- Align Technology, Inc. v. 3shape A/SRehearing deniedPTAB · Dec 4, 2018 · IPR2018-00198 · APJ Eleni Mantis Mercader · IPR · Rehearing
The Board denied rehearing, leaving in place its denial of institution because the petition relied on the same or substantially the same art or arguments previously presented to the Office.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“I. LEGAL STANDARD 37 C.F.R. § 42.71(d) provides: “The burden of showing a decision should be modified lies with the party challenging the decision. The 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.” In addition, “[w]hen rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” 37 C.F.R. § 42.71(c).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDecided for patent owner
“navigational controls, for which it cited Paley ’112 ¶ 77, and found that identical disclosure was in Paley ’591 considered during prosecution. See Req. Reh’g 3–4 (citing Pet. 27–28).” slip op. at 4
Discretionary denialPatents in suitUS 9,329,675 - Microsoft Corporation v. Mira Advanced Technology, Inc.All claims unpatentablePTAB · Sep 19, 2018 · IPR2017-01052 · APJ Minn Chung · IPR · Final written decision
Claims 1–10 are unpatentable as obvious over Matsumoto, Sony, or Sony combined with Matsumoto.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningTerm construed petitioner constructionDecided for petitioner
“Therefore, the plain meaning of the “contact list” limitation, when read in the context of the claims as a whole and in view of the Specification, is “a list saved in a communication device comprising contact list entries.”” slip op. at 14
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Relying upon the declaration testimony of Mr. Rysavy, Petitioner contends that a person of ordinary skill in the art as of the date of the invention would have had a Bachelor’s degree in computer science, computer engineering, and/or electrical engineering or at least 4 years of designing and implementing software features for cellular phones or smartphones. Pet. 9 (citing Ex. 1002 ¶ 46). Patent Owner does not oppose Petitioner’s definition of the level of ordinary skill in the art. Based on the complete record, in the context of the ’892 patent and the prior art of record, we agree with and adopt Petitioner’s definition of the level of ordinary skill in the art.” slip op. at 34
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“Essentially, Mr. Jawadi states that a feature “resident (stored) in a communication device” is often referred to as a “saved” feature. But Mr. Jawadi does not explain adequately why a “user-interface-enabled” feature is synonymous or equivalent to a “saved” feature. Moreover, Mr. Jawadi does not cite any evidence in support of his testimony. See Ex. 2001 ¶ 75. Mr. Jawadi’s conclusory statement unsupported by evidence does not provide a satisfactory explanation of what a “saved user interface” entails in the context of the ’892 patent. Thus, Mr. Jawadi’s testimony is insufficient to justify Patent Owner’s proposed construction. See Prolitec, Inc. v. Scentair Techs., Inc., 807 F.3d 1353, 1358–59 (Fed. Cir. 2015) (Prolitec’s expert cannot rewrite the intrinsic record of the patent to narrow the scope of the patent and the disputed claim element.), overruled on other grounds by Aqua Prod., Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017); Phillips, 415 F.3d at 1318 (explaining that “a court should discount any expert testimony that is clearly at odds . . . with the written record of the patent”) (internal quotation marks omitted) (citation omitted).” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“Petitioner’s challenge based on Sony, however, is one of obviousness. Although Petitioner relies on Sony alone in this asserted ground of obviousness, obviousness can be established by considering whether “a single piece of prior art could be modified, to produce the claimed invention.” Comaper Corp v. Antec Inc., 596 F.3d 1343, 1351–52 (Fed. Cir. 2010) (emphasis added). As discussed above, Petitioner asserts that it would have been obvious to modify the teaching of Sony to obtain a single contact list with contact list entries that include data fields for names, phone numbers, and memo data. Pet. 47–49. Therefore, we find that Patent Owner does not adequately refute Petitioner’s challenge based on obviousness. Patent Owner further asserts that “the core claim limitation” is missing from Sony and cannot be “supplied through ‘common sense.’” PO Resp. 48–49 (citing Arendi S.A.R.L. v. Apple Inc., 832 F.3d 1355, 1362 (Fed. Cir. 2016)). We disagree with Patent Owner’s argument. As discussed above, with respect to the purported “core claim limitation” identified by Patent Owner—i.e., “each contact list entry of the contact list including . . . a memo field configured to attach memo data inputted by the user”—Petitioner has established sufficiently that Sony teaches a “contact list” with a “contact list entry” that includes a “memo field.” Pet. 44–47. As Petitioner explained, the difference between Sony and the claimed subject matter is that Sony has two contact lists—one with identification information and names, and another with reminders coupled to the identification information—whereas the claims recite a single contact list with contact list entries having all three data fields, i.e., the fields for a phone number, a name, and memo. Id. at 47–49. Hence, there are no missing limitations in Sony; rather, the elements are arranged differently in Sony from the claims. Furthermore, Petitioner does not rely on common sense to supply any” slip op. at 52
