- PTAB · Dec 29, 2015 · IPR2015-01499 · APJ Michael R Zecher · IPR · Institution
The Board denied institution because the Petition did not show a reasonable likelihood that claims 1–9 were obvious over Satou and Noguchi.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“5. Summary Based on the record before us, SDC has not demonstrated a reasonable likelihood that it would prevail on its assertion that claims 1–9 would have been obvious over the combination of Satou and Noguchi because SDC does not provide a sufficient rationale to combine the respective teachings of these asserted references. III. CONCLUSION Taking into account the arguments presented in Gold Charm’s Preliminary Response, we conclude that the information presented in the Petition does not demonstrate that there is a reasonable likelihood that SDC would prevail in challenging claims 1–9 of the ’534 patent as unpatentable under § 103(a). IV. ORDER In consideration of the foregoing, it is ORDERED that the Petition is DENIED and no trial is instituted.” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“On the present record, we are not persuaded that SDC has articulated a sufficient rationale to combine the teachings of Satou and Noguchi. With respect to SDC’s assertion that the teachings of Satou and Noguchi are capable of being combined because both of these references solve the same problem using essentially the same structure, this assertion, at best, indicates that Satou and Noguchi are analogous art to each other. Merely asserting that these prior art references are analogous art to each other, however, does not suffice as an articulated reason with a rational underpinning to combine their respective teachings—more is required to support the legal conclusion of obviousness. See KSR, 550 U.S. at 418. With respect to SDC’s assertion that one of ordinary skill in the art would have implemented components of Satou’s active matrix substrate in accordance with the configurations taught by Noguchi, this assertion lacks a convincing rationale as to why one of ordinary skill in the art would have looked to Noguchi for guidance as to how these components disclosed in Satou should be re-configured in the manner required by independent claim 1. Based on this assertion, we understand SDC to argue that the components disclosed in Satou’s active matrix substrate account for all the features required by independent claim 1, but these components are not configured in the same manner required by this claim. We further understand SDC to argue that one of ordinary skill in the art would have looked to the configurations taught by Noguchi in order to achieve the particular configuration of features required by independent claim 1. Without engaging in impermissible hindsight reconstruction, it is not clear to us why one of ordinary skill in the art would have looked to the configurations taught by Noguchi, especially given that, according to SDC, Noguchi solves the same problem as Satou using essentially the same structure. See Grain Processing Corp. v. Am.-Maize Prods. Co., 840 F.2d 902, 907 (Fed. Cir. 1988) (quoting Orthopedic Equip. Co. v. United States, 702 F.2d 1005, 1012 (Fed. Cir. 1983)) (“Care must be taken to avoid hindsight reconstruction by using ‘the patent in suit as a guide through the maze of prior art references, combining the right references in the right way so as to achieve the result of the claims in suit.”’).” slip op. at 15
- Expert testimonyPetitioner expert discountedDecided for patent owner
“We also are not persuaded by the supporting testimony of Mr. Credelle regarding SDC’s rationale to combine the teachings of Satou and Noguchi because it essentially repeats the arguments advanced by SDC in its Petition. Compare Pet. 38–40, with Ex. 1006 ¶¶ 76, 77. For instance, Mr. Credelle testifies that one of ordinary skill in the art would have combined the teachings of Satou and Noguchi because they solve the same problem using essentially the same structure. Ex. 1006 ¶ 76 (citing Ex. 1003, 1:52– 56; Ex. 1004, 2:38–41). Similar to our explanation above, simply demonstrating that these prior art references are analogous art to each other does not suffice as an articulated reason with a rational underpinning to combine their respective teachings—more is required to support the legal conclusion of obviousness. See KSR, 550 U.S. at 418. Mr. Credelle also testifies that one of ordinary skill in the art would have implemented components of Satou’s active matrix substrate in accordance with the configurations taught by Noguchi. Ex. 1006 ¶ 76. Similar to our explanation above, without engaging in impermissible hindsight reconstruction, it is not clear to us why one of ordinary skill in the art would have looked to the configurations taught by Noguchi, especially given that, according to SDC, Noguchi solves the same problem as Satou using essentially the same structure. See Grain Processing, 840 F.2d at 907.” slip op. at 17
§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,211,534 - PTAB · Dec 28, 2015 · IPR2015-01479 · APJ Charles J Boudreau · IPR · Institution
The Board denied institution on all challenged claims because the Petition did not show a reasonable likelihood of prevailing on any asserted ground.
