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

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

  RulingsFinal written decision

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

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

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

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

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

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

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

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

  Patent outcomesUS 8,156,944 mixed
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 8,156,944
• Groupon, Inc. v. Blue Calypso, LLCSome claims unpatentable
  PTAB · Dec 17, 2014 · CBM2013-00046 · APJ Michael W Kim · CBM · Final written decision

  Claims 1, 4–6, 10, and 14 are unpatentable as anticipated by Paul; claims 7–9 and 11 were not shown unpatentable.

  RulingsFinal written decision

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

    “we determine the meaning of the claims for purposes of this decision. In a covered business method patent review, a claim in an unexpired patent shall be given its broadest reasonable construction in light of the specification of the patent in which it appears. 37 C.F.R. § 42.300(b). Under the broadest reasonable construction standard, claim terms are given their ordinary and customary meaning, as would be understood by one of ordinary skill in the art in the context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Any special definition for a claim term must be set forth in the specification with reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). We must be careful not to read a particular embodiment appearing in the written description into the claim if the claim language is broader than the embodiment. In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). We construe the terms below in accordance with these principles.” slip op. at 7

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

    “subscriber according to the incentive program.” Petitioner contends that the express definitions of terms set forth in the “Definitions” section of the ’055 patent are the proper constructions of those terms. Pet. 10. We agree. Accordingly, we accept those definitions as proper constructions of “incentive” and “incentive program.” Furthermore, through their assertions concerning standing, Petitioner asserts that “incentive” and “incentive program” are financial in nature. We agree. Pet. 6–7. The ’055 patent repeatedly, and almost exclusively, discloses “incentive” and “incentive program” in a financial context. For example, the ’055 patent discloses that cash incentives are provided on debit cards or as cash distributions. Ex. 1001, 2:28–29. In another example, incentives are disclosed as “payments,” “payouts,” and “distributions.” Ex. 1001, 2:51, 6:34–45, 7:31–34, 8:3–6. In a further example, incentive programs are disclosed as having financial budgets and accounts that are debited until depletion. Ex. 1001, 6:41–45, 7:18–20, 8:50–56. Accordingly, we construe “incentive” and “incentive program” as being financial in nature.” slip op. at 8

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedReference not prior artNot shown unpatentable

    “do not find sufficient evidence that the Ratsimor paper was accessible publicly and, therefore, we conclude that Petitioner has failed to show that the Ratsimor paper is a printed publication under 35 U.S.C. § 102(b). Section 102 states: “A person shall be entitled to a patent unless . . . (b) the invention was . . . described in a printed publication . . . more than one year prior to the date of the application for patent . . . .” 35 U.S.C. § 102(b) (2011). “The statutory phrase ‘printed publication’ has been interpreted to give effect to ongoing advances in the technologies of data storage, retrieval, and dissemination.” In re Hall, 781 F.2d 897, 898 (Fed. Cir. 1986). As such, a printed publication under 35 U.S.C. § 102(b) may be an electronic publication, such as the Ratsimor paper is purported to be. See In re Wyer, 655 F.2d 221, 226 (CCPA 1981) (holding that an electronic publication is considered to be a “printed publication” “upon a satisfactory showing that such document has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art, exercising reasonable diligence, can locate it and recognize and comprehend therefrom the essentials of the claimed invention without need of further research or experimentation”). The determination of whether a particular reference qualifies as a prior art printed publication “involves a case-by-case inquiry into the facts and circumstances surrounding the reference’s disclosure to members of the public.” In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). The key inquiry is whether the reference was made “sufficiently accessible to the public interested in the art” before the critical date. In re Cronyn, 890 F.2d 1158, 1160 (Fed. Cir. 1989). “A given reference is ‘publicly accessible’ upon a satisfactory showing that such document has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it . . . .” Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 1378 (Fed. Cir. 2006). Indexing is not “a necessary condition for a reference to be publicly accessible,” but is among many factors that may bear on public accessibility. In re Lister, 583 F.3d 1307, 1312 (Fed. Cir. 2009).” slip op. at 12

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

    “1. Principles of Law To establish anticipation, each and every element in a claim, arranged as recited in the claim, must be found in a single prior art reference. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008); Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001). To anticipate, a prior art reference must disclose more than “multiple, distinct teachings that the artisan might somehow combine to achieve the claimed invention.” Net MoneyIN, 545 F.3d at 1371. Although the elements must be arranged or combined in the same way as in the claim, “the reference need not satisfy an ipsissimis verbis test,” i.e., identity of terminology is not required. In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009); In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). Moreover, the prior art reference is read from the perspective of one with ordinary skill in the art. In re Graves, 69 F.3d 1147, 1152 (Fed. Cir. 1995) (“A reference anticipates a claim if it discloses the claimed invention such that a skilled artisan could take its teachings in combination with his own knowledge of the particular art and be in possession of the invention.”); In re Preda, 401 F.2d 825, 826 (CCPA 1968) (“[I]t 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.”).” slip op. at 19

  Patent outcomesUS 8,438,055 mixed
  Claim construction§ 102 anticipation
  Patents in suitUS 8,438,055
• Groupon, Inc. v. Blue Calypso, LLCSome claims unpatentable
  PTAB · Dec 17, 2014 · CBM2013-00035 · APJ Michael W Kim · CBM · Final written decision

  Claims 1–25 and 29 are unpatentable: claims 2–15, 20–23, and 29 over Paul; claims 1–19, 23–25, and 29 for lack of written description. Claims 26–27 were not shown unpatentable.

