- Nissan North America, Inc. v. Joao Control & Monitoring Systems, LLCAll claims unpatentablePTAB · Dec 30, 2016 · IPR2015-01509 · APJ Jason J Chung · IPR · Final written decision
Claims 26, 29, 30, 33, 42, 43, 48, 60, and 68 are unpatentable as anticipated by Frossard or Pagliaroli, or obvious over the stated combinations.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownNo construction neededDecided for petitioner
“In that 2007 filing, the term “signal” was defined as “an indication, or an indication having or conveying data, information, or a message, or a conveyor of data, information, or a message, or an indication representing data or information.” Ex. 2002, 11. We are persuaded that this definition is instructive to understanding the proper scope of these claim terms. Thus, a first signal, for example, is an “an indication, or an indication having or conveying data, information, or a message, or a conveyor of data, information, or a message, or an indication representing data or information that is sent by a first device.” We have not been directed to evidence in the specification sufficient to show that the Applicant desired to narrow this very broad definition of signal in a manner that would exclude signals that pass through intermediaries. As defined by the Applicant, a signal may be an indication, information, or a message and we are not persuaded that it is impermissible for an intermediary to pass this information on and to add further data to the information that it received. For the foregoing reasons, we construe the term “first signal” to be “a signal sent by a first device;” “second signal” to be “a signal sent by a second device;” and “third signal” to be “a signal sent by a third device.” For convenience, this claim construction is reproduced in the table below.” slip op. at 8
- Expert testimonyPetitioner expert creditedDecided for petitioner
“We are not persuaded that Mr. McNamara’s statements on cross examination are sufficient reason to accord his testimony little or no weight. The prosecution history is an important element in understanding the claims of a patent. We are persuaded that the statements made during cross examination appear to misstatements as to Mr. McNamara’s review of the patent and its underlying prosecution history. Mr. McNamara signed his declaration under penalty of perjury and he has made other statements consistent with his testimony under oath stating that he reviewed the prosecution history. See Ex. 1003 ¶ 14; Ex. 2003, 154:11–20. Mr. McNamara signed his declaration on June 24, 2015, which states that he read the ’130 patent and its prosecution history. Ex. 1003 ¶ 14. Although Mr. McNamara testified that he did not read the prosecution history (Ex. 2003, 153:11–15), Patent Owner ignores Mr. McNamara’s other statements that demonstrate that he reviewed the prosecution history (id. at 154:11–20). In addition, Mr. McNamara’s statement was during a lengthy deposition approximately nine months after Mr. McNamara signed his declaration. Mr. McNamara’s inconsistent testimony appears to illustrate a momentary lapse in memory. Compare e.g., id. at 153:11–15, with id. at 154:11–20. Moreover, the only claim terms Mr. McNamara defined in view of the prosecution history of the ’130 patent were “automatically” and “automatically received,” which neither party contests. Compare PO Resp. 10–16; Reply 1; Pet. 8–9, with Ex. 1020, 26. In addition, we are not persuaded that Mr. McNamara’s statement that he did not review the prosecution history of the ’130 patent displays a lack of understanding of the prosecution history because Patent Owner did not define any claim terms at issue in this proceeding that overlap with claim terms defined during the prosecution of the ’130 patent. Compare PO Resp. 10–16, with Ex. 1020, 26.” slip op. at 12
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“We agree with Petitioner that Patent Owner attempts to limit “control device” improperly in a way that contradicts Patent Owner’s proposed claim construction. As discussed supra, “control device” is construed as “a device or a computer, or that part of a device or a computer, which performs an operation, an action, or a function, or which performs a number of operations, actions, or functions.” We agree with Petitioner that Frossard’s server 1 and resource 2 discloses the claimed “second control device” because Patent Owner’s proposed definition of “control device” can comprise “part of a device”; it follows that a device can comprise multiple parts. Also, because a “control device” is a type of device, a “control device” can include necessarily multiple parts. We also determine that because Patent Owner acknowledged, in its own definition, that “control device” means “a device or a computer, or that part of a device or a computer, which performs an operation, an action, or a function, or which performs a number of operations, actions, or functions” (emphases added), it necessarily follows that the “or” implies that a control device can include multiple parts. Tr. 32:15–19. For example, a “control device” can be “[1] a device or [2] a computer”; in other words, logic dictates that the “or” can be interpreted as an “and” such that a “control device” can be “[1] a device and [2] a computer.” Id. Moreover, during oral hearing, Patent Owner acknowledged Frossard’s server 1 is a “computer” and Frossard’s resource 2 is a “device.” Id. at 34:14–35:11 (In response to the question, “[s]o you are saying that a server can’t be a device,” Patent Owner acknowledged “[a] server is a computer, and broadly, if you consider a computer a device, a server is a device.”) (In response to the question “resource 2 or indicating a network number 2, is that a device as well?” Patent