• Groupon, Inc. v. Blue Calypso, LLCAll claims unpatentable
  PTAB · Dec 17, 2014 · CBM2013-00034 · APJ Barbara A Benoit · CBM · Final written decision

  Claims 1–5 are unpatentable as anticipated by Paul; the Board rejected the Ratsimor anticipation and obviousness grounds because Ratsimor was not proven publicly accessible.

  RulingsFinal written decision

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

    “1. “subsidy” Independent claim 1 recites “recognizing a subsidy, according to the subsidy program, for the subscriber.” The ’670 patent does not set forth a special definition for “subsidy.” Accordingly, we look to the ordinary meaning of the term “subsidy”—financial assistance given by one to another.5 The ’670 patent’s use of “subsidy” is consistent with its ordinary meaning. Specifically, the ’670 patent describes an advertiser setting up a subsidy program to subsidize communication fees, offer product discounts, generate and accumulate “reward points” for subscribers, or mitigate or defer other expenses of the subscriber. Ex. 1001, col. 3, ll. 39-45 (referring to Fig. 2). These examples are financial in nature. Product discounts reduce the monetary cost of a financial transaction, reward points are a form of currency, and mitigating or deferring expenses reduces the monetary cost of a financial transaction or postpones the monetary cost of a financial transaction, respectively. Also, the ’670 describes, as part of a subscriber setup process, an intermediary presenting, to a subscriber for selection, “subsidy programs available, including the criteria for continued subsidy and levels of subsidy.” Ex. 1001, col. 4, ll. 59-65 (referring to Fig. 3); see id. at col. 4, ll. 16-17. In an example of a bi-directional endorsement process, the ’670 patent further describes an advertiser calculating the amount to” slip op. at 7

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner

    “We agree the preamble is limiting. In general, a preamble is construed as a limitation “if it recites essential structure or steps, or if it is ‘necessary to give life, meaning, and vitality’ to the claim.” Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (quoting Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999)). When the limitations in the body of the claim “rely upon and derive antecedent basis from the preamble, then the preamble may act as a necessary component of the claimed invention.” Eaton Corp. v. Rockwell Int'l Corp., 323 F.3d 1332, 1339 (Fed. Cir. 2003). Notably, the preamble of independent claim 1 requires “a source communication device possessed by a subscriber,” “a destination communication device possessed by a recipient,” and “an advertisement.” The body of claim 1 recites “the source communication device,” “the subscriber,” “the destination communication device,” and “the 17 advertisement,” all of which rely on and derive antecedent basis from the preamble of claim 1. Accordingly, we conclude that the preamble of independent claim 1 is entitled to patentable weight.” slip op. at 17

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

    “Having reviewed the parties’ arguments and supporting evidence, we do not find sufficient evidence that the Ratsimor paper was accessible publicly and, therefore, we conclude the Ratsimor paper is not a printed publication under 35 U.S.C. § 102(b). Section 102 states: “A person shall be entitled to a patent unless . . . (b) the invention was . . . described in a printed publication . . . more than one year prior to the date of the application for patent . . . .” 35 U.S.C. § 102(b) (2011). “The statutory phrase ‘printed publication’ has been interpreted to give effect to ongoing advances in the technologies of data storage, retrieval, and dissemination.” In re Hall, 781 F.2d 897, 898 (Fed. Cir. 1986). As such, a printed publication under 35 U.S.C. § 102(b) may be an electronic publication, such as the Ratsimor paper is purported to be. See In re Wyer, 655 F.2d 221, 226 (CCPA 1981) (holding that an electronic publication is considered to be a “printed publication” “upon a satisfactory showing that such document has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art, exercising reasonable diligence, can locate it and recognize and comprehend therefrom the essentials of the claimed invention without need of further research or experimentation”).” slip op. at 22

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

    “as recited in the claim, must be found in a single prior art reference. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008); Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001). To anticipate, a prior art reference must disclose more than “multiple, distinct teachings that the artisan might somehow combine to achieve the claimed invention.” Net MoneyIN, 545 F.3d at 1371; see also In re Arkley, 455 F.2d 586, 587 (CCPA 1972) (“The [prior art] reference must clearly and unequivocally disclose the claimed [invention] or direct those skilled in the art to the [invention] without any need for picking, choosing, and combining various disclosures not directly related to each other by the teachings of the cited reference.”). Although the elements must be arranged 30 or combined in the same way as in the claim, “the reference need not satisfy an ipsissimis verbis test,” i.e., identity of terminology is not required. In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009); In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). Moreover, the prior art reference is read from the perspective of one with ordinary skill in the art. In re Graves, 69 F.3d 1147, 1152 (Fed. Cir. 1995) (“A reference anticipates a claim if it discloses the claimed invention such that a skilled artisan could take its teachings in combination with his own knowledge of the particular art and be in possession of the invention.”); In re Preda, 401 F.2d 825, 826 (CCPA 1968) (“[I]t is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom.”).” slip op. at 30

  Patent outcomesUS 8,457,670 unpatentable
  Claim construction§ 102 anticipationcites Phillips
  Patents in suitUS 8,457,670
• Cyanotech Corporation v. The Board Of Trustees Of The University Of IllinoisSome claims unpatentable
  PTAB · Dec 12, 2014 · IPR2013-00404 · APJ Sheridan K Snedden · IPR · Final written decision

  Claims 1–14 and 26 are unpatentable over Grangaud and/or Grangaud with Dowling; claims 15, 21, and 22 were not shown unpatentable.

  RulingsFinal written decision

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

    “treating damage caused by injury or disease (Resp. 14–15), however, the specification does not contain any indication that the patentee intended to act as his own lexicographer clearly defining “disease” and “damage” in the same manner. For example, the specification does not clearly convey the patentee’s intent to appoint a special meaning to the phrase “retinal damage or retinal disease.” We must determine, therefore, the ordinary meaning of “disease” and “damage” as used in these claims to one of skill in the art in light of the specification and prosecution history. In re Paulsen, 30 F.3d at 1480. In this regard, the term “damage,” as used in the specification, refers to damage resulting from injury or disease. Ex. 1001, 1:14–19. The specification does not equate damage and disease, but provides that damage may be caused by disease. Id. The meaning of the term disease, however, refers to conditions that may cause damage (such as degenerative eye disease), and are treatable themselves. Id. at 15:36–40. That is, the underlying cause of the damage is treatable, not just the damage alone. The University does not direct our attention to anything in the specification or prosecution that would clearly alter the ordinary meaning of “disease” and “damage.” Resp. 14–16. In view of the above, we do not construe “retinal damage” and “retinal disease” as a single concept. The evidence of record does not support a finding that the patentee acted as his own lexicographer by clearly defining the claim terms “damage” and “disease” in the same manner. In our Decision to Institute, we adopted the dictionary definition of “disease” and construed the term as “[a] morbid entity ordinarily characterized by two or more of the following criteria: recognized etiologic agent(s), identifiable group of signs and symptoms, or consistent anatomic alterations.” Dec. 8–9; see, Pet. ’401 (citing Ex. 1040). We adopted the dictionary definition of “damage” and construed the term as “[h]arm, diminution, or destruction of an organ, body part, system, or function.” Id. We maintain these constructions for “disease” and “damage” as they are consistent with the use of these terms in the Specification. “Retinal damage” refers to damage to the retina and “retinal disease” refers to disease of the retina. The phrase “retinal damage or retinal disease” refers to either retinal damage or retinal disease.” slip op. at 7

