- 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 - Mobile Tech, Inc. v. Invue Security Products Inc.All claims unpatentablePTAB · Dec 5, 2019 · IPR2018-01138 · APJ Stacey G White · IPR · Final written decision
Claims 1–10, 12–45 are unpatentable: claims 1–10, 12–15, 17–32, 34–43, and 45 as obvious over Rothbaum and Denison; claims 16, 33, and 44 over Rothbaum, Denison, and Ott.
RulingsFinal written decision- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“Here, the same RPI issue was raised in the prior decisions, the RPI issue was actually litigated by the parties (replete with discovery and dispositive motions on this issue), and our determination that the RPI identification was proper was essential to the prior decisions (especially because Patent Owner has sought to have the proceedings terminated due to an allegedly improper identification of RPIs). As such, we agree with the parties’ assertion that collateral estoppel applies to the RPI issue in this case, and we conclude that no exception to collateral estoppel applies. Thus, we determine that collateral estoppel prevents the relitigation of the RPI issue in this proceeding. Accordingly, for the reasons given in the 1900 IPR Decision and in the Order on Patent Owner’s Motion to Terminate from IPR2017-00344, we determine that Petitioner identified all RPIs in this proceeding, as required by 35 U.S.C. § 312(a)(2).” slip op. at 15
- Skill levelSkill level patent owner adoptedDecided for patent owner
“Petitioner’s declarant, Thaine Allison III, testifies that a person of ordinary skill in the art would have had a four year technical degree (e.g. B.S. engineering) with a minimum of three years of experience in using, provisioning, designing or creating, or supervising the design or creation, of such theft prevention devices, and other related security devices. Extended experience in the industry could substitute for a technical degree. A [person of ordinary skill in the art] would have known how to research the technical literature in fields relating to theft prevention, including in retail and other environments, as well as security in general. Also, a [person of ordinary skill in the art] may have worked as part of a multidisciplinary team and drawn upon not only his or her own skills, but also taken advantage of certain specialized skills of others in the team, e.g., to solve a given problem. For example, designers, engineers (e.g., mechanical or electrical), and computer scientists or other computer programmers may have been part of a team. Ex. 1019 ¶ 20; see Pet. 14 (citing Ex. 1019 ¶¶ 18–21). Based on the evidence of record, including the testimony of Mr. Allison, the subject matter at issue, and the prior art of record, we adopt the level of ordinary skill in the art set forth in the Decision on Institution, which is that a person of ordinary skill in the art would have had a four-year technical degree or equivalent experience with a minimum of two years of professional technical experience in the field of theft prevention devices or related security devices. Dec. on Inst. 10; see also PO Resp. 17–18 (agreeing with statement of level of ordinary skill in the Decision on Institution). We apply this level of ordinary skill in the art in our analysis below.” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownNo construction neededOther
“usable in only a single retail store,” “unique to the single retail store and the programming station,” “a ‘housing’ with ‘a port,’” “logic control circuit,” and “‘invalidating’ the ‘key.’” Pet. 8–14. Patent Owner seeks construction of “single security code” and “invalidates the single security code,” and Patent Owner provides arguments responsive to Petitioner’s proposed construction of “usable in only a single retail store.” PO Resp. 12–17. Based on the issues before us, we discern a need to provide express construction for “single security code,” “unique to the single retail store and the programming station,” and “invalidating the single security code.” No other term requires express construction. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); see also Nidec Motor slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentableUnpatentable
“Id. at 38. Petitioner responds by arguing that Patent Owner is not addressing the combination proposed in the Petition, which is “modifying Rothbaum’s system (used in a retail store) to have an electronic-key system instead of a mechanical-key system. It isn’t a vending machine.” Reply 4. Thus, Petitioner’s argument focuses on incorporating the teachings regarding Denison’s key into the retail security system of Rothbaum. Therefore, Patent Owner’s arguments that are directed to the features of Denison’s vending machines are not responsive to the proposed combination because the vending machine is not part of the proposed modified system. Mr. Allison’s testimony supports Petitioner by explaining that a [person of ordinary skill in the art] would have found it obvious that a retail store employing the modified Rothbaum system would not share or use the system (or individual parts of the system, for example, the programming station / “external computing device,” the electronic keys, and the security device / “strip or housing 12”) with another retail store because doing so would compromise the integrity of the security system. Ex. 1019 ¶ 116. We credit Mr. Allison’s testimony and find that one of ordinary skill in the art would have found it obvious to improve security by using Denison’s operation limits to limit the use of the security code to a single store because such a limit would reduce the possibility that unauthorized individuals would gain access to the code by, for example, obtaining a key from one store and using it in another store. See Ex. 1019 ¶¶ 113, 116. We determine that the findings made in our analysis of claim 1 of the ’762 patent along with our findings regarding the “usable in only a single retail store” limitation also support a finding of unpatentability of claim 17 of the ’472 patent. We are careful to view the claim as a whole and not just its constituent parts. We determine that the findings noted above as to prior related cases along with the findings we make in this Decision as to the disputed limitation are sufficient to establish the unpatentability of claim 17 as a whole. The prior findings were essential to determining the patentability of the prior challenged claims and the parties had a full and fair opportunity to litigate those claims. Therefore, we determine that Petitioner has shown by a preponderance of the evidence that claim 17 of the ’472 patent would have been obvious over Rothbaum and Denison. As noted above, our analysis equally applies to claims 1 and 39 of the ’472 patent. Therefore, we determine that Petitioner has demonstrated by a preponderance of the evidence that claims 1, 17, and 39 are unpatentable.” slip op. at 26
Patent outcomesUS 9,659,472 unpatentableClaim construction§ 103 obviousnesscites GrahamPatents in suitUS 9,659,472 - Apple Inc. v. Corephotonics Ltd.All claims unpatentablePTAB · Dec 3, 2019 · IPR2018-01140 · APJ Marc S Hoff · IPR · Final written decision
Claims 1 and 13 are unpatentable as anticipated by Ogino; claims 14 and 15 are unpatentable as obvious over Ogino and Chen II.
RulingsFinal written decision- BurdenFwd all claims unpatentableUnpatentable
“claims 1 and 13 of the ’032 Patent are anticipated by Ogino. Petitioner has also demonstrated, by a preponderance of the evidence, that claims 14 and 15 of the ’032 Patent are unpatentable over the combination of Ogino and Chen II. The chart below summarizes our conclusion. References Claims Claims Claims 35. Shown Not shown Challenged U.S.C. Unpatent- Unpatentable able Ogino 1 and 13 1 and 13 § 102 Ogino, Chen 14 and 15 14 and 15 § 103 II 1 and 13-15” slip op. at 40
- Skill levelSkill level board ownDecided for petitioner
“that Ogino and Chen II disclose substantially different lens systems. PO Resp. 36. As Petitioner points out, both Ogino and Chen II describe mobile phone camera systems with all lenses being aspheric; a first lens with a meniscus shape with positive refractive power; a second lens with negative refractive power; a third lens with a meniscus shape and with a negative refractive power; a fourth lens with a meniscus shape with positive refractive power; and a fifth lens with a meniscus shape and with a negative refractive power. Pet. Reply 22; Pet. 41–44. We agree with Petitioner that such a skilled artisan, possessing an applicable college degree, approximately