- Hamilton Technologies LLC v. Fleur TehraniAll claims unpatentablePTAB · Dec 28, 2021 · IPR2020-01199 · APJ Kevin W Cherry · IPR · Final written decision
Claims 1–6, 9–12, 29–33, and 41 are unpatentable as obvious over the Carmichael-Anderson and Taube-based combinations; the Carmichael anticipation ground was not proven.
RulingsFinal written decision- Expert testimonyPetitioner expert creditedDecided for petitioner
“We do not agree with Patent Owner that Dr. Imbruce’s testimony should be disregarded. With respect to Patent Owner’s contentions about “technically erroneous disclosures” and the construction of “for a next breath,” those are really about Patent Owner’s disagreements about those matters, not whether Dr. Imbruce was attempting to mislead the Board. Disagreement between the experts is not a basis for disregarding testimony. We have also reviewed the entirety of Dr. Imbruce’s deposition, and, in particular, the various parts identified by Patent Owner. PO Resp. 76–77. And, contrary to Patent Owner’s assertions, we found Dr. Imbruce gave detailed answers in response to Patent Owner’s questions. We found Dr. Imbruce’s testimony to be adequate. See, e.g., Ex. 2016, 107:11–115:8 (discussion of Anderson references, explaining the similarities of the references, but declining to vouch for data he has not seen or collected); 115:9–116:6 (FDA permission, offering to confirm what reference said about FDA approval, but attorney moving on to other questions). Thus, we do not find Dr. Imbruce’s behavior during cross examination as a reason to give no weight to the entirety of his testimony.” slip op. at 14
- Skill levelSkill level petitioner adoptedDecided for petitioner
“(i) a medically trained physician or clinician specializing in treating respiratory failure issues with at least five years of practical clinical ventilator experience treating such conditions; or (ii) a Master’s degree in Electrical Engineering or a related field and about five years of practical experience with developing ventilators for clinical patient treatment; or (iii) a Bachelor’s degree in Electrical Engineering or a related field and about 10 years of practical experience with developing ventilators for clinical patient treatment. Pet. 20‒21 (referencing Ex. 1002 ¶¶ 71‒72). Petitioner proposes that “[a] higher level of education or specific skill might compensate less experience, and vice versa.” Id. at 21. Patent Owner does not present an opposing view of the level of skill of the hypothetical person having ordinary skill in the art of the ’571 patent. See PO Resp. passim. For the purposes of this Decision, we apply Petitioner’s definition of the level of ordinary skill in the art. We determine that this definition is consistent with the prior art of record and the skill reflected in the Specification of the ’571 patent, based on our review of the record.” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“In our Institution Decision, we determined that only the claim terms “first means” and “second means” required construction. Inst. Dec. 25–27. Neither party disputes those constructions and we maintain and adopt them for the purposes of this Decision. We determine that, for purposes of this decision, no other terms require express construction. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only 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 17
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“We agree with Patent Owner that Carmichael lacks adequate disclosure to anticipate the apparatus of claim 1. Specifically, because Carmichael focuses on the result of physician surveys, and not on the description of a ventilation system per se, Carmichael lacks details as to the specific manner in which the assist control mode was being used to control PEEP and FIO2 levels. Specifically, we cannot discern that Carmichael’s discussion of an assist control mode for mechanical ventilation necessarily entails adjustments to FIO2 and PEEP “for a next breath of the patient” as recited in claim 1. As explained by Patent Owner, it is possible that the parameters of PEEP and FIO2 could have been set manually by the physician and/or could have been updated only periodically during treatment. See, e.g., PO Resp. 25‒26. Thus, Petitioner has not shown by a preponderance of evidence that Carmichael anticipates claim 1, or claims 2, 5, 6, and 11 that depend from claim 1.” slip op. at 20
Patent outcomesUS 7,802,571 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,802,571 - Opensky Industries, LLC v. VLSI Technology LLCInstitution deniedPTAB · Dec 23, 2021 · IPR2021-01056 · APJ Jason W Melvin · IPR · Institution
The Board denied institution of IPR on claims 1–3, 5, 6, 9–11, and 13 because Petitioner likely could not produce its relied-upon expert for cross-examination.
