• RPX Corporation v. Applications In Internet Time, LLCAll claims unpatentable
  PTAB · Dec 28, 2016 · IPR2015-01752 · APJ Jennifer Meyer Chagnon · IPR · Final written decision

  Claims 1, 3–8, and 10–40 are unpatentable under § 102 over Popp or Kovacevic and/or under § 103 over the stated combinations.

  RulingsFinal written decision

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

    “In our Institution Decisions, we determined that Salesforce had not been shown to be a real party-in-interest in these proceedings. See 1751 Inst. Dec. 8–16; 1752 Inst. Dec. 8–16. In its Patent Owner Response, Patent Owner argues: In its decision instituting these . . . trials, the Board stated that there was insufficient evidence to find that the real party in interest is Salesforce.com, Inc. Patent Owner disagrees with the Board’s view of the law and the facts, and in particular believes that the Board misconstrued the law. As explained previously, the AIA was intended to prevent defendants from getting “a second bite at the apple.” Yet, the Board is doing just that by allowing Petitioner to act indirectly for Salesforce. In its decision, the Board set an improperly high burden of proof for the patent owner, and also improperly shifted the burden of proof to the patent owner. As explained in Patent Owner’s Preliminary Response, Salesforce is the real party in interest and Petitioner is acting as its proxy. Because Salesforce is time limited, so is Petitioner and patentability should be confirmed on this basis. PO Resp. 8. To the extent Patent Owner is attempting to incorporate arguments made in the Preliminary Response into the Patent Owner Response, such incorporation is improper under our rules. See 37 C.F.R. § 42.6(a)(3) (“Arguments must not be incorporated by reference from one document into another document.”). In any event, Patent Owner has neither presented any new evidence into the record, beyond the evidence we considered previously in rendering our Institution Decisions, nor cited any legal authority to support its positions set forth above. Based on the complete record now before us, we see no reason to change our previous determination, and we are not persuaded that Salesforce should have been identified as a real party-in-interest in these proceedings.” slip op. at 8

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art Petitioner asserts that a “person of ordinary skill in the art in the timeframe of the December 1998 priority date of the ’482 patent . . . would have had at least a B.S. in Computer Science or the equivalent, along with at least two years of computer programming experience in developing applications for client-server systems.” 1751 Pet. 6 (citing Ex. 1002 ¶ 10); 1752 Pet. 6 (citing the same evidence). Patent Owner indicates that it “does not dispute Petitioner’s definition of the person of ordinary skill in the art.” PO Resp. 10; Ex. 2032 ¶ 18; Ex. 2033 ¶ 17. For purposes of this Final Written Decision, we agree with and adopt Petitioner’s proposed definition for the level of ordinary skill in the art, which each declarant in this proceeding meets or exceeds.12 See Ex. 1002 ¶¶ 2–6, 11; Ex. 2032 ¶¶ 4–9, 19; Ex. 2033 ¶¶ 2–5, 18. We further note that the applied prior art reflects 12 Patent Owner argues that, in the relevant time frame, Dr. Crovella “was already considerably more than ordinary,” and, for this reason, we should give less weight to Dr. Crovella’s testimony. PO Resp. 11; see also Tr. 53:4–9, 55:24–56:4. We disagree. See Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1363–64 (Fed. Cir. 2008) (noting that under Fed. R. Evid. 702, the expert must possess sufficient “expertise to be of assistance” to the trier of fact). the appropriate level of skill at the time of the claimed invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 9

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

    “a term of art. PO Resp. 14; see Ex. 1058, 44:19–45:4, 83:13, 95:16–20. Petitioner agrees. 1751 Pet. 10; 1752 Pet. 10; 1751 Pet. Reply 9; 1752 Pet. Reply 8. We agree with Petitioner that the Specification of the ’482 patent “nowhere refers to changes ‘that arise from changes external to the application,’ and does not limit ‘changes’ in any way” and “[t]here is no disclaimer in the ’482 patent that limits the meaning of ‘changes’ in the manner [Patent Owner] alleges.” 1751 Pet. Reply 6; see 1752 Pet. Reply 5; Ex. 1062 ¶¶ 4–5. While Patent Owner points to several portions of the Specification of the ’482 patent in support of its argument that the claimed changes should be limited to those external to the application and those that impact how the application program operates, we are not persuaded that the discussion in the Specification rises to the level of “reasonable clarity, deliberateness, and precision” necessary to provide a special definition for the claim term. See In re Paulsen, 30 F.3d at 1480. In fact, as noted by Petitioner, the “specification also describes an embodiment in which intelligent agents pursue ‘internal’ as well as ‘external Web activities.’” 1751 Pet. Reply 12 (citing Ex. 1001, 19:66–67); see 1752 Pet. Reply 11 (citing the same evidence). Further, the Specification describes the detected changes, more generally, throughout as changes that may affect operation of a user’s business, rather than as changes that affect operation of the application program. See, e.g., Ex. 1001, Abstract (“The system . . . receives information on regulatory and non-regulatory changes that affect operations of the business.”), 9:34–38 (“[C]hange management layer 11 . . . includes one or more change agents that ‘cruise the Web’ and identify and bring to the user’s attention relevant regulatory and non-regulatory changes found on the Web that may affect a user’s business.”), 22:33–39 (“The system . . . does not require that every employee [of a business] become a programmer in order to continue to respond to regulatory and/or technological and/or social changes affecting business operations and/or information management requirements.”); see also Ex. 1062 ¶ 5 (Dr. Crovella testifying that a person of ordinary skill “would have understood that changes can affect an application without impacting how the application ‘should’ operate, and those types of changes are also included in the plain and ordinary meaning of ‘changes that affect an application,’ [such as] a change to the processing resources available to an application could affect the application (e.g., by causing it to run faster or slower) without impacting how the application ‘should’ operate (e.g., without altering any of the steps that the application attempts to perform)”). Based on the evidence in this record, we determine that the plain meaning of the phrase “change management layer for automatically detecting changes that affect an application” is consistent with the Specification. We are not persuaded that the recited “change management layer for automatically detecting changes that affect an application” is limited to detecting changes external to the application, or that any such changes must impact how the application program should operate, as proposed by Patent Owner. No further express construction of the claim phrase is necessary.” slip op. at 14

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

    “Patent Owner argues that Popp does not disclose the “change management layer” recited in claim 1. PO Resp. 22–25. In particular, Patent Owner argues that “Popp does not disclose a ‘change management layer’ which ‘automatically detects changes which impact how the application program should operate’ where those ‘changes’ ‘arise from changes external to the application.’” Id. at 24 (citing Ex. 2032 ¶¶ 63–64; Ex. 2033 ¶¶ 46–50). Patent Owner argues that Popp instead discloses “automatically detect[ing] changes from [an application’s] own operation – in this case, user input of text data via a user interface.” Id. at 23 (citing Ex. 2031, 67:10–25). Patent Owner’s arguments rely upon its proposed construction of the “change management layer,” which we do not adopt for the reasons discussed above (see supra Section II.C.1). We are persuaded by Petitioner’s assertion that automatically detecting a change that affects information stored in the database (e.g., an employee name stored in a database), from which the Web page (i.e., the claimed application) is generated, discloses detecting a change that affects the application, as claimed. See, e.g., Ex. 1001, 12:17–28 (describing the business content layer (i.e., “first layer”) as a database that may include data associated with a selected area of business, such as finance or human resources). Based on the evidence of record, we determine Petitioner has shown, by a preponderance of the evidence, that Popp anticipates claim 1.” slip op. at 24

  Patent outcomesUS 7,356,482 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,356,482
• RPX Corporation v. Applications In Internet Time, LLCAll claims unpatentable
  PTAB · Dec 28, 2016 · IPR2015-01751 · APJ Jennifer Meyer Chagnon · IPR · Final written decision

  Claims 1, 3–8, and 10–40 are held unpatentable as anticipated by Popp or Kovacevic, or obvious over the combinations stated in the decision.

