• Toyota Motor Corp. / Aisin Seiki Co., Ltd. v. Intellectual Ventures II LLCAll claims unpatentable
  PTAB · Dec 12, 2018 · IPR2017-01495 · APJ Amanda F Wieker · IPR · Final written decision

  Claims 24–27 are unpatentable as obvious over Zimmerman, Stephan, and Neal, and independently over Gould and Neal.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for petitioner

    “Based upon our review of the ’348 patent and the types of problems and solutions described in the ’348 patent and applied prior art, we determine that an ordinarily skilled artisan would have a bachelor’s degree in mechanical engineering, electrical engineering, chemical engineering, or an equivalent degree, and two years of experience in the design of electric motors and electromagnetic devices, including familiarity with the design, operation, materials, and fabrication of such devices, including their thermal and fluid characteristics.4 Although Patent Owner disputes whether an electrical engineering degree is sufficient educational experience for a POSITA, the cited testimony does not present any persuasive or specific basis upon which to determine that an electrical engineering degree, coupled with the cited experience, would be insufficient, as compared to a mechanical or chemical engineering degree. See Ex. 1132 ¶¶ 30–31 (Dr. Trumper opining that a POSITA may possess an electrical engineering degree); Ex. 2009 ¶ 23 (Dr. Garris disputing only whether Dr. Trumper considered that the claims concern “electrically controlled fluid control devices,” but not discussing whether an electrical engineering degree would be sufficient); Ex. 1136 ¶¶ 26–27 (Dr. Toliyat opining that a POSITA of the ’348 patent may have “a degree in electrical engineering”); Ex. 1138, 22:12– 17, 23:14–21, 24:18–22 (opining that a POSITA could have an electrical engineering degree).” slip op. at 14

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “We have considered Dr. Garris’s competing testimony that “[h]aving a flush connection to the cooling coil 80 is not superior to Zimmerman’s design, and Dr. Trumper identifies no such advantages.” Ex. 2009 ¶ 120; see also PO Resp. 45. However, Dr. Garris does not explain the basis for his opinion. For example, Dr. Garris neither explains why Zimmerman’s existing design is preferable to a flush connection, nor weighs the numerous advantages offered by Dr. Trumper: “easier assembly,” “simpler construction,” “fewer parts,” or “easier manufacturing and assembly.” As such, weighing the competing testimony of both declarants, we find Dr. Trumper to be more persuasive, given the lack of supporting basis for Dr. Garris’s opinion. We disagree with Patent Owner’s argument that the proposed modification would not have been obvious to a POSITA because it would require modifying Zimmerman’s casting mold to include a more complex shape with a conduit-shaped inlet and outlet. PO Resp. 45 (citing Ex. 2009 ¶ 119). This argument ignores the fact that, under Petitioner’s proposed modification, Zimmerman’s resin sheath would be formed of injection-molded thermoplastic—casting molds would not be used. See supra Section II.D.4.iii. As such, this argument is not responsive to the proposed ground of unpatentability. Moreover, the evidence of record suggests that injection molding is well-suited to the formation of complex shapes. Ex. 2005, 34 (explaining that “injection molding makes discrete parts that can have [a] complex and variable cross section”). Finally, we disagree with Patent Owner’s argument that this would not be a simple substitution. PO Resp. 45 (citing Ex. 2009 ¶¶ 121–122). In paragraph 121 of his declaration, Dr. Garris states that “[s]imply because an engineering design or process is known, that does not mean that the design or process is a satisfactory ‘substitute’ for another design or another process. Whether two elements may qualify as substitutes depends on their suitability to address the specific design problem being addressed.” Ex. 2009 ¶ 121. Although this statement may be true, Dr. Garris does not address the facts of Petitioner’s proposed modification. For example, Dr. Garris does not dispute that connecting Zimmerman’s coil 80 to tube fittings 78, 81 with the resin sheath, rather than through Zimmerman’s existing structure, would suitably solve the design problem. Nor does Dr. Garris explain why these would not be simple substitutes. By contrast, Dr. Trumper identifies a similarly formed line connection in the prior art (Ex. 1132 ¶ 85), and explains why such an arrangement would be a desirable and obvious substitute if employed in Zimmerman’s sheath (id.).7 As such, on the record before us, we determine Dr. Garris’s testimony in this regard is conclusory and entitled to little weight. 37 C.F.R. § 42.65(a).” slip op. at 38

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for petitioner

    “In this case, both parties agree that “substantially encapsulating” includes “entirely surrounding or surrounding almost all except for minor areas that might be exposed.” This understanding is consistent with the lexicographic definition and the cited example provided in the ’348 patent. Ex. 1001, 6:7–13, 6:53–58. However, the lexicographic definition also defines this phrase as including the concept of “rigidly fixing together, and behav[ing] as a single component with respect to harmonic oscillation vibration.” Id. at 6:7–13. The cited example similarly reflects this concept. Id. at 6:53–58. Patent Owner argues that this portion of the definition is “not relevant” to the disputed issues in this proceeding. PO Resp. 29 n.1. However, that the parties do not dispute this aspect of the phrase’s meaning does not alter the proper construction of the phrase. Additionally, Patent Owner provides no persuasive reasoning or evidence to support this bare attorney argument. Thus, we construe “substantially encapsulating” in accordance with its lexicographic definition and cited example in the ’348 patent specification as “either entirely surrounding or surrounding almost all except for minor areas that might be exposed, such that the elements are rigidly fixed together and behave as a single component with respect to harmonic oscillation vibration.”” slip op. at 10

