- Foundation Medicine, Inc. v. Guardant Health, Inc.Rehearing deniedPTAB · Dec 20, 2019 · IPR2019-00637 · APJ Tina E Hulse · IPR · Rehearing
The Board denied rehearing, leaving institution denied because Petitioner did not show it had adequately supported the claimed ligation efficiency or a specific motivation to modify Schmitt.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“decision should be modified. Under 37 C.F.R. § 42.71(d), the request for rehearing must identify, specifically, all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. When rehearing a decision on a petition, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may arise if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if an unreasonable judgment is made in weighing relevant factors. In re Gartside, 203 F.3d 1305, 1315-16 (Fed. Cir. 2000).” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot reached
“ligation efficiency. Indeed, we expressly acknowledged it. See Dec. 14 (noting Petitioner’s argument that “tagging ‘at least 20% of the cfDNA molecules’ would have been obvious because ligation efficiency ‘could be improved using a variety of techniques’”). After reviewing Petitioner’s evidence and argument, however, we were not persuaded that it was sufficient. Id. Even if the relevance of ligation efficiency was well known to a person of ordinary skill in the art for the reasons stated by Petitioner, the Petition still fails to provide a specific motivation to modify Schmitt. As explained in the Decision, “even if techniques were known that could have improved ligation efficiency, Petitioner has not shown sufficiently why a person of ordinary skill in the art would have modified Schmitt to tag ‘at least 20%’ of the DNA molecules.” Dec. 15; see also Belden Inc. v. Berk- Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (“[O]bviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.”). That is, Petitioner’s motivation is “generic and bears no relation to any specific combination of prior art elements.” (Fed. Cir. 2012). As the Federal Circuit has explained, “knowledge of a problem and motivation to solve it are entirely different from motivation to combine particular references to reach the particular claimed method.” Innogenetics, N.V. v. Abbott Labs., 512 F.3d 1363, 1374 (Fed. Cir. 2008). It is not until its Rehearing Request that Petitioner specifically ties its ligation efficiency argument to Schmitt. Reh’g Req. 11. Specifically, Petitioner asserts that “[b]ecause it would have been desirable to improve the sequencing library’s diversity or representation of the genome, a [person of ordinary skill in the art] trying to detect genetic aberrations with the DCS method of Schmitt would have been motivated to modify the method of Schmitt to optimize sample preparation, e.g., improve ligation efficiency, based on the techniques known in the art.” Id. As evidenced by the lack of citation, Petitioner did not make this argument in its Petition. We, therefore, do not consider it on rehearing, as a request for rehearing is not an opportunity to present new arguments or evidence that could have been presented in the petition.” slip op. at 5
§ 103 obviousnessPatents in suitUS 9,902,992 - Hulu, LLC v. Sound View Innovations, LLCRehearing grantedPTAB · Dec 20, 2019 · IPR2018-01039 · APJ Scott R Boalick · IPR · Rehearing
The Board granted rehearing on printed-publication accessibility, finding a reasonable likelihood Dougherty was publicly accessible before the critical date, and remanded for consideration of institution on obviousness.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“We grant Petitioner’s request for rehearing. We conclude that, based on the totality of the evidence currently in the record, Petitioner has submitted evidence sufficient to establish a reasonable likelihood that the Dougherty reference was publicly accessible before the critical date of the challenged patent, and, thus Petitioner has established a reasonable likelihood that the reference qualifies as a printed publication. In view of this holding, we remand to the merits panel to determine whether Petitioner has demonstrated a reasonable likelihood that it will prevail with respect to at least 1 of the claims challenged in the Petition. See 35 U.S.C. § 314(a).” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Not reached
“reasonable likelihood that a reference is a printed publication. If trial is instituted, the petitioner will ultimately have the burden to prove that the reference is a printed publication by a preponderance of the evidence. We conclude that, based on the totality of the evidence currently in the record, Petitioner has established a reasonable likelihood that the Dougherty reference is a printed publication that was publicly accessible before the critical date of the challenged patent. V. ORDER It is hereby ORDERED that Request for Rehearing is granted to address the POP review issue; and FURTHER ORDERED that the matter is remanded to the original merits panel for further proceedings consistent with this opinion, including consideration of whether to institute a trial on the merits of the obviousness ground presented in the Petition.” slip op. at 21
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedInstituted
“institution, and based on the totality of the evidence to date, Petitioner has established a reasonable likelihood that Dougherty is a printed publication. The face of Dougherty bears a copyright date of 1990, a printing date of November 1992, and an ISBN date of 8/94. Ex. 1004, 4. In addition, the book is a textbook from an established publisher, O’Reilly, and a well-known book series. See Canon Br. 11–12 (quoting https://www.oreilly.com/about/history.html). As Canon asserts, the cover of Publisher’s Weekly stated (with respect to this series) that “The Internet Was Built With O’Reilly Books.” Id. Altogether, this is sufficient evidence to establish a reasonable likelihood that Dougherty is a printed publication that a publisher made available to the pertinent public prior to the October 1995 critical date.” slip op. at 19
§ 102 anticipationPatents in suitUS 5,806,062 - Cxloyalty, Inc. v. Maritz Holdings Inc.All claims unpatentablePTAB · Dec 19, 2019 · CBM2018-00037 · APJ Justin T Arbes · CBM · Final written decision
Claims 1–15 are unpatentable under § 101; the motion to amend is granted for proposed substitute claims 16–23, which were not shown unpatentable.
