- PTAB · Dec 21, 2020 · IPR2020-00337 · APJ Charles J Boudreau · IPR · Rehearing
Denied Patent Owner’s request to reverse institution of review of claims 1–3, 7, 16, and 18; Patent Owner did not show an erroneous construction or abuse of discretion.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“We maintain, at this stage of the proceeding, that the construction of conversational flow should not include “(for instance, the running of an application on a server as requested by a client), where some conversational flows involve more than one connection, and some even involve more than one exchange of packets between a client and a server.” As we explained in the Institution Decision, phrases beginning with “for instance,” “where some,” and “some” are “merely exemplary and non-limiting.” Inst. Dec. 29. Patent Owner does not persuade us, on this record, that omission of these phrases from our definition of “conversational flow” is, as a matter of claim construction, erroneous. See Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 811 (Fed. Cir. 2002) (holding that exemplary language “introduces an example of a broader genus rather than limiting the genus to the exemplary species”).” slip op. at 4
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for petitioner
“We nevertheless preliminarily construed “conversational flow” as a “sequence of packets that are exchanged in any direction as a result of an activity.” Inst. Dec. 29. We explained that we saw no “reason to include the additional phrases of the prior Board and district court constructions”— namely, the phrases “for instance, the running of an application on a server as requested by a client,” “where some conversational flows involve more than one connection,” and “some even involve more than one exchange of packets between a client and a server.” Id. (emphases added). We maintain, at this stage of the proceeding, that the construction of conversational flow should not include “(for instance, the running of an application on a server as requested by a client), where some conversational flows involve more than one connection, and some even involve more than one exchange of packets between a client and a server.” As we explained in the Institution Decision, phrases beginning with “for instance,” “where some,” and “some” are “merely exemplary and non-limiting.” Inst. Dec. 29. Patent Owner does not persuade us, on this record, that omission of these phrases from our definition of “conversational flow” is, as a matter of claim construction, erroneous. See Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 811 (Fed. Cir. 2002) (holding that exemplary language “introduces an example of a broader genus rather than limiting the genus to the exemplary species”).” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“IV. CONCLUSION On this record, Patent Owner neither persuades us that we overlooked or misapprehended any matter, nor sufficiently shows that instituting an inter partes review of claims 1–3, 7, 16, and 18 of the ’646 patent was an abuse of discretion. V. ORDER In consideration of the foregoing, it is hereby: ORDERED that the Request for Rehearing is denied.” slip op. at 6
Claim constructionPatents in suitUS 6,771,646 - Apple Inc. v. Maxell, Ltd.Rehearing deniedPTAB · Dec 15, 2020 · IPR2020-00199 · APJ John A Hudalla · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving institution in place because its Fintiv analysis was not an abuse of discretion.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“for an abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion 1 Patent Owner also requested rehearing by the Precedential Opinion Panel (“POP”) to “clarify the date from which Fintiv Factor 4 should be analyzed, namely, the Petition’s filing date.” Req. Reh’g 1. POP denied Patent Owner’s request for review. Paper 20. Notwithstanding, we consider Petitioner’s arguments regarding Fintiv Factor 4 below. may be determined if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. See Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). The party requesting rehearing has the burden of showing the decision should be modified, which includes specifically identifying all matters the party believes we misapprehended or overlooked. See 37 C.F.R. § 42.71(d).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“We do not agree with Patent Owner that our analysis of Fintiv Factor 4 must be constrained to the facts as they existed when the Petition was filed. In the Board’s informative Sand Revolution decision, the panel considered and gave weight to a petitioner’s stipulation to withdraw certain prior art references from a related litigation if inter partes review was instituted. Sand Revolution II, LLC v. Cont’l Intermodel Grp.–Trucking LLC, IPR2019-01393, Paper 24 at 11–12 (June 16, 2020) (informative) (“Sand Revolution”). Importantly, the stipulation in Sand Revolution arose long after the Petition was filed. Compare IPR2019-01393, Paper 1, 88 (petition with July 25, 2019, filing date), with IPR2019-01393, Ex. 1015 (stipulation to withdraw prior art dated April 13, 2020). Just as in Sand Revolution, our consideration of post-filing developments here (i.e., Petitioner’s Final Election of Prior Art in the underlying litigation) is consistent with the policy considerations underlying Factor 4 in Fintiv, namely, “concerns of inefficiency and the possibility of conflicting decisions.” Fintiv at 12. Thus, we do not agree with Patent Owner that it was unreasonable for us to consider Petitioner’s post-filing election of prior art, which greatly diminished the overlap between the underlying litigation and this case.” slip op. at 4
