• CB Distributors, Inc. / Dr Distributors, LLC v. Fontem Holdings 1 B.V.Some claims unpatentable
  PTAB · Dec 24, 2014 · IPR2013-00387 · APJ Jacqueline Wright Bonilla · IPR · Final written decision

  Claims 1–10, 12, 15–26, and 33–38 are unpatentable: claims 1, 2, 5–8, 10, 33, 35, 37, and 38 as anticipated by Liu; the specified remaining claims as obvious over Hon ’494 and Liu.

  RulingsFinal written decision

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

    “filed a Petition (Paper 1, “Pet.”) to institute an inter partes review of claims 1–12, 15–26, and 33–41 of U.S. Patent No. 8,156,944 B2 (Ex. 1001) (“the ’944 patent”). The previous Patent Owner, Ruyan Investment (Holdings) Limited,1 did not file a preliminary response. We determined that the information presented in the Petition demonstrated that there was a reasonable likelihood that Petitioner would prevail in challenging claims 1–12, 15–26, and 33–38, but not claims 39–41, of the ’944 patent, as unpatentable under 35 U.S.C. § 102 or § 103, or both. Pursuant to 35 U.S.C. § 314, we instituted this proceeding on December 30, 2013, to review whether claims 1–12, 15–26, and 33–38 are unpatentable on the following grounds. Reference(s) Basis Claims Challenged Liu (Ex. 1019)2 § 102 1, 2, 5–8, 10, 33, 35, 37, and 38 Hon ’494 (Exs. 1008/1009)3 § 103 1–4, 8–12, 15–26, 33, 34, 36, and 38” slip op. at 2

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner

    “We decline, however, to read limitations that are not recited into the claims. While we read claims in view of the Specification, we do not read limitations from embodiments in the Specification into the claims. Hill-Rom Servs., Inc. v. Stryker Corp., 755 F.3d 1367, 1371 (Fed. Cir 2014) (citing Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 904 (Fed. Cir. 2004)). Our reviewing court “has expressly rejected the contention that if a patent describes only a single embodiment, the claims of the patent must be construed as being limited to that embodiment.” Hill-Rom Servs., 755 F.3d at 1371–72 (quoting Liebel-Flarsheim, 358 F.3d at 906).” slip op. at 10

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner

    “At least one dictionary definition provided by Patent Owner mirrors the dictionary definition cited in our Decision to Institute. Dec. to Inst. 11 (citing Random House Webster’s College Dictionary 1051 (1995) (defining “porous” as “permeable by water, air, etc.” or “full of pores”)). Exhibit B attached to Mr. Sheehan’s Declaration provides several definitions for “porous” as presented in the Free Online Dictionary (http://www.thefreedictionary.com/porous). That dictionary defines “porous” to mean, among other definitions, “having pores,” “[a]dmitting the passage of gas or liquid through pores or interstices,” or “permeable to water, air, or other fluids.” Ex. 2001, Ex. B. The other dictionary cited by Mr. Sheehan provides definitions for “porous” that include “containing minute interstices through which water, air, etc., may pass.” Id. at Ex. C (providing an on-line Oxford English Dictionary). While both dictionaries define “porous” to include the definition of “full of pores,” both dictionaries also include less limiting definitions. Id. at Exs. B, C. We do not agree with Patent Owner or Mr. Sheehan that the broadest reasonable construction of “porous” is limited to “full of pores or interstices into which liquid or gas is absorbed or defused.” PO Resp. 26; Ex. 2001 ¶ 29. Rather, as discussed in our Decision to Institute, we interpret “porous,” consistent with its ordinary meaning and how it is used the Specification, to refer to a component that includes pores and is permeable to liquid, i.e., admits passage of air or liquid through pores or interstices. Dec. to Inst. 11. A component that includes such pores has the ability to “absorb” liquid in the pores, consistent with disclosures in the Specification, regardless of whether the porous component has a few pores or is full of pores, such as in the case of a foam. Ex. 1001, 6:30–34; 7:3–7.” slip op. at 12

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

    “narrowly as Patent Owner suggests. Rather, we consider whether Liu describes (i) an atomizing chamber that runs through, i.e., inside and along the length of, the atomizer and its electric heating rod, such that (ii) atomization occurs along (i.e., runs through), the length of the chamber. Petitioner has established by a preponderance of the evidence that Figure 2 of Liu depicts (i) an atomizing chamber inside heater housing 24 that runs through, i.e., inside and along the length of, heater housing 24 and its electric heating rod (i.e., rod and heater wire 26). Pet. 18–20, 24, 28 (citing Ex. 1019, Figs. 2, 5, 6:18–22, 7:16–19, 9:19–20). Petitioner also establishes that Liu describes (ii) atomization occurring along the length of the chamber inside heater housing 24. Contrary to Patent Owner’s assertion, it does not matter to our analysis that the upstream end of heater housing 24 in Liu is not “unblocked,” and it does not matter whether apertures 28 are “small.” Rather, we consider whether apertures in heater housing 24 in Liu allow liquid to come into the chamber such that atomization occurs along the length of the chamber, as required by claims 1 and 10.” slip op. at 19

  Patent outcomesUS 8,156,944 mixed
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 8,156,944
• Tandus Flooring, Inc. v. Interface, Inc.All claims unpatentable
  PTAB · Dec 8, 2014 · IPR2013-00333 · APJ Miriam L Quinn · IPR · Final written decision

  Claims 6-15, 20-39, and 43-58 were shown unpatentable over Pacione and the listed Kinoshita combinations; cancellation was granted for claims 1-5, 16-19, and 40-42, while substitute claims 59 and 60 were denied.

