- Hulu, LLC v. Sound View Innovations, LLCRehearing grantedPTAB · Dec 20, 2019 · IPR2018-01039 · APJ Scott R Boalick · IPR · Rehearing
The Board granted rehearing on printed-publication accessibility, finding a reasonable likelihood Dougherty was publicly accessible before the critical date, and remanded for consideration of institution on obviousness.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“We grant Petitioner’s request for rehearing. We conclude that, based on the totality of the evidence currently in the record, Petitioner has submitted evidence sufficient to establish a reasonable likelihood that the Dougherty reference was publicly accessible before the critical date of the challenged patent, and, thus Petitioner has established a reasonable likelihood that the reference qualifies as a printed publication. In view of this holding, we remand to the merits panel to determine whether Petitioner has demonstrated a reasonable likelihood that it will prevail with respect to at least 1 of the claims challenged in the Petition. See 35 U.S.C. § 314(a).” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Not reached
“reasonable likelihood that a reference is a printed publication. If trial is instituted, the petitioner will ultimately have the burden to prove that the reference is a printed publication by a preponderance of the evidence. We conclude that, based on the totality of the evidence currently in the record, Petitioner has established a reasonable likelihood that the Dougherty reference is a printed publication that was publicly accessible before the critical date of the challenged patent. V. ORDER It is hereby ORDERED that Request for Rehearing is granted to address the POP review issue; and FURTHER ORDERED that the matter is remanded to the original merits panel for further proceedings consistent with this opinion, including consideration of whether to institute a trial on the merits of the obviousness ground presented in the Petition.” slip op. at 21
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedInstituted
“institution, and based on the totality of the evidence to date, Petitioner has established a reasonable likelihood that Dougherty is a printed publication. The face of Dougherty bears a copyright date of 1990, a printing date of November 1992, and an ISBN date of 8/94. Ex. 1004, 4. In addition, the book is a textbook from an established publisher, O’Reilly, and a well-known book series. See Canon Br. 11–12 (quoting https://www.oreilly.com/about/history.html). As Canon asserts, the cover of Publisher’s Weekly stated (with respect to this series) that “The Internet Was Built With O’Reilly Books.” Id. Altogether, this is sufficient evidence to establish a reasonable likelihood that Dougherty is a printed publication that a publisher made available to the pertinent public prior to the October 1995 critical date.” slip op. at 19
§ 102 anticipationPatents in suitUS 5,806,062 - PTAB · Nov 20, 2019 · CBM2018-00006 · APJ Frances L Ippolito · CBM · Rehearing
The Board denied Patent Owner’s rehearing request, leaving intact its final written decision that claims 1–12 are unpatentable under § 101.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“Under 37 C.F.R. § 42.71(d), “[t]he burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, opposition, or a reply.”” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“on this particular issue is timely. Patent Owner has argued that “the institution should never have occurred” and that institution should have been denied outright. Id. However, our Decision on Institution (Paper 19, “Dec.”) was entered on June 22, 2018. Any request for rehearing of our determinations regarding the forum selection clause in that Decision should have been filed 14 days from the entry of that decision. 37 C.F.R. § 42.71(d)(1). As we noted in the FWD, after institution of the covered business method patent review (“CBM review”), the parties did not present any additional evidence or arguments regarding the forum selection clause issue. FWD 8 (“In the post-institution briefing, neither party has added arguments or evidence to the record regarding this issue.”). Indeed, the Patent Owner’s Response (Paper 28, “PO Resp.”) and Sur-Reply (Paper 39, “Sur.”) and Petitioner’s Reply (Paper 31, “Reply”) did not discuss forum selection. For completeness and clarity of the record, we reiterated our” slip op. at 3
- BurdenDecided for petitioner
“be instructive, contrary to Patent Owner’s assertion, that decision has not been designated precedential. Moreover, taking into consideration the discussion by the panel in Global Tel*Link, we are not persuaded that our determination misapprehended or overlooked any arguments or evidence in” slip op. at 9
- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionDecided for petitioner
“the abstract idea. Nonetheless, we are not persuaded that this is clear error or deprived Patent Owner of the opportunity to defend its position. Indeed, Patent Owner does not explain why the “rules for playing a bonus wagering game” is substantively different from “allowing bonus wagers in a wagering game,” or, more importantly, the basis for Patent Owner’s contention that this is a “fundamental change.” See Reh’g Req. 11.” slip op. at 11
§ 101 eligibilityPatents in suitUS 7,451,987 - Mallinckrodt Pharmaceuticals Ireland Limited v. Biovie, Inc.All claims unpatentablePTAB · Nov 13, 2019 · IPR2018-00974 · APJ Kristi L R Sawert · IPR · Final written decision
Claims 1–14 are unpatentable: Robertson anticipates claims 1–3 and 5, and Fimiani combined with Robertson or Angeli renders claims 1–14 obvious; the motion to amend is denied.