Discretionary denialPatents in suitUS 6,329,794 - Precision Planting, LLC / Agco Corp. v. Deere & CompanyNo claims unpatentablePTAB · Dec 15, 2020 · IPR2019-01055 · APJ Timothy J Goodson · IPR · Final written decision
Claims 1–8, 10, 12–17, 19, and 20 were not shown unpatentable over Hedderwick, Koning, and Benac because Petitioner did not establish motivation to combine or a reasonable expectation of success.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedPetitioner expert discountedDecided for patent owner
“would have had either: (1) a bachelor’s degree plus four years of experience in mechanical engineering, agricultural engineering, or a related field; or (2) a master’s degree plus two years of experience in mechanical engineering, agricultural engineering, or a related field.” Pet. 45 (citing Ex. 1002 ¶¶ 19–20). In the testimony the Petition cites in support of that proposal, Mr. Prairie lists factors that are typically considered in assessing the level of ordinary skill in the art, and then states “[b]ased on these factors as well as my experience and expertise,” his opinion of the level of ordinary skill in the art is the same as Petitioner proposes. Ex. 1002 ¶¶ 19–20. This conclusory testimony is entitled to little weight. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We determine that no terms require express construction to resolve the parties’ dispute. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (claim terms need only be construed “to the extent necessary to resolve the controversy”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. in the context of an inter partes review).” slip op. at 14
- Obviousness (§103) › Analogous artNot reached
“Patent Owner counters that Koning does not qualify as analogous art and, relatedly, that judicial estoppel bars Petitioner from contending otherwise. PO Resp. 7–17. Patent Owner further argues that an ordinarily skilled artisan would not have been motivated to combine Koning’s belt with Hedderwick and Benac, and would not have expected that combination to succeed. Id. at 18–33; Sur-Reply 13–19. Patent Owner also challenges the motivation and reasonable expectation of success for the incorporation of Owner argues that incorporating Benac’s paddle wheel would not yield a “nip” as claimed. PO Resp. 49–61; Sur-Reply 29. Patent Owner also submits evidence of objective indicia of nonobviousness. PO Resp. 61–98; Sur-Reply 2–10. 2. Motivation to Combine and Reasonable Expectation of Success Of the disputed issues summarized in the preceding section, our analysis focuses on whether an ordinarily skilled artisan would have been motivated to combine the references in the manner Petitioner proposes and would have reasonably expected success in doing so. Because those issues are dispositive of Petitioner’s challenge, it is unnecessary for us to resolve the other disputed issues. See, e.g., Adidas AG v. Nike, Inc., 963 F.3d 1355, 1359 (Fed. Cir. 2020) (affirming Board’s determination that claims were not shown to be obvious because the petitioner had not demonstrated that an ordinarily skilled artisan would have been motivated to combine the references); Samsung Electronics Co. v. Elm 3DS Innovations, LLC, 925 F.3d 1373, 1383 (Fed. Cir. 2019) (determining that it is unnecessary to reach other issues when reasonable expectation of success is dispositive).” slip op. at 22
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundReasonable expectation not foundNot shown unpatentable
“between the references’ use of a brush belt as an endless member and paddle wheels versus the proposed combination. Moreover, Patent Owner points out problems ordinarily skilled artisans would have encountered in attempting to combine the references as Petitioner proposes. Petitioner does not persuasively explain how those issues could have been overcome, and instead simply asserts, essentially, that ordinarily skilled artisans could have figured it out. See, e.g., Ex. 1135 ¶ 78 (“[A] person of ordinary skill in the art would have determined through no more than routine experimentation how to orient Benac’s paddle wheel so that it could operate with Koning’s brush belt bristles to pinch seeds from the seed meter.”). It is Petitioner’s burden to establish that ordinarily skilled artisans would have been motivated to combine the references in the proposed manner and would have reasonably expected success in doing so. See 35 U.S.C. § 316(e); In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1376 (Fed. Cir. 2016). Petitioner’s arguments and evidence do not carry that burden.” slip op. at 28