Owner acknowledged “resource 2 has a coder and has a transmitter. I would say it is a computer, but in a broad sense it can be considered a device.”). Using Patent Owner’s acknowledgement during the oral hearing, it follows that Frossard’s server 1 and Frossard’s resource 2, together, discloses a “control device” under Patent Owner’s proposed definition of “control device.” Furthermore, Figure 1 illustrates that Frossard’s server 1 and resource 2, together, form a control device generating and transmitting a signal. Ex. 1005, Fig. 1. Frossard’s server 1 is part of the claimed “second control device,” such that this part performs an operation, an action, or a function of generating the message order M (i.e., the claimed “second signal”). Id. at 4– 5. In addition, Frossard’s resource 2 is part of the claimed “second control device,” such that this part performs an operation, an action, or a function of transmitting the order message M (i.e., the claimed “second signal”). Id.” slip op. at 28
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“We agree with Petitioner and Mr. McNamara that it would have been obvious to a person having ordinary skill in the art to combine Frossard’s system with Pagliaroli’s theft sensor 12 to provide a system for remotely disabling or enabling a vehicle that also provides a notification when it detects tampering or theft. Patent Owner fails to proffer any rationale or evidence for why the combination of Frossard and Pagliaroli would destroy the functionality of Frossard. Further, Patent Owner fails to proffer its own expert testimony refuting Petitioner’s arguments and Mr. McNamara’s opinion. Patent Owner’s arguments are conclusory attorney argument. Patent Owner’s argument that Pagliaroli does not provide a teaching or suggestion that its theft sensor 12 can function as Frossard’s receiver-decoder circuits 4 is improper because Petitioner argues for combining (rather than replacing) Pagliaroli’s theft sensor 12 and Frossard’s receiver-decoder circuits 4. In addition, Patent Owner is incorrect because any teaching or suggestion need not be found in the reference itself.” slip op. at 37
Patent outcomesUS 6,549,130 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSRPatents in suitUS 6,549,130 - Infobionic, Inc. v. Braemar Manufacturing, LLCAll claims unpatentablePTAB · 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 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,225,901 - Infobionic, Inc. v. Braemar Manufacturing, LLCSome claims unpatentablePTAB · Dec 29, 2016 · IPR2015-01688 · APJ Scott C Moore · IPR · Final written decision
Claims 1, 2, 4, 6, 7, 11–16, and 19–23 are anticipated by Sellers; claims 3, 5, 8, 9, 17, and 18 are obvious over Sellers and Stutman; claim 10 was not shown unpatentable.
RulingsFinal written decision- 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 ’403 Patent pertains. Patent Owner’s formulation is unduly narrow because subject matter of the ’403 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.” slip op. at 16
- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageTerm construed board ownDecided for petitioner
“The parties agree that a central monitoring device/service is a device/service that “watch[es], keep[s] track of, or check[s]” on something “from a central location.” See PO Resp. 21; Reply 2. On this record, we determine that the claim term central monitoring device/service is not further limited to a device/service 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. 20– 22. The Specification uses the term “central monitoring device” in an openended manner, and Patent Owner does not identify any lexicographic definition or disclaimer that would limit this claim term in the manner it proposes. See PO Resp. 19–22; Tr. 38:1–17. The term “central monitoring service” does not appear in the Specification. Though Patent Owner cites a dictionary that defines “monitoring” as “constant checking on a patient’s condition” (Ex. 2021, 930), this definition is overly narrow because the Specification makes clear monitoring may be performed on a periodic basis. See, e.g., Ex. 1001, 3:6–35, 8:63–9:2. 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 term central monitoring device/service in the manner Patent Owner proposes (see Ex. 2003 ¶ 39 (citing Ex. 1001, 3:14–20, 6:42–47, 7:17–25, 7:57–64, 8:28–42); 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 ¶¶ 21–34. For the foregoing reasons, on this record, and under the applicable broadest reasonable interpretation standard, we construe central monitoring device/service as a device or service “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 ’403 Patent Specification uses the term “in communication with” in a broad, open-ended manner. See, e.g., Ex. 1001, 2:17–27, 2:42–48. 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. 40–44. 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
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Based on the arguments and evidence presented in the Petition and having considered the arguments and evidence presented by both parties during the trial, we are persuaded that Petitioner has established by a preponderance of the evidence that claims 1, 2, 4, 6, 7, 11–16, and 19–23 are anticipated by Sellers. 4.” slip op. at 26
Patent outcomesUS 6,940,403 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites GrahamPatents in suitUS 6,940,403 - Terremark North America LLC / Verizon Business Network Services Inc. et al. v. Joao Control & Monitoring Systems, LLCAll claims unpatentablePTAB · Dec 29, 2016 · IPR2015-01466 · APJ Stacey G White · IPR · Final written decision
Claims 22, 29, 31, 32, 39, and 40 are unpatentable as anticipated by French; claim 27 is unpatentable as obvious over French and Caglayan.