RulingsFinal written decision- Skill levelOther
“B. Level of Ordinary Skill in the Art We consider the asserted grounds of unpatentability in view of the understanding of a person of ordinary skill in the art, and thus begin with the level of ordinary skill in the art. The ordinarily skilled artisan is a “legal construct” that “presumes that all prior art references in the field of the invention are available to this hypothetical skilled artisan.” In re Rouffet, 149 F.3d 1350, 1357 (Fed. Cir. 1998).” slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for petitioner
“1. The preamble of claim 1 The preamble of claim 1 recites “[a] method for treating a patient diagnosed with ascites due to liver cirrhosis.” Ex. 1001, 8:25–26.6 5 See Changes to the Claim Construction Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340 (Oct. 11, 2018) (amending 37 C.F.R. § 42.100(b) effective November 13, 2018 to require a federal district court claim construction approach) (now codified at 37 C.F.R. § 42.100(b) (2019)). 6 Before institution, Petitioner argued that the preamble is not limiting. See Pet. 11–12 (contending that the “preamble of claim 1 is merely a” slip op. at 15
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“1. Claim 1 We find that Robertson teaches explicitly each and every limitation of claim 1. As to the preamble, we agree with Petitioner that Robertson discloses “treating a patient diagnosed with ascites due to liver cirrhosis,” as interpreted above. Supra § III.C.1. Robertson teaches administering terlipressin to a patient having “Child-Pugh C cirrhosis due to previous alcohol consumption complicated by recurrent encephalopathy, diuretic-resistant ascites, and hepatocellular carcinoma.” Ex. 1004, 2125. We credit and rely on Dr. Gow’s unrebutted testimony that “Child-Pugh C cirrhosis is a form of liver cirrhosis” and, therefore, an ordinarily skilled artisan would understand that the 59-year-old man’s ascites was due to liver cirrhosis. Ex. 1002 ¶ 75. We also note that Patent Owner admits that Robertson’s patient was diagnosed with ascites due to cirrhosis and that “terlipressin was used to treat the patient’s HRS.” See PO Resp. 34 (citing Ex. 1004, 2125). Robertson also discloses that the patient’s serum creatinine concentration was reduced, thus indicating an improvement in renal function. Ex. 1004, 2125–2126; see also Ex. 1001, 1:60–67, 3:40–46, 7:20–40 (all identifying “a reduction in serum creatinine concentration” as an indicator for improved renal function). Accordingly, Robertson discloses “treating a patient diagnosed with ascites due to liver cirrhosis,” as claimed.” slip op. at 25
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“4. Conclusion as to obviousness over Fimiani and Robertson or Angeli In sum, we find that the combination of Fimiani and Robertson or Angeli teaches or suggests each and every element of claims 1–14. We find that an ordinarily skilled artisan would have been motivated to combine Fimiani with Robertson or Angeli, and would have had a reasonable expectation of success in achieving the claimed invention. We also find that Patent Owner has failed to persuasively show secondary considerations of non-obviousness. Thus, after carefully considering the arguments and evidence, we determine that the record as a whole weighs in favor of a conclusion of obviousness, especially given the disclosures of the art of record in this case and strength of the obviousness case based on the first three Graham factors.” slip op. at 58
Patent outcomesUS 9,655,945 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,655,945 - Dispersive Networks, Inc. v. Nicira, Inc.Rehearing grantedPTAB · Jul 17, 2019 · PGR2018-00063 · APJ Debra K Stephens · PGR · Rehearing
Patent Owner’s rehearing request was granted as to claim 7, which was removed from institution under § 112(b); institution on claims 1–6 and 8–11 remained unchanged.