RulingsFinal written decision- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionUnpatentable
“does not remove the claim from the realm of abstract ideas. See Pet. 52–53; Reply 12; SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1168 (Fed. Cir. 2018) (holding that it “does not matter to [the conclusion that the claim is directed to an abstract idea] whether the information here is information about real investments,” as “even if a process of collecting and analyzing information is ‘limited to particular content’ or a particular ‘source,’ that limitation does not make the collection and analysis other than abstract” (citation omitted)). Further, the last two clauses of claim 1 that recite how the transaction is viewed from the perspectives of the participant and vendor system, respectively, merely express the “non-physical result” of the information transfers and confirm the abstract nature of the claimed subject matter. See Pet. 57. In fact, as to the vendor system clause, the Specification indicates that the vendor system transfers information no differently than it would for any other transaction. See Ex. 1001, col. 7, ll. 15–18 (disclosing that vendor system 208 responds to purchase request 216 “in the same way that it would respond to any other purchase request from a consumer that presents a credit card”).” slip op. at 35
- Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptStep2 no inventive conceptUnpatentable
“Our conclusion also is supported by the ’087 patent’s description of” slip op. at 41
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, grantedGranted
“transaction, . . . display[ing] an order message indicating the completion of the purchase transaction to the respective participant.” Mot., App’x A, 4. An example in which a judicial exception is not integrated into a practical application is when “an additional element adds insignificant extra-solution activity to the judicial exception.” Guidance, 84 Fed. Reg. at 55; Flook, 437 U.S. at 590 (holding that a step of adjusting an alarm limit variable was “post-solution activity”). Displaying an order message after the facilitated transaction has been completed amounts to insignificant post-solution activity, and does not support a conclusion that the abstract idea of claim 16 is integrated into a practical application.” slip op. at 75
- 101 substituteMixed
“transaction, . . . display[ing] an order message indicating the completion of the purchase transaction to the respective participant.” Mot., App’x A, 4. An example in which a judicial exception is not integrated into a practical application is when “an additional element adds insignificant extra-solution activity to the judicial exception.” Guidance, 84 Fed. Reg. at 55; Flook, 437 U.S. at 590 (holding that a step of adjusting an alarm limit variable was “post-solution activity”). Displaying an order message after the facilitated transaction has been completed amounts to insignificant post-solution activity, and does not support a conclusion that the abstract idea of claim 16 is integrated into a practical application.” slip op. at 75
Patent outcomesUS 7,134,087 unpatentable§ 101 eligibilitycites Alice · Mayo · Bilski · Berkheimer · EnfishPatents in suitUS 7,134,087 - Opec Engineering Co., Ltd. D/B/A Opecmade, Inc. v. Berkenhoff GmbHInstitution deniedPTAB · Dec 9, 2019 · IPR2019-01090 · APJ Christopher M Kaiser · IPR · Institution
The Board denied institution because the petition showed a reasonable likelihood on only a limited portion of the challenges, making review of all claims and grounds inefficient.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied discretionary otherInstitution denied
“that we should exercise our discretion to deny institution under § 314(a). As discussed above, the present Petition challenges six of the claims of the ’789 patent on five asserted grounds, and Petitioner fails to carry its burden with respect to three of those grounds and five of those claims. This leaves two grounds that, between them, challenge a single claim of the ’789 patent. Were we to institute trial on either (or both) of the remaining grounds, we would be required to consider at trial not only the challenge that those grounds present to the remaining claim, but also the challenges to the five claims and three grounds on which Petitioner fails to show a reasonable likelihood of prevailing. SAS Inst. Inc. v. Iancu, 138 S. Ct. at 1356. In exercising discretion, we are guided by the philosophy embodied in the statutory requirement to promulgate regulations for inter partes review that further “the efficient administration of the Office [and] the ability of the Office to timely complete proceedings.” 35 U.S.C. § 316(b). We also are guided by the requirement to construe our rules to “secure the just, speedy, and inexpensive resolution of every proceeding.” 37 C.F.R. § 42.1(b). Consistent with these policies, Office guidance explains that we may consider the number of claims and grounds that meet the reasonable likelihood standard when deciding whether to institute inter partes review under 35 U.S.C. § 314(a). SAS Q&A’s, Part D, Effect of SAS on Future Challenges that Could Be Denied for Statutory Reasons (June 5, 2018), available at https://www.uspto.gov/ sites/default/files/documents/ sas_qas_20180605.pdf (“[T]he panel will evaluate the challenges and determine whether, in the interests of efficient administration of the Office and integrity of the patent system (see 35 USC § 316(b)), the entire petition should be denied under 35 USC § 314(a).”). Here, Petitioner fails to demonstrate a reasonable likelihood of prevailing on a majority of its asserted grounds of unpatentability and with respect to nearly all of its challenged claims. This raises at least some question as to whether instituting a trial with