• Katun Corporation v. Toshiba Tec Corporation And Toshiba America Business Solutions, Inc.Institution denied
  PTAB · Dec 7, 2016 · IPR2016-01149 · APJ Michelle N Wormmeester · IPR · Institution

  The Board denied institution because petitioner did not show a reasonable likelihood of proving claims 1, 3, or 11 unpatentable on any asserted ground.

  RulingsInstitution decision

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

    “For the reasons explained below, we are not persuaded that Petitioner has demonstrated a reasonable likelihood of prevailing on its asserted ground.” slip op. at 11

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner

    “state an intended use or that the claims define a structurally complete invention without the image forming apparatus. “A claim’s preamble may limit the claim when the claim drafter uses the preamble to define the subject matter of the claim.” August Tech. Corp. v. Camtek, Ltd., 655 F.3d 1278, 1284 (Fed. Cir. 2011); see Bell Commc’ns Research, Inc. v. Vitalink Commc’ns Corp., 55 F.3d 615, 620 (Fed. Cir. 1995) (“[W]hen the claim drafter chooses to use both the preamble and the body to define the subject matter of the claimed invention, the invention so defined, and not some other, is the one the patent protects.”). The preamble generally is construed to be limiting if it “recites essential structure or steps, or if it is necessary to give life, meaning, and vitality to the claim.” NTP, Inc. v. Research In Motion, Ltd., 418 F.3d 1282, 1305 (Fed. Cir. 2005) (quoting Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002)). “For example, the preamble may be construed as limiting when it recites particular structure or steps that are highlighted as important by the specification.” Proveris Scientific Corp. v. Innovasystems, Inc., 739 F.3d 1367, 1372 (Fed. Cir. 2014). “Additionally, ‘[w]hen limitations in the body of the claim rely upon and derive antecedent basis from the preamble, then the preamble may act as a necessary component of the claimed invention.’” Id. (citing NTP, 418 F.3d at 1306).” slip op. at 7

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed patent owner constructionDecided for patent owner

    “process parameters.” The specification of the ’091 patent defines this claim term: “The image formation parameter means set values for the operations of the photoconductive drum 11a, the developing device 13a, the cleaner 16a, the charger 17a, and the fixing device 19 performing the printing operation.” Ex. 1001, 4:4–7. Examples of these set values include “charging voltage values of the charger 17a for the printing operation and the like.” Id. at 4:12–15.” slip op. at 9

  • BurdenNot shown unpatentable

    “We are unpersuaded by Petitioner’s argument. As discussed above, we construe “image formation process parameters” to mean “set values for controlling the operation of the printing components of the image forming apparatus.” While Best’s operating data may be stored on the chip card of the toner container, they are not set values. Best explains that the operating data include toner type and counter reading. Ex. 1010, 8:1–2. Referring to Figure 6, Best further explains that, “in Step S7, specific electrophotographic values such as a value KW for the setting of the contrast are then set dependent on the identified toner type.” Id. at 9:39–42 (emphasis added), Fig. 6. Moreover, Figure 6 of Best shows that step S7 – setting electrophotographic values – takes place in a control panel process controller (or PC-control panel), which is a part of the printer, not the toner container. Id. at Figs. 4–6. Thus, as Patent Owner points out, “the memory on the toner container of Best does not contain [the recited] ‘image formation process parameters.’” Prelim. Resp. 36.” slip op. at 12

  Claim construction
  Patents in suitUS 8,554,091
• Unified Patents Inc. v. William GreciaRehearing denied
  PTAB · Nov 29, 2016 · IPR2016-00789 · APJ Michelle N Wormmeester · IPR · Rehearing

  The Board denied Unified Patents’ rehearing request, leaving in place the denial of institution because the petition did not sufficiently show the claimed token correspondence or GUI and API.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “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 clear error of judgment.” PPG Indus., Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 4 Wieder, U.S. Patent No. 8,001,612 B1, issued Aug. 16, 2011 (Ex. 1007). 5 Wiser, U.S. Patent No. 6,385,596 B1, issued May 7, 2002 (Ex. 1008). 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