RulingsInstitution decision- BurdenInstitution denied meritsInstitution denied
“Given the facts surrounding Dr. Singh’s testimony, we do not consider him likely to be a willing participant in this proceeding. It is Petitioner’s burden to show unpatentability, and in support of its case Petitioner has brought forth the testimony of an expert that Petitioner likely cannot produce for cross-examination and would likely be excluded.9 Under the circumstances, we determine that the Petition does not warrant institution.” slip op. at 9
- Expert testimonyPetitioner expert discountedDecided for patent owner
“trial is instituted. Prelim. Reply 9. That suggestion, however, stands at odds with Dr. Singh’s agreement to work exclusively with PQA. See IPR2021-01229, Ex. 1033 (declaration describing PQA’s engagement of Dr. Singh), Ex. 1034 (engagement agreement between PQA and Dr. Singh). Petitioner submits that because Dr. Singh submitted his declaration in the Intel IPR and in the PQA IPR, “[i]t is unfathomable that a witness who submits two declarations would refuse to testify.” Prelim. Reply 10. But that argument ignores that Dr. Singh has agreed to work exclusively with PQA, which has not given any indication that it would release Dr. Singh from his agreement. Moreover, we have no evidence from Dr. Singh that he would be willing to testify here. Without some factual support to demonstrate that it reasonably expects Dr. Singh to cooperate, in light of the exclusive agreement with PQA, Petitioner’s assertion is speculation and does not demonstrate sufficiently that Dr. Singh would likely participate in this proceeding. Petitioner challenges PQA’s assertion of its exclusive agreement with Dr. Singh as “vague and ethically questionable” (id. at 9–10). This is more speculation. As noted above, PQA has produced its agreement with Dr. Singh (IPR2021-01229, Ex. 1034) and we have no basis to question the agreement’s legitimacy. Petitioner allowed this unusual situation by relying on a prior declaration by Intel’s expert, rather than retaining its own expert for a new declaration. Whether the agreement with Dr. Singh complies with ethical rules and whether it permits Dr. Singh to testify here are matters not before us. Moreover, they may present issues of contract law for the courts to decide, which may cause delay and prevent us from meeting our statutory deadlines, were we to institute a trial with the issues unresolved.” slip op. at 7
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Given the facts surrounding Dr. Singh’s testimony, we do not consider him likely to be a willing participant in this proceeding. It is Petitioner’s burden to show unpatentability, and in support of its case Petitioner has brought forth the testimony of an expert that Petitioner likely cannot produce for cross-examination and would likely be excluded.9 Under the circumstances, we determine that the Petition does not warrant institution.” slip op. at 9
Discretionary denialPatents in suitUS 7,523,373 - PTAB · Dec 22, 2021 · IPR2021-01055 · APJ Kevin F Turner · IPR · Institution
The Board instituted IPR of claims 1–5 and 9–19 on five § 103 grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“An inter partes review may be instituted only if “the information presented in the petition . . . and any [preliminary] response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). For the reasons given below, Petitioner has established a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims of the ’766 Patent. Accordingly, we institute an inter partes review of claims 1–5 and 9–19 of the ’766 Patent on the grounds of unpatentability raised in the Petition.” slip op. at 2
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“For a reference to qualify as a printed publication, “before the critical date the reference must have been sufficiently accessible to the public interested in the art.” Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1568 (Fed. Cir. 1988). “When there is an established publisher there is a presumption of public accessibility as of the publication date.” VidStream LLC v. Twitter, Inc., 981 F.3d 1060, 1065 (Fed. Cir. 2020); see also Hulu, LLC v. Sound View Innovations, LLC, Case IPR2018-01039, Paper 29 (PTAB Dec. 20, 2019) (precedential) (determining that, based on the totality of the evidence, a reference bearing a copyright date, a printing date, and an ISBN date all earlier than the critical date of the challenged patent, and the reference was a “textbook from an established publisher” provided sufficient indicia at the institution state).” slip op. at 15
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“configuration error” With respect to the limitation “configuration error,” Patent Owner asserts that configuration error means “either (1) the condition that occurs when ‘a rule or series of rules is not properly defined and produces an undesired effect’ or (2) ‘a series of improperly defined rules causes a part to be in more than one state at the same time.’” Prelim. Resp. 10 (citing Ex. 1001, 1:54–61; Ex. 2001 ¶ 40). At this stage of the proceeding, we find that Patent Owner’s proposed construction is supported by the ’766 Patent specification, and adopt Patent Owner’s proposed meaning of “configuration error,” with the following remarks with respect to Patent Owner’s additional arguments regarding the claim construction. Patent Owner, however, also argues that “the specification concerns errors internal to the configuration engine and not ‘errors’ that prevent product configurator users from making their desired but impermissible selections.” Prelim. Resp. 10. We do not agree with Patent Owner’s argument because the first part of the construction, namely rules not being properly defined and “produc[ing] an undesired effect,” does not specify anything about an error being “internal” to the configuration engine. The specification provides that such a configuration error “may occur when a rule or series of rules is not properly defined and produces an undesired effect, such as the exclusion of a part that should be selectable” (Ex. 1001, 1:54–61, emphasis added), but the latter clause provides only one example of the undesired effect. We are not persuaded, based on our review of the Specification of the ’766 Patent that “an undesired effect” should be limited to the exclusion of a part. Thus, although Patent Owner argues that “a configuration error is not a condition that occurs when a user attempts to make a choice that is prohibited by a rule” (Prelim. Resp. 11 (citing Ex. 2001 ¶ 43)), at this juncture, we are not persuaded that such a condition would not be an undesired effect, according to the adopted construction. Therefore, we do not further limit the construction of “configuration error.” slip op. at 7
- Skill levelSkill level petitioner adoptedDecided for petitioner
