• Microsoft Corporation v. Bradium Technologies LLCInstitution denied
  PTAB · Dec 23, 2015 · IPR2015-01434 · APJ Brian J Mcnamara · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of prevailing on any challenged claim under the asserted obviousness grounds.

  RulingsInstitution decision

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

    “to institute an inter partes review of claims 1–20 (the “challenged claims”) of U.S. Patent No. 7,908,343 B2 (“the ’343 Patent”). 35 U.S.C. § 311. Bradium Technologies LLC (“Patent Owner”) timely filed a Preliminary Response, Paper 12 (“Prelim. Resp.”), contending that the Petition should be denied as to all challenged claims. We have jurisdiction under 37 C.F.R. § 42.4(a) and 35 U.S.C. § 314, which provides that an inter partes review may not be instituted unless the information presented in the Petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.”” slip op. at 2

  • BurdenOther

    “map each claim element to a particular teaching of an asserted reference. In particular, Patent Owner notes that, rather than state the claim language in the Petition, Petitioner provides Exhibit 1013, which breaks the claims into specific phrases and assigns each phrase a designation, e.g., 1.A, 1.B. Prelim. Resp. 32. Patent Owner argues that Petitioner’s approach improperly incorporates the claims by reference and that no relief can be granted unless the arguments in the Petition itself, of which the claims are an essential part, support granting the relief. Id. at 33. We agree that Petitioner’s use of an Exhibit to specify the claim elements and its failure to include the claim language anywhere in the Petition is an improper incorporation by reference. Nevertheless, although the claim language is not repeated in the Petition, the Petition contains a paragraph for most, if not all the claim element designations. Therefore, we do not dismiss the Petition on this basis alone.” slip op. at 11

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

    “specification, neither “data parcel” nor “update data parcel” is defined explicitly in the ’343 Patent. The ’343 Patent refers to “source image data” being processed to obtain a series of K1-N derivative images of progressively lower image resolution. Ex. 1001, col. 6, ll. 6–6. The ’343 Patent also discloses the source image data corresponding to the series image K0 being subdivided into a regular array such that each resulting “image parcel” of the array has, for example, 64 by 64 pixel resolution, where the “image data” has a color or bit per pixel depth of 16 bits, which represents a “data parcel” size of 8 K bytes. Ex. 1001, col. 6, ll. 6–11. Thus, an image parcel is an element of a source image array that defines a source image and a data parcel is data that corresponds to an image parcel. In view of this disclosure, we construe “data parcel” to mean data that corresponds to an element of a source image array. We agree that no other specific claim construction is required and we accord the claim terms their ordinary meaning as used in the ’343 Patent specification.” slip op. at 9

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference is prior artReference not prior artMixed

    “REFERENCES ARGUED AS NOT APPLICABLE PRIOR ART Patent Owner contends that Petitioner has failed to demonstrate that Potmesil (Ex. 1002) and Lindstrom (Ex. 1004) constitute applicable prior art references. Prelim. Resp. 3–12. We addressed the same arguments as those advanced by Patent Owner in this proceeding in our Decision to Institute in related proceeding Microsoft Corp. v. Bradium Technologies LLC, Case IPP2015-01432, slip op. at 10–14 (PTAB Dec. 23, 2015)(Decision to Institute)3 and Microsoft corp. v. Bradium Technologies LLC, Case IPR2015-01435, slip op. at 8–16 (PTAB Dec. XX, 2015)4. We arrive at the same result in this proceeding and find that, although Petitioner has established that Potmesil is applicable as prior art, Petitioner has not established Lindstrom is prior art that may be applied in Petitioner’s challenge.” slip op. at 9

  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,908,343
• NHK Seating Of America, Inc. v. Lear CorporationSome claims unpatentable
  PTAB · Dec 15, 2015 · IPR2014-00925 · APJ Mitchell G Weatherly · IPR · Final written decision

  Claims 1, 3, and 4 are unpatentable as obvious over DE ’017 and DE ’826; claim 2 was not shown unpatentable because the combination lacks the claimed tab.

  RulingsFinal written decision

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

    “Not all surfaces guide a path of travel. We imposed this limitation based upon our review of the Specification. The pertinent portion of Figure 5 from the ’818 patent (reproduced at right) illustrates ramp 132 having two cam surfaces 134a and 134b (highlighted in green). These two cam surfaces together comprise cam surface 134. Ex. 1001, 8:65–9:2. Although we agree with Lear that the combination of cam surfaces 134a, 134b “changes the trajectory of travel” of the ends of lower crossbar 120, Lear fails to persuade us that the Specification justifies reading such a limitation into “cam surface.” The Specification specifically counsels against reading such a limitation into the claims by stating: “Those having ordinary skill in the art will appreciate that the ramp 132 can include any number of cam surfaces oriented in any manner toward the upper armature 50 without departing from the scope of the invention.” Ex. 1001, 9:9–13 (emphasis added). Accordingly, either of cam surfaces 134a or 134b is within the “scope of the invention” because either one constitutes “any number of cam surfaces oriented in any manner.” Second, we are not persuaded by Lear’s argument that, by interpreting “cam surface” as meaning “a surface that guides a path of travel,” we render “to slide the transverse bar along the cam surface” superfluous. Resp. 33– 35. We read “to slide the transverse bar along the cam surface” as specifying which “path of travel” the “cam surface” guides, namely, the path of travel of the “transverse bar.” Because we are unpersuaded by Lear’s arguments for altering our preliminary interpretation of “cam surface,” we maintain our interpretation of “cam surface” as meaning “a surface that guides a path of travel.”” slip op. at 7

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundMotivation foundDecided for petitioner

    “would render it inoperable for its intended purpose. First, we determine that both references have the same intended purpose, namely to move the head rest to a supportive position in response to a rear-end collision. Ex. 1004, Abstract, ¶¶ 15, 16, 18; Ex. 1006 ¶¶ 27–30. Second, we determine that DE ’017 and DE ’826 both operate according to principles that efficiently translate the forces applied by the occupant to the seat back during a collision into movement of the head rest. Ex. 1004, Abstract, ¶ 5, claim 1; Ex. 1006 ¶¶ 27–30. Third, we determine that both DE ’017 and DE ’826 do not move the head rest in response to forces encountered in normal, non-collision, conditions. Both systems respond only to forces large enough to overcome biasing forces imparted by springs that hold the head rest in the non-actuated position during normal conditions. Ex. 1004 ¶ 17; Ex. 1006 ¶ 25; Ex. 1012, 25:11–23; Ex. 1013 ¶¶ 27–29. Accordingly, we are not persuaded that NHK’s proposed modification of DE ’017 would render DE ’017 inoperable for its intended purpose.” slip op. at 18