RulingsInstitution decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“We agree with Patent Owner that “[t]he use of the term ‘backlight’ rather than simply ‘light’ indicates that something is being illuminated from behind.” Id. at 28. Petitioner’s proposed constructions (Pet. 13–16) are unreasonably broad insofar as they do not account for the use of the term “backlight.” We also agree with Patent Owner (see id.) that it is clear in the context of the ’833 patent that the recited backlights are in a liquid crystal display apparatus. See Toro Co. v. White Consol. Indus. Inc., 199 F.3d 1295, 1301 (Fed. Cir. 1999) (words used in a claim are not construed in a “lexicographic vacuum, but in the context of the specification and drawings”); In re Marosi, 710 F.2d 799, 802 (Fed. Cir. 1983) (“[C]laims are not to be read in a vacuum, and limitations therein are to be interpreted in light of the specification in giving them their ‘broadest reasonable interpretation.’” (emphasis omitted) (quoting In re Okuzawa, 537 F.2d 545, 548 (CCPA 1976)). Petitioner, and its expert Dr. Silzars, recognize in their statements regarding the level of ordinary skill in the art that the relevant art here is “display technologies.” See Pet. 12; Ex. 1002 ¶ 13. Notably, however, despite Petitioner’s assertions and Dr. Silzars’ opinions that “[t]he alleged invention boils down to a method for minimizing the electrical noise generated when simultaneously driving multiple lights,” that the “‘liquid crystal display’ modifier” in the preambles of the challenged claims “merely states a purpose or intended use of the invention” (Pet. 20–22; Ex. 1002 ¶¶ 58–59), and that “there is no structure that is specific to LCDs recited in the body of any of the claims,” neither Petitioner nor Dr. Silzars identifies any context in which backlights would be employed by those of ordinary skill in the art of display technologies, other than in an LCD. Accordingly, on this record and for purposes of this Decision, we determine that the broadest reasonable interpretation of the term “backlight” is “a lamp or set of lamps that illuminates a liquid crystal display from behind.” Because the claims already explicitly define the relationship between the “first backlight” and the “second backlight”—for example, claim 1 recites, in relevant part, that the second backlight is “driven simultaneously with said first backlight” and “ha[s] an oscillation wave whose phase is inverted with respect to an oscillation wave of the first backlight”—we discern no need to provide separate interpretations of “first backlight” and “second backlight.” We also decline to adopt Patent Owner’s proposal to limit the “second backlight” to include “all remaining lamps of the . . . apparatus that are not in the first backlight.” Because independent claims 1 and 16 use the open-ended transitional phrase “comprising,” those claims do not exclude additional, unrecited elements and method steps, respectively. See Manual of Patent Examining Procedure § 2111.03 (9th ed., Rev. 07.2015 Nov. 2015). 2. Other Claim Terms For purposes of this Decision, no other claim terms require express interpretation. Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“claim 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))).” slip op. at 10
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)
“B. Anticipation and Obviousness “A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). The elements must be arranged as required by the claim, but this is not an ipsissimis verbis test. In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). [U]nless a reference discloses within the four corners of the document not only all of the limitations claimed but also all of the limitations arranged or combined in the same way as recited in the claim, it cannot be said to prove prior invention of the thing claimed[,] and thus, cannot anticipate under 35 U.S.C. § 102. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008); accord In re Arkley, 455 F.2d 586, 587 (CCPA 1972). Moreover, “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 12
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)
“A patent claim is unpatentable under 35 U.S.C. § 103(a) if the differences between the claimed subject matter and the prior art are “such that the subject matter[,] as a whole[,] would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations, including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of skill in the art; and (4) objective evidence of nonobviousness, i.e., secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). We analyze the asserted grounds with the principles identified above in mind.” slip op. at 13
- PTAB / AIA Trials › Real party in interest / privityNot reached
“D. Remaining Contentions The above determination makes it unnecessary to resolve any other disputes, including Patent Owner’s assertion that Petitioner failed to list all of the real parties in interest. See Prelim. Resp. 4–14; Petitioners’ Reply to Patent Owner’s Preliminary Response, Paper 9; Patent Owner’s Sur-Reply to Petitioners’ Reply, Paper 10.” slip op. at 33
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,417,833 - Seagate Technology (US) Holdings, Inc. / Seagate Technology LLC v. Enova Technology Corp.All claims unpatentablePTAB · Dec 18, 2015 · IPR2014-01178 · APJ Timothy J Goodson · IPR · Final written decision
Claims 1–32 are unpatentable under §103 over Sullivan and SATA Standard because their combination would have made the claimed encryption and bypass features obvious.