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureUnpatentableNot shown unpatentableMixed

    “To establish inherent disclosure, the evidence must show that a feature necessarily is described in the reference, and that it would be recognized by persons of ordinary skill. In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999); cf. EMI Grp. N. Am., Inc. v. Cypress Semiconductor Corp., 268 F.3d 1342, 1351 (Fed. Cir. 2001) (“Theoretical mechanisms or rules of natural law that are recited in a claim, that themselves are not patentable, however, do not need to be recognized by one of ordinary skill in the art for a finding of inherency.”). The mere fact that a certain thing may result from a given set of circumstances is not sufficient to establish inherency. In re Rijckaert, 9 F.3d 1531, 1534 (Fed. Cir. 1993). Inherency may not be established by probabilities or possibilities. In re Oelrich, 666 F.2d 578, 581 (CCPA 1981).” slip op. at 10

  • Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner

    “As to secondary considerations, we note that factual inquiries for an obviousness determination include secondary considerations based on evaluation and crediting of objective evidence of nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17 (1966). Notwithstanding what the teachings of the prior art would have suggested to one with ordinary skill in the art at the time of the University’s invention, the totality of the evidence submitted, including objective evidence of nonobviousness, may lead to a conclusion that the claimed invention would not have been obvious to one with ordinary skill in the art. In re Piasecki, 745 F.2d 1468, 1471-1472 (Fed. Cir. 1984). However, such a conclusion requires the finding of a nexus to establish that the evidence relied upon traces its basis to a novel element in the claim and not to something in the prior art. Institut Pasteur & Universite Pierre Et Marie Curie v. Focarino, 738 F.3d 1337, 1347 (Fed. Cir. 2013). All types of objective evidence of nonobviousness must be shown to have nexus. In re GPAC Inc., 57 F.3d at 1580 (nexus generally); In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996) (commercial success); In re Antor Media Corp., 689 F.3d 1282, 1293 (Fed. Cir. 2012) (licensing); Wm. Wrigley Jr. Co. v. Cadbury Adams USA LLC, 683 F.3d 1356, 1364 (Fed. Cir. 2012) (copying); Rambus Inc. v. Rea, 731 F.3d 1248, 1256 (Fed. Cir. 2013) (long-felt need); and In re Kao, 639 F.3d 1057, 1069 (Fed. Cir. 2011) (unexpected results). As discussed above, we conclude that claims 1, 3, and 8–12 are anticipated by Grangaud, as evidenced by Dowling. Because anticipation is the epitome of obviousness, a disclosure that anticipates under 35 U.S.C. § 102 also renders the claim unpatentable under 35 U.S.C. § 103. See In re Fracalossi, 681 F.2d 792, 794 (CCPA 1982) (“[E]vidence establishing lack of all novelty in the claimed invention necessarily evidences obviousness.”); In re Meyer, 599 F.2d 1026, 1031 (CCPA 1979); In re Pearson, 494 F.2d 1399, 1402 (CCPA 1974). Here, Cyanotech presents substantially the same evidence for both their anticipation and obviousness challenges of claims 1, 3, 8–14, and 26. As such, and for the same reasons set forth in our anticipation analysis above, we hold that claims 1, 3, 8–14, and 26 are rendered obvious by Grangaud, alone or in combination with Dowling. Because we have determined that claims 1, 3, and 8–12 lack a novel feature with which to establish a nexus with secondary considerations, Cyanotech, as a matter of law, cannot establish a nexus. In re Kao, 639 F.3d at 1068 (Objective evidence that results from something that is not “both claimed and novel in the claim” lacks a nexus to the merits of the invention.). As to claims 2 and 4–7, the University has not directed any arguments to these claims specifically and has not made any attempts to establish a nexus between the presented objective evidence of nonobviousness and these claims. Thus, we maintain our unopposed determination that the specific doses and routes of administration recited in these claims are predictable variations within the technical grasp of a person of ordinary skill in the art, and are not persuaded by the objective evidence that claims 2 and 4–7 are nonobvious.” slip op. at 23

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableNot shown unpatentableMixed

    “of all novelty in the claimed invention necessarily evidences obviousness.”); In re Meyer, 599 F.2d 1026, 1031 (CCPA 1979); In re Pearson, 494 F.2d 1399, 1402 (CCPA 1974). Here, Cyanotech presents substantially the same evidence for both their anticipation and obviousness challenges of claims 1, 3, 8–14, and 26. As such, and for the same reasons set forth in our anticipation analysis above, we hold that claims 1, 3, 8–14, and 26 are rendered obvious by Grangaud, alone or in combination with Dowling. Because we have determined that claims 1, 3, and 8–12 lack a novel feature with which to establish a nexus with secondary considerations, Cyanotech, as a matter of law, cannot establish a nexus. In re Kao, 639 F.3d at 1068 (Objective evidence that results from something that is not “both claimed and novel in the claim” lacks a nexus to the merits of the invention.). As to claims 2 and 4–7, the University has not directed any arguments to these claims specifically and has not made any attempts to establish a nexus between the presented objective evidence of nonobviousness and these claims. Thus, we maintain our unopposed determination that the specific doses and routes of administration recited in these claims are predictable variations within the technical grasp of a person of ordinary skill in the art, and are not persuaded by the objective evidence that claims 2 and 4–7 are nonobvious. In view of the above, we conclude that Cyanotech has demonstrated the unpatentability of claims 1–14 and 26 by a preponderance of the evidence. (2) Claim 15 Claim 15 depends from claim 14. As discussed above, we conclude that the preponderance of evidence of record demonstrates that neuronal damage to a retina is inherent to the condition of vitamin A deficiency-induced xerophthalmia. The question before us with regard to claim 15, however, is whether” slip op. at 24

  Patent outcomesUS 5,527,533 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 5,527,533
• Cyanotech Corporation v. The Board Of Trustees Of The University Of IllinoisSome claims unpatentable
  PTAB · Dec 12, 2014 · IPR2013-00401 · APJ Sheridan K Snedden · IPR · Final written decision

  Claims 1–14 and 26 are unpatentable as anticipated by Grangaud and obvious over Grangaud alone or with Dowling; claims 15, 21, and 22 were not shown unpatentable.