Patent outcomesUS 9,699,955 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,699,955 - Apple Inc. v. Maxell, Ltd.Rehearing deniedPTAB · Dec 15, 2020 · IPR2020-00204 · APJ John A Hudalla · IPR · Rehearing
The Board denied Maxell’s rehearing request, leaving institution in place because it reasonably weighed the Fintiv factors and did not abuse its discretion.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“for an abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion may be determined if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. See Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). The party requesting rehearing has the burden of showing the decision should be modified, which includes specifically identifying all matters the party believes we misapprehended or overlooked. See 37 C.F.R. § 42.71(d).” slip op. at 3
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“Factor 4 must be constrained to the facts as they existed when the Petition was filed. In the Board’s informative Sand Revolution decision, the panel considered and gave weight to a petitioner’s stipulation to withdraw certain prior art references from a related litigation if inter partes review was instituted. Sand Revolution at 11–12. Importantly, the stipulation in Sand Revolution arose long after the Petition was filed. Compare IPR2019-01393, Paper 1, 88 (petition with July 25, 2019, filing date), with IPR2019-01393, Ex. 1015 (stipulation to withdraw prior art dated April 13, 2020). Just as in Sand Revolution, we focused on the effects of Petitioner’s proposal to withdraw Van der Salm here: alleviating concerns of duplicative efforts between the district court and the Board and minimizing the potential for conflicting decisions. Dec. 16. This is consistent with the policy considerations underlying Factor 4 in Fintiv, namely, “concerns of inefficiency and the possibility of conflicting decisions.” Fintiv at 12. Thus, we do not agree with Patent Owner that it was unreasonable for us to consider Petitioner’s post-filing proposal to withdraw Van der Salm.” slip op. at 4
Discretionary denialPatents in suitUS 6,928,306 - Illumina, Inc. v. Natera, Inc.No claims unpatentablePTAB · Dec 11, 2020 · IPR2019-01201 · APJ Cynthia M Hardman · IPR · Final written decision
Claims 1–27 were not shown unpatentable: the single-cell Dhallan theories lacked a reasonable expectation of success, and Rabinowitz was not established as prior art.
RulingsFinal written decision- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableReasonable expectation not foundNot shown unpatentable
“In sum, Petitioner’s evidence in the Petition establishes that single cells were used for genetic analysis, amplification techniques were known, and SNP arrays could be used to analyze chromosome imbalances. Petitioner’s evidence, however, does not persuasively address the interplay between the amount of DNA in a single cell and the amount of DNA or amplified DNA needed to carry out the claimed method using a SNP 22 genotyping array and Dhallan’s aneuploidy analysis. This is important because Patent Owner cites evidence demonstrating that at the relevant time, “various researchers had determined that very low amounts of DNA could not be reliably used for SNP genotyping arrays (even with intervening amplification).” PO Resp. 47.” slip op. at 22
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateEntitled to earlier dateDecided for patent owner
“On this record, we agree with Patent Owner and Dr. Quackenbush that the ’406 application and ’741 provisional together demonstrate to persons of 23 The ’741 provisional is incorporated by reference into the ’406 application. Ex. 1026, 1:5–13. 48 ordinary skill that the inventors understood pyrosequencing could be used for high-throughput sequencing, if expensive machines were purchased. In other words, the ’741 provisional gives context to the statement in the ’406 application, and we agree with Dr. Quackenbush that “‘[s]uitability’, as the provisional makes clear to a person of ordinary skill in the art, is a cost issue, rather than a technical one.” Ex. 2012 (Quackenbush Decl.) ¶ 277; see also id. ¶¶ 276–80 (opining on disclosures in the ’741 provisional).” slip op. at 48
- ExcludeMotion to exclude, deniedDenied
