• Permobil, Inc. v. Pride Mobility Products CorporationAll claims unpatentable
  PTAB · Dec 31, 2014 · IPR2013-00411 · APJ Matthew R Clements · IPR · Final written decision

  Claims 1–10 are unpatentable as obvious over Goertzen and Hosino; claims 1 and 4–10 are also unpatentable as obvious over Goertzen and Mulhern ’420.

  RulingsFinal written decision

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

    “plate”(claim 1) In the Decision to Institute, we concluded that no express construction of “a forward-extending front arm rigidly extending from the mounting plate” was necessary. Dec. to Inst. 7–8. Neither party contests that conclusion, and nothing since our Decision to Institute indicates it should be changed. We maintain our conclusion that no express construction of “a forward-extending front arm rigidly extending from the mounting plate” is necessary.” slip op. at 6

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

    “Figures 3B depicts mounting plate 56 relative to drive wheel axis A-DW. However, the ’343 patent also discloses that: for conventional configurations having a motor that is perpendicular to the drive wheel axis (and requiring a right angle gearbox, which is not shown in the figures), the motor swings about the gearbox output shaft to impart motion to the front caster arm, as for example shown in U.S. Pat. No. 6,129,165. Ex. 1001, col. 9, ll. 20–25 (emphasis added). Figure 9 of the ’165 patent is reproduced below: Figure 9 depicts a side view of a power wheelchair according to the ’165 patent. The ’343 Patent describes motor 80 of Figure 9 as “perpendicular to the drive wheel axis” 24. As can be seen by a comparison of the figures, motor 80 of Figure 9 of the ’165 patent is oriented differently from mounting plate 56 of Figure 3B of the ’343 patent. Thus, the ’343 patent uses “perpendicular to the drive wheel axis” to refer to orientations other than the orientation of mounting plate 56 in Figure 3B.” slip op. at 7

  • Skill levelSkill level board ownDecided for patent owner

    “We are not persuaded that the level of ordinary skill in the art required at least three years of experience specific to obstacle-traversing and curb-climbing systems and suspensions, as Patent Owner contends. The problems identified by Patent Owner and the skills required—e.g., “analysis of the various forces and moments,” “understanding of moment arms,” “understand[ing] the effects on moments and forces,” (PO Resp. 28–29)— are within the ordinary skill of a person with an undergraduate degree in mechanical engineering. Moreover, we note that the named inventor of the ’343 patent—James Mulhern—testified, in a related reexamination, that a person of ordinary skill in the art would have had only “a B.S. in mechanical engineering or equivalent, or at least 3 years of experience in the field of designing powered wheelchairs for personal mobility.” Ex. 1026 ¶ 10 (emphasis added). Based on our review of the technology claimed in the ’343 patent and the description of the powered wheelchair set forth in the specification, we determine that a person of ordinary skill in the art would have had either (1) an undergraduate degree in mechanical engineering or an equivalent degree; or (2) at least three years of experience designing powered wheelchairs for personal mobility.” slip op. at 10

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner

    “deceleration, or doing any of the engineering that, according to him, would be necessary to compensate for the reduced stability caused by a lower pivot. PO Resp. 19–23. The question before us, however, is not whether Dr. Richter did the engineering necessary to combine the prior art into a functional prototype, but whether doing so would have been within the ability of a person of ordinary skill in the art at the time of the claimed invention. In that regard, we credit Dr. Richter’s testimony that a person of ordinary skill in the art would have known how to change various other parameters in order to achieve a stable version of the claimed invention. Ex. 2004, 185:23–186:14. Patent Owner asserts that the proposed modification is anything but routine (PO Resp. 23–25), but does not explain why such calculations would not have been within the ability of a person of ordinary skill in the art. For the foregoing reasons, we find that Petitioner has articulated sufficiently a reason with rational underpinnings for for combining the teachings of Goertzen and Hosino to achieve the wheelchair recited in the challenged claims.” slip op. at 19

  Patent outcomesUS 8,408,343 unpatentable
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 8,408,343
• Permobil, Inc. v. Pride Mobility Products CorporationAll claims unpatentable
  PTAB · Dec 31, 2014 · IPR2013-00407 · APJ Matthew R Clements · IPR · Final written decision

  Claims 1–13 are unpatentable under § 103: claims 1, 4–8, and 11–13 over Goertzen and Hosino; claims 2, 3, 9, and 10 over those references and Schaffner.

  RulingsFinal written decision

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

    “mounted to the frame such that the arm is capable of rotating about a pivot axis.” Pet. 6–7 (citing Ex. 1001, col. 7, ll. 47–48 (“A suspension arm 224 is pivotally mounted to the frame 3 at pivot 224A.”)). Patent Owner contends that Petitioner’s proposed construction “is vague because, when read in context of the rest of the claim language, it is unclear whether ‘a pivot axis’ in the construction is the recited ‘arm pivot axis’ or some different axis.” Prelim. Resp. 18. We are not persuaded by Patent Owner’s argument because each of claims 1 and 7 specifies that the arm is pivotably mounted to the frame “at an arm pivot axis.” However, we also are not persuaded by Petitioner’s argument that the patentee intended to give “pivotably mounted to the frame” a meaning other than its plain and ordinary meaning. Apart from the claims, the ’598 patent does not use the term “pivotably mounted,” and the portion of the ’598 patent cited by Petitioner describes a suspension arm as “pivotally mounted,” not “pivotably mounted.” Ex. 1001, col. 7, ll. 47–48. Thus, we conclude that “pivotably mounted to the frame” does not require express construction. slip op. at 7

  • Skill levelSkill level board ownDecided for petitioner

    “We are not persuaded that the level of ordinary skill in the art required at least three years of experience specific to curb-climbing systems, as Patent Owner contends. The problems identified by Patent Owner and the skills required—e.g., “analysis of the various forces and moments,” “understanding of moment arms,” “understand[ing] the effects on moments and forces,” (PO Resp. 29–30)—are within the ordinary skill of a person with an undergraduate degree in mechanical engineering. Moreover, we note that the named inventor of the ’598 patent—James Mulhern—testified, in a related reexamination, that a person of ordinary skill in the art would have had only “a B.S. in mechanical engineering or equivalent, or at least 3 years of experience in the field of designing powered wheelchairs for personal mobility.” Ex. 1028 ¶ 10 (emphasis added). Based on our review of the technology claimed in the ’598 patent and the description of the anti-tip systems for powered vehicles set forth in the specification, we determine that a person of ordinary skill in the art would have had either (1) an undergraduate degree in mechanical engineering or an equivalent degree; or (2) at least three years of experience designing powered wheelchairs for personal mobility.” slip op. at 9