  RulingsFinal written decision

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

    “On the whole, we are not persuaded that the ordinary and customary meaning, under the broadest reasonable interpretation, of the “shear strength” limitation is limited to lateral movement or lateral gaps, because there is insufficient evidence that such a narrow interpretation is appropriate. See E-Pass 9 Ex. 1027 (Definition gap (n)(4), Webster’s Ninth New Collegiate Dictionary, 1986 (“a separation in space”); Definition gap (n)(1), Webster’s II New College Dictionary, 1996 (“an opening as in a wall”)). 10 See Ex. 2052, 102:3104:19. We note Patent Owner contends that Mr. Gray’s testimony is biased and contradictory. Paper 57, PO Mot. for Observations 2, 7. We also note that Petitioner responded to these contentions by showing testimony regarding the level of knowledge of Mr. Gray and that the testimony is consistent with Petitioner’s allegations that the word “gap” includes lateral separation, but does not exclude vertical separation. Paper 63, Pet. Resp. to PO Mot. for Observations 12, 910. We have taken Patent Owner’s contentions and Petitioner’s response into consideration when determining the weight accorded to Mr. Gray’s testimony. Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 1368 (Fed. Cir. 2003) (Where no explicit definition for the term “electronic multi-function card” was given in the specification, this term should be given its ordinary meaning and broadest reasonable interpretation; the term should not be limited to the industry standard definition of credit card where there is no suggestion that this definition applies to the electronic multi-function card as claimed, and should not be limited to preferred embodiments in the specification.). Turning to the disputed claim language, as we stated in our Decision on Institution, we determine that the word “sufficient” introduces a relative amount to the recited “shear strength.” The phrase “shear strength” is the capacity of a material to resist shear.11 And “shear” is “a strain resulting from applied forces that cause or tend to cause contiguous parts of a body to slide relatively to each other in a direction parallel to their plane of contact.”12 Applying the plain and ordinary meaning to the claim language, therefore, the layer of adhesive must have the adequate capacity to resist shear. The layer’s capacity, however, does not narrow the claimed function of including such a layer in the connector to prevent only lateral movement of adjacent tiles and lateral gaps from forming after installation. The plain language of the claims confirms this interpretation because the result of providing the “sufficient shear strength” at the adhesive layer is to 11 Definition shear strength, WEBSTER’S THIRD NEW INTERNATIONAL DICTIONARY, UNABRIDGED (1993), available at http://lionreference.chadwyck.com (Dictionaries/Webster’s Dictionary) (Exhibit 3001). 12 Definition shear, WEBSTER’S THIRD NEW INTERNATIONAL DICTIONARY, UNABRIDGED (1993), available at http://lionreference.chadwyck.com (Dictionaries/Webster’s Dictionary) (Exhibit 3002). prevent adjacent tiles from moving relative to the connector or each other. This claim language indicates that abutting tile edges are prevented from moving “in a direction parallel” to the plane of contact—which would include both lateral and vertical movement. For example, lifting may be prevented when providing a resistance to shear sufficient to allow for the horizontal strain caused by suction, traffic, and any other dragging force.” slip op. at 10

  • Skill levelSkill level board ownDecided for patent owner

    “We are persuaded that the level or ordinary skill in the art combines the knowledge of carpet tile installation and adhesive tape characteristics. The prior art of record, particularly Kinoshita, describes the solution of laying carpet tiles using adhesive tape pieces to avoid laying adhesive on the floor. Ex. 1006 ¶¶ 12, 5. Pacione also describes installation of carpet modules without substantial attachment to the floor. Ex. 1004, Abstract. Therefore, we agree with Patent Owner that the level of ordinary skill in the art includes knowledge of carpet tiles and their installation methods. We disagree with Patent Owner, however, in that the level or ordinary skill in the art would not include expertise in adhesive tape characteristics. See PO Resp. 18 (arguing that Dr. Jensen is not a POSITA because his expertise relates to pressure sensitive adhesive tapes). For instance, Kinoshita discloses the use of removable, single-side or double-sided adhesive tape that is pressed to the rear of the carpet tiles. Ex. 1006 ¶¶ 7–8, 12. Kinoshita recognizes that the adhesive must be of sufficient strength to stick to the rear of the carpet tile, but also allow for repositioning. Id. ¶ 12. Details of the backing for pressure sensitive adhesive tape are part of the prior art of record, such as Robinson (Ex. 1011). For example, Robinson describes the properties and characteristics to make the adhesive tape backing suitable for pressure-sensitive adhesive tapes. Id. at col. 1, l. 46col. 2, l. 44. Therefore, it is appropriate that we consider, as part of the level of ordinary skill in the art, knowledge of adhesive tape appropriate for carpet tile installations as described in Kinoshita, as well as the knowledge of the properties and characteristics of pressure-sensitive tapes suitable for the use in carpet tile installations.” slip op. at 15

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “Lastly, we credit the testimony of Dr. Tippett and Dr. Jensen in that the Kinoshita disclosure confirms the knowledge of a person of ordinary skill in the art regarding the use of adhesive tapes for carpet tile installations. For the reasons that follow, we are not persuaded by Patent Owner’s characterizations of their testimony that engineering adhesive tape for carpet tile installations was vastly complex or would involve extensive trial and error. See PO Resp. 2325. First, we acknowledge that Petitioner does not rely solely on Kinoshita as disclosing all the attributes of the adhesive tape. Indeed, the Dr. Tippett Declaration clarifies that his opinion relies on the disclosures of Kinoshita to the degree it describes the configuration and performance of the installed carpet units, e.g., a “floating” installation, edge-to-edge configuration, unitary installation, etc. Ex. 1018 ¶¶ 13.113.2. We credit Dr. Tippett, who has expertise and knowledge of carpet tile installations, when he declares that the installation described in Kinoshita would have no “gapping” at the seams, and, therefore, the tape, being single-sided, would have to include an adhesive that would resist movement of the tiles. Id. ¶¶ 13.313.5. It makes sense that a method of carpet tile installation for commercial or household use would aim for carpet tiles that, after installation, remain abutted. See Ex. 1006 ¶ 1 (“tile that is used in offices and homes”). Dr. Tippett’s Declaration further states that Kinoshita supports his conclusions of the basic requirements for the use of adhesive tape in a carpet tile installation. Ex. 1018 ¶ 13.6. To support his conclusions, Dr. Tippett cites to Kinoshita teaching pre-connected tiles, which are installed as a block of tiles. Id. For this installation to be successful, the adhesive tape of Kinoshita, according to Dr. Tippett, “must include an adhesive with sufficient shear strength and sufficient peel strength to prevent movement of the tiles relative to one another and/or the tape pieces.” Id. The Dr. Jensen Declaration also concludes that the teachings in Kinoshita confirm that a person of ordinary skill in the art would select an adhesive tape with the recited shear strength. First, Dr. Jensen opines that suitability for the intended purpose is a core consideration when selecting or designing tape for a given application. Ex. 1020 ¶ 17.2. His Declaration then lists the criteria to consider when selecting a tape that would maintain the Kinoshita carpet units connected and abutting (in an edge-to-edge configuration). Id. ¶¶ 17.317.5 (listing adhesive compatibility with the tile backing with suitability for the environment and duration of use, as well as providing sufficient wetting and adequate peel and adhesion). Once Dr. Jensen arrives at the basic requirements of an adhesive tape selection, he looks to Kinoshita once more to confirm that Kinoshita recognizes these requirements. Id. ¶¶ 17.617.11 (establishing that, because Kinoshita discloses multiple pre-connected tiles being handled as a block, the adhesive tape would need to have sufficient shear adhesion and peel adhesion to prevent the carpet tiles from pulling or twisting apart from each other while the tiles are moved). Based on the cited testimony, we are not persuaded that Petitioner is relying on a theory of inherency with regard to whether Kinoshita discloses the “sufficient shear strength” limitation. Therefore, the arguments by Patent Owner rebutting the alleged “inherency” are unpersuasive. See PO Resp. 2224. Petitioner relies on what Kinoshita teaches to a person of ordinary skill in the art. That person is a person of ordinary creativity, not an “automaton.” KSR, 550 U.S. at 421. We “can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” Id. at 418. Therefore, based on the evidence presented, we agree with Petitioner that Kinoshita teaches, to a person of ordinary skill in the art, the use of adhesive tape for carpet tile installations where the adhesive has “sufficient shear strength,” per our construction of this phrase.” slip op. at 31