“As to Dr. Quackenbush’s qualifications, although Petitioner characterizes his expertise as relating to statistics, the record reflects that he also has adequate experience in the fields of genetics and biotechnology. For example, he is Professor of Computational Biology and Bioinformatics, the Chair of the Department of Biostatistics, and the Director of the Health Data Science Center at the Harvard TH Chan School of Public Health. Ex. 2013, 1. He has almost three decades of experience in research and teaching in the fields of genetics and biotechnology (id. at 1–8, 12), has published hundreds of articles in these fields (id. at 13–52), was the Editor-in-Chief of the journal Genomics for over a decade (id. at 8), and has served as a peer reviewer, or on the editorial board, of a dozen other publications relating to genetics and biotechnology (id. at 7–8). Paper 49, 2. Given that experience in genetics and biotechnology, we find that Dr. Quackenbush has sufficient 54 specialized knowledge, experience, and education in the techniques of the ’592 Patent and prior art, such as DNA amplification, genotyping, and analysis of genetic data, for his testimony to be helpful to us. Moreover, even if Dr. Quackenbush did not personally work in fetal diagnostics at the relevant time, there is no requirement that a declarant must actually be a person of ordinary skill in the art to present testimony as to what such a person would have understood at the time of the invention. See, e.g., SEB S.A., 594 F.3d at 1373 (stating there is no requirement of a perfect match between an expert’s experience and the field of the art in question, provided the expert has “sufficient relevant technical experience” to testify). The remaining arguments raised in Petitioner’s motion relate to the sufficiency, rather than admissibility, of evidence. Such arguments are improperly advanced in a motion to exclude. See TPG 79 (stating that a motion to exclude may not be used to challenge the sufficiency of the evidence to prove a particular fact); see also Corning Inc. v. DSM IP Assets B.V., IPR2013-00053, Paper 66 at 19 (PTAB May 1, 2014) (“[T]he Board, sitting as a non-jury tribunal, is well-positioned to determine and assign appropriate weight to the evidence presented in this trial.”). Moreover, “there is a strong public policy for making all information filed in an administrative proceeding available to the public.” Liberty Mut. Ins. Co. v. Progressive Cas. Ins. Co., CBM2012-00010, Paper 59 at 40 (PTAB February 24, 2014). Rather than excluding evidence that is allegedly 55 confusing, misleading, or incorrect, we simply give it the appropriate weight in our analysis.” slip op. at 54
- Strike new argumentNew argument disregardedDecided for patent owner
“success arguments focus solely on Dhallan’s single cell disclosure, while “ignor[ing] Dhallan’s disclosure that its methodology can be performed using 2–32 cells, which also falls within the claims.” Reply 18 (citing, e.g., Pet. 13–14). Patent Owner responds that this is an improper attempt to change the thrust of the obviousness theory presented in the Petition. Sur-reply 16–17. We agree with Patent Owner. Although the Petition references portions of Dhallan that address using sources of DNA other than a single cell (see, e.g., Pet. 13–14, citing Ex. 1002 ¶¶ 44, 74), this is by way of background only, falling within a section titled “Introduction to Dhallan.” See Pet. 11. Petitioner’s detailed obviousness arguments for claim 1 are limited to use of DNA from a single cell, and do not extend to DNA from multiple cells.15 See, e.g., id. at 19–20 (arguing that, because Dhallan’s preferred embodiment is one embryo cell, Dhallan teaches the claimed limitation reciting “wherein the small amount of genetic material from the individual is from fifty or fewer of the individual’s 15 As noted above, claim 1 recites several possible sources for the claimed “small amount of genetic data.” See supra n.9. Here we focus on Petitioner’s unpatentability arguments based on option [i], but note that Petitioner’s unpatentability arguments under options [ii] and [iii] also did not extend to use of DNA from multiple cells. See, e.g., Pet. 20 (cross-referencing arguments for claims 4, 5, and 17); id. at 34 (for claim 4, arguing option [ii] based on “a single human cell”); id. at 35 (for claim 5, arguing option [iii] based on “extracellular fetal DNA from maternal blood”); id. at 42 (for claim 17, arguing option [iii] based on a “single fetal cell”). 30 cells”); id. at 29 (“A POSA would have been motivated to use a single cell as the source of genetic material . . . .”); id. at 31 (“A POSA would have reasonably expected success in using Dhallan’s methodology, for example as described in Example 14, on one embryonic cell.”). Accordingly, we agree with Patent Owner that Petitioner is impermissibly attempting to change the thrust of its obviousness theory on reply. Sur-reply 16–17. We will not consider Petitioner’s belated attempt to argue a reasonable expectation of success in using more than a single cell in the claimed method. 37 C.F.R. § 42.23(b) (“A reply may only respond to arguments raised in the . . . patent owner response.”).” slip op. at 30