three years experience in designing multi-lens optical systems, “experience in analyzing, tolerancing, adjusting, and optimizing multilens systems, and experience with lens design software such as CodeV, Oslo, or Zemax,” would have the appropriate knowledge to perform routine modifications to a lens design. Pet. Reply 24; Pet. 7; PO Resp. 12. Patent Owner’s expert Dr. Moore testified that such a skilled artisan “would be able to use the computer program [i.e. CodeV or Zemax] to optimize lens designs.” Pet. Reply 24; Ex. 1025, 29:25–30:9. Dr. Moore testified that the skilled artisan would “tell the [lens design] program that you want to vary certain parameters of a lens . . . . And then the program, through a fairly complicated algorithm, then actually goes through and varies them and determines how to make a better lens. You determine as a lens designer what you’re trying to improve.” Ex. 1025, 28:13–23.” slip op. at 38
- Expert testimonyPatent owner expert discountedDecided for petitioner
“We are unpersuaded by Patent Owner’s argument that the skilled artisan would have understood that third, fourth, and fifth lenses also contribute to vignetting in Ogino. PO Resp. 38. We credit Petitioner’s argument that Dr. Moore’s conclusion regarding vignetting in the third, fourth, and fifth lenses is unreliable because it is based on assumptions not specified in Ogino. Pet. Reply 16; Ex. 1026 ¶ 11. For example, Ogino does not provide lens diameters or vignetting apertures for the lens assembly of Example 6 that would vignette the light beams on the third, fourth or fifth lens elements. Pet. Reply 17; Ex. 1026 ¶ 11. Additionally, Dr. Sasián testifies that vignetting is a result of the second lens. Pet. Reply 17–18; Pet. 54; Ex. 1003, 59.” slip op. at 36
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“Effective Focal Length (EFL) Petitioner asserts that while the specification of the ’032 Patent does not offer an express definition for the term “effective focal length,” “its meaning is well known in the art, as exemplified in Li (Ex. 1007), which states that “[t]he focal length of a lens assembly [is] also referred to as the effective focal length [(]EFL).” Pet. 9–10 (internal parentheses omitted); Ex. 1007, 2:59–61. Patent Owner, in response, does not dispute Petitioner’s construction of “effective focal length,” stating that the Petition does not turn on the construction of the term. PO Resp. 20. Having reviewed the evidence of record, we agree with Petitioner that Li supports construing the term “effective focal length” as “the focal length of a lens assembly.” We adopt this construction.” slip op. at 10
Patent outcomesUS 9,402,032 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,402,032 - Google LLC v. Agis Software Development, LLCAll claims unpatentablePTAB · Dec 2, 2019 · IPR2018-01080 · APJ Kevin C Trock · IPR · Final written decision
Claims 1, 2, 5–7, 14, 15, 17, 21–25, 27, 28, 30, 32–34, 36, 37, 40–43, 45, 49, and 54 are unpatentable as obvious.
RulingsFinal written decision- Skill levelOther
“A. Level of Ordinary Skill” slip op. at 9
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“improvement is more than the predictable use of prior art elements according to their established functions. Id. at 417. Reaching this conclusion, however, requires more than a mere showing that the prior art includes separate references covering each separate limitation in a claim under examination. Unigene Labs., Inc. v. Apotex, Inc., 655 F.3d 1352, 1360 (Fed. Cir. 2011). Rather, obviousness requires the additional showing that a person of ordinary skill at the time of the invention would have selected and combined those prior art elements in the normal course of research and development to yield the claimed invention. Id. I. Obviousness over Fumarolo, Sheha, and Lazaridis” slip op. at 19
Patent outcomesUS 9,408,055 unpatentable§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,408,055 - NEC Corporation / Nokia Corporation et al. v. Neptune Subsea IP LimitedAll claims unpatentablePTAB · Nov 25, 2019 · IPR2018-01157 · APJ Jason W Melvin · IPR · Final written decision
Claims 13–20 are unpatentable as obvious over Yamamoto and Nishimoto; the Chowdhury and Webb grounds, with or without Tanaka162, do not establish unpatentability.
