• Telebrands Corp. v. Tinnus Enterprises, LLCAll claims unpatentable
  PTAB · 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 unpatentable
  Claim construction§ 103 obviousness§ 112 disclosurecites Nautilus
  Patents in suitUS 9,051,066
• Viasat, Inc v. Advanced Media Networks, LLCRehearing denied
  PTAB · 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 obviousness
  Patents in suitUS 6,445,777
• Viasat, Inc v. Advanced Media Networks, LLCRehearing denied
  PTAB · 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 obviousness
  Patents in suitUS 5,960,074
• Viasat, Inc v. Advanced Media Networks, LLCRehearing denied
  PTAB · 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 obviousness
  Patents in suitUS 5,960,074
• Infobionic, Inc. v. Braemar Manufacturing, LLCAll claims unpatentable
  PTAB · Dec 29, 2016 · IPR2015-01679 · APJ Scott C Moore · IPR · Final written decision

  Claims 1, 2, 4, 6, 7, 10, 11, 13–15, and 17 are anticipated by Sellers; claims 3, 5, 8, 9, 12, 16, and 20–22 are obvious over Sellers and Stutman; claims 18–19 are obvious over …

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageTerm construed board ownDecided for petitioner

    “location.” See PO Resp. 21–22; Reply 2. On this record, we determine that the claim term “central monitoring device” is not further limited to a device that performs monitoring “during a monitoring session” such that it is able to “respond to patient status . . . when it detects evidence of certain physiologic conditions as they occur.” See PO Resp. 21–22. The Specification uses the term “central monitoring device” in an open-ended manner, and Patent Owner does not identify any lexicographic definition or disclaimer that would limit the claim term “central monitoring device” in the manner it proposes. See PO Resp. 20–22; Tr. 38:1–17. Though Patent Owner cites one dictionary that defines “monitoring” as “constantly checking on a patient’s condition” (Ex. 2021, 930), this definition is overly narrow because the Specification makes clear that monitoring may be performed on a periodic basis. See, e.g., Ex. 1001, 3:2–31, 8:57–64. Moreover, Patent Owner’s other dictionary definition (Ex. 2020, 752) does not reference a patient, or require detecting “physiologic conditions as they occur.” Dr. Fernald’s testimony regarding this claim term (Ex. 2003 ¶¶ 39– 41) is not persuasive because the portions of the Specification he cites do not limit the claim term “central monitoring device” in the manner Patent Owner proposes (see Ex. 2003 ¶ 39 (citing Ex. 1001, 3:10–16, 6:37–42, 7:13–20, 7:52–59, 8:23–38); Tr. 38:1–17), and because Dr. Fernald does not adequately account for the dictionary evidence indicating that the claim term “monitoring” does not require constantly observing a patient’s status (see Ex. 2020, 752). We find persuasive Dr. Stone’s testimony that one of ordinary skill would have understood the portions of the Specification cited by Patent Owner and Dr. Fernald to be non-limiting examples. Ex. 1011 ¶¶ 19–32. For the foregoing reasons, on this record, and under the applicable broadest reasonable interpretation standard, we construe “central monitoring device” as “a device that watches, keeps track of, or checks from a central location.” 2.” slip op. at 9

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

    “On this record, and under the applicable broadest reasonable interpretation standard, we determine that the claim term “in communication with” encompasses indirect communications (e.g., communication by way of an intermediate component). We further determine that a processor need not generate a message, or respond to a message, in order to be “in communication with” a separate component. The ’901 Patent Specification uses the term “in communication with” in a broad, open-ended manner. See, e.g., Ex. 1001, 2:13–23, 2:38–44. In addition, Patent Owner does not cite any persuasive intrinsic or extrinsic evidence that a person of ordinary skill in the art would have read the claim term “in communication with” to exclude embodiments in which a processor merely receives information. See PO Resp. 40–43. Nor does Patent Owner cite any persuasive intrinsic or extrinsic evidence that the claim term “in communication with” excludes communication between a processor and a component when the processor is acting as an intermediary between that component and some other component. See id. In addition, Dr. Fernald fails to sufficiently support his conclusion that the claim term “in communication with” excludes such forms of communication. See Ex. 2003 ¶¶ 99–103. 4.” slip op. at 12