  RulingsFinal written decision

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

    “In our Institution Decisions, we determined that Salesforce had not been shown to be a real party-in-interest in these proceedings. See 1751 Inst. Dec. 8–16; 1752 Inst. Dec. 8–16. In its Patent Owner Response, Patent Owner argues: In its decision instituting these . . . trials, the Board stated that there was insufficient evidence to find that the real party in interest is Salesforce.com, Inc. Patent Owner disagrees with the Board’s view of the law and the facts, and in particular believes that the Board misconstrued the law. As explained previously, the AIA was intended to prevent defendants from getting “a second bite at the apple.” Yet, the Board is doing just that by allowing Petitioner to act indirectly for Salesforce. In its decision, the Board set an improperly high burden of proof for the patent owner, and also improperly shifted the burden of proof to the patent owner. As explained in Patent Owner’s Preliminary Response, Salesforce is the real party in interest and Petitioner is acting as its proxy. Because Salesforce is time limited, so is Petitioner and patentability should be confirmed on this basis. PO Resp. 8. To the extent Patent Owner is attempting to incorporate arguments made in the Preliminary Response into the Patent Owner Response, such incorporation is improper under our rules. See 37 C.F.R. § 42.6(a)(3) (“Arguments must not be incorporated by reference from one document into another document.”). In any event, Patent Owner has neither presented any new evidence into the record, beyond the evidence we considered previously in rendering our Institution Decisions, nor cited any legal authority to support its positions set forth above. Based on the complete record now before us, we see no reason to change our previous determination, and we are not persuaded that Salesforce should have been identified as a real party-in-interest in these proceedings.” slip op. at 8

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “timeframe of the December 1998 priority date of the ’482 patent . . . would have had at least a B.S. in Computer Science or the equivalent, along with at least two years of computer programming experience in developing applications for client-server systems.” 1751 Pet. 6 (citing Ex. 1002 ¶ 10); 1752 Pet. 6 (citing the same evidence). Patent Owner indicates that it “does not dispute Petitioner’s definition of the person of ordinary skill in the art.” PO Resp. 10; Ex. 2032 ¶ 18; Ex. 2033 ¶ 17. For purposes of this Final Written Decision, we agree with and adopt Petitioner’s proposed definition for the level of ordinary skill in the art, which each declarant in this proceeding meets or exceeds.12 See Ex. 1002 ¶¶ 2–6, 11; Ex. 2032 ¶¶ 4–9, 19; Ex. 2033 ¶¶ 2–5, 18. We further note that the applied prior art reflects 12 Patent Owner argues that, in the relevant time frame, Dr. Crovella “was already considerably more than ordinary,” and, for this reason, we should give less weight to Dr. Crovella’s testimony. PO Resp. 11; see also Tr. 53:4–9, 55:24–56:4. We disagree. See Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1363–64 (Fed. Cir. 2008) (noting that under Fed. R. Evid. 702, the expert must possess sufficient “expertise to be of assistance” to the trier of fact). the appropriate level of skill at the time of the claimed invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 9

  • Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer not foundDecided for petitioner

    “a term of art. PO Resp. 14; see Ex. 1058, 44:19–45:4, 83:13, 95:16–20. Petitioner agrees. 1751 Pet. 10; 1752 Pet. 10; 1751 Pet. Reply 9; 1752 Pet. Reply 8. We agree with Petitioner that the Specification of the ’482 patent “nowhere refers to changes ‘that arise from changes external to the application,’ and does not limit ‘changes’ in any way” and “[t]here is no disclaimer in the ’482 patent that limits the meaning of ‘changes’ in the manner [Patent Owner] alleges.” 1751 Pet. Reply 6; see 1752 Pet. Reply 5; Ex. 1062 ¶¶ 4–5. While Patent Owner points to several portions of the Specification of the ’482 patent in support of its argument that the claimed changes should be limited to those external to the application and those that impact how the application program operates, we are not persuaded that the discussion in the Specification rises to the level of “reasonable clarity, deliberateness, and precision” necessary to provide a special definition for the claim term. See In re Paulsen, 30 F.3d at 1480. In fact, as noted by Petitioner, the “specification also describes an embodiment in which intelligent agents pursue ‘internal’ as well as ‘external Web activities.’” 1751 Pet. Reply 12 (citing Ex. 1001, 19:66–67); see 1752 Pet. Reply 11 (citing the same evidence). Further, the Specification describes the detected changes, more generally, throughout as changes that may affect operation of a user’s business, rather than as changes that affect operation of the application program. See, e.g., Ex. 1001, Abstract (“The system . . . receives information on regulatory and non-regulatory changes that affect operations of the business.”), 9:34–38 (“[C]hange management layer 11 . . . includes one or more change agents that ‘cruise the Web’ and identify and bring to the user’s attention relevant regulatory and non-regulatory changes found on the Web that may affect a user’s business.”), 22:33–39 (“The system . . . does not require that every employee [of a business] become a programmer in order to continue to respond to regulatory and/or technological and/or social changes affecting business operations and/or information management requirements.”); see also Ex. 1062 ¶ 5 (Dr. Crovella testifying that a person of ordinary skill “would have understood that changes can affect an application without impacting how the application ‘should’ operate, and those types of changes are also included in the plain and ordinary meaning of ‘changes that affect an application,’ [such as] a change to the processing resources available to an application could affect the application (e.g., by causing it to run faster or slower) without impacting how the application ‘should’ operate (e.g., without altering any of the steps that the application attempts to perform)”). Based on the evidence in this record, we determine that the plain meaning of the phrase “change management layer for automatically detecting changes that affect an application” is consistent with the Specification. We are not persuaded that the recited “change management layer for automatically detecting changes that affect an application” is limited to detecting changes external to the application, or that any such changes must impact how the application program should operate, as proposed by Patent Owner. No further express construction of the claim phrase is necessary.” slip op. at 14

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

  Patent outcomesUS 7,356,482 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,356,482
• RPX Corporation v. Applications In Internet Time, LLCAll claims unpatentable
  PTAB · Dec 28, 2016 · IPR2015-01750 · APJ Jennifer Meyer Chagnon · IPR · Final written decision

  Claims 13–18 are unpatentable as anticipated by Popp and Kovacevic and obvious over Balderrama and Java Complete.