  RulingsFinal written decision

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

    “Accordingly, we look to the ordinary meaning of the term “subsidy”— financial assistance given by one to another.5 The ’516 patent’s use of “subsidy” is consistent with its ordinary meaning. Specifically, the ’516 patent describes an advertiser setting up a subsidy program to subsidize communication fees, offer product discounts, generate and accumulate “reward points” for subscribers, or mitigate or defer other expenses of the subscriber. Ex. 1001, 3:21–27 (referring to Fig. 2). These examples are financial in nature. Product discounts reduce the monetary cost of a financial transaction, reward points are a form of currency, and mitigating or deferring expenses reduces the monetary cost of a financial transaction or postpones the monetary cost of a financial transaction, respectively. Also, the ’516 patent describes, as part of a subscriber setup process, an intermediary presenting, to a subscriber for selection, “subsidy programs 5 AMERICAN HERITAGE DICTIONARY 896 (3d ed. 1992) (defining “subsidy” as “1. Monetary assistance granted by a government to a person or group in support of an enterprise regarded as being in the public interest. 2. Financial assistance given by one person or government to another.”). available, including the criteria for continued subsidy and levels of subsidy.” Ex. 1001, 4:41–43 (referring to Fig. 3). For these reasons, in the Decision to Institute, the Board construed “subsidy” as “financial assistance given by one to another.” Dec. 7–9. Neither party challenges this construction. Having considered whether the construction set forth in the Decision to Institute should be changed in light of evidence introduced during trial, we are not persuaded any modification is necessary. Therefore, we maintain the construction of “subsidy” as “financial assistance given by one to another.”” slip op. at 7

  • BurdenNot shown unpatentable

    “The determination of whether a particular reference qualifies as a prior art printed publication “involves a case-by-case inquiry into the facts and circumstances surrounding the reference’s disclosure to members of the public.” In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). The key inquiry is whether the reference was made “sufficiently accessible to the public interested in the art” before the critical date. In re Cronyn, 890 F.2d 1158, 1160 (Fed. Cir. 1989). “A given reference is ‘publicly accessible’ upon a satisfactory showing that such document has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it . . . .” Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 1378 (Fed. Cir. 2006). Indexing is not “a necessary condition for a reference to be publicly accessible,” but is among many factors that may bear on public accessibility. In re Lister, 583 F.3d 1307, 1312 (Fed. Cir. 2009). 1. Whether the Ratsimor Paper Was Publicly Accessible in November 2003 Although Petitioner does provide some evidence to support its position, after considering all of the evidence regarding the facts and the circumstances surrounding the public accessibility of the Ratsimor paper, in view of the relevant case law, we determine that Petitioner has not met its burden of showing that the Ratsimor paper was publicly accessible in November 2003.” slip op. at 18

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedReference not prior artNot shown unpatentable

    “The determination of whether a particular reference qualifies as a prior art printed publication “involves a case-by-case inquiry into the facts and circumstances surrounding the reference’s disclosure to members of the public.” In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). The key inquiry is whether the reference was made “sufficiently accessible to the public interested in the art” before the critical date. In re Cronyn, 890 F.2d 1158, 1160 (Fed. Cir. 1989). “A given reference is ‘publicly accessible’ upon a satisfactory showing that such document has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it . . . .” Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 1378 (Fed. Cir. 2006). Indexing is not “a necessary condition for a reference to be publicly accessible,” but is among many factors that may bear on public accessibility. In re Lister, 583 F.3d 1307, 1312 (Fed. Cir. 2009). 1. Whether the Ratsimor Paper Was Publicly Accessible in November 2003 Although Petitioner does provide some evidence to support its position, after considering all of the evidence regarding the facts and the circumstances surrounding the public accessibility of the Ratsimor paper, in view of the relevant case law, we determine that Petitioner has not met its burden of showing that the Ratsimor paper was publicly accessible in November 2003.” slip op. at 18

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

    “1. Principles of Law To establish anticipation, each and every element in a claim, arranged as recited in the claim, must be found in a single prior art reference. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008); Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001). To anticipate, a prior art reference must disclose more than “multiple, distinct teachings that the artisan might somehow combine to achieve the claimed invention.” Net MoneyIN, 545 F.3d at 1371. Although the elements must be arranged or combined in the same way as in the claim, “the reference need not satisfy an ipsissimis verbis test,” i.e., identity of terminology is not required. In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009); In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). Moreover, the prior art reference is read from the perspective of one with ordinary skill in the art. In re Graves, 69 F.3d 1147, 1152 (Fed. Cir. 1995) (“A reference anticipates a claim if it discloses the claimed invention such that a skilled artisan could take its teachings in combination with his own knowledge of the particular art and be in possession of the invention.”); In re Preda, 401 F.2d 825, 826 (CCPA 1968) (“[I]t 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.”).” slip op. at 24

  Patent outcomesUS 7,664,516 mixed
  Claim construction§ 102 anticipation§ 112 disclosurecites Phillips
  Patents in suitUS 7,664,516
• Groupon, Inc. v. Blue Calypso, LLCSome claims unpatentable
  PTAB · Dec 17, 2014 · CBM2013-00033 · APJ Barbara A Benoit · CBM · Final written decision

  Claims 7-16 and 23-27 are unpatentable as anticipated by Paul; claims 1-6 and 17-22 were not shown unpatentable because Ratsimor was not a publicly accessible printed publication.

  RulingsFinal written decision

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

    “endorsement.” In proffering constructions, neither party provides sufficient evidence of the ordinary meaning of “bi-lateral” or “endorsement.” We determine the ordinary meaning of the terms “bi-,”7 “lateral,”8 and “endorsement”9 collectively mean “both sides giving approval.” The use of “bi-lateral endorsement” in independent claims 7 and 23 indicate that an endorsement occurs between two parties, a subscriber and an advertiser, which is consistent with its ordinary meaning of “both sides giving 7 AMERICAN HERITAGE DICTIONARY 181 (3d ed. 1992) (defining “bi-” as “1. a. Two . . . b. Both . . . c. Both sides, parts, or directions”). 8 AMERICAN HERITAGE DICTIONARY 1017 (3d ed. 1992) (defining “lateral” as “1. Of, relating to, or situated at or on the side”). 9 AMERICAN HERITAGE DICTIONARY 608 (3d ed. 1992) (defining “endorse” as “4. To give approval of or support to, especially by public statement”); id. (defining “endorsement” as “1. The act of endorsing”). 11 approval.” The ’679 patent provides an example of a bi-lateral endorsement in Figure 7a, which describes a bi-directional endorsement process between the subscriber and the advertiser, via an intermediary, during the enrollment process. Ex. 1001, col. 7, ll. 56-58. As part of an enrollment process, the advertiser decides whether to endorse a particular subscriber. Id. at col. 8, ll. 47-48. The bi-lateral endorsement is completed after the subscriber chooses at least one plan and one advertiser for endorsement. Id. at col. 8, l. 66 – col. 9, l. 3. The ’679 patent also describes examples of endorsement by an advertiser of a subscriber and endorsement by a subscriber of one or more advertisers. See id. at col. 3, ll. 39-65, col. 4, ll. 59-65. The use of bilateral endorsement in the ’679 patent is consistent with its ordinary meaning of “both sides giving approval.”” slip op. at 11