RulingsRehearing decision- RehearingRehearing, grantedRehearing, deniedGranted in part
“We agree. We erroneously instituted review of claim 7 under 35 U.S.C. § 112(b). We modify our Decision to the extent that we do not institute on claim 7 under 35 U.S.C. § 112(b). That is, we institute a post-grant review of claims 1–6 and 8–11 of the ’815 Patent on the challenge that these claims are indefinite and unpatentable under 35 U.S.C. § 112(b).” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We agree. We erroneously instituted review of claim 7 under 35 U.S.C. § 112(b). We modify our Decision to the extent that we do not institute on claim 7 under 35 U.S.C. § 112(b). That is, we institute a post-grant review of claims 1–6 and 8–11 of the ’815 Patent on the challenge that these claims are indefinite and unpatentable under 35 U.S.C. § 112(b).” slip op. at 10
NonePatents in suitUS 9,722,815 - PTAB · Jun 21, 2019 · IPR2019-00158 · APJ Beverly M Bunting · IPR · Rehearing
The Board denied the Patent Owner’s rehearing request, finding no misapprehension or oversight in its preliminary § 112(f) construction of “tool” for institution.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“decision for an abuse of discretion. 37 C.F.R. § 42.71(c). On rehearing, the burden of showing that the Decision should be modified lies with the party challenging the Decision, in this case, Patent Owner. 37 C.F.R. § 42.71(d). A request for rehearing must identify specifically all matters the requesting party believes the Board misapprehended or overlooked. 37 C.F.R. § 42.71(d). In our Decision, when considering the meaning and scope of the claim language, we “preliminarily determine[d] that the term tool is used merely as a generic placeholder meant to cover ‘the corresponding structure, material, or acts described in the specification and equivalents thereof.’” Dec. 16. Based on this understanding, we preliminarily agreed with” slip op. at 2
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner
“decision for an abuse of discretion. 37 C.F.R. § 42.71(c). On rehearing, the burden of showing that the Decision should be modified lies with the party challenging the Decision, in this case, Patent Owner. 37 C.F.R. § 42.71(d). A request for rehearing must identify specifically all matters the requesting party believes the Board misapprehended or overlooked. 37 C.F.R. § 42.71(d). In our Decision, when considering the meaning and scope of the claim language, we “preliminarily determine[d] that the term tool is used merely as a generic placeholder meant to cover ‘the corresponding structure, material, or acts described in the specification and equivalents thereof.’” Dec. 16. Based on this understanding, we preliminarily agreed with plus-function limitation having the function of imparting a deforming force on the deformable member, and the corresponding structure is a wedge, swage, shoulder, cone, ramp, mandrel, plug, and dart, as exemplified by tools 102, 122 and 142 disclosed in the ’439 patent.” Id. at 17–18. In its Preliminary Response, other than disputing Petitioner’s proposed construction, Patent Owner did not advance its own construction of tool. Prelim. Resp. 21–45. Now, Patent Owner’s stated basis for requesting rehearing is that we erred in preliminarily interpreting tool as a means-plusfunction (“MPF”) term. Req. Reh’g. 1.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“(Paper 1, “Petition” or “Pet.”) requesting an inter partes review of claims 1–23 (“the challenged claims”) of U.S. Patent No. 9,080,439 B2 (Ex. 1003, “the ’439 patent”). Baker Hughes Oilfield Operations, LLC, (“Patent Owner”) filed a Preliminary Response to the Petition (Paper 6, “Prelim. Resp.”). On April 15, 2019, we entered a Decision on Institution (Paper 9, “Decision” or “Dec.”) in this proceeding, determining that Petitioner had demonstrated a reasonable likelihood that it would prevail in showing the unpatentability of at least one challenged claim of the ’439 patent. Dec. 33. Patent Owner timely filed this Request for Rehearing of the Decision. Paper 12 (“Request” or “Req. Reh’g.”).” slip op. at 2
Claim constructionPatents in suitUS 9,080,439 - Hoya Optical Labs Of America, Inc. v. Inland Diamond Products Co.Some claims unpatentablePTAB · May 23, 2019 · IPR2018-00178 · APJ Michael G Mcmanus · IPR · Final written decision