  RulingsFinal written decision

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

    “treating damage caused by injury or disease (Resp. 14–15), however, the specification does not contain any indication that the patentee intended to act as his own lexicographer clearly defining “disease” and “damage” in the same manner. For example, the specification does not clearly convey the patentee’s intent to appoint a special meaning to the phrase “retinal damage or retinal disease.” We must determine, therefore, the ordinary meaning of “disease” and “damage” as used in these claims to one of skill in the art in light of the specification and prosecution history. In re Paulsen, 30 F.3d at 1480. In this regard, the term “damage,” as used in the specification, refers to damage resulting from injury or disease. Ex. 1001, 1:14–19. The specification does not equate damage and disease, but provides that damage may be caused by disease. Id. The meaning of the term disease, however, refers to conditions that may cause damage (such as degenerative eye disease), and are treatable themselves. Id. at 15:36–40. That is, the underlying cause of the damage is treatable, not just the damage alone. The University does not direct our attention to anything in the specification or prosecution that would clearly alter the ordinary meaning of “disease” and “damage.” Resp. 14–16. In view of the above, we do not construe “retinal damage” and “retinal disease” as a single concept. The evidence of record does not support a finding that the patentee acted as his own lexicographer by clearly defining the claim terms “damage” and “disease” in the same manner. In our Decision to Institute, we adopted the dictionary definition of “disease” and construed the term as “[a] morbid entity ordinarily characterized by two or more of the following criteria: recognized etiologic agent(s), identifiable group of signs and symptoms, or consistent anatomic alterations.” Dec. 8–9; see, Pet. ’401 (citing Ex. 1040). We adopted the dictionary definition of “damage” and construed the term as “[h]arm, diminution, or destruction of an organ, body part, system, or function.” Id. We maintain these constructions for “disease” and “damage” as they are consistent with the use of these terms in the Specification. “Retinal damage” refers to damage to the retina and “retinal disease” refers to disease of the retina. The phrase “retinal damage or retinal disease” refers to either retinal damage or retinal disease.” slip op. at 7

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed

    “In view of the above, we conclude that the preponderance of the evidence presented by Cyanotech demonstrates that retinal damage is inherent to the condition of vitamin A deficiency-induced xerophthalmia. Grangaud’s animals were kept on a vitamin A-deficient diet for about 2 months (Ex. 1002, 43), and Dowling supports a conclusion that animals kept on such a diet would have suffered retinal damage. Ex. 1026, 88–89. Dowling also supports a finding that restoration of vitamin A to the diet could reverse the damage caused by a vitamin A deficiency. Id. at 94–96. Grangaud did not administer vitamin A itself, but rather administered astaxanthin. Astaxanthin, however, is capable of being converted to vitamin A in rats, which then would be available to correct the retinal damage caused by a vitamin A-deficient diet, as well as treat ocular lesions resulting from xerophthalmia, thereby improving the vision of the rats. Pet., 14-16; Ex. 1002, 44; Ex. 1033 ¶¶ 42–43 and 51; Ex. 1045, 60 and 160. As such, the inherent action of astaxanthin would have resulted in improved vision in Grangaud’s animal model.” slip op. at 13

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureInherency foundInherency not foundMixed

    “In view of the above, we conclude that the preponderance of the evidence presented by Cyanotech demonstrates that retinal damage is inherent to the condition of vitamin A deficiency-induced xerophthalmia. Grangaud’s animals were kept on a vitamin A-deficient diet for about 2 months (Ex. 1002, 43), and Dowling supports a conclusion that animals kept on such a diet would have suffered retinal damage. Ex. 1026, 88–89. Dowling also supports a finding that restoration of vitamin A to the diet could reverse the damage caused by a vitamin A deficiency. Id. at 94–96. Grangaud did not administer vitamin A itself, but rather administered astaxanthin. Astaxanthin, however, is capable of being converted to vitamin A in rats, which then would be available to correct the retinal damage caused by a vitamin A-deficient diet, as well as treat ocular lesions resulting from xerophthalmia, thereby improving the vision of the rats. Pet., 14-16; Ex. 1002, 44; Ex. 1033 ¶¶ 42–43 and 51; Ex. 1045, 60 and 160. As such, the inherent action of astaxanthin would have resulted in improved vision in Grangaud’s animal model.” slip op. at 13

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed

    “of all novelty in the claimed invention necessarily evidences obviousness.”); In re Meyer, 599 F.2d 1026, 1031 (CCPA 1979); In re Pearson, 494 F.2d 1399, 1402 (CCPA 1974). Here, Cyanotech presents substantially the same evidence for both their anticipation and obviousness challenges of claims 1, 3, 8–14, and 26. As such, and for the same reasons set forth in our anticipation analysis above, we hold that claims 1, 3, 8–14, and 26 are rendered obvious by Grangaud, alone or in combination with Dowling. Because we have determined that claims 1, 3, and 8–12 lack a novel feature with which to establish a nexus with secondary considerations, Cyanotech, as a matter of law, cannot establish a nexus. In re Kao, 639 F.3d at 1068 (Objective evidence that results from something that is not “both claimed and novel in the claim” lacks a nexus to the merits of the invention.). As to claims 2 and 4–7, the University has not directed any arguments to these claims specifically and has not made any attempts to establish a nexus between the presented objective evidence of nonobviousness and these claims. Thus, we maintain our unopposed determination that the specific doses and routes of administration recited in these claims are predictable variations within the technical grasp of a person of ordinary skill in the art, and are not persuaded by the objective evidence that claims 2 and 4–7 are nonobvious. In view of the above, we conclude that Cyanotech has demonstrated the unpatentability of claims 1–14 and 26 by a preponderance of the evidence. (2) Claim 15 Claim 15 depends from claim 14. As discussed above, we conclude that the preponderance of evidence of record demonstrates that neuronal damage to a retina is inherent to the condition of vitamin A deficiency-induced xerophthalmia. The question before us with regard to claim 15, however, is whether” slip op. at 24

  Patent outcomesUS 5,527,533 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 5,527,533
• JDS Uniphase Corporation v. Fiber, LLCSome claims unpatentable
  PTAB · Dec 5, 2014 · IPR2013-00318 · APJ Jacqueline Wright Bonilla · IPR · Final written decision

  Claims 1, 53–66, 69, and 71–74 are unpatentable; claims 67, 68, and 70 are not shown unpatentable. The contingent motion to amend is denied.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner

    “As discussed on our Decision to Institute (Dec. 7–8), we conclude that Patent Owner’s proposed definition of “optical beam” imports improperly a limitation into the claims. The claims themselves do not recite “communications.” Likewise, the ’917 patent Specification does not indicate that “optical beam” is limited to a communications beam, such that it would exclude a YAG laser beam, for example. As noted by Patent Owner, the Specification states that the “invention relates generally to optical switching and more particularly to non-electrical switching of laser communication signals.” Ex. 1001, 1:12–14. In other words, the Specification indicates that communication signals may be a preferred embodiment of the recited “optical beam,” but the claim phrase is not limited to that particular embodiment. See also Ex. 1011, 95:23–96:4 (testimony of Patent Owner’s witness, Dr. David A. Smith, stating that the Specification describes a system that “could switch [a] non-communication beam”); Reply 4. Patent Owner’s proposed dictionary meanings of the terms “transmit,” as relevant to “transmitting” in the claims, as well as “receptor,” do not persuade us otherwise. For example, a dictionary definition of the term “transmit” indicates that it means, more generally, to “send or forward, as to a recipient or destination” or “convey,” even if “[t]o communicate” is another alternative definition. Ex. 2018, 6. Patent Owner does not persuade us that switches for YAG lasers, for example, do not “send or forward” a laser beam. In fact, Patent Owner’s own proposed definition of “transmit” is not limited to sending or forwarding information used in the field of communications, where communications, according to Patent Owner, excludes YAG laser beams. Likewise, as Patent Owner acknowledges (PO Resp. 8–9), the term “optical receptor” is not limited to an element that receives electronic signals, and the Specification, which does not mention the term “receptor” except in the claims, likewise does not limit this term as such. See also Dec. 7 (discussing “optical receptor”); see also infra. Moreover, use of the phrases “optical signal” and “light signal” in a similar context as “optical beam” in the Specification does not mean that “optical beam” is limited to “a light beam consisting of communications information.” PO Resp. 12–13. Similarly, even assuming the Examiner relied exclusively on prior art relating to communications during prosecution of the ’917 patent, that fact would not dictate how we apply our claim construction standard, i.e., the broadest reasonable interpretation in light of the Specification.” slip op. at 9