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

    “We agree. In general, a preamble is construed as a limitation “if it recites essential structure or steps, or if it is ‘necessary to give life, meaning, and vitality’ to the claim.” Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (quoting Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999)). When the 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.” Eaton Corp. v. Rockwell Int'l Corp., 323 F.3d 1332, 1339 (Fed. Cir. 2003). Notably, the preamble of independent claim 7 requires “a source communication device possessed by a subscriber,” “a destination communication device possessed by a recipient,” and “an advertisement.” The body of claim 7 recites “the source communication device,” “the subscriber,” “the destination communication device,” and “the 18 advertisement,” all of which rely on and derive antecedent basis from the preamble of claim 7. Similarly, the preamble of independent claim 23 recites “a first communication device,” “a second communication device,” and “a set of advertisers.” The body of claim 23 recites “the first communication device,” “the second communication device,” and “the set of advertisers.” Accordingly, we conclude that the preambles of independent claims 7 and 23 are entitled to patentable weight.” slip op. at 18

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedReference not prior artNot shown unpatentable

    “As an initial matter, we note that there are gaps in Petitioner’s proffered evidence—foremost is Dr. Joshi’s lack of indication that the Ratsimor paper was downloaded or otherwise disseminated, or how persons interested and ordinarily skilled in the subject matter or art, exercising reasonable diligence, could locate the Ratsimor paper on the Departmental website or otherwise locate an issued Technical Report in November 2003. 25” slip op. at 25

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

    “Based on the above disclosures of Paul, we find that the direct e-mail campaign and a “refer-a-friend” campaign are not different methods, but are different tool options provided by the campaign manager computer program in the e-mail communications system disclosed by Paul. Accordingly, as different tool options of the campaign manager in the e-mail communications system, one of ordinary skill in the art would understand that the direct e-mail campaign tool option was to be used in conjunction with the “refer-a-friend” campaign tool option to send “refer-a-friend” e-mail message incentives to a subset of the members based on member demographic characteristics. To determine otherwise would require a finding that one of ordinary skill in the art, when reading Paul, would come to the conclusion that the only option would be to send a “refer-a-friend” e-mail to all members. We do not find that one of ordinary skill in the art would have understood Paul to be so restrictive. Rather, Paul’s disclosure of the campaign manager computer program having multiple tool options to develop marketing campaigns is analogous to a reference disclosing two functions of a word processing program—creating a document and saving a document. One skilled in the art would understand the word processing program reference to disclose how to use those functions together to create and save a document.14 Cf. Transcript 67:9 – 68:11.” slip op. at 37

  Patent outcomesUS 8,155,679 mixed
  Claim construction§ 102 anticipationcites Phillips
  Patents in suitUS 8,155,679
• Cyanotech Corporation v. The Board Of Trustees Of The University Of IllinoisSome claims unpatentable
  PTAB · Dec 12, 2014 · IPR2013-00404 · APJ Sheridan K Snedden · IPR · Final written decision

  Claims 1–14 and 26 are unpatentable over Grangaud and/or Grangaud with Dowling; claims 15, 21, and 22 were not shown unpatentable.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for petitioner

    “treating damage caused by injury or disease (Resp. 14–15), however, the specification does not contain any indication that the patentee intended to act as his own lexicographer clearly defining “disease” and “damage” in the same manner. For example, the specification does not clearly convey the patentee’s intent to appoint a special meaning to the phrase “retinal damage or retinal disease.” We must determine, therefore, the ordinary meaning of “disease” and “damage” as used in these claims to one of skill in the art in light of the specification and prosecution history. In re Paulsen, 30 F.3d at 1480. In this regard, the term “damage,” as used in the specification, refers to damage resulting from injury or disease. Ex. 1001, 1:14–19. The specification does not equate damage and disease, but provides that damage may be caused by disease. Id. The meaning of the term disease, however, refers to conditions that may cause damage (such as degenerative eye disease), and are treatable themselves. Id. at 15:36–40. That is, the underlying cause of the damage is treatable, not just the damage alone. The University does not direct our attention to anything in the specification or prosecution that would clearly alter the ordinary meaning of “disease” and “damage.” Resp. 14–16. In view of the above, we do not construe “retinal damage” and “retinal disease” as a single concept. The evidence of record does not support a finding that the patentee acted as his own lexicographer by clearly defining the claim terms “damage” and “disease” in the same manner. In our Decision to Institute, we adopted the dictionary definition of “disease” and construed the term as “[a] morbid entity ordinarily characterized by two or more of the following criteria: recognized etiologic agent(s), identifiable group of signs and symptoms, or consistent anatomic alterations.” Dec. 8–9; see, Pet. ’401 (citing Ex. 1040). We adopted the dictionary definition of “damage” and construed the term as “[h]arm, diminution, or destruction of an organ, body part, system, or function.” Id. We maintain these constructions for “disease” and “damage” as they are consistent with the use of these terms in the Specification. “Retinal damage” refers to damage to the retina and “retinal disease” refers to disease of the retina. The phrase “retinal damage or retinal disease” refers to either retinal damage or retinal disease.” slip op. at 7

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

    “To establish inherent disclosure, the evidence must show that a feature necessarily is described in the reference, and that it would be recognized by persons of ordinary skill. In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999); cf. EMI Grp. N. Am., Inc. v. Cypress Semiconductor Corp., 268 F.3d 1342, 1351 (Fed. Cir. 2001) (“Theoretical mechanisms or rules of natural law that are recited in a claim, that themselves are not patentable, however, do not need to be recognized by one of ordinary skill in the art for a finding of inherency.”). The mere fact that a certain thing may result from a given set of circumstances is not sufficient to establish inherency. In re Rijckaert, 9 F.3d 1531, 1534 (Fed. Cir. 1993). Inherency may not be established by probabilities or possibilities. In re Oelrich, 666 F.2d 578, 581 (CCPA 1981).” slip op. at 10

  • Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner

    “As to secondary considerations, we note that factual inquiries for an obviousness determination include secondary considerations based on evaluation and crediting of objective evidence of nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17 (1966). Notwithstanding what the teachings of the prior art would have suggested to one with ordinary skill in the art at the time of the University’s invention, the totality of the evidence submitted, including objective evidence of nonobviousness, may lead to a conclusion that the claimed invention would not have been obvious to one with ordinary skill in the art. In re Piasecki, 745 F.2d 1468, 1471-1472 (Fed. Cir. 1984). However, such a conclusion requires the finding of a nexus to establish that the evidence relied upon traces its basis to a novel element in the claim and not to something in the prior art. Institut Pasteur & Universite Pierre Et Marie Curie v. Focarino, 738 F.3d 1337, 1347 (Fed. Cir. 2013). All types of objective evidence of nonobviousness must be shown to have nexus. In re GPAC Inc., 57 F.3d at 1580 (nexus generally); In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996) (commercial success); In re Antor Media Corp., 689 F.3d 1282, 1293 (Fed. Cir. 2012) (licensing); Wm. Wrigley Jr. Co. v. Cadbury Adams USA LLC, 683 F.3d 1356, 1364 (Fed. Cir. 2012) (copying); Rambus Inc. v. Rea, 731 F.3d 1248, 1256 (Fed. Cir. 2013) (long-felt need); and In re Kao, 639 F.3d 1057, 1069 (Fed. Cir. 2011) (unexpected results). As discussed above, we conclude that claims 1, 3, and 8–12 are anticipated by Grangaud, as evidenced by Dowling. Because anticipation is the epitome of obviousness, a disclosure that anticipates under 35 U.S.C. § 102 also renders the claim unpatentable under 35 U.S.C. § 103. See In re Fracalossi, 681 F.2d 792, 794 (CCPA 1982) (“[E]vidence establishing lack of all novelty in the claimed invention necessarily evidences obviousness.”); In re Meyer, 599 F.2d 1026, 1031 (CCPA 1979); In re Pearson, 494 F.2d 1399, 1402 (CCPA 1974). Here, Cyanotech presents substantially the same evidence for both their anticipation and obviousness challenges of claims 1, 3, 8–14, and 26. As such, and for the same reasons set forth in our anticipation analysis above, we hold that claims 1, 3, 8–14, and 26 are rendered obvious by Grangaud, alone or in combination with Dowling. Because we have determined that claims 1, 3, and 8–12 lack a novel feature with which to establish a nexus with secondary considerations, Cyanotech, as a matter of law, cannot establish a nexus. In re Kao, 639 F.3d at 1068 (Objective evidence that results from something that is not “both claimed and novel in the claim” lacks a nexus to the merits of the invention.). As to claims 2 and 4–7, the University has not directed any arguments to these claims specifically and has not made any attempts to establish a nexus between the presented objective evidence of nonobviousness and these claims. Thus, we maintain our unopposed determination that the specific doses and routes of administration recited in these claims are predictable variations within the technical grasp of a person of ordinary skill in the art, and are not persuaded by the objective evidence that claims 2 and 4–7 are nonobvious.” slip op. at 23

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableNot shown unpatentableMixed

    “of all novelty in the claimed invention necessarily evidences obviousness.”); In re Meyer, 599 F.2d 1026, 1031 (CCPA 1979); In re Pearson, 494 F.2d 1399, 1402 (CCPA 1974). Here, Cyanotech presents substantially the same evidence for both their anticipation and obviousness challenges of claims 1, 3, 8–14, and 26. As such, and for the same reasons set forth in our anticipation analysis above, we hold that claims 1, 3, 8–14, and 26 are rendered obvious by Grangaud, alone or in combination with Dowling. Because we have determined that claims 1, 3, and 8–12 lack a novel feature with which to establish a nexus with secondary considerations, Cyanotech, as a matter of law, cannot establish a nexus. In re Kao, 639 F.3d at 1068 (Objective evidence that results from something that is not “both claimed and novel in the claim” lacks a nexus to the merits of the invention.). As to claims 2 and 4–7, the University has not directed any arguments to these claims specifically and has not made any attempts to establish a nexus between the presented objective evidence of nonobviousness and these claims. Thus, we maintain our unopposed determination that the specific doses and routes of administration recited in these claims are predictable variations within the technical grasp of a person of ordinary skill in the art, and are not persuaded by the objective evidence that claims 2 and 4–7 are nonobvious. In view of the above, we conclude that Cyanotech has demonstrated the unpatentability of claims 1–14 and 26 by a preponderance of the evidence. (2) Claim 15 Claim 15 depends from claim 14. As discussed above, we conclude that the preponderance of evidence of record demonstrates that neuronal damage to a retina is inherent to the condition of vitamin A deficiency-induced xerophthalmia. The question before us with regard to claim 15, however, is whether” slip op. at 24

  Patent outcomesUS 5,527,533 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 5,527,533
• Cyanotech Corporation v. The Board Of Trustees Of The University Of IllinoisSome claims unpatentable
  PTAB · Dec 12, 2014 · IPR2013-00401 · APJ Sheridan K Snedden · IPR · Final written decision

  Claims 1–14 and 26 are unpatentable as anticipated by Grangaud and obvious over Grangaud alone or with Dowling; claims 15, 21, and 22 were not shown unpatentable.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for petitioner

    “treating damage caused by injury or disease (Resp. 14–15), however, the specification does not contain any indication that the patentee intended to act as his own lexicographer clearly defining “disease” and “damage” in the same manner. For example, the specification does not clearly convey the patentee’s intent to appoint a special meaning to the phrase “retinal damage or retinal disease.” We must determine, therefore, the ordinary meaning of “disease” and “damage” as used in these claims to one of skill in the art in light of the specification and prosecution history. In re Paulsen, 30 F.3d at 1480. In this regard, the term “damage,” as used in the specification, refers to damage resulting from injury or disease. Ex. 1001, 1:14–19. The specification does not equate damage and disease, but provides that damage may be caused by disease. Id. The meaning of the term disease, however, refers to conditions that may cause damage (such as degenerative eye disease), and are treatable themselves. Id. at 15:36–40. That is, the underlying cause of the damage is treatable, not just the damage alone. The University does not direct our attention to anything in the specification or prosecution that would clearly alter the ordinary meaning of “disease” and “damage.” Resp. 14–16. In view of the above, we do not construe “retinal damage” and “retinal disease” as a single concept. The evidence of record does not support a finding that the patentee acted as his own lexicographer by clearly defining the claim terms “damage” and “disease” in the same manner. In our Decision to Institute, we adopted the dictionary definition of “disease” and construed the term as “[a] morbid entity ordinarily characterized by two or more of the following criteria: recognized etiologic agent(s), identifiable group of signs and symptoms, or consistent anatomic alterations.” Dec. 8–9; see, Pet. ’401 (citing Ex. 1040). We adopted the dictionary definition of “damage” and construed the term as “[h]arm, diminution, or destruction of an organ, body part, system, or function.” Id. We maintain these constructions for “disease” and “damage” as they are consistent with the use of these terms in the Specification. “Retinal damage” refers to damage to the retina and “retinal disease” refers to disease of the retina. The phrase “retinal damage or retinal disease” refers to either retinal damage or retinal disease.” slip op. at 7

