- Telebrands Corp. v. Tinnus Enterprises, LLCAll claims unpatentablePTAB · Dec 30, 2016 · PGR2015-00018 · APJ Richard E Rice · PGR · Final written decision
Claims 1–6, 8, and 10–14 are unpatentable as indefinite under § 112(b); the Board did not reach the § 103(a) grounds.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“II. ANALYSIS A. Level of Skill in the Art Petitioner contends that a person of ordinary skill in the art (“POSA”) “would have been a person having a general knowledge about and experience with expandable containers, including without limitation balloons, and at least an associate’s degree in science or engineering.” Pet. 15–16 (citing Ex. 1015 ¶¶ 10–13; Ex. 1016 ¶¶ 10–13). Patent Owner responds that “the Board should limit Petitioner’s overly broad definition of a POSA from having an associate’s degree in any science or engineering to having an associate’s degree in mechanical engineering.” See, e.g., PO Resp. 12. According to Patent Owner, “Petitioner’s proposed definition should be limited because the inclusion of persons with an associate’s degree in any science or engineering fails to take into account the scope of the relevant art, which indisputably utilizes mechanical engineering principles.” Id. Upon consideration of the parties’ contentions, we determine that a POSA would have been a person having a general knowledge about and experience with expandable containers, including without limitation balloons, and at least an associate’s degree in mechanical engineering, or the equivalent.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther
“1. “elastic fastener” In our Institution Decision, we preliminarily determined that the broadest reasonable interpretation consistent with the Specification of the claim term “elastic fastener” is an elastic element for attaching things together. Inst. Dec. 7–8. As neither party proposes any change to our interpretation, and our review of the evidence does not indicate that any change is necessary, we maintain that interpretation.” slip op. at 8
- Disclosure Requirements (§112) › Definiteness (Nautilus)IndefiniteUnpatentable
“We determine that the test for indefiniteness that is applied in patent examination and reexamination matters, approved in Packard, should be applied in this post-grant review AIA proceeding, rather than the Nautilus requirement. The different approaches to indefiniteness before the PTO and the courts stem from the distinct roles that the PTO and the courts play in the patent system.12 In AIA proceedings, as in patent examination and reexamination matters, applying the broadest reasonable interpretation standard, coupled with an opportunity to amend the claims, is an approach that is fair to the patent holder and protects the public. See Cuozzo, 136 S. Ct. at 2145–46; Packard, 751 F.3d at 1312–14. This approach serves to ensure precision in patent claims, thereby helping the public to understand the limits of the claims and keeping the rights afforded by patents within their legitimate scope. See Cuozzo, 136 S. Ct. at 2144–45; Packard, 751 F.3d at 1313. Accordingly, among the reasons supporting application of the Packard-approved indefiniteness test in this AIA proceeding are those recognized by the Supreme Court in Cuozzo as supporting use of the broadest reasonable interpretation standard in inter partes review AIA proceedings. See Cuozzo, 136 S. Ct. at 2143–2146. Of these, the most important is the opportunity to amend the claims to correct any ambiguity. See id. at 2145 (“The patent holder may, at least once in the process, make a motion to do just what he would do in the examination process, namely, necessary) that a person of ordinary skill in the art would not consider the claim language unclear.” 12 See Packard, 751 F.3d at 1325 (Plager, J., concurring) (stating that “unlike courts which have a full prosecution record to consider, the prosecution record before the USPTO is in development and not fixed during examination”). amend or narrow the claim.”) (citation omitted); 35 U.S.C. § 326(d); 37 C.F.R. § 42.221. An applicant’s ability to clarify claim language through amendment was a significant reason why the Federal Circuit in Packard approved of the indefiniteness test recited in the MPEP (i.e., a “claim is indefinite when it contains words or phrases whose meaning is unclear”). Packard, 751 F.3d at 1313–14.” slip op. at 18
- ExcludeMotion to exclude, deniedDenied
“III. MOTIONS TO EXCUDE In its Motion to Exclude (Paper 57), Patent Owner seeks to exclude Petitioner’s Exhibits 1031 and 1032. Paper 57, 1–3. We deny Patent Owner’s motion, as moot, because we did not consider the referenced exhibits in reaching our decision in this case. In its Motion to Exclude (Paper 59), Petitioner seeks to exclude Patent Owner’s Exhibits 2016–2018, 2020 (¶ 84), 2024, 2025 (¶ 39), 2026 (¶ 39), 2027–2070, 2073, 2074, 2078, and 2085. Paper 59, 1–8. We deny Petitioner’s motion, as moot, because we did not consider the referenced exhibits and paragraphs in reaching our decision in this case.” slip op. at 34