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “Patent Owner also faults Dr. Richter for not analyzing declines or deceleration, or doing any of the engineering that, according to Dr. Richter, would be necessary to compensate for the reduced stability caused by a lower pivot. PO Resp. 19–24. The question before us, however, is not whether Dr. Richter did the engineering necessary to combine the prior art into a functional prototype, but whether doing so would have been within the ability of a person of ordinary skill in the art at the time of the claimed invention. In that regard, we credit Dr. Richter’s testimony that a person of ordinary skill in the art would have known how to change various other parameters in order to achieve a stable version of the claimed invention. Ex. 2004, 185:23–186:14. Patent Owner asserts that the proposed modification is anything but routine (PO Resp. 24–26), but does not explain why such calculations would not have been within the ability of a person of ordinary skill in the art. For the foregoing reasons, we are persuaded Petitioner has articulated sufficiently a reason with rational underpinnings for combining the teachings of Goertzen and Hosino to achieve the wheelchair recited in the challenged claims.” slip op. at 18

  Patent outcomesUS 8,408,598 unpatentable
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 8,408,598
• International Business Machines Corporation v. Intellectual Ventures II LLCRehearing denied
  PTAB · Dec 23, 2014 · IPR2014-00673 · APJ Kristen L Droesch · IPR · Rehearing

  The Board denied rehearing of the decision declining institution on claims 23–27, 29, 30, 32, 33, and 36–40 because the Petition did not adequately explain its prior-art arguments.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. STANDARD OF REVIEW In its request for rehearing, the dissatisfied party must identify, specifically, all matters the party believes the Board misapprehended or overlooked, and the place where each matter was addressed previously. 37 C.F.R. § 42.71(d). Upon a request for rehearing, the decision on a petition will be reviewed for an abuse of discretion. 37 C.F.R. § 42.71(c).” slip op. at 2

  • BurdenInstitution denied merits

    “declaration in the claim charts at pages 19, 21, 25, 27, 28, and 30 of the Petition. Pet. 19, 21, 25, 27, 28, and 30. The citations to the specific paragraphs of the Declaration appear in the claim chart, and take the form of “(See Ex. 1001, ¶¶ 105-107),” “(See Ex. 1001, ¶¶ 114–117),” “(See Ex. 1001, ¶¶ 143–146),” “(See . . . Ex. 1001, ¶¶ 154–157),” “(See Ex. 1001, ¶¶ 165–169),” “(See Ex. 1001, ¶¶ 178–180),” and “(See . . . Ex. 1001, ¶¶ 196–199).” Id. The Petition does not include a detailed explanation of the significance of Mr. Rosenblatt’s Declaration, as required by 37 C.F.R. § 42.22(a)(2). See id. Nor does Mr. Rosenblatt’s testimony explain how the relied upon language in Digibox discloses the limiting access to unprotected data limitation. Based on Petitioner’s arguments in its Request for Rehearing, Petitioner alleges that we overlooked the evidence in Mr. Rosenblatt’s declaration because we did not incorporate the arguments and explanations from the cited paragraphs of Mr. Rosenblatt’s declaration into the Petition. Contrary to Petitioner’s arguments, however, our rules state that arguments must not be incorporated by reference from one document into another document. 37 C.F.R. § 42.6(a)(3). Because the Petition did not include a detailed explanation of the significance of paragraphs 105–107, 114–117, 143–146, 154–157, 165–169, 178–180, and 196–199 of Mr. Rosenblatt’s declaration, and because arguments must not be incorporated by reference from Mr. Rosenblatt’s declaration into the Petition, we did not abuse our discretion in denying institution of inter partes review of claims 24, 25, 30, 32, 33, 36, and 38 as anticipated by Digibox.” slip op. at 4

  None
  Patents in suitUS 6,314,409
• International Business Machines Corporation v. Intellectual Ventures II LLCRehearing denied
  PTAB · Dec 23, 2014 · IPR2014-00672 · APJ Kristen L Droesch · IPR · Rehearing

  The Board denied IBM’s rehearing request, leaving institution denied for claims 1–11 and 13–21 because the petition did not adequately explain how Digibox disclosed the disputed limitation.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “specifically, all matters the party believes the Board misapprehended or overlooked, and the place where each matter was addressed previously. 37 C.F.R. § 42.71(d). Upon a request for rehearing, the decision on a petition will be reviewed for an abuse of discretion. 37 C.F.R. § 42.71(c).” slip op. at 2

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

    “21, the Petition does not explain how Digibox’s disclosure of access rules that can designate who may unlock a DigiBox, together with Digibox’s disclosure of encrypted (i.e., protected) digital information contained in the Digibox, discloses limited or controlled access to an unprotected (i.e., unencrypted) form of the protected portions of the data, as required by claims 1 and 21. In effect, Petitioner’s arguments in the Request for Rehearing allege that we misapprehended the evidence in the Petition because we did not fit together Petitioner’s dispersed puzzle pieces of quotations and disclosures from Digibox. Contrary to Petitioner’s arguments, however, our rules state that each petition must include a detailed explanation of the significance of the evidence, and must specify where each element of the claim is found in the prior art relied upon. 37 C.F.R. §§ 42.22(a)(2), 42.104(b)(4). The Petition does not include a detailed explanation of the significance of Digibox’s disclosure of access rules that can designate who can unlock the Digibox, and does not specify where the disputed limitations of claims 1 and 21 are found in Digibox. But, as we discussed above, even if Digibox did include sufficient disclosure, we do not see how the newly cited portions of Digibox meet the disputed limitations of claims 1 and 21. Thus, we did not abuse our discretion in denying institution of inter partes review of the claims based on Digibox.” slip op. at 3

  • PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Denied

    “Contrary to Petitioner’s apparent invitation, the members of the Board deciding an institution matter do not, under 35 U.S.C. § 6(c), select themselves, and, similarly are not granted authority to select other Board members to decide the matter, upon request of a party or otherwise. See Apple Inc. v. Rensselaer Polytechnic Instit., Case IPR2014-00319, slip. op. 2 n.1 (PTAB Dec. 12, 2014) (Paper 20) (expanded panel) (per curiam). As indicated in the Standard Operating Procedure, the Chief Judge, on behalf of the Director, may act to expand a panel on a “suggestion” from a judge or panel. BPAI SOP 1 at 1. The Standard Operating Procedure creates “internal norms for the administration of the Board” but “does not create any legally enforceable rights.” Id. Accordingly, we cannot grant Petitioner’s request for rehearing by an expanded panel. We further note that our application of 37 C.F.R. §§ 42.6(a)(3), 42.22(a)(2) and 42.104(b)(4) in the case before us is bound to the specific facts of this case, and is consistent with the application of these rules in the expanded panel decision in Cisco Systems, Inc. v. C-Cation Technologies, LLC, Case IPR2014-00454 (PTAB Aug. 29, 2014) (Paper 12). II. DECISION ON REHEARING Petitioner’s request for rehearing is denied and request for panel expansion is dismissed.” slip op. at 6

  None
  Patents in suitUS 6,314,409
• Fidelity National Information Services, Inc. v. Checkfree CorporationAll claims unpatentable
  PTAB · Dec 22, 2014 · CBM2013-00030 · APJ Brian J Mcnamara · CBM · Final written decision

  Claims 1–21 are unpatentable under § 101 because they claim an abstract payment-intermediation concept implemented with generic computer functions.