Patent outcomesUS 8,682,592 not shown unpatentableClaim construction§ 103 obviousness§ 112 disclosurecites KSR · GrahamPatents in suitUS 8,682,592 - Dolby Laboratories, Inc. v. Intertrust Technologies CorporationInstitution deniedPTAB · Dec 8, 2020 · IPR2020-00663 · APJ Kimberly Mcgraw · IPR · Institution
Institution was denied for claims 1 and 2 because Petitioner did not show a reasonable likelihood that either claim would have been obvious over Griswold or England.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Institution of an inter partes review is authorized by statute when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a); see 37 C.F.R. § 42.108. Upon consideration of the submitted evidence and argument, we conclude the information presented does not show there is a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the challenged claims of the ’603 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“time it was made, we consider the level of ordinary skill in the pertinent art at the time of the invention. Graham, 383 U.S. at 17. Petitioner contends that a person of ordinary skill in the art at the time the ’603 patent was filed (a “POSITA”) would have had a minimum of a bachelor’s degree in computer science, electrical engineering, mathematics, or a related field, and approximately two years of relevant experience or equivalent study in electronic data protection, electronic content protection, or digital rights management. Pet. 16. Petitioner further states that additional graduate education could substitute for professional experience, or significant experience in the field could substitute for formal education. Id. (citing Ex. 1002 ¶¶ 47–48). Patent Owner sets forth a similar definition, stating that a POSITA would have a Bachelor of Science degree in electrical engineering and/or computer science, and three years of work or research experience in the fields of secure transactions and encryption, or a Master’s degree in electrical engineering and/or computer science and two years of work or research experience in related fields. Prelim. Resp. 19. Patent Owner states that the positions set forth in its Preliminary Response would be the same under either parties’ proposal. Id. The parties’ proposals do not differ in any meaningful way to the issues in dispute. We adopt Petitioner’s definition of a POSITA, except that we delete the qualifier “a minimum” to eliminate vagueness as to the appropriate level of education. The qualifier expands the range without an upper bound, i.e., encompassing a Ph.D. degree and beyond, and thus does not meaningfully indicate the level of ordinary skill in the art. This definition of a person of ordinary skill in the art is supported by the testimony of Dr. Madisetti and is commensurate with the level of ordinary skill as reflected in the prior art and the ’603 patent. We note, however, that our analysis would be the same under either parties’ definition of a POSITA.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“should be construed to mean “conditions or characteristics determined in advance against which to check the structure and/or behavior of one or more software modules.” Pet. 16–18 (citing Ex. 1002 ¶¶ 67–72). To support this proposed construction, Petitioner states that the ’603 patent describes “inspector modules that ‘are operable to check the structure and/or behavior of drivers, software, and/or hardware against predefined criteria.’” Id. at 17 (emphasis omitted) (quoting Ex. 1001, 15:36–62); see also id. (citing Ex. 1001, 16:25–34, 23:63–24:4). Patent Owner contends that the term “predetermined criteria” does not require construction and should be given its plain and ordinary meaning. Prelim. Resp. 21. Patent Owner further asserts that construction of this term is not necessary to resolve the matters presently in dispute. Id. We agree that no explicit construction of this phrase is necessary for our decision on whether to institute. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 12
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“With respect to Petitioner’s first argument, Petitioner contends that “a POSITA would have understood that in the embodiment where the software is separate from the content[,] the monitor at the licensee’s site must first identify the software in order for the software to be used together with the content . . . .” Id. at 33 (citing Ex. 1002 ¶ 93), id. at 25 (citing Ex. 1002 ¶ 81). Petitioner, however, does not provide sufficient evidence to support its contention. Although Petitioner cites to the declaration testimony of Dr. Madisetti to support its argument, Dr. Madisetti’s testimony merely repeats verbatim what is stated in the Petition and provides no additional persuasive facts or objective evidence to support his conclusion. See Ex. 1002 ¶ 93; see also id. at ¶¶ 77–82. To satisfy its burden of proving obviousness a petitioner cannot employ mere conclusory statements. In re Magnum Oil Tools Int’l, 829 F.3d at 1380; see also In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (explaining