respect to all six claims and on all five grounds would be an efficient use of the Board’s time and resources. See, e.g., Chevron Oronite Co. v. Infineum USA L.P., IPR2018-00923, Paper 9 at 10–11 (PTAB Nov. 7, 2018). We must, therefore, decide whether the game is worth the candle; specifically, is resolving the question as to the patentability of claim 1 a sufficient reason to proceed to trial on claims 1 and 10–14? We assume, without deciding, that there may be situations in which resolving the patentability of one claim might justify trial as to six claims. For example, the Patent Owner in some cases may prefer to proceed to trial—and risk the patentability of the single claim—to gain the potential preclusive effect that would attach at the entry of a final written decision (see 35 U.S.C. § 315(e)) finding the remaining five claims not unpatentable. In other situations, the arguments against the patentability of that one claim may be so strong that we believe it is in the public interest to resolve them. Or it is possible the scope of the various claims challenged might merit review as to only some of them. For example, if a petition were to challenge a single, broad independent claim and a number of very narrow dependent claims, a reasonable likelihood of prevailing as to the independent claim alone may justify proceeding to trial on all claims, because a potential finding of unpatentability would significantly narrow the overall scope of the patent. Notably, none of these circumstances is present in the case at hand. Patent Owner has not expressed a preference that we proceed to trial so that it may have the benefit of estoppel under § 315(e). Nor is claim 1, the sole claim still potentially at issue in the case, significantly broader than claims 10–14. All the challenged claims are independent, and, indeed, it appears that claim 10 (directed to a sheath with an outer layer “consisting of a copper/zinc alloy comprising gamma and epsilon phases and predominantly containing a gamma phase”) has a broader scope than claim 1 (directed to a sheath with an outer layer “consisting of a copper/zinc alloy consisting of a gamma phase”). In other words, finding claim 1 unpatentable would not significantly narrow the scope of the ’789 patent. As a result, it is hard to discern how resolving the question as to the patentability of claim 1 would significantly benefit the public interest by narrowing the overall scope of the patent.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“In no case, however, does Petitioner offer sufficient argument or supporting evidence for the existence of a reason for a person of ordinary skill in the art to have combined the teachings of the references. With respect to the Briffod2/Groos ground, Petitioner asserts that “[t]he technologies in Briffod2, Groos and the ‘789 Patent are very closely related,” going on to demonstrate the existence of several similarities between the three patents. Pet. 55–56. This may be enough to show an analogous-art type relationship between the references, but there is a difference between proving that the references could have been combined and showing that a person of ordinary skill in the art would have had a reason to do so. Wyers v. Master Lock Co., 616 F.3d 1231, 1238 (Fed. Cir. 2010); see also In re Kahn, 441 F.3d 977, 987–88 (Fed. Cir. 2006) (noting that the inquiry as to whether a person of ordinary skill in the art would have sought to combine the references “picks up where the analogous art test leaves off”). The same flaw affects Petitioner’s arguments with respect to the Briffod2/Groos/Briffod1 ground and the Briffod2/Groos/Tominaga ground, both of which assert merely that “the technologies in [the references in question] are extremely closely related.” Pet. 57–58, 72. Because Petitioner fails to show why a person of ordinary skill in the art would have combined the teachings of the prior-art references asserted in Petitioner’s multi-reference obviousness grounds, Petitioner has not shown a reasonable likelihood that it would prevail with respect to any claim on any of those three grounds.” slip op. at 6
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsNot reached
“Patent Owner argues that we should deny institution of inter partes review under 35 U.S.C. § 325(d) because Briffod2, the only prior-art reference at issue in the two asserted single-reference grounds, as well as the primary reference at issue in the combination grounds, previously was presented to the Office during prosecution of the challenged patent. Prelim. Resp. 21–29. We need not consider that argument because we determine that we should exercise our discretion to deny institution under § 314(a). As discussed above, the present Petition challenges six of the claims of the ’789 patent on five asserted grounds, and Petitioner fails to carry its burden with respect to three of those grounds and five of those claims. This leaves two grounds that, between them, challenge a single claim of the ’789 patent. Were we to institute trial on either (or both) of the remaining grounds, we would be required to consider at trial not only the challenge that those grounds present to the remaining claim, but also the challenges to the five claims and three grounds on which Petitioner fails to show a reasonable likelihood of prevailing. SAS Inst. Inc. v. Iancu, 138 S. Ct. at 1356.” slip op. at 7
§ 103 obviousnessDiscretionary denial - Charter Communications, Inc. v. Sprint Communications Company, L.P.Institution deniedPTAB · Dec 3, 2019 · IPR2019-01135 · APJ Brian J Mcnamara · IPR · Institution
The Board denied institution because the Petition did not show a reasonable likelihood that claims 1–53 were unpatentable over the asserted obviousness combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“In consideration of the above, we are not persuaded that Petitioner has demonstrated a reasonable likelihood it will succeed in its challenge to claim 1 as unpatentable over the combined teachings of Sampsell and Yosuke.” slip op. at 26
