” as simply “a data structure regarding the current state of a device.” Instead, we have construed the term “state table” for purposes of this Decision as “a logical table consisting of rows of at least a variable identifier and a current value that represent the current electrical, mechanical, and/or logical state of a service or device.” Under the proper construction, none of the data structures in Ludtke ’241 cited by Comcast (i.e., those in Figures 5, 7A, 7B, and 8), either individually or collectively, meet the claim limitation because they are not in the form of a logical table consisting of rows of at least a variable identifier and a current value. On the current record, we also agree with Rovi that Comcast’s other arguments are conclusory and do not establish that Ludtke ’241 renders obvious “a state table . . . representing an operational state of the controlled computing device,” as recited in independent claim 20. Prelim. Resp. 22–23 (citing Pet. 29–30). Comcast’s contention that the format of state data “is a matter of design choice to organize the status information for ease of use” does not support an obviousness conclusion because it fails to explain why a person of ordinary skill in the art would have replaced any or all of Ludtke ’241’s hierarchical data structures with a state table containing rows and columns. See Cutsforth, Inc. v. Motive Power, Inc., 636 F. App’x 575, 578 (Fed. Cir. 2016) (non-precedential) (“Merely stating that a particular placement of an element is a design choice does not make it obvious. [Petitioner] must offer a reason for why a person of ordinary skill in the art would have made the specific design choice.”). Comcast’s argument that using a state table to represent an operational state of the controlled device is a matter of “design choice” is further undermined by explicit statements in Ludtke ’241 that its system eliminates the need for state tables. See Ex. 1202, 5:32–36 (“All issues such as state transitions and inter-control dependencies are handled automatically. . . by the target device independently of the intelligent controller responsibility. The present invention removes all requirements for items such as state transition tables and their execution environment. . . .”); 10:19–20 (“All concerns regarding the state transition. . . are handled inside of the target device.”); 17:30–31 (“In operation, the intelligent controller is not burdened with keeping state tables . . . .”). Notably, neither Comcast nor its declarant, Dr. Lippman, addresses these statements in Ludtke ’241. See Pet. 27–30; Ex. 1212 ¶¶ 66– 69.” slip op. at 19
Claim constructioncites KSR · GrahamPatents in suitUS 6,725,281 - Comcast Cable Communications, LLC v. Rovi Technologies Corp.Institution deniedPTAB · Oct 16, 2017 · IPR2017-00994 · APJ Michael R Zecher · IPR · Institution
The Board denied institution because Comcast did not show a reasonable likelihood of proving claims 7–22 and 74 obvious over the asserted prior-art combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the Petition shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Taking into account the arguments presented in Rovi’s Preliminary Response, we conclude that the information presented in the Petition does not establish that there is a reasonable likelihood that Comcast would prevail in challenging claims 7–22 and 74 of the ’281 patent as unpatentable under 35 U.S.C. § 103(a). We, therefore, deny the Petition.” slip op. at 2
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Ludtke ’069 teaches or suggests “a state table . . . representing an operational state of the controlled computing device,” as recited in independent claim 20. First, we agree with Rovi that Comcast fails to establish that the “self-describing information” in Ludtke ’069 teaches a “state table.” See Prelim. Resp. 18. As explained above in Section II.A, we disagree with Comcast’s proposed construction of “state table” as simply “a data structure regarding the current state of a device.” Instead, we have construed the term “state table” for purposes of this Decision as “a logical table consisting of rows of at least a variable identifier and a current value that represent the current electrical, mechanical, and/or logical state of a service or device.” Therefore, even if we accept Comcast’s unsupported premise that entries of the VCR’s operational status in the self-describing information are in the form of a data structure in Ludtke ’069, Comcast fails to show that such a data structure is a “state table” as recited in independent claim 20 (i.e., a logical table consisting of rows of at least a variable identifier and a current value).” slip op. at 16