RulingsFinal written decision- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“SATA device, we find persuasive Petitioner’s explanation that a skilled artisan would have found it obvious to distinguish between Data FISes that carry user data and Data FISes that carry control, command, or status information, by utilizing the association in SATA Standard between a given command and the type of information in a resulting Data FIS. See Pet. 29, 31; Ex. 1006 ¶¶ 30–35, 50, 101–03, 154; Reply 5–6.” slip op. at 20
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“We disagree that Sullivan’s description of the filter module teaches away from causing certain FISes to bypass the cryptographic engine. Sullivan teaches that the filter module may be “configured to pass only a any one of encrypting, decrypting, or bypassing (see Tr. 106:23–108:13), the parties appear to be in agreement that these limitations require that the controller is capable of instructing the cryptographic engine to bypass an FIS. Pet. 37–38; PO Resp. 45–46. predetermined allowed set of commands, status and other information or categories of information.” Ex. 1002 ¶ 55. Sullivan teaches that “[t]ypical allowed commands will be read, write, and other commands associated with data or memory access and storage.” Ex. 1002 ¶ 56. Dr. Long and Dr. Conte agree that information that is allowed by Sullivan’s filter is transmitted to the cryptographic core for encryption or decryption. See Ex. 1006 ¶ 114; Ex. 2061 ¶ 76. Sullivan further teaches that, “[a]lternatively or additionally, the filter module may include logic to reject a predetermined set of information or categories of information, e.g. to reject certain types of data, address pointers, and so on.” Ex. 1002 ¶ 55.4 Based on this disclosure, Patent Owner contends that Sullivan’s filter only permits two outcomes: (1) passing packets to the cryptographic module for encryption; or (2) rejecting them. PO Resp. 47 (citing Ex. 2061 ¶ 122). However, because Sullivan describes the rejection feature as alternative or additional, we find Dr. Long’s description of how a skilled artisan would have understood these teachings to be more credible. Dr. Long testifies that Sullivan’s paragraph 55 “reminds us there’s a number of ways to do this, look-up table, formula logic, whatever. It discloses the idea of you can pass some subset of commands to the encryption unit, and you can block other set of commands. It’s silent on the intersection of those two sets.” Ex. 2060, 74:3–8. Elaborating further, Dr. Long testifies: 4 Sullivan does not state expressly what becomes of the information that is rejected. Dr. Conte testifies that it is “rejected and filtered out.” Ex. 2061 ¶ 122. Dr. Long appears to be in agreement that information blocked by the rejection feature is not processed further. See Ex. 2060, 74:17–18 (testifying that “[t]here is a set of things that are blocked, which means they don’t go anywhere”).” slip op. at 25
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“To be accorded substantial weight, there must be a nexus between the merits of the claimed invention and the evidence of secondary considerations. In re GPAC Inc., 57 F.3d 1573, 1580 (Fed. Cir. 1995). “Nexus” is a legally and factually sufficient connection between the objective evidence and the claimed invention, such that the objective evidence should be considered in determining nonobviousness. Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387, 1392 (Fed. Cir. 1988). The burden of showing that there is a nexus lies with the Patent Owner. Id.; see In re Paulsen, 30 F.3d 1475, 1482 (Fed. Cir. 1994).” slip op. at 32
- ExcludeOther
“The standard for granting a motion to seal is “for good cause.” 37 C.F.R. § 42.54. Patent Owner, as the moving party, has the burden of proof in showing entitlement to the requested relief. 37 C.F.R. § 42.20(c). This burden includes showing that the information sought to be sealed is truly confidential, and that such confidentiality outweighs the strong public policy interest in having an open record in inter partes reviews. In reviewing the “confidential” version of these exhibits, we note that each exhibit has been heavily redacted, leaving only a handful of lines per each exhibit. These un-redacted portions do not provide sufficient detail to verify the contents of these exhibits. Thus, we cannot confirm Patent Owner’s assertions regarding the confidentiality of these exhibits, nor can we grant Patent Owner’s Motion to Seal for good cause. Accordingly, we deny Patent Owner’s Motion to Seal Exhibits 2042, 2043, and 2044.” slip op. at 38