Claims 1, 3, 7, 8, and 12 are unpatentable as obvious; claims 2, 4–6, and 9–11 were not proven unpatentable.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“The claims at issue are apparatus claims rather than process claims. Accordingly, no specific means of achieving the interference fit is required. We construe “interference fit” as a structural limitation specifying the relationship of the bevel and frame. Even if construed as a product-by-process limitation (with the process being the insertion of a lens within a frame of lesser size), “determination of patentability is based on the product itself.” In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985). Patent Owner frames its proposed construction in terms of the process by which the fit comes about, but says little about the structural characteristics of the interference fit upon assembly. The Specification teaches that pressure upon the lens would lead to compression of the vertex. Ex. 1001, 4:40–55. That the vertex is in a compressed state is separately required in all claims by the “in compression” limitation. Id. at 8:54, 9:24. In view of the foregoing and in light of the parties’ arguments following institution, we modify our preliminary construction to recognize that an interference fit in this context implicates associated compressive forces. We, therefore, construe “interference fit” to mean “a relationship of the bevel of the lens and the receiving channel bottom of the eyeglass frame where such parts are in contact so as to exert frictional and compressive forces that secure the lens in place.”” slip op. at 17
- Expert testimonyNot reached
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“Petitioner sets forth a rationale to combine the teachings of Gottschald and Schaeffer. Id. at 20. Petitioner argues that the teachings of Gottschald are applicable to the prescription lenses of Schaeffer as follows: POSITA would have been motivated by these teachings to use the method and device of Gottschald, with no change in its function, to edge the prescription plastic lens blank described by Schaeffer “so that the spectacle lens edge machining directly delivers a spectacle lens which is suitable for the selected spectacle frame, which has been ground to shape and which is provided with a bevel” (Gottschald, p. 6), and thereby to obtain the expected result of a “prescription plastic lens for use in an eyeglass frame” as recited in claim 1. Id. at 20. Patent Owner does not challenge the adequacy of Petitioner’s rationale with specificity. See PO Resp. 48–54. Rather, Patent Owner argues that Petitioner relies on “mere conclusory statements” throughout the Petition. Id. at 49. Such a generalized argument has little force. Having reviewed the evidence as a whole, we find that a person of ordinary skill in the art would have had reason to combine the teachings of Gottschald (regarding lens edging) and Schaeffer (regarding prescription lenses) in the manner Petitioner proposes.” slip op. at 28
- Obviousness (§103) › Objective indicia / secondary considerationsNot reached
Patent outcomesUS 8,636,360 mixedClaim construction§ 103 obviousnessPatents in suitUS 8,636,360 - Syrinix, Inc. v. Blacoh Fluid Control, Inc.Some claims unpatentablePTAB · May 22, 2019 · IPR2018-00414 · APJ Frederick C Laney · IPR · Final written decision
Claims 1–6, 10, 12, and 14 are unpatentable; the motion to amend is granted for substitute claims 22 and 24.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer foundDecided for patent owner
“We find the above remarks made during prosecution of the ’553 patent by the applicant to be an unmistakable disavowal of pressure fluctuations caused by a leak in a pipe from the scope of “dynamic transient pressure.” Accordingly, we agree with Patent Owner that the applicant narrowed the scope of “dynamic transient pressure” to exclude transient pressures caused by pipeline leaks.” slip op. at 18
- Skill levelSkill level board ownOther
“formulation regarding the level of ordinary skill in the art, and instead found the cited references to be representative of the level of ordinary skill in the art. Inst. Dec. 9–10 (citing Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the level of ordinary skill in the art may be evidenced by the cited references themselves)). The parties have not expressed any disagreement with this finding, nor have they suggested a more definitive characterization of the level of ordinary skill in the art is necessary to resolve a disputed issue. Accordingly, for purposes of this Decision we again treat the cited references as being representative of the level of skill in the art. However, the factual findings and legal conclusions set forth herein would” slip op. at 9
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend granted in partGranted in part