Patent outcomesUS 8,848,892 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,848,892 - Adobe Systems Incorporated v. William GreciaRehearing deniedPTAB · Sep 7, 2018 · IPR2018-00418 · APJ Michelle N Wormmeester · IPR · Rehearing
The Board denied Adobe’s rehearing request, leaving institution denied on all three § 103 grounds because Petitioner did not show Venkataramu was a publicly accessible printed publication.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“We are not persuaded that the textbook including a citation to Venkataramu was a research aid that is sufficient, without further explanation, to establish the public accessibility of Venkataramu prior to the earliest possible effective filing date for the ’555 patent, namely, March 21, 2010. Although a research aid may establish the public accessibility of a potentially invalidating reference, the research aid itself must have been publicly accessible in order to do so. See Blue Calypso, 815 F.3d at 1350 (agreeing with the Board, where it “acknowledged that the published article was publicly accessible and that it related to the same research presented in [the potentially invalidating reference]” but “nevertheless found the article insufficient because it did not include any citation to [the potentially invalidating reference]”). Here, Petitioner has not adequately shown that the textbook including a citation to Venkataramu was publicly accessible before March 21, 2010.” slip op. at 12
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedDecided for patent owner
“accessibility, we note that the Federal Circuit in Blue Calypso, which was decided after these Board decisions, explains that “[j]ust as indexing plays a significant role in evaluating whether a reference in a library is publicly accessible, . . . indexing, ‘[w]hether . . . through search engines or otherwise,’ is also an important question for determining if a reference stored on a given webpage in cyberspace is publicly accessible.” 815 F.3d at 1349 (internal citations omitted). The Federal Circuit further explains that the “absence of evidence demonstrating that the website at which the article was located was indexed and thereby findable by an internet search engine” can be overcome, however, by a showing that an ordinarily skilled artisan “would have been independently aware of the [website] as a prominent forum for discussing [the pertinent] technologies.” Id.” slip op. at 8
- BurdenDecided for patent owner
“We are not persuaded that the textbook including a citation to Venkataramu was a research aid that is sufficient, without further explanation, to establish the public accessibility of Venkataramu prior to the earliest possible effective filing date for the ’555 patent, namely, March 21, 2010. Although a research aid may establish the public accessibility of a potentially invalidating reference, the research aid itself must have been publicly accessible in order to do so. See Blue Calypso, 815 F.3d at 1350 (agreeing with the Board, where it “acknowledged that the published article was publicly accessible and that it related to the same research presented in [the potentially invalidating reference]” but “nevertheless found the article insufficient because it did not include any citation to [the potentially invalidating reference]”). Here, Petitioner has not adequately shown that the textbook including a citation to Venkataramu was publicly accessible before March 21, 2010.” slip op. at 12
- Strike new argumentNew argument disregardedOther
“1016, 2). Relying on FanDuel, Inc. v. CG Tech. Dev., LLC, Case IPR2017- 00902, slip op. at 15 (PTAB Oct. 18, 2017) (Paper 14), Petitioner contends that such evidence is “separate evidence of the public dissemination and availability of [the textbook].” Req. Reh’g 6. This is a new argument, which does not address what we overlooked or misapprehended in our Institution Decision. Petitioner does not indicate where in the Petition or Ms. Manek’s Declaration this argument was raised. In any event, we are not persuaded by Petitioner’s new argument. The panel in FanDuel explained that “[t]he statutory phrase ‘printed publication’ has been interpreted to mean that before the critical date the reference must have been sufficiently accessible to the public interested in the art; dissemination and public accessibility are the keys to the legal determination whether a prior art reference was ‘published.’” FanDuel, slip op. at 14 (emphasis added). Here, evidence that the textbook was published in the United States and that unauthorized copying of the textbook was prohibited does not establish when the textbook became publicly accessible.” slip op. at 14
