- NHK Seating Of America, Inc. v. Lear CorporationSome claims unpatentablePTAB · Dec 30, 2015 · IPR2014-01026 · APJ Mitchell G Weatherly · IPR · Final written decision
Claims 11, 14, and 17–21 are unpatentable; claim 15 was not shown unpatentable because Wiklund does not disclose its required sequential contact portions.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“Ex. 1001, 5:9–22 (emphasis added). This passage is consistent with interpreting “first manner and second manner” as meaning “any two different ways.” As described in this quoted passage, if either the forward velocity or the trajectory of the headrest, or both changes, then movement in a first and second manner has occurred. For example, if the headrest were to move forward at one velocity and then merely slow down (or speed up) on the same trajectory, then movement would occur in a first and second manner.” slip op. at 8
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Id. at 8:58–9:5 (emphasis added). The emphasized portion of the quotation establishes that Kage’s headrest moves differently at the beginning and end of its path S2'. Namely, Kage’s headrest moves quickly toward the occupant’s head at the beginning of path S2' and more slowly toward the occupant’s head at the end of path S2'.” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“claims 12, 17, 18, and 21 obvious and sets forth the evidence from Wiklund and Humer to support its contentions in detailed claim charts. Pet. 43–46. NHK also proffers Dr. Kent’s testimony to explain the manner in which Wiklund describes the requirements recited in these claims. Ex. 1010¶¶ 60– 69. Claims 12 and 21 depend from claims 10 and 20, respectively, and further recite a “damper connected between the headrest arrangement and the seatback.” Ex. 1001, 13:15–16 (claim 12), 14:26–27 (claim 21). NHK relies upon Humer for its disclosure of a damper as recited in these claims. Pet. 44–46. More specifically, NHK contends that Humer teaches using a damper 118 to improve “energy absorptions” of the Saab SAHR headrest. Pet. 43 (citing Ex. 1007, 7:27–8:4). NHK also contends that Wiklund is directed to the same Saab SAHR headrest. Pet. 43 (citing Ex. 1010 ¶ 60). NHK therefore concludes that an ordinary artisan would have found it obvious to improve Wiklund by adding Humer’s damper between the headrest arrangement and the seatback. Pet. 43–44. NHK contends that an ordinary artisan would have found it obvious to add a damper to Wiklund to “provide ‘some energy absorption to cause more even and controlled contact with the head during impact’ because without the damper 118 ‘the head tends to oscillate after impacting a headrest cushion.’” Id. at 44 (citing Ex. 1007, page 8:1–4; Ex. 1010 ¶¶ 60, 61, and 63).” slip op. at 34
- ExcludeMotion to exclude, deniedDenied
“IV. LEAR’S MOTION TO EXCLUDE We have reviewed Lear’s Motion to Exclude, NHK’s Opposition to the Motion, and Lear’s Reply in support of the Motion. Based on our review, we deny the Motion in all respects for one or both of the following reasons: (1) the Motion is moot because it seeks to exclude evidence not considered or relied upon in rendering this Decision or (2) the Motion addresses issues more appropriate to determining the weight ascribed to the evidence rather than the admissibility of evidence. In rendering this Decision, we determine and ascribe the appropriate weight to all proffered evidence and, when appropriate, comment upon the weight ascribed.” slip op. at 39
Patent outcomesUS 6,655,733 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,655,733 - Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. et al. v. Ixi IP, LLCInstitution deniedPTAB · Dec 30, 2015 · IPR2015-01442 · APJ Kristina M Kalan · IPR · Institution
The Board denied institution on all challenged claims because the asserted combinations did not disclose the claimed hand-held device.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Figure 18 illustrates use of the PCS device within the communications web of Snelling. Id. at 41:29–30. The PCS device “may be coupled to NCU 100 via an adapter 1905 that interfaces with the cellular phone 1800.” Id. at 41:30– 32. NCU 100 itself, however, is not described as being “hand-held.” Patent Owner highlights a number of factors supporting the allegation that one of ordinary skill in the art would not view NCU 100 as a device that is hand-held or even mobile in operation: its ability to be “rapidly installed in any location” (citing Ex. 1001, 54:30–32 (emphasis added)); the examples of situations in which NCU 100 could be used—trade show, construction site, emergency aid organization providing