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

    “teach the “sufficient shear strength” limitation. PO Resp. 2728. According to Patent Owner, the disclosure in Pacione is no more than a suggestion to try adhesive and is not an enabling disclosure. Id. We agree with Patent Owner that the “sufficient shear strength” limitation is recited as a property of the layer of adhesive. See id. at 28 (Patent Owner arguing that the rigidity and stability are characteristics of Pacione’s anchor sheets, not the adhesive). Nevertheless, the “sufficient shear strength” property results in connector that prevents adjacent tiles from moving relative to the connector or each other and thereby creating gaps between the adjacent tiles after installation. That is, an adhesive would have the requisite shear strength when the connector accomplishes the prevention of the relative movement that creates gaps. In Pacione, we find that the anchor sheets, the recited “connector,” are attached with a detachable attachment that could also be an adhesive. Ex 1004, col. 4, ll. 5155. With Pacione’s anchor sheets using the disclosed detachable attachment (including the adhesive option) the installed anchor sheets form a contiguous floor covering having sufficient rigidity and horizontal plane stability or shear force stability. Id. at col. 4, ll. 1520, col. 5, ll. 39. We find this disclosure particularly significant because it specifically attributes the shear force stability to the installed anchor sheets under the carpet pieces, i.e., the recited “connectors” with the layer of adhesive. It follows from this express disclosure of shear force stability that the installed carpet tiles are stable in the horizontal plane, such that their movement with respect to each other, and with respect to the anchor sheets, would be restricted. Patent Owner fails to point us to evidence that Pacione’s anchor sheets, under carpet tiles, exhibiting the disclosed shear force stability, do not prevent the recited relative movement that creates gaps as recited. As for the argument that Pacione is not enabled with regard to the disclosure of using adhesive in place of hook and loop, we have not been directed to facts sufficient to show that such a disclosure would not inform one of ordinary skill in the art how to make the claimed connector. See In re Donohue, 766 F.2d 531, 533 (Fed. Cir. 1985) (“Such possession is effected if one of ordinary skill in the art could have combined the publication’s description of the invention with his [or her] own knowledge to make the claimed invention.”). It is undisputed that Pacione discloses replacement of the hooks with adhesive. Patent Owner makes the point, however, that Pacione does not disclose the characteristics of the adhesive. PO Resp. 27. The question for us to decide is whether Pacione’s disclosure of adhesive is sufficiently enabled to allow a person of ordinary skill in the art to make the claimed connector. The lack of details regarding adhesive properties, however, does not negate that Pacione discloses the adhesive application together with anchor sheets that achieve shear force stability when installed. Furthermore, the testimony of Mr. Benny Wood, proffered by Patent Owner to support its contention, does not persuade us that disclosure of adhesive in Pacione is not enabling. Id. (citing Ex. 2017 ¶ 131). That testimony focuses on whether Pacione teaches an adhesive that would prevent lateral movement, a narrow view of the claims that we do not adopt per our claim construction discussion above. See Ex. 2017 ¶ 131. Furthermore, in his cross-examination, Mr. Wood did not dispel the notion that Pacione’s disclosure of adhesive would be sufficient, because his reasons for opining that the adhesive is not taught sufficiently are not relevant to the scope of the claim. For example, Mr. Wood” slip op. at 23

  Patent outcomesUS 8,381,473 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR
  Patents in suitUS 8,381,473
• Iron Dome LLC v. Chinook Licensing De LLCRehearing denied
  PTAB · Nov 4, 2014 · IPR2014-00674 · APJ William V Saindon · IPR · Rehearing

  The Board denied Iron Dome’s rehearing request, finding no overlooked or misapprehended matter regarding Chen arguments or the use of a 2001 dictionary to construe “contemporaneous.”

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “A reconsideration request “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” 37 C.F.R. § 42.71(d). Petitioner sets forth two matters it believes the Board overlooked or misapprehended. First, Petitioner acknowledges that we “looked at the portions of Chen that Petitioner had cited” but that we “overlooked other portions of Chen that are now made more relevant” in view of our claim construction. Req. Reh’g 1–2; see also id. at 2–5 (setting forth the various portions in Chen that Petitioner asserts are now made relevant). We could not have overlooked arguments not presented, however, and Petitioner has the burden of demonstrating a reasonable likelihood of success. 35 U.S.C. § 314(a).” slip op. at 2

  None
  Patents in suitUS 7,047,482
• Motivepower, Inc. v. Cutsforth, Inc.All claims unpatentable
  PTAB · Oct 30, 2014 · IPR2013-00270 · APJ Miriam L Quinn · IPR · Final written decision

  Claims 1–2 and 4–13 are unpatentable as anticipated by Kartman; the Board did not reach the other instituted grounds.

  RulingsFinal written decision

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

    “define the term “mounting block,” and that nothing in the claim language indicates that the term is used other than in accordance with its plain and ordinary meaning. Dec. on Inst. 8. We further noted that claim 11 recites that the “mounting block extend[s] from a stationary base.” Id. Guided by evidence of the plain and ordinary meaning consistent with the specification, we determined that the word “block” means “a base, platform or supporting frame.”3 Id. at 89. Patent Owner, however, objects to the word “base” as defining the “mounting block” because the claims recite another base, the “stationary base.” PO Resp. 1112. Accordingly, to avoid confusion, Patent Owner proffers that the construction of “mounting block” should refer to a block, not a base. Id. Petitioner argues that the proposal to define “block” to mean a block does not clarify any issues and that Patent Owner has not argued that the prior art does not disclose a “block.” Pet. Reply 4. Consequently, the clarification is unnecessary. Id. We agree with Petitioner. Although the claims recite a “base” and a “block” distinctly, the claims, however, may recite these two terms in a 2 See e.g., Chicago Manual of Style, 15th edition, Section 7.58 (“When a word or term is not used functionally but is referred to as the word or term itself, it is either italicized or enclosed in quotation marks.”). 3 Block Definition (4), WEBSTER’S THIRD NEW INTERNATIONAL DICTIONARY, UNABRIDGED (1993) (Ex. 3001). synonymous ordinary meaning, to indicate that the two distinct structures have similar functions, as bases. Therefore, we construe the term “mounting block” according to the ordinary meaning of the term to mean “a base for affixing to another structure.”” slip op. at 9