Patent outcomesUS 9,051,066 unpatentableClaim construction§ 103 obviousness§ 112 disclosurecites NautilusPatents in suitUS 9,051,066 - Viasat, Inc. v. Advanced Media Networks, LLCRehearing deniedPTAB · Dec 30, 2016 · IPR2016-00795 · APJ Christa P Zado · IPR · Rehearing
The Board denied ViaSat’s rehearing request, leaving in place denial of institution on claims 1–9, 13–21, 29–50, 67–82, 104, 105, 107, and 110 because it had not shown motivation to combine Norand with the Eng …
RulingsRehearing decision- RehearingRehearing, deniedDenied
“petition decision is abuse of discretion. 37 C.F.R. § 42.71(c). The party seeking rehearing has the burden of showing the decision should be modified: (d) Rehearing. . . . 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, and opposition, or a reply.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“references disclose similar networks and share common goals were in support of its assertion that “[t]he disclosed communication protocols of the Eng Patent could be readily applied to the communications systems disclosed by Norand.” Pet. 25. As we discussed in our Decision, it is insufficient for Petitioner to state generally that the communication protocols used in Eng’s architecture could be readily applied in Norand’s architecture because communication networks involve several layers of protocols and Petitioner did not adequately address the TCP and IP protocols or the layers in which they operate. Decision 7, 20–21.” slip op. at 3
§ 103 obviousnessPatents in suitUS 6,445,777 - Viasat, Inc v. Advanced Media Networks, LLCRehearing deniedPTAB · Dec 30, 2016 · IPR2016-00796 · APJ Christa P Zado · IPR · Rehearing
The Board denied ViaSat’s rehearing request, leaving in place the denial of institution because the petition did not show that combining Norand with the Eng references would have been obvious.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“petition decision is abuse of discretion. 37 C.F.R. § 42.71(c). The party seeking rehearing has the burden of showing the decision should be modified: (d) Rehearing. . . . 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, and opposition, or a reply.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“references disclose similar networks and share common goals were in support of its assertion that “[t]he disclosed communication protocols of the Eng Patent could be readily applied to the communications systems disclosed by Norand.” Pet. 26–27. As we discussed in our Decision, it is insufficient for Petitioner to state generally that the communication protocols used in Eng’s architecture could be readily applied in Norand’s architecture because communication networks involve several layers of protocols and Petitioner did not adequately address the TCP and IP protocols or the layers in which they operate. Decision 7, 21–22.” slip op. at 3
- Strike new argumentNew argument disregardedDecided for patent owner
“that a benefit of TCP/IP networks is that ‘there exist approaches to mobility management at the network layer, e.g., Mobile IP.” Req. Reh’g. 14 (citing Ex. 1004, 3:52–54). Petitioner does not identify where in the Petition it made such an argument. See 37 C.F.R. § 42.71(d) (“The request must specifically identify . . . where each matter was previously addressed in a motion”). Petitioner did not explain in the Petition how the cited portion of the Eng patent describes a “benefit” of “TCP/IP networks.” Indeed, this is a new argument improperly raised for the first time in the Request. See id. When read with its surrounding context, the Eng patent discloses that in “TCP/IP networks, there exist approaches to mobility management at the network layer, e.g., Mobile IP.” Ex. 1004, 3:52–54. Petitioner did not explain sufficiently how this teaches any “benefits” of using TCP/IP, or how this demonstrates motivation to combine the Eng references with Norand.” slip op. at 6
§ 103 obviousnessPatents in suitUS 6,445,777 - Viasat, Inc v. Advanced Media Networks, LLCRehearing deniedPTAB · Dec 30, 2016 · IPR2016-00629 · APJ Christa P Zado · IPR · Rehearing
The Board denied ViaSat’s rehearing request, leaving in place the denial of institution because ViaSat did not show that combining Norand with the Eng references would have been obvious.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“petition decision is abuse of discretion. 37 C.F.R. § 42.71(c). The party seeking rehearing has the burden of showing the decision should be modified: (d) Rehearing. . . . 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, and opposition, or a reply.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“In the Petition, Petitioner’s arguments that Norand and the Eng references disclose similar networks and share common goals were in support of its assertion that a skilled artisan “would have recognized that the disclosed communication protocols of the Eng references could be readily applied to the communications system disclosed by Norand.” Pet. 25. As we discussed in our Decision, it is insufficient for Petitioner to state generally that the communication protocols used in Eng’s architecture could be readily applied in Norand’s architecture because communication networks involve several layers of protocols and Petitioner did not adequately address the TCP and IP protocols or the layers in which they operate. Decision 7, 22–23.” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“references disclose similar networks and share common goals were in support of its assertion that a skilled artisan “would have recognized that the disclosed communication protocols of the Eng references could be readily applied to the communications system disclosed by Norand.” Pet. 25. As we discussed in our Decision, it is insufficient for Petitioner to state generally that the communication protocols used in Eng’s architecture could be readily applied in Norand’s architecture because communication networks involve several layers of protocols and Petitioner did not adequately address the TCP and IP protocols or the layers in which they operate. Decision 7, 22–23.” slip op. at 3
- Strike new argumentNew argument disregardedDecided for patent owner
“Petitioner also contends that the Eng patent “clearly teaches that a benefit of TCP/IP networks is that ‘there exist approaches to mobility management at the network layer, e.g., Mobile IP.” Req. Reh’g. 14 (citing Ex. 1004, 3:52–54). Petitioner does not identify where in the Petition it made such an argument. See 37 C.F.R. § 42.71(d) (“The request must specifically identify . . . where each matter was previously addressed in a motion”). Indeed, this is a new argument improperly raised for the first time in the Request. See id. Petitioner did not explain in the Petition how the cited portion of the Eng patent describes a “benefit” of TCP/IP newtowrks.” When read with its surrounding context, the Eng patent discloses that in “TCP/IP networks, there exist approaches to mobility management at the network layer, e.g., Mobile IP.” Ex. 1004, 3:52–54. Petitioner did not explain sufficiently how this teaches any “benefits” of using TCP/IP, or how this demonstrates motivation to combine the Eng references with Norand.” slip op. at 6
§ 103 obviousnessPatents in suitUS 5,960,074 - Viasat, Inc v. Advanced Media Networks, LLCRehearing deniedPTAB · Dec 30, 2016 · IPR2016-00628 · APJ Christa P Zado · IPR · Rehearing
The Board denied ViaSat’s rehearing request, leaving the denial of institution on claims 1–13, 28–37, 41–61, 91–107, 123, 126, 128–157, 160–167, 169, and 171 unchanged because the petition did not show motivation to combine.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“petition decision is abuse of discretion. 37 C.F.R. § 42.71(c). The party seeking rehearing has the burden of showing the decision should be modified: (d) Rehearing. . . . 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, and opposition, or a reply.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“references disclose similar networks and share common goals were in support of its assertion that a skilled artisan “would have recognized that the disclosed communication protocols of the Eng references could be readily applied to the communications system disclosed by Norand.” Pet. 24. As we discussed in our Decision, it is insufficient for Petitioner to state generally that the communication protocols used in Eng’s architecture could be readily applied in Norand’s architecture because communication networks involve several layers of protocols and Petitioner did not adequately address the TCP and IP protocols or the layers in which they operate. Decision 7, 21–22.” slip op. at 3
- Strike new argumentNew argument disregardedDecided for patent owner
“explain[ed] sufficiently why a person of skill in the art would have used the TCP/IP protocols with the network architecture taught in Norand” overlooks “the prior art and evidence of record which provides ample explanation as to ‘why’ a POSITA would find incorporating TCP/IP into Norand desirable.” Req. Reh’g. 14. With respect to this assertion, Petitioner does not identify the place in the Petition where Petitioner previously addressed such matters pursuant to 37 C.F.R. § 42.71(d), other than the matter we addressed above, namely that Norand and Eng share a common goal of linking together mobile users. Id. at 14–15. slip op. at 6
§ 103 obviousnessPatents in suitUS 5,960,074 - Amerigen Pharmaceuticals Limited v. Shire LLCRehearing deniedPTAB · Dec 28, 2016 · IPR2015-02009 · APJ Toni R Scheiner · IPR · Rehearing
The Board denied Amerigen’s rehearing request, leaving claims 1–3, 5, 8, 9, and 11 uninstituted because Mehta did not disclose the claimed release limitation.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“STANDARD OF REVIEW When reconsidering a decision on institution, the Board reviews the decision for an abuse of discretion. See 37 C.F.R § 42.71(c). An abuse of discretion occurs if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. See Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). “The burden of showing that a decision should be modified lies with the party challenging the decision.” Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). In its request for rehearing, the dissatisfied party must, in relevant part, “specifically identify all matters the party believes the Board misapprehended or overlooked.” 37 C.F.R. § 42.71(d); Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,768. We address Amerigen’s arguments with these principles in mind.” slip op. at 2