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

    “Stephan and Neal, however, explicitly teach that their housing and monolithic body, respectively, may be made from either a thermoset or an injection-molded thermoplastic material. See Ex. 1109 ¶ 41 (utilizing “any injection-molded thermoplastic,” or a “thermosetting synthetic material in a molding process”); Ex. 1104, 5:27–49 (“There are two types of phase change materials that will be most useful in practicing the invention: temperature activated and chemically activated. . . . The most preferred temperature activated phase change materials are thermoplastics. The preferred thermoplastic will become molten at a temperature at which it is injection-moldable. . . . An example of a phase change material that changes phases due to a chemical reaction, and which could be used to form the body 14, is an epoxy. Other suitable phase change materials may be classified as thermosetting materials.”). Thus, the cited prior art explicitly teaches that injection-molded thermoplastic materials are known alternatives to the chemically-activated epoxy resin disclosed by Zimmerman. Additionally, Neal explains that using injection-molded thermoplastic as an encapsulating material allows for appropriate thermal conductivity, as well as hermetic sealing. Ex. 1104, 6:26–46 (examples of thermally conductive thermoplastic resins), 9:5–20 (facilitating heat dissipation), 18:4– 10 (hermetically sealed). These are the same properties sought to be realized by Zimmerman’s epoxy resin sheath. Ex. 1103, 4:33–38 (explaining that the resin sheath “covers the non-insulated parts preventing moisture and liquid from contacting vital metal and moving parts . . . [and] is a liquid protector and heat transfer agent or heat conductive medium combined”); see also Ex. 1132 ¶ 78 (Dr. Trumper opining that a POSITA would have been motivated to use injection molded thermoplastic to form Zimmerman’s body to achieve the goals articulated by Zimmerman).” slip op. at 23

  Patent outcomesUS 7,928,348 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,928,348
• Aisin Seiki Co., Ltd. / Toyota Motor Corp. et al. v. Intellectual Ventures II LLCAll claims unpatentable
  PTAB · Dec 12, 2018 · IPR2017-01538 · APJ Amanda F Wieker · IPR · Final written decision

  Claims 24–27 are unpatentable as obvious over Konishi and over Umeda, Raible, and Neal; Petitioner did not show them unpatentable over Umeda and Stephan or Bramm and Watterson.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for petitioner

    “Based upon our review of the ’348 patent and the types of problems and solutions described in the ’348 patent and applied prior art, we determine that an ordinarily skilled artisan would have a bachelor’s degree in mechanical engineering, electrical engineering, chemical engineering, or an equivalent degree, and two years of experience in the design of electric motors and electromagnetic devices, including familiarity with the design, operation, materials, and fabrication of such devices, including their thermal and fluid characteristics.9 Although Patent Owner disputes whether an electrical engineering degree is sufficient educational experience for a POSITA, the cited testimony does not present any persuasive or specific basis upon which to determine that an electrical engineering degree, coupled with the cited experience, would be insufficient, as compared to a mechanical or chemical engineering degree. See Ex. 1002 ¶¶ 30–32 9 Although the parties present different characterizations of the areas of subject matter familiarity of a POSITA, we determine their content to be substantially the same. Compare Pet. 23, with PO Resp. 31–32. (Dr. Trumper opining that a POSITA may possess an electrical engineering degree); Ex. 2010 ¶¶ 23, 25 (Dr. Garris disputing only whether Dr. Trumper considered that the claims concern “electrically controlled fluid control devices,” but not discussing whether an electrical engineering degree would be sufficient); Ex. 1017 ¶¶ 26–27 (Dr. Toliyat opining that a POSITA of the ’348 patent may have “a degree in electrical engineering”); Ex. 1016, 22:12– 17, 23:14–21, 24:18–22 (Dr. Garris opining that a POSITA could have an electrical engineering degree).” slip op. at 17

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for patent owner

    “In this case, both parties agree that “substantially encapsulating” includes “entirely surrounding or surrounding almost all except for minor areas that might be exposed.” This understanding is consistent with the lexicographic definition and the cited example provided in the ’348 patent. Ex. 1001, 6:7–13, 6:53–58. However, the lexicographic definition also clearly defines this phrase as including the concept of “rigidly fix[ing] together, and behav[ing] as a single component with respect to harmonic oscillation vibration.” Id. at 6:7–13. The cited example similarly reflects this concept. Id. at 6:53–58. Patent Owner argues that this portion of the definition is “not relevant” to the disputed issues in this proceeding. PO Resp. 29 n.1. However, that the parties do not dispute this aspect of the phrase’s meaning does not alter the proper construction of the phrase. Additionally, Patent Owner provides no persuasive reasoning or evidence to support this bare attorney argument. Thus, we construe “substantially encapsulating” in accordance with its lexicographic definition and cited example in the ’348 patent specification as “either entirely surrounding or surrounding almost all except for minor areas that might be exposed, such that the elements are rigidly fixed together and behave as a single component with respect to harmonic oscillation vibration.”” slip op. at 12

  • Expert testimonyPatent owner expert discountedDecided for petitioner

    “We have considered Patent Owner’s argument that stator can 51 and stator molded portion 5 may only be formed from the same material “if that common material is capable of handling the high temperature environment experienced by the stator can.” PO Resp. 36–37; Ex. 2010 ¶ 106. We disagree with this argument, and give little weight to Dr. Garris’s testimony upon which the argument depends, because it conflicts with Konishi’s disclosure. As discussed above, Konishi explains that the stator molded portion 5 and stator can 51 are “formed as a single unit.” Ex. 1003 ¶¶ 16, 38. Konishi does not place any restrictions upon this disclosure, and does not suggest that these components may only be formed as a single unit, if made with a certain material. Additionally, Konishi explains that the heat experienced by stator can 51 is mitigated by the working fluid that flows through heat transfer pipes 1 and flow paths 52, not by the particular material selected for a single unit stator molded portion and stator can. Id. ¶¶ 21–22. Dr. Garris does not identify any supporting basis for his testimony and, as such, we afford it little weight.” slip op. at 24