RulingsFinal written decision- Expert testimonyPetitioner expert creditedDecided for petitioner
“skill in the art. Id. at 16. Mr. Bennett testified that a person of ordinary skill would have “a bachelor’s degree in engineering or equivalent coursework and at least two years of experience in networked systems.” Id. (quoting Ex. 1002 ¶ 18). Mr. Bennett, however, does not have a degree in engineering and he has limited coursework in the field. Id. at 16–21. Thus, according to Patent Owner his testimony should be accorded little to no weight because he does not meet his own definition of a person of ordinary skill in the art. Id. This argument is not persuasive. Our reviewing court has noted that “[t]he ‘person of ordinary skill in the art’ is a theoretical construct used in determining obviousness under § 103, and is not descriptive of some particular individual.” Endress + Hauser, Inc. v. Hawk Measurement Sys. Pty. Ltd., 122 F.3d 1040, 1042 (Fed. Cir. 1997) (citing Custom Accessories, Inc. v. Jeffrey–Allan Indus., Inc., 807 F.2d 955, 963 (Fed. Cir. 1986)). The Federal Circuit has instead examined whether the purported expert has substantial credentials that would allow the judge to permit testimony from the purported expert. Id. Under the Federal Rules of Evidence, the question is whether Mr. Bennett has “scientific, technical, or other specialized knowledge will help the trier of fact to understand the evidence or to determine a fact in issue.” Fed. R. Evid. 702; see also Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1363–64 (Fed. Cir. 2008) (noting that under Rule 702, a person need not be a person of ordinary skill in the art, but rather may be “qualified in the pertinent art”). We are persuaded that Mr. Bennett has such credentials. Mr. Bennett has nearly 40 years of experience in networked systems (Reply. 14 (citing Ex. 1019, 210:2–9)) and is a named inventor in four issued patents dealing with networked systems (id. (citing Ex. 1003, 4–5; Ex. 1019, 49:15–50:10)). Patent Owner did not raise any substantive issues with Mr. Bennett’s experience or knowledge; instead, it only argued that Mr. Bennett did not have sufficient classroom education. We find that Mr. Bennett’s work experience, research, and industry participation are sufficient to provide the expertise necessary to assist us in this matter.” slip op. at 5
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“We find Petitioner’s argument to be persuasive. We have not been directed to evidence in the specification sufficient to show that the Applicant desired to narrow this very broad definition of signal in a manner that would exclude signals that pass through intermediaries. As defined by the Applicant, a signal may be an indication, information, or a message and we are not persuaded that it is impermissible for an intermediary to pass this information on and to add further data to the information that it received. For the foregoing reasons, we construe the term “first signal” to be “a signal sent by a first device;” “second signal” to be “a signal sent by a second device;” and “third signal” to be “a signal sent by a third (communications) device.” The recited signals all are construed to be “an indication, or an indication having or conveying data, information, or a message, or a conveyor of data, information, or a message, or an indication representing data or information.” Finally, we are not persuaded that these terms exclude signals that may pass through an intermediary. Further, we are persuaded that the claims are broad enough to encompass situations in which an intermediary may append additional information to the received signals.” slip op. at 10
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“second processing device because “there is an intermediate device between the local control module 38a and the central control system 20 that receives the ‘first signal’ from the local control module 38a and then subsequently generates and sends a ‘second signal’ to control system 20.” PO Resp. 25– 26 (citing Ex. 2012 ¶ 18); see also id at. 30–31. Dr. DiEuliis testified that “Global Control Module 30a assembles the data from the Local Control Module 38a and other modules, it generates a signal that contains all of this information and transmits it on network 32, where it is received by the Central Control System 20.” Ex. 2012 ¶ 22 (citing Ex. 1005, 6:43–53). As discussed above, we are not persuaded that the claims exclude systems with intermediate devices such as French’s global control module. See § II.B.2. As noted by Dr. DiEuliiss, French’s global control module transmits a signal to the central control module that “contains all of [the information received from the local control module].” Ex. 2012 ¶ 22. Pursuant to our construction, the signal received by the central control module (second control device) is the first signal because it contains all of the information sent by the local control module (first device). Thus, we do not find Patent Owner’s argument to be persuasive and we are persuaded by Petitioner’s arguments regarding the disclosures of French. Based on our review of the full record, we find persuasive Petitioner’s arguments and evidence and we adopt them as the basis for our determination that French discloses the limitations of claim 22. See Pet. 19– 28. Accordingly, we determine that Petitioner has demonstrated by a preponderance of the evidence the unpatentability of independent claim 22 over the disclosures of French.” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“Desktop, Internet, and Intranet Agents. Ex. 1006, 1. Caglayan describes how intelligent agents manage tasks such as notifying users of events of significance. Id. at 66. Petitioner argues that it would have been obvious to use Caglayan’s intelligent agents in French’s automation system to further automate the remote monitoring system and more efficiently monitor the data received from the building equipment and systems remotely. Pet. 35– 36 (citing Ex. 1002 ¶¶ 41–44). We find this rationale to be reasonable. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). Based on our review of the full record, we find persuasive Petitioner’s arguments and evidence and we adopt them as the basis for our determination that French and Caglayan teach the limitations of claim 27. See Pet. 33–36. Accordingly, we determine that Petitioner has demonstrated by a preponderance of the evidence the unpatentability of claim 27 over the combined teachings of French and Caglayan.” slip op. at 19
Patent outcomesUS 6,542,077 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSRPatents in suitUS 6,542,077 - RPX Corporation v. Applications In Internet Time, LLCAll claims unpatentablePTAB · Dec 28, 2016 · IPR2015-01752 · APJ Jennifer Meyer Chagnon · IPR · Final written decision
Claims 1, 3–8, and 10–40 are unpatentable under § 102 over Popp or Kovacevic and/or under § 103 over the stated combinations.