  RulingsFinal written decision

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

    “BACKGROUND On December 23, 2013, we entered a Decision to Institute a covered business method patent review, Paper 16 (“Dec. to Inst.”), of U.S. Patent No. 7,853,524 B2 (“the ’524 Patent”) on the grounds that claims 1–21 do not recite patent-eligible subject matter under 35 U.S.C. § 101.” slip op. at 2

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

    “terms “electronic bill” and “EBP” do not even appear in the specification, Petitioner argues that Patent Owner is attempting to recast abstract ideas recited in the ’524 Patent claims in a manner that requires machines or transformations. Pet. Reply 2, 6. We agree with Petitioner that Patent Owner’s construction arguments attempt to read into the claims features that are not recited in them. For example, although there is no EBP system mentioned in the claims, citing the testimony of its expert, Dr. John Kelly, Patent Owner argues that a payment request is captured through an automated interaction with a user over a telephone or is conveyed by transferring data to the EBP system over a data network from a computer. PO Resp. 21–22. As discussed below, we decline to alter any of the constructions we applied in our Decision to Institute.” slip op. at 4

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

    “Merchant credit limit associated with a payee Patent Owner contends that our construction of the “merchant credit limit associated with a payee” as the maximum amount of credit a merchant extends to a payer is contrary to the plain language of the claims because the limit is associated with the payee. PO Resp. 51. Our construction is consistent with the limit being associated with the payee, i.e., the party to whom the payment is made. Patent Owner’s proposed construction, “a value reflecting the credit limit used by the EBP system which is associated with a particular payee,” PO Resp. 52, reads into the claim an extrinsic EBP system not discussed in the specification. In addition, the value reflecting the credit limit is the amount of credit a payee, i.e., a merchant, extends to a payer. Claims 1, 11, and 21 each recite comparing a payment amount associated with the received request, i.e., the request received on behalf of the payer, to a merchant credit limit associated with the payee. The only credit limits described in the specification are limits on the amount of credit extended to a payer. Although the specification describes a merchant credit limit, it does not describe specifically such a limit associated with the payee. The specification describes comparing the payment amount to a merchant credit limit, and making the payment as an electronic payment or a service provider check, if the payment amount is under a specified amount. Ex. 1001, col. 5, l. 65–col. 6, l. 5. Any amount within the merchant’s (i.e., the payee’s) credit limit is added to the consumer’s (i.e., payer’s) monthly ACH balance, and any transaction can be compared to the consumer’s credit limit parameters stored in a database. Id. at col. 6, ll. 5–10. The specification also describes releasing the payment as a draft written on the consumer’s account, rather than the service provider’s account, if the payment amount exceeds the consumer’s, i.e., the payer’s, credit limit. Id. at col. 6, ll. 10– 16. Because the consumer’s credit limit described in the specification protects the service provider, id. at col. 5, ll. 35–37, 65–66, it is a limit associated with the service provider rather than the payee. Claims 1, 11, and 21, however, recite the merchant credit limit associated with the payee. Because each merchant may extend a different amount of credit to each customer, the merchant credit limit associated with the payee limitation appears to require the service provider computer to select a payment means based on comparing the requested payment amount to the amount of credit the merchant, i.e., the payee, extends to the payer. That is, the amount of the payment is compared to the payer’s credit limit with the payee. In any case, as discussed below, this limitation is not material to our determination of the issues under 35 U.S.C. § 101.” slip op. at 8

  • Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionUnpatentable

    “and 21 of the ’524 Patent recites a method or apparatus in which a service provider receives a request to pay a payee, selects a form of crediting the payee based on comparing the payer’s account number to the payee’s merchant account scheme and the payment amount to a merchant credit limit associated with the payee, and directs the payment to the payee in the selected form. Thus, each of the independent claims is drawn to a computer-implemented process or apparatus in which a third party intermediary, i.e., the payment service provider, receives a request to make payment, applies certain criteria to determine what form of payment to use, and then directs the payment to the payee in that form. In Alice, the Supreme Court considered claims that, on their face, were drawn to the fundamental economic concept of exchanging financial obligations between two parties using a third-party intermediary to mitigate settlement risk. The Court, concluded that, like the hedging in Bilski, the claims were drawn to an “abstract idea” beyond the scope of § 101. Alice Corp., 134 S. Ct. at 2355–57.1 In the ’524 Patent, the service provider intermediates payment between the payer and the payee, acting much like the third party intermediary in Alice. The payment service provider mitigates settlement risk by crediting the payee or issuing a check to the payee drawn on the service provider’s funds, or in other circumstances, issuing a draft drawn on the payer’s funds, i.e., determining the form of payments based on the comparisons recited in the claims. Ex. 1001, col. 5, l. 25–col. 6, l. 15. The computer implementation associated with comparing the account number and 1 In Bilski v. Kappos, 561 U.S. 593 (2010) the Court found upatentable, as abstract ideas, claims drawn to hedging against the financial risk of commodity price fluctuations where the claims recited the steps of initiating a series of financial transactions between commodity providers and consumers, identifying market participants with a counterrisk for the same commodity and initiating a series of risk balancing transactions between those market participants and the commodity provider. the credit limit are incidental to the fundamental economic concept of having a third party intermediate a settlement either by crediting the payee from the third party’s funds (as in a credit transaction) or from the payer’s funds (as when the amounts exceed the payer’s credit limit with the service provider). Thus, we conclude that each of independent claims 1, 11, and 21 is directed to an abstract concept.” slip op. at 12

  Patent outcomesUS 7,853,524 unpatentable
  Claim construction§ 101 eligibilitycites Alice · Mayo · Bilski
  Patents in suitUS 7,853,524
• Metavante Corporation / Fidelity National Information Services, Inc. v. Checkfree CorporationAll claims unpatentable
  PTAB · Dec 22, 2014 · CBM2013-00032 · APJ Brian J Mcnamara · CBM · Final written decision

  Claims 1–60 are unpatentable under § 101 because they claim an abstract intermediary function implemented with routine computer activity.