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

    “obvious to utilize injection-molded thermoplastic to form Konishi’s monolithic body, i.e., stator molded portion 5 and stator can 51. As discussed above, Konishi explicitly states that the stator molded portion and stator core are formed as a “single unit.” Ex. 1003 ¶¶ 16, 38. Moreover, Konishi discloses various types of thermoplastics that may be “used to seal the stator core, etc.” Id. ¶¶ 30–31. Konishi also discloses that injection molding is an exemplary method of sealing the stator core. Id. ¶ 37. Thus, we determine that a POSITA, aware of Konishi’s teachings that injection-molding and thermoplastic materials may be used to seal the stator core, would have found such use obvious. For example, we are persuaded by Dr. Trumper’s testimony that such materials were suitable, as taught by Konishi, and provided well-known benefits, e.g., high heat conductivity. Ex. 1002 ¶¶ 86–87; see also Reply 4 (discussing Dr. Garris’s deposition testimony, admitting that Konishi discloses that injection-molded thermoplastic may be used). We have considered Patent Owner’s argument, and Dr. Garris’s testimony, that “a POSITA would not use a thermoplastic for the stator can 51 because the material would soften or even melt if the temperatures in the vicinity of the windings 33 become too high.” PO Resp. 37 (citing Ex. 2010 ¶¶ 105–106). This argument, however, does not account for Konishi’s express teachings that thermoplastics may be utilized, as discussed above. Moreover, Konishi recognizes that heat is produced by windings 33, and explains that this heat is “removed to the outside by the working fluid that passes through the inside of heat transfer pipes 1.” Ex. 1003 ¶ 21; see also id. ¶ 22 (explaining that heat produced by coil 33 is removed by working fluid passing through flow paths 52). Thus, Konishi’s teachings are inconsistent with Dr. Garris’s testimony that “stator can 51 receives heat from windings 33, which are in close proximity, and it is so far away from the heat transfer pipes 1 and flow paths 52 that it receives little cooling from them compared to the stator molded portion 5.” Ex. 2010 ¶ 111. The record before us lacks sufficient evidence that problems associated with high heat are likely to occur in Konishi, given the heat reduction techniques employed to avoid this very problem. See Ex. 1003 ¶¶ 21–22; see also Ex. 1002 ¶ 87 (Dr. Trumper testifying that thermoplastics exhibit high heat conductivity). Accordingly, we disagree with Patent Owner’s arguments. Instead, for the reasons given, we agree with Petitioner that Konishi renders obvious the “injection molded thermoplastic” recitation of this limitation of claim 24.” slip op. at 27

  Patent outcomesUS 7,928,348 unpatentable
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 7,928,348
• Donghee America, Inc. / Donghee Alabama, LLC v. Plastic Omnium Advanced Innovation And ResearchAll claims unpatentable
  PTAB · Dec 11, 2018 · IPR2017-01605 · APJ Christopher M Kaiser · IPR · Final written decision

  Claims 1–3, 7, 11, 12, and 14 are unpatentable: claims 1–3, 12, and 14 are anticipated by Linden, and claims 7 and 11 are obvious over Linden and Hata.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for patent owner

    “article whose surface has at least one empty or concave part.” Id. at 11 (citing Ex. 1001, 1:66–67; Ex. 1007 ¶ 15). Patent Owner agrees. PO Resp. 15. The ’253 patent states that “[t]he term ‘hollow body’ is understood to mean any article whose surface has at least one empty or concave part.” Ex. 1001, 1:66–67. Where an inventor defines specific terms used to describe an invention, we will give effect to those definitions, as long as they are set out “with reasonable clarity, deliberateness, and precision,” “so as to give one of ordinary skill in the art notice of the change” in meaning. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). Here, the phrase “is understood to mean,” as used in the ’253 patent, signals that the inventor presents a clear, deliberate, and precise definition. Accordingly, we interpret “hollow body” as having the definition given it in the ’253 patent, “any article whose surface has at least one empty or concave part.”” slip op. at 6

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

    “supporting its proposed construction of “incorporate” as “insert.” First, Petitioner argues that the language of the ’253 patent requires a construction of “incorporating” as encompassing “inserting” rather than as limited to “attaching.” Reply 2–4. Both parties argue that the “incorporating” recited in the challenged claims must occur before the mold closes to form the hollow body. PO Resp. 16; Reply 2–3. We agree. Ex. 1001, 6:2–14 (“. . . after said step of incorporating, closing said mould . . .”). Thus, it is important to note the processes that the ’253 patent describes as occurring before, during, and after mold closure. Because “incorporating” must occur before mold closure, the process of “incorporating” may not be limited to any process that the patent describes as occurring during or after mold closure. Petitioner is correct that the ’253 patent describes a process in which a preassembled structure for supporting an accessory “may . . . be fastened by welding to the wall of the hollow body, upon closing the mould,” i.e., during, not before, mold closure. Ex. 1001, 4:23–30. Thus, the language of the ’253 patent does not support construing the term “incorporating” as limited to “attaching.” Petitioner also argues that both parties agreed in the related infringement suit in District Court that the proper construction of “incorporating” under the Phillips standard, used in that forum, was “inserting.” Reply 7–8 (citing Ex. 1010, at Ex. A, 4). Specifically, in that litigation, Patent Owner agreed that the correct construction of “incorporating at least one of an accessory or a duct within the hollow body” was “inserting an accessory or duct into the hollow body.” Ex. 1010, at Ex. A, 4. Here, we apply the broadest-reasonable-interpretation standard. 37 C.F.R. § 42.100(b) (2016). “The broadest reasonable interpretation of a claim term may be the same as or broader than the construction of a term under the Phillips standard. But it cannot be narrower.” Facebook, Inc. v. Pragmatus AV, LLC, 582 F. App’x 864, 869 (Fed. Cir. 2014) (non-precedential). Here, for the term “incorporating,” Patent Owner’s proposed broadest reasonable interpretation (“attaching”) is narrower than the Phillips construction Patent Owner has advanced (“inserting”). Thus, “attaching” cannot be the broadest reasonable interpretation of “incorporating.” Other than Patent Owner’s proposed “attaching” construction, the only construction the parties have proposed either in this case or in the related District Court case is Petitioner’s proposed “inserting” construction. PO Resp. 15–20 (discussing only “inserting” and “attaching” constructions); Reply 2–9 (Petitioner arguing in favor of “inserting”); Ex. 1010, at Ex. A, 4 (both parties proposing “inserting”). The ’253 patent supports such a construction, because it describes at least some of its embodiments as involving only insertion of an object between the sheets that will form the hollow body before mold closure. Ex. 1001, 4:23–30. Accordingly, for the foregoing reasons, we adopt Petitioner’s proposed construction of “incorporating” as “inserting.”” slip op. at 10