that attorney arguments and conclusory statements that are unsupported by factual evidence are entitled to little probative value). We are also not persuaded by Petitioner’s second argument that “a POSITA would have understood that in the embodiment where the software is separate from the content[,] the monitor at the licensee’s site must first identify the software . . . so that information identifying the software can be transmitted in the license datagram for evaluation at the licensor’s site.” Pet. 33 (citing Ex. 1006, 5:44–45, 6:37–51; Ex. 1002 ¶ 93). Petitioner does not provide sufficient evidence or argument either that the license datagram provides information about the software (as opposed to the licensed product itself) or a reason why a POSITA would have understood information about the software would be provided in the datagram for evaluation at the licensor’s site. To support this second argument, Petitioner states Griswold’s license check system involves sending a “request datagram” or a “license datagram” to the licensor’s site in order to obtain approval to use the licensed product. Pet. 24–25 (citing Ex. 1006, 3:62–4:5, 5:44–52). Petitioner contends Griswold’s “license datagram 3 describes information related to the use of licensed product 1, including an identification of product 1 (i.e., the software).” Id. at 25 (citing Ex. 1006, 5:44–45, 6:37–51); see also id. at 33 (citing Ex. 1006, 5:44–45, 6:37–51; Ex. 1002 ¶ 93). Griswold, however, does not state that license datagram 3 identifies the software separately from the product. Rather, Griswold sates that datagram 3 contains a number of fields, including product model number 24 that identifies product 1. Ex. 1006, 6:45–48. Thus, we disagree with Petitioner’s assertion that license datagram 3 identifies the software separately from the product. Petitioner’s contention that a POSITA would have understood that, in the embodiment where the software is separate from the content, the monitor must first identify the software so that information identifying the software can be transmitted in the license datagram for evaluation at the licensors site, is conclusory and unsupported. See Pet. 33 (citing Ex. 1002 ¶ 93). Thus, Petitioner has not sufficiently shown that Griswold teaches the” slip op. at 20
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,406,603 - PTAB · Dec 8, 2020 · IPR2020-00486 · APJ Kristi L R Sawert · IPR · Rehearing
The Board denied Patent Owner’s rehearing requests, leaving institution in place for claims 1, 2, 13–17, 19, 20, 31, 33, 34, 42, 44, 48, and 49.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW A party requesting rehearing bears the burden of showing that a decision should be modified. 37 C.F.R. § 42.71(d). The party must identify all matters it believes the Board misapprehended or overlooked, and the place where each matter was addressed previously in a motion, an opposition, or a reply. Id. When rehearing a decision on petition, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus. Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted).” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“We nevertheless preliminary construed “conversational flow” as a “sequence of packets that are exchanged in any direction as a result of an activity.” Id. at 30. We explained that we saw no “reason to include the additional phrases of the prior Board and district court constructions”— namely, the phrases “for instance, the running of an application on a server as requested by a client,” “where some conversational flows involve more than one connection,” and “some even involve more than one exchange of packets between a client and a server.” Id. at 30 (emphases added). We maintain, at this stage of the proceeding, that the construction of conversational flow should not include “(for instance, the running of an application on a server as requested by a client), where some conversational flows involve more than one connection, and some even involve more than one exchange of packets between a client and a server.” As we explained in the Institution Decision, phrases beginning with “for instance,” “where some,” and “some” are “merely exemplary and non-limiting.” Id. Patent Owner does not persuade us, on this record, that omission of these phrases from our definition of “conversational flow” is, as a matter of claim construction, erroneous. See Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 811 (Fed. Cir. 2002) (holding that exemplary language “introduces an example of a broader genus rather than limiting the genus to the exemplary species”).” slip op. at 3
Claim constructionPatents in suitUS 6,954,789 - PTAB · Dec 8, 2020 · IPR2020-00339 · APJ Kristi L R Sawert · IPR · Rehearing
The Board denied Patent Owner’s rehearing requests, finding no abuse of discretion in instituting review of the challenged claims based on its preliminary construction of “conversational flow.”