  RulingsFinal written decision

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

    “In our Institution Decision, we determined that Salesforce had not been shown to be a real party-in-interest in these proceedings. See Inst. Dec. 7–15. In its Patent Owner Response, Patent Owner argues: In its decision instituting [this trial], the Board stated that there was insufficient evidence to find that the real party in interest is Salesforce.com, Inc. Patent Owner disagrees with the Board’s view of the law and the facts, and in particular believes that the Board misconstrued the law. As explained previously, the AIA was intended to prevent defendants from getting “a second bite at the apple.” Yet, the Board is doing just that by allowing Petitioner to act indirectly for Salesforce. In its decision, the Board set an improperly high burden of proof for the patent owner, and also improperly shifted the burden of proof to the patent owner. As explained in Patent Owner’s Preliminary Response, Salesforce is the real party in interest and Petitioner is acting as its proxy. Because Salesforce is time limited, so is Petitioner and patentability should be confirmed on this basis. PO Resp. 8. To the extent Patent Owner is attempting to incorporate arguments made in the Preliminary Response into the Patent Owner Response, such incorporation is improper under our rules. See 37 C.F.R. § 42.6(a)(3) (“Arguments must not be incorporated by reference from one document into another document.”). In any event, Patent Owner has neither presented any new evidence into the record, beyond the evidence we considered previously in rendering our Institution Decisions, nor cited any legal authority to support its positions set forth above. Based on the complete record now before us, we see no reason to change our previous determination, and we are not persuaded that Salesforce should have been identified as a real party-in-interest in this proceeding.” slip op. at 7

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art Petitioner asserts that a “person of ordinary skill in the art in the timeframe of the December 1998 priority date of the ’111 patent . . . would have had at least a B.S. in Computer Science or the equivalent, along with at least two years of computer programming experience in developing applications for client-server systems.” Pet. 5–6 (citing Ex. 1002 ¶ 10). Patent Owner indicates that it “does not dispute Petitioner’s definition of the person of ordinary skill in the art.” PO Resp. 10; Ex. 2032 ¶ 18; Ex. 2033 ¶ 17. For purposes of this Final Written Decision, we agree with and adopt Petitioner’s proposed definition for the level of ordinary skill in the art, which each declarant in this proceeding meets or exceeds.8 See Ex. 1002 ¶¶ 2–6, 11; Ex. 2032 ¶¶ 4–9, 19; Ex. 2033 ¶¶ 2–5, 18. We further note that the applied prior art reflects the appropriate level of skill at the time of the claimed invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). C. Claim Construction In an inter partes review, claim terms in an unexpired patent are given their broadest reasonable construction in light of the specification of the patent in which they appear. See 37 C.F.R. § 42.100(b); Cuozzo Speed 8 Patent Owner argues that, in the relevant time frame, Dr. Crovella “was already considerably more than ordinary,” and, for this reason, we should give less weight to Dr. Crovella’s testimony. PO Resp. 11; see also Tr. 53:4–9, 55:24–56:4. We disagree. See Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1363–64 (Fed. Cir. 2008) (noting that under Fed. R. Evid. 702, the expert must possess sufficient “expertise to be of assistance” to the trier of fact).” slip op. at 8

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “timeframe of the December 1998 priority date of the ’111 patent . . . would have had at least a B.S. in Computer Science or the equivalent, along with at least two years of computer programming experience in developing applications for client-server systems.” Pet. 5–6 (citing Ex. 1002 ¶ 10). Patent Owner indicates that it “does not dispute Petitioner’s definition of the person of ordinary skill in the art.” PO Resp. 10; Ex. 2032 ¶ 18; Ex. 2033 ¶ 17. For purposes of this Final Written Decision, we agree with and adopt Petitioner’s proposed definition for the level of ordinary skill in the art, which each declarant in this proceeding meets or exceeds.8 See Ex. 1002 ¶¶ 2–6, 11; Ex. 2032 ¶¶ 4–9, 19; Ex. 2033 ¶¶ 2–5, 18. We further note that the applied prior art reflects the appropriate level of skill at the time of the claimed invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). C. Claim Construction In an inter partes review, claim terms in an unexpired patent are given their broadest reasonable construction in light of the specification of the patent in which they appear. See 37 C.F.R. § 42.100(b); Cuozzo Speed 8 Patent Owner argues that, in the relevant time frame, Dr. Crovella “was already considerably more than ordinary,” and, for this reason, we should give less weight to Dr. Crovella’s testimony. PO Resp. 11; see also Tr. 53:4–9, 55:24–56:4. We disagree. See Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1363–64 (Fed. Cir. 2008) (noting that under Fed. R. Evid. 702, the expert must possess sufficient “expertise to be of assistance” to the trier of fact).” slip op. at 8

  • Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer not foundPlain and ordinary meaningDecided for petitioner

    “We agree with Petitioner that the Specification of the ’111 patent “nowhere refers to changes ‘that arise from changes external to the application,’ and does not limit ‘changes’ in any way” and “[t]here is no disclaimer in the ’111 patent that limits the meaning of ‘changes’ in the manner [Patent Owner] alleges.” Pet. Reply 9; see Ex. 1062 ¶¶ 4–5. While Patent Owner points to several portions of the Specification of the ’482 patent11 in support of its argument that the claimed changes should be limited to those external to the application, we are not persuaded that the discussion in the Specification rises to the level of “reasonable clarity, deliberateness, and precision” necessary to provide a special definition for the claim term. See In re Paulsen, 30 F.3d at 1480. In fact, as noted by Petitioner, the “specification also describes an embodiment in which intelligent agents pursue ‘internal’ as well as ‘external Web activities.’” Pet. Reply 12 (citing Ex. 1001, 19:66–67). Based on the evidence in this record, we determine that the plain meaning of the phrase “fourth portion of the server being configured to automatically detect changes that affect the information in the first portion of the server or the information in the second portion of the server” is consistent with the Specification. We are not persuaded that the recited function of “automatically detect[ing] changes” is limited to detecting changes external to the application, as proposed by Patent Owner. No further express construction of the claim phrase is necessary.” slip op. at 13

  Patent outcomesUS 8,484,111 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,484,111
• International Flavors & Fragrances Inc. v. Zoomessence, Inc.All claims unpatentable
  PTAB · Dec 14, 2016 · IPR2015-01418 · APJ Mitchell G Weatherly · IPR · Final written decision

  Claims 1, 16, 19, and 28–30 are unpatentable: claims 1, 16, and 19 are anticipated by Merritt and also obvious over two combinations; claims 28–30 are obvious over specified combinations.