Patent outcomesUS 7,900,057 unpatentable§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,900,057 - Seagate Technology (US) Holdings, Inc. / Seagate Technology LLC v. Enova Technology Corp.All claims unpatentablePTAB · Dec 18, 2015 · IPR2014-01449 · APJ Timothy J Goodson · IPR · Final written decision
Claims 40–53 are unpatentable under § 103 over Sullivan and SATA Standard because the combination renders the claimed cryptographic SATA operations obvious.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“The Decision to Institute did not provide express constructions for any of the terms of the challenged claims, noting that “claim terms need only be construed ‘to the extent necessary to resolve the controversy.’” Dec. to Inst. 6–7 (quoting Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011)). Patent Owner’s Response does not propose any claim constructions, asserting instead that “even under the claim constructions proposed by Petitioner[], the references of record do not render any claims of the ’057 Patent obvious.” PO Resp. 15. The parties’ arguments in this proceeding following the Decision to Institute do not provide any reason to deviate from the claim construction approach in the Decision to Institute. Based on the record before us, we need not provide express constructions for any claim terms.” slip op. at 6
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the field of this invention would have had at least a bachelor’s degree in electrical engineering, computer engineering, or computer science, and two years of experience in a relevant field, or equivalent knowledge and experience. Pet. 4 (citing Ex. 1006 ¶¶ 16–17). Patent Owner’s Response does not address specifically the level of ordinary skill in the art. We note, however, that Patent Owner’s declarant, Dr. Thomas M. Conte, testifies that because the claims of the ’057 patent describe a cryptographic apparatus, which is a computer hardware device, one of ordinary skill in the art should have experience with the hardware of devices and systems. Ex. 2061 ¶ 18. Dr. Conte’s testimony does not persuade us that hardware encryption experience is a prerequisite for the level of ordinary skill, such that persons having a software background or a degree in computer science are excluded from being persons of ordinary skill. See id. Although the Specification of the ’057 patent and the challenged claims disclose a “cryptographic device,” the ’057 patent teaches that “[t]he above-described embodiments may be implemented in hardware and/or software form, as desired.” Ex. 1001, 12:10–11. After considering the evidence of record, we conclude that a person of ordinary skill in the art at the time of the ’057 patent would have had a bachelor’s degree in electrical engineering, computer engineering or computer science, and at least two years of experience.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“adequately for the disclosure in Sullivan that is broader and more general. For example, in the Background section, Sullivan describes that “[a] system is needed whereby transmission of data in a serial channel can be accomplished in-line and in real time, where the data and control information can be treated separately for both encryption purposes and for handling various types of attacks and covert processes embedded in or achieved by the transmitted information.” Ex. 1002 ¶ 6 (emphasis added); see also id. at ¶ 10 (“The control information, which may include commands and status information, can be subjected to filtering and rejecting operations by the encryption unit, to pass through only a predetermined set of commands and/or to reject a predetermined set of commands.”); id. at ¶ 55 (“[T]he filter module 730 may be configured as an information or command pass filter or blocking filter for any control information that may be included in the packet 700, whether or not in the header.”) (emphasis added); id. at claim 9 (“transmitting the encrypted information with the associated control information to the second device, where the associated control information is transmitted in an unencrypted form”). In view of these teachings, we agree with Petitioner that “Sullivan describes making encryption decisions based on the type of data and not simply the location of the data (e.g., in a header or in a payload).” Reply 8. Further, a skilled artisan would not have understood Sullivan’s teaching to strip out the header and encrypt the payload as a prescription for how each individual FIS should be treated when Sullivan is applied to a SATA device, because that encryption strategy would yield a non-functioning SATA device. It is undisputed that implementing Sullivan in a SATA device in this manner would result in a non-functional system, because doing so would result in encryption of payloads that should not be encrypted, thereby rendering