“II. ANALYSIS Level of Ordinary Skill in the Art Petitioner, supported by Dr. Wood’s testimony, proposes that a person of ordinary skill in the art at the time of the invention would have had “a Bachelor’s degree in Computer Science, Computer or Electrical Engineering, Engineering Science, an engineering major with a significant computational component, or a similar discipline, or with at least two years of research or experience in configurable systems including testing.” Pet. 8 (citing Ex. 1003 ¶¶ 53–55). Patent Owner argues that “[t]here may be some differences between this and the correct level of skill in the art but those differences will not affect this case at this stage,” such that Patent Owner applies the proposed level of skill in the art without agreeing to it. Prelim. Resp. 10 (citing Ex. 2001 ¶¶ 35–37). At this stage of the proceeding, we find Petitioner’s proposal consistent with the level of ordinary skill in the art reflected by the prior art of record, see Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978), and, therefore, we adopt Petitioner’s unopposed position as to the level of ordinary skill in the art for purposes of this decision.” slip op. at 6
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 6,836,766 - Kiosoft Technologies, LLC / Techtrex, Inc. v. Payrange Inc.Institution deniedPTAB · Dec 16, 2021 · PGR2021-00084 · APJ Meredith C Petravick · PGR · Institution
The Board denied institution because Petitioner did not show that any of claims 1–20 was more likely than not unpatentable on the asserted § 112, § 102, or § 103 grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“instituted unless “the information presented in the petition filed under section 321, if such information is not rebutted, would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.”1 After considering the Petition, the Preliminary Response, Reply, Sur- reply and the evidence of record, we determine that Petitioner fails to demonstrate that it is more likely than not that at least one of the claims challenged in the Petition is unpatentable. Accordingly, we do not institute a post-grant review.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“We are not persuaded by Petitioner’s arguments because Petitioner’s proposed construction improperly attempts to read a particular embodiment described in the ’608 patent into the claims. It is not proper to read limitations from the ’608 patent into the claims: Though understanding the claim language may be aided by the explanations contained in the written description, it is important not to import into a claim limitations that are not a part of the claim. For example, a particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment. SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004). “[A]lthough the specification often describes very specific embodiments of the invention, [the Federal Circuit has] repeatedly warned against confining the claims to those embodiments.” Phillips, 415 F.3d at 1323. As Mr. Smith points out, the ’608 patent does describe offline- payment operated machine 1500 as an electro-mechanical machine capable of accepting currency (e.g., coins), which is not connected to any networks (e.g., telephone, cellular, or Wi-Fi). Ex. 1005 ¶ 84 (citing Ex. 1002, 39:39– 45). But, the ’608 patent describes offline-payment operated machine 1500 as merely one example of an offline-payment operated machine in some implementations. The ’608 patent states: FIG. 28A illustrates a block diagram of an offline-payment operated machine 1500 in accordance with some implementations. For example, the offline-payment operated machine 1500 (e.g., a form of the machine 120) is an electro-mechanical machine capable of accepting currency (e.g., coins), which is not connected to any networks (e.g., telephone, cellular, or Wi-Fi). For example, the offline-payment operated machine 1500 is a washer or dryer at a laundromat, a parking meter, a car wash payment kiosk, or other offline-payment operated machine that dispenses goods and/or services. Ex. 1002, 39:38–48 (emphases added). The ’608 patent emphasizes that offline-payment operated machine 1500 is merely an example. Id. at 39:52– 56 (“The components of the offline-payment operated machine 1500 in FIG. 28A are examples and one of skill in the art will appreciate that various” slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A [person having ordinary skill in the art (“POSITA”)], as of the date of the alleged invention, would have had an education background of, or practical experience providing an equivalent to, a Bachelor of Science in Electrical Engineering, Computer Science, Information Technology, or a related/equivalent field and at least three years of work experience in electronic payment systems, vending machine technologies, or telecommunication solutions. Pet. 29 (citing Ex. 1005 ¶ 52). Patent Owner does not dispute Petitioner’s contention in its Preliminary Response. See generally Prelim. Resp. Based on the record before us, we adopt Petitioner’s asserted level of ordinary skill to determine whether it is more likely than not that at least one of the claims challenged in the Petition is unpatentable. This level of skill in the art is consistent with the disclosure of the ’608 patent and the prior art of record. See In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995).” slip op. at 7
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateNot shown unpatentable
“Under 35 U.S.C. § 112(a), “[t]he specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same . . . .” To satisfy the written description requirement, the disclosure must reasonably convey to skilled artisans that the patentee possessed the claimed invention as of the filing date. Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). The requirement under § 112 does not demand that the specification recite the claimed invention verbatim. Id. at 1352 (citations omitted). The “claimed subject matter need not be described in haec verba in the specification in order for that specification to satisfy the description requirement.” In re Smith, 481 F.2d 910, 914 (CCPA 1973). “Original claims are part of the original specification and in many cases will satisfy the written description requirement.” Mentor Graphics Corp. v. EVE-USA, Inc., 851 F.3d 1275, 1297 (Fed. Cir. 2017). We agree with Patent Owner. Petitioner, itself, indicates that the specification of the ’608 patent discloses an interface module counting the electrical pulses generated by a coin receiving switch. The Petition states: “Specifically, the objective inquiry reveals that it is only the ‘first interface module’ that is mentioned as counting one or more electrical pulses generated by the coin receiving switch.” Pet. 32; see also Ex. 1005 ¶ 125 (corresponding testimony of Mr. Smith). In this regard, the ’608 patent states: In FIG. 28A, the first interface module 1522 is configured to sample payment acceptance signals from the microswitch 1502 (e.g., a coin receiving switch) via lead 1532 of the offline-payment operated machine 1500. For example, the payment acceptance signals are indicative of a coin being received by the microswitch 1502 which depress lever 1504. Ex. 1002, 40:35–40. The ’608 patent also