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

    “2528. Particularly, Patent Owner argues that because Kartman employs a clamping mechanism, clamp bar 46 is inherently moveable. Id. at 27. But we have determined that “mounting block,” based on the plain and the ordinary meaning of the term, does not mean that the block must be fixed or non-moveable. See Section II.C.1, supra. Accordingly, this argument is not persuasive. Instead, we find that Kartman discloses a “mounting block” because clamp bar 46 is a base for affixing brush holder 31 to mounting surface 14. See Ex. 1003, col. 3, l. 62 – col. 4, l. 2; Fig. 3. We also find that clamp bar 46 is designed to fit inside channel 48 such that when the detachable means are securing brush holder 31, the “first and second outer surfaces of the mounting block are disposed between the first and second inner side surfaces of the channel,” as recited in claim 1. See Ex. 1003, Fig. 2 (illustrating Kartman’s clamp bar 42 disposed within channel 48 of the brush box); col. 4, ll. 1719. Kartman further discloses that clamp bar 42 includes a pair of internally threaded apertures 51 alignable with holes 44, thus disclosing the recited “mounting block includ[ing] a mounting aperture extending there through.” Id. at col. 4, ll. 1317. Finally, we find that Kartman discloses that when the cap screws are tightened, a compressive force engages rear channel 48 so that it is “locked” into position against mounting surface 14. Id. at col. 5, ll. 1619. That is, when “locked” into position, Kartman’s brush holder is secured in place and coupled to the clamp bar (which has the apertures disposed within channel 48), and, therefore, Kartman discloses that “when the brush holder component is coupled to the mounting block, at least a portion of the mounting aperture is disposed within the channel,” as recited in claim 1. As for the remaining elements recited in claims 1 and 11, which were not disputed by Patent Owner, we also find that Kartman discloses those elements according to the comparisons between the Kartman disclosures presented in the Petition and the claim limitations.” slip op. at 16

  Patent outcomesUS 7,417,354 unpatentable
  Claim construction§ 102 anticipation
  Patents in suitUS 7,417,354
• Motivepower, Inc. v. Cutsforth, Inc.All claims unpatentable
  PTAB · Oct 30, 2014 · IPR2013-00268 · APJ Trenton A Ward · IPR · Final written decision

  Claims 14, 16-19, 21, and 22 are unpatentable as anticipated by Ohmstedt and Krulls ’155.

  RulingsFinal written decision

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther

    “according to their broadest reasonable construction in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b); Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012). Claim terms also are given their ordinary and customary meaning as would be understood by one of ordinary skill in the art in the context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Also, we must be careful not to read a particular embodiment appearing in the written description into the claim if the claim language is broader than the embodiment. See In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993) (“limitations are not to be read into the claims from the specification”). In the Decision on Institution, we interpreted the term “‘mounting block’” of the ’906 patent to mean “‘a base for affixing to another structure.’” Dec. 7–8. We do not modify the construction of “mounting block” in this decision. Regarding” slip op. at 6

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner

    “Petitioner disagrees and argues that Patent Owner is attempting to improperly narrow the term “beam.” Furthermore, Petitioner argues that the term “beam” should be given its plain and ordinary meaning of an “elongated support structure.” Pet. Reply 8. Petitioner further argues that the portions of the Specification quoted by Patent Owner do not require “rigid” materials because the Specification expressly states that, although in “some embodiments” stainless steel can be used for the beam, “other materials, including other metals, non metals, plastics and/or composites may also be used.” Pet. Reply 5–6 (citing Ex. 1001, 5:4–11) (emphasis added). Therefore, we are not persuaded by Patent Owner to read a limitation recited in the Specification for “some embodiments” into all embodiments encompassed by the claims. Ex. 1001, 5:4–11. As to the Patent Owner’s proposal that the term “beam” includes a requirement that it be “long” and “straight,” Patent Owner fails to cite to any disclosure in the Specification of the ’906 patent that any embodiments of the “beam,” much less all embodiments, must be long and straight. Furthermore, Patent Owner provides neither an indication of what constitutes a sufficiently straight or sufficiently long beam nor any citations to disclosure in the ’906 patent or other materials defining those limitations. For example, because beam 14 in the ’906 patent Specification is not “straight” in all directions, we presume that Patent Owner does not propose that the “beam” be “straight” in all directions, but the Patent Owner Response fails to identify which axis of the “beam” is to be “straight.” In view of the foregoing, we construe the term “beam” of the ’906 patent to mean “an elongated support structure.”” slip op. at 7

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

    “We are not persuaded by Patent Owner’s argument. As construed above, the claimed “brush catch” can be provided as an integral sub-component of the “beam.” As shown in Figure 1 of Ohmstedt above, outwardly extending portions 23 and teeth 25 are sub-components of biased legs 21 provided at the bottom of biased legs 21. Ex. 1003, Fig. 1. Accordingly, we determine that the cited Ohmstedt disclosures meet the limitations of a “beam” and a “brush catch.” Second, Patent Owner argues that Ohmstedt does not disclose a “beam,” as recited in claim 14. PO Resp. 23. Specifically, Patent Owner argues that neither brush holder 11 nor inwardly biased legs 21 of Ohmstedt are “long, straight structural members designed to be rigid.” PO Resp. 23. We are not persuaded by Patent Owner’s argument. As discussed above, we do not adopt Patent Owner’s proposed construction of “beam” to mean “a long, straight structural member designed to be rigid.” We construe “beam” to mean an “elongated support structure,” and Patent Owner does not dispute that brush holder 11, disclosed in Ohmstedt, provides an “elongated support structure.” Accordingly, we are persuaded that Ohmstedt’s brush holder 11, identified by Petitioner in its challenge for the beam (Pet. 14), discloses this “beam” limitation.” slip op. at 12

  • PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, grantedGranted

    “On February 18, 2014, the Board granted the Motion to Amend the claims filed by Cutsforth, Inc., Patent Owner, in which Patent Owner requested cancellation of claims 1, 2, 4, 5, and 10–13. Accordingly, Petitioner’s challenges to these claims were rendered moot.” slip op. at 2

  Patent outcomesUS 7,141,906 unpatentable
  Claim construction§ 102 anticipation
  Patents in suitUS 7,141,906
• Motivepower, Inc. v. Cutsforth, Inc.All claims unpatentable
  PTAB · Oct 30, 2014 · IPR2013-00272 · APJ Miriam L Quinn · IPR · Final written decision

  Claims 1–5 and 7–15 are unpatentable as anticipated by Kartman; the Board did not reach the other instituted grounds.