the FISes unintelligible to the host or the peripheral device intended to process them. See PO Resp. 25; Reply 9. As summarized above, Patent Owner argues that this non-functionality demonstrates a flaw in Petitioner’s proposed combination. See PO Resp. 25. Yet, we view Patent Owner’s argument regarding non-functionality as detracting from the persuasiveness of Patent Owner’s contentions regarding how a skilled artisan would have understood Sullivan’s disclosure. In particular, it strains credulity that a skilled artisan would apply Sullivan in the manner Patent Owner urges when doing so would result in a non-functioning device. We agree with Petitioner that an artisan having ordinary skill and creativity would not have applied Sullivan’s teachings in such a simplistic and plainly counterproductive fashion. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) (“A person of ordinary skill is also a person of ordinary creativity, not an automaton.”); see also Reply 9–10 (citing In re Sovish, 769 F.2d 738, 743 (Fed. Cir. 1985); Scanner Techs. Corp. v. ICOS Vision Sys. Corp., 528 F.3d 1365, 1382 (Fed. Cir. 2008)). We further agree with Petitioner that a skilled artisan would have recognized that “Sullivan teaches a flexible cryptographic device that can be implemented using a variety of data transfer protocols . . . and is designed to ‘accommodate[] whatever standard is used.’” Reply 8–9 (quoting Ex. 1002 ¶ 50).” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“However, because Sullivan describes the rejection feature as alternative or additional, we find Dr. Long’s description of how a skilled artisan would have understood these teachings to be more credible. Dr. Long testifies that Sullivan’s paragraph 55 “reminds us there’s a number of ways to do this, look-up table, formula logic, whatever. It discloses the idea of you can pass some subset of commands to the encryption unit, and you can block other set of commands. It’s silent on the intersection of those two sets.” Ex. 2060, 74:3–8. Elaborating further, Dr. Long testifies: 3 Sullivan does not state expressly what becomes of the information that is rejected. Dr. Conte testifies that it is “rejected and filtered out.” Ex. 2061 ¶ 122. Dr. Long appears to be in agreement that information blocked by the rejection feature is not processed further. See Ex. 2060, 74:17–18 (testifying that “[t]here is a set of things that are blocked, which means they don’t go anywhere”). There’s a set of things that are passed to the encryption unit. There is a set of things that are blocked, which means they don’t go anywhere. And a person of ordinary skill in the art would think this through, but there could be things that are in neither set. Id. at 74:16–21. In other words, Sullivan’s description of the filter module leaves open the possibility that some of the information will be neither passed for encryption nor rejected and discarded. Thus, Sullivan’s description of the filter module does not criticize, discredit, or otherwise discourage a skilled artisan from causing certain FISes to bypass the cryptographic engine. Moreover, we agree with Petitioner that passing a PIO Setup FIS without encrypting it would have been obvious to a skilled artisan implementing Sullivan’s teachings in view of SATA Standard. As discussed above in the context of the “associated with” limitation, we agree with Petitioner that Sullivan teaches that control information should not be encrypted or decrypted. For example, Sullivan’s claim 9 describes “transmitting the encrypted data with the associated control information to the second device, where the associated control information is transmitted in an unencrypted form.” Ex. 1002, claim 9. Further, Dr. Long testifies that a skilled artisan would have known that the PIO setup FIS contains control information. Ex. 1006 ¶ 82, 179. Accordingly, we find persuasive Petitioner’s argument that it would have been obvious to pass a PIO Setup FIS from device interface to host interface without encrypting it.” slip op. at 24
Patent outcomesUS 7,900,057 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,900,057 - PTAB · Dec 7, 2015 · IPR2015-01438 · APJ Michael R Zecher · IPR · Order