describes FIG. 28B as illustrating signals sampled by the first interface module 1522, “[f]or example, the preset sequence of payment acceptance signals indicative of the preset number of coins include pulses (i.e., payment acceptance signals) 1552, 1554, 1556, and 1558.” Id. at 40:50–58; see also id. at 41:59–42:4 (“payment acceptance signals are indicative of a preset number of coins received by the coin receiving switch”); 42:49–55 (describing identifying a count of pulses). The ’608 patent further states: “[T]he terms used for labels (e.g., ‘first,’ ‘second,’ and ‘third’) are meant solely for purposes of designation and not for order or limitation.” Id. at 46:11–14. Claim 19, as originally filed, recited limitation (b), with the coin counting interface module being labeled as the second interface module. Ex. 1003, 283. Given the originally filed claim 19 and the above disclosures of the ’608 patent, Petitioner does not persuade us that the ’608 patent does not reasonably convey to skilled artisans that the patentee did not possess the claimed invention as of the filing date. Petitioner does not show sufficiently that claims 19–20 are more likely than not unpatentable under 35 U.S.C. § 112(a) for lack of written description.” slip op. at 15
Claim construction§ 103 obviousness§ 112 disclosurecites Phillips · NautilusPatents in suitUS 10,891,608 - Cloudflare, Inc. v. Sable Networks, Inc.Institution deniedPTAB · Dec 16, 2021 · IPR2021-01067 · APJ Stacey G White · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claim 8 would have been obvious over Beshai and Simpson.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons stated below, we determine that Petitioner has not established a reasonable likelihood that it would prevail with respect to the remaining challenged claim. We hereby do not institute an inter partes review as to the challenged claim of the ’431 patent on the asserted grounds of unpatentability.” slip op. at 2
- Adverse judgmentAdverse judgmentOther
“claims 1–7 and 9 of the ’431 patent.” Prelim. Resp. 32; Ex. 2006. “[A] patent owner may file a statutory disclaimer under 35 U.S.C. 253(a) in compliance with § 1.321(a) of this chapter, disclaiming one or more claims in the patent. No inter partes review will be instituted based on disclaimed claims.” 37 C.F.R. § 42.107(e). A statutory disclaimer is “considered as part of the original patent” as of the date on which it is “recorded” in the Office. 35 U.S.C. § 253(a). For a disclaimer to be “recorded” in the Office, the document filed by the patent owner must: (1) Be signed by the patentee, or an attorney or agent of record; (2) Identify the patent and complete claim or claims, or term being disclaimed. A disclaimer which is not a disclaimer of a complete claim or claims, or term will be refused recordation; (3) State the present extent of patentee’s ownership interest in the patent; and (4) Be accompanied by the fee set forth in [37 C.F.R.] § 1.20(d). 37 C.F.R. § 1.321(a); see also Vectra Fitness, Inc. v. TNWK Corp., 162 F.3d 1379, 1382 (Fed. Cir. 1998) (holding that a § 253 disclaimer is immediately “recorded” on the date that the Office receives a disclaimer meeting the requirements of 37 C.F.R. § 1.321(a), and that no further action is required in the Office). Based on our review of Exhibit 2006 and the Office’s public records, we conclude that claims 1–7 and 9 have been disclaimed under 35 U.S.C. § 253(a) in compliance with 37 C.F.R. § 1.321(a), and thus, no inter partes review shall be instituted as to those claims. See 37 C.F.R. § 42.107(e) (“No” slip op. at 3
- PTAB / AIA Trials › Discretionary denialNot reached
“E. Discretionary Denial Petitioner contends the Petition should not be denied institution on discretionary grounds. Pet. 57–63; Reply. Patent Owner contends we should deny institution under 35 U.S.C. § 314(a). Prelim. Resp. 33–42; Surreply. 5 Petitioner relies on Simpson for this limitation and does not direct us to any teachings in Beshai regarding the recited “packet discard time limit.” See Pet. 10–11. institute an inter partes review on that basis, we need not determine whether it would be appropriate to discretionarily deny the Petition under § 314(a).” slip op. at 17
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that a person of ordinary skill in the art “would have had an undergraduate degree (or equivalent) in electrical engineering, computer science, or a comparable subject and about 2 to 3 years of academic or professional work experience in computer networking and switching technology with a focus on routing and quality-of-service or comparable experience.” Pet. 8 (citing Ex. 1003 ¶ 55). As also asserted by Petitioner, a “higher level of education could substitute for less industry level of education.” Id. Patent Owner does not address the level of ordinary skill of the art. See Prelim. Resp. Based on our review of the current record, we adopt Petitioner’s articulation of the level of skill in the art, which is consistent with the ’431 patent and the asserted prior art, and we apply it in our obviousness evaluations below.” slip op. at 8
Claim construction§ 103 obviousnessDiscretionary denialcites GrahamPatents in suitUS 6,954,431 - Microchip Technology Inc. v. HD Silicon Solutions LLCInstitution deniedPTAB · Dec 15, 2021 · IPR2021-00872 · APJ Robert L Kinder · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–32 would be unpatentable over Lempel and Itou, with or without Haswell.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“In summary, Petitioner does not explain with sufficient specificity how or why a person of ordinary skill in the art would have combined Lempel with Itou. Because each ground upon which the Petition relies is based on the combination of Lempel and Itou, including each independent claim challenged, Petitioner has not proven by a reasonable likelihood that it would prevail in showing that any claim of the ’619 patent is unpatentable. VII. CONCLUSION For the foregoing reasons, we conclude that the information presented in the Petition does not establish a reasonable likelihood that Petitioner would prevail in showing that any of claims 1–32 of the ’619 patent is unpatentable. VIII. ORDER Upon consideration of the record before us, it is: ORDERED that the Petition is denied, and we do not institute inter partes review of any claim of the ’619 patent based on the grounds asserted in this Petition.” slip op. at 19
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Not reached
“V. DISCRETION UNDER 35 U.S.C. § 314(A) Patent Owner contends we should exercise our discretion under 35 U.S.C. § 314(a) to deny institution of inter partes review. Prelim. Resp. 40–46 (citing, e.g., Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”)). Because we determine that Petitioner fails to demonstrate that there is a reasonable likelihood that it would prevail with respect to at least one of the claims challenged in the petition, we need not address Patent Owner’s contentions concerning discretionary denial.” slip op. at 8