  • Expert testimonyPatent owner expert discountedDecided for petitioner

    “Finally, Patent Owner directs us to the testimony of Professor Tim Osswald as support for its view that “incorporate” should mean “attach.” PO Resp. 16 (citing Ex. 2001 ¶¶ 40–42). In relevant part, this testimony states that, “[a]fter reading the specification of the ’253 patent, one of ordinary skill in the art would understand and interpret the word ‘incorporating’ to mean ‘fastening’ or ‘attaching’ so that the accessory or duct becomes part of the hollow body.” Ex. 2001 ¶ 42. Professor Osswald does not cite any evidence in support of his testimony. “[C]onclusory, unsupported assertions by experts as to the definition of a claim term are not useful.” Phillips v. AWH Corp., 415 F.3d 1303, 1318 (Fed. Cir. 2005) (en banc). Accordingly, we give little weight to Professor Osswald’s statement regarding the proper construction of “incorporate.” See In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) (“[T]he [PTAB] is entitled to weigh the declarations and conclude that the lack of factual corroboration warrants discounting the opinions expressed in the declarations . . . .” (citations omitted)).” slip op. at 9

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

    “preform which has at least one opening for that purpose, to be applied to the inside surface of the wall of the expanded hollow body.” Id. at 3:62–4:3. Patent Owner argues that this teaching is insufficient to disclose attaching the surge cup to the wall of the hollow body before the mold closes. PO Resp. 23–24. We agree that Linden does not teach attaching its accessory to the inside wall of the fuel tank before the mold closes around the preform. Instead, in Linden, the mold halves are closed around the preform and the mandrel, and “a suitable blowing agent . . . is introduced under pressure” through the mandrel, causing the preform to expand to press “against the inside wall defining the mold cavity,” and only then is the holding means for the accessory displaced to be brought into contact with the inner wall of the expanded preform, welding the holding means to the wall. Ex. 1003, 7:27–55, 8:11–29, Figs. 1–3. But, as discussed above, we disagree with Patent Owner about the proper construction of “incorporating” in the challenged claims. Claim 1 requires only that an accessory or a duct be “incorporat[ed] . . . within the hollow body” before mold closure occurs, and we construe “incorporating” to mean “inserting,” without requiring “attaching.” Thus, it is unimportant that Linden fails to teach attaching the surge cup to the wall before mold closure. All that is required is that Linden disclose inserting the surge cup into the preform before mold closure, and Linden does disclose this. Id. at 3:62–4:3, 7:27–49, Figs. 1–3. The next question is whether Linden discloses “after said step of incorporating, closing [the mold] in a way which eliminates any interface between said at least one of said accessory or said duct and an external atmosphere outside of the hollow body.” As discussed above, Linden discloses closing the mold halves after placing the additional body within the preform. But Linden discloses that “[a]t its lower end the preform 28 is pressed around the mandrel 14 by virtue of closure of the mold halves 10a and 10b.” Id. at 7:40–42, Fig. 2. Because mandrel 14 is hollow, id. at 6:35–39; 6:46–54, it is not completely clear that closure of Linden’s hollow body around mandrel 14 necessarily eliminates any interface between the additional body inside Linden’s hollow body and the atmosphere outside the hollow body. On the other hand, the closure of the mold described in the ’253 patent occurs with blowing nozzle 6 “positioned between the two parts of the [mold],” and “blowing air is injected under pressure via the nozzle,” which is quite similar to the use of hollow mandrel 14 in Linden. Ex. 1001, 5:50–57. Given the similarity between Linden’s method and the method described in the ’253 patent, we determine that Petitioner has shown by a preponderance of the evidence that Linden discloses the limitation of claim 1 requiring the step of, “after said step of incorporating, closing [the mold] in a way which eliminates any interface between said at least one of said accessory or said duct and an external atmosphere outside of the hollow body.” The final question with respect to claim 1 is whether Linden discloses that the additional body incorporated within the hollow body “is supported by a preassembled structure which comprises at least one device configured to anchor said preassembled structure to an internal wall of the hollow body.” Petitioner argues that Linden’s “[h]olding means 24 is a preassembled structure” in which “leg members 44, 45” have “enlarged foot portion[s] 36.” Pet. 18 (citing Ex. 1003, 9:23–34). We agree. “[H]olding means 24 . . . substantially comprises first and second support or leg members 44, 45,” and “support or leg members 44, 45 are each provided with an enlarged foot portion 36 of substantially plate-like configuration.” Ex. 1003, 9:23–34. Even if Linden’s holding means 24 were not in the aggregate the recited “preassembled structure,” each leg member 44, 45, taken together with its respective foot portion 36 is. Ex. 1001, 4:26–28 (describing a “preassembled structure” as “for example, an arm provided with a tab for fastening to the wall of the hollow body”). Linden’s “foot portions 36 are pressed against the inside surface, which is still hot and thus plastic, . . . of the hollow body . . . thereby to produce a welded joint between the foot portions 36 and the inside surface.” Id. at 9:34–42. Petitioner has shown by a preponderance of the evidence that Linden discloses the limitation of claim 1 requiring that the accessory or duct be “supported by a preassembled structure which comprises at least one device configured to anchor said preassembled structure to an internal wall of the hollow body.”” slip op. at 19

  Patent outcomesUS 7,166,253 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips
  Patents in suitUS 7,166,253
• Pfizer, Inc. / Samsung Bioepis Co., Ltd. v. Genentech, IncSome claims unpatentable
  PTAB · Nov 29, 2018 · IPR2017-01489 · APJ Zhenyu Yang · IPR · Final written decision

  The Board held claims 1, 2, 4, 12, 25, 29–31, 33, 42, 60, 62–64, 66, 67, 69, 71, 73, 74, 78, 80, and 81 unpatentable as obvious; claims 65, 72, 75–77, and 79 were not …