  RulingsFinal written decision

  • ExcludeMotion to exclude, deniedDenied

    “Petitioner’s expert Michael Shamos. Paper 41 (“Mot. to Exclude”). Petitioner opposes Patent Owner's Motion to Exclude on the basis that these statements Patent Owner moves to exclude are proper rebuttal to Patent Owner's experts. Paper 42 (“Opp. to Mot. to Exclude”). Our Final Written Decision does not cite or rely on any of the subject matter Patent Owner seeks to exclude. Therefore, we dismiss Patent Owner’s Motion to Exclude.” slip op. at 23

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

    “We agree with Petitioner. Claim 1 recites the single step of executing computer implemented instructions with one or more processors. Claim 1 recites that those instructions include ones in which the clearinghouse receives a payment request (or a request to add a payee to a payer’s pick list), accesses billing information stored in a database, identifies payee bill presentment information from the accessed information, and generates and transmits to the payer a notification of the bill presentment information.1 Although the one or more processors may also execute instructions to perform routine ancillary functions for the central clearinghouse to receive the request, access the database and transmit the information, there are no such instructions or structures recited in claim 1. Claim 1 of the ’749 Patent does not recite any structure for the bill presentment and payment central clearinghouse—nor does claim 1 recite any particular software instructions, any particular processors, any particular configuration or interconnection of the recited “one or more processors,” or any other structure to execute the claimed functions called for in the instructions. Thus, the bill presentment and payment central clearinghouse in claim 1 must be construed without structural limitations, other than being programmed to carry out the recited functions.” slip op. at 5

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

    “The ’749 Patent describes the payee-pick-list as a list of payees the user may plan to pay electronically and states that each user’s individual list is stored in the form of a database in a memory associated with the central clearinghouse station. Ex. 1001, col. 16, ll. 49–54. We disagree with Patent Owner’s characterization of the payee-pick-list as a data structure merely because it is used directly by the programmed central clearinghouse computer system. PO Resp. 40. Claim 1 recites receiving a request to add a payee to a pick-list associated with the payer, but does not recite any limitations concerning the pick-list. The specification refers to a database known as a payee-pick-list that includes certain information such as payee identifiers, street addresses, cities, states, zip codes, phone numbers and consumer account numbers. Ex. 1001, col. 16, 61–65. Nothing in this list of common information associated with the payee requires any particular data structure. Thus, we do not import a data structure limitation into the construction of "payee-pick-list” or "pick-list."” slip op. at 7

  • Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionUnpatentable

    “patentable subject matter. First, we determine whether the claims at issue are directed to one or more patent-ineligible concepts, i.e., laws of nature, natural phenomenon and abstract ideas. Id. at 2355 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1296–96 (2012)). If so, we then consider whether the elements of each claim, both individually and as an ordered combination, transform the nature of the claim into a patent-eligible application to ensure that the patent in practice amounts to significantly more than a patent upon the ineligible concept itself. Id. Thus, the first step in our analysis is to consider whether the claims of the ’749 Patent recite a patent-ineligible concept. Patent Owner describes the central clearinghouse as a necessary intermediary between payers and payees interacting with each user station and handling EBPP interactions between thousands, if not millions, of such stations, which themselves are computers. Id. at 22. In Alice, the Supreme Court considered claims drawn to a method of exchanging financial obligations between two parties using a third-party intermediary to mitigate settlement risk and concluded that on their face, claims drawn to the concept of an intermediated settlement, like the hedging in Bilski, is an “abstract idea” beyond the scope of § 101. Id. at 2355–57.2 We conclude that the claims of the ’749 Patent, which are directed to a clearinghouse that acts as an intermediary between a payer and the payee by notifying the payer about payee bill presentment information, are not directed to patent-eligible subject matter. The steps recited in claim 1, and in each 2 In Bilski v. Kappos, 561 U.S. 593 (2010), the Supreme Court found unpatentable, as abstract ideas, claims drawn to hedging against the financial risk of commodity price fluctuations where the claims recited the steps of initiating a series of financial transactions between commodity providers and consumers, identifying market participants with a counter-risk for the same commodity and initiating a series of risk balancing transactions between those market participants and the commodity provider. of independent claims 20, 40, 59, and 60, are carried out by a clearinghouse that receives a request from a payer to provide payee information or add a payee to the payer’s pick-list. The claims recite receiving a request and are not limited to any particular number of such requests. The clearinghouse retrieves the payee information from a database and generates and transmits a responsive notification message to the payer. Thus, independent claims 1, 20, 40, 59, and 60 are drawn to the patent-ineligible concept of executing instructions in which an intermediary receives a request, retrieves information from a database, and transmits the information to the requester.” slip op. at 9

  Patent outcomesUS 7,792,749 unpatentable
  Claim construction§ 101 eligibilitycites Alice · Mayo · Bilski
  Patents in suitUS 7,792,749
• Chicago Mercantile Exchange, Inc. v. 5th Market, Inc.All claims unpatentable
  PTAB · Dec 17, 2014 · CBM2013-00027 · APJ Michael R Zecher · CBM · Final written decision

  Claims 1–23 and 41–49 are unpatentable: claims 1–23 are indefinite, and claims 1–4, 6–23, and 41–49 are obvious; the motion to amend is denied.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for petitioner

    “considered, including “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citing Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986)). There is evidence in the record before us that reflects the knowledge level of a person with ordinary skill in the art. CME’s expert witness, Dr. Pirrong, attests that a person with ordinary skill in the art would be an individual who possesses the following: (1) a bachelor’s degree in computer science, or another quantitative field such as mathematics, statistics, economics, or finance; (2) two to five years of work experience in any one of the aforementioned areas; and (3) an understanding of the operation of markets for financial instruments, including computerized and electronic markets. Ex. 1005 ¶ 44.” slip op. at 24