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedOther

    “annotated figure is not a “tab” but instead an eyebolt. Because DE ’017 never directly describes or discusses this uppermost “tab” structure, Lear supports its argument with testimony from Dr. Viano. Surreply 3 (citing Ex. 2019 ¶¶ 19–22). The only portion of DE ’017 relating to this uppermost structure is a passage stating “At the end of the pivot lever 2d, opposite the pivotal axis 4, the coupling element 6b of the connection device 6 is suspended in an articulate fashion.” Ex. 1004 ¶ 17. Dr. Viano testifies that, because of the way that this uppermost structure is illustrated in Figure 2b and the functional description of the connection between coupling element 6b and lever 2d, a skilled artisan would conclude that this uppermost structure is akin to an eyebolt. Ex. 2019 ¶ 22. Dr. Kent testifies that concluding that the uppermost structure is “drawn as a tab” is a “reasonable inference . . . based on the way it is characterized in the drawing and the mechanical function it performs.” Ex. 2020, 19:6–17. Dr. Kent offers no further explanation for his inference that the uppermost structure is a “tab.” We accept Dr. Viano’s tesimony on how a skilled artisan would view the uppermost structure that NHK identifies in the annotated version of Figure 2b of DE ’017 as being more credible, thorough, and reasoned than Dr. Kent’s. On the record before us, we are persuaded by Lear’s argument and evidence that the uppermost structure does not constitute the claimed “tab.”” slip op. at 24

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed

    “surface” because slot 17 guides a path of travel for pin 18, which is operatively connected to impact plate 10 of DE ’826. Pet. 25, 31–32. On the record before us, and under our interpretation of “cam surface,” we are persuaded by NHK’s argument. Accordingly, we conclude that NHK has established by a preponderance of evidence that DE ’826 describes the “cam surface” recited in claim 1.” slip op. at 21

  Patent outcomesUS 8,434,818 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,434,818
• Universal Remote Control, Inc. v. Universal Electronics Inc.Some claims unpatentable
  PTAB · Dec 15, 2015 · IPR2014-01104 · APJ Sally C Medley · IPR · Final written decision

  Claims 1, 9, 10, 14, and 15 are unpatentable as obvious over Ciarcia and Hastreiter; unpatentability of claims 16 and 17 was not shown.

  RulingsFinal written decision

  • PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner

    “In any event, and even assuming that URC and Ohsung share an employee, we do not agree with Patent Owner that such a sharing of one employee (Mr. You) suggests that Ohsung exercised or could have exercised control over Petitioner’s participation in the proceeding. For instance, Mr. You is said to have been a director of engineering for Petitioner. Id. at 36– 37. Patent Owner has not shown that Mr. You was in a position within Ohsung to persuade Ohsung and/or Petitioner to make a litigation decision to pursue an inter partes proceeding. Moreover, we are not persuaded by Patent Owner’s argument that because URC previously paid for office space which an Ohsung employee (Mr. You) used, this suggests that Ohsung has reciprocated by paying for anything associated with the proceedings or controlled the proceeding in any other way. Id. If anything, the evidence tends to show that URC pays for expenses, such as the costs associated with these proceedings, not Ohsung. We also have considered Patent Owner’s argument that Ohsung’s and URC’s close relationship is exemplified by a settlement and license agreement (Ex. 2050, “agreement”) between Patent Owner and Petitioner, a provision of which obligates Ohsung to pay royalties to Patent Owner. PO Resp. 38. Patent Owner argues that the agreement strongly suggests that Ohsung may have had the opportunity to control, direct, and/or influence the present proceeding. Id. at 38–39. The agreement was executed in 2004. The royalties that Patent Owner mentions were paid out in 2005, 2006, and 2007. Patent Owner has not shown how the agreement exemplifies a close relationship in 2014 when the petition in this proceeding was filed. Moreover, the agreement and royalties are directed to a set of patents, none of which is the patent involved in this proceeding. Accordingly, we are not persuaded by this argument. Lastly, we are not persuaded by Patent Owner’s argument that because URC and Ohsung share litigation counsel in the related case, that that tends to show that Ohsung has controlled, or had the opportunity to control, this proceeding. In summary, and based on the totality of arguments and evidence presented, we are not persuaded that Ohsung is a real party-ininterest on behalf of Petitioner.” slip op. at 7

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

    “Petitioner proffers constructions for several means-plus-function terms (Pet. 14–20), and Patent Owner weighs in on those constructions (PO Resp. 5–22). For purposes of this Final Written Decision, we determine that those terms do not require express construction. Patent Owner also contends that Petitioner’s failure to propose a construction for “IR lamp driver means,” “receiving means,” “decoding means,” “first connector means,” and “interface connector means” in accordance with 35 U.S.C. § 112, sixth paragraph, is fatal to the Petition. PO Resp. 2–3. We agree with Petitioner, however, that these “means” are part of means-plus-function limitations which Petitioner did construe. PO Resp. 11. For this Final Written Decision, we determine that only the terms “code data” and “instruction codes” require express construction.” slip op. at 9

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

    “None of the challenged claims define or further explain what “code data” means. For example, there is nothing in claim 1 that would lead us to believe that data, albeit code data, should be construed to mean data plus programming or executable computer instructions. The phrase is “code data.” Moreover, the challenged claims distinguish between instruction codes and code data by claiming them both as separate elements. Based on the plain words of the challenged claims, code data and instruction codes are Petitioner’s arguments advanced during trial hearing that were not raised prior to the trial hearing. To do otherwise would be prejudicial to Patent Owner. 6 In its Reply brief, and during hearing, Petitioner argued that the claim 1 “instruction codes” are synonymous to the “instructions” that Patent Owner argues is part of “code data.” Pet. Reply 4, 7–8; Tr. 18. Patent Owner had ample opportunity to explain, during hearing, that “instruction codes” are different from “instructions” that it argues is part of “code data,” but did not do so. Tr. 38. not the same thing. Yet, Patent Owner’s claim construction would effectively rewrite the language to remove, for example with respect to claim 1, the “at least one of . . . or” language. For example, claim 1 covers choosing both instruction codes and code data, but under Patent Owner’s construction such scenario would make little sense because code data would also include instruction codes or instructions.” slip op. at 11