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “On this record, we adopt Petitioner’s formulation concerning the level of ordinary skill in the art because this formulation more accurately describes the subject matter to which the ’901 Patent pertains. Patent Owner’s formulation is unduly narrow because subject matter of the ’901 Patent is not limited to “ECG telemetry devices” or other “remote monitoring and telemetry devices.” The parties do not dispute that Dr. Stone and Dr. Fernald are both qualified to testify about the perspective of one having ordinary skill in the art, regardless of which formulation we adopt. Tr. 24:22–25:3, 62:6–11. The parties also agree that the issues in this case do not turn on the differences between Petitioner’s and Patent Owner’s proposed formulations regarding the level of ordinary skill in the art. Id. at 24:13–19, 62:12–21. On this record, we find that both Dr. Stone and Dr. Fernald are qualified to offer expert opinions in this case. The factual findings and legal conclusions set forth below would not have differed had we adopted Patent Owner’s formulation regarding the level of ordinary skill in the art. 3.” slip op. at 14

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “Dr. Fernald’s testimony regarding this claim term (Ex. 2003 ¶¶ 39– 41) is not persuasive because the portions of the Specification he cites do not limit the claim term “central monitoring device” in the manner Patent Owner proposes (see Ex. 2003 ¶ 39 (citing Ex. 1001, 3:10–16, 6:37–42, 7:13–20, 7:52–59, 8:23–38); Tr. 38:1–17), and because Dr. Fernald does not adequately account for the dictionary evidence indicating that the claim term “monitoring” does not require constantly observing a patient’s status (see Ex. 2020, 752). We find persuasive Dr. Stone’s testimony that one of ordinary skill would have understood the portions of the Specification cited by Patent Owner and Dr. Fernald to be non-limiting examples. Ex. 1011 ¶¶ 19–32.” slip op. at 9

  Patent outcomesUS 6,225,901 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,225,901
• Adlens USA, Inc. / Adlens, Ltd. v. Superfocus Holdings LLC, Superfocus, LLC, Insolvency Services Group, Inc., And Dr. Stephen KurtinAll claims unpatentable
  PTAB · Dec 27, 2016 · IPR2015-01824 · APJ Elizabeth M Roesel · IPR · Final written decision

  Claims 1–5 are unpatentable as obvious under § 103 over Kurtin ’532 and Kurtin ’629 in view of Gordon and/or Cronin.

  RulingsFinal written decision

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

    “1. “manually adjustable” (claim 1) Patent Owner contends that this term should be construed to mean “capable of being manually adjusted by a wearer of the spectacles.” PO Resp. 7. Petitioner contends that Patent Owner’s proposed construction improperly incorporates an extraneous limitation—by a wearer—into the claims. Pet. Reply 6. We agree with Petitioner. Claim 1 of the ’797 Patent expressly recites “by a wearer” (Ex. 1002, 4:46), but there is no such limitation in either of claims 1 or 4 of the ’487 Patent. Patent Owner identifies various specification passages discussing adjustment by a wearer or user. PO Resp. 7–8. None of these passages amounts to an express definition or disclaimer requiring that “by a wearer” be read into the claims not reciting that phrase. Bigio, 381 F.3d at 1325 (“[T]his court counsels the PTO to avoid the temptation to limit broad claim terms solely on the basis of specification passages.”).” slip op. at 8