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

    “In view of the above, we conclude that the preponderance of the evidence presented by Cyanotech demonstrates that retinal damage is inherent to the condition of vitamin A deficiency-induced xerophthalmia. Grangaud’s animals were kept on a vitamin A-deficient diet for about 2 months (Ex. 1002, 43), and Dowling supports a conclusion that animals kept on such a diet would have suffered retinal damage. Ex. 1026, 88–89. Dowling also supports a finding that restoration of vitamin A to the diet could reverse the damage caused by a vitamin A deficiency. Id. at 94–96. Grangaud did not administer vitamin A itself, but rather administered astaxanthin. Astaxanthin, however, is capable of being converted to vitamin A in rats, which then would be available to correct the retinal damage caused by a vitamin A-deficient diet, as well as treat ocular lesions resulting from xerophthalmia, thereby improving the vision of the rats. Pet., 14-16; Ex. 1002, 44; Ex. 1033 ¶¶ 42–43 and 51; Ex. 1045, 60 and 160. As such, the inherent action of astaxanthin would have resulted in improved vision in Grangaud’s animal model.” slip op. at 13

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureInherency foundInherency not foundMixed

    “In view of the above, we conclude that the preponderance of the evidence presented by Cyanotech demonstrates that retinal damage is inherent to the condition of vitamin A deficiency-induced xerophthalmia. Grangaud’s animals were kept on a vitamin A-deficient diet for about 2 months (Ex. 1002, 43), and Dowling supports a conclusion that animals kept on such a diet would have suffered retinal damage. Ex. 1026, 88–89. Dowling also supports a finding that restoration of vitamin A to the diet could reverse the damage caused by a vitamin A deficiency. Id. at 94–96. Grangaud did not administer vitamin A itself, but rather administered astaxanthin. Astaxanthin, however, is capable of being converted to vitamin A in rats, which then would be available to correct the retinal damage caused by a vitamin A-deficient diet, as well as treat ocular lesions resulting from xerophthalmia, thereby improving the vision of the rats. Pet., 14-16; Ex. 1002, 44; Ex. 1033 ¶¶ 42–43 and 51; Ex. 1045, 60 and 160. As such, the inherent action of astaxanthin would have resulted in improved vision in Grangaud’s animal model.” slip op. at 13

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

    “of all novelty in the claimed invention necessarily evidences obviousness.”); In re Meyer, 599 F.2d 1026, 1031 (CCPA 1979); In re Pearson, 494 F.2d 1399, 1402 (CCPA 1974). Here, Cyanotech presents substantially the same evidence for both their anticipation and obviousness challenges of claims 1, 3, 8–14, and 26. As such, and for the same reasons set forth in our anticipation analysis above, we hold that claims 1, 3, 8–14, and 26 are rendered obvious by Grangaud, alone or in combination with Dowling. Because we have determined that claims 1, 3, and 8–12 lack a novel feature with which to establish a nexus with secondary considerations, Cyanotech, as a matter of law, cannot establish a nexus. In re Kao, 639 F.3d at 1068 (Objective evidence that results from something that is not “both claimed and novel in the claim” lacks a nexus to the merits of the invention.). As to claims 2 and 4–7, the University has not directed any arguments to these claims specifically and has not made any attempts to establish a nexus between the presented objective evidence of nonobviousness and these claims. Thus, we maintain our unopposed determination that the specific doses and routes of administration recited in these claims are predictable variations within the technical grasp of a person of ordinary skill in the art, and are not persuaded by the objective evidence that claims 2 and 4–7 are nonobvious. In view of the above, we conclude that Cyanotech has demonstrated the unpatentability of claims 1–14 and 26 by a preponderance of the evidence. (2) Claim 15 Claim 15 depends from claim 14. As discussed above, we conclude that the preponderance of evidence of record demonstrates that neuronal damage to a retina is inherent to the condition of vitamin A deficiency-induced xerophthalmia. The question before us with regard to claim 15, however, is whether” slip op. at 24

  Patent outcomesUS 5,527,533 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 5,527,533
• JDS Uniphase Corporation v. Fiber, LLCSome claims unpatentable
  PTAB · Dec 5, 2014 · IPR2013-00318 · APJ Jacqueline Wright Bonilla · IPR · Final written decision

  Claims 1, 53–66, 69, and 71–74 are unpatentable; claims 67, 68, and 70 are not shown unpatentable. The contingent motion to amend is denied.

  RulingsFinal written decision

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

    “As discussed on our Decision to Institute (Dec. 7–8), we conclude that Patent Owner’s proposed definition of “optical beam” imports improperly a limitation into the claims. The claims themselves do not recite “communications.” Likewise, the ’917 patent Specification does not indicate that “optical beam” is limited to a communications beam, such that it would exclude a YAG laser beam, for example. As noted by Patent Owner, the Specification states that the “invention relates generally to optical switching and more particularly to non-electrical switching of laser communication signals.” Ex. 1001, 1:12–14. In other words, the Specification indicates that communication signals may be a preferred embodiment of the recited “optical beam,” but the claim phrase is not limited to that particular embodiment. See also Ex. 1011, 95:23–96:4 (testimony of Patent Owner’s witness, Dr. David A. Smith, stating that the Specification describes a system that “could switch [a] non-communication beam”); Reply 4. Patent Owner’s proposed dictionary meanings of the terms “transmit,” as relevant to “transmitting” in the claims, as well as “receptor,” do not persuade us otherwise. For example, a dictionary definition of the term “transmit” indicates that it means, more generally, to “send or forward, as to a recipient or destination” or “convey,” even if “[t]o communicate” is another alternative definition. Ex. 2018, 6. Patent Owner does not persuade us that switches for YAG lasers, for example, do not “send or forward” a laser beam. In fact, Patent Owner’s own proposed definition of “transmit” is not limited to sending or forwarding information used in the field of communications, where communications, according to Patent Owner, excludes YAG laser beams. Likewise, as Patent Owner acknowledges (PO Resp. 8–9), the term “optical receptor” is not limited to an element that receives electronic signals, and the Specification, which does not mention the term “receptor” except in the claims, likewise does not limit this term as such. See also Dec. 7 (discussing “optical receptor”); see also infra. Moreover, use of the phrases “optical signal” and “light signal” in a similar context as “optical beam” in the Specification does not mean that “optical beam” is limited to “a light beam consisting of communications information.” PO Resp. 12–13. Similarly, even assuming the Examiner relied exclusively on prior art relating to communications during prosecution of the ’917 patent, that fact would not dictate how we apply our claim construction standard, i.e., the broadest reasonable interpretation in light of the Specification.” slip op. at 9