“claims, “the burden of persuasion ordinarily will lie with the petitioner to show that any proposed substitute claims are unpatentable by a preponderance of the evidence.” Lectrosonics, Inc. v. Zaxcom, Inc., Case IPR2018-01129, slip op. at 4 (PTAB Feb. 25, 2019) (Paper 15) (precedential). Before we evaluate the patentability of Patent Owner’s proposed substitute claims, we first must consider whether the proposed claims satisfy the threshold statutory and regulatory requirements set forth in 35 U.S.C. § 316(d) and 37 C.F.R. § 42.221. Id. at 4–10. Accordingly, Patent Owner must demonstrate (1) the amendment responds to a ground of unpatentability involved in the trial; (2) the amendment does not seek to enlarge the scope of the claims of the patent; (3) the amendment proposes a reasonable number of substitute claims; and (4) the amendment does not introduce new subject matter and has written description support in the original disclosure. Id.” slip op. at 74
Patent outcomesUS 7,219,553 mixedClaim constructioncites KSR · GrahamPatents in suitUS 7,219,553 - Saudi Arabian Oil Company v. SK Innovation Co., Ltd.All claims unpatentablePTAB · May 9, 2019 · IPR2018-00159 · APJ Monté T Squire · IPR · Final written decision
Claim 2 was held unpatentable as anticipated by Novomer 1; the contingent motion to amend was granted, substituting claim 5.
RulingsFinal written decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Applying the standard set forth in 35 U.S.C. § 314(a), which requires demonstration of a reasonable likelihood that Petitioner would prevail with respect to at least one challenged claim, we granted Petitioner’s request and instituted an inter partes review for challenged claim 2. Paper 9 (“Institution Dec.”).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner agrees with Petitioner’s assessment regarding the level of ordinary skill in the art. Mot. Amend 7. We determine the level of ordinary skill proposed by Petitioner is consistent with the ’979 patent and the asserted prior art, and we adopt that level in construing and deciding the patentability of claim 2.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“In the Institution Decision, we determined that the phrase “A poly(alkylene carbonate) represented by Formula 10” did not require construction at that stage. Institution Dec. 9; see also id. at 7 (citing Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only terms which are in controversy need be construed and only to the extent necessary to resolve the controversy)). Neither party has argued post-institution that this phrase of claim 2 needs be construed. See PO Resp. 2; Pet. Reply 1–3. We conclude that no further construction of this phrase is necessary.” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“In the Institution Decision, we agreed with Petitioner that the variable construction of the phrase “each independently” is the broadest reasonable interpretation in light of the specification, and construed the phrase to mean that “each variable R81, R82, R83, and R84 is independent from one instance to another throughout the polymer.” Institution Dec. 13–14. Based on that construction, we also determined in the Institution Decision that claim 2 encompasses the following genera: (1) “Genus A,” which includes a poly(ethylene glycol) chain transfer agent flanked by poly(ethylene carbonate) chains (Pet. 24); (2) “Genus B,” which includes a poly(propylene glycol) chain transfer agent flanked by poly(propylene carbonate) chains (id. at 25–26); (3) “Genus C,” which includes a poly(propylene glycol) chain transfer agent flanked by poly(ethylene carbonate) chains (id. at 26); and (4) “Genus D,” which includes a poly(ethylene glycol) chain transfer agent flanked by poly(propylene carbonate) chains (id. at 27). Institution Dec. 12–13. Neither party opposes adopting the variable construction of the phrase “each independently” and the determination that, under the variable construction, claim 2 encompasses Genus A, Genus B, Genus C, and Genus D. PO Resp. 2; Pet. Reply 1–3. We maintain the variable construction of the phrase “each independently” on the complete record.” slip op. at 11
Patent outcomesUS 9,023,979 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,023,979 - Expedia, Inc. / Homeaway.Com, Inc. et al. v. International Business Machines CorporationRehearing deniedPTAB · Apr 10, 2019 · IPR2018-01354 · APJ David C Mckone · IPR · Rehearing