assistance after a disaster (id. at 55:4– 8); and power sources including “a dedicated battery, an electric power generator, automobile cigarette adapter, solar cells, any electro-mechanical converter” (id. at 55:13–16). Prelim. Resp. 31. Although the NCU can harness the functionality of a hand-held device to access a wireless network, we are persuaded by Patent Owner’s evidence that Snelling does not identify NCU 100 as a hand-held device. Petitioner relies on certain sections of Snelling discussing the ability of NCU 100 to be made mobile, in that NCU 100 may be moved from location to location, but does not point to any evidence persuading us that NCU 100 is a hand-held device. Accordingly, Petitioner has not established that NCU 100 itself is a hand-held device including the components and functionality of the hand-held device set forth in the challenged claims. Taking into account our construction of “hand-held device,” we are unpersuaded that a “hand-held device” is disclosed by the combination of Snelling and Router Plugins. Thus, we are not persuaded that Petitioner would prevail on its contention that claims 1, 4, 5, 8, 10, 12, 14, and 23 would have been obvious over the combination of Snelling and Router Plugins.” slip op. at 15
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner
“appearance in the preamble renders it limiting. “A claim’s preamble may limit the claim when the claim drafter uses the preamble to define the subject matter of the claim.” August Tech. Corp. v. Camtek, Ltd., 655 F.3d 1278, 1284 (Fed. Cir. 2011). “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 Mktg. Int'l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (citing Pitney Bowes Inc. v. Hewlett- Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999)). “Whether to treat a preamble as a limitation is a determination ‘resolved only on review of the entire[ ] . . . patent to gain an understanding of what the inventors actually invented and intended to encompass by the claim.’” Id. at 808 (quoting Corning Glass Works v. Sumitomo Electric U.S.A., Inc., 868 F.2d 1251, 1257 (Fed. Cir. 1989)). “Where a patentee uses the claim preamble to recite structural limitations of his claimed invention, the PTO and courts give effect to that usage.” Rowe v. Dror, 112 F.3d 473, 478 (Fed. Cir. 1997); Eaton Corp. v. Rockwell Int’l Corp., 323 F.3d 1332, 1339 (Fed. Cir. 2003) (when limitations in the body of the claim rely upon or derive essential structure from the preamble, then the preamble may act as a necessary component of the claimed invention). Our consideration of the evidence leads us to the conclusion that the preamble is limiting. The term “hand-held device” appears prominently in the specification. In the “Summary of the Invention” section, the specification states: “A hand-held device for providing communication between a wide area network and a wireless local area network is provided . . . .” Ex. 1001, 1:61–64 (emphasis added). This section also states: “According to an embodiment of the present invention, the hand-held wireless device is a cellular telephone . . . .” Ex. 1001, 4:1–2 (emphasis added). The specification uses the term “hand-held device” as the heading for Detailed Description Section II, which describes device 106 and terminals 107: “II. Hand-held Device/Terminal Hardware” in which “FIG. 2 illustrates embodiments of terminals 107 and device 106.” Id. at 6:36–38. Rather than glossing over the role of the hand-held device in the overall invention, other portions of the specification provide additional details about the hand-held nature of the claimed device. See, e.g., id. at Abstract (identifying a cellular telephone), 6:16–19 (identifying different embodiments of the present invention), 6:37–59 (discussing the hand-held device with reference to Fig. 2), 14:23–15:38 (discussing usage scenarios including a cellular telephone as the hand-held device). The term “hand-held device” appears prominently in the claims as well. The challenged claims all are directed to a device, rather than a method or a system; in each case, the device is a hand-held device. The term “handheld device” recites a structural limitation of the claim, in that the “hand-held” aspect of the device is a dimensional, physical restriction on the size of the device. The limitations in all of the claims rely upon or derive essential structure from the preamble, in that they are housed within a hand-held device, which limits the size and adaptations required of the remaining limitations in the claims. Every claim depending from claim 1 recites “[t]he hand-held device of claim 1.” Ex. 1001, 17:8–18:47. Thus, we determine the use of “hand-held device” in the preamble of the challenged claims is limiting, in that it denotes a structural limitation of the claimed device.