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “From the above, Mr. Gafford acknowledges that Ciarcia’s menus do not necessarily include instructions, only that they can include instructions. Moreover, Mr. Gafford’s testimony that a well-known method of defining a menu was to write a program expressed in the form of instructions does not mean that the menus defined in the Ciarcia reference included such instructions. We give Mr. Gafford’s testimony little if any weight that defining menus to include instructions was a mere design choice and well known at the time of the invention, because the underlying evidence in support of that assertion has not been shown to be relevant at the time of the invention. In particular, the content of a current Wikipedia webpage to which we are directed has not been shown to be relevant to what a person of ordinary skill in the art would have known at the time of the invention, which was over twenty years ago.” slip op. at 22

  Patent outcomesUS 5,414,761 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 5,414,761
• Jiawei Technology (HK) Ltd. / Jiawei Technology (USA) Ltd. et al. v. Simon Nicholas RichmondAll claims unpatentable
  PTAB · Dec 15, 2015 · IPR2014-00938 · APJ William V Saindon · IPR · Final written decision

  Claims 24–30 and 35 are unpatentable as obvious over the instituted combinations of Chliwnyj, Wu, Pu, Dowling, and Lau.

  RulingsFinal written decision

  • PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner

    “Patent Owner alleged that Petitioner failed to list all real parties in interest, and we authorized the parties to brief the issue. Paper 37 (Motion to Terminate); Paper 44 (Opposition); Paper 47 (Reply). We denied Patent Owner’s Motion to Terminate. Paper 57.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “The parties seem to be in agreement that a person of ordinary skill in the art would be capable of reading the diagrams and understanding what function(s) they perform, at least at some level. PO Resp. 4 (a person of ordinary skill in the art has “the ability to recognize how a pre-designed circuit may operate”); Pet. Reply 3 (a person of ordinary skill in the art “would [have been] able to understand the patent’s descriptions and drawings”). Patent Owner’s position, however, seems to be that although a person of ordinary skill in the art would recognize what these circuits do, he or she would be unable to make any modifications to those circuits and would only be capable of taking them whole cloth and inserting them into another device. Patent Owner would seemingly limit the person of ordinary skill in the art to ornamental design changes only. We reject the notion that a person of ordinary skill in the art would only be capable of making ornamental design variations. Under Patent Owner’s proposed level of skill, any functional modification would be beyond the level of ordinary skill in the art and render the modified device patentable (so long as it was not anticipated); this proposed level of skill is so low it eviscerates the notion of obviousness. Instead, upon review of the record before us, we find that a person of ordinary skill in the art is able to comprehend what is being shown in the prior art and has some ordinary level of creativity with respect to their modification. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) (“A person of ordinary skill is also a person of ordinary creativity, not an automaton”). We agree with Petitioner that a person of ordinary skill in the art at the time of the ’827 patent7 would have had a graduate degree in electrical or electronics engineering or physics with experience in circuit design, or a bachelor’s degree in electrical or electronics engineering or physics with at least two years industrial experience and experience in circuit design, and apply that level of skill for purposes of this Decision. See Ex. 1002 ¶ 36.” slip op. at 10

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “B. Dr. Shackle is Qualified to Testify to the Level of Ordinary Skill in the Art Patent Owner argues that Petitioner’s declarant, Dr. Shackle, is not qualified to testify as to the level of ordinary skill in the art. PO Resp. 14– 15. Patent Owner argues that, for example, he “has never supervised engineers in the design of solar lights.” Id. at 14. Patent Owner argues we should give his declarant, Dr. Ducharme, more weight because Dr. 7 The application issuing as the ’827 patent was filed in April 2005 and is a continuation-in-part of the application, filed in February 2004 and claiming the benefit of a foreign application filed in December 2003, that issued as the ’477 patent. Ducharme is allegedly better qualified. Id. We weigh competing testimony of witnesses on an observation-by-observation basis, based on the witness’s skills and experience, as well as the reasoning and evidence they offer with respect to that particular observation. Further, we are not persuaded that Dr. Shackle would not have been a person of ordinary skill in the art at the time of the invention simply for not being a supervisor of engineers designing solar lights. Instead, we find that Dr. Shackle has ample experience in the field of lighting devices to testify in this proceeding. See Ex. 1002 ¶¶ 3–5; Ex. 1047 ¶¶ 30–41; see also Pet. Reply 7–8 (persuasively arguing why Dr. Shackle is qualified to testify).” slip op. at 11

  • Prior constructionPrior construction adoptedDecided for patent owner

    “Owner’s proposed constructions of this term because we determined that both proposed constructions focused too much on how the varying color was created rather than what was varying color. Dec. on Inst. 6–9. Or, to put it another way, we determined that the claims required a particular observable phenomenon (varying color) from a particular structure (a circuit having at least two lamps) but did not limit the manner in which the structures were operated to achieve that result. As we stated then, we declined to incorporate any particular way to create varying color because the specification of the ’827 patent does not so limit the term. Id. at 7–8. For that reason, we construed “varying colour” as “a perceptible changing of color over time.” Id. at 8.” slip op. at 13

  Patent outcomesUS 7,429,827 unpatentable
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 7,429,827
• Jiawei Technology (HK) Ltd. / Jiawei Technology (USA) Ltd. et al. v. Simon Nicholas RichmondAll claims unpatentable
  PTAB · Dec 15, 2015 · IPR2014-00936 · APJ William V Saindon · IPR · Final written decision

  Claims 1–29 are unpatentable as obvious over four combinations of Chliwnyj, Wu, Hung, Xu, and Pu.