  RulingsFinal written decision

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

    “Id. at 2:8–14. The Specification describes a similar cooling effect within the drying chamber of the claimed system as follows: “It has been demonstrated that an inlet air temperature of about 40° C. may result in an outlet air temperature of about 32° C. from the drying chamber 107.” Id. at 7:35–37. Based on these disclosures, we understand that drying fluid is hotter at the inlet than it is at the outlet. Accordingly, claims that recite the temperature of drying fluid “at introduction into the drying chamber,” e.g., claims 4 and 5, effectively limit the highest permitted temperature of the drying fluid, which includes “air,” at any point in the drying chamber. Claim 1 recites an upper limit of 100°C on the temperature of one component of the drying fluid, “air,” without limiting the location at which the temperature is measured. We conclude, therefore, that the upper limit of 100°C as recited in claim 1 refers to the temperature of air measured at any location within the drying chamber, including at the outlet. Petitioner proposes that the broadest reasonable interpretation of “the drying fluid comprises air at temperature that is above freezing temperature of the liquid solvent and below 100°C” requires that “at some location within the internal volume of the drying chamber there is air at a temperature that is above the freezing temperature of the liquid solvent and below 100°C.” Pet. 7–8 (citing Ex. 1010 ¶ 46). Based on our review of claims 1–5 and the Specification, we adopt Petitioner’s interpretation.” slip op. at 11

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

    “To establish anticipation, each limitation in a claim must be found in a single prior art reference, arranged as recited in the claim. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008). While the limitations must be arranged or combined in the same way as in the claim, identity of terminology is not required. In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009); In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). Moreover, a reference anticipates a claim “if it discloses the claimed invention such that a skilled artisan could take its teachings in combination with his own knowledge of the particular art and be in possession of the invention.” In re Graves, 69 F.3d 1147, 1152 (Fed. Cir. 1995). Thus, “it is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom.” In re Preda, 401 F.2d 825, 826 (CCPA 1968).” slip op. at 15

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

    “a. Independent Claim 1 Petitioner’s challenge to claim 1 as being obvious in view of the combination of Merritt, Dobry, and Skelbæk, is based largely upon the same comparison of Merritt to the claim. See Pet. 33–37, 41–42. Nevertheless, Petitioner states, and we agree, that “[i]f there is any question about whether low temperature spray drying could be used in the encapsulation of active ingredients in a carrier, Skelbæk teaches the advantages of drying liquid drops under the supply of air having a temperature of 50–120°C.” Pet. 37 (citing Ex. 1008, Abstract, pg. 2–3.). We further agree with the rationale of Petitioner that the advantages that would have been obvious to an ordinarily skilled artisan from using the lower temperature range of Skelbæk with Merritt are “a denser, non-permeable matrix material” and to “retain high levels of flavorant.” Id. (citing Ex. 1010 ¶ 107). In addition to relying on Merritt and Skelbæk, Petitioner cites Dobry’s Figure 1 in its claim chart, which schematically illustrates a conventional spray-drying system.12 See Pet. 41–42. Patent Owner’s principle argument against obviousness over Merritt, Dobry, and Skelbæk is the same as its argument against anticipation by Merritt, i.e., that Merritt includes gas above 100°C as well as below 100°C. We have rejected this argument as a matter of claim interpretation, for the reasons set forth in Part II.D.2.a above. In addition, Patent Owner asserts that Skelbæk may not be relied upon by Petitioner for the teaching of the use of a lower temperature drying fluid in a drying chamber because Skelbæk’s spray drying process yields partially dried material that requires further drying. PO Resp. 46 (citing Ex. 1008, 6:20–24). In particular, Patent Owner points out that Skelbæk uses a fluidized bed to dry further the product leaving Skelbæk’s spray drying process. Id. 12 Dobry’s Figure 1 is virtually identical to Figure 1 in the ’388 patent. Compare Ex. 1007, Fig. 1 with Ex. 1001, Fig. 1. Figure 2 of the ’388 patent is virtually identical to Figure 1 of the ’388 patent, but merely replaces the “process heater” of Figure 1 with a “process dehumidifier.” Compare Ex. 1001, Fig. 2 with id. at Fig. 1.” slip op. at 22

  • Obviousness (§103) › Analogous artAnalogous artDecided for petitioner

    “Patent Owner’s argument is unpersuasive because Watanabe’s use of excipients does not diminish Watanabe’s express suggestion to use a dehumidifier in a spray drying process. Rather, we agree with Petitioner that an ordinarily skilled artisan would have understood that a dehumidifier can be used for dehumidification purposes in spray-drying processes, even when the materials being dried differ. Further, we find that Watanabe, Merritt, and Dobry are all analogous art to the claimed invention (and to one another) inasmuch as they relate to the field of spray drying and the problem of drying. See In re Bigio, 381 F.3d 1320, 1325–26 (Fed. Cir. 2004).” slip op. at 27

  Patent outcomesUS 8,939,388 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,939,388
• Asetek Danmark A/S v. Coolit Systems, Inc.No claims unpatentable
  PTAB · Dec 8, 2016 · IPR2015-01276 · APJ Michelle R Osinski · IPR · Final written decision

  Claims 1–4, 6–8, 12, 14, 15, and 18–28 were not shown unpatentable under § 103 because Petitioner did not adequately explain the proposed modifications to Kang.

  RulingsFinal written decision

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

    “The Specification does not provide an explicit definition of the claim term “adjacent.” See Tr. 37:20–21. Petitioner argues that the Specification does use the term “adjacent” to describe something more than simply “next to.” Id. at 7:14–26 (citing Ex. 1001, 4:38–43). In the ’330 patent, “[f]luid inlet opening 114 [is described as] be[ing] positioned adjacent . . . contact region 102b” (Ex. 1001, 4:31–33), even though fluid inlet opening 114 is separated from contact region 102b by walls 110 that extend upwardly from upper surface 102a of heat spreader plate 102 (id. at 3:7–15). We are not persuaded that this use of the term “adjacent” in the ’330 patent necessitates a broader construction than “next to.” This is because fluid inlet opening 114 is next to contact region 102b in that nearly the entirety of fluid inlet opening 114 overlies contact region 102b, as depicted by the dashed lines of Figure 1. Figure 2 shows that microchannel walls 110 define corresponding microchannels through which contact region 102b is positioned immediately below fluid inlet opening 114. Because all elements of thin fluid heat exchangers can be considered relatively close to each other due to the small size of these devices, we determine that “adjacent” in the ’330 patent must mean something more than “close to or nearby,” as asserted by Petitioner. See Stumbo v. Eastman Outdoors, Inc., 508 F.3d 1358, 1362 (Fed. Cir. 2007) (explaining that a claim interpretation that renders a claim term or phrase superfluous is disfavored). We also are not persuaded that the absence of any intervening structure of the same kind therebetween is sufficient to consider two objects as adjacent to each other in the ’330 patent, as asserted by Petitioner. For example, we would not consider inlet header 112 to be adjacent outlet header 126 in the ’330 patent simply because there are no other elements labeled as “headers” between them. For the foregoing reasons, we construe “adjacent” as “next to” and determine this is the broadest reasonable construction of this term in light of the specification of the ’330 patent.” slip op. at 11