RulingsFinal written decision- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“In our Institution Decisions, we determined that Salesforce had not been shown to be a real party-in-interest in these proceedings. See 1751 Inst. Dec. 8–16; 1752 Inst. Dec. 8–16. In its Patent Owner Response, Patent Owner argues: In its decision instituting these . . . trials, the Board stated that there was insufficient evidence to find that the real party in interest is Salesforce.com, Inc. Patent Owner disagrees with the Board’s view of the law and the facts, and in particular believes that the Board misconstrued the law. As explained previously, the AIA was intended to prevent defendants from getting “a second bite at the apple.” Yet, the Board is doing just that by allowing Petitioner to act indirectly for Salesforce. In its decision, the Board set an improperly high burden of proof for the patent owner, and also improperly shifted the burden of proof to the patent owner. As explained in Patent Owner’s Preliminary Response, Salesforce is the real party in interest and Petitioner is acting as its proxy. Because Salesforce is time limited, so is Petitioner and patentability should be confirmed on this basis. PO Resp. 8. To the extent Patent Owner is attempting to incorporate arguments made in the Preliminary Response into the Patent Owner Response, such incorporation is improper under our rules. See 37 C.F.R. § 42.6(a)(3) (“Arguments must not be incorporated by reference from one document into another document.”). In any event, Patent Owner has neither presented any new evidence into the record, beyond the evidence we considered previously in rendering our Institution Decisions, nor cited any legal authority to support its positions set forth above. Based on the complete record now before us, we see no reason to change our previous determination, and we are not persuaded that Salesforce should have been identified as a real party-in-interest in these proceedings.” slip op. at 8
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner asserts that a “person of ordinary skill in the art in the timeframe of the December 1998 priority date of the ’482 patent . . . would have had at least a B.S. in Computer Science or the equivalent, along with at least two years of computer programming experience in developing applications for client-server systems.” 1751 Pet. 6 (citing Ex. 1002 ¶ 10); 1752 Pet. 6 (citing the same evidence). Patent Owner indicates that it “does not dispute Petitioner’s definition of the person of ordinary skill in the art.” PO Resp. 10; Ex. 2032 ¶ 18; Ex. 2033 ¶ 17. For purposes of this Final Written Decision, we agree with and adopt Petitioner’s proposed definition for the level of ordinary skill in the art, which each declarant in this proceeding meets or exceeds.12 See Ex. 1002 ¶¶ 2–6, 11; Ex. 2032 ¶¶ 4–9, 19; Ex. 2033 ¶¶ 2–5, 18. We further note that the applied prior art reflects 12 Patent Owner argues that, in the relevant time frame, Dr. Crovella “was already considerably more than ordinary,” and, for this reason, we should give less weight to Dr. Crovella’s testimony. PO Resp. 11; see also Tr. 53:4–9, 55:24–56:4. We disagree. See Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1363–64 (Fed. Cir. 2008) (noting that under Fed. R. Evid. 702, the expert must possess sufficient “expertise to be of assistance” to the trier of fact). the appropriate level of skill at the time of the claimed invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“a term of art. PO Resp. 14; see Ex. 1058, 44:19–45:4, 83:13, 95:16–20. Petitioner agrees. 1751 Pet. 10; 1752 Pet. 10; 1751 Pet. Reply 9; 1752 Pet. Reply 8. We agree with Petitioner that the Specification of the ’482 patent “nowhere refers to changes ‘that arise from changes external to the application,’ and does not limit ‘changes’ in any way” and “[t]here is no disclaimer in the ’482 patent that limits the meaning of ‘changes’ in the manner [Patent Owner] alleges.” 1751 Pet. Reply 6; see 1752 Pet. Reply 5; Ex. 1062 ¶¶ 4–5. While Patent Owner points to several portions of the Specification of the ’482 patent in support of its argument that the claimed changes should be limited to those external to the application and those that impact how the application program operates, we are not persuaded that the discussion in the Specification rises to the level of “reasonable clarity, deliberateness, and precision” necessary to provide a special definition for the claim term. See In re Paulsen, 30 F.3d at 1480. In fact, as noted by Petitioner, the “specification also describes an embodiment in which intelligent agents pursue ‘internal’ as well as ‘external Web activities.’” 1751 Pet. Reply 12 (citing Ex. 1001, 19:66–67); see 1752 Pet. Reply 11 (citing the same evidence). Further, the Specification describes the detected changes, more generally, throughout as changes that may affect operation of a user’s business, rather than as changes that affect operation of the application program. See, e.g., Ex. 1001, Abstract (“The system . . . receives information on regulatory and non-regulatory changes that affect operations of the business.”), 9:34–38 (“[C]hange management layer 11 . . . includes one or more change agents that ‘cruise the Web’ and identify and bring to the user’s attention relevant regulatory and non-regulatory changes found on the Web that may affect a user’s business.”), 22:33–39 (“The system . . . does not require that every employee [of a business] become a programmer in order to continue to respond to regulatory and/or technological and/or social changes affecting business operations and/or information management requirements.”); see also Ex. 1062 ¶ 5 (Dr. Crovella testifying that a person of ordinary skill “would have understood that changes can affect an application without impacting how the application ‘should’ operate, and those types of changes are also included in the plain and ordinary meaning of ‘changes that affect an application,’ [such as] a change to the processing resources available to an application could affect the application (e.g., by causing it to run faster or slower) without impacting how the application ‘should’ operate (e.g., without altering any of the steps that the application attempts to perform)”). Based on the evidence in this record, we determine that the plain meaning of the phrase “change management layer for automatically detecting changes that affect an application” is consistent with the Specification. We are not persuaded that the recited “change management layer for automatically detecting changes that affect an application” is limited to detecting changes external to the application, or that any such changes must impact how the application program should operate, as proposed by Patent Owner. No further express construction of the claim phrase is necessary.” slip op. at 14
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Patent Owner argues that Popp does not disclose the “change management layer” recited in claim 1. PO Resp. 22–25. In particular, Patent Owner argues that “Popp does not disclose a ‘change management layer’ which ‘automatically detects changes which impact how the application program should operate’ where those ‘changes’ ‘arise from changes external to the application.’” Id. at 24 (citing Ex. 2032 ¶¶ 63–64; Ex. 2033 ¶¶ 46–50). Patent Owner argues that Popp instead discloses “automatically detect[ing] changes from [an application’s] own operation – in this case, user input of text data via a user interface.” Id. at 23 (citing Ex. 2031, 67:10–25). Patent Owner’s arguments rely upon its proposed construction of the “change management layer,” which we do not adopt for the reasons discussed above (see supra Section II.C.1). We are persuaded by Petitioner’s assertion that automatically detecting a change that affects information stored in the database (e.g., an employee name stored in a database), from which the Web page (i.e., the claimed application) is generated, discloses detecting a change that affects the application, as claimed. See, e.g., Ex. 1001, 12:17–28 (describing the business content layer (i.e., “first layer”) as a database that may include data associated with a selected area of business, such as finance or human resources). Based on the evidence of record, we determine Petitioner has shown, by a preponderance of the evidence, that Popp anticipates claim 1.” slip op. at 24
Patent outcomesUS 7,356,482 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,356,482 - RPX Corporation v. Applications In Internet Time, LLCAll claims unpatentablePTAB · Dec 28, 2016 · IPR2015-01751 · APJ Jennifer Meyer Chagnon · IPR · Final written decision
Claims 1, 3–8, and 10–40 are held unpatentable as anticipated by Popp or Kovacevic, or obvious over the combinations stated in the decision.