  RulingsFinal written decision

  • PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner

    “Patent Owner alleged that Petitioner failed to list all real parties in interest and we authorized the parties to brief the issue. Paper 34 (Motion to Terminate); Papers 42, 43 (Opposition); Paper 46 (Reply). We denied Patent Owner’s Motion to Terminate. Paper 56.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “skill in the art to ornamental design changes only. We reject the notion that a person of ordinary skill in the art would only be capable of making ornamental design variations. Under Patent Owner’s proposed level of skill, any functional modification would be beyond the level of ordinary skill in the art and render the modified device patentable (so long as it was not anticipated); this proposed level of skill is so low it eviscerates the notion of obviousness. Instead, upon review of the record before us, we find that a person of ordinary skill in the art is able to comprehend what is being shown in the prior art and has some ordinary level of creativity with respect to their modification. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) (“A person of ordinary skill is also a person of ordinary creativity, not an automaton.”). We agree with Petitioner that a person of ordinary skill in the art at the time of the ’477 patent7 would have had a graduate degree in electrical or electronics engineering or physics with experience in circuit design, or a bachelor’s degree in electrical or electronics engineering or physics with at least two years industrial experience and experience in circuit design, and apply that level of skill for purposes of this Decision. See Ex. 1002 ¶ 36.” slip op. at 11

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “engineers in the design of solar lights.” Id. at 13. Patent Owner argues we should give his declarant, Dr. Ducharme, more weight because Dr. Ducharme is allegedly better qualified. Id. We weigh competing testimony of witnesses on an observation-by-observation basis, based on the witness’s skills and experience, as well as the reasoning and evidence they offer with respect to that particular observation. Further, we are not persuaded that Dr. Shackle would not have been a person of ordinary skill in the art at the time of the invention simply for not being a supervisor of engineers designing solar lights. Instead, we find that Dr. Shackle has ample experience in the field of lighting devices to testify in this proceeding. See Ex. 1002 ¶¶ 3–5; Ex. 1050 ¶¶ 30–41; see also Pet. Reply 7–8 (persuasively arguing why Dr. Shackle is qualified to testify).” slip op. at 12

  • Prior constructionPrior construction adoptedDecided for patent owner

    “phenomenon (varying color) from a particular structure (a circuit having at least two lamps) but did not limit the manner in which the structures were operated to achieve that result. As we stated then, we declined to incorporate any particular way to create varying color because the specification of the ’477 patent does not so limit the term. Id. at 7. For that reason, we construed “varying colour” as “a perceptible changing of color over time.” Id. at 8.” slip op. at 14

  Patent outcomesUS 7,196,477 unpatentable
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 7,196,477
• Diablo Technologies, Inc. v. Netlist, Inc.All claims unpatentable
  PTAB · Dec 14, 2015 · IPR2014-01011 · APJ Georgianna W Braden · IPR · Final written decision

  Claims 15–17, 22, 24, 26, and 31–33 are unpatentable as obvious over Ludwig and Amidi; claims 22 and 26 are also anticipated by Amidi.

  RulingsFinal written decision

  • Skill levelSkill level board ownOther

    “time it was made, we determine the level of ordinary skill in the pertinent art at the time of the invention. Graham v. John Deere, 383 U.S. at 17. “The importance of resolving the level of ordinary skill in the art lies in the necessity of maintaining objectivity in the obviousness inquiry.” Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991).” slip op. at 16

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “To testify as an expert under FRE 702, a person need not be a person of ordinary skill in the art, but rather must be “qualified in the pertinent art.” Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1363–64 (Fed. Cir. 2008); see SEB S.A. v. Montgomery Ward & Co., 594 F.3d 1360, 1372– 73 (Fed. Cir. 2010) (upholding a district court’s ruling to allow an expert to provide testimony at trial because the expert “had sufficient relevant technical expertise” and the expert’s “knowledge, skill, experience, training [and] education . . . [wa]s likely to assist the trier of fact to understand the evidence”); Mytee Prods., Inc. v. Harris Research, Inc., 439 Fed. App’x 882, 886–87 (Fed. Cir. 2011) (non-precedential) (upholding admission of the testimony of an expert who “had experience relevant to the field of the invention,” despite admission that he was not a person of ordinary skill in the art). We find that, although Dr. Jagannathan is less experienced than Dr. Sechen in the area of memory module design, he is qualified sufficiently to testify about memory systems and memory modules.” slip op. at 18

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

    “The specification of the ’150 patent does not define explicitly the term “memory module.” The specification does, however, teach embodiments that describe a memory module as comprising a plurality of memory devices on a carrier and a circuit. Ex. 1001, 2:63–64; 3:7–9; 4:59–63. In another embodiment, a memory module comprises (i) a printed circuit board on which memory devices are mounted, (ii) a plurality of edge connectors configured to be electrically coupled to a corresponding plurality of contacts of a module slot of the computer system, and (iii) a plurality of electrical conduits which electrically couple the memory devices to the circuit and which electrically couple the circuit to the edge connectors. Id. at 5:24–32. The ’150 patent also teaches that memory modules in the disclosed embodiments are compatible with at least single in-line memory modules (SIMMS) and dual in-line memory modules (DIMMS). Id. at 5:32–39.” slip op. at 10

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable

    “Despite Dr. Sechen’s explanation of asynchronous and synchronous memory (see id. ¶¶ 87–92), we do not agree that the teachings of Ludwig are incompatible with the synchronous memory of Amidi, because Ludwig expressly suggests apply its VIC chip to synchronized memory. See Ex. 1001, 10:10–13 (“A valuable added function might be synchronized memory signals to enhance the speed of the memory.”). We also credit the testimony of Dr. Jagannathan, who states “[t]here was sufficient motivation for one of ordinary skill to apply the circuit including a CPLD, a PLL, and a register in Amidi to the interface chip in Ludwig. One of ordinary skill would recognize the benefits of doing so as taught in Ludwig. For example, Ludwig teaches ‘a valuable added function [of the VIC chip] might be synchronized memory signals to enhance the speed of the memory function.’” Ex. 1007 ¶ 118 (citing Ex. 1011, 10:11–13). Therefore, we are persuaded that the teachings of Ludwig and Amidi are combinable. Based on the evidence of record, we agree with Petitioner’s position that challenged independent claims 15, 22, and 31 would have been obvious over Ludwig and Amidi. Specifically, we are persuaded by Petitioner’s reasoning and the evidentiary record that Amidi teaches a circuit mounted on a memory module that is electrically coupled to a first DDR memory device and a second DDR memory device. We are further persuaded that Amidi teaches a circuit with a logic element, a register, and a PLL. We also are persuaded that the teachings of Amidi could have been implemented using the common data signal line and tri-state buffer system disclosed in Ludwig so that by (i) selectively electrically coupling a first data signal line to the common data signal line and (ii) selectively electrically coupling a second data signal line to the common data signal line, the circuit is responsive to a set of input signals. Additionally, we credit the testimony of Dr. Jagannathan that a person of ordinary skill in the art would have had reason to combine the teachings of Ludwig and Amidi, which both relate to memory modules, and are directed to solving the same problem of using additional memory devices in a memory module to increase the overall memory density of the module without hindering the ability of the module to interface with a pre-existing memory controller. See id. ¶ 116. Additionally, we note that the testimony of Patent Owner’s Declarant, Dr. Sechen, is based on the claim constructions proffered by Patent Owner and not on the constructions set forth in the Decision to Institute. Compare Ex. 2002 ¶¶ 38–72, with Dec. to Inst. 7–12. We have considered as relevant, however, the portions of his analysis regarding the prior art and alleged nonobviousness of the claims and accorded the appropriate weight to that particular testimony. Accordingly, we hold that Petitioner has shown by a preponderance of the evidence that claims 15, 22, and 31 of the ’150 patent are unpatentable under 35 U.S.C. § 103(a) as having been obvious over the combination of Ludwig and Amidi.” slip op. at 35