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

    “a password or e-mail, not just any password or e-mail automatically satisfies the recited membership verification token. To satisfy the recited membership verification token, the password or e-mail must correspond to the digital media, as recited in each of independent claims 1, 12 and 15. See also Inst. Dec. 7 (construing the claim phrase “the request comprising a membership verification token provided by a first user, corresponding to the encrypted digital media” such that the language “corresponding to the encrypted digital media” modifies the membership verification token). This is supported by the specification of the ’555 patent, which teaches that “an identifier for the digital media is stored in a database with another database of a list of associated tokens for cross-reference identification for verification.” Ex. 1001, 8:52–55 (emphasis added); see also id. at 8:19–21 (“Subsequently, the membership verification token is authenticated at step 604. The authentication is performed in connection with a token database.”).” slip op. at 5

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “a password or e-mail, not just any password or e-mail automatically satisfies the recited membership verification token. To satisfy the recited membership verification token, the password or e-mail must correspond to the digital media, as recited in each of independent claims 1, 12 and 15. See also Inst. Dec. 7 (construing the claim phrase “the request comprising a membership verification token provided by a first user, corresponding to the encrypted digital media” such that the language “corresponding to the encrypted digital media” modifies the membership verification token). This is supported by the specification of the ’555 patent, which teaches that “an identifier for the digital media is stored in a database with another database of a list of associated tokens for cross-reference identification for verification.” Ex. 1001, 8:52–55 (emphasis added); see also id. at 8:19–21 (“Subsequently, the membership verification token is authenticated at step 604. The authentication is performed in connection with a token database.”).” slip op. at 5

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

    “the admitted prior art” For the asserted grounds based on DeMello, Petitioner relied on either DeMello or the admitted prior art as teaching the recited “membership verification token . . . corresponding to the encrypted digital media.” Pet. 17–21, 52. For the asserted grounds based on Pestoni, Petitioner relied on either Pestoni or the admitted prior art as teaching the recited “GUI” and “API.” Id. at 33; see id. at 29 (citing Ex. 1009, Exhibit D). We denied institution of these asserted grounds because we were not persuaded by Petitioner’s arguments regarding the teachings of DeMello or Pestoni, either alone or in combination with the admitted prior art. slip op. at 3

  § 102 anticipation§ 103 obviousness
  Patents in suitUS 8,402,555
• Ancestry.Com Dna, LLC v. Dna Genotek Inc.Institution denied
  PTAB · Nov 23, 2016 · IPR2016-01152 · APJ Michelle N Wormmeester · IPR · Institution

  The Board denied institution on all challenged claims because Petitioner did not show a reasonable likelihood of prevailing on any asserted obviousness ground.

  RulingsInstitution decision

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

    “It is not sufficient, however, for Petitioner to demonstrate that each of the claim elements is known. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Petitioner must also provide “some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). In that regard, Petitioner directs us to where Birnboim describes a container with a barrier, which may be a septum that separates a composition from a fluid until the septum is pierced or punctured. Pet. 36 (citing Ex. 1008, 9:11, 23:29–31). Petitioner also directs us to where Birnboim teaches that “the means for closing the container may be coupled to the disestablishment of the barrier.” Id. (citing Ex. 1008, 24:8–9). According to Petitioner, however, “Birnboim does not disclose how, in such embodiment, the ‘means for closing the container may be coupled to the disestablishment of the barrier.’” Id. Thus, Petitioner argues, a POSITA would have looked to analogous art “for a solution that would complete” Birnboim’s embodiment, and would have “recognized [O’Donovan] as providing a particularly relevant solution to the identified problem because, like Birnboim, O’Donovan is explicitly directed to a container system for use in analyzing biological samples.” Id. at 36–37 (citing Ex. 1003 ¶ 111).” slip op. at 8