The Board granted the parties’ joint motion and terminated the proceeding before deciding whether to institute review of claims 1–3 and 8–12.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“they have settled their disputes regarding the ’104 patent. Paper 7, 2. The parties further represent that there are numerous related matters in the United States District Court for the Northern District of California that have been dismissed with prejudice or stayed pending final determination of two related inter partes reviews involving U.S. Patent No. 7,550,870 B2 (“the ’870 patent”). Id. at 3. Based on the joint requests filed by the parties in the two proceedings involving the ’870 patent, those cases have been terminated. Avocent Huntsville Corp. v. Cyber Switching Patents, LLC, Cases IPR2015-00690 & IPR2015-00725 (PTAB Dec. 7, 2015) (Paper 33 in each proceeding). Lastly, the parties do not represent that the ’104 patent is involved in any other proceedings before the Office. See generally id. at 2–4. Under these circumstances, we determine that it is appropriate to terminate this proceeding without rendering any further decisions. See 37 C.F.R. § 42.72.” slip op. at 2
NonePatents in suitUS 7,672,104 - Dr. Michael Farmwald / RPX Corporation v. Parkervision, Inc.Adverse judgmentPTAB · Oct 29, 2015 · IPR2014-00948 · APJ Jon B Tornquist · IPR · Adverse judgment
The Board granted Patent Owner’s adverse-judgment motion, entered judgment against Patent Owner, and cancelled claims 2, 22, 23, and 25.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“A party may request entry of adverse judgment against itself at any time during a proceeding. 37 C.F.R. § 42.73(b). “Judgment” is defined as “a final written decision by the Board, or a termination of a proceeding.” 37 C.F.R. § 42.2. Although Patent Owner uses the term “termination” in its Motion, it did not submit the Motion under 37 C.F.R. § 42.72 and it did not explain why termination is appropriate in this circumstance. See 37 C.F.R. § 42.72 (noting that the Board may terminate a trial without rendering a final written decision “where appropriate,” such as when the trial is consolidated with another proceeding or pursuant to a settlement under 35 U.S.C. § 317(a)). Under the circumstances presented here, we see no reason not to grant Patent Owner’s Motion. Additionally, for the reasons discussed above, this Decision is a Final Written Decision, not a termination of the proceeding.1” slip op. at 3
NonePatents in suitUS 6,370,371 - Dr. Michael Farmwald / RPX Corporation v. Parkervision, Inc.Adverse judgmentPTAB · Oct 29, 2015 · IPR2014-00947 · APJ Jon B Tornquist · IPR · Adverse judgment
The Board granted Patent Owner’s motion for adverse judgment and cancelled claims 1, 23, 25, 161, 193, and 202.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“A party may request entry of adverse judgment against itself at any time during a proceeding. 37 C.F.R. § 42.73(b). “Judgment” is defined as “a final written decision by the Board, or a termination of a proceeding.” 37 C.F.R. § 42.2. Although Patent Owner uses the term “termination” in its Motion, it did not submit the Motion under 37 C.F.R. § 42.72 and did not explain why termination is appropriate in this circumstance. See 37 C.F.R. § 42.72 (noting that the Board may terminate a trial without rendering a final written decision “where appropriate,” such as when the trial is consolidated with another proceeding or pursuant to a settlement under 35 U.S.C. § 317(a)). Under the circumstances presented here, we see no reason not to grant Patent Owner’s Motion. Additionally, for the reasons discussed above, this Decision is a Final Written Decision, not a termination of the proceeding.1” slip op. at 3
NonePatents in suitUS 6,061,551 - Dr. Michael Farmwald / RPX Corporation v. Parkervision, Inc.Adverse judgmentPTAB · Oct 29, 2015 · IPR2014-00946 · APJ Bart A Gerstenblith · IPR · Adverse judgment
The Board granted Patent Owner’s motion for adverse judgment and cancelled claims 1, 82, 90, and 91.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“A party may request entry of adverse judgment against itself at any time during a proceeding. 37 C.F.R. § 42.73(b). “Judgment” is defined as “a final written decision by the Board, or a termination of a proceeding.” 37 C.F.R. § 42.2. Although Patent Owner uses the term “termination” in its Motion, it did not submit the Motion under 37 C.F.R. § 42.72 and did not explain why termination is appropriate in this circumstance. See 37 C.F.R. § 42.72 (noting that the Board may terminate a trial without rendering a final written decision “where appropriate,” such as when the trial is consolidated with another proceeding or pursuant to a settlement under 35 U.S.C. § 317(a)). Under the circumstances presented here, we see no reason not to grant Patent Owner’s Motion. Additionally, for the reasons discussed above, this Decision is a Final Written Decision, not a termination of the proceeding.1” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“(collectively, “Petitioner”) filed a Petition for inter partes review of U.S. Patent No. 6,266,518 B1 (“the ’518 patent”). Paper 1. ParkerVision, Inc. (“Patent Owner”) filed a Preliminary Response on September 24, 2014. Paper 7. On December 18, 2014, we instituted this inter partes review of claims 1, 82, 90, and 91 of the ’518 patent. Paper 8.” slip op. at 2