§ 102 anticipationPatents in suitUS 8,402,555 - Adobe Systems Incorporated v. William GreciaRehearing deniedPTAB · Sep 7, 2018 · IPR2018-00419 · APJ Michelle N Wormmeester · IPR · Rehearing
The Board denied Adobe’s rehearing request and left in place the denial of institution because the petition did not sufficiently show Venkataramu was publicly accessible before the patent’s earliest possible effective filing date.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“Board reviews the decision for an abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion occurs when a “decision [i]s based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a 2 Ameerally, U.S. Publ’n No. 2006/0212401 A1, published Sept. 21, 2006 (Ex. 1004). 3 Gautier, U.S. Publ’n No. 2005/0021478 A1, published Jan. 27, 2005 (Ex. 1005). 4 Dan Frakes, First Look: iTunes Digital Copy, Macworld, http://www.macworld.com/article/131751/2008/01/digitalcopy.html, last visited Jan. 10, 2017 (Ex. 1006). 5 Zweig, U.S. Publ’n No. 2007/0233606 A1, published Oct. 4, 2007 (Ex. 1008). 6 Suitts, U.S. Publ’n No. 2008/0040379 A1, published Feb. 14, 2008 (Ex. 1009). 7 Kondrk, U.S. Publ’n No. 2004/0254883 A1, published Dec. 16, 2004 (Ex. 1010). clear error of judgment.” PPG Indus., Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988). “The burden of showing that a decision should be modified lies with the party challenging the decision.” Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). In its request for rehearing, the dissatisfied party must (1) “specifically identify all matters the party believes the Board misapprehended or overlooked,” and (2) identify the place “where each matter was previously addressed.” 37 C.F.R. § 42.71(d); Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,768. We address Petitioner’s arguments with these principles in mind.” slip op. at 3
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“accessibility, we note that the Federal Circuit in Blue Calypso, which was decided after these Board decisions, explains that “[j]ust as indexing plays a significant role in evaluating whether a reference in a library is publicly accessible, . . . indexing, ‘[w]hether . . . through search engines or otherwise,’ is also an important question for determining if a reference stored on a given webpage in cyberspace is publicly accessible.” 815 F.3d at 1349 (internal citations omitted). The Federal Circuit further explains that the “absence of evidence demonstrating that the website at which the article was located was indexed and thereby findable by an internet search engine” can be overcome, however, by a showing that an ordinarily skilled artisan “would have been independently aware of the website as a prominent forum for discussing [the pertinent] technologies.” Id. In this case, that the Internet Archive electronically archived a copy of Venkataramu does not, by itself, mean that Venkataramu was sufficiently indexed on the San Jose State University (SJSU) website or the Internet Archive. Nor does it reveal anything about the search capabilities of the SJSU website or the Internet Archive, or why one with ordinary skill in the art would have even visited either website to find anything. With respect to the SJSU website, Mr. Christopher Butler does not claim to have personal knowledge of the general practices regarding the university website, or the search capabilities of the website. For example, he does not testify as to the procedures, if any, the university uses to index project reports, or the manner, if at all, in which project reports are indexed (e.g., by author, title, subject). He also does not testify as to the search capabilities of the SJSU website, or why an ordinarily skilled artisan would have visited the website to locate Venkataramu. We note Petitioner’s assertion in its Petition that Venkataramu was “indexed as a Masters’ Thesis,” (Pet. 30), which, of course, bears no relationship to the subject of Venkataramu. See In re Cronyn, 890 F.2d 1158, 1161 (Fed. Cir. 1989). As for the Internet Archive, we note that Mr. Butler testifies that “[v]istors to the Wayback Machine can search archives by URL (i.e., a website address),” (Ex. 1024 ¶ 3), which, similarly, bears no relationship to the subject of Venkataramu. Mr. Butler does not testify as to any other way to locate Venkataramu on the Wayback Machine, or as to why a visitor would have visited the Wayback Machine to locate Venkataramu.” slip op. at 9