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for patent owner

    “Our reviewing court instructs that “merely because an element does not include the word ‘means’ does not automatically prevent that element from being construed as a means-plus-function element.” Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015) (en banc) (quoting Cole v. Kimberly-Clark Corp., 102 F.3d 524, 531 (Fed.Cir.1996)). “Generic terms such as ‘mechanism,’ ‘element,’ ‘device,’ and other nonce words that reflect nothing more than verbal constructs may be used in a claim in a manner that is tantamount to using the word ‘means’ because they ‘typically do not connote sufficiently definite structure’ and therefore may invoke § 112, para. 6.” Id. at 1350. We agree with Patent Owner that the term, “adjustable connector” (claims 1 and 4), should be construed as a means-plus-function term. The word “connector” is “tantamount to using the word ‘means’” because it is a generic description that does not connote a definite structure. Williamson, 792 F.3d at 1350. Dr. Savidis agrees that the term, “adjustable connector,” is a generic term that does not define a particular structure. Ex. 2003, 82:15–84:8. Accordingly, we construe this term in accordance with 35 U.S.C. § 112 ¶ 6.” slip op. at 9

  • Skill levelSkill level board ownDecided for petitioner

    “B. Person of Ordinary Skill in the Art We determine that a person of ordinary skill in the art would have an undergraduate degree in mechanical engineering or equivalent education and one to two years of experience with optics. Our determination is supported 3 The parties dispute whether the corresponding structure disclosed in the ’487 Patent Specification includes a flexure. PO Resp. 11 (citing Ex. 1001, 4:34–37); Pet. Reply 7 n.2. It is not necessary for us to resolve this dispute because a flexure is not relevant to any ground of unpatentability raised in the Petition. by the testimony of Dr. Plummer (Ex. 2002 ¶ 49), as well as the testimony of Dr. Savidis (Ex. 2003, 66:24–67:7, 67:16–20, 69:14–20). We also rely on Petitioner’s asserted references as establishing the level of skill in the art at the relevant time. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Based upon their stated qualifications, we consider both Dr. Savidis and Dr. Plummer qualified to opine from the viewpoint of a person of ordinary skill in the art regarding the subject matter of the ’487 Patent. Ex. 1002 ¶¶ 5–11, Appendix A (Savidis CV); Ex. 2002 ¶¶ 9–22, Attachment A (Plummer CV).” slip op. at 11

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

    “We find that a person of ordinary skill in the art would have had a reason or motivation to modify the spectacles of Kurtin ’532 to provide independent adjustability of each lens. Our finding is supported by the undisputed testimony of Dr. Savidis that “the desirability of having independently and manually adjustable, liquid filled, variable focus lenses was known in the art well prior to 2010.” Ex. 1003 ¶ 77. Our finding is further supported by Dr. Savidis’ testimony that both Gordon (Ex. 1007) and Cronin (Ex. 1006) describe adjustable, liquid filled, variable focus eyeglasses in which each eye’s lens can be manually adjustable independently of the other eye’s lens. Id. Dr. Savidis’ testimony (and our finding) is further supported by Gordon, which discloses that the focus of each lens can be independently adjusted by turning a screw. Ex. 1007, Figs. I–IV, 1:67–80, 1:87–100, 2:5– 22; see also Ex. 1011, 75:9–13 (Plummer agrees that Gordon’s screws are independently adjustable.). Dr. Savidis’ testimony (and our finding) is also supported by Cronin, which discloses left and right calibration screws for allowing independent adjustment of the focal length of the left and right lenses, respectively. Ex. 1006, 4:27–32, 5:16–22, 5:66–6:2, Figs. 2 and 4. We also rely on Cronin’s disclosure of the purpose and advantage of the independent adjustment feature: According to Cronin, it allows the focal lengths of the left and right lens assemblies to be matched or related to each other in a pre-determined manner to compensate for unusual visual disorders, thereby avoiding visual discomfort by focusing each of the user’s eyes at sensibly the same object distance. Id. at 5:9–16. The preponderance of the evidence establishes that one way suggested by the prior art to provide independent adjustability of each eye’s lens would have been to replace the non-adjustable connector (leaf hinge 23) of Kurtin ’532 with an adjustable connector, such as the nut, screw, and tab arrangement of Kurtin ’629. See PO Resp. 15 (describing Petitioner’s first proposed modification); Tr. 14:16–20 (Petitioner is relying on modifications 1 and 3.). Our finding is supported by Dr. Savidis’ testimony that, in order to have independent adjustability of each lens unit, a person of ordinary skill in the art would have been motivated to seek a suitable adjuster structure to replace the non-adjustable connector of Kurtin ’532. Ex. 1003 ¶ 77. Our finding is also supported by Dr. Savidis’ testimony that a person of ordinary skill in the art “would have exercised no more than routine skill in the art to implement this substitution by utilizing existing seal 21 of Kurtin ’532 shown in Figure 3 and by attaching tabs to or creating tabs for Kurtin’s ’532 front and rear rings to accommodate Kurtin’s ’629 screw and nut.” Id. ¶ 81. Our finding is further supported by Kurtin ’532 Figure 5, which shows leaf hinge 23 connecting the front and rear rings, and Kurtin ’532 Figure 3, which shows elastomeric bellows 21 allowing the rear ring to move with respect to the front ring. Ex. 1004 ¶¶ 32, 33, Figs. 3, 5. Our finding is further supported by Kurtin ’629, which discloses adjustable spectacles including nut 20, screw 21, and actuating tabs 19, where nut 20 can be turned by the wearer to adjust the optical power of the lenses. Ex. 1009, Abstract, Figs. 1–3, 3:50–4:9.” slip op. at 15