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

    “We are unpersuaded by Petitioner’s argument. As Patent Owner points out, Petitioner does not explain sufficiently why one of ordinary skill in the art would have considered combining the container of Birnboim with certain features of the container of O’Donovan to arrive at the claimed invention. Prelim. Resp. 35. The mere fact that both Birnboim and O’Donovan are in the same field of endeavor falls short of an adequate rationale. The same field of endeavor analysis is merely the jumping-off point in reaching the determination of whether a claimed invention is obvious. See K-TEC, Inc. v. Vita-Mix Corp., 696 F.3d 1364, 1375 (Fed. Cir. 2012) (to qualify as prior art in an obviousness analysis, references must be analogous art—either from the same field of endeavor, or reasonably pertinent to the problem with which the inventor is involved). Petitioner further argues that combining the teachings of Birnboim and O’Donovan “would have required no more than ‘[a]pplying a known technique to a known device (method, or product) ready for improvement to yield predictable results,’” noting that “‘[a] person with ordinary skill in the art is a person of ordinary creativity, not an automaton, and in many cases . . . will be able to fit the teachings of multiple patents together like pieces of a puzzle.’” Pet. 37 (citing Ex. 1003 ¶ 112). We also are unpersuaded by this argument. Petitioner’s conclusory statements are nothing more than a restatement of basic tests identified by the Supreme Court for determining whether an invention would have been obvious. See KSR, 550 U.S. at 417 (“whether the improvement is more than the predictable use of prior art elements according to their established functions”); id. (whether “the claimed subject matter may involve more than . . . the mere application of a known technique to a piece of prior art ready for the improvement”); see also id. at 421 (“A person of ordinary skill is also a person of ordinary creativity, not an automaton.”). General principles on what may constitute a supporting rationale cannot substitute for specific application of those principles to the facts. Petitioner does not provide a persuasive, fact-based analysis to support the proposed combination of Birnboim and O’Donovan. Notably, it is not clear which features of O’Donovan’s container are to be incorporated into Birnboim’s container, or how, or why.” slip op. at 9

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

    “Petitioner provides proposed interpretations for various limitations of the claims. See Pet. 16–26. Patent Owner responds. Prelim. Resp. 6. For purposes of this Decision, we conclude that no term requires express interpretation at this time to resolve any controversy in this proceeding. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”).” slip op. at 6

  Claim construction§ 103 obviousness
  Patents in suitUS 8,221,381
• Unified Patents Inc. v. William GreciaRehearing denied
  PTAB · Nov 22, 2016 · IPR2016-00602 · APJ Michelle N Wormmeester · IPR · Rehearing

  The Board denied Unified Patents’ rehearing request, finding no abuse of discretion in denying institution on the DeMello- and Pestoni-based grounds challenging claim 1.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. STANDARD OF REVIEW When rehearing a decision, the 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 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 foundDecided for patent owner

    “argument for ‘requesting the query data.’” Req. Reh’g 8 (emphasis omitted). According to Petitioner, “[t]he Petition certainly offers reasons to combine with Wieder for the token database . . . , but [the requesting step] doesn’t require combination because it is obvious from Pestoni alone.” Id. at 9. We disagree with Petitioner’s contention. As we noted in our Institution Decision, an obviousness analysis requires “‘some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.’” Inst. Dec. 14 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). Even if the recited requesting step “doesn’t require combination” with another patent or printed publication, Petitioner did not explain sufficiently why one of ordinary skill in the art would have considered modifying Pestoni to arrive at the claimed invention. See id. For instance, Petitioner merely asserted, without further explanation, that “it would be obvious to one of skill in the art to implement Pestoni with a request and corresponding reception.” Pet. 49. Accordingly, we are not persuaded that Petitioner has provided adequately articulated reasoning with some rational underpinning to support the legal conclusion of obviousness as to the recited requesting step. See Kahn, 441 F.3d at 988.” slip op. at 7

  § 103 obviousness
  Patents in suitUS 8,887,308
• Unified Patents Inc. v. William GreciaRehearing denied
  PTAB · Oct 13, 2016 · IPR2016-00600 · APJ Michelle N Wormmeester · IPR · Rehearing

  The Board denied Petitioner’s rehearing request, leaving institution denied on the DeMello-based anticipation and obviousness grounds because the petition did not sufficiently show the claimed verification token or reason to modify DeMello.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. STANDARD OF REVIEW When rehearing a decision, the 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 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 3 Wiser, U.S. Patent No. 6,385,596 B1, issued May 7, 2002 (Ex. 1008). 4 Cooper, U.S. Publ’n No. US 2009/0037388 A1, published Feb. 5, 2009 (Ex. 1009). Trial Practice Guide, 77 Fed. Reg. at 48,768. We address Petitioner’s arguments with these principles in mind.” slip op. at 3