  Patent outcomesUS 7,881,150 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,881,150
• First Quality Baby Products, LLC v. Kimberly-Clark Worldwide, Inc.All claims unpatentable
  PTAB · Dec 14, 2015 · IPR2014-01024 · APJ J John Lee · IPR · Final written decision

  Claims 25–32 are unpatentable under § 103(a) as obvious in view of Brandon, Anderson, and Long.

  RulingsFinal written decision

  • Expert testimonyPatent owner expert discountedDecided for petitioner

    “Patent Owner argues Brandon teaches that training pants should be designed to feel different than diapers to facilitate toilet training, but that replacing its bonded seams by adding refastenable seams such as in Anderson, or adding the containment flaps and surge layer of Long, contradicts that goal by making the training pants resemble diapers. Id. at 36–40. The evidence of record, however, belies that argument. As Petitioner notes (Pet. Reply 13–14), Anderson discloses explicitly that its refastenable seams “approximate the side seams of a normal underpant” (Ex. 1206, 4:27–34), and notes the importance of training pants that “look like a normal panty when first put on by the child” (id. at 2:35–36). Patent Owner’s argument also is unpersuasive with respect to Brandon because it only relies on the conclusory testimony of its declarant. PO Resp. 37–38. On this issue, Mr. Butterworth’s Declaration only states conclusorily that adding a surge layer or containment flaps “would render the garment closer to a conventional disposable diaper.” Ex. 2206 ¶ 79. Compared to the evidence Petitioner cites to support its asserted rationale for combining the references, which we find compelling, we give little weight to this portion of Mr. Butterworth’s testimony because the underlying facts or data on which his opinion is based, if any, were not disclosed. See 37 C.F.R. § 42.65.” slip op. at 20

  • ExcludeMotion to exclude, deniedMixed

    “all related evidence is irrelevant. See id. Rule 401 states that evidence is relevant if “(a) it has any tendency to make a fact more or less probable than it would be without the evidence; and (b) the fact is of consequence in determining the action.” Petitioner does not dispute that the evidence in question pertains to facts underlying Patent Owner’s contentions regarding secondary considerations. Whether Patent Owner failed to provide sufficient evidence or neglected to supply all of the necessary analysis does not negate the relevance of that evidence. In addition, we note that Petitioner’s motion is moot because of our decision above that the challenged claims are unpatentable even considering this evidence. This portion of the Motion is denied.” slip op. at 30

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “8 Both parties agree that a person of ordinary skill in the art would have had two to four years of work experience in product design and testing of disposable absorbent articles, such as diapers and training pants. Pet. 13–14; PO Resp. 7. We adopt this characterization and apply it to our analysis.” slip op. at 10

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionTerm construed patent owner constructionMixed

    “claimed training pants “can further include releasable side bonds . . . for improved reliability of maintaining the pant in a prefastened condition particularly when it is being pulled on or off over the hips of the wearer.” Ex. 1201, 20:1–4. In addition, the specification states: “The absorbent articles are desirably pre-fastened to provide a pant-like product for the user. The product can then be pulled on like a conventional training pant . . . .” Id. at 5:31–34. The specification does not describe any manufacturing process for prefastening training pants. Mr. Butterworth’s testimony is based solely on claim language indicating that the recited fastening components and mating fastening components are the elements that are prefastened. Ex. 2206 ¶ 50. His conclusion, however, is not supported by that claim language, which does not reference manufacturing or a timeframe prior to sale. See Ex. 1214, 99:13–16, 102:25–103:9 (Mr. Butterworth indicating at his deposition that the ’379 patent does not discuss a manufacturing process for prefastening the claimed training pant, or when the training pants are prefastened).6 Based on the record presented, the broadest reasonable interpretation of “prefastened” in light of the specification requires that the claimed training pant be fastened prior to wear, but does not require fastening during manufacturing or prior to sale.” slip op. at 8

  Patent outcomesUS 8,747,379 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,747,379
• First Quality Baby Products, LLC v. Kimberly-Clark Worldwide, Inc.All claims unpatentable
  PTAB · Dec 10, 2015 · IPR2014-01023 · APJ J John Lee · IPR · Final written decision

  Claims 33–54 are unpatentable under § 103(a): claims 33–42, 44, 45, 47–49, and 51–53 over Brandon and Anderson; claims 43, 46, 50, and 54 over Brandon, Anderson, and Long.