  Patent outcomesUS 8,708,487 unpatentable
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 8,708,487
• Adlens USA, Inc. / Adlens, Ltd. v. Superfocus Holdings LLC, Superfocus, LLC, Insolvency Services Group, Inc., And Dr. Stephen KurtinAll claims unpatentable
  PTAB · Dec 27, 2016 · IPR2015-01821 · APJ Elizabeth M Roesel · IPR · Final written decision

  Claims 1–12 and 14–17 are unpatentable as obvious over Kurtin ’532 and Kurtin ’629 in view of Gordon and/or Cronin; anticipation by Cronin was not shown for claims 3–12 and 14–17.

  RulingsFinal written decision

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

    “their broadest reasonable interpretation in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016). Under that standard, we generally give claim terms their ordinary and customary meaning, as understood by a person of ordinary skill in the art in the context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). “Absent claim language carrying a narrow meaning, the PTO should only limit the claim based on the specification . . . when [it] expressly disclaim[s] the broader definition.” In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). “Although an inventor is indeed free to define the specific terms used to describe his or her invention, this must be done with reasonable clarity, deliberateness, and precision.” In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). We construe claim terms only to the extent necessary to resolve the controversy. Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 8

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for patent owner

    “Our reviewing court instructs that “merely because an element does not include the word ‘means’ does not automatically prevent that element from being construed as a means-plus-function element.” Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015) (en banc) (quoting Cole v. Kimberly-Clark Corp., 102 F.3d 524, 531 (Fed.Cir.1996)). “Generic terms such as ‘mechanism,’ ‘element,’ ‘device,’ and other nonce words that reflect nothing more than verbal constructs may be used in a claim in a manner that is tantamount to using the word ‘means’ because they ‘typically do not connote sufficiently definite structure’ and therefore may invoke § 112, para. 6.” Id. at 1350. We agree with Patent Owner that the terms, “adjustable element” (claim 3) and “controllable spacing member” (claim 15), should be construed as means-plus-function terms. The words “element” and “member” are the same as or similar to the words the Federal Circuit indicated are “tantamount to using the word ‘means.’” Williamson, 792 F.3d at 1350. Dr. Savidis agrees that the terms, “adjustable element” and “controllable spacing member,” do not define a particular structure. Ex. 2003, 76:4–21, 77:1–7, 80:8–17. Accordingly, we construe these terms in accordance with 35 U.S.C. § 112 ¶ 6. Construing a means-plus-function claim term is a two-step process. We first identify the claimed function, and then we determine what structure disclosed in the specification corresponds to the claimed function. Williamson, 792 F.3d at 1351; In re Donaldson Co., 16 F.3d 1189, 1195 (Fed. Cir. 1994) (en banc).” slip op. at 9