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

    “For the asserted grounds based on DeMello, Petitioner relied on either DeMello or the admitted prior art as teaching the recited “verification token . . . corresponding to the digital content.” Pet. 17–21, 52. We denied institution of these asserted grounds because we were not persuaded by Petitioner’s arguments regarding the teachings of DeMello, either alone or in combination with the admitted prior art.” slip op. at 3

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot reached

    “noted in our Institution Decision, an obviousness analysis requires “‘some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.’” Inst. Dec. 12. With respect to claim elements [C], [D], and [G], Petitioner did not explain sufficiently why one of ordinary skill in the art would have considered modifying DeMello to arrive at the claimed invention. See id. at 13; see also Req. Reh’g 8 (“A claim can be rejected as obvious over a single reference by identifying a teaching, suggestion, or motivation (TSM) to modify the single reference to fall within the scope of the claim.”). For example, with respect to claim element [D], Petitioner merely asserts that “DeMello describes a browser, which clearly implies or suggests a GUI.” Req. Reh’g 8; see also id. at 12 (“one of skill in the art, analyzing the ‘browser’ in DeMello, would understand that these browsers obviously have a GUI”); Pet. 23 (“it is obvious that the browser of the reader mentioned in DeMello includes a GUI, since browsers provide a GUI”). We are not persuaded that Petitioner has provided adequately articulated reasoning with some rational underpinning to support the legal conclusion of obviousness over DeMello alone as to claim element [D]. Similarly, we are not persuaded that Petitioner has provided adequately articulated reasoning with some rational underpinning to support the legal conclusion of obviousness over DeMello alone as to claim elements [C] and [G]. See Req. Reh’g 10–11; Pet. 20–21, 26–28.” slip op. at 7

  • Strike new argumentNew argument disregardedDecided for patent owner

    “DeMello, Petitioner contends that we “overlooked the Petition’s argument that the claims are obvious in view of DeMello alone, without any of the additional, admitted prior art.” Req. Reh’g 7 (emphasis omitted). According to Petitioner, “the admitted prior art was added, as background information,” and the Petition showed that claim elements [C], [D], and [G] are obvious over DeMello alone. Id. at 8, 10, 12. This is a new argument, which does not address what was overlooked or misapprehended in our Decision, and is not appropriate in a request for rehearing. See 37 C.F.R. § 42.71(d). For instance, the heading at page 15 of the Petition reads “Ground 1: Claims 1–20 are unpatentable as obvious over DeMello (EX1006) in view of the admitted prior art” (emphasis omitted). None of the other headings in the Petition alleges that any of the claims are unpatentable as obvious over DeMello alone. Nor has Petitioner directed us to any portion of the Petition presenting such argument.” slip op. at 7

  § 103 obviousness
  Patents in suitUS 8,533,860
• Unified Patents Inc. v. William GreciaInstitution denied
  PTAB · Aug 30, 2016 · IPR2016-00602 · APJ Michelle N Wormmeester · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of proving claim 1 unpatentable over DeMello or Pestoni, alone or in the asserted combinations.

  RulingsInstitution decision

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

    “requesting inter partes review of claim 1 of U.S. Patent No. 8,887,308 B2 (Ex. 1003, “the ’308 patent”). William Grecia (“Patent Owner”) filed a Preliminary Response (Paper 7, “Prelim. Resp.”). We have jurisdiction under 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons that follow, we have decided not to institute an inter partes review.” slip op. at 2

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner

    “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 this standard, claim terms are generally 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).” slip op. at 6