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

    “2. Other Claim Terms Construed in the Decision to Institute In our Decision to Institute, we construed other terms in the challenged claims—namely, “control,” “optical receptors,” and “data gathering and transmission element,” as recited in independent claims 1 and 53, as well as “adjacent,” as recited in dependent claims 54 and 55. Dec. 8–10. Patent Owner does not propose alternative claim constructions for those claim phrases in its Patent Owner Response, nor did Petitioner challenge our constructions in its Reply. We discern no reason to alter our claim constructions for this Final Written Decision. For convenience, our claim constructions are reproduced in the table below. Claim(s) Claim Phrase Claim Construction 1 and 53 “control” “an element that controls and adjusts one or more beam directing devices (e.g., mirrors), which in turn control transmission of an optical beam from a source and/or mirror(s) to an optical receptor” 1 and 53 “optical receptor” “an element that receives an optical beam after it has been directed by a beam directing device (e.g., mirror),” such as “another optic fiber (cable 7) or optical switch (optical switch 5), as depicted in Figure 1 of the ’917 patent”” slip op. at 10

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

    “Patent Owner further contends, however, that Hurst and Young are not analogous art. Patent Owner contends that, unlike Young, “Hurst does not involve optical switching in the fiber optic communications field,” but instead “relates to the use of micro-machined elements in optical data storage systems.” Id. at 48 (citing Ex. 1005, Abstract). Citing Dr. Smith’s Declaration in support, Patent Owner contends that the Hurst embodiments differ in a number of ways from the fiber optic communications switch described in Young. Id. at 48–50 (citing Ex. 2017, 70–74). For instance, Patent Owner contends that Hurst uses “very short-length polarization-maintaining fibers coupled to mechanical read-write arms,” and involves wavelengths that are “visible or near ultraviolet,” necessitating “alignment requirements of the polarization” to maintain visible or near ultraviolet optics. Id. at 49. Patent Owner contends, citing Dr. Smith’s testimony, that communication switches, such as those disclosed in Young, “require a specific optical system architecture” that “impacts mirror size and overall switch size,” and that the “details of solving that particular optical problem are substantially different than solving the short-wavelength optics challenges of Hurst.” Id. at 49 (citing Ex. 2017, 72–73). Thus, according to Patent Owner, Hurst’s use of polarization-maintaining fibers and shorter wavelengths “change substantially the optical design and the components, such as optical coatings.” Id. at 51. Patent Owner contends that Hurst does not teach “(1) [] a communications-grade fiber switch; (2) how to monitor intensity of the transmitted signal; or (3) how to close a fine alignment loop.” Id. Thus, according to Patent Owner, an ordinary artisan would not have known how to add the feedback element (differential detector) of Hurst to the Young switch system and get it to work, i.e., the teachings “leave[] the combination lacking enablement.” Id. We are not persuaded that Young and Hurst are non-analogous art because, as Petitioner points out, both references describe optical switching and are directed to coupling laser light to receptors with rotational reflective elements. Pet. 21. Patent Owner’s contentions still are relevant, however, to the issue of whether one of ordinary skill in the art would have had reason to combine the elements disclosed in Young and Hurst when making an optical switch.” slip op. at 34

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

    “In this regard, Petitioner argues that a person having ordinary skill in the art would have had reason to provide “the feedback” of Hurst with Young’s optical switching system “for the benefit of ensuring that the reflective mirror is properly controlled.” Id.. Petitioner also argues that “the addition of feedback as taught by Hurst into Young would be a use of a known technique to improve a similar device in the same way.” Id. According to Petitioner, “[o]ne of ordinary skill in the art would have realized that Young provided a base device, and Hurst provided a comparable device, and that adding the feedback of Hurst to Young would have been predictable.” Id. Petitioner cites no evidence, such as a declaration from an expert witness, in support of those contentions, however, especially in relation to the differential detector (data gathering and transmission element) in Hurst. Id. Moreover, Petitioner does not explain sufficiently how, or show why, one would have added that element of Hurst to the optical switch of Young, or one would have been using a “known technique to improve a similar device in the same way,” or that “adding the feedback of Hurst to Young would have been predictable.” By contrast, as discussed above, Patent Owner explains, citing evidence in support, i.e., Dr. Smith’s Declaration, that one reading the two references would have understood that the two disclosed systems differed enough, such that it would not have been straightforward or “predictable” to combine elements. We conclude that Petitioner does not address adequately in its Petition, nor respond sufficiently in its Reply to Patent Owner’s Response, contentions raised by Patent Owner in this regard, or in cited testimony by Dr. Smith. At most, Petitioner contends in its Reply that independent claims 1 and 53 of the ’917 patent do not recite elements identified by Patent Owner as deficient in Hurst, and that Patent Owner’s “attempts to read limitations from the specification into the claims is improper.” Reply 14. We are not persuaded that Petitioner shows by a preponderance of the evidence that an ordinary artisan would have included “at least one data gathering and transmission element,” as recited in challenged independent claims 1 and 53, in the optical switch disclosed in Young based on the teachings in Hurst or Young. For the reasons given above, and in light of the record before us, Petitioner” slip op. at 35

  Patent outcomesUS 7,095,917 mixed
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 7,095,917
• JDS Uniphase Corporation v. Fiber, LLCSome claims unpatentable
  PTAB · Dec 5, 2014 · IPR2013-00336 · APJ Jacqueline Wright Bonilla · IPR · Final written decision

  Claims 112, 123, 124, 127, 129, 131, 133, and 134 are unpatentable as obvious over Chande; the remaining challenged claims were not shown unpatentable, and the motion to amend was denied.