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

    “We are not persuaded by 5th Market’s proposed claim construction of the claim phrase “external price feed” because its construction of “outside” the network is overly narrow. 5th Market does not direct us to a disclosure in the Specification of the ’419 patent that suggests “outside” the network should be limited to a marketplace trading, but not aggregating orders for, the same securities or items as the originating CORE trading engine, or a diverse marketplace that does not trade or aggregate the same securities or items, as the originating CORE trading engine. If a feature is not necessary to give meaning to what the inventor means by a claim term, it would be 15 “extraneous,” and should not be read into the claim. Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1249 (Fed. Cir. 1998); E.I. du Pont de Nemours & Co. v. Phillips Petroleum Co., 849 F.2d 1430, 1433 (Fed. Cir. 1988). We decline to adopt 5th Market’s construction of “outside” the network as the broadest reasonable interpretation, as it would import extraneous limitations into the claims, and it would be inconsistent with the Specification of the ’419 patent. 5th Market’s attempt to limit “outside” the network to the two types of marketplaces identified above is not necessary to give meaning to the claim phrase “external price feed,” and should not be read into the claims that recite this feature. We maintain that the broadest reasonable interpretation of the claim phrase “external price feed” is “price data received from outside of the conditional order transaction network.” As we explained in the Decision to Institute (Dec. 20–22), this claim construction is consistent with the ordinary and customary meaning of “external,” as would be understood by one with ordinary skill in the art, in light of the ’419 patent.” slip op. at 15

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)§112(f) appliesDecided for petitioner

    “When construing a means-plus-function limitation under 35 U.S.C. § 112 ¶ 6, 3 the corresponding structure of a means-plus-function limitation must be more than simply a general-purpose computer or microprocessor to avoid impermissible functional claiming, unless certain narrow exceptions concerning generic computer functions apply. Aristocrat Techs. Austl. Pty Ltd. v. Int’l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008); see In re Katz Interactive Call Proc. Patent Litig., 639 F.3d 1303, 1316 (Fed. Cir. 2011). That is, the specification must disclose “enough of an algorithm to provide the necessary structure under § 112, ¶ 6” or a disclosure that can be 3 Section 4(c) of the AIA re-designated 35 U.S.C. § 112 ¶ 6 as 35 U.S.C. § 112(f). Nonetheless, because the ’419 patent has a filing date before September 16, 2012 (the effective date of the AIA), we refer to the pre-AIA version of 35 U.S.C. § 112. 18 expressed in any understandable terms, e.g., a mathematical formula, in prose, or as a flowchart. Finisar Corp. v. The DirectTV Grp., Inc., 523 F.3d 1323, 1340 (Fed. Cir. 2008). Simply reciting a claimed function in the specification, and saying nothing about how the computer or processor ensures that such a function is performed, is not a sufficient disclosure for an algorithm which, by definition, must contain a sequence of steps. Blackboard, Inc. v. Desire2Learn, Inc., 574 F.3d 1371, 1384 (Fed. Cir. 2009). According to the Specification of the ’419 patent, Table 1 includes conditions that are available for input by subscribers, viewable by other subscribers, and executed by the system’s trading engine, e.g., the CORE trading engine illustrated in Figure 1. Ex. 1001, 17:20–23. Although the CORE trading engine is tantamount to a general purpose computer, there is no explicit disclosure that explains how the conditions included in Table 1 are used to compare orders. For instance, Table 1 includes, amongst other conditions, price, quantity, minimum quantity, cap, and a collar kill that may be used to compare orders. Id. at 17:25–18:20. Table 1, however, does not disclose a well-defined or otherwise recognizable sequence of steps that uses these conditions to compare orders. See Blackboard, 574 F.3d at 1384. Absent such a disclosure, we are not persuaded that the Specification of the ’419 patent discloses a specific algorithm that transforms an otherwise general purpose computer into a special purpose computer programmed to perform the recited function of “comparing.” See Finisar, 523 F.3d at 1340. 19 In summary, because Federal Circuit precedent dictates that the corresponding structure for performing a specialized function, as here, cannot just be a general purpose computer, the Specification of the ’419 patent fails to disclose sufficient structure for performing the recited function of “comparing.”” slip op. at 18

  • Disclosure Requirements (§112) › Definiteness (Nautilus)IndefiniteUnpatentable

    “Table 1, that purportedly identify the corresponding structure for performing the recited function of “comparing.” PO Resp. 76–77 (citing Ex. 1001, 17:20–18:20; Ex. 2008 ¶ 86). 5th Market argues that these disclosures in the Specification collectively amount to a structure in the form of an algorithm that transforms an otherwise general purpose computer into a special-purpose computer programmed to perform the recited function of “comparing.” Id. at 77–78 (citing Ex. 2008 ¶ 87). In its Reply, CME contends that the ’419 patent does not disclose an algorithm for comparing orders, nor does it explain how a computer may be programmed to compare algorithmic orders with algorithmic or non-algorithmic orders. Pet. Reply 15. As we explained in the claim construction section above, upon reviewing the disclosures in the Specification of the ’419 patent relied upon by 5th Market in its Patent Owner Response, the Specification of the ’419 patent fails to disclose sufficient structure for performing the recited function of “comparing.” In other words, the conditions included in Table 1 of the ’419 patent, by themselves, do not set forth a well-defined or otherwise recognizable sequence of steps for comparing orders and, therefore, do not amount to a specific algorithm that transforms an otherwise general purpose computer into a special purpose computer programmed to perform the recited function of “comparing.” See Blackboard, 574 F.3d at 1384; Finisar, 523 F.3d at 1340. Consequently, we conclude that CME has demonstrated by a preponderance of evidence that claims 1–23, each of 21 which recites the claim phrase “means for comparing,” are indefinite under § 112 ¶ 2.” slip op. at 21

  Patent outcomesUS 6,418,419 unpatentable
  Claim construction§ 103 obviousness§ 112 disclosurecites KSR · Graham
  Patents in suitUS 6,418,419
• Amneal Pharmaceuticals, LLC v. Supernus Pharmaceuticals, Inc.No claims unpatentable
  PTAB · Dec 9, 2014 · IPR2013-00371 · APJ Scott E Kamholz · IPR · Final written decision

  Claims 1–13 and 17–20 were not shown unpatentable as obvious over Ashley ’932 and Sheth because Sheth did not disclose a delayed-release portion or the claimed IR:DR ratios.