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“These arguments are not persuasive. First, Petitioner cites no authority for the proposition that a generic disclosure, such as that discussed above, is an express disclosure of every possible permutation of that generic disclosure. Second, even if we were to accept, for the sake of argument, that Mehta’s combined disclosures constitute an express disclosure of a composition capable of delayed release of “essentially all [of the drug] . . . within about 60 minutes,” non-instituted claims 1–3, 5, 8, 9, and 11 further require that the delayed release is enteric (i.e., the composition releases the second dose of the drug in the intestines, not the stomach). As we noted in the Decision, however, Mehta does not use the word “enteric,” nor does Mehta discuss delivery of the delayed dose to the intestines. Dec. 28. Nevertheless, we considered the possibility that Mehta might inherently disclose a composition that releases into the intestine not less than 80% of the second dose of the drug within about 60 minutes of the delayed release. Accordingly, we turned to Mehta’s Examples 1–5, but determined that not one of the exemplified delayed release compositions achieved a release of “essentially all” of the drug from a delayed release coating within about 60 minutes—regardless of whether the delay was long enough to be considered enteric.3 Id. at 24. As we noted in the Decision,” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable
“This argument is not persuasive. We considered, for example, Dr. Elder’s testimony that one of ordinary skill in the art would expect “that the number of variables and number of experimental runs to optimize the coating for the amphetamine would present no unusual problems of technology or expense” because one “can use statistical experimental design to optimize a formulation within the 21 trials that Mehta discloses to design one for amphetamine salts” (Ex. 1005 ¶ 471), as well as Dr. Elder’s testimony that one would expect “that routine optimization of the coating using the parameters identified by Mehta would provide enough guidance for controlling the release timing” (id. ¶ 512). Nevertheless, we found the actual results reported by Mehta to be more compelling. As we stated in the Decision: [N]one of Mehta’s delayed release formulations that could be considered to be enteric by virtue of their delay periods (i.e., those with delays of 4 or 5 hours) had release rates of “essentially all” of the drug anywhere near the required time period. Even if Mehta could be read to suggest that a delay of 4 or 5 hours followed by a release of essentially all of the delayed dose within 60 minutes would be desirable, we are not persuaded that Mehta’s disclosure that “the amount of drug released is influenced by: amount of coating, ratio of the two 4 Amerigen supported its challenges with the Declaration of Edmund J. Elder, Jr., Ph.D., R.Ph., executed September 30, 2015 (“Elder Declaration”) (Ex. 1005). polymers, amount of talc, and curing time” is adequate guidance for one of ordinary skill in the art to achieve such a dosage form. In general, Mehta demonstrates that longer delays are accompanied by longer release times, with formulations that could be considered to provide enteric release (i.e., a release after a 4 or 5 hour [delay]) having 85% release times of 8 or more hours. Dec. 33–34 (citing Ex. 1003, Table 1).” slip op. at 8
§ 102 anticipation§ 103 obviousness - Amerigen Pharmaceuticals Limited v. Shire LLCRehearing deniedPTAB · Dec 28, 2016 · IPR2015-02009 · APJ Toni R Scheiner · IPR · Rehearing
The Board denied Shire’s rehearing request and confirmed claim 25 is in the trial only through its dependency from claims 18–20, not claims 2 or 13.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“We are not persuaded and decline to alter the Order concluding the Decision of April 19, 2016 in any way. Claim 25 would fall should Petitioner prevail in its obviousness challenge—so long as claim 25’s dependency from claims 18–20 remains. However, we take this opportunity to confirm that claim 25 is part of the trial only to the extent it depends from claims 18–20, and not to the extent it depends from non-instituted claims 2 and 13.” slip op. at 4
None - Microsoft Corporation And Microsoft Mobile, Inc. v. Global Touch Solutions, LLCAll claims unpatentablePTAB · Dec 28, 2016 · IPR2015-01928 · APJ Justin Busch · IPR · Final written decision
Claims 1, 3, and 20 are unpatentable as obvious over Jahagirdar and Schultz because their combination would have been a predictable substitution of familiar touch sensors for keys.