  RulingsFinal written decision

  • BurdenFwd mixedUnpatentable

    “B. Patentability of Claims To prevail in its challenges to the patentability of claims, the Petitioner must establish facts supporting its challenges by a preponderance of the evidence. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d). A claim is anticipated, and, thus, unpatentable, if a single prior art reference discloses each and every element of the claimed invention. See Schering Corp. v. Geneva Pharm., 339 F.3d 1373, 1377 (Fed. Cir. 2003).” slip op. at 16

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner

    “’014 patent as depicting that lower mounting block 16, i.e., the “mounting block,” is fixed in place to mount base 41 via bolts 43. Id. at 7. Patent Owner further points to descriptions of various embodiments of the attachment of the “mounting block” to a base or to a location. Id. at 8. Neither Figure 15B nor the statements in the specification identified by Patent Owner require the non-moveable, or “fixed,” aspect. Figure 15B does not show that the attachment excludes any ability to adjust the block. Indeed, the bottom surface of the mount is not depicted in Figure 15B, leaving us to speculate concerning the shape of mount holes 96 in that embodiment, because a round hole would suggest there is no adjustability, while a slotted or elongated hole would suggest adjustability. But see Ex. 1001, Fig. 9 (not cited by Petitioner, and confirming that elongated holes 96 are contemplated). The lack of description and depiction of the shape of the holes compels us to reject Patent Owner’s characterization of Figure 15B as supporting a “fixed” or non-moveable attachment. Furthermore, as for the descriptions of how the mount is attached, the specification uses the word “secure” and describes various embodiments of the attachment, none of which requires non-movability of the mount after the brush holder component is installed. See Ex. 1001, col. 16, ll. 2831 (bolts and washers “secure the lower mount block 16 to a mount base” (emphasis added)); col. 14, ll. 6264 (“mount holes 96 may include threading or other elements that allow for attachment to a mount base”); col. 16, ll. 3234 (“in other embodiments, a welded, keyed, pinned or other attachment scheme may be used to secure the lower mount block 16 to a mount base” (emphasis added)). In fact, the specification makes a point of not limiting the attachment of the mount to any particular method, fixed or not fixed. See id. at col. 12, ll. 4447 (“or other attachment scheme may be used to secure the lower mount block 16 to a mount base near a moving conductive surface or in position to move relative to a conductive surface”). Nor does the language of the claim recite any method of attachment that limits the mounting block to something that cannot be adjusted, shifted, re-positioned, or otherwise moved, after attachment to the base.” slip op. at 7

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

    “a. Independent Claim 1 Concerning independent claim 1, Petitioner has shown that Kartman discloses a stationary mounting surface 14 (corresponding to the recited “stationary base”), a detachable connecting means 42 (corresponding to the “elongate mounting block”), the brush holder 31 (corresponding to the “brush holder component”), the rear channel 48 (corresponding to the “channel”), the cap screws 47 (corresponding to the “fastener”); and brush holder 38 (corresponding to the “brush box”). Pet. 911. Petitioner has further shown that Kartman’s brush holder 31 is “detachably connected mechanically and electrically to the mounting surface 14 of the support cross beam 13,” and that rear channel 48 at the rear end of the brush box slideably receives clamp bar 46. Id. at 10. Clamp screws 47 pass into threaded apertures 51 in clamp bar 46. Id. Therefore, Kartman discloses a brush holder 31 (“brush holder component”) for removably mounting to clamp bar 46 of detachable connecting means 42 (“mounting block”) because the brush holder attaches to clamp bar 46 of detachable connecting means 42 in a non-permanent manner. Patent Owner challenges Petitioner’s evidence of anticipation by Kartman, arguing that Kartman does not disclose the “mounting block,” “removably mounting,” and “fastener” limitations. PO Resp. 1826. Patent Owner’s arguments rely on claim construction positions we did not adopt, and, therefore, the arguments are unpersuasive. i. Mounting Block Limitation Specifically, with regard to the “mounting block,” Patent Owner argues that because Kartman employs a clamping mechanism, clamp bar 46 is inherently moveable. PO Resp. 1819. But we have determined that “mounting block,” based on the plain and the ordinary meaning of the term, does not mean that the block must be fixed or non-moveable. See Section II.C.1, supra. Accordingly, this argument is not persuasive. Instead, we find that Kartman discloses a “mounting block” because clamp” slip op. at 19

  • PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, grantedGranted

    “We granted Patent Owner’s motion requesting cancellation of claims 6 and 16 of the ’014 patent. Paper 13, Order on Mot. to Amend.” slip op. at 2

  Patent outcomesUS 8,179,014 unpatentable
  Claim construction§ 102 anticipationcites Phillips
  Patents in suitUS 8,179,014
• Motivepower, Inc. v. Cutsforth, Inc.All claims unpatentable
  PTAB · Oct 30, 2014 · IPR2013-00274 · APJ Trenton A Ward · IPR · Final written decision

  Claims 1–24 are unpatentable as obvious over Bissett, Kartman, and Ohmstedt.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner

    “according to their broadest reasonable construction in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b); Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012). Claim terms also are given their ordinary and customary meaning as would be understood by one of ordinary skill in the art in the context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Also, we must be careful not to read a particular embodiment appearing in the written description into the claim if the claim language is broader than the embodiment. See In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993) (“limitations are not to be read into the claims from the specification”).” slip op. at 6