RulingsFinal written decision- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“In our Institution Decisions, we determined that Salesforce had not been shown to be a real party-in-interest in these proceedings. See 1751 Inst. Dec. 8–16; 1752 Inst. Dec. 8–16. In its Patent Owner Response, Patent Owner argues: In its decision instituting these . . . trials, the Board stated that there was insufficient evidence to find that the real party in interest is Salesforce.com, Inc. Patent Owner disagrees with the Board’s view of the law and the facts, and in particular believes that the Board misconstrued the law. As explained previously, the AIA was intended to prevent defendants from getting “a second bite at the apple.” Yet, the Board is doing just that by allowing Petitioner to act indirectly for Salesforce. In its decision, the Board set an improperly high burden of proof for the patent owner, and also improperly shifted the burden of proof to the patent owner. As explained in Patent Owner’s Preliminary Response, Salesforce is the real party in interest and Petitioner is acting as its proxy. Because Salesforce is time limited, so is Petitioner and patentability should be confirmed on this basis. PO Resp. 8. To the extent Patent Owner is attempting to incorporate arguments made in the Preliminary Response into the Patent Owner Response, such incorporation is improper under our rules. See 37 C.F.R. § 42.6(a)(3) (“Arguments must not be incorporated by reference from one document into another document.”). In any event, Patent Owner has neither presented any new evidence into the record, beyond the evidence we considered previously in rendering our Institution Decisions, nor cited any legal authority to support its positions set forth above. Based on the complete record now before us, we see no reason to change our previous determination, and we are not persuaded that Salesforce should have been identified as a real party-in-interest in these proceedings.” slip op. at 8
- Skill levelSkill level petitioner adoptedDecided for petitioner
“timeframe of the December 1998 priority date of the ’482 patent . . . would have had at least a B.S. in Computer Science or the equivalent, along with at least two years of computer programming experience in developing applications for client-server systems.” 1751 Pet. 6 (citing Ex. 1002 ¶ 10); 1752 Pet. 6 (citing the same evidence). Patent Owner indicates that it “does not dispute Petitioner’s definition of the person of ordinary skill in the art.” PO Resp. 10; Ex. 2032 ¶ 18; Ex. 2033 ¶ 17. For purposes of this Final Written Decision, we agree with and adopt Petitioner’s proposed definition for the level of ordinary skill in the art, which each declarant in this proceeding meets or exceeds.12 See Ex. 1002 ¶¶ 2–6, 11; Ex. 2032 ¶¶ 4–9, 19; Ex. 2033 ¶¶ 2–5, 18. We further note that the applied prior art reflects 12 Patent Owner argues that, in the relevant time frame, Dr. Crovella “was already considerably more than ordinary,” and, for this reason, we should give less weight to Dr. Crovella’s testimony. PO Resp. 11; see also Tr. 53:4–9, 55:24–56:4. We disagree. See Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1363–64 (Fed. Cir. 2008) (noting that under Fed. R. Evid. 702, the expert must possess sufficient “expertise to be of assistance” to the trier of fact). the appropriate level of skill at the time of the claimed invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer not foundDecided for petitioner
“a term of art. PO Resp. 14; see Ex. 1058, 44:19–45:4, 83:13, 95:16–20. Petitioner agrees. 1751 Pet. 10; 1752 Pet. 10; 1751 Pet. Reply 9; 1752 Pet. Reply 8. We agree with Petitioner that the Specification of the ’482 patent “nowhere refers to changes ‘that arise from changes external to the application,’ and does not limit ‘changes’ in any way” and “[t]here is no disclaimer in the ’482 patent that limits the meaning of ‘changes’ in the manner [Patent Owner] alleges.” 1751 Pet. Reply 6; see 1752 Pet. Reply 5; Ex. 1062 ¶¶ 4–5. While Patent Owner points to several portions of the Specification of the ’482 patent in support of its argument that the claimed changes should be limited to those external to the application and those that impact how the application program operates, we are not persuaded that the discussion in the Specification rises to the level of “reasonable clarity, deliberateness, and precision” necessary to provide a special definition for the claim term. See In re Paulsen, 30 F.3d at 1480. In fact, as noted by Petitioner, the “specification also describes an embodiment in which intelligent agents pursue ‘internal’ as well as ‘external Web activities.’” 1751 Pet. Reply 12 (citing Ex. 1001, 19:66–67); see 1752 Pet. Reply 11 (citing the same evidence). Further, the Specification describes the detected changes, more generally, throughout as changes that may affect operation of a user’s business, rather than as changes that affect operation of the application program. See, e.g., Ex. 1001, Abstract (“The system . . . receives information on regulatory and non-regulatory changes that affect operations of the business.”), 9:34–38 (“[C]hange management layer 11 . . . includes one or more change agents that ‘cruise the Web’ and identify and bring to the user’s attention relevant regulatory and non-regulatory changes found on the Web that may affect a user’s business.”), 22:33–39 (“The system . . . does not require that every employee [of a business] become a programmer in order to continue to respond to regulatory and/or technological and/or social changes affecting business operations and/or information management requirements.”); see also Ex. 1062 ¶ 5 (Dr. Crovella testifying that a person of ordinary skill “would have understood that changes can affect an application without impacting how the application ‘should’ operate, and those types of changes are also included in the plain and ordinary meaning of ‘changes that affect an application,’ [such as] a change to the processing resources available to an application could affect the application (e.g., by causing it to run faster or slower) without impacting how the application ‘should’ operate (e.g., without altering any of the steps that the application attempts to perform)”). Based on the evidence in this record, we determine that the plain meaning of the phrase “change management layer for automatically detecting changes that affect an application” is consistent with the Specification. We are not persuaded that the recited “change management layer for automatically detecting changes that affect an application” is limited to detecting changes external to the application, or that any such changes must impact how the application program should operate, as proposed by Patent Owner. No further express construction of the claim phrase is necessary.” slip op. at 14
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
Patent outcomesUS 7,356,482 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,356,482 - RPX Corporation v. Applications In Internet Time, LLCAll claims unpatentablePTAB · Dec 28, 2016 · IPR2015-01750 · APJ Jennifer Meyer Chagnon · IPR · Final written decision
Claims 13–18 are unpatentable as anticipated by Popp and Kovacevic and obvious over Balderrama and Java Complete.