  RulingsFinal written decision

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

    “As Petitioner asserts, the intrinsic evidence does not support the construction advanced by Patent Owner. The ’379 patent explains that the claimed training pants “can further include releasable side bonds . . . for improved reliability of maintaining the pant in a prefastened condition particularly when it is being pulled on or off over the hips of the wearer.” Ex. 1101, 20:1–4. In addition, the specification states: “The absorbent articles are desirably pre-fastened to provide a pant-like product for the user. The product can then be pulled on like a conventional training pant . . . .” Id. at 5:31–34. The specification does not describe any manufacturing process for prefastening training pants. Mr. Butterworth’s testimony is based solely on claim language indicating that the recited fastening components and mating fastening components are the elements that are prefastened. Ex. 2106 ¶ 48. His conclusion, however, is not supported by that claim language, which does not reference manufacturing or a timeframe prior to sale. See Ex. 1114, 99:13–16, 102:25–103:9 (Mr. Butterworth indicating at his deposition that the ’379 patent does not discuss a manufacturing process for prefastening the claimed training pant, or when the training pants are prefastened).6 Based on the record presented, the broadest reasonable interpretation of “prefastened” in light of the specification requires that the claimed training pant be fastened prior to wear, but does not require fastening during manufacturing or prior to sale.” slip op. at 7

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayMotivation foundTeaching away not foundDecided for petitioner

    “Patent Owner contends, however, that a person of ordinary skill would not have been motivated to combine Brandon and Anderson in the manner asserted by Petitioner because both Brandon and Anderson teach away from such a combination. PO Resp. 32–40. First, Patent Owner argues Brandon teaches that training pants should be designed to feel different than diapers to facilitate toilet training, but that replacing its bonded seams by adding refastenable seams such as in Anderson contradicts that goal by making the training pants resemble diapers. Id. at 33–35. The evidence of record, however, belies that argument. As Petitioner notes (Pet. Reply 13), Anderson discloses explicitly that its refastenable seams “approximate the side seams of a normal underpant” (Ex. 1106, 4:27–34), and notes the importance of training pants that “look like a normal panty when first put on by the child” (id. at 2:35–36). Next, Patent Owner argues Anderson teaches away from the asserted combination with Brandon because Anderson teaches away from using its releasable fastening system with a liquid impermeable outer cover, as taught by Brandon and required by claim 33. PO Resp. 36–40. Patent Owner is correct that Anderson discloses advantages to constructing training pants to allow some moisture to leak through the outer cover. See, e.g., Ex. 1106, 3:40–49 (explaining that a preferred embodiment of Anderson includes a “moisture permeable outer covering” that facilitates toilet training by alerting the child to a bowel or bladder accident). According to Patent Owner, Anderson discloses the use of refastenable seams because they facilitate removal while minimizing contamination, which is only necessary due to the moisture permeable covering. See PO Resp. 38–39. Patent Owner’s position is unpersuasive, however, because merely describing the benefits of a moisture permeable cover does not teach away from using an impermeable cover. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004); In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). At the oral hearing, Patent Owner also admitted that nothing in the record indicates a person of ordinary skill would have been led to avoid training pants that do not allow moisture to leak through the outer cover. See Tr. 61:21–62:6; see also Ex. 1114, 339:10–18 (Mr. Butterworth testifying that Anderson does not disparage the use of refastenable seams with liquid permeable outer covers). Based on the full record after trial, Petitioner has established sufficiently a reason with rational underpinning to combine Brandon and Anderson. See KSR, 550 U.S. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). Consequently, a preponderance of the evidence supports Petitioner’s position that claim 33 of the ’379 patent is unpatentable as obvious in view of the combination of Brandon and Anderson.” slip op. at 17

  • Obviousness (§103) › KSR rationalesUnpatentableUnpatentable

    “Based on Mr. Butterworth’s testimony, which we find credible, the record indicates that the limitations of claim 36 were known and obvious to one of ordinary skill in the art. Additionally, the record supports Petitioner’s argument that the size limitations of claim 36 do not distinguish the claim from the prior art, which ordinary artisans knew to provide the benefit of adjustability, as Mr. Butterworth testified. See Gardner, 725 F.2d at 1349. Petitioner’s contentions are further supported by the evidence indicating this alleged benefit was not a critical aspect of the claimed invention. See In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990) (“These cases [including Gardner] have consistently held that in such a situation, the applicant must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range.”). Consequently, considering the full record after trial, a preponderance of the evidence supports Petitioner’s contention that claim 36 would have been obvious in view of the combination of Brandon and Anderson.” slip op. at 23

  • Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner

    “To establish a nexus between alleged commercial success and the challenged claims, Patent Owner must show “that the thing (product or method) that is commercially successful is the invention disclosed and claimed in the patent.” Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387, 1392 (Fed. Cir. 1988); see also In re GPAC Inc., 57 F.3d 1573, 1580 (Fed. Cir. 1995) (holding that a nexus was not demonstrated where “GPAC did not establish which claim(s) of the patent the [allegedly successful] licensing program incorporates”). Patent Owner does not, however, provide an analysis establishing that its PULL-UPS product practices any claim or claims of the ’379 patent. 16 As indicated earlier, we need not reach the issue of whether Patent Owner’s arguments as to secondary considerations are barred due to collateral estoppel because we conclude that a preponderance of the evidence establishes that the challenged claims are unpatentable, even considering Patent Owner’s arguments and evidence. In addition, even assuming arguendo that Patent Owner’s evidence establishes a nexus between the commercial success of its PULL-UPS product and the specific refastenable fastening system recited in the challenged claims, Patent Owner has failed to demonstrate that “the asserted commercial success of the product [is] due to the merits of the claimed invention beyond what was readily available in the prior art.” See J. T. Eaton & Co. v. Atlantic Paste & Glue Co., 106 F.3d 1563, 1571 (Fed. Cir. 1997) (emphasis added). As discussed above, the record establishes that the refastenable fastening system recited in the challenged claims was taught in the prior art. Relying on Gillette Co. v. S.C. Johnson & Son, Inc., Patent Owner argues that the “fact that all elements of a claim are in the prior art does not by itself defeat commercial success,” and that “the prior art discloses only individual elements of the patented training pants, but there is no prior art that discloses the unique combination found in the claims of the ’379 Patent.” PO Resp. 59–60 (citing 919 F.2d 720, 725 (Fed.Cir.1990)). In Gillette, although each individual element of the claimed chemical composition was known in the art, it was undisputed that the composition as a whole had “superior properties” that were unique to the composition rather than any individual component. See 919 F.2d at 725. In contrast, Patent Owner’s arguments and evidence focus on a single element of its claimed invention—“refastenable elastomeric sides”—and Patent Owner does not identify any evidence indicating the claimed refastenable sides (or any other claimed feature or combination of features) had unique properties or advantages beyond those found in the prior art training pants relied on by Petitioner.17 See PO Resp. 56–58.” slip op. at 31

  Patent outcomesUS 8,747,379 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,747,379
• First Quality Baby Products, LLC v. Kimberly-Clark Worldwide, Inc.All claims unpatentable
  PTAB · Dec 10, 2015 · IPR2014-01021 · APJ J John Lee · IPR · Final written decision

  Claims 1–24 are unpatentable under § 103: claims 1–10, 12, 13, 15–17, and 19–23 over Brandon and Anderson; claims 11, 14, 18, and 24 over Brandon, Anderson, and Long.