RulingsFinal written decision- BurdenFwd all claims unpatentableDecided for petitioner
“III. CONCLUSION For the foregoing reasons, we determine Petitioner has shown by a preponderance of the evidence that each of claims 13–20 is unpatentable.” slip op. at 26
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“The parties submit and we agree that there is no need to construe any term to resolve the issues in this decision. See Pet. 7–9; PO Resp. 6; Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., 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 6
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“e. Summary For the reasons described above, we find that a person of ordinary skill in the art at the time of invention would have had reason to combine Yamamoto’s and Nishimoto’s teachings as asserted by Petitioner and that the combination teaches all of claim 13’s limitations. Accordingly, Petitioner has shown by a preponderance of the evidence that the subject matter of claim 13 would have been obvious over Yamamoto and Nishimoto.” slip op. at 21
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“tunable compensators is a contingent argument, applicable only if one reads claim 13 to require a certain transmission rate. PO Resp. 21–25. We do not read Petitioner’s argument as so constrained. Rather, we understand Petitioner to argue that a desire for higher transmission speeds would drive skilled artisans to use solutions such as Nishimoto’s tunable compensators, particularly in light of Nishimoto’s guidance regarding the ability to achieve high speeds with the system. See Pet. 21–23. In that regard, we agree with Petitioner that the increase in transmission rates from Yamamoto’s to Nishimoto’s disclosures would have given skilled artisans reason to consider Nishimoto’s teachings. Pet. Reply 16–18 (citing Ex. 1005 8:9–11; Ex. 1007, 12:37–39). As Petitioner points out, Nishimoto specifically discloses that higher-speed transmissions were more sensitive to dispersion. Pet. Reply 17 n.9. Thus, we find the desire for higher transmission speeds and the need for techniques such as taught by Nishimoto would have given skilled artisans reasons to combine Nishimoto’s disclosure regarding dispersion compensation with Yamamoto’s system to achieve Yamamoto’s goals regarding the dispersion maps for multiple channels. Further, Petitioner does not rest entirely on the desire for high-speed operation. Petitioner argues also that using Nishimoto’s adjustable compensators and feedback control would “yield an improved WDM system capable of automatic compensation for degradation of the optical signal waveform caused by both wavelength dispersion and polarization mode dispersion of the optical transmission path, resulting in further reduced size and cost.” Pet. 16 (citing Ex. 1003 ¶¶ 99, 101; Ex. 1007, 3:41–60, 4:3–58, Figs. 17, 20, 21), 29–30 (quoting Ex. 1007, Abstract, 3:37–40, 6:56–64, 7:53–56, 11:41–46, 17:53–55, 17:59–60; citing Ex. 1003 ¶¶ 114–115); accord id. at 14 (quoting Ex. 1007, 3:19–25). Patent Owner recognizes that basis for the combination but argues that the record lacks evidence to support Petitioner’s claim of reduced size and cost. PO Resp. 25–26. Patent Owner does not contest that the modification would give Yamamoto’s system the ability to automatically compensate for signal degradation from dispersion. Nishimoto discloses that as transmission speeds increase, “changes in wavelength dispersion characteristics due to temperature changes of optical fiber; and the influence by polarization mode dispersion” both “can not be neglected,” therefore requiring a system for automatically compensating for wavelength dispersion and polarization mode dispersion,” as taught by Nishimoto. Ex. 1007, 1:34–41. We find that a skilled artisan would have had reason to make the combination because the system would gain capability for automatic compensation. Regarding reduced size and cost resulting from the combination, Patent Owner does not provide any contrary evidence and we conclude that Nishimoto’s statements regarding the benefit of its invention also would have motivated skilled artisans to make the combination. See Ex. 1007, 3:17–26 (“to thereby provide a dispersion compensating apparatus of reduced sizes at a reduced cost”).” slip op. at 18
Patent outcomesUS 8,351,798 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,351,798 - 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 - Google LLC v. Agis Software Development, LLCAll claims unpatentablePTAB · Nov 19, 2019 · IPR2018-01079 · APJ Christa P Zado · IPR · Final written decision
Claims 1 and 3–9 are unpatentable as obvious over Kubala and Hammond; the Board did not find them unpatentable over the Hammond, Johnson, and Pepe combinations.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art in the field” slip op. at 9
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner
“2. Terms to be Construed Expressly Petitioner proposes that we construe as means-plus-function under 35 U.S.C. § 112, ¶ 6, the terms in claim 1 that include the word “means,” i.e., limitations 1.2 and 1.5 to 1.9. Pet. 10–12. Patent Owner agrees these terms should be construed as means-plus-function, and further argues we should adopt the constructions entered in the district court proceeding for the purposes of consistency across proceedings. Prelim. Resp. 9–14.10” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“creating a forced message alert”) (emphasis added); see also Ex. 1001, 10:14–17 (claim 6, “creating the forced message alert on said sender PDA/cell phone by attaching a voice or text message to a forced message alert application software packet to said voice or text message”) (emphasis added). Accordingly, by the very language of the claims, a message is forced because it is attached to a forced message alert software packet. Nothing in the claim language indicates that what makes the message forced is forcing its display without any action on the part of the recipient.” slip op. at 25
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“Accordingly, we are persuaded that “implementing Hammond’s” slip op. at 38
Patent outcomesUS 8,213,970 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,213,970 - Mallinckrodt Pharmaceuticals Ireland Limited v. Biovie, Inc.All claims unpatentablePTAB · Nov 13, 2019 · IPR2018-00974 · APJ Kristi L R Sawert · IPR · Final written decision
Claims 1–14 are unpatentable: Robertson anticipates claims 1–3 and 5, and Fimiani combined with Robertson or Angeli renders claims 1–14 obvious; the motion to amend is denied.