§ 102 anticipationPatents in suitUS 8,533,860 - PTAB · Aug 10, 2018 · IPR2018-00025 · APJ Michelle N Wormmeester · IPR · Rehearing
The Board denied rehearing and maintained its denial of institution because Petitioner did not adequately explain why an ordinarily skilled artisan would modify Anwar, alone or with Westerman.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“reviews the decision for an abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion occurs when a “decision [i]s based on an erroneous 3 Westerman, Int’l Publ’n No. WO 99/38149, published July 29, 1999 (Ex. 1007). 4 Astala, U.S. Patent No. 6,943,778 B1, issued Sept. 13, 2005 (Ex. 1008). 5 Korhonen, European Publ’n No. EP 0 880 091 A2, published Nov. 25, 1998 (Ex. 1009). conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus., Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988). “The burden of showing that a decision should be modified lies with the party challenging the decision.” Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). In its request for rehearing, the dissatisfied party must (1) “specifically identify all matters the party believes the Board misapprehended or overlooked,” and (2) identify the place “where each matter was previously addressed.” 37 C.F.R. § 42.71(d); Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,768. We address Petitioner’s arguments with these principles in mind.” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“In view of the foregoing, we maintain our finding that Anwar’s goal of “present[ing] a more natural way of moving documents through a viewing space” applies in the context of a user moving a document, that is, a context in which tactile control of a document can be simulated. As such, we are not persuaded that an ordinarily skilled artisan would have considered incorporating the recited “end-of-scroll signal” (which does not involve the user moving a document) based on Anwar’s teaching of this goal.” slip op. at 7
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“As we noted in our Institution Decision, 35 U.S.C. § 314 provides that an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petition would prevail with respect to at least 1 of the claims challenged in the petition.” Inst. Dec. 2. In that same decision, we determined that Petitioner had not demonstrated a reasonable likelihood that it would prevail with respect to any challenged claim of the ’064 patent. Id. at 23. Having considered Petitioner’s Request for Rehearing, we maintain our determination for the reasons discussed above. Accordingly, pursuant to 35 U.S.C. § 314, we cannot institute an inter partes review in this case even if it would be “most efficient” for us to do so. V. CONCLUSION For the foregoing reasons, Petitioner has not demonstrated that we abused our discretion by not instituting inter partes review of the challenged claims of the ’064 patent on any of the asserted grounds.” slip op. at 12
§ 103 obviousnessPatents in suitUS 7,184,064 - Amazon.Com, Inc. / Amazon Digital Services, Inc. et al. v. Uniloc Luxembourg S.A.Some claims unpatentablePTAB · Aug 1, 2018 · IPR2017-00948 · APJ David C Mckone · IPR · Final written decision
Claims 1–8, 18–22, and 25 are unpatentable; claims 9–17, 23, and 24 are not unpatentable; substitute claims 26–28 are denied.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“The “verify” limitation of claim 1 expressly recites a check based “at least in part on a device identity.” The specification describes such a check as occurring at steps 15 and 16, not step 13. Steps 15 and 16 check whether the device identity is on record and, in response to that check, allow a digital product to be used on a device (steps 17, 18) or start a process to authorize the device. Id. at 5:1–9, 5:13–18. Although steps 15 and 16 are not expressly described as a verification of validity, steps 15 and 16, not step 13, logically track and most closely align with the language of claim 1’s “verify” and “in response to” limitations. Thus, the specification supports Petitioner’s view that the “verify” limitation can encompass checking whether unique device information is reflected in a database as authorized for a license.” slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner
“claim 1 is limiting, with Patent Owner arguing that it is and Petitioner arguing that it is not. Id. at 12–13. Patent Owner now argues that “[t]he preambles [of claims 1 and 22] expressly state that the claimed system and method are both directed to ‘adjusting’ the license in terms of its allowed copy count, which the preambles expressly define.” PO Resp. 9. We explained in the Institution Decision, however, that even if the preamble is limiting (e.g., by virtue of it providing antecedent basis (“at least one allowed copy count”) for “set the allowed copy count”), the language “[a] system for adjusting a license for a digital product over time” constitutes a 2 The preamble of claim 25 is not similar to that of claims 1 and 22, and Patent Owner does not propose an “adjusting” limitation for the language “in response to the device identity not being on the record, set the allowed copy count to a first upper limit for a first time period after an initial authorization of the digital product,” as recited in claim 25. statement of intended purpose and does not purport to modify any particular claim language, such as “set the allowed copy count.” Dec. 13–14. Patent Owner argues that our preliminary construction would vitiate the purpose of the preamble language and that, instead, “the claim limitations must be understood in light of the ‘adjusting’ context introduced in the preamble.” PO Resp. 9. However, “the mere fact that a structural term in the preamble is part of the claim does not mean that the preamble’s statement of purpose or other description is also part of the claim.” Marrin v. Griffin, 599 F.3d 1290, 1295 (Fed. Cir. 2010). Rather, the Federal Circuit has held that “a preamble is not limiting ‘where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention.’” Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (quoting Rowe v. Dror, 112 F.3d 473, 478 (Fed. Cir. 1997)). Thus, an intended purpose set forth in a claim preamble and the context that purpose might provide, without more, are not limiting. Moreover, as Petitioner points out, “the claimed invention could be used to adjust an allowed device limit, at least to a higher limit, thereby satisfying the intended purpose of the invention.” Reply 4.” slip op. at 14
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed
“On the complete record, we find that DeMello’s authentication, which checks a Passport ID and machine ID against stored records to authenticate a device, discloses executable code for the processor to “verify that a license data associated with the digital product is valid based at least in part on a device identity generated by sampling physical parameters of the given device,” as recited in claim 1 and similarly recited in claim 22.” slip op. at 29
- Obviousness (§103) › KSR rationalesUnpatentableNot shown unpatentableMixed
“The Federal Circuit has cautioned that “references to ‘common sense’—whether to supply a motivation to combine or a missing limitation—cannot be used as a wholesale substitute for reasoned analysis and evidentiary support, especially when dealing with a limitation missing from the prior art references specified.” Arendi S.A.R.L. v. Apple Inc., 832 F.3d 1355, 1362 (Fed. Cir. 2016). That is not the case here. As explained above, both the ’960 patent and DeMello describe precise numbers of days as arbitrary and that their respective inventions contemplate other numbers. We find that it would have been reasonable for the skilled artisan to have selected six days, as recited in claim 6, in light of DeMello’s disclosure.” slip op. at 45
Patent outcomesUS 8,566,960 mixedClaim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Alice · Bilski · Berkheimer · GrahamPatents in suitUS 8,566,960 - Adobe Systems Incorporated v. William GreciaInstitution deniedPTAB · Jun 21, 2018 · IPR2018-00418 · APJ Michelle N Wormmeester · IPR · Institution
The Board denied institution because Petitioner did not show Venkataramu was a publicly accessible printed publication, defeating every obviousness ground for claims 1–26.
RulingsInstitution decision- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedDecided for patent owner
“We agree with Patent Owner. To determine a date on which Venkataramu was publicly accessible, we look to evidence of the SJSU library’s cataloging and indexing practices, as well as any search capability of the library’s website. See Blue Calypso, 815 F.3d at 1348; Voter Verified, 698 F.3d at 1380; SRI, 511 F.3d at 1196. Neither Petitioner nor Mr. Butler offers sufficient evidence that Venkataramu was sufficiently indexed or catalogued at SJSU for access. That the Internet Archive captured and archived a copy of Venkataramu does not mean, by itself, that Venkataramu was sufficiently indexed or catalogued at SJSU. Nor does it reveal anything about the search capabilities of the SJSU library website. Mr. Butler does not claim to have personal knowledge of the general library practices of the SJSU library, or the search capabilities of the SJSU library website. For example, he does not testify as to the procedures, if any, the university uses to index or catalog project reports, or the manner, if at all, in which project reports are indexed or cataloged (e.g., by author, title, subject). He also does not testify as to the search capabilities of the SJSU library website. Further, neither Petitioner nor Mr. Butler introduces any evidence that Venkataramu was actually disseminated to any interested skilled artisans prior to the earliest possible effective filing date for the ’555 patent. Additionally, Petitioner has not explained why making a copy of Venkataramu accessible on the Internet Archive constitutes publication of Venkataramu on the Internet Archive as of October 2, 2008. In that regard, we note that Mr. Butler’s Affidavit does not indicate that the archived files are searchable through a subject matter index or catalog.” slip op. at 11