The Board denied the Patent Owner’s rehearing request, leaving institution in place because it had not misapprehended or overlooked arguments or abused its discretion.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“decision for an abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion may be indicated 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. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). The burden of showing that the Decision should be modified is on Patent Owner, the party challenging the Institution Decision. See 37 C.F.R. § 42.71(d). In addition, “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id.” slip op. at 4
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticDecided for petitioner
“Owner’s arguments were outweighed by several other General Plastic factors. Dec. 34–37. To summarize briefly, we determined that Petitioner was not involved with the Groupon case, did not derive any benefit from the arguments or resolution of that case, and did not have any apparent reason to bring its challenge based on Fisher earlier. Id. at 33–34. Accordingly, the first five General Plastic factors weighed in favor of institution. Id. We also discussed at length the strong case Petitioner put forward on the merits for the claims at issue in the Groupon case. Id. at 23–29. The Trial Practice Guide Update counsels that we should consider the General Plastic factors as “part of a balanced assessment of all relevant circumstances in the case, including the merits.” Trial Practice Guide Update, at 10 (emphasis added). We determined that the General Plastic factors addressing judicial economy favored denial, but not strongly, and that they were outweighed by the factors supporting institution. Dec. 34–37. In light of the vacating of the” slip op. at 5
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“and Orbitz, LLC (collectively “Petitioner”) filed a Petition (Paper 2, “Pet.”) to institute an inter partes review of claims 1–8, 12, 14–21, 25, 27–34, 38, 40–45, 47, 49, 51–57, and 60–66 of U.S. Patent No. 5,961,601 (Ex. 1001, “the ’601 patent”). International Business Machines Corp. (“Patent Owner”) filed a Preliminary Response (Paper 7, “Prelim. Resp.”). Upon consideration of the Petition and Preliminary Response, we concluded, under 35 U.S.C. § 314(a), that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one challenged claim as obvious over Yuval Fisher, SPINNING THE WEB (1996) (Ex. 1005, “Fisher”). Paper 8 (Institution Decision (“Dec.”)) 37.” slip op. at 2
Discretionary denialPatents in suitUS 5,961,601 - Yamaha Golf Car Company v. Club Car, LLCNo claims unpatentablePTAB · Apr 2, 2019 · IPR2017-02143 · APJ Robert L Kinder · IPR · Final written decision
Petitioner did not prove claims 1–11 and 13–20 unpatentable on the asserted grounds; claim 12 was disclaimed.
RulingsFinal written decision- Expert testimonyPatent owner expert creditedDecided for patent owner
“In the summon mode, pressing a button to summon the caddie of the ’388 patent triggers an autonomous mode but no specific driving commands are provided to the caddie by the golfer. See Ex. 2015 ¶ 195 (“As the robotic caddy cart is operating autonomously at that point, the user does not input these movement commands.”). We agree that the summon command could not be considered a driver command because “merely defining the destination does not generate any control actions.” Id. ¶ 160. Likewise, a summon command to follow a golfer would not be a driver command because the golfer has no direct control over the route taken, the speed of the caddie, or whether or not a caddie could drive into a restricted area –– the caddie’s system pilots itself to a point near the golfer by generating movement inputs on its own. The system detects that the golfer is in a limited access area and the golfer will not be able to summon the caddie into that area. This restriction is not a driver command being limited because the summon command simply activates internal logic to move the caddie near the golfer, not a driver command to move into a restricted area. Indeed, when operating in autonomous mode, the caddie can never enter such restricted areas. We thus agree with Patent Owner that the summon command cannot be overridden or limited in the ’388 patent because the caddie will always come as close as is allowable under the parameters of the caddie’s programming.” slip op. at 45
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Dec. 11. First, we note that the claim language itself focuses on limiting the ability of a “driver” to move the cart. For example, dependent claim 2 recites “an override of a driver input to the motor.” That the “driver input” needs to be overridden or otherwise restricted presumes that the golf cart is being driven by a person who has independent control of the cart and is susceptible to driving in an unruly manner, in other words, an onboard driver of the cart. This is especially true given the lack of any indication in the claims of remote or autonomous operation of the cart. Numerous other dependent claims include similar references to a driver of the cart, for example, “override of driver input” (claim 3), “driver interface unit” (claim 4), “limits the performance of driver commands” (claim 14), and “driver command” (claim 17).” slip op. at 14