NonePatents in suitUS 6,266,518 - Sophos Ltd. / Sophos, Inc. v. Fortinet, Inc.Rehearing deniedPTAB · Oct 26, 2015 · IPR2015-00910 · APJ Michael R Zecher · IPR · Rehearing
The Board denied Sophos’ rehearing request, leaving institution denied for grounds based in whole or in part on Taylor because the petition did not sufficiently show Taylor taught the claimed processing, reconstructing, and scanning steps.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). The party must identify specifically all matters we misapprehended or overlooked, and the place where each matter was addressed previously in a motion, an opposition, or a reply. Id. When rehearing a decision on a petition, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may be indicated if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). With this in mind, we address the arguments presented by Sophos in turn.” slip op. at 3
- BurdenNot shown unpatentable
“Taylor’s proxy 211 applies filtering rules, we still would not be persuaded that Taylor properly accounts for the “processing” step performed by a proxy module, as required by independent claims 1, 10, and 13. In its Request for Rehearing, Sophos directs us to disparate disclosures in Taylor, and then generally asserts that Taylor accounts for all the features recited in the “processing” step. For instance, Sophos cites to and relies upon the following disclosures in Taylor: (1) one embodiment of the firewall, as illustrated in Figure 3 of Taylor, see, e.g., Ex. 1006, 6:22–25, 6:58–60; and (2) the transparency procedure, as illustrated in Figure 6 of Taylor, see, e.g., id. at 11:46–48. Neither Sophos, nor its expert witness, Dr. Pfleeger, provides a credible or sufficient explanation as to how one of ordinary skill in the art might combine these cited disclosures in Taylor to teach that proxy 211—not DPF 207—performs the claimed “processing” step. We, therefore, maintain our position that Sophos does not present sufficient evidence in its Petition to support a finding that Taylor describes the “processing” step performed by a proxy module, as required by independent claims 1, 10, and 13. See Dec. 11–13.” slip op. at 5
- Strike new argumentNew argument disregardedOther
“its argument that Taylor’s proxy 211 applies filtering rules. In its Request for Rehearing, Sophos focuses on new disclosures in Taylor that purportedly explain how Taylor’s proxy 211 uses filtering rules to allow a connection. Compare Pet. 13 (citing Ex. 1006, Abstract, 2:60–63, 6:40–44, 11:46–48), with Req. Reh’g 4 (citing Ex. 1006, 6:22–25, 6:58–60, 11:46–48). To support this new argument, Sophos also directs us to new paragraphs in the Declaration of Dr. Pfleeger. Compare Pet. 13 (citing Ex. 1009 ¶ 88), with Req. Reh’g. 5 (citing Ex. 1009 ¶¶ 60, 88, 89). A request for rehearing is not an opportunity to present new arguments or evidence that could have been presented and developed in the Petition. Put simply, we could not have overlooked or misapprehended arguments or evidence not presented and developed by Sophos in the Petition.” slip op. at 4
- Expert testimonyPetitioner expert discountedOther
“Taylor’s proxy 211 applies filtering rules, we still would not be persuaded that Taylor properly accounts for the “processing” step performed by a proxy module, as required by independent claims 1, 10, and 13. In its Request for Rehearing, Sophos directs us to disparate disclosures in Taylor, and then generally asserts that Taylor accounts for all the features recited in the “processing” step. For instance, Sophos cites to and relies upon the following disclosures in Taylor: (1) one embodiment of the firewall, as illustrated in Figure 3 of Taylor, see, e.g., Ex. 1006, 6:22–25, 6:58–60; and (2) the transparency procedure, as illustrated in Figure 6 of Taylor, see, e.g., id. at 11:46–48. Neither Sophos, nor its expert witness, Dr. Pfleeger, provides a credible or sufficient explanation as to how one of ordinary skill in the art might combine these cited disclosures in Taylor to teach that proxy 211—not DPF 207—performs the claimed “processing” step. We, therefore, maintain our position that Sophos does not present sufficient evidence in its Petition to support a finding that Taylor describes the “processing” step performed by a proxy module, as required by independent claims 1, 10, and 13. See Dec. 11–13.” slip op. at 5
NonePatents in suitUS 7,966,654 - Apple Inc. v. Contentguard Holdings, Inc.Rehearing deniedPTAB · Oct 6, 2015 · IPR2015-00445 · APJ Jennifer S Bisk · IPR · Rehearing