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

    “The principle that a rearrangement of parts is a mere design choice finds its roots in In re Japikse, 181 F.2d 1019, 1023 (CCPA 1950). In Japikse, claims were held unpatentable because rearranging the position of a starting switch would not have modified the operation of the device. Id. Petitioner provides no evidence or persuasive technical reasoning that rearrangement of the inlet header so as to be next to a lateral side of Kang’s microfins (as opposed to opposite a topside of Kang’s microfins) would not have modified operation of the heat exchanger device. At most, Petitioner has provided conclusory expert testimony that rearrangement of the inlet header in Kang so that it would satisfy the requirements of claim 1 would not “enhance” the heat removal efficiency/performance of Kang’s heat exchanger device. Ex. 1002 ¶ 49. However, Petitioner has provided no expert testimony as to whether or not rearrangement of the inlet header might otherwise modify (e.g., reduce) the heat removal efficiency/performance of the heat exchanger device. When modifying Kang’s device to place inlet section 31 on a lateral side of microfins 14 (i.e., in contact with the microfins) and to place inlet openings 44 on the corresponding lateral side of flow distributor 40 (Pet. Reply 5), at least a portion of fluid is able to enter directly the microchannels formed by microfins 14 and, thus, bypass flow distributor 40. This is because inlet section 31 is placed next to a side of the fins that corresponds with the ends of the microchannels. Petitioner has not persuaded us that bypassing Kang’s flow distributor 40 would not modify the heat removal/efficiency performance of Kang’s heat exchanger device such that modified Kang would perform as equally well as the embodiment illustrated in Figures 1–3.4 Rather, we determine that bypassing flow distributor 40 would avoid “caus[ing] the fluid to change directions several times” (Ex. 1004 ¶ 30), which would affect mixing, which would, in turn, affect heat transfer (id. at Abstr.). Thus, we are not persuaded that modifying Kang’s 4 We note that when discussing the opposing outlet header (which is already asserted to be next to a lateral side of the microfins in Kang), Petitioner asserts that having fluid flow through the microchannels directly, as opposed to through the flow distributor as intended, would not matter because heat exchange happens in the microchannels. See Tr. 15:13–16:2. Although we do not disagree that heat exchange would take place in the microchannels even if fluid bypasses the flow distributor, we are not persuaded that this means that there would be no modification in the operation of the device. embodiment of Figures 1–3 so as to place inlet section 31 on a lateral side of microfins 14 is a mere design choice that would not affect operation of the device. For the foregoing reasons, we determine that Petitioner has not” slip op. at 18

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

    “Because Petitioner has not specified the orientation of the header regions to the microfins and microchannels in connection with its proposed modification of Kang, we determine that it is unclear if the rearrangement of the header regions proposed by Petitioner is merely a design choice that does not affect the heat removal efficiency/performance of the heat exchanger device. If the header regions of modified Kang are positioned on the sides of microfins 14 corresponding to the ends of the microchannels, at least a portion of fluid could directly enter the microchannels formed by microfins 14, and thus, bypass flow distributor 40 and affect operation of the device. Because the exact configuration of the inlet and outlet header regions in modified Kang has not been set forth with clarity in Petitioner’s challenge, we are not persuaded that the proposed modification to the header regions is merely a design choice, as alleged by Petitioner, that would not affect operation of the device. Similarly, although Petitioner has asserted that “a person of ordinary skill in the art would be easily able to modify Kang’s device to . . . have inlet openings 44 on the corresponding lateral side of flow distributor 40” and that Bhatti teaches this configuration (Pet. Reply 5 (citing Ex. 1002 ¶¶ 49, 212, 213; Ex. 1007, Figs. 1, 2); Tr. 38:13–21), Petitioner has not clarified the specific configuration and orientation of lateral side inlet openings in modified Kang. For example, it is unclear if Petitioner proposes to alter Kang to re-orient inlet channels 44 to extend from a first lateral side to an opposing second lateral side of flow distributor 40 (instead of extending from a top side to a bottom side) or to extend Kang’s inlet channels 44 to only one lateral side, and if so, whether modified inlet channels would extend from the top to bottom of the flow distributor on that one lateral side or only along a portion of the lateral side. Because Petitioner has not specified the exact manner in which Kang’s flow distributor 40 would include inlet channels 44 on a lateral side of flow distributor 40 in connection with its proposed modification of Kang, we determine that it is unclear if the modification of inlet channels 44 proposed by Petitioner is merely a design choice that does not affect the heat removal efficiency/performance of the heat exchanger device. If inlet channels 44 extend from a first lateral side to an opposing second lateral side, at least a portion of fluid would be able to bypass the microchannels and, thus, affect operation of the device. Because the exact configuration of inlet channels 44 in modified Kang has not been set forth with clarity in Petitioner’s challenge, we are not persuaded that the proposed modification to inlet channels 44 is merely a design choice, as alleged by Petitioner, that would not affect operation of the device. For the foregoing reasons, we determine that Petitioner has not provided sufficient detail in its challenge to support a conclusion that modifying Kang in light of the teachings of Bhatti would be a mere design choice that would not modify the heat exchange functionality of the device.” slip op. at 24

  Patent outcomesUS 8,746,330 not shown unpatentable
  Claim construction§ 103 obviousness
  Patents in suitUS 8,746,330
• Presidio Components, Inc. v. Avx CorporationNo claims unpatentable
  PTAB · Dec 1, 2016 · IPR2015-01332 · APJ Matthew R Clements · IPR · Final written decision

  Claims 1–5 and 7–12 were not shown unpatentable because the evidence did not establish a sufficient reason to modify Galvagni’s capacitor.

  RulingsFinal written decision

  • Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner

    “Harperizing, or “corner rounding,” is typical. It merely describes one exemplary capacitor manufacturing process in which “the surfaces are cleaned of adhering lead contaminations and the edges and corners are eroded, i.e., rounded off, so that after the scrubbing the inside electrodes . . . are made substantially flush to the end faces of the monolithic ceramic body.” Florian, 10:16–22. On the other hand, Patent Owner’s expert, Dr. Shanfield, testifies that “Galvagni does not Harperize or corner round its components,” and that “a person of ordinary skill in the art would have avoided Harperization not least because it would have added processing time to an already labor-intensive process of Galvagni that could lead to longer cycle time, as well as dimensional variability that could lead to lower yield.”) Shanfield Decl. ¶¶ 71–72; see also id. at ¶ 73 (not Harperizing to contain or reduce manufacturing cost). On this record, we credit the testimony of Dr. Shanfield. We are not persuaded that a person of ordinary skill in the art would have understood that it was “typical” to Harperize the ends 18 of capacitor 16 taught in Galvagni prior to the vapor deposition of layer 21 illustrated in Figure 4 of Galvagni.” slip op. at 10

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner

    “In our Decision on Institution, we construed the phrase “negligibly over the top surface” (independent claims 1 and 12) to mean “a small amount of material is formed on the top surface.” Dec. to Inst. 7–9. Neither party disputes our determination or proposes additional terms for construction. Based on the record developed during this proceeding, we maintain this construction.” slip op. at 6