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for patent owner
“representing an operational state of the controlled computing device” turns, at least in part, on the scope and meaning of the term “state table.” In the specification of the ’281 patent, the terms SST and DST are used interchangeably to describe item 230 illustrated in Figure 3 (i.e., a state table). Compare Ex. 1601, 13:57–60, with id. at 28:41–49. The specification explicitly defines an SST as “[a] logical table consisting of rows of [Variable, Type, Legal Values, Default Value, Current Value] that represents the current electrical, mechanical, and/or logical state of a Service.” Id. at 8:53–56. By identifying the term SST amongst the list of terms that are discussed following the statement “[t]he detailed description that follows uses the terminology defined below” (id. at 6:20–21 (emphasis added)), the specification sets forth an explicit definition for the term SST with reasonable clarity, deliberateness, and precision. See Paulsen, 30 F.3d at 1480.” slip op. at 11
- Skill levelSkill level petitioner adoptedDecided for petitioner
“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;2 and (4) when in evidence, objective indicia of non-obviousness (i.e., secondary considerations). Graham v. John Deere Co., 383 U.S. 1, 17– 18 (1966). We analyze this asserted ground based on obviousness with the principles identified above in mind.” slip op. at 13
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,725,281 - Comcast Cable Communications, LLC v. Rovi Technologies Corp.Institution deniedPTAB · Oct 16, 2017 · IPR2017-00992 · APJ Michael R Zecher · IPR · Institution
The Board denied institution because Comcast did not show a reasonable likelihood that claims 7–22 and 74 were obvious over the asserted combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the Petition shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Taking into account the arguments presented in Rovi’s Preliminary Response, we conclude that the information presented in the Petition does not establish that there is a reasonable likelihood that Comcast would prevail in challenging claims 7–22 and 74 of the ’281 patent as unpatentable under 35 U.S.C. § 103(a). We, therefore, deny the Petition.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for patent owner
“representing an operational state of the controlled computing device” turns, at least in part, on the scope and meaning of the term “state table.” In the specification of the ’281 patent, the terms SST and DST are used interchangeably to describe item 230 illustrated in Figure 3 (i.e., a state table). Compare Ex. 1401, 13:57–60, with id. at 28:41–49. The specification explicitly defines an SST as “[a] logical table consisting of rows of [Variable, Type, Legal Values, Default Value, Current Value] that represents the current electrical, mechanical, and/or logical state of a Service.” Id. at 8:53–56. By identifying the term SST amongst the list of terms that are discussed following the statement “[t]he detailed description that follows uses the terminology defined below” (id. at 6:20–21 (emphasis added)), the specification sets forth an explicit definition for the term SST with reasonable clarity, deliberateness, and precision. See Paulsen, 30 F.3d at 1480. Notably, nothing in the specification of the ’281 patent contradicts the definition of the term SST identified above or suggests another meaning for this term. For instance, the specification discloses that “SST layouts are logically specified in terms of rows of [Variable, Type, Legal Values, Default Value]. The actual instances of a SST would also include a Current Value field in every row.” Ex. 1401, 14:37–40. The specification also discloses the following: [an SST] logically consists of rows of: Variable, Type, Legal Values, Default Value, Current Value[.] Although entries of the [SST] in UPnP consist of these five items, the state table alternatively can contain fewer or additional items. Generally, each entry will minimally consist of a Variable name or identifier, and its current value.” slip op. at 11