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “Level of Ordinary Skill in the Art In the Decision to Institute, we found the parties’ proposed definitions of a person of ordinary skill for the ’213 patent are similar. Dec. 7 (citing Pet. 16; Prelim. Resp. 17). We adopted Patent Owner’s proposed definition that “[a] person of ordinary skill for the ’213 patent would have had a Ph.D. or equivalent in chemistry, biochemistry, structural biology, or a closely related field, and experience with antibody structural characterization, engineering, and/or biological testing, or an M.D. with practical academic or industrial experience in antibody development.” Id. During trial, Patent Owner points out that Petitioner’s proposed definition “encompasses persons without advanced degrees but who have ‘knowledge gained through 4–5 years of work experience.’” PO Resp. 17. A person of ordinary skill in the art is a hypothetical person who is presumed to know the relevant prior art. Custom Accessories, Inc. v. Jeffrey–Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986). The artisan may gain such knowledge through either formal education or extensive work experience. Thus, we do not discern an appreciable difference in the parties’ respective definitions of the level of ordinary skill in the art, and any perceived distinction does not impact our Decision. Having considered the complete record developed at trial, we see no reason to change our assessment.” slip op. at 9

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed patent owner constructionDecided for patent owner

    “In the Decision to Institute, we agreed with Patent Owner that the ’213 patent expressly defined “consensus human variable domain,” which appears in claims 4, 33, 62, and 69, to mean “a human variable domain which comprises the most frequently occurring amino acid residues at each location in all human immunoglobulins of any particular subclass or subunit structure.” Dec. 9–10; Ex. 1501, 11:32–38. During trial, the parties did not argue otherwise, and we see no reason to change our position as to claim construction. See PO 17–18; Reply 5. We, however, clarify that “all” in the consensus of “all human immunoglobulins” is not in the literal sense. In fact, Patent Owner does not appear to argue otherwise.7 Dr. Wilson, the expert witness for Patent 7 In a parallel proceeding involving the same patent, counsel for Patent Owner acknowledged that the term “all human immunoglobulins” refers to Owner, testified that the consensus sequence of the ’213 patent was “derived from ‘all’ known antibody sequences of any particular subclass or subunit structure.” Ex. 2041 ¶ 210 (emphasis added); see also PO Resp. 52 (arguing the same); Ex. 1698, 59:22–60:1 (Dr. Carter testifying that the consensus sequence, as defined in the ’213 patent, “only describes what was known at that time or it’s only available sequences at that -- at that time”); Ex. 1699, 35:9–16 (Dr. Presta explaining that the consensus sequence of the ’213 patent had the most common residue at every position “for the sequences that were available”). And evidence of record shows that at the priority date of the ’213 patent, the sequences that were listed in Kabat 1987 “were the sequences available.” Ex. 1699, 35:9–20; see also Ex. 2016 ¶ 25 (Kabat 1987 “collected known sequence data of antibodies”); Ex. 1698, 60:13–25 (Dr. Carter explaining the consensus sequence was derived from Kabat 1987, which is what was available at the time of the ’213 patent); Ex. 1699, 27:19–25 (Dr. Presta stating that “Elvin Kabat had taken all known human/mouse/rabbit antibody sequences, published them in a government publication, and that there were human subgroups of sequences within the heavy and the light chains”).” slip op. at 11

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

    “For the purpose of this Decision, we see no need to expressly construe any other claim terms. Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (stating claim terms need only be construed to the extent necessary to resolve the controversy).” slip op. at 13

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

    “When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense. KSR, 550 U.S. at 421. Here, Queen 1989 recognizes the need to substitute framework residues in order to “reduce immunogenicity while retaining high binding affinity.” See Ex. 1534, 3. Thus, even if Queen 1990 is not available as prior art, we find that an ordinary artisan would have identified the candidates for substitution, as recited in claims 12, 42, 60, 71, 73, and 74. Indeed, Dr. Wilson testified that he performed a “good analysis” and identified 19 amino acid positions in the light chain and 19 in the heavy chain, including 66L (recited in claims 12 and 42), 73H (recited in claim 71), 78H (recited in claims 60 and 73), 93H (recited in claim 74). Ex. 1697, 242:4–6; Ex. 2041 ¶ 186, Appendix 1. Claims 12, 66, 67, 71, 73, 74, and 78” slip op. at 22

  Patent outcomesUS 6,407,213 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,407,213
• Celltrion, Inc. v. Genentech, Inc.Some claims unpatentable
  PTAB · Nov 29, 2018 · IPR2017-01373 · APJ Zhenyu Yang · IPR · Final written decision

  Claims 1, 2, 4, 12, 25, 29–31, 33, 42, 60, 62–64, 66, 67, 69, 71, 73, 74, 78, 80, and 81 are unpatentable; claims 65, 72, 75–77, and 79 are not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedOther

    “Level of Ordinary Skill in the Art In the Decision to Institute, we found the parties’ proposed definitions of a person of ordinary skill for the ’213 patent are similar. Dec. 10 (citing Pet. 12; Prelim. Resp. 17). We adopted Patent Owner’s proposed definition that “[a] person of ordinary skill for the ’213 patent would have had a Ph.D. or equivalent in chemistry, biochemistry, structural biology, or a closely related field, and experience with antibody structural characterization, engineering, and/or biological testing, or an M.D. with practical academic or industrial experience in antibody development.” Id. at 10–11. During trial, the parties did not dispute this finding. Having considered the complete record developed at trial, we see no reason to change our assessment. We further note that, in this case, the prior art itself demonstrates the level of skill in the art at the time of the invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown”) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)).” slip op. at 10

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed patent owner constructionDecided for patent owner