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for petitioner

    “2. Other Claim Terms Construed in the Decision to Institute In our Decision to Institute, we construed other terms in the challenged claims—namely, “control,” “optical receptors,” and “data gathering and transmission element,” as recited in independent claims 1 and 53, as well as “adjacent,” as recited in dependent claims 54 and 55. Dec. 8–10. Patent Owner does not propose alternative claim constructions for those claim phrases in its Patent Owner Response, nor did Petitioner challenge our constructions in its Reply. We discern no reason to alter our claim constructions for this Final Written Decision. For convenience, our claim constructions are reproduced in the table below. Claim(s) Claim Phrase Claim Construction 1 and 53 “control” “an element that controls and adjusts one or more beam directing devices (e.g., mirrors), which in turn control transmission of an optical beam from a source and/or mirror(s) to an optical receptor” 1 and 53 “optical receptor” “an element that receives an optical beam after it has been directed by a beam directing device (e.g., mirror),” such as “another optic fiber (cable 7) or optical switch (optical switch 5), as depicted in Figure 1 of the ’917 patent”” slip op. at 10

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

    “Patent Owner further contends, however, that Hurst and Young are not analogous art. Patent Owner contends that, unlike Young, “Hurst does not involve optical switching in the fiber optic communications field,” but instead “relates to the use of micro-machined elements in optical data storage systems.” Id. at 48 (citing Ex. 1005, Abstract). Citing Dr. Smith’s Declaration in support, Patent Owner contends that the Hurst embodiments differ in a number of ways from the fiber optic communications switch described in Young. Id. at 48–50 (citing Ex. 2017, 70–74). For instance, Patent Owner contends that Hurst uses “very short-length polarization-maintaining fibers coupled to mechanical read-write arms,” and involves wavelengths that are “visible or near ultraviolet,” necessitating “alignment requirements of the polarization” to maintain visible or near ultraviolet optics. Id. at 49. Patent Owner contends, citing Dr. Smith’s testimony, that communication switches, such as those disclosed in Young, “require a specific optical system architecture” that “impacts mirror size and overall switch size,” and that the “details of solving that particular optical problem are substantially different than solving the short-wavelength optics challenges of Hurst.” Id. at 49 (citing Ex. 2017, 72–73). Thus, according to Patent Owner, Hurst’s use of polarization-maintaining fibers and shorter wavelengths “change substantially the optical design and the components, such as optical coatings.” Id. at 51. Patent Owner contends that Hurst does not teach “(1) [] a communications-grade fiber switch; (2) how to monitor intensity of the transmitted signal; or (3) how to close a fine alignment loop.” Id. Thus, according to Patent Owner, an ordinary artisan would not have known how to add the feedback element (differential detector) of Hurst to the Young switch system and get it to work, i.e., the teachings “leave[] the combination lacking enablement.” Id. We are not persuaded that Young and Hurst are non-analogous art because, as Petitioner points out, both references describe optical switching and are directed to coupling laser light to receptors with rotational reflective elements. Pet. 21. Patent Owner’s contentions still are relevant, however, to the issue of whether one of ordinary skill in the art would have had reason to combine the elements disclosed in Young and Hurst when making an optical switch.” slip op. at 34

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable

    “In this regard, Petitioner argues that a person having ordinary skill in the art would have had reason to provide “the feedback” of Hurst with Young’s optical switching system “for the benefit of ensuring that the reflective mirror is properly controlled.” Id.. Petitioner also argues that “the addition of feedback as taught by Hurst into Young would be a use of a known technique to improve a similar device in the same way.” Id. According to Petitioner, “[o]ne of ordinary skill in the art would have realized that Young provided a base device, and Hurst provided a comparable device, and that adding the feedback of Hurst to Young would have been predictable.” Id. Petitioner cites no evidence, such as a declaration from an expert witness, in support of those contentions, however, especially in relation to the differential detector (data gathering and transmission element) in Hurst. Id. Moreover, Petitioner does not explain sufficiently how, or show why, one would have added that element of Hurst to the optical switch of Young, or one would have been using a “known technique to improve a similar device in the same way,” or that “adding the feedback of Hurst to Young would have been predictable.” By contrast, as discussed above, Patent Owner explains, citing evidence in support, i.e., Dr. Smith’s Declaration, that one reading the two references would have understood that the two disclosed systems differed enough, such that it would not have been straightforward or “predictable” to combine elements. We conclude that Petitioner does not address adequately in its Petition, nor respond sufficiently in its Reply to Patent Owner’s Response, contentions raised by Patent Owner in this regard, or in cited testimony by Dr. Smith. At most, Petitioner contends in its Reply that independent claims 1 and 53 of the ’917 patent do not recite elements identified by Patent Owner as deficient in Hurst, and that Patent Owner’s “attempts to read limitations from the specification into the claims is improper.” Reply 14. We are not persuaded that Petitioner shows by a preponderance of the evidence that an ordinary artisan would have included “at least one data gathering and transmission element,” as recited in challenged independent claims 1 and 53, in the optical switch disclosed in Young based on the teachings in Hurst or Young. For the reasons given above, and in light of the record before us, Petitioner” slip op. at 35

  Patent outcomesUS 7,095,917 mixed
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 7,095,917
• JDS Uniphase Corporation v. Fiber, LLCSome claims unpatentable
  PTAB · Dec 5, 2014 · IPR2013-00336 · APJ Jacqueline Wright Bonilla · IPR · Final written decision

  Claims 112, 123, 124, 127, 129, 131, 133, and 134 are unpatentable as obvious over Chande; the remaining challenged claims were not shown unpatentable, and the motion to amend was denied.