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Having determined that the term “hand-held device” is limiting, we turn to the construction of the term. Petitioner urges that the term be construed “broadly enough to encompass a mobile device for enabling communication between one or more devices connected to one or more cellular networks and one or more devices connected to a wireless local area network.” Pet. 12. Patent Owner, although urging that no additional construction is needed, states the plain meaning of the term “hand-held device” is “a device that is hand-held, i.e., a device that that is designed to be held and operated in a person’s hand.” Prelim. Resp. 11–12. We adopt Patent Owner’s construction, namely, “a device that is designed to be held and operated in a person’s hand.”” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“Figure 18 illustrates use of the PCS device within the communications web of Snelling. Id. at 41:29–30. The PCS device “may be coupled to NCU 100 via an adapter 1905 that interfaces with the cellular phone 1800.” Id. at 41:30– 32. NCU 100 itself, however, is not described as being “hand-held.” Patent Owner highlights a number of factors supporting the allegation that one of ordinary skill in the art would not view NCU 100 as a device that is hand-held or even mobile in operation: its ability to be “rapidly installed in any location” (citing Ex. 1001, 54:30–32 (emphasis added)); the examples of situations in which NCU 100 could be used—trade show, construction site, emergency aid organization providing assistance after a disaster (id. at 55:4– 8); and power sources including “a dedicated battery, an electric power generator, automobile cigarette adapter, solar cells, any electro-mechanical converter” (id. at 55:13–16). Prelim. Resp. 31. Although the NCU can harness the functionality of a hand-held device to access a wireless network, we are persuaded by Patent Owner’s evidence that Snelling does not identify NCU 100 as a hand-held device. Petitioner relies on certain sections of Snelling discussing the ability of NCU 100 to be made mobile, in that NCU 100 may be moved from location to location, but does not point to any evidence persuading us that NCU 100 is a hand-held device. Accordingly, Petitioner has not established that NCU 100 itself is a hand-held device including the components and functionality of the hand-held device set forth in the challenged claims. Taking into account our construction of “hand-held device,” we are unpersuaded that a “hand-held device” is disclosed by the combination of Snelling and Router Plugins. Thus, we are not persuaded that Petitioner would prevail on its contention that claims 1, 4, 5, 8, 10, 12, 14, and 23 would have been obvious over the combination of Snelling and Router Plugins.” slip op. at 15
Claim construction§ 103 obviousnessPatents in suitUS 7,295,532 - Washington Inventory Services D/B/A Wis International v. Rgis, LLCAll claims unpatentablePTAB · Dec 30, 2015 · CBM2014-00158 · APJ James T Moore · CBM · Final written decision
Claims 1–19 are unpatentable under § 101 as directed to abstract inventory verification implemented with conventional technology, and under § 103 over Whitehouse and ordinary skill in the art.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“We must not import unrecited elements into the claim from the specification. Phillips v. AWH Corp., 415 F.3d 1303, 1319–20 (Fed. Cir. 2005) (en banc). The specification observes its own exemplary nature—“[i]t should be understood that the description and specific examples are intended for purposes of illustration only and are not intended to limit the scope of the present disclosure.” Ex. 1001, 2:16–19.” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalTerm construed board ownDecided for petitioner
“During prosecution, in a responsive amendment, Patent Owner proffered that “mode” implied a device: Amended claim 1 recites “selecting a verification mode, which includes a set of rules that define a methodology for verifying the inventory dataset, from a plurality of verification modes” and “acquiring verification data in the completed area with the remote verification device based on the selected verification mode.” The McGraw-Hill Dictionary of Scientific and Technical Terms, 6th Edition, defines the word “mode” as “one of several alternative conditions or methods of operation of a device.” The portion regarding the “set of rules that define a methodology for verifying the inventory dataset” further clarifies what is meant by verification mode. Ex. 1002, 180–81. Claim 1, however, broadly interpreted, can reasonably refer to either “mode”—the verification mode, or the device mode. Moreover, the specification itself, in describing manual processing of prior art printed inventory sheets, also refers to that method of inventory verification as a “mode.” Ex. 1001, 1:31–38 (see in particular line 35). We, therefore, decline to limit the term “mode” to only “on a device” when inventory checking alone can have different “modes” of being” slip op. at 17