RulingsFinal written decision- BurdenUnpatentable
“III. CONCLUSION Based on the evidence and arguments, Petitioner has demonstrated, by a preponderance of the evidence, that claims 1, 3, and 20 of the ’494 patent are unpatentable under 35 U.S.C. § 103(a) as obvious over Jahagirdar and Schultz. IV. ORDER Accordingly, it is: ORDERED that claims 1, 3, and 20 of the ’494 patent have been shown to be unpatentable; and” slip op. at 19
- Skill levelOther
“touch sensors were not limited by size or arrangement, and a person of ordinary skill could have taken the Schultz sensors and put them into touch sensors the size of the buttons on Jahagirdar. Ex. 1017, 138:17–21, 140:2– 13. Additionally, as Dr. Morley acknowledges, the claims of the ’494 patent contain no limitations as to the physical form, internal architecture, or arrangement of the touch sensors. Id. at 172:12–173:10. Patent Owner presents no argument that the proposed combination would have been beyond the capabilities or knowledge of a person having ordinary skill in the art. As the Supreme Court has stated, “when a patent simply arranges old elements with each performing the same function it had been known to perform and yields no more than one would expect from such an arrangement, the combination is obvious.” KSR, 550 U.S. at 417 (internal quotation marks omitted). “If a person of ordinary skill can implement a predictable variation . . . § 103 likely bars its patentability.” Id. As illustrated by Schultz, the use of a touch sensor as an alternative to a mechanical push button was well known in the prior art. See Ex. 1005; Ex. 1015 ¶¶ 40–43. We agree that the combination of Jahagirdar and Schultz teaches the elements of claim 1 as arranged, and we determine the proposed combination would have been obvious, because it merely involves substitution of familiar elements, the combination of which yields predictable results. See KSR, 550 U.S. at 417. In particular, we agree that the proposed combination is the simple substitution or modification of Jahagirdar’s keys with Schultz’s known touch sensor. This is, in other words, a textbook case of obviousness. See Agrizap, Inc. v. Woodstream Corp., 520 F.3d 1337, 1344 (Fed. Cir. 2008) (“This is a textbook case of” slip op. at 11
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“As the Supreme Court has stated, “when a patent simply arranges old elements with each performing the same function it had been known to perform and yields no more than one would expect from such an arrangement, the combination is obvious.” KSR, 550 U.S. at 417 (internal quotation marks omitted). “If a person of ordinary skill can implement a predictable variation . . . § 103 likely bars its patentability.” Id. As illustrated by Schultz, the use of a touch sensor as an alternative to a mechanical push button was well known in the prior art. See Ex. 1005; Ex. 1015 ¶¶ 40–43. We agree that the combination of Jahagirdar and Schultz teaches the elements of claim 1 as arranged, and we determine the proposed combination would have been obvious, because it merely involves substitution of familiar elements, the combination of which yields predictable results. See KSR, 550 U.S. at 417. In particular, we agree that the proposed combination is the simple substitution or modification of Jahagirdar’s keys with Schultz’s known touch sensor. This is, in other words, a textbook case of obviousness. See Agrizap, Inc. v. Woodstream Corp., 520 F.3d 1337, 1344 (Fed. Cir. 2008) (“This is a textbook case of when the asserted claims involve a combination of familiar elements according to known methods that does no more than yield predictable results.”). Patent Owner does not point us to objective evidence of nonobviousness to overcome the textbook case of obviousness here.