- Skill levelSkill level petitioner adoptedDecided for petitioner
“III. LEVEL OF ORDINARY SKILL IN THE ART In determining the level of skill in the art, we consider the type of problems encountered in the art, the prior art solutions to those problems, the rapidity with which innovations are made, the sophistication of the technology, and the educational level of active workers in the field. Custom Accessories, Inc. v. Jeffrey-Allan Indus. Inc., 807 F.2d 955, 962 (Fed. Cir. 1986); Orthopedic Equip. Co. v. United States, 702 F.2d 1005, 1011 (Fed. Cir. 1983). Petitioner contends that a person of ordinary skill in the art at the time of the invention of the ’619 patent would have had the following education and experience: at least (1) a master’s degree in electrical engineering, computer science, or a related degree, and at least 3-5 years of experience in computer architecture and cache memory design; or (2) a bachelor’s degree in electrical engineering, computer science, or a related degree, and at least 5-6 years of experience in computer architecture and cache memory design. Pet. 5. Patent Owner does not dispute this level of skill. See generally Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s proposal, which is supported by Dr. Sechen’s testimony. See Ex. 1002 ¶¶ 26–28.” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“For instance, Petitioner does not identify persuasively the differences between either Lempel or Itou and the limitations they supposedly teach in combination, nor does Petitioner provide persuasive explanation as to how either reference would be modified to accommodate the distinct architecture of the other reference (Lempel’s parity checking and Itou’s ECC circuitry) in a combination. Petitioner does not explain adequately how this proposed combination would operate. Because the teachings of Lempel and Itou are somewhat contradictory, Petitioner should have provided at least some explanation as to how the resulting system operates and why a person of ordinary skill in the art would have combined the references to operate in that manner. See Prelim. Resp. 24. Petitioner next argues that a POSITA could use the error detection and recovery method of Itou (e.g., an ECC (Error Check Code)-based method) when a correctable error is detected, and the error detection and recovery method of Lempel (e.g., targeted invalidation of the data errors in the cache and selectively replacing the invalidated data with error-free data from the main memory) when a non-correctable error is detected to reduce the latency associated with accessing the content of the main memory. Pet. 67. This rationale, however, fails to address Lempel’s consistent disparagement of ECC approaches, as adopted in Itou. Based on Lempel’s teachings, adding ECC functionality to an integrated circuit already configured with parity checking functionality would increase “space on the silicon” as well as increase cost. See Ex. 1006, 1:31–44, 1:58–61. Yet, Petitioner does not acknowledge these drawbacks of ECC circuitry, much less explain why they would have been acceptable to a POSITA. Thus, we are not persuaded a POSITA would have been willing to combine the two references as proposed by Petitioner.” slip op. at 17
§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 7,302,619 - Stmicroelectronics, Inc. v. Neodron Ltd.InstitutedPTAB · Dec 15, 2021 · IPR2021-01160 · APJ Scott B Howard · IPR · Institution
The Board instituted IPR on claims 1–20 and all asserted grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“determine whether to institute an inter partes review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). Inter partes review may not be instituted unless “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). “When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” PTAB Rules of Practice for Instituting on All Challenged Patent Claims and All Grounds and Eliminating the Presumption at Institution Favoring Petitioner as to Testimonial Evidence, 85 Fed. Reg. 79,120, 79,129 (Dec. 9, 2020) (codified at 37 C.F.R. § 42.108(a) (2021)).” slip op. at 2
- Parallel petitionsDecided for petitioner
“Parallel Petitions Challenging the Same Patent. Based on the Board’s experience, one petition should be sufficient to challenge the claims of a patent in most situations. Two or more petitions filed against the same patent at or about the same time (e.g., before the first preliminary response by the patent owner) may place a substantial and unnecessary burden on the Board and the patent owner and could raise fairness, timing, and efficiency concerns. See 35 U.S.C. § 316(b). CTPG, 59. Nonetheless, the Consolidated Trial Practice Guide recognizes that “more than one petition may be necessary, including for example, . . . when there is a dispute about priority date requiring arguments under multiple prior art references.” Id. Because there is a dispute about the effective filing date of the ’251 patent, which may require arguments to be made under multiple prior art references, the present circumstance is consistent with the exception referenced in the Consolidated Trial Practice Guide. See Paper 3, 2–3. Moreover, Patent Owner has not requested that we exercise our discretion to only consider, at most, one petition. Accordingly, we do not exercise our discretion to deny this Petition under § 314(a). E.” slip op. at 11
- Skill levelSkill level petitioner adoptedDecided for petitioner
“would have been a person having at least a bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field, and at least two years of experience in the research, design, development, and/or testing of human-machine interfaces such as touch sensors and the firmware or system software that govern said interfaces, or the equivalent, with additional education substituting for experience and vice versa. Pet. 2 (citing Ex. 1003 ¶¶ 20–22). Patent Owner does not address this issue. For purposes of this Decision, we adopt the level of ordinary skill in the art that Petitioner proffers, except that we delete the qualifiers “at least” to eliminate vagueness as to the amount of education and practical experience. The qualifiers expand the range indefinitely without an upper bound, and thus precludes a meaningful indication of the level of ordinary skill in the art.7 C.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner proposes constructions for two terms. See Pet. 11–16. Because no express construction is needed to resolve any dispute in this proceeding, we do not construe any of the claim limitations. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only 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))). D.” slip op. at 10
Claim constructionDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,749,251 - Dolby Laboratories, Inc. v. Intertrust Technologies CorporationAll claims unpatentablePTAB · Dec 15, 2021 · IPR2020-01123 · APJ Nabeel U Khan · IPR · Final written decision
Claims 9 and 29 are unpatentable as anticipated by Arnold and obvious over Arnold; Petitioner did not show they were obvious over Chang and Stefik.