  RulingsFinal written decision

  • Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner

    “of the phrase “servo control” refers to a “control” element, as opposed to a “servo control” or “data gathering and transmission” element, as recited in challenged claims, where the “servo control” in the provisional application controls movement of a mirror using a “push+pull magnetic force,” for example. Ex. 2006, 7. Consistently, the provisional application states that “[i]t may be desirable to add damping mechanism for better servo control,” i.e., to control movement of the mirrors, and that “resulting push+pull magnetic force is more linear and also larger than the pull only design, and allows for better servo control,” i.e., control of the position of the mirrors. Id. at 5, 7; see also PO Resp. 18. Patent Owner’s position relies on an inherency argument in relation to one sentence in the provisional application, as discussed above, which indicates that after velocity of the mirror is “zeroed,” “currents are adjusted to hold it in place.” Ex. 2006, 7. We are not persuaded that this one sentence describing the adjustment of currents to hold a mirror in place necessarily describes a closed-loop, feedback system, or “an error signal” that is “used in order to correct the angular changes so as to reduce that error signal,” as stated by Dr. Smith. PO Resp. 19–12 (citing Ex. 2017, 44). We do not see how this sentence, expressly or inherently, describes a separate “servo control element” or “data gathering and transmission element” as recited in claims 112 and 123, respectively (i.e., something different from the “control” element of each of those claims, which corresponds to the “servo control” in the provisional application), where each element provides a feedback signal regarding current orientation of the mirror or current location of the optical beam.” slip op. at 15

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

    “We are not persuaded that Chande and Buchin are non-analogous art to each other because, as Petitioner points out, both references are directed to optical switching and coupling of laser light to receptors with rotational reflective elements. Id. at 22. We still address, however, whether one of ordinary skill in the art would have had reason to combine the elements disclosed in Chande and Buchin when making the optical switch of claims 130 and 132.” slip op. at 34

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundMixed

    “As an initial matter, we note that Petitioner cites no evidence, such as a declaration from an expert witness, in support of those contentions. Id. In any event, Petitioner does not explain sufficiently how, or show by a preponderance of the evidence why, one would have added a stationary mirror or focusing lens “disposed between a source and one of the first movable mirrors,” as Petitioner contends is disclosed in Buchin, to the system described in Chande. Petitioner’s assertion that “inclusion of additional sources” would have been predictable or accomplished does not explain, nor provide evidence, as to why one would have included an additional stationary mirror or a focusing lens in a different location, i.e., elements that differ from “additional sources,” in the optical switch of Chande. Id.; see also Reply 12 (stating only that Chande and Buchin are both in the field of optical switching, and Patent Owner’s “attempts to read limitations from the specification into the claims is improper”). Thus, we are not persuaded that Petitioner shows by a preponderance of the evidence that an ordinary artisan would have included a stationary mirror, or focusing lens “disposed between a source and one of the first movable mirrors,” as recited in challenged claims 130 and 132 and Petitioner contends are disclosed in Buchin, in the optical switch disclosed in Chande.” slip op. at 35

  • PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, deniedDenied

    “Oakley, Inc. v. Sunglass Hut Int’l, 316 F.3d 1331, 1339 (Fed. Cir. 2003). Thus, a motion to amend claims must identify how the proposed substitute claims are to be construed, especially when the proposed substitute claims introduce new claim terms. See Idle Free Sys., Inc. v. Bergstrom, Inc., Case IPR2012-00027, slip op. at 7 (PTAB June 11, 2013) (Paper 26). In its Motion to Amend, Patent Owner introduces three new claim terms— i.e., “communications,” “fiber,” and “fiber optical”—in its proposed substitute claims. Patent Owner argues that those claim features distinguish the proposed substitute claims from the prior art. See, e.g., Motion 11–14. Patent Owner does not provide, however, adequate claim constructions or explanations for how the new claim terms should be construed. For example, in relation to the term “communications,” Patent Owner offers, at most, that the addition of this term means that the recited subject matter “involve[s] switches only in the fiber optic communications field of endeavor,” and that the term identifies claimed components as “related to a fiber optic switching device that switches optical beams containing communications signals.” Id. at 5, 11–12. Simply referring to the terms “communications,” “fiber,” and “fiber optic” in the Motion to Amend does not define adequately an ordinary and customary meaning of “communications,” as would be understood by one of ordinary skill in the art in the context of the Specification (which itself does not define “communications”). Ex. 1001, 1:11–14 (presenting the one time the term “communication” is used in the ’332 patent Specification). During the oral hearing, Patent Owner’s counsel, upon questioning, proposed that “communication” means “a beam of light, with a frequency around approximately 1500 nanometers.” Paper 39, 47:4–13. The Motion to Amend, however, does not suggest such a claim construction, nor refer to any evidence, e.g., a dictionary or scientific definition, in support. Moreover, as discussed during the oral hearing, it is not clear from the record if “communication” might mean simply “transmission of information,” a definition not limited to a beam of light at 1500 nm. Id. at 53:14–55:18. Without a reasonable construction of the new claim features added by the proposed substitute claims, Patent Owner’s Motion does not provide adequate information for us to determine whether its proposed substitute claims are patentable over the prior art generally. Thus, we are not persuaded that Patent Owner has met its burden to demonstrate patentability of the proposed substitute claims under 37 C.F.R. § 42.20(c). 2. Written Description Support A motion to amend claims must identify clearly the written description support for each proposed substitute claim. 37 C.F.R. § 42.121(b). The written description test is whether the original disclosure of the application relied upon reasonably conveys to a person of ordinary skill in the art that the inventor had possession of the claimed subject matter as of the filing date. Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). Thus, the motion should account for the claimed subject matter as a whole, i.e., the entire proposed substitute claim, when showing where there is sufficient written description support for each claim feature. See Nichia Corp. v. Emcore Corp., Case IPR2012-00005, slip op. at 4 (PTAB June 3, 2013) (Paper 27).” slip op. at 50

  Patent outcomesUS 6,430,332 mixed
  § 103 obviousness§ 112 disclosure
  Patents in suitUS 6,430,332
• Distinctive Developments, Ltd / Electronic Arts Inc. et al. v. Uniloc USA, Inc. And Uniloc Luxembourg S.A.Some claims unpatentable
  PTAB · Dec 3, 2014 · IPR2013-00391 · APJ Matthew R Clements · IPR · Final written decision

  Claims 1, 20, 30, 31, 67, 107, and 108 are unpatentable; claims 21 and 22 were not shown unpatentable, because Deluca does not disclose a cellular telephone.

  RulingsFinal written decision

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

    “The ’067 patent does not define either “verification data” or “verification data for verifying the license data stored on the licensing medium.” The language of claim 1, however, specifies that the recited “verification data” is “for verifying the license data stored on the licensing medium.” Patent Owner cites three methods described in the ’067 patent (PO Resp. 15), but those methods verify the validity of the licensing medium, not of the license data. Ex. 1001, 4:6–26 (“The electronic device may verify the validity of the licensing medium by comparing the license data to the verification data of the registration authority.” (emphasis added)); see also claims 2, 5, 9, 10 (reciting “verify validity of the licensing medium by . . .” (emphasis added)). Based on our review, the only disclosure in the ’067 patent of a “verification” of license data is the disclosure that the license data (or a hash of it, or an encrypted hash of it) is compared to a copy of itself in the “verification data” of the registration authority. Ex. 1001, 4:6–26. In the context of the ’067 patent, then, we construe “verifying the license data,” as recited in claim 1, to mean comparing the license data to a copy of itself to confirm that the two match.” slip op. at 8