  RulingsFinal written decision

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

    “Based on the full record after trial, the evidence presented supports Petitioner’s view. It is undisputed that Brandon teaches a seam extending 100% of the distance between the waist and leg openings. See Tr. 44:13–15; Ex. 1014, 82:15–22. The record also indicates it was well known in the art generally to provide 80–100% seams. Ex. 1014, 85:3–8; Ex. 1021 ¶ 99. Although Patent Owner disputes that Anderson teaches an 80–100% seam, such an express disclosure is not required given Brandon’s disclosure of a 100% seam. See In re Keller, 642 F.2d 413, 425 (CCPA 1981) (“The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art.”). Moreover, Petitioner argues persuasively that a person of ordinary skill would have understood Anderson also to teach an 80–100% seam because such a seam was known to be important to prevent undesired tearing or separation, and to best approximate a normal underpant. Pet. Reply 11–13; see Ex. 1006, 2:35–36, 4:32–37, Fig. 2; Ex. 1014, 83:14–23, 85:3–20; Ex. 1021 ¶¶ 99, 101, 102, 104, 106, 107.11 In sum, Petitioner has established sufficiently that the combination of Brandon and Anderson teaches or suggests each limitation of claim 1.” slip op. at 16

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

    “Petitioner asserts that a person of ordinary skill would have been led to combine the training pants of Brandon with the refastenable seam of Anderson because the references identify solutions for the same problem, namely potential contamination on the child when removing soiled training pants. Pet. 22–24 (citing KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 419– 20 (2007)). The record supports Petitioner’s position. Brandon states that “side seams 20 may be constructed to be manually tearable in order to allow training pant 10 to be disassembled manually by the caregiver, so that it can be easily removed from the child after a bowel movement.” Ex. 1002, 11. Anderson discloses that training pants with tearable seams “facilitate removal of the panty after the child has either a bowel accident or a bladder accident,” which reduces “incidents of contamination on the child and in the area surrounding the child.” Ex. 1006, 1:46–55. Anderson further teaches refastenable side seams, as discussed above, explaining that “in the event of an accident the [refastenable] seams are readily released to facilitate removal of the panty without undue contamination.” Id. at 4:32–37.” slip op. at 17

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner

    “not have been motivated to combine Brandon and Anderson in the manner asserted by Petitioner because both Brandon and Anderson teach away from such a combination. PO Resp. 31–39. First, Patent Owner argues Brandon teaches that training pants should be designed to feel different than diapers to facilitate toilet training, but that replacing its bonded seams by adding refastenable seams such as in Anderson contradicts that goal by making the training pants resemble diapers. Id. at 32–35. The evidence of record, however, belies that argument. As Petitioner notes (Pet. Reply 13), Anderson discloses explicitly that its refastenable seams “approximate the side seams of a normal underpant” (Ex. 1006, 4:27–34), and notes the importance of training pants that “look like a normal panty when first put on by the child” (id. at 2:35–36). Next, Patent Owner argues Anderson teaches away from the asserted combination with Brandon because Anderson teaches away from using its releasable fastening system with a liquid impermeable outer cover, as taught by Brandon and required by claim 1. PO Resp. 35–39. Patent Owner is correct that Anderson discloses advantages to constructing training pants to allow some moisture to leak through the outer cover. See, e.g., Ex. 1006, 3:40–49 (explaining that a preferred embodiment of Anderson includes a “moisture permeable outer covering” that facilitates toilet training by alerting the child to a bowel or bladder accident). According to Patent Owner, Anderson discloses the use of refastenable seams because they facilitate removal while minimizing contamination, which is only necessary due to the moisture permeable covering. See PO Resp. 37–38. Patent Owner’s position is unpersuasive, however, because merely describing the benefits of a moisture permeable cover does not teach away from using an impermeable cover. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004); In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). At the oral hearing, Patent Owner also admitted that nothing in the record indicates a person of ordinary skill would have been led to avoid training pants that do not allow moisture to leak through the outer cover. See Tr. 61:21–62:6; see also Ex. 1014, 339:10–18 (Mr. Butterworth testifying that Anderson does not disparage the use of refastenable seams with liquid permeable outer covers). Based on the full record after trial, Petitioner has established sufficiently a reason with rational underpinning to combine Brandon and Anderson. See KSR, 550 U.S. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).” slip op. at 17