RulingsFinal written decision- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“In our Institution Decision, we determined that Salesforce had not been shown to be a real party-in-interest in these proceedings. See Inst. Dec. 7–15. In its Patent Owner Response, Patent Owner argues: In its decision instituting [this trial], the Board stated that there was insufficient evidence to find that the real party in interest is Salesforce.com, Inc. Patent Owner disagrees with the Board’s view of the law and the facts, and in particular believes that the Board misconstrued the law. As explained previously, the AIA was intended to prevent defendants from getting “a second bite at the apple.” Yet, the Board is doing just that by allowing Petitioner to act indirectly for Salesforce. In its decision, the Board set an improperly high burden of proof for the patent owner, and also improperly shifted the burden of proof to the patent owner. As explained in Patent Owner’s Preliminary Response, Salesforce is the real party in interest and Petitioner is acting as its proxy. Because Salesforce is time limited, so is Petitioner and patentability should be confirmed on this basis. PO Resp. 8. To the extent Patent Owner is attempting to incorporate arguments made in the Preliminary Response into the Patent Owner Response, such incorporation is improper under our rules. See 37 C.F.R. § 42.6(a)(3) (“Arguments must not be incorporated by reference from one document into another document.”). In any event, Patent Owner has neither presented any new evidence into the record, beyond the evidence we considered previously in rendering our Institution Decisions, nor cited any legal authority to support its positions set forth above. Based on the complete record now before us, we see no reason to change our previous determination, and we are not persuaded that Salesforce should have been identified as a real party-in-interest in this proceeding.” slip op. at 7
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner asserts that a “person of ordinary skill in the art in the timeframe of the December 1998 priority date of the ’111 patent . . . would have had at least a B.S. in Computer Science or the equivalent, along with at least two years of computer programming experience in developing applications for client-server systems.” Pet. 5–6 (citing Ex. 1002 ¶ 10). Patent Owner indicates that it “does not dispute Petitioner’s definition of the person of ordinary skill in the art.” PO Resp. 10; Ex. 2032 ¶ 18; Ex. 2033 ¶ 17. For purposes of this Final Written Decision, we agree with and adopt Petitioner’s proposed definition for the level of ordinary skill in the art, which each declarant in this proceeding meets or exceeds.8 See Ex. 1002 ¶¶ 2–6, 11; Ex. 2032 ¶¶ 4–9, 19; Ex. 2033 ¶¶ 2–5, 18. We further note that the applied prior art reflects the appropriate level of skill at the time of the claimed invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). C. Claim Construction In an inter partes review, claim terms in an unexpired patent are given their broadest reasonable construction in light of the specification of the patent in which they appear. See 37 C.F.R. § 42.100(b); Cuozzo Speed 8 Patent Owner argues that, in the relevant time frame, Dr. Crovella “was already considerably more than ordinary,” and, for this reason, we should give less weight to Dr. Crovella’s testimony. PO Resp. 11; see also Tr. 53:4–9, 55:24–56:4. We disagree. See Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1363–64 (Fed. Cir. 2008) (noting that under Fed. R. Evid. 702, the expert must possess sufficient “expertise to be of assistance” to the trier of fact).” slip op. at 8
- Expert testimonyPetitioner expert creditedDecided for petitioner
“timeframe of the December 1998 priority date of the ’111 patent . . . would have had at least a B.S. in Computer Science or the equivalent, along with at least two years of computer programming experience in developing applications for client-server systems.” Pet. 5–6 (citing Ex. 1002 ¶ 10). Patent Owner indicates that it “does not dispute Petitioner’s definition of the person of ordinary skill in the art.” PO Resp. 10; Ex. 2032 ¶ 18; Ex. 2033 ¶ 17. For purposes of this Final Written Decision, we agree with and adopt Petitioner’s proposed definition for the level of ordinary skill in the art, which each declarant in this proceeding meets or exceeds.8 See Ex. 1002 ¶¶ 2–6, 11; Ex. 2032 ¶¶ 4–9, 19; Ex. 2033 ¶¶ 2–5, 18. We further note that the applied prior art reflects the appropriate level of skill at the time of the claimed invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). C. Claim Construction In an inter partes review, claim terms in an unexpired patent are given their broadest reasonable construction in light of the specification of the patent in which they appear. See 37 C.F.R. § 42.100(b); Cuozzo Speed 8 Patent Owner argues that, in the relevant time frame, Dr. Crovella “was already considerably more than ordinary,” and, for this reason, we should give less weight to Dr. Crovella’s testimony. PO Resp. 11; see also Tr. 53:4–9, 55:24–56:4. We disagree. See Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1363–64 (Fed. Cir. 2008) (noting that under Fed. R. Evid. 702, the expert must possess sufficient “expertise to be of assistance” to the trier of fact).” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer not foundPlain and ordinary meaningDecided for petitioner