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

    “On this issue, we agree with Patent Owner. Galvagni’s teachings of in-circuit testing of individual components are limited to using the ends, not the tops, of those components. Ex. 1002, 3:7–10, 6:24–30. Petitioner’s argument that testing probes of 0.05 mm were commercially available is not persuasive because Petitioner makes a comparison only to the dimensions taught in the ’547 patent without providing sufficient evidence that any negligible termination resulting from Harperization of Galvagni’s capacitor would also have been 0.05 mm. Even if it were, any negligible termination on a top surface of Galvagni’s capacitor would be very small relative to the end surface of Galvagni’s capacitor, and, therefore, would not “make it easier to access the capacitor for in-circuit test” (Pet. 17). Finally, even assuming Petitioner is right that a person of ordinary skill in the art would have been motivated to “test the individual components in a manner that minimizes wasted PCB (printed circuit board) space” (Pet. 15), Petitioner has not presented persuasive evidence that such a person would have valued that factor more highly than the other considerations identified by Dr. Shanfield—i.e., (1) the efficiency of testing groups of components rather than individual components, or (2) using pads on the PCB to reduce the risk of damage to components. After weighing the arguments and evidence, including the testimony of both parties’ experts, we are not persuaded that a person of ordinary skill in the art would have been motivated by the purported advantages for in-circuit testing to modify Galvagni’s capacitor 16 to include terminations extending negligibly over a top surface.” slip op. at 13

  • ExcludeNot reached

    “We decline to assess the merits of Patent Owner’s Motion to Exclude. As discussed above, even considering the identified evidence, we have concluded that Petitioner has not demonstrated, by a preponderance of the evidence, that the challenged claims are unpatentable. Accordingly, Patent Owner’s Motion to Exclude is dismissed as moot.” slip op. at 20

  Patent outcomesUS 6,144,547 not shown unpatentable
  Claim construction§ 103 obviousness
  Patents in suitUS 6,144,547
• Presidio Components, Inc. v. American Technical Ceramics Corp.All claims unpatentable
  PTAB · Nov 30, 2016 · IPR2015-01331 · APJ Christopher G Paulraj · IPR · Final written decision

  Claims 1–6 are unpatentable: Heron anticipates claims 1–4, and Heron combined with Monsorno ’926 renders claims 5–6 obvious.

  RulingsFinal written decision

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

    “interpreted 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); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2146 (2016). Under that standard, claim terms 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). “Petitioner submits that each term of the challenged claims should be given its ordinary meaning.” Pet. 6. Patent Owner agreed in its Preliminary Response that claim terms should be given their ordinary meaning, and did not propose that any terms be construed separately in its Patent Owner Response. Prelim. Resp. 8. For the purposes of this Final Written Decision, we determine that none of the claim terms in the ’879 patent require express construction.” slip op. at 6

  • ExcludeMotion to exclude, deniedDenied

    “Specifically, Patent Owner seeks to exclude Exhibits 1004, 1006, 1008, 1009, 1010, and 1011, portions of Dr. Randall’s Declaration concerning those exhibits (paragraphs 65–75, 87–94, and 124–151 of Ex. 1012), as well as Appendices E, G, J, L, M, N, O and P of Dr. Randall’s Declaration on the grounds that they relate to patentability challenges that did not form the basis of our Institution Decision in this proceeding. Id. at 2–4, 6, 7. Patent Owner additionally seeks to exclude paragraphs 22 and 25 of Dr. Randall’s Declaration under Fed. R. Evid. 702 for failing to be based on sufficient facts or data. Id. at 4–5. Furthermore, Patent Owner seeks to exclude Exhibit 1015, Dr. Shanfield’s deposition transcript, on the grounds that the testimony cited to at 8:21–9:2 in Exhibit 1015 was objected to for lack of relevance. Id. at 7. Because we did not rely upon any of the exhibits, portions of Dr. Randall’s Declaration, or the cited testimony from Dr. Shanfield’s deposition transcript that are sought to be excluded in this Final Written Decision, we dismiss Patent Owner’s motion to exclude as moot. V.” slip op. at 22

  • Strike new argumentNew argument disregardedDecided for patent owner

    “Although a Reply may properly respond to arguments raised in Patent Owner’s Response (see 37 C.F.R. § 42.23(b)), it is not an opportunity for Petitioner to identify, for the first time, new and different prior art elements that are alleged to satisfy the claim requirements. Here, Petitioner’s reliance on trimming plate 15 is materially different from its prior reliance on capacitor plates 2a, 4a, 2c, 4b, etc., especially with respect to the requirement of “one of said contacts members connecting to an end surface of said electrode layer.” Whereas the Petition pointed to, and our Institution Decision relied upon, Bonini’s teaching that the capacitor plates extend to the left or right side portions of capacitor body 3 in order to contact terminal-forming coating 13 or 14 (see Pet. 17; Inst. Dec. 10; Ex. 1002, 3:5– 21, Fig. 2), Petitioner’s new argument relies upon Bonini’s teaching that trimming plate 15 has a narrow tab 15" having an edge 15' that extends to a difference surface (lateral side margin) of ceramic body 3. See Reply 8; Ex. 1002, 2:69–3:1. Because Patent Owner was not given a fair opportunity in this proceeding to respond to this argument, we consider Petitioner’s argument to be improper under 37 C.F.R. § 42.23(b) as not responding to arguments raised in the Patent Owner Response and, therefore, decline to consider it. See In re Nuvasive, Inc., 2016 WL 6608999, Nos. 2015-01672, 2015-1673, slip op. at 11–13 (Fed. Cir. Nov. 9, 2016).” slip op. at 10