RulingsRehearing decision- RehearingRehearing, deniedDenied
“decision should be modified. 37 C.F.R. § 42.71(d). The party must identify all matters it believes the Board misapprehended or overlooked, and the place where each matter was addressed previously in a motion, an opposition, or a reply. Id. When rehearing a decision on petition, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus. Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted).” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“the sequence of packets that are exchanged in any direction as a result of an activity (for instance, the running of an application on a server as requested by a client), where some conversational flows involve more than one connection, and some even involve more than one exchange of packets between a client and a server.” slip op. at 3
Claim constructionPatents in suitUS 6,954,789 - One World Technologies, Inc., D/B/A Techtronic Industries Power Equipment v. Chervon (HK) LimitedInstitution deniedPTAB · Dec 7, 2020 · PGR2020-00061 · APJ Linda E Horner · PGR · Institution
The Board denied institution because Petitioner did not show that the ’420 patent was eligible for post-grant review.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We agree with Patent Owner that Petitioner’s evidence in support of its assertion that “[t]he earlier [CN914] application does not disclose a ‘gripping member’ and ‘handle’” is inadequate. Petitioner attempts to show that the earlier CN914 application does not disclose these claimed features by showing that the later CN040 application does disclose them. But, Petitioner’s premise that the earlier CN914 application omits these features does not necessarily or logically flow from this showing. In other words, the depiction of what appears to be a substantially cylindrical gripping member and an elongated handle in the later CN040 application does not exclude these features also from being disclosed in the earlier CN914 application. Further, as Patent Owner demonstrated by the side-by-side annotated figures from each priority application, the earlier CN914 application appears to show similar-looking features as the substantially cylindrical gripping member and the elongated handle identified by Petitioner in the figures of the later CN040 application. A relevant difference between these two annotated figures is that the features depicted in the earlier CN914 application that Patent Owner annotates as corresponding to the “elongated handle” and the “substantially cylindrical gripping portion” do not have accompanying reference numbers “13” and “23” associated with them in that figure, while these same features depicted in the later CN040 application include the same reference numbers “13” and “23” that appear in the parent ’627 patent figures. Although the lack of reference numbers in the earlier CN914 application may suggest that the written description of this earlier application does not discuss these features explicitly, drawings alone can provide “written description” support for features depicted in them. See Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1564 (Fed. Cir. 1991) (“[D]rawings alone may be sufficient to provide the ‘written description of the invention’ required by § 112, first paragraph.”). Petitioner has failed to address the drawings presented in the earlier CN914 application or establish sufficiently that the claim features of the parent ’627 patent are not disclosed therein. For these reasons, we find that Petitioner has not shown sufficiently” slip op. at 16
- PTAB / AIA Trials › Real party in interest / privityNot reached
“of the Petition. RPI Motion, 1 (seeking “to identify Techtronic Industries Co. Ltd., Techtronic Industries North America, Inc., and Homelite Consumer Products, Inc., as real parties-in-interest without admitting that they are, in fact, real parties-in-interest”). Because we deny the Petition for other reasons, we do not decide this motion. 2 The other eight petitions are IPR2020-00883, IPR2020-00884, IPR2020- 00885, IPR2020-00886, IPR2020-00887, IPR2020-00888, PGR2020-00059, and PGR2020-00060.” slip op. at 3
- PTAB / AIA Trials › Discretionary denialNot reached
“Patent Owner contends that we should exercise that discretion and not institute trial because of the state of the parallel district court litigation.7 Prelim. Resp. 14–16. Because we determine that Petitioner fails to show the ’420 patent is eligible for post-grant review, we need not address Patent Owner’s contentions concerning discretionary denial.” slip op. at 9
- PTAB / AIA Trials › Constitutional / APA (Arthrex, Oil States, due process)Decided for petitioner
“This issue has been addressed by the Federal Circuit’s decision in Arthrex, 941 F.3d at 1337 (“This as-applied severance . . . cures the constitutional violation.”); see also Arthrex, Inc. v. Smith & Nephew, Inc., 953 F.3d 760, 764 (Fed. Cir. 2020) (Moore, J., concurring in denial of rehearing) (“Because the APJs were constitutionally appointed as of the implementation of the severance, inter partes review decisions going forward were no longer rendered by unconstitutional panels.”). Accordingly, we do not consider this issue any further for this Decision.” slip op. at 10
Discretionary denialPatents in suitUS 10,524,420 - Longi Green Energy Technology Co., Ltd. / Longi Solar Technology Co., Ltd. et al. v. Hanwha Q Cells & Advanced Materials CorporationAll claims unpatentablePTAB · Dec 3, 2020 · IPR2019-01072 · APJ Christopher L Crumbley · IPR · Final written decision
Claims 12–14 are unpatentable as obvious over Hagino and over Hagino with Duerinckx and Hoex 2006; the Bhattacharyya grounds did not prove them unpatentable.