  • Strike new argumentNew argument consideredDecided for petitioner

    “deposition testimony (Tr. 54:1–16), but argued the testimony should be disregarded because neither Mr. Butterworth nor Patent Owner had fair notice of Petitioner’s arguments or an adequate opportunity to present counterevidence—for example, regarding possible teaching away (e.g., Tr. 54:19–55:9). We disagree. As an initial matter, Patent Owner is correct that the Petition does not include specifically an allegation that the size limitation was known generally in the art, and does not present evidence of that fact. Such evidence, however, was introduced into the record through discovery in the form of Mr. Butterworth’s deposition testimony. Patent Owner does not advance persuasively any reason to block Petitioner from relying on this evidence, which could not have been cited in the Petition because Mr. Butterworth’s deposition had not yet occurred.12 In essence, Patent Owner requests that the Board prevent Petitioner from using evidence in the record it admits is inconsistent with its position on patentability, and which its own expert provided to Petitioner during discovery. We decline to do so. Nor are we persuaded by Patent Owner’s protestations of prejudice. Although Patent Owner asserts Mr. Butterworth was not given a fair opportunity to “prepare” for Petitioner’s questions, Patent Owner proffered him as an expert in this field and otherwise relies on his testimony regarding 12 Although Petitioner’s position would have been stronger had it provided similar evidence with the Petition, the fact remains that the record includes Mr. Butterworth’s testimony, which was routine discovery provided in the normal course of this inter partes review. See 37 C.F.R. § 42.51(b)(1)(ii). similar issues. See, e.g., PO Resp. 33–35 (citing Ex. 2006 ¶¶ 74–77 (Mr. Butterworth’s declaration testimony regarding “the conventional wisdom in the industry at the time of the invention”)). The testimony relied on by Petitioner was provided in response to basic questions about the understanding of a person of ordinary skill in the art and whether the recited limitation was known in the art at the time of the invention. Ex. 1014, 151:2–13, 152:10–14. Moreover, the Petition plainly raised the issue of whether any alleged functionality of the limitations of claim 4 already was known to be provided by the prior art. Pet. 25. Petitioner’s questioning of Mr. Butterworth on this issue should not have been unexpected considering he provided testimony on the subject in his Declaration, which Patent Owner submitted with its Response. See Ex. 2006 ¶ 95; PO Resp. 41. Patent Owner does not dispute the veracity of Mr. Butterworth’s testimony. Further, Patent Owner does not argue that he misunderstood the questions (Tr. 53:18–24), and did not move to exclude the testimony.13 Patent Owner had the opportunity to adduce further testimony from Mr. Butterworth at his deposition to clarify or supplement his testimony, but it did not do so with respect to the testimony at issue. See Tr. 57:12–58:8. No attempt was made to seek relief from the Board or to introduce further information into the record (e.g., a supplemental declaration or additional briefing). See Tr. 59:18–60:6. Patent Owner made no request to have Mr. 13 Patent Owner properly raised at the oral hearing the issue of whether Petitioner’s arguments should be disregarded as improper new arguments, rather than raising the issue in a motion to exclude. See Tr. 58:9–59:2. That is a distinct issue, however, from whether Mr. Butterworth’s cross-examination testimony should be excluded as inadmissible because it is allegedly misleading or incomplete. In any event, we also conclude Petitioner’s arguments were not improper.” slip op. at 21

  Patent outcomesUS 8,747,379 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,747,379
• Global Tel*link Corporation v. Securus Technologies, Inc.Some claims unpatentable
  PTAB · Dec 2, 2015 · IPR2014-00825 · APJ Barbara A Benoit · IPR · Final written decision

  Claims 1, 3, 4, 6, 7, 10, 13, 19, and 20 are unpatentable as obvious; the petition did not prove claims 2, 5, 8, 9, 11, 12, and 14–18 unpatentable.

  RulingsFinal written decision

  • BurdenDecided for patent owner

    “Applying these principles to the instant case, in an inter partes review, the burden of persuasion is on Petitioner to prove “unpatentability by a preponderance of the evidence,” 35 U.S.C. § 316(e), and that burden never shifts to the Patent Owner. See Dynamic Drinkware, 800 F.3d at 1379. (explaining petitioner “had the burden of persuasion to prove unpatentability by a preponderance of the evidence, and this burden never shifted”). Petitioner also has the initial burden of production. Id. Petitioner satisfied its burden of production by arguing in its Petition that Spadaro was prior art under § 102(e) and, in combination with one or more other prior art references, would have rendered claims 1–20 obvious at the time the invention was made under § 103(a). Pet. 4–5, 13–36.” slip op. at 11

  • Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateNot shown unpatentable

    “Even if we were to find that Petitioner’s citation to two pages of its declarant’s testimony, without explanation, does not amount to improper incorporation by reference, the testimony of Petitioner’s declarant, Leonard J. Forys, Ph.D., is insufficient to show one of ordinary skill in the art was in possession of the subject matter of the claims at issue. See 37 C.F.R. § 42.6(a)(3) (“Arguments must not be incorporated by reference from one document into another document.”). First, the testimony of Petitioner’s declarant, Dr. Forys, is conclusory, merely quoting some portions of the ’357 patent without adequately explaining how the quoted portions relate to the subject matter recited by the claims. See 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.”). Moreover, during cross-examination Dr. Forys explained his analysis, “I just went through the ’167 patent and just picked a few things out that seem to indicate that they are already there. . . . So it was illustrative. It’s not a detailed analysis. It is just suggestive.” Ex. 2006, 48:1–7.” slip op. at 20

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

    “The ’357 patent does not set forth a special definition for “call application management system.” As confirmed by Dr. Forys (id.), the plain language of the claim specifies the function required to be performed by the call application management system—connecting calls responsive to receiving a request to connect the call. Although Dr. Forys found Patent Owner’s proposed construction to be “reasonable,” Patent Owner’s proposed construction unnecessarily introduces the term “call processing,” which is not recited by the claim itself and on its face seems broader than the recited function of a call application management system—to connect a call. We do not agree with Patent Owner that a call application management system must perform examples of call processing described by the Specification, but not recited in the claim. Limitations from embodiments are not to be imported into the claims. See In re Van Geuns, 988 F.2d at 1184. Furthermore, we find that Patent Owner’s contention— the name “the call application management system of Claim 1 would be understood [by one of ordinary skill in the art] to manage, from start to finish, each call placed or received at the plurality of prisons” (PO Resp. 6)—places too much weight on the term “management” without sufficiently addressing the term “application.” We credit the testimony of Petitioner’s declarant, who disagrees that call application management system is 25 required to manage “all call processing, ‘from start to finish.’” Ex. 1020 ¶ 8 (emphasis omitted). Therefore, in light of the plain language of the claim, the Specification of the ’357 patent, and according the testimony of Patent Owner’s declarant and Petitioner’s declarant appropriate weight, we construe “call application management system” to mean a system that performs the enumerated function—“connecting a call to or from the telephone terminals over a telephone carrier network responsive to receiving a request for connecting the call.”” slip op. at 25

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “In general, we adopt the areas of agreement in the parties’ proposals. Patent Owner’s proposed academic or industry experience of telephony14 systems comports with the level of ordinary skill in the art reflected in the prior art of record, which relate to telephone communication systems. Petitioner has not explained sufficiently why the broader field of communications systems is a more appropriate area of academic or industry experience than telephony systems. Thus, we generally adopt Patent Owner’s proposed academic or industry experience in telephony systems. Therefore, one of ordinary skill in the art would have a Bachelor of Science degree in electrical engineering, computer science, or an equivalent field, as well as at least three years of academic or industry experience in telephony systems.” slip op. at 29

  Patent outcomesUS 7,529,357 mixed
  Claim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham
  Patents in suitUS 7,529,357

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.