  • Skill levelSkill level board ownDecided for patent owner

    “B. Person of Ordinary Skill in the Art We determine that a person of ordinary skill in the art would have an undergraduate degree in mechanical engineering or equivalent education and one to two years of experience with optics. Our determination is supported by the testimony of Dr. Plummer (Ex. 2002 ¶ 49), as well as the testimony of Dr. Savidis (Ex. 2003, 66:24–67:7, 67:16–20, 69:14–20). We also rely on Petitioner’s asserted references as establishing the level of skill in the art at the relevant time. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 12

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedMixed

    “Dr. Plummer testifies that “assembly of Gordon’s spectacles would have to be performed by a skilled technician.” Ex. 2002 ¶ 165 (emphasis added). That testimony does not persuasively support Patent Owner’s argument, PO Resp. 45, that Gordon’s adjustment can only be performed by a skilled technician. To the extent that Dr. Plummer’s testimony could be read to support Patent Owner’s argument, we give greater weight to Dr. Savidis’ testimony, which is consistent with Gordon’s disclosure of an adjustment that can be performed “quickly and readily.” Ex. 1013, 1:14, 1:18.” slip op. at 21

  Patent outcomesUS 8,967,797 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 8,967,797
• Sony Corporation v. Imation CorporationAll claims unpatentable
  PTAB · Dec 27, 2016 · IPR2015-01556 · APJ Kevin F Turner · IPR · Final written decision

  Claims 1, 3, and 8 are unpatentable as anticipated by Yen; the obviousness ground over Chang, Yen, and either specification was not established.

  RulingsFinal written decision

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

    “preposition “from.” The standard linguistic usage of the verb “protrude” takes the prepositions “from” and “over;” it would not be standard usage to talk about “protruding in” or “protruding on.” See Ex. 3004; see also Protrude, www.merriam-webster.com/dictionary/protrude (for examples of standard usage, last visited Dec. 21, 2016). Therefore, ascribing certain requirements based on the use of a preposition may not be appropriate when only certain prepositions have common usage. As such, we are not persuaded that “from” in the claim limitation “protruding from” must take on the special meaning advocated by Patent Owner. We continue to determine that the “host connector protruding from the housing” 8 encompasses “the host connector and the housing as different parts of a single integral structure.” See Dec. 9.” slip op. at 8

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

    “Additionally, we conclude that Petitioner has demonstrated that USB interface contact 300 (“host connector”), with sub-parts gold contacts 111, jut piece 112, and base 113, protrudes from casings 113A, 114 (“housing”). See Pet. 22–24. As we explain supra in Section II.A.1, the host connector and the housing can meet the language of claim 1, “host connector protruding from the housing,” even if they are different parts of a single integral structure, i.e., attached, connected, joined, or molded to one another. Petitioner and Mr. Berg persuasively demonstrate that Figs. 11–13 of Yen show USB interface contact 300, comprising gold pieces 111, jut piece 112, and base 113, protruding, or jutting out, from casings 113A, 114. See Ex. 1003, Figs. 11–13; Pet. 22–24; Ex. 1002 ¶¶ 55, 58. We see no meaningful difference in the relationship between the host connector and the housing in these figures and that in Figure 5 of the ’038 patent, which the ’038 patent characterizes as the host connector protruding from housing. Compare Ex. 1001, 8:47–51, Fig. 5, with Ex. 1003, Figs. 11–13. For these reasons, we determine that Petitioner demonstrates by a preponderance of the evidence that Yen would have conveyed to one of ordinary skill in the art the limitations recited in claim 1 and that claim 1 is anticipated by Yen.” slip op. at 23