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

    “4. Analysis Concerning independent claim 1, Petitioner contends that Bissett discloses a brush holder component (brush assembly 12) adapted for removably mounting to the mounting block (dovetails 18) by providing a channel for receiving a portion of the mounting block (dovetails 18). Pet. 16 (citing Ex. 1005, 1:61–2:1, Figs. 3–4). Furthermore, Petitioner argues that it would have been obvious to adapt the brush holder (brush assembly 12) of Bissett to include the brush catch of Ohmstedt, whereby divergent portion 23 of Ohmstedt would extend downward from the Bissett channel such that teeth 25 of Ohmstedt engage the Bissett brush 24. Pet. 10 (citing Ex. 1003, 1:14–18, 28–50; Ex. 1005, Fig. 4). Accordingly, Petitioner argues that the brush catch of Ohmstedt (divergent portion 23 and teeth 25) has a first position preventing sliding movement of a brush and a second position permitting sliding movement of a brush. Pet. 16 (Ex. 1003, 2:5–49, 3:8–12, Figs. 1, 2). Additionally, Petitioner argues that it would have been obvious to include the Ohmstedt brush release (ramps 59) in a position to engage the brush catch below the mounting structure (dovetails 18). Pet. 10–11, 17 (citing Ex. 1003, 2:15–17, 39–43, Fig. 2). The Petitioner also argues that it would have been obvious to adapt the mounting block of Bissett (dovetails 18) with the mounting block of Kartman. Pet. 11–12 (citing Ex. 1004, 4:19–22 and Ex. 1005, 1:63–64). More particularly, Petitioner proposes that the “T” shaped channel in Bissett may be modified to incorporate the elongated mounting block structure of Kartman (detachable connecting means 42), which also is configured to slidably engage a “T” shaped channel. Pet. 12–13 (citing Ex. 1004, 4:19–22, Fig. 3; Ex. 1005, 1:63– 64, Fig. 4).” slip op. at 19

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner

    “We are not persuaded by Patent Owner’s argument because Patent Owner fails to identify any disclosure in Bissett that requires operation in accordance with a “one hand rule.” In an attempt to support Patent Owner’s arguments that Bissett requires the “one hand rule,” Patent Owner cites the following disclosure in Bissett: In collector brush assemblies generally known to the prior art, the manipulation[s] required to replace a brush are sometimes rather involved, usually calling for the shutdown of the generator. PO Resp. 24 (citing Ex. 1005, 1:14–25). We are not persuaded by Patent Owner’s assertion that this disclosure requires the Bissett device to use the “one hand rule,” as the cited disclosure merely states that prior art devices usually required shutting down the generator to change brushes. See Ex. 1005, 1:14–25. Additionally, Patent Owner cites the following disclosure of Bissett as providing an “express invocation against the use of []tools” (PO Resp. 27) to manipulate the mounting block: Each brush assembly is installable and removable by an insulated handle[,] which is itself removable from each brush assembly so that only one such handle is required to service an entire generator. PO Resp. 27 (citing Ex. 1005, 1:36–40). We are not persuaded that this disclosure is an “express invocation against the use of [] tools” to manipulate the mounting block, but rather, a statement regarding the ability of an operator to use a single insulated handle with multiple Bissett brush assemblies. These cited disclosures from Bissett do not instruct an operator to use the “one hand rule.” In fact, the term “one hand rule” is not mentioned in Bissett. As we are not persuaded by Patent Owner that the Bissett brush assembly requires compliance with a “one hand rule,” we not persuaded that the modification of the mounting block of Bissett with the mounting block of Kartman would be contrary to the intended purpose of the Bissett brush assembly.” slip op. at 20

  • Obviousness (§103) › KSR rationalesDecided for petitioner

    “spring force against at least a portion of the brush holder component.” PO Resp. 46. Petitioner relies upon the “spring [] lead receptacle 32” of the mounting block disclosed in Bissett as applying a force against at least a portion of the brush holder, namely, knife-edge clip 30 of the brush holder. Pet. 19–20 (citing Ex. 1005, 2:12–15, Fig. 4). Patent Owner argues that the proposed Bissett/Kartman mounting block does not meet the limitations of claim 5 because lead receptacle 32 is not part of Bissett’s mounting block. PO Resp. 47. Contrary to Patent Owner’s assertion, Petitioner argues that “one of ordinary skill in the art would understand that the modified Bissett/Kartman mounting block includes a spring (lead receptacle 32).” Pet. 19 (citing Ex. 1005, 2:12–15, Fig. 4). Furthermore, as Petitioner points out, the position of “spring lead receptacle 32” is a mere design choice and its position relative to dovetails 18 does not change the overall shape of Bissett’s mounting structure. Pet. Reply 12 (citing Ex. 1013, 90:14–20). We determine that positioning spring lead receptacle 32 on the Bissett/Kartman mounting block is a matter of design choice because its placement there would not alter the operation of the modified mounting block. See In re Kuhle, 526 F.2d 553, 555 (CCPA 1975) (holding that the particular placement of a contact in a conductivity measuring device was an obvious matter of design choice within the skill in the art). Accordingly, we are not persuaded by Patent Owner’s arguments with respect to claim 5. e. Claims 7, 13, and 17 Claims 7, 13, and 17 prohibit the “mounting block” from extending through a plane defined by a planar surface of the base on which the mounting block is mounted. Patent Owner argues that bolts 16 in the Bissett mounting block extend completely through the base of frame 4 and, thus, fail to meet the limitations of claims 7, 13, and 17. PO Resp. 47–48. Petitioner counters that dovetails 18 in Bissett are positioned entirely on one side of base 4. Pet. Reply 12. Petitioner further argues that a person of ordinary skill in the art would have understood that, rather than using a shank extending from the head, Bissett’s dovetails 18 could have been created with screws or bolts that engage threads in the heads. Id. We agree that one of ordinary skill in the art could have readily modified dovetails 18 in Bissett to comply with the limitations in claims 7, 13, and 17. Accordingly, we are not persuaded by Patent Owner’s arguments with respect to claims 7, 13, and 17.” slip op. at 25

  Patent outcomesUS 7,990,018 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 7,990,018
• Motivepower, Inc. v. Cutsforth, Inc.All claims unpatentable
  PTAB · Oct 30, 2014 · IPR2013-00267 · APJ Miriam L Quinn · IPR · Final written decision

  Claims 1–7 are unpatentable as anticipated by Kartman; the Board did not reach the additional instituted grounds.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner

    “Petitioner argues that the proposal to define “block” to mean a block does not clarify any issues and that Patent Owner has not argued that the prior art does not disclose a “block.” Pet. Reply 4. Consequently, the clarification is unnecessary. We agree with Petitioner. Although the claims recite a “base” and a “block” distinctly, the claims, however, may recite these two terms in a synonymous ordinary meaning, to indicate that the two distinct structures have similar functions, as bases. Therefore, we construe the term “mounting block” according to the ordinary meaning of the term to mean “a base for affixing to another structure.”” slip op. at 10