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “Claim 1 requires the “credential” to be assigned to the apparatus of (a). As Patent Owner points out, the specification of the ’308 patent describes such credential as “an API Key, an Application Secret Key and could also include an Application ID,” which “[is] usually embedded in the source code of the apparatus, or stored on a remote Internet server.” Id. at 28–29 (citing Ex. 100[3], 10:51–56); Ex. 1003, 10:51–66. The apparatus, such as an Internet-powered desktop or a browser-based application, uses the API Key to establish a data exchange session with the API. Ex. 1003, 10:51–58. By contrast, the “credential in DeMello is assigned to the user, not the device.” Prelim. Resp. 28. As Petitioner explains, “[i]n DeMello, the reader prompts a user to provide login credentials (e.g., PASSPORTTM credentials) to connect to the PASSPORT server via the API of the PASSPORT server to authenticate the user at the PASSPORT server.” Pet. 31 (emphases added); see also Ex. 1006, 23:6–10. Further, Mr. Cherukuri characterizes the PASSPORT credentials as “user’s credentials.” See Ex. 1009 ¶ 72 (cited at Pet. 32) (emphasis added). Neither Petitioner nor Mr. Cherukuri explains persuasively how the user PASSPORT credentials in DeMello are assigned to the reader (apparatus of (a)). Based on the record presented, we are not persuaded that DeMello discloses the recited credential. In view of the foregoing, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing in showing that DeMello anticipates claim 1.” slip op. at 9

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

    “B. Obviousness over DeMello, Wieder, and the Admitted Prior Art Petitioner argues that claim 1 of the ’308 patent would have been obvious over DeMello, Wieder, and “the admitted prior art.” See Pet. 19– 39. Petitioner does not cite Wieder or the admitted prior art as teaching the elements found to be lacking in the above discussion with respect to DeMello. Accordingly, on this record, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing on its assertion that claim 1 would have been obvious over DeMello, Wieder, and the admitted prior art.” slip op. at 10

  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 8,887,308
• Unified Patents Inc. v. William GreciaInstitution denied
  PTAB · Aug 16, 2016 · IPR2016-00600 · APJ Michelle N Wormmeester · IPR · Institution

  The Board denied institution on all challenged claims because Petitioner did not show a reasonable likelihood of prevailing on any claim.

  RulingsInstitution decision

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

    “Pet.”) requesting inter partes review of claims 1–30 of U.S. Patent No. 8,533,860 B1 (Ex. 1001, “the ’860 patent”). William Grecia (“Patent Owner”) filed a Preliminary Response (Paper 10, “Prelim. Resp.”). We have jurisdiction under 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons that follow, we have decided not to institute an inter partes review. slip op. at 2

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “As Patent Owner points out, the “claims require a verification token ‘corresponding to the digital content.’” Prelim. Resp. 29. Petitioner does not provide persuasive explanation as to how a retailer password or e-mail corresponds to digital content. In fact, Petitioner does not appear to address this recited feature at all. See 35 U.S.C. §312(a)(3) (a petition must identify, “with particularity, each claim challenged, the grounds on which the challenge to each claim is based, and the evidence that supports the grounds for the challenge to each claim”); 37 C.F.R. § 42.104(b) (a petition must identify “[h]ow the construed claim is unpatentable under the statutory grounds identified” and “where each element of the claim is found in the prior art,” and must explain the “relevance of the evidence to the challenge raised”); 37 C.F.R. § 42.22(a)(2) (a petition must include a “full statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence”). As Petitioner does not identify specifically how a retailer password or e-mail in DeMello corresponds to digital content, we are not persuaded that Petitioner has made a sufficient showing that DeMello discloses the recited verification token.” slip op. at 9