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedDecided for patent owner

    “First, a copyright indication alone is not necessarily evidence of publication or that a document was distributed or had public accessibility. Although the year indicated in a copyright notice is intended to be “the year of first publication of the work” (37 C.F.R. § 401(b)), it details nothing about accessibility before the critical date. See In re Lister, 583 F.3d 1307, 1312–13 (Fed. Cir. 2009) (detailing that even when the Copyright Office issues a certificate of registration for a manuscript, that does not mean that the manuscript was listed in a catalog or index that would have permitted an interested researcher to learn of its existence and locate it for inspection); see also Microsoft Co. v. Corel Software, LLC, Case IPR2016-01083, slip op. at 13–14 (PTAB December 1, 2016) (Paper 14) (“The copyright notice, alone, however, sheds virtually no light on whether the document was publicly accessible as of that date, therefore additional evidence is typically necessary to support a showing of public accessibility”). Additionally, although the SD Specification details “[c]onditions for publication” (Ex. 1007, 2), we have no information about its dissemination, i.e., was it publically disseminated, or reproduced for some subset of a private group. As well, reproduction is prohibited without permission of “SD Group” (id.), which does not offer evidence of public accessibility. 27 Similarly, the MMC Specification discloses that “[n]o part of this publication may be transmitted, reproduced or distributed in any way,” without prior written consent (Ex. 1008, 2), which does not offer proof of sufficient accessibility to interested parties. Petitioner also asserts that the ’038 Patent admits that the MMC and SD standards, as well as cards following those standards, were in the prior art. Pet. 16–17. The acknowledgement that the standards were known, or even well-known, does not provide evidence regarding the specific documents relied upon by Petitioner. As provided in 35 U.S.C. § 311(b), a ground of unpatentability in an inter partes review can be made “only on the basis of prior art consisting of patents or printed publications.” The general knowledge of systems or methods, or their public use, cannot serve as a basis. As such, the general citation of the standards existing in the prior art can not substantiate the publication status of the specifically cited MMC Specification and SD Specification documents.” slip op. at 27

  • Strike new argumentNew argument disregardedDenied

    “At oral hearing, when the issue of printed publication status was raised, counsel for Petitioner raised the issues discussed above. Tr. 28–34. Petitioner also argues that without the MMC Specification and the SD Specification, “the obviousness position would still prevail.” Id. at 35. Petitioner asserts that “there’s no question that those skilled in the art understand that if you’re talking about a specific size, that there was no choice once those MMC or SD cards or their associated specs are known to be prior art, that it’d be obvious to modify the size to however you want.” Id. We are not persuaded, however, that dropping the Specification references would not be viewed as altering the grounds upon which trial instituted. Per In re Magnum Oil Tools, 829 F.3d 1364 (Fed. Cir. 2016), that could be interpreted as “borrowing the rationale for combining the first set of references [and] equally apply[ing it] to the second set of references” (id. at 1378), without providing Patent Owner its due process rights with respect to the “new” ground. We respectfully decline to entertain such a new position at this stage of the proceeding.” slip op. at 29

  Patent outcomesUS 6,908,038 unpatentable
  Claim construction§ 102 anticipation
  Patents in suitUS 6,908,038
• Advanced Micro Devices, Inc. v. LG Electronics Inc.Some claims unpatentable
  PTAB · Dec 27, 2016 · IPR2015-01409 · APJ Garth D Baer · IPR · Final written decision

  Claims 4, 8, and 9 are unpatentable under § 103; claim 30 was not shown unpatentable because the prior art did not teach shutdown based on total processor use below a threshold.