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Comcast relies on for teaching “a state table . . . representing an operational state of the controlled computing device,” we agree with Rovi that Comcast has not pointed to any disclosure in Dara-Abrams of a data structure in the form of a table. See Prelim. Resp. 20 (citing Pet. 27–28). As explained above in Section II.A, we disagree with Comcast’s proposed construction of “state table” as simply “a data structure regarding the current state of a device.” Instead, we have construed the term “state table” for purposes of this Decision as “a logical table consisting of rows of at least a variable identifier and a current value that represent the current electrical, mechanical, and/or logical state of a service or device.” Under the proper construction, none of the data structures in Dara-Abrams identified by Comcast, either individually or collectively, meet the claim limitation because they are not in the form of a logical table consisting of rows of at least a variable identifier and a current value.” slip op. at 17
- Skill levelSkill level petitioner adoptedDecided for petitioner
“the art;2 and (4) when in evidence, objective indicia of non-obviousness (i.e., secondary considerations). Graham v. John Deere Co., 383 U.S. 1, 17– 18 (1966). We analyze this asserted ground based on obviousness with the principles identified above in mind.” slip op. at 14
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,725,281 - Securus Technologies, Inc. v. Global Tel*link CorporationInstitution deniedPTAB · Oct 11, 2017 · IPR2017-01177 · APJ Kevin F Turner · IPR · Institution
Instituted review of claims 1–20: claims 1–6 and 8–15 on obviousness over Otto, and claims 7 and 16–20 on obviousness over Otto, Gainsboro, and San Martin.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“III. CONCLUSION For the foregoing reasons, we conclude that there is a reasonable likelihood that Petitioner would prevail in showing that claims 1–20 of the ’250 Patent are unpatentable. The Board has not made a final determination with respect to the patentability of these claims. The Board’s final determination will be based on the record as developed fully during trial.” slip op. at 25
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“As quoted by Patent Owner, 35 U.S.C. § 325(d) addresses whether “the same or substantially the same prior art or arguments previously were presented to the Office.” To evaluate this criterion, we examine what arguments and art were presented to and considered by the Examiner during prosecution. Although Otto was considered by the Examiner (Ex. 1004, 243 indicates Otto was included in an Information Disclosure Statement by the Applicant), the Examiner did not rely on Otto in any rejection of the issued claims in view of Otto. We are further persuaded that the Examiner has not been shown to have considered Otto in the instant context, i.e., with claims 10 being argued as being obvious over Otto and with declaration testimony opining that the claims would have been obvious over Otto (Ex. 1002). Patent Owner also faults Petitioner for not distinguishing Otto from San Martin (Prelim. Resp. 7), but it is not necessarily incumbent on a petitioner to distinguish the disclosures of newly applied and previously applied prior art references. Patent Owner points out similarities in the disclosures of Otto and San Martin (id. at 6–7), but does not demonstrate what similar portions of Otto and San Martin would have been considered in finding certain claims allowable. See Ex. 1004, 219. Such a consideration is important because Patent Owner incorporated the allowable subject matter into the independent claims to gain allowance. See Ex. 1004, 290. At this stage of the proceedings, we are persuaded that that there is a reasonable likelihood that Petitioner would prevail in showing the subject matter of the independent claims are taught or suggested by Otto, and as discussed below, we are not persuaded that the disclosures of Otto and San Martin are necessarily cumulative.” slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“With respect to the level of ordinary skill in the art, Petitioner asserts that such a person “would have held at least a bachelor’s degree in electrical engineering, computer engineering, or a similar field, and had at least two years of experience (or the academic equivalent) working with speaker-dependent voice recognition in the context of telecommunications.” Pet. 7 (citing Ex. 1002 ¶¶ 38–41). Patent Owner does not offer an alternate characterization at this time. As such, we adopt Petitioner’s statement of the level of ordinary skill in the art for purposes of this decision.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownOther
“Hence, we determine that “match” would have been understood as determining whether two data items are identical or finding a data item that is identical to a key. See Ex. 3001. Furthermore, we determine that “substantially” would have been understood as to a great or significant extent, or for the most part or essentially. See Ex. 3002. Therefore, we determine that the broadest reasonable construction, consistent with and in 7 the context of the specification, of “substantially matches” is “determining whether two data items are for the most part or essentially identical.” See also Verve v. Crane Cams, 311 F.3d 1116, 1120 (Fed. Cir. 2002) (“Expressions such as “substantially” are used in patent documents when warranted by the nature of the invention, in order to accommodate the minor variations that may be appropriate to secure the invention.”)); see, e.g., Ecolab Inc. v. Envirochem, Inc., 264 F.3d 1358, 1367 (Fed. Cir. 2001) (explaining that “like the term ‘about,’ the term ‘substantially’ is a descriptive term commonly used in patent claims to avoid a strict numerical boundary to the specified parameter”) (citation omitted). Although Petitioner does not proffer an explicit construction for the claim term “substantially matches,” Petitioner does argue that the prior art discloses “both exact matches and matches that deviate from exact matches by predetermined amounts.” Pet. 29 (citing Ex. 1002 ¶ 74). Therefore, we are persuaded that Petitioner is implicitly applying a claim construction of “substantially matches” that comports with the broadest reasonable construction determined herein.” slip op. at 7
Claim construction§ 103 obviousnessDiscretionary denialcites NautilusPatents in suitUS 9,521,250 - Apple Inc. v. Personalized Media Communications, LLCAll claims unpatentablePTAB · Sep 19, 2017 · IPR2016-00755 · APJ Karl D Easthom · IPR · Final written decision
Claims 13–15, 17, 18, 20, 21, 23, 24, 26, 27, and 30 are unpatentable; the contingent motion to amend is denied because the substitute claims are unpatentable.
RulingsFinal written decision- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportDecided for petitioner
“B. Priority The prior art status of all the asserted references in this trial hinges on the effective filing date for the ’091 patent with respect to support for the challenged claims. Petitioner contends that the earliest effective filing date for challenged claims of the ’091 patent is September 11, 1987 (through a series of continuation patents). See Pet. 2–3. The ’091 patent effectively claims CIP status from September 11, 1987 to a chain of continuing applications purportedly having an effective filing date of November 3, 1981––the filing date of the earliest-filed ancestor patent in the chain, the ’490 patent. See Ex. 1003, [63]. Patent Owner contends that the effective filing date of the ’091 patent is November 3, 1981, the filing date of the ’490 patent. Prelim. Resp. 8; PO Resp. 25. After a teleconference requested by Petitioner prior to institution, the panel authorized the parties to file supplemental briefing on this issue. See Ex. 1041 (Teleconference Transcript); Pet. Prelim. Reply; PO Sur-Reply. Citing Bradford Co. v. Conteyor N. Am., Inc., 603 F.3d 1262 (Fed. Cir. 2010), Petitioner relies on estoppel, contending that Patent Owner disclaimed priority to the filing date of the ’490 patent during prosecution after a double patenting rejection by the Examiner.10 See Pet. Prelim. Reply 6–7. Petitioner also relies on PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1306, 1311 (Fed. Cir. 2008), contending that Patent Owner broadened the scope of the claim term “programming” in the 1987 application that led to the ’091 patent, relative to the scope of the term as disclosed in the ancestor 1981 ’490 patent specification.11 Id. In addition, Petitioner contends that the 1981 ’490 patent specification does not provide sufficient disclosure to support specific claim elements as recited in challenged claims of the ’091 patent. Id. at 7. Patent Owner disagrees with each of these theories, as discussed further below. As an initial matter, Patent Owner initially argues (in its PO Sur- Reply) that the Petition fails to make “a prima facie case” that the ’490 patent does not support the challenged claims that issued in the CIP ’091 patent. PO Sur-Reply 1 (emphasis omitted). Patent Owner does not make this argument in its Response. Rather, in its Response, Patent Owner only argues that “[a]t least claims 13–16, and 18 (‘the 1981 Claims’) are entitled to the priority date of November 3, 1981.” PO Resp. 25. Accordingly, Patent Owner waives any argument 1) that the Petition fails to shift the burden of production to Patent Owner on the issue of priority with respect to “the 1981 Claims” (i.e., claims 13–16 and 18; PO Resp. 25) and 2) that” slip op. at 49
- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer not foundDecided for petitioner
“equitable tool for determining the permissible scope of patent claims.” Builders Concrete, Inc. v. Bremerton Concrete Prods. Co., 757 F.2d 255, 258 (Fed. Cir. 1985). Because the prosecution history does not reveal a clear disavowal of claim scope in context of the disputed phrases in the challenged claims as a whole, under a broadest reasonable construction, the public should not be bound via a doctrine of equity to a construction that would render the claims superfluous and contradict the meaning of decrypting and programming as described in the patents by stripping their breadth to all-digital applications. See Tempo Lighting, Inc. v. Tivoli, LLC, 742 F.3d 973 (Fed. Cir. 2014) (The court “observes that the PTO is under no obligation to accept a claim construction proffered as a prosecution history disclaimer.” (Emphasis added)). Accordingly, contrary to Patent Owner’s arguments, no disclaimer attaches to support Patent Owner’s claim” slip op. at 41
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“claims 14, 15, 18, and 24. See PO Resp. 55 (relying on arguments with respect to “several elements of claims 13 and 20”), 44–55 (presenting arguments for claims 13, 20, 15, and 23). The burden, however, remains on Petitioner to demonstrate unpatentability. See Dynamic Drinkware, LLC v. National Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). As discussed above, after reviewing the Petition, supporting evidence, and the other briefs, and based on the record, we find that Gilhousen discloses each limitation of the challenged claims. See Pet. 16–29 (citing Ex. 1001; Ex. 1004). Accordingly, in light of the foregoing, we determine Petitioner has shown by a preponderance of evidence that Gilhousen anticipates claims 13– 15, 18, 20, 23, and 24.” slip op. at 95
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“2. Secondary Considerations As Petitioner argues, Patent Owner fails to show a nexus to its alleged” slip op. at 114
Patent outcomesUS 8,191,091 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites PhillipsPatents in suitUS 8,191,091 - BASF Corporation v. Enthone, Inc.No claims unpatentablePTAB · Sep 11, 2017 · IPR2016-00696 · APJ Kevin F Turner · IPR · Final written decision
BASF did not prove claims 1–15, 17–22, and 26–28 unpatentable because it failed to show a motivation and reasonable expectation of success for the proposed combinations.
RulingsFinal written decision- Skill levelSkill level board ownDecided for patent owner
“Based on the arguments of the parties, we agree that one of ordinary skill in the art would have had at least a bachelor’s degree in materials science, chemistry, or a related discipline, and would have had approximately two or more years of experience as a process engineer. We are further persuaded that such skilled artisans would have had to understood the differences between conformal and superfilling electrolytic plating, and that they would have appreciated that it was unpredictable whether a given molecule would have served as a suppressor effective for superfilling. This 12 was conformed at Oral Hearing, where counsel for BASF acknowledged that it was not uncommon to try a plating bath component, even if the mechanisms of how it may work are not fully understood. See Tr. 25.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundReasonable expectation not foundNot shown unpatentable
“or reason to use a specific compound or series of compounds, with a reasonable expectation that the plating bath components would allow for superfilling. Independent claims 1 and 17 make clear that the methods must provide for superfilling: claim 1 provides that it must “superfill the submicron-sized features by rapid bottom-up deposition at a rate of growth in the vertical direction which is greater than a rate of growth in the horizontal direction,” and claim 17 provides that it must “superfill the submicron-sized features by rapid bottom-up deposition at a vertical Cu deposition growth rate in features from the bottoms of the features to the top 19 openings of the features which is greater than 15 times faster than a field deposition growth rate on substrate surfaces outside the features.” Thus, any combination must have a reasonable expectation of success in achieving the results required by the claims. Although Barstad and Morrissey both disclose superfilling, as discussed above, a person of ordinary skill in the art must have a reasonable expectation that any changes to the plating bath components, as contemplated by the instant grounds of unpatentability, will leave the ability to provide superfilling undisturbed.” slip op. at 19
- Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner
“In addition, we find the testimony of Dr. Pound to be less persuasive than the testimony of Dr. Barkey, with respect to how one of ordinary skill in the art would have viewed Alling. Dr. Pound testifies that in view of Alling, “a person of ordinary skill in the art would likely have used Tetronic® polymers as suppressors in copper electroplating compositions” (Ex. 1002 ¶ 31), but that testimony omits considerations of superfilling. Dr. Pound also testifies that In view of the knowledge provided by IBM’s achievements and the teachings by Alling, Barstad, and Morrissey, a person of skill in the art would have used Tetronic polymers as suppressor agents in copper electroplating solutions and would have optimized the concentration of the suppressors and other agents to maximize the rate of superfilling and ensure that void formation is avoided. Id. at ¶ 29. This testimony does not indicate what in Alling would have suggested the use of Tetronic polymers as suppressor agents in the context of superfilling. Dr. Pound also contends that “[t]he broader disclosure in Alling can be shown to relate to superfilling” (Ex. 1029 ¶ 21), but Alling does not tie that broad applicability to the specific use of Tetronic polymers as suppressor agents. Dr. Pound also testifies as to the similarities between” slip op. at 24
Patent outcomesUS 7,303,992 not shown unpatentable§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,303,992 - CQG, Inc. / CQG, LLC (F/K/A CQGT, LLC) v. Chart Trading Development, LLCAll claims unpatentablePTAB · Sep 1, 2017 · CBM2016-00048 · APJ Kevin W Cherry · CBM · Final written decision
Claims 1–31 are unpatentable under § 101 because they claim the abstract idea of confirming or modifying an order using conventional graphical interface features.
RulingsFinal written decision- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionUnpatentable
“Claim 1, as a whole, recites a sequence for displaying and submitting electronic versions of what used to be paper forms—i.e., using two interfaces—one displaying price information and the second comprising a detailed order form—to confirm or modify orders. This is essentially a computerized version of the age-old process of displaying prices and providing an order form for placing orders based on that price. Ex. 1026, 297; Ex. 1018, 2. Indeed, contrary to Patent Owner’s assertion that we are improperly distilling the claims, PO Resp. 21, it is only by assessing the claims as a whole that it becomes apparent that claim 1 is directed to placing and modifying an order and not on the scantily described graphical user interface. Merely “relying on a computer to perform routine tasks more quickly or more accurately is insufficient to render a claim patent eligible.” OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015) (citing Alice, 134 S. Ct. at 2359).” slip op. at 14
- Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptStep2 no inventive conceptUnpatentable
“known. Given the above, we determine that the individual elements of the claim do not transform the nature of the claim into a patent-eligible application. They do not add significantly more to the abstract idea or fundamental economic practice. Moreover, considering all of the elements as an ordered combination, we determine that the combined elements also do not transform the nature of the claim into a patent-eligible application. Patent Owner contends that these claims are similar to the claims found patent eligible in BASCOM Global Internet Services, Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016), because they are directed to a “non-conventional and non-generic arrangement” of elements. PO Resp. 49. Patent Owner argues that “the claimed solution of the ’435 patent utilizes a specialized graphical trading interface with a particular layout to allow a trader to use a pointing device to execute trades from tabular information.” Id. Patent Owner argues that “the claimed implementation is neither conventional nor generic.” Id. at 50. Patent Owner contends that its claims are unlike Electric Power Group because “the ’435 claims do not recite merely gathering and displaying trading information using conventional computer technology . . . [a]nd they do not purport to monopolize every way of gathering and displaying trading information of every way of gathering and displaying trading information or every way of using user interfaces for placing trading instructions.” Id. at 51–52. Instead, Patent Owner asserts that the challenged claims are “directed to an inventive device or technique for trading with a particular layout of elements and particular techniques, including alterable and selectable features, i.e., a specialized [graphical user interface] tool.” Id. at” slip op. at 28