- Skill levelSkill level board ownDecided for petitioner
“Mr. Melucci opines that a person of ordinary skill in the art relevant to the ’658 patent “would have at least two years [of] experience related to collecting and verifying inventory data.” Ex. 1006 ¶ 27. Dr. Jagannathan testifies that “a person of ordinary skill in the art of the [’]658 Patent would have had: (1) a Bachelor’s degree in computer science, computer engineering, or related field; (2) one year of related professional experience; and (3) a basic understanding of inventory processes and the use of UPCs and other product identifiers. The professional experience may include, for example, work related to use of bar codes, stock keeping units, and the like. It is further my opinion that relevant professional or practical experience with computer systems and software may substitute for academic credentials.” Ex. 2001 ¶ 40. Based on our review of the ’658 patent, the types of problems and solutions described in the ’658 patent and cited prior art, and the testimony of the parties’ Declarants, we conclude that a person of ordinary skill in the art at the time of the claimed invention would have had at least two years of experience in computerized inventory management. We further note that the applied prior art reflects the appropriate level of skill at the time of the claimed invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 18
- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionUnpatentable
“imports limitations into the claims from the specification. See, e.g., PO Resp. 35 (discussing the claims jointly). For example, Patent Owner asserts that Petitioner “ignores the actual claim language that requires the verification mode selection to be made on and with the device.” PO Resp. 37. The defect in this argument is that the language of “selecting a particular verification mode on the verification device” is absent from claim 1. See Ex. 1001, 6:2–14. Furthermore, the broadest reasonable interpretation of the term “mode” does not limit the step to a device. Claim 1 positively recites the device in the downloading, deploying, acquiring, computing, and displaying steps, but the term “device” is specifically omitted from the selecting step. Accordingly, we do not interpret claim 1 as requiring the step of selecting a verification mode on the device. Contrary to Patent Owner’s position, we are persuaded by Petitioner that each of challenged claims 1–14, and 18, as a whole, is directed to the fundamental concept of providing inventory verification. Pet. 23. In the Abstract, the ’658 patent states: “[a] system and method of verifying the completeness and accuracy of inventory records is disclosed.” Ex. 1001, Abst. Additionally, in the Background section, the ’658 patent states: Prior methods of verification require that the inventory records be printed out in a predetermined format which is then taken to a specific area in the facility for comparison to the inventory physically located there. These methods are inflexible, tedious and time consuming because the mode of verification is strictly depend[e]nt on the predetermined format of the printed reports and requires a repeated reference to the report and comparison with the actual inventory. Ex. 1001, 1:31–38. The only technological features recited in claims 1–14 and 18 are a computer performing conventional computer functions. Ex. 1001, 6:2–22. Specifically, those include downloading data from a computer to a device, deploying the device, acquiring data with the device, computing, and displaying.” slip op. at 23
Patent outcomesUS 8,606,658 unpatentableClaim construction§ 101 eligibility§ 103 obviousnesscites Alice · Mayo · Bilski · Phillips · GrahamPatents in suitUS 8,606,658 - HTC Corporation / HTC America, Inc. v. Advanced Audio Devices, LLCAll claims unpatentablePTAB · Dec 29, 2015 · IPR2014-01155 · APJ Christopher L Crumbley · IPR · Final written decision
Claims 1, 3, 6, 7, 9, 11, 25, 30, 59, 77, 82, 85, and 117–122 are unpatentable under § 103 over the stated prior-art combinations.