  RulingsFinal written decision

  • BurdenOther

    “III. ANALYSIS A. PRINCIPLES OF LAW Petitioner bears the burden of proving unpatentability of the challenged claims, and that burden never shifts to Patent Owner. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). To prevail, Petitioner must establish the facts supporting its challenge by a preponderance of the evidence. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d).” slip op. at 7

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner

    “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 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)). slip op. at 13

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

    “construction in light of the specification of the patent in which [they] appear[].” 37 C.F.R. § 42.100(b). We presume a claim term carries its “ordinary and customary meaning,” which is “the meaning that the term would have to a person of ordinary skill in the art in question” at the time of the invention. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). We construe only those claim terms necessary to resolve the controversy. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).” slip op. at 8

  • Expert testimonyPetitioner expert creditedDecided for patent owner

    “We decline to disregard all of Mr. Gafford’s testimony. In light of Mr. Gafford’s education and experience (a Bachelor of Science Degree in Electrical Engineering and over 43 years working for corporations in the design, manufacturing, and support for computer systems and microprocessors, see Ex. 1011 ¶¶ 14–20), we see no reason why Mr. Gafford’s frequent participation in other cases—even to ultimately mixed results—makes his testimony here unhelpful in understanding the evidence in this case. See Fed. R. Evid. 702(a). In assessing the merits of this case, we have considered the proffered testimony from Mr. Gafford, as well as Patent Owner’s Declarant Dr. Friedman, and accorded weight based on the testimony’s substantive persuasiveness.” slip op. at 29

  Patent outcomesUS 7,636,863 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,636,863
• Toshiba Corp. / Samsung Display Co., Ltd. v. Gold Charm LimitedAll claims unpatentable
  PTAB · Dec 23, 2016 · IPR2015-01497 · APJ Charles J Boudreau · IPR · Final written decision

  Claims 1–4, 8, 9, 13, and 14 are unpatentable as obvious over the ’512 Publication and APA because their combined teachings render the claimed subject matter obvious.

  RulingsFinal written decision

  • BurdenFwd all claims unpatentableUnpatentable

    “Based on the record before us, we are persuaded that Petitioner explains sufficiently how the ’512 Publication and the APA together teach each limitation of each of the challenged claims (see Pet. 29–59 and evidence cited therein), as well as the reasons that a person of ordinary skill in the art would have combined those teachings (see id. at 33, 41–42, 48, 51–52, 57 (citing, e.g., Ex. 1002 ¶¶ 90, 101, 111, 118, 129, 130)), so as to meet its burden to demonstrate by a preponderance of the evidence that the subject matter of the claims would have been obvious over the proffered combination. Patent Owner’s arguments to the contrary are not persuasive.” slip op. at 20

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

    “In the Petition, Petitioner proposed two alternate constructions for the claim 1 term “a drive means for driving the display,” depending on whether that term is properly construed as a means-plus-function limitation under 35 U.S.C. § 112, sixth paragraph. Pet. 26–28. Patent Owner responds that neither of Petitioner’s proposed constructions is proper, but that, “for purposes of this proceeding only,” Patent Owner relies upon those constructions. PO Resp. 22–23. According to Patent Owner, “even if one of Petitioners’ proposed constructions were adopted by the Board, the Petition nevertheless fails to a [sic] establish a prima facie case of obviousness.” PO Resp. 23. In our Decision on Institution, we concluded on the record then before us that it was not necessary for our determination of whether to institute an inter partes review to construe expressly any terms of the challenged claims. Dec. on Inst. 8. Because this Final Written Decision does not turn on the construction of “a drive means for driving the display” or of any other specific claim term, we again conclude that it is unnecessary to construe expressly any term of the challenged claims. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”).” slip op. at 9