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed

    “dielectrics having “coextensive” length and width dimensions. PO Resp. 30–33. We disagree, as we find that requirement satisfied by the capacitor shown in Heron’s figures. Specifically, “FIG. 1 shows in side section view of a capacitor,” “FIG. 2 shows in exploded view four green ceramic layers that are stacked, sintered and terminated to make the capacitor of FIG. 1,” and “FIG. 3 shows in perspective view the capacitor of FIG. 1.” Ex. 1003, 2:25–31, Figs. 1–3. Figures 4, 7, and 8 show side sectional views, while figures 5 and 6 show top views of capacitors with alternate electrode geometries. Ex. 1003, 2:32–36; Figs. 5–8. Taken as a whole, these figures indicate plainly that the lengths and widths of dielectric layers 10 and 11 terminate at the same location, thereby satisfying the “coextensive” requirement. Patent Owner contends that reliance on Heron’s figures is improper under the Federal Circuit’s decision in Hockerson-Halberstadt, Inc. v. Avia Group Int’l, Inc., 222 F.3d 951, 956 (Fed. Cir. 2000). PO Resp. 31–33. We do not find Hockerson’s holding to be applicable here. Unlike with the claim at issue in Hockerson, which was construed to require that the “central longitudinal groove” has a width that must be less than the combined width of the two peripheral fins, the challenged claims do not require any particular size or proportion. The requirement that the dielectric layers have coextensive length and width dimensions can be assessed by simply viewing the figures of Heron, and no additional measurements are necessary to make that determination. It is well established “that a claimed invention may be anticipated or rendered obvious by a drawing in a reference, whether the drawing disclosure be accidental or intentional.” In re Meng, 492 F.2d 843, 847 (CCPA 1974). Patent Owner also contends that the Petition fails to identify what specific elements in Heron correspond to numerous claim elements. PO Resp. 34–37. We disagree. As noted above, the Petition identifies specific teachings of Heron, and includes a claim chart mapping Heron’s teachings to the claim elements. Pet. 18–24. In particular, Patent Owner argues that the Petition does not specify where the claimed “electrode layer” is found in Heron. PO Resp. 34–35. As Patent Owner recognizes, however, the Petition identified overlapping buried electrodes 15 and 16 for this claim element. See Pet. 19–20. We find this to be sufficient as both layers 15 and 16 satisfy the claim requirements of having dimensions smaller than the dielectric layer, being mounted on the first surface of a dielectric layer, and extending to a side face of the capacitor body so as to contact the end terminations. Patent Owner also argues that the Petition fails to specify where in Heron “opposite polarity” is taught. PO Resp. 35–36. We find that the Petition’s identification of end terminations 22 and 24 is sufficient. See Pet. 23–24. As explained by Petitioner’s expert, Dr. Randall, in order to store charge, a voltage must be imposed across the terminals of Heron’s capacitor, “and the resulting voltage difference across the two contact members 22 and 24 establishes the opposite polarities of the capacitor.” Ex. 1014 ¶ 38. Finally, Patent Owner argues that the Petition fails to specify where “said second surface of said first dielectric layer” is found in Heron. PO Resp. 36–37. The Petition, however, noted that “[a]s seen in Fig. 2, each dielectric layer has a length and width, as well as a first and second surface.” Pet. 19. The Petition further notes that “Heron discloses that green ceramic (dielectric) layer 10 would be first formed and screen printing the electrode pattern 15 thereon.” Id. at 18. Because the Petition identifies electrode layer 15 as being on the “first surface” of the first dielectric layer 10, we find that the Petition also sufficiently identified the opposite surface of dielectric layer 10 as satisfying the requirements of the “second surface.” Figure 1 of Heron shows terminations 22 and 24 provided on the bottom, i.e., “second surface,” of the dielectric layer and extending to the edges of the capacitor body. The Petition, therefore, identified sufficiently the specific features of Heron’s capacitor that correspond to the claim elements. Based on those identified features, and the record developed during this proceeding, we find that Heron anticipates claims 1–4.” slip op. at 18

  Patent outcomesUS 6,992,879 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 6,992,879
• Presidio Components, Inc. v. American Technical Ceramics Corp.All claims unpatentable
  PTAB · Nov 30, 2016 · IPR2015-01330 · APJ Christopher G Paulraj · IPR · Final written decision

  Claim 1 is unpatentable as anticipated by Horie and Coleman under § 102.

  RulingsFinal written decision

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

    “argues that “the second electrode layer” must be formed on the external capacitor surface that is mounted on the current source. PO Resp. 7–16. We disagree. Nothing in the claim language suggests that a second electrode layer must be positioned in relation to the current source. Rather, the claim specifies only “a second electrode layer formed as a pad for contact with the second surface of the first dielectric layer,” wherein the first dielectric layer is an internal layer of the monolithic capacitor chip. Patent Owner relies upon the opinion of its expert, Dr. Stanley R. Shanfield, Ph.D., to assert that “pad” ordinarily means “mat” or “cushion” and thus connotes a mounting or landing surface, such as against a printed circuit board. Id. at 8 (citing Ex. 2003 ¶ 38). In support of this opinion, Dr. Shanfield cites a) a general dictionary definition of “pad” from the Merriam-Webster’s Collegiate Dictionary (10th ed. 1993) , and b) a 2003 (post-filing date) document entitled “Microwave Office Element Catalog” describing a “multiplate ceramic chip capacitor” with an indication that one can “set size and properties of contact pads.” Ex. 2003 ¶¶ 38–39, Exs. C and D. Neither extrinsic document, however, specifies that an electrode layer that is formed as a contact pad for a multilayer chip capacitor must necessarily be mounted on the printed circuit board or otherwise close to the current source. Moreover, during oral argument, Patent Owner acknowledged that the printed circuit board is not part of the claimed device. Tr. 80:1–4.” slip op. at 7

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

    “with the claim at issue in Hockerson, which was construed to require that the “central longitudinal groove” has a width that must be less than the combined width of the two peripheral fins, challenged claim 1 does not require any particular size or proportion. The requirement that the dielectric layers have co-extensive length and width dimensions can be assessed by simply viewing the figures of Horie, and no additional measurements are necessary to make that determination. It is well-established “that a claimed invention may be anticipated or rendered obvious by a drawing in a reference, whether the drawing disclosure be accidental or intentional.” In re Meng, 492 F.2d 843, 847 (CCPA 1974). Moreover, the specification of Horie is not “completely silent on the issue” of whether the dielectric layers are co-extensive. Cf. Hockerson, 222 F.3d at 956. In particular, Horie discloses that “the laminated body obtained is cut in vertical and horizontal directions to obtain each chip-like laminated body.” Ex. 1002, 7:11–13.3 Although Patent Owner suggested that the use of the terms “vertical” and “horizontal” in Horie could nonetheless encompass cutting the layers at an angle (Tr. 95:15–97:4), we find no support for that position. We, thus, find that Horie’s teaching that each layer in the laminate comprising the capacitor body is cut to the same length and the same width dimensions, in combination with Figure 3, satisfies the “co-extensive” requirement. See Ex. 1013 ¶¶ 32–34.” slip op. at 15

  • ExcludeMotion to exclude, grantedOther

    “PATENT OWNER’S MOTION TO EXCLUDE Patent Owner filed a motion to exclude certain evidence. Paper 28. Specifically, Patent Owner seeks to exclude certain exhibits and the portions of Dr. Randall’s testimony concerning patentability challenges that did not form the basis of our Institution Decision in this proceeding. Id. at 2–6. Petitioner filed a response indicating that it does not dispute Patent Owner’s motion to exclude for any reason. Paper 30. Because we did not rely upon any of the evidence sought to be excluded in our Final Written Decision, we dismiss Patent Owner’s motion to exclude as moot. V.” slip op. at 23

  Patent outcomesUS 6,337,791 unpatentable
  Claim construction§ 102 anticipation
  Patents in suitUS 6,337,791
• NHK Seating Of America, Inc. v. Lear CorporationRehearing denied
  PTAB · Sep 23, 2016 · IPR2014-00925 · APJ Mitchell G Weatherly · IPR · Rehearing

  The Board denied NHK’s rehearing request, leaving claim 2 not shown unpatentable because NHK did not establish that the asserted tab extended from the identified transfer member or upper armature.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “NHK’s argument for rehearing is unpersuasive even if we were to agree with NHK’s argument that the eyebolt is a “tab.” At trial, NHK failed to establish that the eyebolt extends from cable 6a of DE ’017, which is the structure that NHK identified in its Reply as the claimed transfer member. Reply 23.1 NHK also failed to establish that the eyebolt extends from any structure that NHK equated to the claimed upper armature. In our Final Written Decision, we determined that claim 2 requires that the claimed tab must “extend outward from one or the other of the transfer member and the upper armature.” Final Dec. 23. Because NHK 1 NHK shifted positions again in its Reply in Support of its Request for Rehearing regarding the element in the prior art that constitutes the claimed transfer member when it identified “bowden cable arrangement 6” of DE ’017 as the transfer member. Reh’g Reply 2. A Request for Rehearing is not a proper vehicle for introducing argument or evidence that was not presented at trial. See 37 C.F.R. § 42.71(d) (limiting requests for rehearing to those matters that were “previously addressed in a motion, an opposition, or a reply” during trial). Accordingly, we do not consider NHK’s new argument properly to be before us. failed at trial to demonstrate how the eyebolt meets this requirement of claim 2, we deny the Request for Rehearing.” slip op. at 4