RulingsFinal written decision- Skill levelOther
“B. Level of Ordinary Skill in the Art We consider the asserted grounds of unpatentability in view of the understanding of a person of ordinary skill in the art, and thus begin with the level of ordinary skill in the art. The ordinarily skilled artisan is a “legal construct” that “presumes that all prior art references in the field of the invention are available to this hypothetical skilled artisan.” In re Rouffet, 149 F.3d 1350, 1357 (Fed. Cir. 1998).” slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for petitioner
“1. The preamble of claim 1 The preamble of claim 1 recites “[a] method for treating a patient diagnosed with ascites due to liver cirrhosis.” Ex. 1001, 8:25–26.6 5 See Changes to the Claim Construction Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340 (Oct. 11, 2018) (amending 37 C.F.R. § 42.100(b) effective November 13, 2018 to require a federal district court claim construction approach) (now codified at 37 C.F.R. § 42.100(b) (2019)). 6 Before institution, Petitioner argued that the preamble is not limiting. See Pet. 11–12 (contending that the “preamble of claim 1 is merely a” slip op. at 15
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“1. Claim 1 We find that Robertson teaches explicitly each and every limitation of claim 1. As to the preamble, we agree with Petitioner that Robertson discloses “treating a patient diagnosed with ascites due to liver cirrhosis,” as interpreted above. Supra § III.C.1. Robertson teaches administering terlipressin to a patient having “Child-Pugh C cirrhosis due to previous alcohol consumption complicated by recurrent encephalopathy, diuretic-resistant ascites, and hepatocellular carcinoma.” Ex. 1004, 2125. We credit and rely on Dr. Gow’s unrebutted testimony that “Child-Pugh C cirrhosis is a form of liver cirrhosis” and, therefore, an ordinarily skilled artisan would understand that the 59-year-old man’s ascites was due to liver cirrhosis. Ex. 1002 ¶ 75. We also note that Patent Owner admits that Robertson’s patient was diagnosed with ascites due to cirrhosis and that “terlipressin was used to treat the patient’s HRS.” See PO Resp. 34 (citing Ex. 1004, 2125). Robertson also discloses that the patient’s serum creatinine concentration was reduced, thus indicating an improvement in renal function. Ex. 1004, 2125–2126; see also Ex. 1001, 1:60–67, 3:40–46, 7:20–40 (all identifying “a reduction in serum creatinine concentration” as an indicator for improved renal function). Accordingly, Robertson discloses “treating a patient diagnosed with ascites due to liver cirrhosis,” as claimed.” slip op. at 25
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“4. Conclusion as to obviousness over Fimiani and Robertson or Angeli In sum, we find that the combination of Fimiani and Robertson or Angeli teaches or suggests each and every element of claims 1–14. We find that an ordinarily skilled artisan would have been motivated to combine Fimiani with Robertson or Angeli, and would have had a reasonable expectation of success in achieving the claimed invention. We also find that Patent Owner has failed to persuasively show secondary considerations of non-obviousness. Thus, after carefully considering the arguments and evidence, we determine that the record as a whole weighs in favor of a conclusion of obviousness, especially given the disclosures of the art of record in this case and strength of the obviousness case based on the first three Graham factors.” slip op. at 58
Patent outcomesUS 9,655,945 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,655,945 - Zscaler, Inc. v. Symantec CorporationAll claims unpatentablePTAB · Nov 13, 2019 · IPR2018-00920 · APJ Jeffrey S Smith · IPR · Final written decision
Claims 1–19 are unpatentable as obvious over Nortel, Nortel and Stone, Alles and Lin, or Alles, Lin, and Stone.