RulingsFinal written decision- Expert testimonyPetitioner expert creditedOther
“Based on the combination of references proposed by HTC, Mr. Schmandt testifies that a person of ordinary skill in the art would have recognized the advantages of Sound Blaster’s functionality, and sought to incorporate those features into Lucente. Ex. 1009 ¶ 240 (“a person of ordinary skill in the art would be motivated to combine a system with the flexibility, portability, and ease of use of Lucente with the audio 30 management capabilities of Sound Blaster”); id. at ¶ 242 (“it would be obvious to design a system with physical (e.g. push-button) controls to carry out the various functions designed by Sound Blaster, particularly in view of Lucente and Ozawa”) (emphasis added). The record reflects that such a modification would not have been outside the level of ordinary skill, which both experts define similarly. Ex. 1009 ¶ 25 (Schmandt: at least a bachelor’s degree in electrical engineering, computer science, or equivalent, and 1–3 years of experience in designing and programming consumer electronic devices); Ex. 2007 ¶ 8 (McAlexander: bachelor’s degree in electrical engineering or computer engineering, and at least two years of experience in the design of audio systems). This level of skill is also reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). AAD’s focus on whether the Sound Blaster hardware sound card could be installed on the Lucente device, or whether the Sound Blaster software could run on Lucente’s operating system, ignores that a person of ordinary skill is a “person of ordinary creativity, not an automaton.” KSR, 550 U.S. at 421. It would not have been outside the level of ordinary skill in the art, as defined by both experts, to modify the device of Lucente to have the functionality described in Sound Blaster—including grouping and ordering songs—as well as the ability to download songs as described in Ozawa. We, therefore, find that a person of ordinary skill in the art would have had reason to combine the disclosures of Sound Blaster, Lucente, and Ozawa, and would have had a reasonable expectation of success in doing so.” slip op. at 30
- ExcludeMotion to exclude, deniedDenied
“Exclude 1. Pursuant to our Rules, a motion to exclude evidence must be filed to preserve any previously-made objections to evidence. 37 C.F.R. § 42.64(c). The motion must identify where in the record the objections were made, and must explain the objections. Id. We note that AAD does not identify where in the record its objections to evidence were made prior to their being the basis of the Motion to Exclude, in violation of Rule 42.64(c). Indeed, the Board is aware of AAD’s prior objections only because they were quoted in HTC’s opposition to the Motion to Exclude. For this reason, AAD’s Motion is procedurally deficient, and may be denied on this basis alone.” slip op. at 25
- Skill levelSkill level board ownDecided for petitioner
“management capabilities of Sound Blaster”); id. at ¶ 242 (“it would be obvious to design a system with physical (e.g. push-button) controls to carry out the various functions designed by Sound Blaster, particularly in view of Lucente and Ozawa”) (emphasis added). The record reflects that such a modification would not have been outside the level of ordinary skill, which both experts define similarly. Ex. 1009 ¶ 25 (Schmandt: at least a bachelor’s degree in electrical engineering, computer science, or equivalent, and 1–3 years of experience in designing and programming consumer electronic devices); Ex. 2007 ¶ 8 (McAlexander: bachelor’s degree in electrical engineering or computer engineering, and at least two years of experience in the design of audio systems). This level of skill is also reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). AAD’s focus on whether the Sound Blaster hardware sound card could be installed on the Lucente device, or whether the Sound Blaster software could run on Lucente’s operating system, ignores that a person of ordinary skill is a “person of ordinary creativity, not an automaton.” KSR, 550 U.S. at 421. It would not have been outside the level of ordinary skill in the art, as defined by both experts, to modify the device of Lucente to have the functionality described in Sound Blaster—including grouping and ordering songs—as well as the ability to download songs as described in Ozawa. We, therefore, find that a person of ordinary skill in the art would have had reason to combine the disclosures of Sound Blaster, Lucente, and Ozawa, and would have had a reasonable expectation of success in doing so.” slip op. at 31