  RulingsFinal written decision

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

    “of the phrase “servo control” refers to a “control” element, as opposed to a “servo control” or “data gathering and transmission” element, as recited in challenged claims, where the “servo control” in the provisional application controls movement of a mirror using a “push+pull magnetic force,” for example. Ex. 2006, 7. Consistently, the provisional application states that “[i]t may be desirable to add damping mechanism for better servo control,” i.e., to control movement of the mirrors, and that “resulting push+pull magnetic force is more linear and also larger than the pull only design, and allows for better servo control,” i.e., control of the position of the mirrors. Id. at 5, 7; see also PO Resp. 18. Patent Owner’s position relies on an inherency argument in relation to one sentence in the provisional application, as discussed above, which indicates that after velocity of the mirror is “zeroed,” “currents are adjusted to hold it in place.” Ex. 2006, 7. We are not persuaded that this one sentence describing the adjustment of currents to hold a mirror in place necessarily describes a closed-loop, feedback system, or “an error signal” that is “used in order to correct the angular changes so as to reduce that error signal,” as stated by Dr. Smith. PO Resp. 19–12 (citing Ex. 2017, 44). We do not see how this sentence, expressly or inherently, describes a separate “servo control element” or “data gathering and transmission element” as recited in claims 112 and 123, respectively (i.e., something different from the “control” element of each of those claims, which corresponds to the “servo control” in the provisional application), where each element provides a feedback signal regarding current orientation of the mirror or current location of the optical beam.” slip op. at 15

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

    “We are not persuaded that Chande and Buchin are non-analogous art to each other because, as Petitioner points out, both references are directed to optical switching and coupling of laser light to receptors with rotational reflective elements. Id. at 22. We still address, however, whether one of ordinary skill in the art would have had reason to combine the elements disclosed in Chande and Buchin when making the optical switch of claims 130 and 132.” slip op. at 34

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

    “As an initial matter, we note that Petitioner cites no evidence, such as a declaration from an expert witness, in support of those contentions. Id. In any event, Petitioner does not explain sufficiently how, or show by a preponderance of the evidence why, one would have added a stationary mirror or focusing lens “disposed between a source and one of the first movable mirrors,” as Petitioner contends is disclosed in Buchin, to the system described in Chande. Petitioner’s assertion that “inclusion of additional sources” would have been predictable or accomplished does not explain, nor provide evidence, as to why one would have included an additional stationary mirror or a focusing lens in a different location, i.e., elements that differ from “additional sources,” in the optical switch of Chande. Id.; see also Reply 12 (stating only that Chande and Buchin are both in the field of optical switching, and Patent Owner’s “attempts to read limitations from the specification into the claims is improper”). Thus, we are not persuaded that Petitioner shows by a preponderance of the evidence that an ordinary artisan would have included a stationary mirror, or focusing lens “disposed between a source and one of the first movable mirrors,” as recited in challenged claims 130 and 132 and Petitioner contends are disclosed in Buchin, in the optical switch disclosed in Chande.” slip op. at 35

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

    “Oakley, Inc. v. Sunglass Hut Int’l, 316 F.3d 1331, 1339 (Fed. Cir. 2003). Thus, a motion to amend claims must identify how the proposed substitute claims are to be construed, especially when the proposed substitute claims introduce new claim terms. See Idle Free Sys., Inc. v. Bergstrom, Inc., Case IPR2012-00027, slip op. at 7 (PTAB June 11, 2013) (Paper 26). In its Motion to Amend, Patent Owner introduces three new claim terms— i.e., “communications,” “fiber,” and “fiber optical”—in its proposed substitute claims. Patent Owner argues that those claim features distinguish the proposed substitute claims from the prior art. See, e.g., Motion 11–14. Patent Owner does not provide, however, adequate claim constructions or explanations for how the new claim terms should be construed. For example, in relation to the term “communications,” Patent Owner offers, at most, that the addition of this term means that the recited subject matter “involve[s] switches only in the fiber optic communications field of endeavor,” and that the term identifies claimed components as “related to a fiber optic switching device that switches optical beams containing communications signals.” Id. at 5, 11–12. Simply referring to the terms “communications,” “fiber,” and “fiber optic” in the Motion to Amend does not define adequately an ordinary and customary meaning of “communications,” as would be understood by one of ordinary skill in the art in the context of the Specification (which itself does not define “communications”). Ex. 1001, 1:11–14 (presenting the one time the term “communication” is used in the ’332 patent Specification). During the oral hearing, Patent Owner’s counsel, upon questioning, proposed that “communication” means “a beam of light, with a frequency around approximately 1500 nanometers.” Paper 39, 47:4–13. The Motion to Amend, however, does not suggest such a claim construction, nor refer to any evidence, e.g., a dictionary or scientific definition, in support. Moreover, as discussed during the oral hearing, it is not clear from the record if “communication” might mean simply “transmission of information,” a definition not limited to a beam of light at 1500 nm. Id. at 53:14–55:18. Without a reasonable construction of the new claim features added by the proposed substitute claims, Patent Owner’s Motion does not provide adequate information for us to determine whether its proposed substitute claims are patentable over the prior art generally. Thus, we are not persuaded that Patent Owner has met its burden to demonstrate patentability of the proposed substitute claims under 37 C.F.R. § 42.20(c). 2. Written Description Support A motion to amend claims must identify clearly the written description support for each proposed substitute claim. 37 C.F.R. § 42.121(b). The written description test is whether the original disclosure of the application relied upon reasonably conveys to a person of ordinary skill in the art that the inventor had possession of the claimed subject matter as of the filing date. Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). Thus, the motion should account for the claimed subject matter as a whole, i.e., the entire proposed substitute claim, when showing where there is sufficient written description support for each claim feature. See Nichia Corp. v. Emcore Corp., Case IPR2012-00005, slip op. at 4 (PTAB June 3, 2013) (Paper 27).” slip op. at 50

  Patent outcomesUS 6,430,332 mixed
  § 103 obviousness§ 112 disclosure
  Patents in suitUS 6,430,332
• Distinctive Developments, Ltd / Electronic Arts Inc. et al. v. Uniloc USA, Inc. And Uniloc Luxembourg S.A.Some claims unpatentable
  PTAB · Dec 3, 2014 · IPR2013-00391 · APJ Matthew R Clements · IPR · Final written decision

  Claims 1, 20, 30, 31, 67, 107, and 108 are unpatentable; claims 21 and 22 were not shown unpatentable, because Deluca does not disclose a cellular telephone.