- 101 substituteMotion to amend, deniedDenied
“of a limitation for pre-populating the price field, and an explicit limitation requiring that the adjustment of the price field occur using the up and down arrows. As we discussed above, allowing pre-population of data fields and modification of data fields using up and down arrows was known and does not alter the fact that these claims are directed to the pre-electronic analog of a paper order form used as part of the traditional order confirmation and modification process. As we explained above, the original claims already recited the up and down arrows to modify the price and size fields and this limitation only slightly narrows the claim to using those arrows, which were already present in the claim. As we discussed above, those up and down price arrows did not later our conclusion that the claims are directed to the abstract idea of “[c]onfirming and/or modifying an order as part of the order placement process.” Merely, reciting that the already present arrows are used, does not limit the claim in any meaningful way. The explicit use of the arrows and pre-populating a data field are simply specifying how and in what order certain data are to be displayed, which without more, is still collecting, analyzing, and displaying information is abstract). Even considering them together, we agree with Petitioner that they represent merely a computerized version of pre-electronic trading concepts and, much like Ameranth “[t]he patents claim systems including menus with particular features. They do not claim a particular way of programming or designing the software to create menus that have those features, but instead claim the resulting systems.” See Amaranth, 842 F.3d at 1241; see also Affinity Labs, 838 F.3d at 1262 (claims abstract where the alleged technological features are merely “tools in the aid of a process focused on an abstract idea”). Thus, we agree with Petitioner that the amended claims remain directed to the abstract idea of confirming and/or modifying an order as part of the order placement process.” slip op. at 42
- ExcludeMotion to exclude, deniedMixed
“paragraphs 59–97 of Mr. Molokhia’s Declaration (Exhibit 2027). Mot. Exclude 1. With respect to Exhibit 2026, Petitioner argues that the exhibit is not relevant under Federal Rules of Evidence 401 and 402, would lead to undue prejudice under Federal Rule of Evidence 403, and is inadmissible hearsay under Federal Rule of Evidence 802. Mot. Exclude 2–3. Patent Owner argues that the testimony is relevant, not prejudicial, and not hearsay. Opp. Exclude 3–8. We did not rely on Exhibit 2026, so we dismiss the motion to exclude as moot insofar as it applies to Exhibit 2026. With respect to paragraphs 59–97 of Exhibit 2027, Petitioner argues that they should be excluded under Fed. R. Evid. 702 and as “inadmissible conclusions of law.” Mot. Exclude 3. Petitioner argues that Mr. Molokhia fails to provide any underlying facts or data for his conclusions that the amended claims are not obvious. Id. at 5. Petitioner contends that “[w]ithout sufficient facts or data to support Mr. Molokhia’s opinion, such testimony stands as conclusory and unreliable, and thus inadmissible under F.R.E. 702 in view of the Supreme Court’s holdings in Daubert and Kumho.” Id. at 6. We disagree with Petitioner’s argument that Mr. Molokhia’s testimony should be excluded. We have reviewed Mr. Molokhia’s testimony and find that although phrased at times as the ultimate legal issue of obviousness, the bulk of his testimony goes to the underlying factual issues of obviousness. To the extent that the reasoning provided by Mr. Molokhia is insufficient, Petitioner’s arguments go more to the weight that should be given the testimony than its admissibility. See Microfinancial, Inc. v. Premier Holidays Int’l, Inc., 385 F.3d 72, 81 (1st Cir. matter affecting the weight and credibility of the testimony—a question to be resolved by the [factfinder].”). Thus, we deny Petitioner’s motion to exclude paragraphs 59–97 of Exhibit 2027.” slip op. at 45
Patent outcomesUS 8,060,435 unpatentable§ 101 eligibilitycites Alice · Mayo · Bilski · Enfish · Electric PowerPatents in suitUS 8,060,435
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.