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“In our view, HTC’s proposed analysis better comports with the “expansive and flexible approach” to obviousness set forth by the Supreme Court in KSR. “The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference.” In re Keller, 642 F.2d 413, 425 (CCPA 1981). Our inquiry is, therefore, not “whether the references could be physically combined but whether the claimed inventions are rendered obvious by the teachings of the prior art as a whole.” In re Etter, 756 F.2d 852, 859 (Fed. Cir. 1985) (en banc). Based on the combination of references proposed by HTC, Mr. Schmandt testifies that a person of ordinary skill in the art would have recognized the advantages of Sound Blaster’s functionality, and sought to incorporate those features into Lucente. Ex. 1009 ¶ 240 (“a person of ordinary skill in the art would be motivated to combine a system with the flexibility, portability, and ease of use of Lucente with the audio 30 management capabilities of Sound Blaster”); id. at ¶ 242 (“it would be obvious to design a system with physical (e.g. push-button) controls to carry out the various functions designed by Sound Blaster, particularly in view of Lucente and Ozawa”) (emphasis added). The record reflects that such a modification would not have been outside the level of ordinary skill, which both experts define similarly. Ex. 1009 ¶ 25 (Schmandt: at least a bachelor’s degree in electrical engineering, computer science, or equivalent, and 1–3 years of experience in designing and programming consumer electronic devices); Ex. 2007 ¶ 8 (McAlexander: bachelor’s degree in electrical engineering or computer engineering, and at least two years of experience in the design of audio systems). This level of skill is also reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). AAD’s focus on whether the Sound Blaster hardware sound card could be installed on the Lucente device, or whether the Sound Blaster software could run on Lucente’s operating system, ignores that a person of ordinary skill is a “person of ordinary creativity, not an automaton.” KSR, 550 U.S. at 421. It would not have been outside the level of ordinary skill in the art, as defined by both experts, to modify the device of Lucente to have the functionality described in Sound Blaster—including grouping and ordering songs—as well as the ability to download songs as described in Ozawa. We, therefore, find that a person of ordinary skill in the art would have had reason to combine the disclosures of Sound Blaster, Lucente, and Ozawa, and would have had a reasonable expectation of success in doing so.” slip op. at 30
Patent outcomesUS 7,289,393 unpatentable§ 103 obviousnesscites GrahamPatents in suitUS 7,289,393 - HTC Corporation / HTC America, Inc. v. Advanced Audio Devices, LLCAll claims unpatentablePTAB · Dec 29, 2015 · IPR2014-01154 · APJ Christopher L Crumbley · IPR · Final written decision
Claims 1, 3, 6, 7, 11, 12, 16, 22, 24, 27, 29, 30, 35–37, 43, and 45–47 are unpatentable under § 103; proposed substitute claims 49–65 were denied.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“AAD misunderstands our prior claim construction ruling. We cited the above-quoted portions of the specification to demonstrate that, when the ’403 patentee wished to refer to ordering sound tracks, the terms rearranging or customizing were used—as opposed to the term organizable. Dec. 9. By contrast, we noted that the specification of the ’403 patent does not use the word organizable outside the claims. Id. The claim language itself, therefore, is the best guide to the meaning of the term. As we noted in our Decision, claim 1 requires that the music library is “organizable into a 10 master song list and at least one group of sound tracks.” Ex. 1001, 21:32–33 (emphasis added); Dec. 9. This usage implies that the user must be able to, at the very least, add songs from the music library into groups such as the master song list and the group of sound tracks. We note that AAD’s expert, Mr. McAlexander, agreed with our construction of the term, with a minor caveat discussed below. Ex. 1016, 31:6–32:16 (“The actual context of an arrangement ordering and grouping, I have no problem with that. I think they’re right.”). AAD’s proposed construction, which limits organizable to only the ordering of songs, is not the broadest reasonable interpretation of the claim term.” slip op. at 10
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“b. Analysis of Anticipation by Nathan ’259 Anticipation requires not only that all elements of a claim are disclosed within the four corners of a single prior art reference, but that the elements are “arranged as in the claim.” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008). For the following reasons, we determine that Petitioner has not proven by a preponderance of the evidence that Nathan ’259 teaches all elements of claim 1, and by extension, any of the challenged dependent claims.” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“In our view, HTC’s proposed analysis better comports with the “expansive and flexible approach” to obviousness set forth by the Supreme Court in KSR. “The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference.” In re Keller, 642 F.2d 413, 425 (CCPA 1981). Our inquiry is, therefore, not “whether the references could be physically combined but whether the claimed inventions are rendered obvious by the 37 teachings of the prior art as a whole.” In re Etter, 756 F.2d 852, 859 (Fed. Cir. 1985) (en banc). Based on the combination of references proposed by HTC, Mr. Schmandt testifies that a person of ordinary skill in the art would have recognized the advantages of Sound Blaster’s functionality, and sought to incorporate those features into Lucente. Ex. 1007 ¶ 168 (“a person of ordinary skill in the art would be motivated to combine a system with the flexibility, portability, and ease of use of Lucente with the audio management capabilities of Sound Blaster”); id. at ¶ 170 (“it would be obvious to design a system with physical (e.g. push-button) controls to carry out the various functions designed by