- Skill levelSkill level petitioner adoptedDecided for petitioner
“bachelor’s degree in electrical engineering, computer science, or a related field with at least five years of experience or research in interactive systems applicable to digital television, including VOD for cable and Internet delivery.” Pet. 12–13 (citing Ex. 1002, Declaration of Dr. Kevin Almeroth (“Almeroth Dec.”) ¶¶ 44–46. Patent Owner does not offer a definition of the level of ordinary skill, but reserves the right to dispute Petitioner’s assessment of the level of ordinary skill. Prelim. Resp. 20. Petitioner’s commensurate with the subject matter for the ’7907 patent, for purposes of this Decision we apply Petitioner’s description of the level of ordinary skill.” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for petitioner
“Having reviewed the claims and the specification of the ’7907 patent, we determine that the phrase “video-on-demand” in the preamble is necessary to give life and meaning to the claim. Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999) (“[I]f the claim preamble is ‘necessary to give life, meaning, and vitality’ to the claim, then the claim preamble should be construed as if in the balance of the claim.”). The difference between watching television and watching a video on demand is a difference in kind, rendering a video-on-demand system different from a non-video-on-demand system. While a person watching television can change channels and thus in some sense selects video content, such video content is being distributed regardless of whether the user selects specifically selects it.1 Because of that nature, the user also has control over the playback of the video content, such as pausing and stopping. Although the dependent claims more clearly demonstrate the on-demand nature of the video content (e.g., with the menu and control buttons), only the preamble in the independent claims provides the clue as to this context.2 Thus, the preamble serves to provide the framework necessary to understand the body of the claims, and is limiting.” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITADecided for petitioner
“Owner’s proposed construction, i.e., plain and ordinary meaning or “a signal reflecting viewer control” and instead construed “view control signal” to mean “a viewer control signal generated and processed without the involvement of a set-top box for remote control of the video-on-demand system.” Pet. 15. Petitioner notes that the Comcast court found the ’7907 patent does not dispute the use of a set-top box for purposes other than remote control, e.g. for the purpose of decoding a video signal and presenting it to a television. Id. n. 3. Referring to Figure 1, the Specification states “[i]n response to viewer input to the control screen, the second display 122 transfers a corresponding viewer control signal to the second communication system 112,” the second communication system 112 1 See, e.g., Ex. 1001, 1:17–33 (instructing that, with video-on-demand, the system receives a request to view a selection from the video content library, the video is played “[i]n response to the [user’s] request,” and the user is allowed “to immediately view [the] selected video content”). 2 This is broadly recited in claim 12 to encompass the controls relevant to video-on-demand, e.g., play, pause, stop, etc. Limiting claim 1 to a video-on-demand system provides meaningful context. and “[t]he second communication interface 102 transfers the [viewer] control signal to the processing system 103.” Ex. 1001, 2:61–67. Thus, we understand the viewer control signal to be a signal generated in response to user input.” slip op. at 11
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 6,757,907 - PTAB · Nov 20, 2019 · CBM2018-00006 · APJ Frances L Ippolito · CBM · Rehearing
The Board denied Patent Owner’s rehearing request, leaving intact its final written decision that claims 1–12 are unpatentable under § 101.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“Under 37 C.F.R. § 42.71(d), “[t]he burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, opposition, or a reply.”” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“on this particular issue is timely. Patent Owner has argued that “the institution should never have occurred” and that institution should have been denied outright. Id. However, our Decision on Institution (Paper 19, “Dec.”) was entered on June 22, 2018. Any request for rehearing of our determinations regarding the forum selection clause in that Decision should have been filed 14 days from the entry of that decision. 37 C.F.R. § 42.71(d)(1). As we noted in the FWD, after institution of the covered business method patent review (“CBM review”), the parties did not present any additional evidence or arguments regarding the forum selection clause issue. FWD 8 (“In the post-institution briefing, neither party has added arguments or evidence to the record regarding this issue.”). Indeed, the Patent Owner’s Response (Paper 28, “PO Resp.”) and Sur-Reply (Paper 39, “Sur.”) and Petitioner’s Reply (Paper 31, “Reply”) did not discuss forum selection. For completeness and clarity of the record, we reiterated our” slip op. at 3
- BurdenDecided for petitioner
“be instructive, contrary to Patent Owner’s assertion, that decision has not been designated precedential. Moreover, taking into consideration the discussion by the panel in Global Tel*Link, we are not persuaded that our determination misapprehended or overlooked any arguments or evidence in” slip op. at 9
- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionDecided for petitioner