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

    “It is not sufficient, however, for Petitioner to demonstrate that each of the claim elements is known. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Petitioner must also provide “some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). In that regard, with respect to element [B], Petitioner argues: DeMello teaches “user authentication” and establishing a membership relationship with a retailer (left of Figure 4), which inherently would include providing a token, such as a retailer password and/or email (e.g., Amazon log-on credentials). User authentication and establishing a membership are obvious in view of the admitted prior art. The admitted prior art steps are described in the parent ‘555 Patent as verifying membership for site to buy content, and DeMello recites establishing such a membership relationship. It would be obvious to use the verification token of the admitted prior art to establish a membership relationship. Pet. 18–19. Petitioner does not, however, explain sufficiently why one of ordinary skill in the art would have considered combining DeMello and any other patent or printed publication to arrive at the claimed invention. For example, Petitioner does not explain persuasively why one of ordinary skill in the art would have considered “us[ing] the verification token of the admitted prior art to establish a membership relationship” in DeMello, when DeMello already teaches “establishing a membership relationship with a retailer.” See id. With respect to elements [C] and [G], Petitioner does not appear to proffer any reason for combining DeMello and the admitted prior art. See Pet. 20–21, 26–28. Finally, with respect to element [D], Petitioner merely asserts that “it is obvious that the browser of the reader mentioned in DeMello includes a GUI, since browsers provide a GUI.” Id.at 23. Again, Petitioner does not explain sufficiently why one of ordinary skill in the art would have considered combining DeMello and any other patent or printed publication to arrive at the claimed invention. Based on the record presented, we are not persuaded that Petitioner has provided adequately articulated reasoning with some rational underpinning to support the legal conclusion of obviousness with respect to elements [B], [C], [D], and [G]. See Kahn, 441 F.3d at 988. Accordingly, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing in showing that claims 1, 9, and 11 would have been obvious over DeMello and the admitted prior art. See also Pet. 42 (referring to analysis of claim 1 for claim 9), 44–45 (referring to analysis of claim 1 for claim 11). Claims 2–8, 10, and 12–20 depend from claims 1, 9, or 11. We therefore also determine that Petitioner has not demonstrated a reasonable likelihood of prevailing in showing that these dependent claims would have been obvious over DeMello and the admitted prior art.” slip op. at 12

  • PTAB / AIA Trials › §315(b) time barNot reached

    “barred under 35 U.S.C. § 315(b) because “[Patent Owner] filed and served a complaint alleging that Google infringed the ‘860 patent” and “Google, an original founding member of [Petitioner] and continuing customer of [Petitioner] (Ex. 2005), is a privy of [Petitioner].” Prelim. Resp. 41–42. Because the information presented in the Petition does not demonstrate a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims, we need not address Patent Owner’s assertions that the Petition is time-barred under 35 U.S.C. § 315(b) based on privity.” slip op. at 21

  § 102 anticipation§ 103 obviousness
  Patents in suitUS 8,533,860
• LG Display Co., Ltd. v. Delaware Display Group LLCAll claims unpatentable
  PTAB · Jun 23, 2016 · IPR2015-01666 · APJ Michelle N Wormmeester · IPR · Final written decision

  Claims 1–5 are unpatentable because Shinohara anticipates them.

  RulingsFinal written decision

  • PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted

    “Following institution, LG Electronics, Inc. filed timely a Petition and Motion for Joinder in Case IPR2015-01666, challenging the same claims of the ’973 patent on the same ground as that on which we instituted review in this proceeding, plus one additional ground. See Paper 24, 2. LG Electronics, Inc. agreed to abandon the additional ground should IPR2015- 01666 be joined with this proceeding. See id. at 2 n.1. To administer the proceedings more efficiently, we granted LG Electronics, Inc.’s Motion for Joinder, joining Case IPR2015-01666 with the instant proceeding. Id. at 5. For purposes of this Decision, we refer to LG Display Co., Ltd. and LG Electronics, Inc., jointly, as “Petitioner.”” slip op. at 2

  • Skill levelOther
  • BurdenUnpatentable

    “B. Anticipation by Shinohara A claim is anticipated if each limitation of the claim is disclosed in a single prior art reference arranged as in the claim. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008). As recently reiterated by the Federal Circuit, “a reference can anticipate a claim even if it ‘d[oes] not expressly spell out’ all the limitations arranged or combined as in the claim, if a person of skill in the art, reading the reference, would ‘at once envisage’ the claimed arrangement or combination.” Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381 (Fed. Cir. 2015) (quoting In re Petering, 301 F.2d 676, 681 (CCPA 1962)). We analyze this ground based on anticipation in accordance with the above-stated principles.” slip op. at 11

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

    “Patent Owner repeats its unsuccessful argument that, “[w]ithout offering a construction for this term, the Petitioner has failed to meet the burden of 37 C.F.R. § 42.104(b)(3).” Id. Petitioner responds that this term (1) does not require construction; (2) is limited to a specific embodiment in the specification; (3) and imports a limitation from the specification into the claims. Reply 3–4. Having considered the full record developed during trial, we agree with Petitioner that this term does not require construction. See, e.g., Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Patent Owner’s arguments distinguishing the prior art do not rely on a particular construction for this term. See infra.” slip op. at 6

  Patent outcomesUS 7,434,973 unpatentable
  Claim construction§ 102 anticipation
  Patents in suitUS 7,434,973
• LG Display Co., Ltd. v. Delaware Display Group LLCAll claims unpatentable
  PTAB · Jun 23, 2016 · IPR2015-00506 · APJ Michelle N Wormmeester · IPR · Final written decision

  Claims 1–5 are unpatentable because Shinohara anticipates them.