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“Petitioner overemphasizes the ’053 Application’s use of the terms “golf cart” and “electric vehicle.” Nowhere does the ’053 Application support the disclosure of a rideable cart. Rather, it describes a golf cart that, when read in the context of the reference as a whole, is a riderless cart, or more specifically, a “caddie cart.” This is evidenced by the fact that the ’053 Application incorporates by reference a caddie cart, as discussed above, in which the only mechanism for actually operating the cart is a “grip lever,” which Petitioner’s own expert acknowledges is not something found in a rideable cart. See Ex. 2016, 94:16–95:11 (conceding “there is no such thing as a rideable golf cart, in [his] experience or in 2003, that has a grip lever”); see also 54:5–12 (essentially same testimony). Further evidence that the ’053 Application contemplates only a riderless caddie cart is its description of the golf cart as “moving the golf bag to a location that is convenient for the play by the golfer.” Ex. 1003 ¶ 2. Nowhere does it describe the cart as moving a golfer or caddy. Even Petitioner’s expert agrees that, while the ’053 Application “does describe a caddy cart,” it “does not describe putting the person in the seat.” Ex. 2016, 92:18–93:1; 88:11–15. And to the extent Petitioner’s expert qualifies that testimony by saying that the ’053 Application doesn’t exclude the possibility of a riding cart and doesn’t preclude putting a person in the seat, that qualification is irrelevant to our analysis of anticipation, which depends on what a reference actually discloses, not what possibilities it could have disclosed. Petitioner’s assertion is that each of independent claims 1 and 6 is anticipated by the ’053 Application – Petitioner has not put forth an obviousness ground for these claims based on the ’053 Application.” slip op. at 24
- Strike new argumentNew argument disregardedDecided for patent owner
“Alternatively, Petitioner argues that the ’053 Application’s disclosure of a golfer selecting a destination on an LCD display “inherently teaches” the ability of “overriding a driver command.” Pet. 29–30 (citing Ex. 1003 ¶ 37). We disagree. The ability to select a travel destination on an LCD display is not the same as the ability to “override” or “restrict” a previous command to travel to a certain destination. As argued by Patent Owner, “[t]he selection of a point on a map is just that—a selection to travel to a point on the map, not to take a particular route to that point.” PO Resp. 34 (citing Ex. 2015 ¶¶ 150–152). Nowhere does the ’053 Application say that the selected point on the display will be disregarded if it is within a prohibited area. Thus, we are not persuaded by Petitioner’s argument that the ’053 Application inherently teaches the ability to “override” a driver input. Reply 3, 23–24. In its Petition, however, Petitioner deliberately chose not to rely on the ’053 Application’s manned operating mode in arguing those particular limitations. See Pet. 28–29 (referencing repeatedly “unmanned mode operation” and showing ellipsis “. . .” where “manual traveling mode” would have been discussed in paragraph 34 of the ’053 Application). Petitioner cannot switch positions midstream and raise an entirely new argument in its reply that reasonably could have been made in the petition. See Acceleration Bay, LLC v. Activision Blizzard Inc., 908 F.3d 765, 775 (Fed. Cir. 2018) (“Blizzard, as petitioner, had an opportunity to present this argument in its petition, but chose not to.”). A reply may only respond to arguments raised in the corresponding patent owner response. See 37 C.F.R. § 42.23(b). Indeed, in its patent owner response, Club Car carefully notes that the ’053 Application’s manned operating mode is “not relied upon by Petitioner.” PO Resp. 28. Because Petitioner’s assertion in its reply of the ’053 Application’s manned operating mode constitutes new argument outside the scope of a proper reply, we decline to consider it.” slip op. at 30
Patent outcomesUS 7,480,569 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,480,569
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.