“the abstract idea. Nonetheless, we are not persuaded that this is clear error or deprived Patent Owner of the opportunity to defend its position. Indeed, Patent Owner does not explain why the “rules for playing a bonus wagering game” is substantively different from “allowing bonus wagers in a wagering game,” or, more importantly, the basis for Patent Owner’s contention that this is a “fundamental change.” See Reh’g Req. 11.” slip op. at 11
§ 101 eligibilityPatents in suitUS 7,451,987 - Lectrosonics, Inc. v. Zaxcom, Inc.All claims unpatentablePTAB · Nov 7, 2019 · IPR2018-00972 · APJ Kalyan K Deshpande · IPR · Final written decision
Claims 1–14 are unpatentable over Strub-based grounds; the Board grants the motion to amend, allowing substitute claims 15–28.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for petitioner
“We agree with Petitioner that the “combined” limitation encompasses the multitrack embodiment of the ’307 patent. Both independent claims 1 and 12 recite that the “local audio data” is “combined with said remotely recorded audio data.” In view of Mr. DeFilippis’s testimony that the “combined” limitation allows “multiple individually recorded audio tracks to be combined into one or more multi-track audio files” (Ex. 2086 ¶ 18), we determine that claims 1 and 12 do not require the claimed “local audio data” and “remotely recorded audio data” to be derived from the same source. Furthermore, every occurrence of the term “combined” in the ’307 patent specification outside of the claims refers to the combination of audio into a multi-track file. See,e.g., Ex. 1001, 4:12–14 (“This accuracy allows multiple individually recorded audio tracks to be combined into one or more multi-track audio files electronically post-recording.”), 5:6–7 (“the multiple audio recordings are combined to create one single recording”), 16:40–44 (“[T]he local audio device of each performer . . . may be combined to create one or more multitrack audio files that are stored with master timestamps generated by the receiver/recorder's internal master timecode generator.”), 19:2–4 (“[A]ll of the individual audio files may be combined to provide one or more comprehensive audio files.”). Although we agree with Patent Owner that the ’307 patent specification describes an embodiment of a through the replacement of data, we are not persuaded that the recited “combined” limitation is limited to that embodiment, but rather also encompasses the multi-track embodiment of the ’307 patent. Id. at 4:15–18. Thus, we determine that the limitation “said local audio data is retrieved during or subsequent to said audio event and is combined with said remotely recorded audio data” does not require that the local and remote audio data originate from the same source because the ’307 patent specification contemplates a broader definition—one that includes the combination of local audio data and remotely recorded audio data to create a multi-track audio file. See Ex. 1001, 4:12–14, 5:6–7, 16:40–44, 19:2–4; Ex. 2086 ¶ 18. Based on the foregoing, we construe the “combining” limitation as broad enough to encompass combining local audio data and remotely recorded audio data, without a requirement that the local audio data and remotely recorded audio data are the same. In other words, we construe the “combining” limitation to encompass the disclosed multitrack embodiment in the ’307 patent specification, where separate audio tracks are combined to form a multitrack audio file. See Ex. 1001, 4:12–14, 5:6–7, 16:40–44, 19:2– 4.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“and in a condition to be worn.” Pet. Reply 1–2 (quoting Ex. 2110, 1628). This definition is consistent with the plain meaning of “wearable,” and we find no credible evidence on the record that requires a narrower definition. Furthermore, we are not persuaded that Petitioner’s expert, Mr. Tinsman, provides a definition consistent with Patent Owner’s narrow definition. Rather than defining “wearable,” Mr. Tinsman explains that the term “bodypack” is “[s]omething relatively small and lightweight.” Pet. Reply 2 (citing Ex. 2109, 41:18–22). Further, when describing “wearable” as “unobtrusive, easily hidden,” Mr. Tinsman clarifies this description as “[y]ou know, reasonable to carry around.” Ex. 2109, 47:20–22. We determine that no other express claim construction analysis of any” slip op. at 12
- Skill levelSkill level petitioner adoptedOther
“of the ’307 patent, would have “a Bachelor’s degree in electrical engineering or a related subject and two to five years working with audio and wireless communications systems.” Pet. 8 (citing Ex. 1011 ¶ 24). Patent Owner’s expert, Mr. DeFilippis, similarly opines that a person of ordinary skill in the art would have a “Bachelor’s degree in electrical engineering and two years of experience working with audio and wireless communications systems either in industry or in graduate school.” Ex. 2086 ¶ 13. We adopt Petitioner’s and Patent Owner’s proffered level of ordinary skill in the art as it is agreed upon and consistent with the prior art of record. See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966); Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“[T]he level of skill in the art is a prism or lens through which a judge, jury, or the Board views the prior art and the claimed invention.”); Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991) (“The importance of resolving the level of ordinary skill in the art lies in the necessity of maintaining objectivity in the obviousness inquiry.”). Specifically, we adopt that a person of ordinary skill in the art, at the time of the ’307 patent, would have had a Bachelor’s degree in electrical engineering and two or more years of experience working with audio and wireless communications systems. Pet. 8 (citing Ex. 1011 ¶ 24); Ex. 2086 ¶ 13. To that end, we note that the prior art itself often reflects an appropriate skill level. See Okajima, 261 F.3d at 1355.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableUnpatentable