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed

    “We agree with Patent Owner that the “identification information” disclosed in Cronce is not “verification data for verifying the license data,” as we have construed that term, because it is not used to verify the license data (i.e., authorization information 171). Specifically, Cronce does not disclose, for example, a comparison of identification information with authorization information 171. Instead, Cronce’s “identification information” is compared only to fixed key ID 151, which Petitioner does not identify as the recited “license data” in its Petition. In its Reply, Petitioner argues that fixed key ID 151 is “the license data,” because the ’067 patent defines that term broadly as “data that is used [ ] to determine whether or not to allow access to electronic data.” Pet. Reply 7–8 (citing Ex. 1001, 3:65–67; Ex. 2002 ¶ 12). We do not agree, however, that “license data” has the meaning proposed by Petitioner. Specifically, the sentence relied upon by Petitioner does not define “license data.” It states only that “license data is used by the electronic device to determine whether to allow access to the electronic data.” Ex. 1001, 3:65–67. It does not state that all data used in the process of determining whether to allow access to electronic data is license data. Even assuming that Cronce’s fixed key ID 151 is used in the process of determining whether to allow access to Cronce’s protected information 115, that is not sufficient for fixed key ID 151 to be the recited “license data.” Petitioner also argues in Reply that “there is a comparison between two pieces of information that, if successful, results in verified and updated license information being transmitted to the portable authorization device.” Pet. Reply 5. Neither piece of information is “verification data for verifying the license data,” however, unless it is compared with the license data itself. Cronce discloses no such comparison between its identification information (i.e., the recited “verification data”) and authorization information 171 (i.e., the recited “license data”). Petitioner also argues in Reply that Cronce discloses a second verification process in which the information authority (i.e., “registration authority”) has a fixed secret key 152 (i.e., “verification data”) that is compared to a fixed secret key 152 stored on the portable authorization device. Pet. Reply 5–7. As with the process relied upon in the Petition, however, Cronce does not disclose the use of fixed secret key 152 to “verify” authorization information 171 (which Petitioner identifies as the recited “license data”), such as by a comparison of the two to confirm a match. Because fixed secret key 152 is not used to verify authorization information 171 it is not “verification data for verifying the license data,” as we have construed that term.” slip op. at 16

  Patent outcomesUS 6,857,067 mixed
  Claim construction§ 102 anticipation
  Patents in suitUS 6,857,067
• Ricoh Americas Corporation / Xerox Corporation v. MPHJ Technology Investments, LLCSome claims unpatentable
  PTAB · Nov 19, 2014 · IPR2013-00302 · APJ Karl D Easthom · IPR · Final written decision

  Claims 1–5 and 7–11 are unpatentable because the XNS Manual anticipates them; Petitioner did not show that the XNS Manual or Salgado anticipates claim 6.

  RulingsFinal written decision

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

    “Accordingly, a “software application” is a program, or group of programs, which operate together in a system to perform a function or functions, and the programs can be stored in a variety of places on a variety of devices, and operate in a distributed manner. An application may include software and hardware and performs a function or functions.” slip op. at 13

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed

    “Patent Owner’s arguments are not persuasive. As explained in the Overview section, the application layer itself contains multiple protocols for each application, i.e., mailing, printing, filing, and gateway access. See Ex. 1002, 14–16, Fig. 2-4. Even if lower layer protocols do not “disturb[]” upper layer protocols, as Patent Owner contends, and even if an application layer does not contain multiple protocols (which Patent Owner does not contend), different layers of protocols generally communicate with, or at least “use the resources of,” lower layers through “interfaces.” Id. at 14, 11 (“[A] commonly-accepted perspective is that the functions of one layer use the resources of the lower layers to complete their assigned tasks.”). In any event, the application layer protocols comprise several types of application protocols. Id. at 15 (Fig. 2-4), 16.” slip op. at 25

  • ExcludeMotion to exclude, deniedDenied

    “III. MOTION TO EXCLUDE Patent Owner moves to exclude Dr. Melen’s testimony on re-direct during his deposition. Paper 40. We do not consider any of the re-direct testimony, rendering the motion moot. Therefore, we dismiss it.” slip op. at 49

  • Expert testimonyPetitioner expert creditedPatent owner expert creditedDecided for petitioner

    “Even if Patent Owner’s assertions raise doubt as to Dr. Melen’s use of the XNS Manual to support his opinion that it anticipates claim 6, see id. at 9–12, Patent Owner does not show how this translates to undermining Dr. Melen’s opinion regarding the other claims. Throughout his analysis of the XNS Manual, Dr. Melen’s declaration provides specific and accurate citations to the XNS Manual (Ex. 1002), supporting his opinion and showing that he relies on the XNS Manual’s disclosure. See Ex. 1008 ¶¶ 29–47. In addition, because Petitioner has not shown that the XNS Manual or Salgado anticipates claim 6, Dr. Melen’s opinion about claim 6 is not of significant consequence. In reciprocal fashion, Petitioner maintains that “the Board should give no weight to Mr. Weadock’s Declaration.” Pet. Reply 7–8. Mr. Weadock’s testimony is not necessary to reach our decision with regard to claim 6, and we did not consider it in reaching the decision about claim 6. Given the finding of anticipation of claims 1–5 and 7–11, the issue is moot. Nevertheless, as this Final Decision implies, we afforded Mr. Weadock’s declaration and Dr. Melen’s declaration due weight in reaching the finding that the XNS Manual anticipates claims 1–5 and 7–11.” slip op. at 50

  Patent outcomesUS 7,986,426 mixed
  Claim construction§ 102 anticipation
  Patents in suitUS 7,986,426
• Hewlett-Packard Co. v. MPHJ Technology Investments, LLCSome claims unpatentable
  PTAB · Nov 19, 2014 · IPR2013-00309 · APJ Karl D Easthom · IPR · Final written decision

  Claims 1–12, 14, and 15 are unpatentable as anticipated by Cotte; Petitioner did not show claim 13 unpatentable over Cotte or SJ5.

  RulingsFinal written decision

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther

    “In our Institution Decision, we interpreted phrases of the type “at least one of A and B” and “at least A and B” in the alternative, i.e., “one or more A or B.” Dec. on Inst. 11. The parties do not challenge this interpretation. Patent Owner agreed with it during the oral hearing, stating that “as Petitioner stated, these are alternative claim elements. Patent Owner takes no issue with that interpretation, that either - - that claim element 1.3 [at least one input module] and 1.4 [at least one module communicable] are claimed in the alternative.” Tr. 31:6–9 (see supra claim 1). Patent Owner’s declarant, Mr. Weadock, also agrees with this general construction outlined in the Petition. See Ex. 2002 ¶ 17.” slip op. at 7

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “The record shows that Mr. Wibbels possesses “at least . . . ‘ordinary skill in the art’” (Ex. 1005 ¶ 20): the level of ordinary skill in the art of the ’381 [Patent] at the time of the effective filing date is a person with a bachelor of science degree and two years experience in research or development (e.g., engineering, product development, requirements analysis) in fields or industries pertinent to the art (e.g., digital imaging systems, such as scanners or printers). With more education, for example post-graduate degrees and/or study, less industry experience is needed to attain an ordinary level of skill. Id. ¶ 19. The claims of the ’381 Patent generally recite systems for processing and transmitting electronic images with “counterparts” in conventional printing systems. The ’381 Patent Specification also summarizes the disclosed invention as involving C-level software. See Ex. 1001, col. 3, ll. 35–67. Firmware skill, contrary to Patent Owner’s arguments, skill in creating computer algorithms, and other languages, including C-level, represent relevant skill. Mr. Weadock testifies that the requisite level of skill incudes experience in “printing, networking, scanning, and e-mail.” Ex. 2002 ¶ 15. Patent Owner acknowledges that Mr. Wibbels had “formal education” in software languages including C-level. PO Resp. 10. The record, including the prior art, which is directed to similar systems as the claimed invention, show that Mr. Wibbels has the requisite engineering education, and experience at least in imaging art, encompassing printer, scanning, and networking––“digital imaging systems.” Ex. 1005 ¶ 19. Mr. Wibbels invented systems as specified in several relevant patents generally involving computer based imaging. See Ex. 1012, 1–2. Patent Owner has not demonstrated through cross-examination or otherwise that Mr. Wibbels’s testimony is unreliable. Mr. Wibbels qualifies to aid in the Board’s understanding and his opinion is entitled to due weight.” slip op. at 23