The Board denied Apple's rehearing request, leaving institution denied for claims 1 and 8 because the petition did not show a reasonable likelihood of prevailing on the Rosen and Hartrick obviousness ground.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” 37 C.F.R. § 42.71(c). “The burden of showing a decision should be modified lies with the party challenging the decision[,]” which party “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” 37 C.F.R. § 42.71(d). slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Not reached
“We specifically addressed, in our Decision, the difficulty we had understanding what Petitioner’s proposed modifications were, how they were to be made, and why a person of ordinary skill would have made them. Dec. 12–15. Petitioner’s Request—even while characterizing the modifications as “a single change”—does not persuade us otherwise. Although Petitioner asserts that we misunderstood the changes being proposed, we are not persuaded that the Request clarifies the issue. And while we agree that the need for extensive modification, alone, does not necessarily doom a proposed ground of obviousness (Reh’g Req. 5–6), extensive modification was just one of many problems we had in attempting to understand the ground being asserted in this Petition. We explained in the Decision that combined with the many other deficiencies of the Petition, we were not persuaded that Petitioner had shown a reasonable likelihood of prevailing on any of the challenged claims. Dec. 4–15 (discussing the Petition’s vague, nested string citations to broad swaths of references; clarity problems created by pervasive use of internal cross-references and nested citations; improper incorporation by reference of the Sherman Declaration to support conclusory statements, thin analysis, and inadequate reasoning; and lack of sufficient information to enable us to do a proper Graham analysis). Similarly, Petitioner asserts that we evaluated this Petition using an impermissibly rigid form of proof and, thus, misunderstood substantial portions of it. Reh’g Req. 6–13. It is true we struggled to understand most of this Petition. As we explained above, however, the combination of problems with the Petition, described in detail in the Decision, made deciphering Petitioner’s contentions extraordinarily difficult. We are not persuaded that denying institution on this basis was an abuse of our discretion.” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“problems we encountered with the Petition. First, Petitioner states that the Petition clearly explained only a single limitation is not covered by Rosen—“how [restrictions on usage of the electronic object] are specified or enforced.” Id. at 3. Petitioner goes on to suggest that we misapprehended that there is only a single change required to integrate Hartrick into Rosen to remedy this deficiency. Id. at 3–4 (“The Board also failed to appreciate the Petition actually described a single change to Rosen: integrating Hartrick’s usage rights specification and enforcement features to support Rosen’s ‘Usage’ field.”). However, in the very next sentence, Petitioner explains that making this one change actually requires four separate modifications to Rosen. Id. at 4 (“The Petition explained doing this would cause the skilled person to make four modifications to Rosen.”). We specifically addressed, in our Decision, the difficulty we had understanding what Petitioner’s proposed modifications were, how they were to be made, and why a person of ordinary skill would have made them. Dec. 12–15. Petitioner’s Request—even while characterizing the modifications as “a single change”—does not persuade us otherwise. Although Petitioner asserts that we misunderstood the changes being proposed, we are not persuaded that the Request clarifies the issue. And while we agree that the need for extensive modification, alone, does not necessarily doom a proposed ground of obviousness (Reh’g Req. 5–6), extensive modification was just one of many problems we had in attempting to understand the ground being asserted in this Petition. We explained in the Decision that combined with the many other deficiencies of the Petition, we were not persuaded that Petitioner had shown a reasonable likelihood of prevailing on any of the challenged claims. Dec. 4–15 (discussing the Petition’s vague, nested string citations to broad swaths of references; clarity problems created by pervasive use of internal cross-references and nested citations; improper incorporation by reference of the Sherman Declaration to support conclusory statements, thin analysis, and inadequate reasoning; and lack of sufficient information to enable us to do a proper Graham analysis).” slip op. at 3
§ 103 obviousnessPatents in suitUS 7,523,072
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.