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“In view of the foregoing, we determine that Petitioner has not shown sufficiently that Venkataramu was publicly accessible prior to the earliest possible effective filing date for the ’555 patent. Therefore, Petitioner has not shown that Venkataramu qualifies as a printed publication. Because each of Petitioner’s asserted grounds relies on Venkataramu, Petitioner has not demonstrated a reasonable likelihood of showing that any of claims 1–26 would have been obvious over any of the asserted grounds. IV. CONCLUSION For the foregoing reasons, Petitioner has not demonstrated on the record before us a reasonable likelihood that it would prevail in showing the unpatentability of any challenged claim of the ’555 patent. V. ORDER For the reasons given, it is ORDERED that the Petition is denied and no trial is instituted.” slip op. at 13
§ 102 anticipationPatents in suitUS 8,402,555 - PTAB · May 2, 2018 · IPR2018-00023 · APJ Michelle N Wormmeester · IPR · Rehearing
The Board denied Microsoft's rehearing request as moot after modifying institution to include all challenged claims and grounds under SAS.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“under 35 U.S.C. § 314 may not institute on less than all claims challenged in the petition. SAS Inst., Inc. v. Iancu, 2018 WL 1914661, at *10 (U.S. Apr. 24, 2018). As discussed above, we determined in our Institution Decision that Petitioner demonstrated a reasonable likelihood that it would establish that at least one of the challenged claims of the ’387 patent is unpatentable. Inst. Dec. 14, 22–32, 34–41. We issued an order (Paper 10) modifying our Institution Decision to include review of all the challenged claims and all the grounds presented in the Petition, including those that are the subject of Petitioner’s Request for Rehearing. As such, we deny Petitioner’s Request for Rehearing as moot. Accordingly, it is ORDERED that Petitioner’s Request for Rehearing is denied as moot.” slip op. at 2
NonePatents in suitUS 6,690,387 - FMC Technologies, Inc. v. Onesubsea IP UK LimitedRehearing grantedPTAB · Apr 19, 2018 · IPR2016-00907 · APJ Michelle N Wormmeester · IPR · Rehearing
On rehearing, the Board held claims 36 and 37 unpatentable as obvious over Kelly and Fenton, Kelly, Bednar, and Fenton, and Clair and Fenton.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“III. STANDARD OF REVIEW According to 37 C.F.R. § 42.71(d), “[t]he burden of showing a decision should be modified lies with the party challenging the decision,” and the “request must specifically identify all matters the party believes the Board misapprehended or overlooked.” The burden here, therefore, lies with Petitioner to show we misapprehended or overlooked the matters it requests that we review.” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“sensors, as described by Fenton, are expressly enumerated as being processing apparatus in dependent claim 29.” Id. at 28 (cited by Req. Reh’g 5). The ’306 patent indeed teaches that a processing apparatus may include a temperature, pressure, or flow sensor. Ex. 1001, claim 29 (“the processing apparatus is chosen from at least one of: . . . measurement apparatus; temperature measurement apparatus; flow rate measurement apparatus . . .”); accord id. at claim 37. Accordingly, we also agree that Fenton’s sensors correspond to the recited “processing apparatus.” Petitioner further explained that “[m]odifying Kelly’s subsea choke assembly by adding one or more temperature sensors, pressure sensors, or flow meters as taught by Fenton would provide information related to fluid flow through the assembly and allow more precise control of the choke to achieve desired flow characteristics.” Pet. 27 (emphases added) (cited by Req. Reh’g 1). In light of our current understanding of Petitioner’s argument, based on the record, we find that the combination of Kelly and Fenton teaches a “diverter assembly,” a “choke,” and a “processing apparatus,” and that Petitioner’s proffered reasoning for modifying Kelly’s choke assembly to include Fenton’s temperature sensors, pressure sensors, or flow meters in order to allow for more precise control of the choke is sufficient to support the legal conclusion of obviousness. See Pet. 27–28.” slip op. at 8
§ 103 obviousnessPatents in suitUS 8,573,306 - Unified Patents Inc. v. Digital Stream IP, LLCSome claims unpatentablePTAB · Mar 9, 2018 · IPR2016-01749 · APJ Michelle N Wormmeester · IPR · Final written decision
Claims 1, 4, 6–13, 20, and 22 are unpatentable as obvious; claims 2 and 3 were not shown unpatentable because the cited art did not establish portability or handheld use.