    “In the Decision to Institute, we agreed with Patent Owner that the ’213 patent expressly defined “consensus human variable domain,” which appears in claims 4, 33, 62, and 69, to mean “a human variable domain which comprises the most frequently occurring amino acid residues at each location in all human immunoglobulins of any particular subclass or subunit structure.” Dec. 7; Ex. 1001, 11:32–38. During trial, the parties did not argue otherwise, and we see no reason to change our position as to claim construction. We, however, clarify that “all” in the consensus of “all human immunoglobulins” is not in the literal sense. Indeed, counsel for Patent Owner acknowledged that the term refers to “all reasonably available[,] all known at the time of the invention.” Tr. 47:21–48:5. Dr. Wilson, the expert witness for Patent Owner, testified that the consensus sequence of the ’213 patent was “derived from ‘all’ known antibody sequences of any particular subclass or subunit structure.” Ex. 2041 ¶ 207 (emphasis added); see also PO Resp. 52 (arguing the same); Ex. 1140, 59:22–60:1 (Dr. Carter testifying that the consensus sequence, as defined in the ’213 patent, “only describes what was known at that time or it’s only available sequences at that -- at that time”); Ex. 1142, 35:9–16 (Dr. Presta explaining that the consensus sequence of the ’213 patent had the most common residue at every position “for the sequences that were available”). And evidence of record shows that at the priority date of the ’213 patent, the sequences that were listed in Kabat 1987 “were the sequences available.” Ex. 1142, 35:9–20; see also Ex. 2016 ¶ 25 (Kabat 1987 “collected known sequence data of antibodies”); Ex. 1140, 60:13–25 (Dr. Carter explaining the consensus sequence was derived from Kabat 1987, which is what was available at the time of the ’213 patent); Ex. 1142, 27:19–25 (Dr. Presta stating that “Elvin Kabat had taken all known human/mouse/rabbit antibody sequences, published them in a government publication, and that there were human subgroups of sequences within the heavy and the light chains”). Thus, although we reiterate our previous construction of “consensus” slip op. at 11

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

    “For the purpose of this Decision, we see no need to expressly construe any other claim terms. Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (stating claim terms need only be construed to the extent necessary to resolve the controversy).” slip op. at 13

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

    “combination of Queen 1989 and the PDB database, together with the knowledge of an ordinary artisan, teaches or suggests each limitation of claims 12, 63, 66, 67, 71, 73, 74, and 78, and that a person of ordinary skill in the art would have had a reason to combine the references, and would have had a reasonable expectation of producing humanized antibodies with the substitutions and properties recited in those claims. We further determine that evidence of secondary considerations is not sufficient to outweigh the strong evidence of obviousness associated with the other Graham factors. As a result, we conclude that Petitioner has established by a preponderance of the evidence that claims 12, 63, 66, 67, 71, 73, 74, and 78 are unpatentable over Queen 1989 and the PDB database.” slip op. at 37

  Patent outcomesUS 6,407,213 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,407,213
• Samsung Electronics Co., Ltd. v. Promos Technologies, Inc.All claims unpatentable
  PTAB · Nov 28, 2018 · IPR2017-01416 · APJ Kevin F Turner · IPR · Final written decision

  Claims 1–3, 14–16, 22, and 28–36 are unpatentable: claim 22 is anticipated by Ito; the other claims are obvious over the stated combinations.

  RulingsFinal written decision

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

    “We agree with Petitioner. Although Patent Owner cites to the testimony of its declarant, Mr. Brahmbhatt, we do not find persuasive his testimony that the “claim element requiring the bias voltage to be ‘arbitrarily close to the ground voltage’ is not met by the Ito design which unintentionally, uncontrollably, and undesirably (per Ito) rises above – VTHP.” The intent, control, and desirability of the detector’s function in Ito is irrelevant to anticipation. See State Contracting & Eng’ g Corp. v. Condotte America, Inc., 346 F.3d 1057, 1068 (Fed. Cir. 2003) (A reference may be directed to an entirely different problem than the one addressed by the inventor and still be anticipatory); Celeritas Technologies Ltd. v. Rockwell Intern. Corp., 150 F.3d 1354, 1361 (Fed. Cir. 1998) (Prior art that teaches away from the claimed invention can anticipate the claims based on what it discloses). Based on the disclosed function of the detector circuit in Ito, we determine that it meets the limitations recited in claim 22.” slip op. at 17

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

    “We agree with Petitioner. We determine that Petitioner, in the Petition, explained that one of ordinary skill in the art would have understood that the trip point would be substantially insensitive to variations in VDD based on the parameters set in Baker. See Pet. 31–32. The Petitioner and Dr. Baker provide a reasoned explanation for why the subject limitation, i.e., a “trip point which is substantially insensitive to power supply variations,” is disclosed and suggested by Baker, and why one would have been motivated to configure the inverter in Park to have a stable trip point, per Baker. Id. Further, we reaffirm our determination that one of ordinary skill in the art would have been motivated to configure Park’s circuit to have its trip point be substantially insensitive to power supply voltage variations, in keeping with Park’s overall objective of “constantly maintaining a back bias voltage with respect to the variation of an external voltage.” Dec. on Inst. 21–22 (citing Pet. 32; Ex. 1007, 3:45–57; Ex. 1002 ¶ 110).” slip op. at 29

  • Skill levelSkill level board ownOther

    “bachelor’s degree in electrical engineering or a similar field, and at least two to three years of experience in integrated circuit design.” Pet. 5–6 (citing Ex. 1002 ¶ 20). Patent Owner does not address the level of ordinary skill in its Patent Owner Response, but its declarant, Mr. Brahmbhatt, indicates that he has adopted and applied Petitioner’s level of ordinary skill in the art for purposes of his testimony. See Ex. 2001 ¶ 23. Based on the current record, we are concerned that Petitioner’s articulation contains no upper bounds, i.e., “at least a bachelor’s degree,” such that the level of ordinary skill proposed by Petitioner is not sufficiently specific. As such, we adopt the definition provided by Petitioner with minor variations: “a person having ordinary skill in the relevant art at the time of invention is a person with a Bachelor’s of Science degree in electrical engineering or a similar field, and two to three years of experience in integrated circuit design.” Additionally, we determine that the level of ordinary skill in the art is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 12