“We are not persuaded by Patent Owner’s argument. Petitioner identifies a first local audio device disclosed by Strub as “a small, lightweight, wearable recording unit.” Pet. 19 (quoting Ex. 1003, 4:29–31; citing Ex. 1003, 4:29–31, 14:59–15:11, 16:66–17:24, 38:65–39:11, 66:33– 51, 67:54–68:10, 72:10–19, Figs. 1, 8A–8C, 9A, 9B; Ex. 1011 ¶ 46). Petitioner further identifies the first local audio device as including position position data or biometric data, and time data. Pet. 20 (citing Ex. 1003, 12:39–52, 35:53–61, 37:55–62, 63:41–60; Ex. 1011 ¶ 47). Finally, Petitioner identifies Strub’s disclosure of other recording devices to which local audio data is transmitted via transmitter 309 or wired connections. Pet. 27 (citing Ex. 1003, 12:4–39, 66:7–25, Fig. 3). In summary, Strub discloses a local audio device that records local audio and transmits the local audio to other remote devices. Ex. 1001, Fig. 1, 105–108, 8:50–53, 12:4–39, 66:7–25). Therefore, Petitioner has identified two devices in Strub—a local audio device and a remote audio device that receives the transmitted audio. Ex. 1003, 12:4–39, 66:7–25, Fig. 3. Petitioner has also identified the claimed local audio as the audio that is stored by a local audio device and transmitted to a remote audio device. Id. Furthermore, Patent Owner’s argument that Strub fails to disclose “that the same local audio is stored at both the wearable local audio device as local audio data and the remote receiver/recorder as remotely recorded audio data and that the local audio data is combined with the remotely recorded audio data” is not persuasive because it is inconsistent with our claim construction discussed above. See Section II.B.1; PO Resp. 32. We do not construe the limitation “said local audio data may be retrieved after said locally recording and combined with said remotely recorded audio data” to require that the local audio data and remotely recorded audio data be the same data. Id. Accordingly, we agree with Petitioner that Strub discloses the disputed element because Strub discloses local audio devices transmitting recordings to other recording units and the recording units timestamping the recorded audio and synchronizing, i.e., combining, processing. Ex. 1003, 13:50–67. Patent Owner further argues that Strub does not disclose a local audio device “wearable by a creator of said locally generated audio.” PO Resp. 34–35. Patent Owner argues that Strub’s device is not “small, lightweight, unobtrusive, easily hidden, not visible, and designed to be worn on the body of a creator of audio (i.e., performer)” based on its claim construction. Id. at 34; see Section II.B.2. Mr. DeFilippis, Patent Owner’s expert, opines that Strub’s system “would require a computer that could compare content from multiple mpeg sources in real time and multiplex the results to a recording,” and the “hardware and software to do this could not be incorporated into a back pack, let alone a bodypack.” Id. at 34–35 (citing Ex. 2086 ¶ 43).” slip op. at 20
Patent outcomesUS 9,336,307 unpatentableClaim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites KSR · GrahamPatents in suitUS 9,336,307 - Apple Inc. v. MPH Technologies OYInstitution deniedPTAB · Nov 6, 2019 · IPR2019-00825 · APJ Sally C Medley · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1 and 2 were obvious over RFC3104 and Grabelsky.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“established a reasonable likelihood that Petitioner would prevail in its challenge to claims 1 and 2 as unpatentable under 35 U.S.C. § 103(a) based on RFC3104 and Grabelsky.6 III. CONCLUSION For the foregoing reasons, we determine that Petitioner has not shown a reasonable likelihood that it would prevail in showing that claims 1 and 2 of the ’397 patent are unpatentable. IV. ORDER For the foregoing reasons, it is ORDERED that the Petition is denied as to all challenged claims, and no trial is instituted.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“We agree with Patent Owner that RFC3104 does not describe any message ever being sent from address Nb to address Na, or that RSIP server N (the intermediate computer) sends or even can send any message from itself to itself. Prelim. Resp. 15. Petitioner does not identify any such description in RFC3104. Rather, Petitioner relies on Dr. Goldschlag’s testimony in support of Petitioner’s assertion that a person having ordinary skill in the art would have understood that a secure message sent to RSIP server N via address Nb is also sent to address Na as part of RFC3104’s tunneling operation. Pet. 39–40 (citing Ex. 1002 ¶¶ 105–106). Dr. Goldschlag’s testimony, however, is conclusory and unsupported by record evidence. Ex. 1002 ¶¶ 105–106. For example, Dr. Goldschlag does not explain how RFC3104’s “tunneling” operation results in the understanding that a message sent to RSIP server N via address Nb is also sent to address Na. Id.5 Dr. Goldshlag’s testimony provides no factual basis in support of the assertion that a person having ordinary skill in the art would have understood that tunneling as described in RFC3104 means that a message sent to server N via address Nb is also sent to address Na. Such ipse dixit is insufficient to show a reasonable likelihood of success. See Securus Techs. Inc. v. Glob. Tel*Link Corp., 701 F. App’x 971, 974–76 (Fed. Cir. 2017) (affirming the Board’s determination that conclusory testimony by an expert witness was insufficient to satisfy Petitioner’s burden of showing that the skilled artisan would have modified the references as asserted); see also 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”).” slip op. at 11