  RulingsFinal written decision

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

    “The ’067 patent does not define either “verification data” or “verification data for verifying the license data stored on the licensing medium.” The language of claim 1, however, specifies that the recited “verification data” is “for verifying the license data stored on the licensing medium.” Patent Owner cites three methods described in the ’067 patent (PO Resp. 15), but those methods verify the validity of the licensing medium, not of the license data. Ex. 1001, 4:6–26 (“The electronic device may verify the validity of the licensing medium by comparing the license data to the verification data of the registration authority.” (emphasis added)); see also claims 2, 5, 9, 10 (reciting “verify validity of the licensing medium by . . .” (emphasis added)). Based on our review, the only disclosure in the ’067 patent of a “verification” of license data is the disclosure that the license data (or a hash of it, or an encrypted hash of it) is compared to a copy of itself in the “verification data” of the registration authority. Ex. 1001, 4:6–26. In the context of the ’067 patent, then, we construe “verifying the license data,” as recited in claim 1, to mean comparing the license data to a copy of itself to confirm that the two match.” slip op. at 8

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

    “We agree with Patent Owner that the “identification information” disclosed in Cronce is not “verification data for verifying the license data,” as we have construed that term, because it is not used to verify the license data (i.e., authorization information 171). Specifically, Cronce does not disclose, for example, a comparison of identification information with authorization information 171. Instead, Cronce’s “identification information” is compared only to fixed key ID 151, which Petitioner does not identify as the recited “license data” in its Petition. In its Reply, Petitioner argues that fixed key ID 151 is “the license data,” because the ’067 patent defines that term broadly as “data that is used [ ] to determine whether or not to allow access to electronic data.” Pet. Reply 7–8 (citing Ex. 1001, 3:65–67; Ex. 2002 ¶ 12). We do not agree, however, that “license data” has the meaning proposed by Petitioner. Specifically, the sentence relied upon by Petitioner does not define “license data.” It states only that “license data is used by the electronic device to determine whether to allow access to the electronic data.” Ex. 1001, 3:65–67. It does not state that all data used in the process of determining whether to allow access to electronic data is license data. Even assuming that Cronce’s fixed key ID 151 is used in the process of determining whether to allow access to Cronce’s protected information 115, that is not sufficient for fixed key ID 151 to be the recited “license data.” Petitioner also argues in Reply that “there is a comparison between two pieces of information that, if successful, results in verified and updated license information being transmitted to the portable authorization device.” Pet. Reply 5. Neither piece of information is “verification data for verifying the license data,” however, unless it is compared with the license data itself. Cronce discloses no such comparison between its identification information (i.e., the recited “verification data”) and authorization information 171 (i.e., the recited “license data”). Petitioner also argues in Reply that Cronce discloses a second verification process in which the information authority (i.e., “registration authority”) has a fixed secret key 152 (i.e., “verification data”) that is compared to a fixed secret key 152 stored on the portable authorization device. Pet. Reply 5–7. As with the process relied upon in the Petition, however, Cronce does not disclose the use of fixed secret key 152 to “verify” authorization information 171 (which Petitioner identifies as the recited “license data”), such as by a comparison of the two to confirm a match. Because fixed secret key 152 is not used to verify authorization information 171 it is not “verification data for verifying the license data,” as we have construed that term.” slip op. at 16

  Patent outcomesUS 6,857,067 mixed
  Claim construction§ 102 anticipation
  Patents in suitUS 6,857,067
• Ricoh Americas Corporation / Xerox Corporation v. MPHJ Technology Investments, LLCSome claims unpatentable
  PTAB · Nov 19, 2014 · IPR2013-00302 · APJ Karl D Easthom · IPR · Final written decision

  Claims 1–5 and 7–11 are unpatentable because the XNS Manual anticipates them; Petitioner did not show that the XNS Manual or Salgado anticipates claim 6.

  RulingsFinal written decision

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

    “Accordingly, a “software application” is a program, or group of programs, which operate together in a system to perform a function or functions, and the programs can be stored in a variety of places on a variety of devices, and operate in a distributed manner. An application may include software and hardware and performs a function or functions.” slip op. at 13

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

    “Patent Owner’s arguments are not persuasive. As explained in the Overview section, the application layer itself contains multiple protocols for each application, i.e., mailing, printing, filing, and gateway access. See Ex. 1002, 14–16, Fig. 2-4. Even if lower layer protocols do not “disturb[]” upper layer protocols, as Patent Owner contends, and even if an application layer does not contain multiple protocols (which Patent Owner does not contend), different layers of protocols generally communicate with, or at least “use the resources of,” lower layers through “interfaces.” Id. at 14, 11 (“[A] commonly-accepted perspective is that the functions of one layer use the resources of the lower layers to complete their assigned tasks.”). In any event, the application layer protocols comprise several types of application protocols. Id. at 15 (Fig. 2-4), 16.” slip op. at 25

  • ExcludeMotion to exclude, deniedDenied

    “III. MOTION TO EXCLUDE Patent Owner moves to exclude Dr. Melen’s testimony on re-direct during his deposition. Paper 40. We do not consider any of the re-direct testimony, rendering the motion moot. Therefore, we dismiss it.” slip op. at 49

  • Expert testimonyPetitioner expert creditedPatent owner expert creditedDecided for petitioner

    “Even if Patent Owner’s assertions raise doubt as to Dr. Melen’s use of the XNS Manual to support his opinion that it anticipates claim 6, see id. at 9–12, Patent Owner does not show how this translates to undermining Dr. Melen’s opinion regarding the other claims. Throughout his analysis of the XNS Manual, Dr. Melen’s declaration provides specific and accurate citations to the XNS Manual (Ex. 1002), supporting his opinion and showing that he relies on the XNS Manual’s disclosure. See Ex. 1008 ¶¶ 29–47. In addition, because Petitioner has not shown that the XNS Manual or Salgado anticipates claim 6, Dr. Melen’s opinion about claim 6 is not of significant consequence. In reciprocal fashion, Petitioner maintains that “the Board should give no weight to Mr. Weadock’s Declaration.” Pet. Reply 7–8. Mr. Weadock’s testimony is not necessary to reach our decision with regard to claim 6, and we did not consider it in reaching the decision about claim 6. Given the finding of anticipation of claims 1–5 and 7–11, the issue is moot. Nevertheless, as this Final Decision implies, we afforded Mr. Weadock’s declaration and Dr. Melen’s declaration due weight in reaching the finding that the XNS Manual anticipates claims 1–5 and 7–11.” slip op. at 50

  Patent outcomesUS 7,986,426 mixed
  Claim construction§ 102 anticipation
  Patents in suitUS 7,986,426

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