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “Petitioner’s declarant, Dr. Silzars, testifies that one of ordinary skill in the art as of the July 28, 1994, the earliest claimed priority date of the ’092 patent, “would generally have had at least a Bachelor’s of Science degree in electrical engineering or physics, or equivalent, and several years of relevant experience relating to the design and fabrication of liquid crystal displays,” or, “[a]bsent a formal degree, a person of ordinary skill in the art would have additional years of work experience.” Ex. 1002 ¶¶ 13, 33; see Pet. 24 (citing Ex. 1002 ¶ 13). Patent Owner’s declarant, Dr. den Boer, essentially agrees, opining that one of ordinary skill in the art as of July 28, 1994, would have been “someone with at least a Bachelor’s of Science degree in a relevant field, such as electrical engineering, and with several years of experience in the field of design, development and fabrication of liquid crystal displays,” and stating “[i]n this specific regard, I agree with Dr. Silzars.” Ex. 2024 ¶ 9; see PO Resp. 9 (citing Ex. 2024 ¶ 9). Dr. Silzars and Dr. den Boer also agree that the person of ordinary skill in the art would understand the prior art as discussed herein. Ex. 1002 ¶ 13; Ex. 2024 ¶ 9. We determine that the differences in the declarants’ assertions are negligible and that both assessments are consistent with the ’092 patent and the referenced prior art. For the purposes of the analysis below, we adopt Dr. den Boer’s assessment.” slip op. at 13

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

    “Digest paper “concluded that only the dot mode polarity inversion method addresses and solves both the flicker and cross-talk problems,” “a person of ordinary skill in the art and familiar with the prior art of [the] ’092 [patent] and the SID92 Digest paper would employ dot mode polarity inversion over column inversion and row inversion, because it provides the best image quality.” Ex. 2024 ¶¶ 26–27. Irrespective of whether dot mode reversion would provide a still better image, however, we are persuaded that a person of ordinary skill in the art would have had reason, based on the APA, to add column polarity reversion to the ’512 Publication technique, in order to improve that technique in the same manner that the APA taught dot mode reversion provided an improvement over row polarity reversion. As the Supreme Court explained in KSR, “if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.” 550 U.S. at 417. As cited above, the APA taught that row polarity reversion eliminated crosstalk, but still suffered from flicker, whereas dot mode reversion, which effectively combines row polarity reversion with column polarity reversion, eliminated both crosstalk and flicker. We are persuaded, therefore, that a person of ordinary skill in the art would have had reason to add column polarity reversion of the APA to the double row polarity reversion of the ’512 Publication, to result in the driving method claimed in the ’092 patent. We further agree with Petitioner (see Tr. 7:7–14) that Patent Owner’s arguments that “adopting portions of the APA techniques as suggested would likely have little, if any positive effect on the power consumption by the ’512 Publication display” (PO Resp. 3) and that “power consumption may actually be exacerbated by this combination” (id.) focus on the wrong comparison and do not address our finding in the Decision on Institution that one of ordinary skill in the art would have had reason to pursue a combination of the ’512 Publication’s teachings with the APA in an attempt to solve the problem of excessive power dissipation by the APA’s dot mode polarity reversion (see Dec. on Inst. 17–18). Whereas Patent Owner’s argument focuses on a comparison of power consumption between the ’512 Publication display and a display having column inversion added to the ’512 Publication (Tr. 19:25–20:2), we agree with Petitioner (see Pet. Reply 20) that the relevant comparison is instead between the combination and the dot mode polarity reversion scheme of the APA. Nonetheless, because we are persuaded by Petitioner’s arguments and evidence, for the reasons set forth above, that a person of ordinary skill in the art would have had reason to combine the teachings of the APA with those of the ’512 Publication in the manner proposed by Petitioner rather than adopting dot mode polarity reversion in its entirety, and that such a combination would have rendered the subject matter of each of claims 1–4, 8, 9, 13, and 14 of the ’092 patent obvious, we need not reach Petitioner’s further argument that a desire to reduce power consumption would have provided additional reason to make that combination.” slip op. at 25

  Patent outcomesUS 5,790,092 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 5,790,092

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.