  RulingsFinal written decision

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

    “agree with Amneal that the broadest reasonable construction of “delayed release,” in light of the specification of the ’405 patent, is not limited to formulations requiring that there be no substantial release in the stomach. The portion of the ’405 patent specification upon which Supernus relies to support its narrower construction addresses properties of “enteric coated pellets,” not a delayed-release component. Ex. 1007, 7:56. The ’405 patent discloses formats other than enteric coated pellets, such as an “uncoated matrix tablet,” as being delayed-release components. Id. at 5:38–40 (“delayed-release portion can be . . . uncoated matrix tablet.”). Consequently, properties of enteric coated pellets do not address the full scope of “delayed release” as that term is used in the ’405 patent. We will not read the limitations of an embodiment, even a preferred embodiment, into the construction of a claim term that is plainly used elsewhere in the specification more broadly. In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). As Supernus concedes, Tr. 42:7–9, the ’405 patent does not provide an express definition of “delayed release.” We turn, therefore, to other evidence of how the term is understood and used by persons of ordinary skill in the art. We find, upon consideration of this evidence, that the term “delayed release” is used, more-or-less uniformly, to refer to formats that allow for release of a drug only after some delay following oral administration. See, e.g., Ex. 2058, 30 (quoted supra); Ex. 2047, 7 (defining “delayed release” as “release of a drug (or drugs) at a time other than promptly after administration”);4 Ex. 2016 ¶ 106 (citing definition of “delayed release” in Ashley ’854, quoted supra, with approval). Those definitions are consistent with one another, both parties and their experts cite them with favor, and we discern nothing in the use of the term “delayed release” in the ’405 patent specification that is inconsistent with those definitions or more limiting than them. For these reasons, we determine that the broadest reasonable construction of “delayed release,” consistent with the ’405 patent, is “release of a drug at a time other than immediately following oral administration.” See Ex. 2058, 30; Ex. 2047, 7; Ex. 1003, 11:4–6.” slip op. at 7

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

    “water-soluble polymer in the coating of Sheth’s secondary loading portion results in release of drug promptly after administration. See Ex. 2016 ¶ 172. Amneal does not cite credible evidence to refute Dr. Rudnic’s testimony. Although Dr. Rudnic conceded that there must be some lag while the polymer hydrates, we further credit his testimony that this lag, essentially the time required to wet the material, would not be considered a “delay.” See Ex. 1052, 248:3–5. We agree with Dr. Rudnic that dissolution, however rapid, necessarily requires some finite amount of time to allow interaction of the solvent and the solute. See Ex. 1005, 5:1–2. Amneal does not explain why we should not credit all of Dr. Rudnic’s testimony on this point. Because we credit Dr. Rudnic’s testimony, we agree with Supernus that Sheth’s secondary loading portion is not a “delayed release” portion. A “delayed release” format, when that term is construed to mean “release of a drug at a time other than immediately following oral administration,” specifically excludes formats that result in release of drug starting immediately after oral administration. To conclude otherwise would read the phrase “delayed release” out of the claim. See In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970) (all limitations of a claim must be considered when considering patentability over prior art). Amneal has not explained how there is any appreciable delay in the onset of drug release from the secondary loading portion once water in the patient’s saliva or gastric fluid has begun to solubilize the pH-insensitive polymer in the coating.6” slip op. at 13

  • ExcludeMotion to exclude, deniedDenied

    “MOTION TO EXCLUDE EVIDENCE Amneal moves to exclude Supernus Exhibits 2028, 2029, 2032–2034, 2039, 2049, 2050, 2147, 2149–2154, and 2156. Pet. Motion to Exclude 1. We dismiss Amneal’s motion as moot, because we do not rely on any of the objected-to evidence in our final decision. IV.” slip op. at 15

  Patent outcomesUS 8,394,405 not shown unpatentable
  Claim construction§ 103 obviousness
  Patents in suitUS 8,394,405
• Amneal Pharmaceuticals, LLC v. Supernus Pharmaceuticals, Inc.No claims unpatentable
  PTAB · Dec 9, 2014 · IPR2013-00368 · APJ Scott E Kamholz · IPR · Final written decision

  Amneal did not prove claims 1, 2, 5–15, and 19–22 unpatentable as obvious over Ashley ’932 and Sheth because Sheth did not disclose a delayed-release portion.

  RulingsFinal written decision

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

    “agree with Amneal that the broadest reasonable construction of “delayed release,” in light of the specification of the ’740 patent, is not limited to formulations requiring that there be no substantial release in the stomach. The portion of the ’740 patent specification upon which Supernus relies to support its narrower construction addresses properties of “enteric coated pellets,” not a delayed-release component. Ex. 1001, 7:47. The ’740 patent discloses formats other than enteric coated pellets, such as an “uncoated matrix tablet,” as being delayed-release components. Id. at 5:29–31 (“delayed-release portion can be . . . uncoated matrix tablet.”). Consequently, properties of enteric coated pellets do not address the full scope of “delayed release” as that term is used in the ’740 patent. We will not read the limitations of an embodiment, even a preferred embodiment, into the construction of a claim term that is plainly used elsewhere in the specification more broadly. In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). As Supernus concedes, Tr. 42:7–9, the ’740 patent does not provide an express definition of “delayed release.” We turn, therefore, to other evidence of how the term is understood and used by persons of ordinary skill in the art. We find, upon consideration of this evidence, that the term “delayed release” is used, more-or-less uniformly, to refer to formats that allow for release of a drug only after some delay following oral administration. See, e.g., Ex. 2058, 30 (quoted supra); Ex. 2047, 7 (defining “delayed release” as “release of a drug (or drugs) at a time other than promptly after administration”);3 Ex. 2016 ¶ 105 (citing definition of “delayed release” in Ashley ’854, quoted supra, with approval). Those definitions are consistent with one another, both parties and their experts cite them with favor, and we discern nothing in the use of the term “delayed release” in the ’740 patent specification that is inconsistent with those definitions or more limiting than them. For these reasons, we determine that the broadest reasonable construction of “delayed release,” consistent with the ’740 patent, is “release of a drug at a time other than immediately following oral administration.” See Ex. 2058, 30; Ex. 2047, 7; Ex. 1003, 11:4–6.” slip op. at 7

  • Expert testimonyPatent owner expert creditedDecided for patent owner

    “We credit Dr. Rudnic’s declaration testimony that inclusion of a water-soluble polymer in the coating of Sheth’s secondary loading portion results in release of drug promptly after administration. See Ex. 2016 ¶ 175. Amneal does not cite credible evidence to refute Dr. Rudnic’s testimony. Although Dr. Rudnic conceded that there must be some lag while the polymer hydrates, we further credit his testimony that this lag, essentially the time required to wet the material, would not be considered a “delay.” See Ex. 1052, 248:3–5. We agree with Dr. Rudnic that dissolution, however rapid, necessarily requires some finite amount of time to allow interaction of the solvent and the solute. See Ex. 1005, 5:1–2. Amneal does not explain why we should not credit all of Dr. Rudnic’s testimony on this point.” slip op. at 13