“We agree with Petitioner that the Specification of the ’111 patent “nowhere refers to changes ‘that arise from changes external to the application,’ and does not limit ‘changes’ in any way” and “[t]here is no disclaimer in the ’111 patent that limits the meaning of ‘changes’ in the manner [Patent Owner] alleges.” Pet. Reply 9; see Ex. 1062 ¶¶ 4–5. While Patent Owner points to several portions of the Specification of the ’482 patent11 in support of its argument that the claimed changes should be limited to those external to the application, we are not persuaded that the discussion in the Specification rises to the level of “reasonable clarity, deliberateness, and precision” necessary to provide a special definition for the claim term. See In re Paulsen, 30 F.3d at 1480. In fact, as noted by Petitioner, the “specification also describes an embodiment in which intelligent agents pursue ‘internal’ as well as ‘external Web activities.’” Pet. Reply 12 (citing Ex. 1001, 19:66–67). Based on the evidence in this record, we determine that the plain meaning of the phrase “fourth portion of the server being configured to automatically detect changes that affect the information in the first portion of the server or the information in the second portion of the server” is consistent with the Specification. We are not persuaded that the recited function of “automatically detect[ing] changes” is limited to detecting changes external to the application, as proposed by Patent Owner. No further express construction of the claim phrase is necessary.” slip op. at 13
Patent outcomesUS 8,484,111 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,484,111 - Microsoft Corporation And Microsoft Mobile, Inc. v. Global Touch Solutions, LLCAll claims unpatentablePTAB · Dec 28, 2016 · IPR2015-01928 · APJ Justin Busch · IPR · Final written decision
Claims 1, 3, and 20 are unpatentable as obvious over Jahagirdar and Schultz because their combination would have been a predictable substitution of familiar touch sensors for keys.
RulingsFinal written decision- BurdenUnpatentable
“III. CONCLUSION Based on the evidence and arguments, Petitioner has demonstrated, by a preponderance of the evidence, that claims 1, 3, and 20 of the ’494 patent are unpatentable under 35 U.S.C. § 103(a) as obvious over Jahagirdar and Schultz. IV. ORDER Accordingly, it is: ORDERED that claims 1, 3, and 20 of the ’494 patent have been shown to be unpatentable; and” slip op. at 19
- Skill levelOther
“touch sensors were not limited by size or arrangement, and a person of ordinary skill could have taken the Schultz sensors and put them into touch sensors the size of the buttons on Jahagirdar. Ex. 1017, 138:17–21, 140:2– 13. Additionally, as Dr. Morley acknowledges, the claims of the ’494 patent contain no limitations as to the physical form, internal architecture, or arrangement of the touch sensors. Id. at 172:12–173:10. Patent Owner presents no argument that the proposed combination would have been beyond the capabilities or knowledge of a person having ordinary skill in the art. As the Supreme Court has stated, “when a patent simply arranges old elements with each performing the same function it had been known to perform and yields no more than one would expect from such an arrangement, the combination is obvious.” KSR, 550 U.S. at 417 (internal quotation marks omitted). “If a person of ordinary skill can implement a predictable variation . . . § 103 likely bars its patentability.” Id. As illustrated by Schultz, the use of a touch sensor as an alternative to a mechanical push button was well known in the prior art. See Ex. 1005; Ex. 1015 ¶¶ 40–43. We agree that the combination of Jahagirdar and Schultz teaches the elements of claim 1 as arranged, and we determine the proposed combination would have been obvious, because it merely involves substitution of familiar elements, the combination of which yields predictable results. See KSR, 550 U.S. at 417. In particular, we agree that the proposed combination is the simple substitution or modification of Jahagirdar’s keys with Schultz’s known touch sensor. This is, in other words, a textbook case of obviousness. See Agrizap, Inc. v. Woodstream Corp., 520 F.3d 1337, 1344 (Fed. Cir. 2008) (“This is a textbook case of” slip op. at 11
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“As the Supreme Court has stated, “when a patent simply arranges old elements with each performing the same function it had been known to perform and yields no more than one would expect from such an arrangement, the combination is obvious.” KSR, 550 U.S. at 417 (internal quotation marks omitted). “If a person of ordinary skill can implement a predictable variation . . . § 103 likely bars its patentability.” Id. As illustrated by Schultz, the use of a touch sensor as an alternative to a mechanical push button was well known in the prior art. See Ex. 1005; Ex. 1015 ¶¶ 40–43. We agree that the combination of Jahagirdar and Schultz teaches the elements of claim 1 as arranged, and we determine the proposed combination would have been obvious, because it merely involves substitution of familiar elements, the combination of which yields predictable results. See KSR, 550 U.S. at 417. In particular, we agree that the proposed combination is the simple substitution or modification of Jahagirdar’s keys with Schultz’s known touch sensor. This is, in other words, a textbook case of obviousness. See Agrizap, Inc. v. Woodstream Corp., 520 F.3d 1337, 1344 (Fed. Cir. 2008) (“This is a textbook case of when the asserted claims involve a combination of familiar elements according to known methods that does no more than yield predictable results.”). Patent Owner does not point us to objective evidence of nonobviousness to overcome the textbook case of obviousness here.