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“Notwithstanding Patent Owner’s position that the proposed combination would increase accidental actuations when grabbing or holding Jahagirdar’s mobile station, Petitioner points to Dr. Morley’s testimony that touch sensors would alleviate accidental actuation by inanimate objects (e.g., “clothes, objects in a bag, [and] surfaces of furniture”). Pet. Reply 2 (citing Ex. 1017, 157:20–158:23; Ex. 2006 ¶ 63). Accordingly, Petitioner argues a person having ordinary skill in the art looking to reduce inadvertent actuation by inanimate objects would be motivated to incorporate Schultz’s touch sensor. Id. at 2–3 (citing Ex. 1023 ¶¶ 4–5). Moreover, Petitioner’s unrebutted evidence in the record demonstrates Schultz’s touch sensor could have been integrated into Jahagirdar’s keys 144 in multiple ways, depending upon what might have been convenient or desirable. Id. at 3–4 (citing Ex. 1015 ¶ 75); Ex. 1023 ¶ 5. For example, a person of ordinary skill would have been readily able to relocate those touch sensors to different locations, or “one of skill could have easily programmed Jahagirdar’s controller such that touch sensor inputs were only recognized at appropriate times for example, depending on whether the mobile station 102 was opened or closed.” Ex. 1015 ¶ 75. In such a way, inadvertent actuation of the touch sensors would be minimized or eliminated.” slip op. at 13
Patent outcomesUS 7,265,494 unpatentableClaim construction§ 103 obviousnessPatents in suitUS 7,265,494 - Toshiba America Information Systems, Inc. / Apple Inc. v. Global Touch Solutions, LLCAll claims unpatentablePTAB · Dec 28, 2016 · IPR2015-01616 · APJ Justin Busch · IPR · Final written decision
Claims 1–3, 19, and 20 are unpatentable as obvious over Layman and Beard, with Rathmann additionally for claim 19 and APA additionally for claim 20.
RulingsFinal written decision- BurdenDecided for petitioner
“We have reviewed the Petition, Patent Owner Response, and Petitioner’s Reply, as well as the relevant evidence discussed therein. For the reasons that follow, we determine Petitioner has shown, by a preponderance of the evidence, that the challenged claims would have been obvious in view of the asserted combined teachings of the asserted references.” slip op. at 5
- Skill levelOther
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“We agree with Petitioner’s arguments, as supported by testimony from Mr. Beard, that the combination of Layman and Beard teaches or suggests the uncontested limitations recited in claim 1 as well as the additional limitations recited in dependent claims 2 and 3, and we adopt those assertions as our findings. See Pet. 35–43, 50–51. For example, Petitioner points to Layman’s power management system 28 (electronic unit) connected to an infusion pump system (product), including pump circuits 34 (load), and to power sources (both an AC power source and a battery) through an electrical circuit as meeting the preamble of claim 1. Id. at 35– 37. Petitioner argues Layman’s disclosure of processor 42 providing a control signal to turn power to pump circuits 34 on or off in response to a signal received from switch 38 meets the recited microchip that controls “the flow of power from the power source to activate the load.” Id. at 38. Petitioner contends Layman’s switch 38 is not a serial element in the power circuit because switch 38 merely sends a signal to processor 42, which controls whether the pump is powered on, and that switch 38, therefore, teaches the recited switch. Id. at 38–39. Petitioner relies on Beard for teaching a touch sensor used to activate the battery capacity display. Id. at 39–40. We find the disclosures in Rathmann and APA relied upon by Petitioner teach or suggest the additional limitations recited in claims 19 and 20, respectively, id. at 52–55, and that a person having ordinary skill in the art would have had reason to combine Rathmann’s asserted teachings as proposed, id. at 30–34. We discuss the disputed limitations of independent claim 1 and the rationale for combining the asserted teachings from Layman and Beard in more detail below.