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

    “For this reason, we determine that Amneal has failed to show that Sheth discloses a “delayed release” portion. Amneal’s argument that Sheth discloses the claimed IR:DR ratio (or makes the claimed ratio reachable through routine experimentation) thus becomes untenable. Dr. Van Buskirk’s evidence concerning ratios in Sheth is premised on an assumption that Sheth’s secondary loading portion is a delayed release portion. See, e.g., Ex. 1022 ¶ 59 (“Additionally, the secondary loading coated pellets (the DR component) described in the ’748 patent . . .”). That assumption is unwarranted, for the reasons given above. Consequently, Sheth’s disclosure of ratios involving the secondary loading portion does not constitute disclosure of ratios involving a delayed release portion. Put another way, Amneal has failed to persuade us that the prior art it cites for disclosure of IR:DR ratios actually discloses such ratios. Without evidence that the claimed IR:DR ratio was known or could have been reached through routine experimentation, Amneal’s challenge fails. For the reasons discussed above, we conclude that Amneal has not” slip op. at 14

  • ExcludeMotion to exclude, deniedDenied

    “We dismiss Amneal’s motion as moot, because we do not rely on any of the objected-to evidence in our final decision. IV.” slip op. at 15

  Patent outcomesUS 8,206,740 not shown unpatentable
  Claim construction§ 103 obviousness
  Patents in suitUS 8,206,740
• Tandus Flooring, Inc. v. Interface, Inc.All claims unpatentable
  PTAB · Dec 8, 2014 · IPR2013-00333 · APJ Miriam L Quinn · IPR · Final written decision

  Claims 6-15, 20-39, and 43-58 were shown unpatentable over Pacione and the listed Kinoshita combinations; cancellation was granted for claims 1-5, 16-19, and 40-42, while substitute claims 59 and 60 were denied.

  RulingsFinal written decision

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

    “On the whole, we are not persuaded that the ordinary and customary meaning, under the broadest reasonable interpretation, of the “shear strength” limitation is limited to lateral movement or lateral gaps, because there is insufficient evidence that such a narrow interpretation is appropriate. See E-Pass 9 Ex. 1027 (Definition gap (n)(4), Webster’s Ninth New Collegiate Dictionary, 1986 (“a separation in space”); Definition gap (n)(1), Webster’s II New College Dictionary, 1996 (“an opening as in a wall”)). 10 See Ex. 2052, 102:3104:19. We note Patent Owner contends that Mr. Gray’s testimony is biased and contradictory. Paper 57, PO Mot. for Observations 2, 7. We also note that Petitioner responded to these contentions by showing testimony regarding the level of knowledge of Mr. Gray and that the testimony is consistent with Petitioner’s allegations that the word “gap” includes lateral separation, but does not exclude vertical separation. Paper 63, Pet. Resp. to PO Mot. for Observations 12, 910. We have taken Patent Owner’s contentions and Petitioner’s response into consideration when determining the weight accorded to Mr. Gray’s testimony. Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 1368 (Fed. Cir. 2003) (Where no explicit definition for the term “electronic multi-function card” was given in the specification, this term should be given its ordinary meaning and broadest reasonable interpretation; the term should not be limited to the industry standard definition of credit card where there is no suggestion that this definition applies to the electronic multi-function card as claimed, and should not be limited to preferred embodiments in the specification.). Turning to the disputed claim language, as we stated in our Decision on Institution, we determine that the word “sufficient” introduces a relative amount to the recited “shear strength.” The phrase “shear strength” is the capacity of a material to resist shear.11 And “shear” is “a strain resulting from applied forces that cause or tend to cause contiguous parts of a body to slide relatively to each other in a direction parallel to their plane of contact.”12 Applying the plain and ordinary meaning to the claim language, therefore, the layer of adhesive must have the adequate capacity to resist shear. The layer’s capacity, however, does not narrow the claimed function of including such a layer in the connector to prevent only lateral movement of adjacent tiles and lateral gaps from forming after installation. The plain language of the claims confirms this interpretation because the result of providing the “sufficient shear strength” at the adhesive layer is to 11 Definition shear strength, WEBSTER’S THIRD NEW INTERNATIONAL DICTIONARY, UNABRIDGED (1993), available at http://lionreference.chadwyck.com (Dictionaries/Webster’s Dictionary) (Exhibit 3001). 12 Definition shear, WEBSTER’S THIRD NEW INTERNATIONAL DICTIONARY, UNABRIDGED (1993), available at http://lionreference.chadwyck.com (Dictionaries/Webster’s Dictionary) (Exhibit 3002). prevent adjacent tiles from moving relative to the connector or each other. This claim language indicates that abutting tile edges are prevented from moving “in a direction parallel” to the plane of contact—which would include both lateral and vertical movement. For example, lifting may be prevented when providing a resistance to shear sufficient to allow for the horizontal strain caused by suction, traffic, and any other dragging force.” slip op. at 10

  • Skill levelSkill level board ownDecided for patent owner

    “We are persuaded that the level or ordinary skill in the art combines the knowledge of carpet tile installation and adhesive tape characteristics. The prior art of record, particularly Kinoshita, describes the solution of laying carpet tiles using adhesive tape pieces to avoid laying adhesive on the floor. Ex. 1006 ¶¶ 12, 5. Pacione also describes installation of carpet modules without substantial attachment to the floor. Ex. 1004, Abstract. Therefore, we agree with Patent Owner that the level of ordinary skill in the art includes knowledge of carpet tiles and their installation methods. We disagree with Patent Owner, however, in that the level or ordinary skill in the art would not include expertise in adhesive tape characteristics. See PO Resp. 18 (arguing that Dr. Jensen is not a POSITA because his expertise relates to pressure sensitive adhesive tapes). For instance, Kinoshita discloses the use of removable, single-side or double-sided adhesive tape that is pressed to the rear of the carpet tiles. Ex. 1006 ¶¶ 7–8, 12. Kinoshita recognizes that the adhesive must be of sufficient strength to stick to the rear of the carpet tile, but also allow for repositioning. Id. ¶ 12. Details of the backing for pressure sensitive adhesive tape are part of the prior art of record, such as Robinson (Ex. 1011). For example, Robinson describes the properties and characteristics to make the adhesive tape backing suitable for pressure-sensitive adhesive tapes. Id. at col. 1, l. 46col. 2, l. 44. Therefore, it is appropriate that we consider, as part of the level of ordinary skill in the art, knowledge of adhesive tape appropriate for carpet tile installations as described in Kinoshita, as well as the knowledge of the properties and characteristics of pressure-sensitive tapes suitable for the use in carpet tile installations.” slip op. at 15