RulingsFinal written decision- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“We agree with Petitioner. Although Petitioner bears the burden of correctly identifying the real parties-in-interest, “[w]e generally accept the petitioner’s identification of real parties-in-interest at the time of filing the petition.” See Zerto, Inc. v. EMC Corp., Case IPR2014-01254, at 6 (PTAB Mar. 3, 2015) (Paper 35) (citing Office Patent Trial Practice Guide, 77 Fed. Reg. 48,680, 48,695 (Aug. 14, 2012)). Here, Petitioner identifies in its Petition the real party-in-interest: “Pursuant to 37 C.F.R. § 42.8(b)(1), Unified Patents Inc. (‘Unified’ or ‘Petitioner’) certifies that Unified is the real party-in-interest.” Pet. 1. Such identification gives rise to a rebuttable presumption that Petitioner has complied with its obligation to identify all real parties-in-interest. See Zerto at 6–7. Patent Owner recognizes that “it [is] incumbent on the patent owner to come forward with some rebuttal evidence.” PO Resp. 52. In response to Petitioner’s identification of the real party-in-interest, Patent Owner contends that “this is not an instance where a petitioner’s certification in a petition can be taken at face value” because “evidence proffered by [Petitioner] in support of its position was withdrawn deliberately.” Id. at 53. We do not, however, require evidence beyond a petitioner’s identification of real parties-in-interest in the absence of rebuttal evidence that such identification is erroneous or incomplete. Petitioner’s withdrawal of Exhibit 1012 from the record does not constitute such rebuttal evidence. In view of the foregoing, we find that the circumstances here do not raise sufficient doubt about whether Petitioner has satisfied its obligation to name all real parties-in-interest. Therefore, we determine that the Petition should not be dismissed on this basis.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“by applying the broadest reasonable interpretation in light of the specification of the patent in which they appear. See 37 C.F.R. § 42.100(b); Cuozzo Speed Techs. LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016) (upholding the use of the broadest reasonable interpretation standard). Under that standard, claim terms generally 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. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). A “claim term will not receive its ordinary meaning if the patentee acted as his own lexicographer,” however, and clearly set forth a definition of the claim term in the specification. CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002). Petitioner proposes an express construction for the claim term “transceiver.” Pet. 10. Patent Owner does not propose an express construction for any claim term. See generally PO Resp. In light of the parties’ arguments, we determine that no term requires express interpretation to resolve any controversy in this proceeding.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableNot shown unpatentableMixed
“Rovira teaches each of the recited claim limitations, Petitioner must provide “some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006); see also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). In that regard, Petitioner directs us to Rovira’s teaching that “it is highly desirable to communicate program content information” because “having such information as music title, composer, artist and record label is vital” to music lovers. Pet. 16 (citing Ex. 1003, 1:30–32, 2:5–10); see also Ex. 1003, 1:32–35 (“Frustration of customers, and possible loss of revenue due to subscription cancellation can occur if a subscriber has no method of knowing the title, composer or artist of the particular selection of music.”). Petitioner argues it, thus, would have been obvious to modify Schotz’s system to incorporate a signal that includes both audio data and program data, as taught by Rovira. Pet. 17; see also, e.g., id. at 21 (“[O]ne would have been motivated to (1) modify Schotz’s transmitter 4 to transmit the digital audio signal of Rovira . . . and (2) modify Schotz’s receiver 6 to receive this digital audio signal.”); id. at 23 (“[T]his modification would result in Schotz’s user interface switch 18 selecting the digital audio data . . . within the digital audio signal [of Rovira].”); id. at 25 (“It would have been obvious to utilize the tuner 110 of Rovira in Schotz for [tuning] to frequencies that Schotz is receiving based on its use of Rovira’s digital audio signal. . . . Schotz is essentially doing this already, i.e., tuning to a frequency associated with audio data.”); id. at 27 (“[I]t would have been obvious to modify Schotz to utilize Rovira’s disclosed demodulator 125 to extract the selected digital audio data and the audio program information from the carrier wave, as taught by Rovira.”); id. at 28–29 (“It would have been obvious to modify Schotz to include the digital to analog converter 160 disclosed in Rovira. . . . The receiver 6 of Schotz would necessarily need a digital to analog converter when using the digital signals disclosed in Rovira so that the user can hear the selected music.”). We are persuaded by Petitioner’s reasoning, including specifically the quoted material in the preceding string citation to the Petition, for modifying Schotz’s system to include Rovira’s signal as well as various components for processing such a signal. See Kahn, 441 F.3d at 988. We note that “[a] person of ordinary skill is also a person of ordinary creativity, not an automaton,” and, in modifying Schotz’s system to include Rovira’s signal, would have made any necessary additional modifications such that Schotz’s system could process appropriately Rovira’s signal. See KSR, 550 U.S. at 421.” slip op. at 13
Patent outcomesUS 6,757,913 mixedClaim construction§ 103 obviousnesscites KSRPatents in suitUS 6,757,913
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.