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

    “NHK’s argument for rehearing is unpersuasive even if we were to agree with NHK’s argument that the eyebolt is a “tab.” At trial, NHK failed to establish that the eyebolt extends from cable 6a of DE ’017, which is the structure that NHK identified in its Reply as the claimed transfer member. Reply 23.1 NHK also failed to establish that the eyebolt extends from any structure that NHK equated to the claimed upper armature. In our Final Written Decision, we determined that claim 2 requires that the claimed tab must “extend outward from one or the other of the transfer member and the upper armature.” Final Dec. 23. Because NHK 1 NHK shifted positions again in its Reply in Support of its Request for Rehearing regarding the element in the prior art that constitutes the claimed transfer member when it identified “bowden cable arrangement 6” of DE ’017 as the transfer member. Reh’g Reply 2. A Request for Rehearing is not a proper vehicle for introducing argument or evidence that was not presented at trial. See 37 C.F.R. § 42.71(d) (limiting requests for rehearing to those matters that were “previously addressed in a motion, an opposition, or a reply” during trial). Accordingly, we do not consider NHK’s new argument properly to be before us. failed at trial to demonstrate how the eyebolt meets this requirement of claim 2, we deny the Request for Rehearing.” slip op. at 4

  • Strike new argumentNew argument disregardedOther
  § 103 obviousness
  Patents in suitUS 8,434,818
• Shimano Inc. v. Globeride, Inc.Rehearing denied
  PTAB · Sep 16, 2016 · IPR2015-00273 · APJ Mitchell G Weatherly · IPR · Rehearing

  The Board denied Globeride’s rehearing request and left intact its finding that claims 1, 2, 6–9, and 12 were unpatentable as obvious.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “B. STANDARD FOR RECONSIDERATION The party filing a request for rehearing of a final written decision has the burden of showing a decision should be modified, and the request for rehearing must specifically identify all matters the party believes the Board misapprehended or overlooked and the place where each matter was previously addressed in its papers. 37 C.F.R. § 42.71(d). Therefore, Globeride bears the burden of establishing that we misapprehended or overlooked the matters that it requests that we review.” slip op. at 3

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

    “We did not overlook or misapprehend Globeride’s argument and evidence. Rather, we found it, and continue to find it, to be unpersuasive. Both experts agree that a person of ordinary skill in the art at the time of the invention “would have held a bachelor’s degree in mechanical engineering or a closely related discipline, and one to two years of practical, academic, or industrial experience in studying, designing, or building mechanical gears, including, for example, those in fishing reels.” Ex. 1003 ¶ 14; Ex. 2043 ¶ 35. The testimony of Dr. Springer cited by Globeride, although detailed and extensive, demonstrates that such an ordinarily skilled artisan easily would have been able to modify a seal 104 of JP212 in light of JP042’s teaching that magnetic seals were superior to conventional seals to arrive at the invention of claims 1, 2, 6–9, and 12. See, e.g., Ex. 2050, 122:18–21 (describing seal replaced in JP212 as a “simple device”), 157:19– 23 (describing modifications as “slight”), 159:12–16 (describing modifications as “inexpensive and simple”), 173:8–174:1 (describing changes as “in a mechanical engineer’s toolbox” and commenting that “there is nothing particularly special about mounting this seal in this reel.”). Based on our review of Dr. Springer’s testimony, we determine it establishes the ease with which an ordinarily skilled artisan could have incorporated specific structures taught in either JP042 (the magnetic seal) or JP974 (a cap-shaped cover body) into the specific spinning reel described in JP212. It is not surprising that for a mechanical device as complex as a fishing reel, numerous minor adjustments within the level of ordinary skill would be required to accomplish such incorporation. Nevertheless, our review of that detailed testimony reveals that none of the changes was beyond the skill level of a mechanical engineer with two years of practical experience designing fishing reels.” slip op. at 4

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “evidence. Rather, we found it, and continue to find it, to be unpersuasive. Both experts agree that a person of ordinary skill in the art at the time of the invention “would have held a bachelor’s degree in mechanical engineering or a closely related discipline, and one to two years of practical, academic, or industrial experience in studying, designing, or building mechanical gears, including, for example, those in fishing reels.” Ex. 1003 ¶ 14; Ex. 2043 ¶ 35. The testimony of Dr. Springer cited by Globeride, although detailed and extensive, demonstrates that such an ordinarily skilled artisan easily would have been able to modify a seal 104 of JP212 in light of JP042’s teaching that magnetic seals were superior to conventional seals to arrive at the invention of claims 1, 2, 6–9, and 12. See, e.g., Ex. 2050, 122:18–21 (describing seal replaced in JP212 as a “simple device”), 157:19– 23 (describing modifications as “slight”), 159:12–16 (describing modifications as “inexpensive and simple”), 173:8–174:1 (describing changes as “in a mechanical engineer’s toolbox” and commenting that “there is nothing particularly special about mounting this seal in this reel.”). Based on our review of Dr. Springer’s testimony, we determine it establishes the ease with which an ordinarily skilled artisan could have incorporated specific structures taught in either JP042 (the magnetic seal) or JP974 (a cap-shaped cover body) into the specific spinning reel described in JP212. It is not surprising that for a mechanical device as complex as a fishing reel, numerous minor adjustments within the level of ordinary skill would be required to accomplish such incorporation. Nevertheless, our review of that detailed testimony reveals that none of the changes was beyond the skill level of a mechanical engineer with two years of practical experience designing fishing reels.” slip op. at 4

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

    “Id. at 11–12. Globeride argues “the seals do not serve the same function and are therefore not interchangeable.” Id. at 12; PO Resp. 45–46. Globeride cites no evidence to support its argument that the two seals performed functions that were materially different. Rather, Globeride contends that an “inference of nonobviousness is especially strong where the prior art’s teachings undermine the very reason being proffered as to why a person of ordinary skill would have combined the known elements.” Id. at 12–13 (citing Depuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1326 (Fed. Cir. 2009)). Globeride offers no analysis of Depuy or explanation for why the quoted sentence from that decision demands a conclusion of non-obviousness. Seal 104 of JP212 and seal 125 of JP042 both operate to seal a shaft that rotates within a housing. We do not see how it is material that one seal is located on the “spool side” and the other is located on the “handle side” of the rotor, nor does Globeride point us to evidence in the record that we overlooked on this point. Both seals prevent intrusion of water along the axis of the shaft. Globeride’s argument was and remains unpersuasive.” slip op. at 6

  § 103 obviousness
  Patents in suitUS 8,382,022

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