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“Notwithstanding Patent Owner’s position that the proposed combination would increase accidental actuations when grabbing or holding Jahagirdar’s mobile station, Petitioner points to Dr. Morley’s testimony that touch sensors would alleviate accidental actuation by inanimate objects (e.g., “clothes, objects in a bag, [and] surfaces of furniture”). Pet. Reply 2 (citing Ex. 1017, 157:20–158:23; Ex. 2006 ¶ 63). Accordingly, Petitioner argues a person having ordinary skill in the art looking to reduce inadvertent actuation by inanimate objects would be motivated to incorporate Schultz’s touch sensor. Id. at 2–3 (citing Ex. 1023 ¶¶ 4–5). Moreover, Petitioner’s unrebutted evidence in the record demonstrates Schultz’s touch sensor could have been integrated into Jahagirdar’s keys 144 in multiple ways, depending upon what might have been convenient or desirable. Id. at 3–4 (citing Ex. 1015 ¶ 75); Ex. 1023 ¶ 5. For example, a person of ordinary skill would have been readily able to relocate those touch sensors to different locations, or “one of skill could have easily programmed Jahagirdar’s controller such that touch sensor inputs were only recognized at appropriate times for example, depending on whether the mobile station 102 was opened or closed.” Ex. 1015 ¶ 75. In such a way, inadvertent actuation of the touch sensors would be minimized or eliminated.” slip op. at 13
Patent outcomesUS 7,265,494 unpatentableClaim construction§ 103 obviousnessPatents in suitUS 7,265,494 - Toshiba America Information Systems, Inc. / Apple Inc. v. Global Touch Solutions, LLCAll claims unpatentablePTAB · Dec 28, 2016 · IPR2015-01616 · APJ Justin Busch · IPR · Final written decision
Claims 1–3, 19, and 20 are unpatentable as obvious over Layman and Beard, with Rathmann additionally for claim 19 and APA additionally for claim 20.
RulingsFinal written decision- BurdenDecided for petitioner
“We have reviewed the Petition, Patent Owner Response, and Petitioner’s Reply, as well as the relevant evidence discussed therein. For the reasons that follow, we determine Petitioner has shown, by a preponderance of the evidence, that the challenged claims would have been obvious in view of the asserted combined teachings of the asserted references.” slip op. at 5
- Skill levelOther
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“We agree with Petitioner’s arguments, as supported by testimony from Mr. Beard, that the combination of Layman and Beard teaches or suggests the uncontested limitations recited in claim 1 as well as the additional limitations recited in dependent claims 2 and 3, and we adopt those assertions as our findings. See Pet. 35–43, 50–51. For example, Petitioner points to Layman’s power management system 28 (electronic unit) connected to an infusion pump system (product), including pump circuits 34 (load), and to power sources (both an AC power source and a battery) through an electrical circuit as meeting the preamble of claim 1. Id. at 35– 37. Petitioner argues Layman’s disclosure of processor 42 providing a control signal to turn power to pump circuits 34 on or off in response to a signal received from switch 38 meets the recited microchip that controls “the flow of power from the power source to activate the load.” Id. at 38. Petitioner contends Layman’s switch 38 is not a serial element in the power circuit because switch 38 merely sends a signal to processor 42, which controls whether the pump is powered on, and that switch 38, therefore, teaches the recited switch. Id. at 38–39. Petitioner relies on Beard for teaching a touch sensor used to activate the battery capacity display. Id. at 39–40. We find the disclosures in Rathmann and APA relied upon by Petitioner teach or suggest the additional limitations recited in claims 19 and 20, respectively, id. at 52–55, and that a person having ordinary skill in the art would have had reason to combine Rathmann’s asserted teachings as proposed, id. at 30–34. We discuss the disputed limitations of independent claim 1 and the rationale for combining the asserted teachings from Layman and Beard in more detail below.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“All of Patent Owner’s challenges to Petitioner’s rationale assume the proposed combination replaces Layman’s battery with the battery disclosed in Beard. See, e.g., PO Resp. 8 (“While the Petition suggests replacing Layman’s battery with that of Beard would be desirable . . . .”) Petitioner does not suggest such a replacement. Rather, Petitioner asserts “[a] POSITA would have been especially motivated to combine Layman with Beard’s power-saving touch switch activated display in light of Layman’s stated desire for features that extend battery life and increase the time between battery replacements.” Pet. 28 (emphasis added). Petitioner reiterated its position, asserting that Patent Owner’s arguments do “not address Petitioner’s motivation arguments,” which are no “more than an obvious substitution of elements that were well known in the prior art.” Pet. Reply 2. Petitioner merely proposes incorporating Beard’s teaching of a touch switch activated display into Layman’s system. Pet. Reply 7 (arguing “the Petition analyzed whether one of ordinary skill would have found it obvious to incorporate a touch-sensor activated display such as in Beard into Layman’s system”). As discussed above, Petitioner has presented reasons with rational underpinning as to why a person having ordinary skill in the art would look to integrate Beard’s touch sensor activated display with Layman. We find Petitioner’s arguments persuasive, and we adopt those reasons as the rationale for combining the cited teachings of Beard with the cited teachings of Layman.” slip op. at 12
Patent outcomesUS 7,265,494 unpatentableClaim construction§ 103 obviousnesscites KSRPatents in suitUS 7,265,494 - Adlens USA, Inc. / Adlens, Ltd. v. Superfocus Holdings LLC, Superfocus, LLC, Insolvency Services Group, Inc., And Dr. Stephen KurtinAll claims unpatentablePTAB · 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 unpatentableClaim construction§ 103 obviousnesscites KSRPatents in suitUS 8,708,487
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.