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “Patent Owner’s assertions bolster the record evidence and show that Mr. Wibbels has experience and education in software. Patent Owner does not qualify “high level” software. Patent Owner had the opportunity to challenge the declaration of Mr. Wibbels through cross-examination and competing testimony. See In re TMI Litig., 193 F.3d 613, 692 (3d Cir. 1999) (“So long as the expert’s testimony rests upon ‘good grounds,’ it should be tested by the adversary process—competing expert testimony and active cross-examination.” (quoting Ruiz-Troche v. Pepsi Cola of P. R. Bottling Co., 161 F.3d 77, 85 (1st Cir.1998))). In addition to having a Master’s degree in engineering, Mr. Wibbels has been a “Distinguished Technologist/Strategist” at Hewlett Packard Company since 2004. Mr. Wibbels is “an inventor of 17 issued U.S. Patents” and has “spent approximately 20 years working on product development of HP scanning and printing solutions.” Ex. 1012, 1–2; Ex. 1005, 2.” slip op. at 22

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed

    “claim 13. In its Reply, Petitioner contends that “[c]laim 13 . . . only references other modules in a manner that lacks antecedent basis.” Pet. Reply 7. Claim 13 references “said . . . modules,” however, Petitioner’s explanation falls short of explaining how a list of modules cannot be afforded patentable weight. In its Petition, Petitioner asserts that Cotte discloses a list of menu options “used at startup of a copier.” Pet. 46 (citing Ex. 1011, col. 15, ll. 36–42, col. 18, ll. 43–51, col. 22, ll. 53–61, col. 23, ll. 19–25; Ex. 1005 ¶ 308). Nevertheless, Petitioner does not point out the specific list or show it is read on start-up. For example, the menu cited at column 15, lines 36–42, appears to be generated in response to an interrupt from the input device. See Ex. 1011, col. 15, ll. 30–32. Mr. Wibbels appears to rely on inherency “in a Windows implementation,” Ex. 1005 ¶ 308, but Petitioner does not provide a citation or persuasive evidence that shows that Cotte employs a Windows implementation. See PO Resp. 31. On this record, Petitioner does not show how Cotte discloses the claimed list of modules, or the list read on start-up. Petitioner thus does not show by a preponderance of evidence that Cotte anticipates claim 13.” slip op. at 45

  Patent outcomesUS 6,771,381 mixed
  Claim construction§ 102 anticipation
  Patents in suitUS 6,771,381
• Hayward Industries, Inc. v. Pentair Water Pool And SpA, Inc.All claims unpatentable
  PTAB · Nov 19, 2014 · IPR2013-00285 · APJ James B Arpin · IPR · Final written decision

  Claim 12 is unpatentable as obvious over Rasmuson and Møller ’042 because the combination teaches the claimed pumping system and a skilled artisan would have had reason to combine them.

  RulingsFinal written decision

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

    “not makes clear by its language that the word “primed” should be understood to mean “initially primed” or primed after the pressing of a “Start” button. As Patent Owner acknowledged at Oral Hearing, the claim language does not mention the term “initial” or “start” (Tr. 38:23–40:6) and, despite Patent Owner’s argument regarding the appropriate interpretation of “primed” in view of the Specification, we are not persuaded that the Specification limits “primed” in the manner argued by Patent Owner. Consequently, we conclude that the Specification does not express a clear intent to deviate from the plain meaning of the word “primed.” See Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012) (“It is not enough for a patentee to simply disclose a single embodiment or use a word in the same manner in all embodiments, the patentee must clearly express an intent to redefine the term” (citations omitted; internal quotation marks omitted)). We are persuaded by Petitioner that our construction of the terms “is primed” and “is not primed,” as set forth in our Decision on Institution represents “the broadest reasonable meaning of the words in their ordinary usage, as those words would be understood by one of ordinary skill in the art, taking into account any definitions supplied by [patentee’s] Specification” (In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997)), and we confirm that construction here (Dec. on Inst. 11 (citing Ex. 3001)). Despite Patent Owner’s arguments, we are not persuaded that patentee has supplied here such a definition limiting “primed” to “become primed” or “initially primed” with sufficient clarity, deliberateness, and precision. Paulsen, 30 F.3d at 1480.” slip op. at 11

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner

    “persuaded that the reference to “at least one aquatic application” in the preamble of claim 12 is a limitation. “In general, a preamble limits the invention if it recites essential structure or steps, or if it is ‘necessary to give life, meaning, and vitality’ to the claim.” Catalina Marketing Int’l., Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (quoting Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999)). “Conversely, a preamble is not limiting ‘where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention.’” Id. (quoting Rowe v. Dror, 112 F.3d 473, 478 (Fed. Cir. 1997)). Here, we determine that the body of the claim describes a structurally complete invention and that the preamble neither recites structure nor is necessary to give life meaning or vitality to claim 12. Therefore, we are not persuaded by Patent Owner’s arguments that Rasmuson is not analogous art based on the type of pumps described in Rasmuson or the aquatic applications for which the recited pumping systems are suitable.” slip op. at 29

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

    “’479 Patent. In particular, Patent Owner argues that Rasmuson is neither from the same field of endeavor as the claimed invention nor is it reasonably pertinent to the problem faced by the patentee. PO Resp. 40–43 (citing In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004)). For the following reasons, we conclude that Rasmuson is analogous art to the pumping system recited in the challenged claim.” slip op. at 28

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

    “the relevant art would not have combined the teachings of Rasmuson and Møller ’042 to achieve the pumping system recited in claim 12. PO Resp. 30–59. After consideration of the parties’ remarks and supporting evidence, we are not persuaded by Patent Owner’s arguments and conclude that a person of ordinary skill in the relevant art would have had reason to combine the references in the manner proposed by Petitioner. Petitioner contends that the measurement of input power, as taught by Møller ’042, is a proxy for Rasmuson’s flow transducer’s measurement of actual flow rate and would represent an improvement on Rasmuson’s methods and systems for measuring flow.6 Pet. 33; see Ex. 1018 ¶ 61 (“The controller of the Møller ‘042 Patent correlates the input power to a delivery variable of the pump (flow rate or pressure).” (citing Ex. 1003, col. 3, ll. 33–42)); Ex. 1037 ¶ 38 (“In many cases, using power-sensing techniques is a better option than using a flow transducer . . .”).7 In particular, Petitioner contends that “providing a power 6 Patent Owner argues that Møller ’042 teaches away from Rasmuson because Rasmuson teaches direct flow measurement and Møller ’042 teaches indirect flow measurement. PO Resp. 58–59. We do not find a clear teaching away from the substitution of one flow measurement means for its functional equivalent. For the reasons set forth above, we are not persuaded by those arguments. 7 Dr. Schaaf testified that the use of power meters was less invasive than the installation of flow sensors at the pump and that, after utilizing a controller that measured electrical power to detect loss of prime, pump life was increased from measuring technique [eliminates] the need for a probe to be placed in the water, which may become contaminated, or require piping to be cut.” Pet. 33; see Ex. 1037 ¶¶ 29–40; see also KSR, 550 U.S. at 417 (arrangement of known elements according to their understood functions).” slip op. at 21