RulingsFinal written decision- BurdenDecided for patent owner
“do not agree with Petitioner that it would have been obvious to combine Stefik’s tamper resistant barrier with Chang. Petitioner argues that a tamper resistant barrier would enhance security and would further Chang’s goal of allowing only authorized code to be executed on its platform. Pet. 64 (citing Ex. 1005, 8:55–59; Ex. 1006, 27:11–15). We agree with Patent Owner that this reason to combine is too general and conclusory to explain how the specific modification of securing Chang’s public keys behind a tamper resistant barrier would have provided a relevant benefit to the combination beyond Chang’s own secure distribution system that provides security, without placing the public key behind a tamper resistant barrier. We determine that such a generalized and conclusory reason for combining Chang and Stefik is insufficient. Magnum, 829 F.3d at 1380 (“To satisfy its burden of proving obviousness, a petitioner cannot employ mere conclusory on evidence of record, to support the legal conclusion of obviousness.”). Specifically, Chang discloses that platform producers desire to allow only authorized code to be executed on their platform. Ex. 1005, 8:55–59. This is done by identifying the software that will execute on their platform. Id. at 8:60–62. Chang provides a solution to this problem by using software passports that include digital signatures. Id. at 8:65–9:48. Chang’s solution involves using a public key which is not kept behind a tamper resistant barrier. Id. Thus, Petitioner’s proposed motivation to combine to “enhance security” (Pet. 64) and to allow only authorized code to be executed on a platform does not explain why the public key would have to be kept behind a tamper resistant barrier. In response to the argument that its motivation is too conclusory, Petitioner further explains that its proposed motivation to combine (a platform producer’s desire to allow only authorized code on their platforms) would have motivated a POSITA to secure Chang’s public key behind a tamper resistant barrier to prevent a user from replacing the key. Pet. Reply 19 (citing Ex. 1005, 8:55–59). We agree with Patent Owner that this motivation suffers from hindsight bias as it is the same motivation disclosed in the ʼ721 patent itself for securing public keys behind a tamper resistant barrier. Ex. 1001, 14:23–28 (“In addition, maintaining the ‘public’ key within a tamper resistant environment forecloses the significant threat that the owner of protected processing environment 108 may himself attack the environment.”). Petitioner does not provide evidence that the motivation of preventing the user themselves from replacing the public key was a known problem in the industry or that it stems from either Chang or Stefik. Without such evidence, we conclude that Petitioner’s articulated reason for reconstruction. Sci. Plastic Prod., Inc. v. Biotage AB, 766 F.3d 1355, 1359 (Fed. Cir. 2014) (“The pertinence of the reference as a source of solution to the inventor’s problem must be recognizable with the foresight of a person of ordinary skill, not with the hindsight of the inventor’s successful achievement.”).” slip op. at 47
- Expert testimonyPetitioner expert creditedOther
“parties, we are persuaded that Arnold discloses limitation (c) of claim 9. Arnold discloses an adapter card with a secured area. Ex. 1004, 5:49–51 (describing that the microprocessor, memory, and cryptographic functions of Arnold’s cryptographic system are “housed within a secured area or module” of an adapter card); Pet. 49–50. Arnold describes the secured area of its adapter card as an area “where data is protected from disclosure” (Ex. 1004, 5:10) and “which is protected from physical and direct electrical access” (Ex. 1004, 10:47–48). Pet. 49–50. These disclosures indicate that the secured area of Arnold’s adapter card is a “tamper resistant barrier” that prevents the data stored within from read access and, therefore, keeps the data “hidden from the user” as recited in limitation (c). We also credit Dr. Chatterjee’s testimony that, based on Arnold’s description of the secured area of the adapter card, the secured area forms a tamper resistant barrier that keeps data stored within, hidden from the user. Ex. 1002 ¶¶ 141–144 (citing Ex. 1004, 3:56–57, 5:9–12, 5:52–53, 6:13–32, 6:28–30, 6:51–52, 6:55–59). Arnold makes clear that the “secured area of the card . . . contains the public key KPU” (Ex. 1004, 6:51–52) and that “said public key (KPU) is stored within said secured area.” Ex. 1004, 12:25; see also id. at 12:42 (“means for providing a public key (KPU) within said secure areas”); Pet. Reply 9. Dr. Chatterjee’s testimony, which we determine to be credible, also supports Petitioner’s contention that Arnold’s public key is within the secured area of Arnold’s adapter card. Ex. 1002 ¶ 143 (“The public key is secured behind a tamper resistant barrier and therefore hidden from the user.”). in the secure area of Arnold’s adapter card and that (2) the secure area protects data from disclosure and prevents physical and direct electrical access.5 Thus, we agree with Petitioner that Arnold’s public key is “secured behind a tamper resistant barrier and therefore hidden from the user” as recited in claim 9.” slip op. at 33
- Skill levelSkill level petitioner adoptedDecided for petitioner
“The parties’ proposals do not differ in any meaningful way to the issues in dispute. We adopt Petitioner’s articulation of the level of ordinary skill in the art, except that we delete the qualifier “a minimum” to eliminate vagueness as to the appropriate level of education. The qualifier expands the range without an upper bound, i.e., encompassing a Ph.D. degree and beyond, and thus does not meaningfully indicate the level of ordinary skill in the art. This definition of a POSITA is supported by the testimony of Dr. Chatterjee and is commensurate with the level of ordinary skill as reflected in the prior art and the ’721 patent. We note, however, that our analysis would be the same under either party’s definition of a POSITA.” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner argues the term “load module” recited in claim 9 should be construed as “executable code, such as a computer program or an applet, plus any associated data required for code execution.” Pet. 19. To support this proposed construction, Petitioner cites the Specification’s statements that “[l]oad modules may contain algorithms, data, cryptographic keys, shared secrets, and/or other information that permits a load module to interact with other system components,” and “[f]or a load module to operate and interact as intended, it must execute without unauthorized modification.” Id. (emphasis omitted) (quoting Ex. 1001, 3:28–35); see also id. at 19–20 (citing Ex. 1001, 4:36, 4:51–56, 5:34–39). Petitioner also points to the “Field of the Invention” section of the ’721 patent, which provides that “[t]he present invention relates to . . . techniques for certifying load modules such as executable computer programs or fragments [(called ‘applets’)] thereof as being authorized for use by a protected or secure processing environment.” Id. at 20 (alterations in original) (emphasis omitted) (quoting Ex. 1001, 1:17–28) (citing Ex. 1001, 2:33–37; Ex. 1002 ¶¶ 67–69). According to Patent Owner, Petitioner’s proposed construction is inconsistent with the construction adopted in co-pending litigation of the related matters, in which the term was construed to mean “executable code and any associated data.” PO Resp. 22 (citing Ex. 2007, 44). Nevertheless, Patent Owner contends that the term “load module” does not require construction and should be given its plain and ordinary meaning. Id. Patent Owner further asserts that construction of this term is not necessary to resolve the matters presently in dispute and that its arguments would apply equally under the construction of the co-pending litigation or under a plain and ordinary meaning of the term. Id. we agree with Patent Owner that no explicit construction of this phrase is necessary to resolve the disputes between the parties. 2. “associated digital signature” Patent Owner points out that “the District Court [for the Eastern District of Texas] adopted a construction of ‘associated digital signature’ as ‘a digital value, verifiable with a public key, that can be used to determine the source and integrity of the load module/executable.’” PO Resp. 21 (citing Ex. 2001, 1). Nevertheless, Patent Owner contends that the term “associated digital signature” does not require construction and that its arguments would apply equally under the District Court’s construction or a plain and ordinary meaning of the term. Id. at 23. Petitioner does not provide its own construction of the term “associated digital signature.” Based on the arguments presented by the parties, we agree with Patent Owner that no explicit construction of this term is necessary to resolve the disputes between the parties.” slip op. at 14
Patent outcomesUS 6,157,721 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,157,721 - Stahls’ Inc. v. Jodi A. Schwendimann, F/K/A Jodi A. Dalvey, And Nucoat, Inc.Some claims unpatentablePTAB · Dec 14, 2021 · IPR2020-01122 · APJ Michelle N Ankenbrand · IPR · Final written decision
Claims 1–15 and 18 are unpatentable as obvious; claims 16 and 19 were not shown unpatentable because the asserted combinations did not establish required limitations.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“B. Level of Ordinary Skill in the Art In the Decision on Institution, we determined that a person of ordinary skill in the art at the time of the invention of the ’475 patent would have had “a Bachelor’s degree in Chemistry, Chemical Engineering, Imaging Technology or Material Science with at least one year of experience in coating technologies and imaging technologies, or at least five years of work experience in the field of coating technologies and imaging technologies.” DI 8 (adopting Dr. Ellison’s description of the level of ordinary skill in the art). For purposes of this Final Written Decision, we maintain our determination from the Institution Decision because neither party disputes that determination and that level of ordinary skill is consistent with the record. See Resp. 20–21; see generally Reply.” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“We decline to adopt Patent Owner’s proposed construction, which departs from the constructions in the Arkwright Lawsuit and the Delaware Lawsuit, which both require actual melting, not just softening, and construe “mix” to have its plain and ordinary meaning. Ex. 1038, 17; Ex. 1045, 8–11. Accordingly, we maintain our construction of the term “white layer” from the Institution Decision. Further, to the extent Patent Owner argues that our construction of “white layer” requires an actual transfer of an image onto a substrate (for example, after printing, using heat), we disagree. See, e.g., Reply 5; Tr. 32:15–33:19, 46:15–49:25. Although we construe the term “white layer” as comprising a polymer that melts and mixes “during application,” this merely reflects a property of the polymer that occurs, for example, once heat is applied to an image transfer sheet. It does not mean that transferring an image from a sheet to a substrate must occur to satisfy claims 1 and 13. We discuss this in more detail below with respect to our construction of the preamble of claims 1 and 13, and in our prior art analysis of these claims. We note, however, that Patent Owner states that “the parties’ disputes with respect to the construction of the ‘white layer’ make no difference to the Board’s resolution of this matter.” Resp. 23.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“steps. Ex. 1012, 12:42–67. In its Response, Patent Owner argues that the order of the method steps, i.e., “providing an ink-jet transfer article,” “wherein the substrate member is peeled away,” “wherein the opaque first layer and the second layer are applied to the dark-colored or black receiving member,” and “wherein heat is applied” is sequential. Resp. 23–24. Patent Owner explains that “[t]his is because the Claim requires ‘that received indicia face upwards,’” and “[i]f one were to place the transfer so that received indicia faces upwards, but not remove the backing paper before applying heat, then the backing paper (sandwiched between the fabric and the transfer) would prevent the transfer from adhering to the fabric.” Id. In its Reply, “Petitioner does not dispute Patent Owner’s position that the step of ‘peeling’ the substrate is performed before the step of applying the opaque layer and second layer to the receiving member and the steps recited thereafter.” Reply 2. Both parties agree that the steps of method claim 19 must be performed in sequential order. Thus, we need not construe this aspect of the claim language because it is not in controversy. Nidec, 868 F.3d at 1017.” slip op. at 13
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner