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

    “Instead, we find that Kartman discloses a “mounting block” because clamp bar 46 is a base for affixing brush holder 31 to mounting surface 14. See Ex. 1003, col. 3, l. 62–col. 4, l. 2; Fig. 3. We find that clamp bar 46 is designed to fit in a certain position along mounting surface 14, thereby disclosing that the “mounting block [is] configured to extend from a stationary base.” See Ex. 1003, Fig. 3 (illustrating Kartman’s clamp bar 42 disposed with cap screws 47 that match the orifices 44 on the mounting surface). With regard to the “removable component for selective coupling,” Patent Owner argues that because Kartman utilizes a clamp there is no coupling at “only a single predetermined position.” PO Resp. 22. Patent Owner admits that the coupling position in Kartman “is selected by the user, and can vary over the course of repeated removal and re-installation operations.” Id. That coupling, however, Patent Owner proffers, requires a worker to use two hands. Id. We are not persuaded by these arguments for they rely on an interpretation of “selective coupling” that does not comport with the plain and ordinary meaning as we have determined above. See Section II.C.2, supra. As discussed above, the claim term requires that there be a selection of a coupling state. We determined above that the claim term does not require that there be a predetermined position for a selected coupling state to be covered by the plain and ordinary meaning of the claim language, “selective coupling.” We find that Kartman discloses that clamp bar 46 allows the brush holder to be secure in place when the clamped position is selected by acting on cap screws 47. Ex. 1003, col. 4, ll. 1926. And we further find that Kartman discloses selecting the unclamped position by unscrewing slightly cap screws 47, which releases clamp bar 46 from the compressive force, thus permitting the adjustment or removal of the brush box. Id. at col. 4, ll. 2631. Therefore, Kartman discloses two coupling states, clamped and unclamped, both of which are selectable by the mere turn of a cap screw. Accordingly, we find that Kartman discloses “a removable component for selective coupling to the mounting block,” as recited in independent claims 1 and 6.” slip op. at 17

  Patent outcomesUS 7,122,935 unpatentable
  Claim construction§ 102 anticipation
  Patents in suitUS 7,122,935
• Oracle Corporation / Oracle Otc Subsidiary LLC et al. v. Click-To-Call Technologies LPAll claims unpatentable
  PTAB · Oct 28, 2014 · IPR2013-00312 · APJ Michael R Zecher · IPR · Final written decision

  Claims 1, 2, 8, 12, 13, 15, 16, 19, 22, 23, 26, 29, and 30 are unpatentable over Dezonno alone or with Mosaic Handbook.

  RulingsFinal written decision

  • PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner

    “Request for Rehearing, both the Federal Rules of Civil Procedure and Federal Circuit precedent treat a dismissal without prejudice as something that, de jure, never existed. Dec. 16–17; Paper 40, 4. It is undisputed that the patent infringement suit filed by Inforocket against Keen—now YP Interactive LLC—on June 8, 2001, was dismissed without prejudice on March 21, 2003. Ex. 1019, 1; Ex. 1017, 4; Ex. 1018, 8. We have determined that, because this patent infringement suit was dismissed without prejudice, Federal Circuit precedent interprets such a dismissal as leaving the parties in the same legal position as if the underlying complaint had never been served. See Graves v. Principi, 294 F.3d 1350, 1356 (Fed. Cir. 2002); Bonneville Assoc., Ltd. P’ship v. Baram, 165 F.3d 1360, 1364 (Fed. Cir. 1999). Accord 9 WRIGHT, MILLER, KANE, and MARCUS, FEDERAL PRAC. & PROC. CIV. § 2367 (3d. ed.). As a consequence, YP Interactive LLC is not barred from pursuing an inter partes review of the ’836 patent under § 315(b).” slip op. at 12

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportNot reached

    “Even if we were to agree with CTC that there is sufficient evidence to corroborate Mr. DuVal’s testimony that he conceived of the claimed invention of the ’836 patent prior to April 21, 1995, as we will discuss below, CTC does not provide sufficient evidence to corroborate Mr. DuVal’s testimony that there was a continuous exercise of reasonable diligence during the entire critical period. Consequently, we need not reach and, therefore, do not address conception.” slip op. at 17

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable

    “evidence presented by Oracle in its Petition for the grounds of unpatentability based, in whole or in part, on Dezonno (Pet. 15–33; Ex. 1007 ¶¶ 11–17), we are persuaded that Oracle presents sufficient evidence to support a finding that Dezonno, either standing alone or in combination with Mosaic Handbook, discloses the claimed subject matter recited in claims 1, 2, 8, 12, 13, 15, 16, 19, 22, 23, 26, 29, and 30. We also are persuaded that Oracle provides an articulated reason with a rational underpinning to combine the teachings of Dezonno and Mosaic Handbook. Pet. 32–33; Ex. 1007 ¶ 17. Therefore, based on the record before us, we conclude that Oracle has demonstrated by a preponderance of the evidence that: (1) claims 1, 2, 12, 13, 19, 22, 23, 26, 29, and 30 are anticipated by Dezonno; (2) claims 1, 2, 8, 12, 13, 15, 16, 19, 22, 23, 26, 29, and 30 are obvious over Dezonno; and (3) claims 22 and 29 are obvious over the combination of Dezonno and Mosaic Handbook.” slip op. at 26

  • BurdenFwd all claims unpatentableUnpatentable

    “corroborate Mr. DuVal’s testimony does not demonstrate a continuous exercise of reasonable diligence during the entire critical period with respect to either constructive reduction to practice or actual reduction to practice, particularly during the time period between May 15, 1995, and June 15, 1995. As a result, CTC has not antedated Dezonno, which, in turn, qualifies as prior art to the ’836 patent under 35 U.S.C. § 102(e).” slip op. at 26

  Patent outcomesUS 5,818,836 unpatentable
  § 102 anticipation§ 103 obviousness
  Patents in suitUS 5,818,836
• Sipnet Eu S.R.O. v. Straight Path IP Group, Inc.All claims unpatentable
  PTAB · Oct 9, 2014 · IPR2013-00246 · APJ Kalyan K Deshpande · IPR · Final written decision

  Claims 1–7 and 32–42 are unpatentable: claims 1–7, 32, and 38–42 as anticipated by NetBIOS; claims 1–7 and 32–42 as anticipated by WINS; and claims 33–37 as obvious over both.