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

    “September 24, 2018, i.e., during the pendency of the instituted proceeding” and contends that the challenged claims should be construed under the standard set forth in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). Pet. 10. We agree and determine that the instant patent expired on that date. Under the Phillips standard, claim terms are given their ordinary and customary meanings, as would be understood by a person of ordinary skill in the art, having taken into consideration the language of the claims, the specification, and the prosecution history of record. In the Decision on Institution, we acknowledged that Petitioner did not propose an express construction for any claim terms. Dec. on Inst. 12 (citing Pet. 11). In its Response, Patent Owner likewise does not propose explicit claim constructions for any claim terms, and its declarant, Mr. Brahmbhatt, indicates that he has assumed “that the claim terms have their ordinary customary meaning and that there are no specific constructions that I am to apply.” See PO Resp.; Ex. 2001 ¶ 24. As such, we determine that no claim terms require express construction and we apply the ordinary and customary meanings for all claim terms, as would have been understood by a person of ordinary skill in the art. slip op. at 12

  Patent outcomesUS 6,172,554 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 6,172,554
• Nautilus, Inc. v. Icon Health & Fitness Inc.Some claims unpatentable
  PTAB · Nov 28, 2018 · IPR2017-01363 · APJ Timothy J Goodson · IPR · Final written decision

  Claims 1–5 and 11–13 are unpatentable as obvious; claims 6–10 and 14–19 were not shown unpatentable because Six-Pak was not established as prior art.

  RulingsFinal written decision

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable

    “Petitioner’s evidence to be deficient. What we find lacking is evidence that persons interested in exercise equipment knew of the TuffStuff website or would have been able to locate it through reasonable diligence. Even assuming that the two archived webpages captured by the Wayback Machine show that Six-Pak was available for anyone to view or download from the TuffStuff website,9 “‘[p]ublic accessibility’ requires more than technical accessibility.” Acceleration Bay, LLC v. Activision Blizzard Inc., __ F.3d __, 2018 WL 5795976, at *5 (Fed. Cir. Nov. 6, 2018) (affirming Board’s determination that a reference uploaded to a university website in the prior art period was not a printed publication when it was not meaningfully indexed to allow an ordinarily skilled person to locate the reference using the website’s search function). Petitioner has presented no evidence, in the Butler affidavit or elsewhere in the record, that the TuffStuff website could have been located through a reasonably diligent internet search.” slip op. at 16

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

    “2. Claims 2–5 Petitioner contends that claims 2–5 would have been obvious over Sleamaker in view of Hanoun. Pet. 26–31. Petitioner argues that a skilled artisan would have been motivated to combine Sleamaker with Hanoun as proposed in its challenges to these claims because by 2013, it was known that exercise machines should track user performance and the market demanded such features. Id. at 19 (citing Ex. 1007 ¶¶ 44–50, 117–118). Sleamaker discloses electronics to track user performance (see Ex. 1002, 5:46–55), but according to Petitioner, “because the direction of its invention was not focused on the details of such electronics, a POSITA would have looked to Hanoun for a complimentary and more comprehensive system to measure performance in a flywheel-based exercise system.” Pet. 19 (citing Ex. 1007 ¶¶ 117–118). We find that Petitioner’s stated reasoning for combining Sleamaker and Hanoun is supported by rational underpinnings.” slip op. at 25

  • Skill levelSkill level petitioner adoptedOther

    “In our Decision on Institution, we adopted Petitioner’s proposal that an ordinarily skilled artisan at the time of the invention of the ’047 patent “would have had at least a bachelor’s degree in mechanical engineering or biomechanics and two years’ experience designing exercise equipment, or alternatively, an equivalent level of education and experience in product development and engineering regarding commercial fitness products.” Dec. on Inst. 7 (quoting Pet. 7). The parties’ post-institution briefing does not present any argument relating to the definition of the level of ordinary skill in the art. We maintain the definition of the level of ordinary skill in the art set forth in our Decision on Institution for the reasons stated therein. See Dec. on Inst. 7.” slip op. at 9

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

    “II. CLAIM CONSTRUCTION Under the version of our rules applicable to this inter partes review,7 claim terms in an unexpired patent are given their broadest reasonable construction in light of the specification. 37 C.F.R. § 42.100(b) (2016); Cuozzo Speed Techs. LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016) (upholding the use of the broadest reasonable interpretation standard). In our Decision on Institution, we determined that resolution of the disputed issues at that stage did not require an express interpretation of any claim term. See Dec. on Inst. 6 (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). The parties’ post-institution briefing does not present any claim construction arguments or issues. We maintain our determination that no express claim construction is necessary to resolve the disputed issues.” slip op. at 8

  Patent outcomesUS 9,403,047 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Graham
  Patents in suitUS 9,403,047
• Donner Technology, LLC v. Pro Stage Gear, LLCRehearing granted
  PTAB · Nov 9, 2018 · IPR2018-00708 · APJ John A Hudalla · IPR · Rehearing

  The Board granted rehearing and instituted review of claims 9–13 and 22–30 on all petition grounds, finding a reasonable likelihood of prevailing on the asserted obviousness challenges.

  RulingsRehearing decision

  • RehearingRehearing, grantedGranted

    “for an abuse of discretion. See 37 C.F.R. § 42.71(c). The party requesting rehearing has the burden of showing the decision should be modified, which” slip op. at 2

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

    “SCC-700 and Mullen teaches all the limitations of claim 9. Pet. 35–54. Petitioner has also provided a reason with a rational underpinning for combining Mullen with SCC-700. Id. at 43–44. Thus, Petitioner has established a reasonable likelihood that it would prevail in showing that the subject matter of claim 9 would have been obvious over the combination of SCC-700 and Mullen.” slip op. at 10

  • Obviousness (§103) › Analogous artAnalogous artDecided for petitioner

    “Institution, our determination that Mullen is nonanalogous art was based on defining the relevant problem as “guitar effects pedal mounting.” Dec. 20. Notwithstanding, Petitioner does present some evidence that a problem addressed by Mullen—namely, providing wiring channel space under shelf parts—is reasonably pertinent to a problem recognized in the ’023 patent— namely, providing an area for cable routing and placement in a pedal effects mounting board.” slip op. at 3