RulingsFinal written decision- Expert testimonyPetitioner expert creditedDecided for petitioner
“We credit Dr. Jakobsson’s testimony, which is supported by evidence cited above, and determine the Petition and supporting evidence show that a person of ordinary skill in the art would have understood Nortel’s processing rules comprise software instructions to perform specific functions, and that a person of ordinary skill would have considered software instructions to perform specific functions to be applications. We rely on Nortel’s teaching of a processor group configured with processing rules to provide service policies such as security functions, and Dr. Jakobsson’s testimony and his supporting evidence that a person of ordinary skill in the art would have understood that security functions are provided by software applications, to determine that Nortel and the knowledge of a person of ordinary skill in the art teaches “a plurality of application processing hardware modules, each configured with an application for processing data packets” as recited in claim 1 and the corresponding limitation of 13. Ex. 1004, 3:5–9, 23:1–29, Fig. 6A; Ex. 1003 ¶¶ 80–85 (citing Ex. 1004, 3:5–9, 9:12–14, 9:16–19, 14:28–15:2, 15:4–6, 23:3–6, Fig. 6A; Ex. 1012, 4, 6; Ex. 1013, 4).” slip op. at 12
- BurdenFwd all claims unpatentableUnpatentable
“For the reasons given above, we determine that the Petition and supporting evidence show, by a preponderance of the evidence, that Nortel in view of the knowledge of a person of ordinary skill in the art would have rendered claims 1 and 13 obvious.” slip op. at 20
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“applications includes parallel transmitting of the identified data packets to each of the identified application processor modules.” Claim 14 recites a similar limitation. Petitioner, relying on testimony of Dr. Jakobsson, contends the cited art renders these limitations obvious because it would have been obvious to a person of ordinary skill in the art to apply Stone’s teaching of parallel transmission to Nortel’s ISN, such that the switch fabric transmits data packets in parallel to the packet service cards. Pet. 37–38 (citing Ex. 1004, 21:1–5, 22:31–32, 23:1–29, Figs. 4, 6A; Ex. 1005, 12:58– 13:18, Fig. 4; Ex. 1003 ¶¶ 160–162), 42. Petitioner, relying on testimony of Dr. Jakobsson, contends a person of ordinary skill in the art would have applied Stone’s parallel data transfer to the switch fabric of Nortel for the benefit of increasing the speed of transmitting a subscriber’s data packets to the appropriate service cards. Pet. 43–46 (citing Ex. 1005, 11:59–61; Ex. 1003 ¶¶ 192–199). Dr. Jakobsson testifies that a person of ordinary skill in the art would have been motivated to transfer data packets in parallel between Nortel’s switch fabric and packet service cards in order to increase the operating speed and efficiency of the system. Ex. 1003 ¶¶ 190–192 (citing Ex. 1012, 8; Ex. 1005, 11:59–61). We credit Dr. Jakobsson’s testimony and determine the Petition and supporting evidence articulates a reason with a rational underpinning that a person of ordinary skill in the art would have applied Stone’s teaching of transferring data packets in parallel, to transfer data packets in parallel between Nortel’s switch fabric and packet service cards, for the benefit of increasing speed as taught by Stone. We determine that the Petition and supporting evidence show by a preponderance of the evidence that the combination of Nortel and Stone would have rendered claims 2 and 14 obvious.” slip op. at 24
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“For purposes of this decision, we determine no terms need an explicit construction to resolve a controversy. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (only those terms which are in controversy need to be construed and only to the extent necessary to resolve the controversy). We address claim interpretation to the extent necessary within the unpatentability analysis.” slip op. at 7
Patent outcomesUS 9,525,696 unpatentableClaim construction§ 103 obviousnesscites PhillipsPatents in suitUS 9,525,696
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