  RulingsFinal written decision

  • PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted

    “Following institution, LG Electronics, Inc. filed timely a Petition and Motion for Joinder in Case IPR2015-01666, challenging the same claims of the ’973 patent on the same ground as that on which we instituted review in this proceeding, plus one additional ground. See Paper 24, 2. LG Electronics, Inc. agreed to abandon the additional ground should IPR2015- 01666 be joined with this proceeding. See id. at 2 n.1. To administer the proceedings more efficiently, we granted LG Electronics, Inc.’s Motion for Joinder, joining Case IPR2015-01666 with the instant proceeding. Id. at 5. For purposes of this Decision, we refer to LG Display Co., Ltd. and LG Electronics, Inc., jointly, as “Petitioner.”” slip op. at 2

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

    “Patent Owner repeats its unsuccessful argument that, “[w]ithout offering a construction for this term, the Petitioner has failed to meet the burden of 37 C.F.R. § 42.104(b)(3).” Id. Petitioner responds that this term (1) does not require construction; (2) is limited to a specific embodiment in the specification; (3) and imports a limitation from the specification into the claims. Reply 3–4. Having considered the full record developed during trial, we agree with Petitioner that this term does not require construction. See, e.g., Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Patent Owner’s arguments distinguishing the prior art do not rely on a particular construction for this term. See infra.” slip op. at 6

  • Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner

    “the ’176 grandparent application is insufficient. “Entitlement to a filing date does not extend to subject matter which is not disclosed, but would be obvious over what is expressly disclosed.” Lockwood v. Am. Airlines Inc., 107 F.3d 1565, 1571–72 (Fed. Cir. 1997); see also Reply 5–6. We find that the cited disclosures in the ’176 grandparent application do not describe the density, size, depth, or height of the deformities at approximate midpoints between adjacent pairs of light sources. As discussed above, Patent Owner maintains that a skilled artisan reading the ’176 grandparent application would know that “the approximate midpoint between the two light sources is an area farther away from a light source.” PO Resp. 28 (emphasis added). We are not persuaded by this argument, for it does not establish that the approximate midpoint between adjacent pairs of light sources is the only area farther away from a light source. As Petitioner points out, “the increased distance from the light source is not limited to a distance along the length of the panel member, along the width of the panel member, or along any direction at all.” Reply 11. Thus, Patent Owner fails to meet its burden under Dynamic Drinkware, LLC v. National Graphics, Inc., 800 F.3d 1375, 1379–80 (Fed. Cir. 2015) (burden of production shifted to patent owner to prove entitlement to earlier filing date).” slip op. at 10

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date, deniedReference is prior artDecided for petitioner

    “In view of the foregoing, we determine that Patent Owner has not demonstrated that the ’176 grandparent application, as originally filed, provides written description support for the disputed limitation. Therefore, we determine that claims 1–5 are not entitled to the benefit of the filing date of the ’176 grandparent application and Patent Owner is thus entitled only to the effective filing date of the application for the ʼ973 patent, February 9, 2007. As a consequence, we find that Shinohara qualifies as prior art.” slip op. at 11

  Patent outcomesUS 7,434,973 unpatentable
  Claim construction§ 102 anticipation§ 112 disclosure
  Patents in suitUS 7,434,973
• Zimmer Surgical, Inc. v. Stryker CorporationInstitution denied
  PTAB · May 18, 2016 · IPR2016-00265 · APJ Zhenyu Yang · IPR · Institution

  The Board denied institution on claims 1–20 because the asserted combinations did not establish a reasonable likelihood of showing the claimed conduit and tip limitations obvious.