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “Lastly, we credit the testimony of Dr. Tippett and Dr. Jensen in that the Kinoshita disclosure confirms the knowledge of a person of ordinary skill in the art regarding the use of adhesive tapes for carpet tile installations. For the reasons that follow, we are not persuaded by Patent Owner’s characterizations of their testimony that engineering adhesive tape for carpet tile installations was vastly complex or would involve extensive trial and error. See PO Resp. 2325. First, we acknowledge that Petitioner does not rely solely on Kinoshita as disclosing all the attributes of the adhesive tape. Indeed, the Dr. Tippett Declaration clarifies that his opinion relies on the disclosures of Kinoshita to the degree it describes the configuration and performance of the installed carpet units, e.g., a “floating” installation, edge-to-edge configuration, unitary installation, etc. Ex. 1018 ¶¶ 13.113.2. We credit Dr. Tippett, who has expertise and knowledge of carpet tile installations, when he declares that the installation described in Kinoshita would have no “gapping” at the seams, and, therefore, the tape, being single-sided, would have to include an adhesive that would resist movement of the tiles. Id. ¶¶ 13.313.5. It makes sense that a method of carpet tile installation for commercial or household use would aim for carpet tiles that, after installation, remain abutted. See Ex. 1006 ¶ 1 (“tile that is used in offices and homes”). Dr. Tippett’s Declaration further states that Kinoshita supports his conclusions of the basic requirements for the use of adhesive tape in a carpet tile installation. Ex. 1018 ¶ 13.6. To support his conclusions, Dr. Tippett cites to Kinoshita teaching pre-connected tiles, which are installed as a block of tiles. Id. For this installation to be successful, the adhesive tape of Kinoshita, according to Dr. Tippett, “must include an adhesive with sufficient shear strength and sufficient peel strength to prevent movement of the tiles relative to one another and/or the tape pieces.” Id. The Dr. Jensen Declaration also concludes that the teachings in Kinoshita confirm that a person of ordinary skill in the art would select an adhesive tape with the recited shear strength. First, Dr. Jensen opines that suitability for the intended purpose is a core consideration when selecting or designing tape for a given application. Ex. 1020 ¶ 17.2. His Declaration then lists the criteria to consider when selecting a tape that would maintain the Kinoshita carpet units connected and abutting (in an edge-to-edge configuration). Id. ¶¶ 17.317.5 (listing adhesive compatibility with the tile backing with suitability for the environment and duration of use, as well as providing sufficient wetting and adequate peel and adhesion). Once Dr. Jensen arrives at the basic requirements of an adhesive tape selection, he looks to Kinoshita once more to confirm that Kinoshita recognizes these requirements. Id. ¶¶ 17.617.11 (establishing that, because Kinoshita discloses multiple pre-connected tiles being handled as a block, the adhesive tape would need to have sufficient shear adhesion and peel adhesion to prevent the carpet tiles from pulling or twisting apart from each other while the tiles are moved). Based on the cited testimony, we are not persuaded that Petitioner is relying on a theory of inherency with regard to whether Kinoshita discloses the “sufficient shear strength” limitation. Therefore, the arguments by Patent Owner rebutting the alleged “inherency” are unpersuasive. See PO Resp. 2224. Petitioner relies on what Kinoshita teaches to a person of ordinary skill in the art. That person is a person of ordinary creativity, not an “automaton.” KSR, 550 U.S. at 421. We “can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” Id. at 418. Therefore, based on the evidence presented, we agree with Petitioner that Kinoshita teaches, to a person of ordinary skill in the art, the use of adhesive tape for carpet tile installations where the adhesive has “sufficient shear strength,” per our construction of this phrase.” slip op. at 31

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

    “teach the “sufficient shear strength” limitation. PO Resp. 2728. According to Patent Owner, the disclosure in Pacione is no more than a suggestion to try adhesive and is not an enabling disclosure. Id. We agree with Patent Owner that the “sufficient shear strength” limitation is recited as a property of the layer of adhesive. See id. at 28 (Patent Owner arguing that the rigidity and stability are characteristics of Pacione’s anchor sheets, not the adhesive). Nevertheless, the “sufficient shear strength” property results in connector that prevents adjacent tiles from moving relative to the connector or each other and thereby creating gaps between the adjacent tiles after installation. That is, an adhesive would have the requisite shear strength when the connector accomplishes the prevention of the relative movement that creates gaps. In Pacione, we find that the anchor sheets, the recited “connector,” are attached with a detachable attachment that could also be an adhesive. Ex 1004, col. 4, ll. 5155. With Pacione’s anchor sheets using the disclosed detachable attachment (including the adhesive option) the installed anchor sheets form a contiguous floor covering having sufficient rigidity and horizontal plane stability or shear force stability. Id. at col. 4, ll. 1520, col. 5, ll. 39. We find this disclosure particularly significant because it specifically attributes the shear force stability to the installed anchor sheets under the carpet pieces, i.e., the recited “connectors” with the layer of adhesive. It follows from this express disclosure of shear force stability that the installed carpet tiles are stable in the horizontal plane, such that their movement with respect to each other, and with respect to the anchor sheets, would be restricted. Patent Owner fails to point us to evidence that Pacione’s anchor sheets, under carpet tiles, exhibiting the disclosed shear force stability, do not prevent the recited relative movement that creates gaps as recited. As for the argument that Pacione is not enabled with regard to the disclosure of using adhesive in place of hook and loop, we have not been directed to facts sufficient to show that such a disclosure would not inform one of ordinary skill in the art how to make the claimed connector. See In re Donohue, 766 F.2d 531, 533 (Fed. Cir. 1985) (“Such possession is effected if one of ordinary skill in the art could have combined the publication’s description of the invention with his [or her] own knowledge to make the claimed invention.”). It is undisputed that Pacione discloses replacement of the hooks with adhesive. Patent Owner makes the point, however, that Pacione does not disclose the characteristics of the adhesive. PO Resp. 27. The question for us to decide is whether Pacione’s disclosure of adhesive is sufficiently enabled to allow a person of ordinary skill in the art to make the claimed connector. The lack of details regarding adhesive properties, however, does not negate that Pacione discloses the adhesive application together with anchor sheets that achieve shear force stability when installed. Furthermore, the testimony of Mr. Benny Wood, proffered by Patent Owner to support its contention, does not persuade us that disclosure of adhesive in Pacione is not enabling. Id. (citing Ex. 2017 ¶ 131). That testimony focuses on whether Pacione teaches an adhesive that would prevent lateral movement, a narrow view of the claims that we do not adopt per our claim construction discussion above. See Ex. 2017 ¶ 131. Furthermore, in his cross-examination, Mr. Wood did not dispel the notion that Pacione’s disclosure of adhesive would be sufficient, because his reasons for opining that the adhesive is not taught sufficiently are not relevant to the scope of the claim. For example, Mr. Wood” slip op. at 23

  Patent outcomesUS 8,381,473 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR
  Patents in suitUS 8,381,473

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.