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“All of Patent Owner’s challenges to Petitioner’s rationale assume the proposed combination replaces Layman’s battery with the battery disclosed in Beard. See, e.g., PO Resp. 8 (“While the Petition suggests replacing Layman’s battery with that of Beard would be desirable . . . .”) Petitioner does not suggest such a replacement. Rather, Petitioner asserts “[a] POSITA would have been especially motivated to combine Layman with Beard’s power-saving touch switch activated display in light of Layman’s stated desire for features that extend battery life and increase the time between battery replacements.” Pet. 28 (emphasis added). Petitioner reiterated its position, asserting that Patent Owner’s arguments do “not address Petitioner’s motivation arguments,” which are no “more than an obvious substitution of elements that were well known in the prior art.” Pet. Reply 2. Petitioner merely proposes incorporating Beard’s teaching of a touch switch activated display into Layman’s system. Pet. Reply 7 (arguing “the Petition analyzed whether one of ordinary skill would have found it obvious to incorporate a touch-sensor activated display such as in Beard into Layman’s system”). As discussed above, Petitioner has presented reasons with rational underpinning as to why a person having ordinary skill in the art would look to integrate Beard’s touch sensor activated display with Layman. We find Petitioner’s arguments persuasive, and we adopt those reasons as the rationale for combining the cited teachings of Beard with the cited teachings of Layman.” slip op. at 12
Patent outcomesUS 7,265,494 unpatentableClaim construction§ 103 obviousnesscites KSRPatents in suitUS 7,265,494 - PTAB · Dec 28, 2016 · IPR2015-01037 · APJ Brian J Mcnamara · IPR · Rehearing
The Board denied rehearing in both proceedings because Petitioner did not show that Su was publicly accessible by the critical date or that the Board overlooked or misapprehended a petition argument.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“Petitioner fails to recognize that our Decision was based on Petitioner’s failure to present sufficient evidence of public accessibility. Public accessibility is the touchstone in determining whether a reference is a printed publication. In re Hall, 781 F.2d 897, 898–99 (Fed. Cir. 1986). “A reference is publicly accessible ‘upon a satisfactory showing that such document has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it.”’ Kyocera Wireless Corp. v. Int’l Trade Comm’n., 545 F.3d 1340, 1350 (Fed. Cir. 2008) (quoting SRI Int’l, Inc. v. Internet Sec. Sys. Inc., 511 F.3d 1186, 1194 (Fed. Cir. 2008). Whether a reference is a printed publication is a legal question based on underlying factual determinations. Id. The party seeking to introduce the reference “should produce sufficient proof of its dissemination or that it has otherwise been available and accessible to persons concerned with the art to which the document relates and thus most likely to avail themselves of its contents.” In re Wyer, 655 F.2d 221, 227 (CCPA 1981).” slip op. at 3
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“The sole evidence cited in the Petition is a print-out of a record created in 2008 by Theses Canada. Ex. 1013 (“TH-Su”). As we noted in our Decision Denying Institution, TH-Su includes an active PDF link to Su, identifies Su as resident on two microfiches, indicates the publisher is the Ottawa: National Library of Canada [1999], and includes an abstract. Dec. Denying Inst. 7. TH-Su also includes an AMICUS No. (20672380)1, an international standard book number (ISBN 0612312569), a Canadian Number (992099080) and the following information “Copies: NL Stacks – Mic. TJ- 31256.” Id. at 7-8. However, TH-Su is a document created and modified on July 18, 2008, not in 1999. Id. at 7–8. Petitioner failed to tie 3 We agree with Petitioner’s assertion that it did not concede any of the argument set forth in Patent Owner’s Preliminary Response. Req. Reh’g. 6, fn 4. However, our inquiry during the conference of August 4, 2016 concerned facts and evidence. any of these numerical designations in TH-Su to public accessibility prior to 2008. Thus, Petitioner failed to meet its burden to demonstrate that Su was publically accessible in 1999.” slip op. at 4
§ 102 anticipationPatents in suitUS 8,122,141
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.