  RulingsFinal written decision

  • PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner

    “in-interest. Whether a non-party is a “real party-in-interest” or “privy” for purposes of an inter partes review proceeding is a “highly fact-dependent question” that takes into account how courts generally have used the terms to “describe relationships and considerations sufficient to justify applying conventional principles of estoppel and preclusion.” Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,759. Whether parties are real parties-in-interest or in privity, for instance, depends on whether the relationship between the party and its alleged real party-in-interest or privy is “sufficiently close such that both should be bound by the trial outcome and related estoppels.” Id. A number of factors may be relevant to the analysis, including whether the non-party “exercised or could have exercised control over a party’s participation in a proceeding,” and whether the non-party is responsible for funding and directing the proceeding. Id. “The concept of control generally means that ‘it should be enough that the nonparty has the actual measure of control or opportunity to control that might reasonably be expected between two formal coparties.’” Id. (quoting 18A C. Wright, A. Miller & E. Cooper, Federal Practice & Procedure § 4451 (2d ed. 2011)). Patent Owner has not demonstrated that Stalker Software exercised or could have exercised control over Petitioner’s participation in this proceeding. The evidence of record establishes only that Stalker Software provided the WINS reference, at the request of Petitioner. Pet. Reply 1; Tr. 28:3-9. This alone is insufficient to demonstrate that Stalker Software exercised, or could have exercised, control over Petitioner’s participation in this proceeding. Patent Owner’s evidence of the existence of a vendor-reseller relationship between Stalker Software does not demonstrate Stalker Software exercised, or could have exercised, any control. When a patent holder sues a dealer, seller, or distributor of an accused product, the mere payment of counsel fees and minor participation by the vendor in the trial are insufficient to establish privity between the vendor and reseller. Bros, Inc. v. W.E. Grace Mfg. Co., 261 F.2d 428, 430 (5th Cir. 1958); See generally Broadcom Corp. v. Telefonaktiebolaget LM Ericsson, Case IPR2013- 00601, slip op. at 7, 8 (PTAB Jan. 24, 2014) (Paper 23). Patent Owner’s assertions regarding witnesses with connections to both Stalker Software and Petitioner, and Petitioner’s alleged lack of presence in the U.S. market, are statements of counsel unsupported by any record evidence, and, in any event, are not indicative of any control of this proceeding by Stalker Software. Considering the lack of probative evidence submitted by Patent Owner, we are not persuaded that the record establishes that Stalker Software is a real party-in-interest. Accordingly, we are” slip op. at 11

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner

    “We agree with Petitioner that “connected to the computer network” encompasses being “on-line,” which can be done by registering an address with the server. The ’704 patent specification and claims do not limit the scope of “connected to the computer network.” Furthermore, the ’704 patent specification discloses “the second processing unit 22, upon connection to the Internet 24 through a connection service provider, is processed by the connection server 26 to be established in the database 34 as an active on-line party.” Ex. 1001, col. 5, ll. 35–38. Thus, the context of “connected to the computer network,” as disclosed in the specification, includes storing the processing unit address by the connection server database, and storing the address establishes the processing unit as active and on-line. This is consistent with the determination in our Initial Decision. Dec. 5–6. Patent Owner has not provided any evidence or rationale sufficient for us to disturb that claim construction. Furthermore, Patent Owner and Dr. Ketan Mayer-Patel agree that a second processing unit is “active and on-line at registration.” PO Resp. 26; Ex. 2018 ¶ 22. Although Patent Owner argues that a process “being online” does not encompass registering an address because the process “may subsequently go off-line” (PO Resp. 26), Patent Owner has not provided any persuasive rationale or evidence to demonstrate that the limitation “connected to the computer network,” or any other claim limitation, requires a specified duration of time that a processing unit is “active and on-line.” Accordingly, we are not persuaded that the proper scope of the limitation “connected to the computer network” precludes a processing unit that is “active and on-line” but “may subsequently go off-line.” Therefore, under the broadest reasonable construction, “connected to the computer network” encompasses a processing unit that is “active and on-line at registration.”” slip op. at 6

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityReference is prior artPrinted publication establishedDecided for petitioner

    “We are persuaded that Petitioner has established WINS as prior art. We are persuaded that WINS was publically available in 1994. Mr. Kolesnikov testifies to seeing printed copies of WINS and the CD version in 1994. Ex. 1017 ¶ 7. Mr. Kolesnikov further testifies he recalls seeing printed copies of WINS during installations he did for clients in 1994, and is certain that it was 1994 because he had switched jobs in 1995. Ex. 2043, 29:1–10, 32:21–22. Additionally, we are persuaded that the portions of WINS relied upon by Petitioner are different from the CD version due to formatting only. Tr. 23:1 – 25:8. Patent Owner’s argument consists of alleging that Petitioner has failed to establish that WINS was publically available and does not offer any evidence contrary to that presented by Petitioner. Based on the evidence discussed above, we are persuaded that Petitioner has established that WINS is prior art.” slip op. at 20

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

    “Patent Owner’s argument that “the name may remain registered even after the computer that registered it is later disconnected from the network” is not persuasive because the scope of the claims does not require any specific time “later” that the second process must be “on-line and active.” As discussed above our claim construction of “connected to the computer network” encompasses a second process that is “on-line” by registering an address with the server. As also discussed above, such constructions for “connected to the computer network” and “determining the on-line status of the second process” are consistent with the ʼ704 patent, which specifies that “the second processing unit 22, upon connection to the Internet 24 through a connection service provider, is processed by the connection server 26 to be established in the database 34 as an active on-line party.” Ex. 1001, col. 5, ll. 35–38. Furthermore, Patent Owner and Dr. Ketan Mayer-Patel agree that a second processing unit is “active and on-line at registration.” PO Resp. 26; Ex. 2018 ¶ 22. In other words, Patent Owner and Dr. Ketan Mayer-Patel agree that NetBIOS discloses, at one point in time, a query or determination for a second processes’ address is the same as a query or determination as to whether the second process is “active and on-line.” See PO Resp. 26; Ex. 2018 ¶ 22. NetBIOS describes that at the time of registration, a query or determination for a second processing unit’s address indicates a second processing unit is “active and on-line.” Patent Owner also argues that NetBIOS fails to teach “dynamic address allocation,” as required by the claims. PO Resp. 50–54. As discussed above, Patent Owner argues that the claims require that an address be assigned “following connection to the computer network” and, by definition, this is dynamic address allocation. Id. at 52 (citing Ex. 2018 ¶¶ 24, 26). Petitioner argues that “dynamic address allocation” is anticipated by NetBIOS, and Patent Owner does not dispute that WINS anticipates dynamic address assignment to computers, as discussed below. Pet. Reply 12. We are not persuaded by Patent Owner’s argument. As discussed above in our claim construction of “following connection to the computer network,” we do not construe the claims 1–4, 32, and 38–42 as requiring “dynamic address allocation.” Accordingly, Patent Owner’s argument that NetBIOS fails to teach “dynamic address allocation” does not persuade us that NetBIOS fails to anticipate claims 1–4, 32, and 38–42.” slip op. at 14

  Patent outcomesUS 6,108,704 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 6,108,704

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.