“Owner waited until the Sur-reply to address this issue with any level of specificity, which calls into question the timeliness of its argument. See PTAB Consolidated Trial Practice Guide (“CTPG”) (Nov. 2019) 73–74, available at https://www.uspto.gov/TrialPracticeGuideConsolidated (“Sur-replies should only respond to arguments made in reply briefs, comments on reply declarations testimony, or point to cross-examination testimony.”); Paper 10, 10 (“any arguments not raised in the response may be deemed waived”). Nevertheless, we disagree with Patent Owner that “ink-jet transfer” is essential to claims 1 and 13. Claims 1 and 13 are not method claims. Rather, as Petitioner argues, both claims are directed to an article of manufacture made of structurally complete components that does not require an ink-jet transfer, even though the article may be used for such a purpose. See Reply 2–4; see also Am. Med. Sys., Inc. v. Biolitec, Inc., 618 F.3d 1354, 1358–59 (Fed. Cir. 2010) (“A preamble is not regarded as limiting [] ‘when the claim body describes a structurally complete invention such that deletion of the preamble phrase does not affect the structure or steps of the claimed invention.’”) (citation omitted). The body of claim 1 does not reference “an ink-jet transfer” at all. See Ex. 1012, 11:35–41. And although claim 13 also recites that the article is “for transferring an image to a fabric material” and comprises a layer that is “ink-receptive,” these recitations are not essential to understanding the claim; nor do they show that the claim requires an ink-jet transfer. See id. at 12:13–14, 12:20–22. Rather, the first phrase merely recites an intended use of the article, and the second phrase merely describes a layer’s ability to receive ink. Accordingly, we determine that the preambles of claims 1 and 13 are not limiting. As such, Patent Owner’s arguments that the combined teachings of Akada and Takao fail to disclose or suggest an “ink-jet transfer” article are unpersuasive. See, e.g., Resp. 38, 41; Sur-reply 20–22. Even if we were to find the preambles limiting, Petitioner establishes that an “ink-jet transfer article” would have been obvious given the prior art disclosures. See Pet. 30, 45 (asserting that an ordinarily skilled artisan would have recognized that Akada’s and Takao’s thermal transfer printing method was interchangeable with an ink jet printing method); (citing Ex. 1001 ¶¶ 120–121; Ex. 1030, 3:26–29); Reply 24 (“Akada’s dye sublimation transfer sheets are ‘ink-jet transfer articles’ because they can effectively be printed on with ink-jet technology”), 29 (citing Ex. 1039 ¶ 27; Ex. 1019, 7:63–8:4) (“Takao itself teaches that its thermal transfer image-receiving sheet may receive the image in the form of a ‘hot melt ink layer of colorant, such as a pigment’”).” slip op. at 23
Patent outcomesUS 7,766,475 mixedClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,766,475 - PTAB · Dec 14, 2021 · IPR2021-01029 · APJ Jo-Anne M Kokoski · IPR · Institution
The Board instituted IPR on claims 1–7 and 12–14, finding a reasonable likelihood that Atarashiya anticipates them because the claims likely lack the parent application's written-description support.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review is authorized by statute when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314 (2018); see also 37 C.F.R. § 42.4 (2021). Upon consideration of the Petition, the Preliminary Response, the Reply, the Sur-reply, and the evidence of record, we determine that Petitioner has established a reasonable likelihood of prevailing with respect to the unpatentability of at least one claim of the ’654 patent, and we decline to exercise our discretion to deny institution. Accordingly, for the reasons that follow, we institute an inter partes review of claims 1–7 and 12–14 of the ’654 patent.” slip op. at 2
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“on the current record, we find that Petitioner has sufficiently met its burden to show, for purposes of institution, that the Parent Application does not reasonably convey to a person of ordinary skill in the art that the inventor was in possession of a liquid crystal device that has both (1) a pixel electrode as the second electrode and a common electrode as the first electrode, and (2) a light shielding film configured to overlap with the second electrode (i.e., the pixel electrode) which is bent in plan view, as required by independent claims 1 and 14.” slip op. at 14
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date, deniedDecided for petitioner
“On the present record, we are persuaded that Petitioner has made a sufficient threshold showing that limitations [1.12] and [1.13] in independent claim 1 (and the similar limitations in independent claim 14) lack written description support in the Parent Application. Accordingly, we determine that Petitioner has established a reasonable likelihood that it would prevail in showing that the challenged claims in the ’654 patent are not entitled to the benefit of the March 4, 2009 filing date of the Parent Application. This determination is preliminary in nature and based on the record at this stage of the proceeding. We invite the parties to develop these arguments further at trial, to the extent permitted under our rules. D. Anticipation by Atarashiya Petitioner contends that claims 1–7 and 12–14 are unpatentable under 35 U.S.C. § 102 as anticipated by Atarashiya. Pet. 14, 26–64. Atarashiya published on September 10, 2009. Ex. 1004, code (43). As set forth above, we determine that Petitioner establishes a reasonable likelihood of prevailing in showing that the ’654 patent is not entitled to the March 4, 2009 filing date of the Parent Application. Accordingly, on the present record, there appears to be a reasonable likelihood that Atarashiya qualifies as prior art because it was published more than one year before the November 20, 2014 filing date of the ’654 patent. See Ex. 1001, code (22).” slip op. at 18
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference is prior artDecided for petitioner
“On the present record, we are persuaded that Petitioner has made a sufficient threshold showing that limitations [1.12] and [1.13] in independent claim 1 (and the similar limitations in independent claim 14) lack written description support in the Parent Application. Accordingly, we determine that Petitioner has established a reasonable likelihood that it would prevail in showing that the challenged claims in the ’654 patent are not entitled to the benefit of the March 4, 2009 filing date of the Parent Application. This determination is preliminary in nature and based on the record at this stage of the proceeding. We invite the parties to develop these arguments further at trial, to the extent permitted under our rules.” slip op. at 18
Claim construction§ 102 anticipation§ 112 disclosureDiscretionary denialcites PhillipsPatents in suitUS 9,310,654
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.