  Patent outcomesUS 8,019,479 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,019,479
• Apple Inc. v. Sightsound Technologies, LLCAll claims unpatentable
  PTAB · Oct 7, 2014 · CBM2013-00020 · APJ Justin T Arbes · CBM · Final written decision

  Claims 1, 2, 4, and 5 are unpatentable as obvious over the CompuSonics publications; Apple did not prove anticipation by the CompuSonics system.

  RulingsFinal written decision

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “persuaded that they disclose a single, publicly known system that anticipates the challenged claims. Anticipation requires that every limitation of the claim at issue be disclosed in a prior art disclosure and “arranged or combined in the same way as recited in the claim.” Net MoneyIN, Inc. v. 4 Section 18(a)(1)(C) of the Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) (“AIA”), provides that a covered business method patent review may be based on “prior art that is described by section 102(a)” as in effect before March 16, 2013. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008). “[I]t is not enough that the prior art reference . . . includes multiple, distinct teachings that the artisan might somehow combine to achieve the claimed invention.” Id.; see also Kyocera Wireless Corp. v. ITC, 545 F.3d 1340, 1351–52 (Fed. Cir. 2008) (concluding that a set of eleven specifications pertaining to the same telecommunication standard did not constitute a “single prior art reference”). Apple does not argue that a single prior art reference discloses all limitations of the challenged claims, instead relying on different materials as allegedly disclosing different limitations. See Pet. 43–55. The cited materials undoubtedly are similar, as they all describe technology developed by CompuSonics and pertain generally to the recording of digital audio or video. There are differences, however. For example, the materials describe different models of DSPs with slightly different features and capabilities. Certain materials discuss the recording of digital audio on DSP-1000 series devices with floppy disks, e.g., Ex. 4113, whereas others disclose storage on DSP-2000 series devices with a hard disk, e.g., Ex. 4119. Given that the prior art teachings and suggestions are found in references describing a family of device models, as opposed to a single device model, we find that one skilled in the art would not have at once envisaged the claimed arrangement of known components in a manner consistent with anticipation under 35 U.S.C. § 102(a). Apple has not demonstrated, by a preponderance of the evidence, that claims 1, 2, 4, and 5 of the ’573 patent are anticipated by the CompuSonics system.” slip op. at 23

  • Obviousness (§103) › Analogous artAnalogous artUnpatentable

    “limitations of claim 1, we turn to whether a person of ordinary skill in the art would have had reason to combine the teachings of the references to achieve the claimed method. We are guided by the Supreme Court’s decision in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007). “Section 103(a) forbids issuance of a patent when ‘the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.’” Id. at 405. “[W]hen a patent ‘simply arranges old elements with each performing the same function it had been known to perform’ and yields no more than one would expect from such an arrangement, the combination is obvious.” Id. at 417 (citation omitted). “If a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability. . . . [A] court must ask whether the improvement is more than the predictable use of prior art elements according to their established functions.” Id. A determination of obviousness, though, requires identifying “‘some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.’” Id. at 417–18 (citation omitted). The evidence of record demonstrates that the CompuSonics publications describe prior art elements operating according to their known functions and yielding predictable results. See supra II.B; Pet. 33–51; Ex. 4132 ¶¶ 17–40, App. C at 1–7; PO Resp. 31 (acknowledging that “the components needed to practice the claims were available prior to 1988”). The disclosed DSPs would store digital signals and communicate digital signals electronically over a telephone line in a known manner. A floppy disk used by a DSP would function for its known purpose of storing digital data. Allowing the user to telephone the music provider and provide a credit card number for payment would have functioned just like other known payment systems of the time. See Ex. 4132 ¶¶ 26–27; Ex. 4262 ¶¶ 14–25. A person of ordinary skill in the art, having the educational background and work experience described above, see supra Section II.D.2, would have recognized that the predictable result of using these elements was a system that allowed users to purchase and download music, as expressly contemplated by the references themselves.” slip op. at 37

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Based on our review of the ’573 patent, the types of problems and solutions described in the ’573 patent and cited prior art, and the testimony of the parties’ declarants, we agree with Dr. Kelly’s assessment and conclude that a person of ordinary skill in the art would have had a bachelor’s degree or equivalent in computer engineering or computer science and approximately two years of experience in developing software and hardware that transmit and receive files over a network. See, e.g., Ex. 4101, col. 1, l. 9–col. 2, l. 9 (describing alleged problems in the prior art, and stating that the ’573 patent describes “a method [by] which a user may purchase and receive digital audio or video signal[s] from any location which the user has access to a telecommunications line”); col. 4, ll. 16–22 (stating that certain components, such as hard disks 10 and 60, telephone lines 30, compact disc player 40, video display unit 70, and stereo speakers 80, were “already commercially available”); Ex. 4132 ¶¶ 2–7 (describing the background of Dr. Kelly); Ex. 2153 ¶¶ 3–13 (describing the background of Mr. Snell). In particular, Dr. Kelly’s definition is appropriate because it requires some level of specific experience with transmitting and receiving data over a network, consistent with the recitation in the claims of connecting electronically and transmitting data over a telecommunication line.” slip op. at 28

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

    “The determination of whether a document is a “printed publication” under 35 U.S.C. § 102 involves a case-by-case inquiry into the facts and circumstances surrounding its disclosure to members of the public. In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). To qualify, a document must have been sufficiently accessible to the public interested in the art. Kyocera, 545 F.3d at 1350–51 (a “reference is publicly accessible ‘upon a satisfactory showing that such document has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it’”) (citation omitted). The evidence of record indicates that the diagrams were displayed, publicly and repeatedly, at trade shows, lectures, and similar events, and that those events were of the type that would have been attended by persons of ordinary skill in the art. The diagrams were displayed multiple times at multiple events, unlike the situation where a slide is displayed only one time at an oral presentation. See Klopfenstein, 380 F.3d at 1349 n.4. Further, each diagram is a relatively simple display of components on a single page, and there is no indication in the record that attendees at the various events could not have copied the diagrams. See id. at 1351 (“The more complex a display, the more difficult it will be for members of the public to effectively capture its information. The simpler a display is, the more likely members of the public could learn it by rote or take notes adequate enough for later reproduction.”). Apple has established that Exhibits 4112 and 4117 qualify as prior art printed publications under 35 U.S.C. § 102(a).” slip op. at 30

  Patent outcomesUS 5,191,573 unpatentable
  § 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 5,191,573

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