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

    “For purposes of this Decision, we determine that SCC-700 qualifies as prior art under § 102(b) based on Petitioner’s evidence of public dissemination of SCC-700 during the 1980s. See Pet. 20–23. The public dissemination of SCC-700 occurred more than one year before the earliest possible effective filing date of the challenged claims, which is September 7, 1999. Ex. 1001, [60].” slip op. at 7

  § 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR
  Patents in suitUS 6,459,023
• Microsoft Corporation v. Ipa Technologies Inc.Rehearing denied
  PTAB · Nov 8, 2018 · IPR2018-00793 · APJ Bart A Gerstenblith · IPR · Rehearing

  The Board denied Patent Owner’s rehearing requests, finding no abuse of discretion in timely issuing the institution decisions before resolving the § 315(b) time-bar contention.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “III. STANDARD OF REVIEW Pursuant to 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” 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). The request must identify, specifically, all matters the party believes the Board misapprehended or overlooked, and the place where each matter was addressed previously in a motion, opposition, or reply. See 37 C.F.R. § 42.71(d).” slip op. at 5

  • PTAB / AIA Trials › §315(b) time barNot reached

    “telephone conference call with the Board, “put at issue” the question whether an inter partes review may not be instituted under 35 U.S.C. § 315(b) because Petitioner, a real party in interest, or a privy of Petitioner was served with a complaint alleging infringement of the ’021 patent more than one year prior to the filing of the Petition. See, e.g., Req. Reh’g 10 (contending that Patent Owner put § 315(b) at issue). Patent Owner has not. During the September 17th conference call, Patent Owner mentioned several documents, including indemnification policies, license agreements, and correspondence as materials that Patent Owner is either aware of or seeking from Petitioner. See, e.g., Ex. 2001, 6:24–8:3 (discussing these documents), 10:19–11:14 (same). Neither party, however, has placed those documents in evidence, nor has Patent Owner advanced its argument regarding § 315(b) in any briefing. See World Inc. v. Bungie, Inc., 903 F.3d 1237, 1244 (Fed. Cir. 2018) (“We agree, however, that a patent owner must produce some evidence that tends to show that a particular third party should be named a real party in interest. A mere assertion that a third party is an unnamed real party in interest, without any support for that assertion, is insufficient to put the issue into dispute.” (footnote omitted)). Thus, at this time, Patent Owner has not “put at issue” whether Petitioner is barred under § 315(b). Additionally, Patent Owner’s Rehearing Request fails to identify where it previously raised the question of § 315(b) in a motion, opposition, or reply. See 37 C.F.R. § 42.71(d). As explained above, Patent Owner has not. Thus, we could not have misapprehended or overlooked an issue not raised previously.” slip op. at 6

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

    “V. CONCLUSION For the foregoing reasons, Patent Owner has not shown that we abused our discretion by timely issuing institution decisions in the five cases captioned above. Nothing in this Decision precludes Patent Owner from advancing its § 315(b) contention in its post-institution submissions.” slip op. at 7

  None
  Patents in suitUS 6,742,021
• Microsoft Corporation v. Ipa Technologies Inc.Rehearing denied
  PTAB · Nov 8, 2018 · IPR2018-00791 · APJ Bart A Gerstenblith · IPR · Rehearing

  The Board denied Patent Owner’s rehearing requests, finding no abuse of discretion in issuing the institution decisions before resolving the § 315(b) time-bar contention.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “deadline set forth in 35 U.S.C. § 314(b). Req. Reh’g 10 n.2. Patent Owner contends that “[t]he deadline under 35 U.S.C. § 314(b) should not be an obstacle because Congress has recognized that there should be some flexibility with respect to deadlines.” Id. (citing 35 U.S.C. § 316(a)(11)). Section 316(a)(11) provides up to six additional months to issue a final written decision when good cause is shown. Section 316(a)(11) does not, however, address extending the three-month time period after a preliminary response is filed to issue an institution decision. That three-month time period is governed by § 314(b), and Patent Owner fails to offer any support for its argument that we can extend the deadline under § 314(b). Accordingly, we are unaware of any statutory authority by which we may extend the deadline to determine whether to institute an inter partes review under § 314(b), even with a showing of good cause.” slip op. at 6

  • PTAB / AIA Trials › §315(b) time barNot reached

    “than one year prior to the filing of the Petition. See, e.g., Req. Reh’g 10 (contending that Patent Owner put § 315(b) at issue). Patent Owner has not. During the September 17th conference call, Patent Owner mentioned several documents, including indemnification policies, license agreements, and correspondence as materials that Patent Owner is either aware of or seeking from Petitioner. See, e.g., Ex. 2001, 6:24–8:3 (discussing these documents), 10:19–11:14 (same). Neither party, however, has placed those documents in evidence, nor has Patent Owner advanced its argument regarding § 315(b) in any briefing. See World Inc. v. Bungie, Inc., 903 F.3d 1237, 1244 (Fed. Cir. 2018) (“We agree, however, that a patent owner must produce some evidence that tends to show that a particular third party should be named a real party in interest. A mere assertion that a third party is an unnamed real party in interest, without any support for that assertion, is insufficient to put the issue into dispute.” (footnote omitted)). Thus, at this time, Patent Owner has not “put at issue” whether Petitioner is barred under § 315(b). Additionally, Patent Owner’s Rehearing Request fails to identify where it previously raised the question of § 315(b) in a motion, opposition, or reply. See 37 C.F.R. § 42.71(d). As explained above, Patent Owner has not. Thus, we could not have misapprehended or overlooked an issue not raised previously.” slip op. at 7

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

    “Owner”) filed a Request for Rehearing and Reconsideration (“Rehearing Request” or “Req. Reh’g”)2 of our Decision instituting inter partes review (“Decision” or “Dec.”).3 In instituting the inter partes reviews, we determined that Petitioner established a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims of each challenged patent. See, e.g., Dec. 2, 22.” slip op. at 2

  None
  Patents in suitUS 6,742,021

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.