RulingsFinal written decision- ExcludeMotion to exclude, deniedDenied
“Upon review, Petitioner’s Motion to Exclude fails to establish that Petitioner is entitled to the remedy it seeks. To the extent the Motion seeks exclusion of evidence under FRE 403 as overly prejudicial, Petitioner does not adequately explain what prejudice it would suffer if we were to simply disregard or give little weight to the uncited paragraphs of Dr. Lebby’s testimony, rather than excluding them from the record. Indeed, as the Board is not a jury, it would appear that the risk of unfair prejudice against which Rule 403 guards is diminished, if not eliminated entirely. See, e.g., Schultz v. Butcher, 24 F.3d 626, 632 (4th Cir. 1994) (“in the context of a bench trial, evidence should not be excluded under 403 on the ground that it is unfairly prejudicial”); see also Gulf States Utils. Co. v. Ecodyne Corp., 635 F.2d 517, 519 (5th Cir. 1981). The Board is capable of hearing relevant evidence and weighing its probative value, including determining the weight to be given Dr. Lebby’s testimony or disregarding it entirely.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“shall be construed using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b),” which is articulated in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). 37 C.F.R. § 42.100(b) (2019). Under the Phillips standard, the “words of a claim ‘are generally given their ordinary and customary meaning,’” which is “the meaning that the term would have to a person of effective filing date of the patent application.” Phillips, 415 F.3d at 1312–13 (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996). Only those terms in controversy need to be construed and only to the extent necessary to resolve the controversy. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). In our Institution Decision, we determined that no term of the challenged claims required an express construction. Dec. on Inst. 8. During trial, neither party proposed that we adopt any specific construction of a claim term. Upon review of the record and the parties’ positions, we agree that no term appearing in the challenged claims requires express construction. slip op. at 10
- Skill levelSkill level petitioner adoptedOther
“Petitioner relies on the Declaration of Sanjay Banerjee, Ph. D. (Ex. 1003). Dr. Banerjee testifies that a person having ordinary skill in the art would have “an advanced degree involving the discipline of electrical engineering, applied physics, chemistry, or materials science, and at least two years of experience designing, developing, or researching in the field,” or alternatively, “a bachelor’s degree in electrical engineering, applied physics, chemistry, or materials science, and at least three years designing, developing, or researching in the field.” Ex. 1003 ¶ 46. We adopted this definition for purposes of deciding whether to institute trial. Dec. on Inst. 9. For purposes of this inter partes review, Patent Owner “does not contest this level of skill.” PO Resp. 2. In view of this agreement, we adopt Dr. Banerjee’s definition of the level of ordinary skill in the art.” slip op. at 12
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“Dr. Banerjee’s testimony supports the conclusion that a person of ordinary skill in the art would have interpreted Hagino’s disclosure in this manner. Dr. Banerjee states that paragraph 29 of Hagino is “certainly . . . the only described method for forming ‘silicon nitride’ layers” in the reference. Ex. 1003 ¶ 211. We noted in our Institution Decision that this appeared to not be the case, because silicon nitride could also be applied through spin coating Solution A. Dec. on Inst. 30 n.10. But on the full record now before us, we credit Dr. Banerjee’s testimony, because upon further evaluation the Solution A spin-coating method does not pertain to the deposition of a silicon nitride layer. We have also reviewed Dr. Lebby’s testimony on this issue in evaluating how a person of ordinary skill would have interpreted Hagino. disclose using a CVD deposition method (Ex. 2008 ¶ 87), he does not address how a person of ordinary skill in the art would have understood Hagino to deposit a silicon nitride layer in the First Embodiment without using CVD. In particular, Dr. Lebby did not indicate, in Hagino or elsewhere, any disclosure that spin coating was a recognized method for depositing a silicon nitride layer. The only method for depositing silicon nitride recognized by Dr. Lebby was CVD as disclosed by the ’215 patent, and he testified that CVD deposition of a silicon nitride layer in the presence of silane leads to the “cracking” of silane and “typically you would . . . see hydrogen as part of a deposited layer.” Ex. 1053, 55:6–57:20. Based on the foregoing, we find that Hagino discloses deposition of a surface layer of silicon nitride using CVD that corresponds to the second layer of claim 12. We also credit Dr. Banerjee’s uncontradicted testimony that performing CVD deposition of silicon nitride in the presence of silane, as Hagino discloses (Ex. 1006 ¶ 29), would necessarily result in hydrogen being embedded in the layer. Ex. 1003 ¶¶ 206–213.” slip op. at 20
Patent outcomesUS 9,893,215 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSRPatents in suitUS 9,893,215
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.