  RulingsInstitution decision

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

    “CONCLUSION On this record, Petitioner has not demonstrated a reasonable likelihood that it would prevail in showing the unpatentability of any challenged claim of the ’682 patent on the grounds asserted in the Petition. ORDER Accordingly, it is ORDERED that Petitioner’s request for an inter partes review of claims 1–20 of the ’682 patent is denied and no inter partes review is instituted.” slip op. at 18

  • BurdenNot shown unpatentable

    “In addition, although claim 1 recites a tip having an exit opening below the headband, Petitioner does not sufficiently account for this independent structure. At one point, Petitioner appears to equate the rear air exit in Diaz with the tip. See Pet. 11 (stating “positioning a rear air exit 78 or tip below rear support 130”) (emphasis added). At another point, Mr. Jones testifies that “one of ordinary skill in the art would have understood that extending air flow channel 26 to the back of the neck would require a tip.” Ex. 1002 ¶ 34([1.g]). Neither position is persuasive. Regarding rear exit 78, we agree with Patent Owner that it is merely a slot at the end of the air flow channel, which is formed as part of the shell. See Prelim. Resp. 12–13; Ex. 1004, Fig. 10. Thus, we are not persuaded that such a structure meets the limitation of the tip recited in claim 1. As for Mr. Jones’s testimony, an expert’s opinion is only as good as the facts upon which it is based. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). Here, Mr. Jones provides no citation or explanation, other than that it was his opinion, to support his statement. Thus, we are not persuaded that the recited tip would have been part of the background knowledge in the art. In sum, based on this record, we determine that Petitioner has not shown sufficiently that the combination of Diaz and Hull teaches or suggests the conduit and the tip as recited in claim 1. Accordingly, Petitioner has not established a reasonable likelihood that it would prevail in showing that” slip op. at 12

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “below the headband, Petitioner does not sufficiently account for this independent structure. At one point, Petitioner appears to equate the rear air exit in Diaz with the tip. See Pet. 11 (stating “positioning a rear air exit 78 or tip below rear support 130”) (emphasis added). At another point, Mr. Jones testifies that “one of ordinary skill in the art would have understood that extending air flow channel 26 to the back of the neck would require a tip.” Ex. 1002 ¶ 34([1.g]). Neither position is persuasive. Regarding rear exit 78, we agree with Patent Owner that it is merely a slot at the end of the air flow channel, which is formed as part of the shell. See Prelim. Resp. 12–13; Ex. 1004, Fig. 10. Thus, we are not persuaded that such a structure meets the limitation of the tip recited in claim 1. As for Mr. Jones’s testimony, an expert’s opinion is only as good as the facts upon which it is based. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). Here, Mr. Jones provides no citation or explanation, other than that it was his opinion, to support his statement. Thus, we are not persuaded that the recited tip would have been part of the background knowledge in the art.” slip op. at 12

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

    “In an obviousness inquiry, “it can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does.” KSR, 550 U.S. at 418. To determine whether there was a reason to combine and modify the teachings of prior art, we review the background knowledge possessed by one of ordinary skill in the art and consider common sense. Id. Nevertheless, “there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” Id. Here, Petitioner is correct that Diaz “expressly recognizes the advantage of distributing air to a user’s neck.” Pet. 10 (citing Ex. 1004, 2:42–48, 3:38–39, 5:49–52). With that recognition, however, Diaz teaches a single fan that distributes air toward both the face and the neck of the user. Ex. 1004, 2:42–46, 5:49–52. Diaz does not mention the need to discharge air directly onto the back of the neck, as required by claim 1. Nor does Hull suggest so. Indeed, Hull teaches directing air “at the sides of the neck in the vicinity of the large arteries and veins where air has the greatest cooling effect.” Id. at 3:31–34, 3:124–29. Neither Petitioner nor Mr. Jones explains persuasively why one of ordinary skill in the art would have extended the air channel in Diaz downwardly to meet the limitation of a conduit, as required in claim 1, and not directed the air to the sides of the neck, as taught in Hull.” slip op. at 11

  § 103 obviousnesscites KSR
  Patents in suitUS 7,752,682

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.