- Expert testimonyPetitioner expert discountedDecided for patent owner
“testimony in support of Petitioner’s assertion that a person having ordinary skill in the art would have understood that a secure message sent to RSIP server N via address Nb is also sent to address Na as part of RFC3104’s tunneling operation. Pet. 39–40 (citing Ex. 1002 ¶¶ 105–106). Dr. Goldschlag’s testimony, however, is conclusory and unsupported by record evidence. Ex. 1002 ¶¶ 105–106. For example, Dr. Goldschlag does not explain how RFC3104’s “tunneling” operation results in the understanding that a message sent to RSIP server N via address Nb is also sent to address Na. Id.5 Dr. Goldshlag’s testimony provides no factual basis in support of the assertion that a person having ordinary skill in the art would have understood that tunneling as described in RFC3104 means that a message sent to server N via address Nb is also sent to address Na. Such ipse dixit is insufficient to show a reasonable likelihood of success. See Securus Techs. Inc. v. Glob. Tel*Link Corp., 701 F. App’x 971, 974–76 (Fed. Cir. 2017) (affirming the Board’s determination that conclusory testimony by an expert witness was insufficient to satisfy Petitioner’s burden of showing that the skilled artisan would have modified the references as asserted); see also 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”).” slip op. at 12
- Skill levelSkill level petitioner adoptedOther
“4 Relying on the testimony of Dr. David Goldschlag, Petitioner offers an assessment as to the level of skill in the art at the time of the ’397 patent. Pet. 14 (citing Ex. 1002 ¶¶ 29–30). Patent Owner does not propose an alternative assessment. See generally Prelim. Resp. To the extent necessary, and for purposes of this Decision, we accept the assessment offered by Petitioner as it is consistent with the ’397 patent and the asserted prior art.” slip op. at 8
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,762,397 - Apple Inc. v. Universal Secure Registry, LLCNo claims unpatentablePTAB · Nov 5, 2019 · IPR2018-00812 · APJ Jason W Melvin · IPR · Final written decision
The Board found claims 1–3, 16, 21–24, 37, and 38 not shown unpatentable over Reber and Franklin because the combination did not establish the claimed access restrictions and information handling.
RulingsFinal written decision- Skill levelOther
“invention for the ’539 patent “would have a Bachelor’s Degree in electrical engineering, computer science, or a related scientific field, and approximately two years of work experience in the computer science field including, for example, operating systems, database management, encryption, security algorithms, and secure transaction systems, though additional education can substitute for less work experience and vice versa.” Pet. 10 (citing Ex. 1102 ¶¶ 61–62). Patent Owner submits that the level of skill would involve “a Bachelor of Science degree in electrical engineering and/or computer science, and three years of work or research experience in the fields of secure transactions and encryption, or a Master’s degree in electrical engineering and/or computer science and two years of work or research experience in related fields.” PO Resp. 17 (citing Ex. 2018 ¶¶ 16– 20). Patent Owner agrees that its “description of the level of ordinary skill in the art is essentially the same as that of the Petitioner, except that Petitioner’s description requires two years of work or research experience (as compared to three years).” Id. at 17–18. We do not understand any of the parties’ disputes to turn on a precise definition of the level of skill in the art and apply the level of skill as defined by the parties.” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Other
“To support our analysis of the disputed issues below, we construe “account identifying information” and “third party.” We conclude that there is no need to construe any other term to resolve the issues in this decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“We agree the claim language supports that the separately recited “third party” must be different from the claimed “provider” and “entity.” As to the secure registry itself, we agree further with Patent Owner that the claim language mandates that the “third party” cannot be the secure registry system. The claims recite that the secure-registry processor is configured such that “account identifying information is provided to a third party.” By using “provided,” the claim instructs that the secure registry must send account-identifying information somewhere, not simply perform an additional operation on the information.5 Patent Owner further focuses on the party at issue. According to Patent Owner, the “third party” should be “a party other than one of these other parties already recited in the claims.” PO Resp. 24. Although the claims recite the “secure registry” as a system, as opposed to the “provider” and “entity,” which it recites as “parties,” we agree with Patent Owner that for a third party to be distinct from the secure registry, it should be distinct from whomever operates the secure registry. See id. at 24–25, 47–48 n.8; infra at 21. Accordingly, we construe “third party” as “a party that is not the secure registry, the entity, or the provider.”” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“The Petition states that it would have been obvious to perform merchant validation at the processor and database, but gives no reason for making that change. See Pet. 37. Instead, the Petition states a skilled artisan “would have applied the known techniques of Franklin to improve the security of the Reber system” and that doing so would have reduced fraud by merchants. Id. (citing Ex. 1102 ¶ 114). As explained, “the known techniques of Franklin” were to perform merchant validation at the merchant’s bank, not at the secure registry. Ex. 1132, 11:43–46 (“The acquiring bank validates the authorization request by verifying that the merchant is a valid merchant and that the credit card number represents a valid number.”). Thus, a reason to use Franklin’s techniques does not further justify modifying Franklin’s teaching to perform validation at the secure registry as claimed. Petitioner attempts to justify the combination in the Reply, arguing that, in Franklin, “it would have been obvious simply to perform the merchant validation procedure at the issuing bank, depending on the needs of a particular implementation (for example, where the issuing bank and the acquiring bank are the same).” Pet. Reply 12–13. Petitioner reasons that “organizing the system in this way would . . . increase efficiency by reducing the overall number of computations (e.g., conducting only one validation/compliance operation and not two separate operations at two separate places).” Id. at 13. Those statements serve to highlight the deficiency of the Petition. Petitioner’s arguments in the Reply do not respond to Patent Owner, other than attempting to fill in a gap in the we conclude Petitioner’s showing regarding access restrictions at the secure registry is inadequate regardless of the construction of “access restrictions for the provider to secure data for the entity.” Petition. We agree with Patent Owner that Petitioner’s Reply arguments go too far beyond those of the Petition. See PO Sur-reply 15–16; 37 C.F.R. § 42.23(b) (2017); Trial Practice Guide Update 14–15 (Aug. 2018), https://go.usa.gov/xU7GP (“[A] reply . . . that raises a new issue or belatedly presents evidence may not be considered. . . . Examples of new issues are new theories or arguments necessary to make out petitioner’s case-in-chief . . . , such as a newly raised rationale to combine . . . that was not expressed in the petition.”); Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369–70 (Fed. Cir. 2016) (holding that the Board did not err in excluding a reply as improper under 37 C.F.R. § 42.23(b) because Petitioner relied on a new rationale to combine). Petitioner failed to make an adequate showing in the Petition regarding a plain requirement of the claims. The Petition identifies no prior-art disclosure that taught or suggested to skilled artisans to implement access restrictions at the secure registry, and provides insufficient reasons why a skilled artisan would have had reason to do so. Thus, Petitioner fails to show that challenged claims 1, 22, or 37” slip op. at 13
Patent outcomesUS 8,856,539 not shown unpatentableClaim construction§ 103 obviousnessPatents in suitUS 8,856,539 - Teradata Operations, Inc. v. Berkeley*ieorRehearing deniedPTAB · Nov 5, 2019 · CBM2019-00013 · APJ Jon B Tornquist · CBM · Rehearing
The Board denied rehearing of its decisions denying institution of CBM review of the challenged claims in four proceedings, finding no overlooked or misapprehended matter.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD FOR REHEARING Pursuant to 37 C.F.R. § 42.71(d): A party dissatisfied with a decision may file a single request for rehearing without prior authorization from the Board. The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. When reconsidering a decision on institution, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion exists where a “decision [i]s based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus. Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988).” slip op. at 3
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“the relational database management system to . . . calculate” as requiring that the recited calculations be performed “in the RDBMS.” Inst. Dec. 8–10. Petitioner did not provide an express construction for this claim term in the Petition. Id. at 7. For purposes of deciding whether to institute trial, and after reviewing the claim language, the written description of the involved patents, and the relevant prosecution history, we adopted Patent Owner’s proposed construction. Id. at 8–10. Petitioner contends the construction adopted by the panel is incorrect because the claims on their face are broad enough to encompass “[a]ny use of the RDBMS,” for example using the RDBMS to” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“As explained in the Institution Decision, Petitioner’s arguments with respect to whether the challenged claims recite a technological feature that is novel and unobvious over the prior art relied on a claim construction that we did not adopt. Inst. Dec. 13–14. As such, the Petition did not adequately explain why it was not novel and obvious to use an RDBMS itself to perform the claimed profit calculations. Id. at 14. Although Petitioner disagrees with our conclusion, and now cites to disparate portions of the Petition to support its argument, a mere disagreement is not the proper basis for rehearing, and a rehearing request is not the proper vehicle to make arguments that were not clearly set forth in the Petition.” slip op. at 5
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“Petitioner also contends that the Board failed to consider its obviousness arguments. Req. Reh’g 14–15. We considered these arguments, but ultimately found them unpersuasive. Inst. Dec. 13–14. In short, Petitioner presumed a construction of “using the relational database management system to . . . calculate” that we did not adopt, and did not explain sufficiently why the prior art of record would have rendered the challenged claims obvious under the adopted claim construction. A request for rehearing is not an opportunity to remedy these deficiencies.” slip op. at 7
Claim construction§ 103 obviousnessPatents in suitUS 7,882,137
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.