Sound Blaster, particularly in view of Lucente and Ozawa”) (emphasis added). The record reflects that such a modification would not have been outside the level of ordinary skill, which both experts define similarly. Ex. 1007 ¶ 25 (Schmandt: at least a bachelor’s degree in electrical engineering, computer science, or equivalent, and 1–3 years of experience in designing and programming consumer electronic devices); Ex. 2003 ¶ 8 (McAlexander: bachelor’s degree in electrical engineering or computer engineering, and at least two years of experience in the design of audio systems). This level of skill is also reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). AAD’s focus on whether the Sound Blaster hardware sound card could be installed on the Lucente device, or whether the Sound Blaster software could run on Lucente’s operating system, ignores that a person of 38 ordinary skill is a “person of ordinary creativity, not an automaton.” KSR, 550 U.S. at 421.” slip op. at 37
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“In cases in which the proffered evidence of commercial success is licenses, rather than sales of products embodying the invention, there is a danger that the licenses may have been taken only because they were cheaper than defending an infringement suit. See EWP Corp. v. Reliance Universal Inc., 755 F.2d 898, 908 (Fed. Cir. 1985). In such situations, nexus between the commercial success and the patent cannot be inferred; rather, “affirmative evidence of nexus” is required. Iron Grip Barbell Co. v. USA Sports, Inc., 392 F.3d 1317, 1324 (Fed. Cir. 2004). In other words, a patent owner must demonstrate “a nexus between the merits of the invention and the licenses of record”; otherwise, the licenses are to be accorded little weight. In re GPAC Inc., 57 F.3d at 1580 (emphasis added). HTC notes that each of the licenses listed by Mr. Keller includes at least two patents that explicitly claim a compact disc recorder, an element not present in the claims of the ’403 patent. Pet. Reply 24. HTC also contends that AAD fails to demonstrate any link between the invention of the ’403 patent and the taking of the license; for example, AAD provides no 27 apportionment of revenues to show the amount attributable to the ’403 patent, as opposed to the other members of the licensed family. Id. We agree with HTC that the evidence provided by AAD does not establish a sufficient link between the merits of the invention claimed in the ’403 patent and the taking of the licenses. Although Mr. Keller notes that some of the provided licenses were taken in situations where there was no pending litigation against the licensee (Ex. 2004 ¶ 9), he does not address whether litigation had been threatened against those parties. We, therefore, cannot determine whether the licenses reflect the commercial value of the invention claimed in the ’403 patent, or whether they were taken merely to avoid the cost of litigation, either pending or threatened. Absent a persuasive showing of nexus, AAD’s evidence of licensing fails to establish commercial success. We conclude that the evidence of objective indicia of nonobviousness is insufficient to overcome the evidence of obviousness over the combined Nathan references.” slip op. at 27
Patent outcomesUS 6,587,403 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites GrahamPatents in suitUS 6,587,403 - PTAB · Dec 28, 2015 · IPR2015-01479 · APJ Charles J Boudreau · IPR · Institution
The Board denied institution on all challenged claims because the Petition did not show a reasonable likelihood of prevailing on any asserted ground.
RulingsInstitution decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“We agree with Patent Owner that “[t]he use of the term ‘backlight’ rather than simply ‘light’ indicates that something is being illuminated from behind.” Id. at 28. Petitioner’s proposed constructions (Pet. 13–16) are unreasonably broad insofar as they do not account for the use of the term “backlight.” We also agree with Patent Owner (see id.) that it is clear in the context of the ’833 patent that the recited backlights are in a liquid crystal display apparatus. See Toro Co. v. White Consol. Indus. Inc., 199 F.3d 1295, 1301 (Fed. Cir. 1999) (words used in a claim are not construed in a “lexicographic vacuum, but in the context of the specification and drawings”); In re Marosi, 710 F.2d 799, 802 (Fed. Cir. 1983) (“[C]laims are not to be read in a vacuum, and limitations therein are to be interpreted in light of the specification in giving them their ‘broadest reasonable interpretation.’” (emphasis omitted) (quoting In re Okuzawa, 537 F.2d 545, 548 (CCPA 1976)). Petitioner, and its expert Dr. Silzars, recognize in their statements regarding the level of ordinary skill in the art that the relevant art here is “display technologies.” See Pet. 12; Ex. 1002 ¶ 13. Notably, however, despite Petitioner’s assertions and Dr. Silzars’ opinions that “[t]he alleged invention boils down to a method for minimizing the electrical noise generated when simultaneously driving multiple lights,” that the “‘liquid crystal display’ modifier” in the preambles of the challenged claims “merely states a purpose or intended use of the invention” (Pet. 20–22; Ex. 1002 ¶¶ 58–59), and that “there is no structure that is specific to LCDs recited in the body of any of the claims,” neither Petitioner nor Dr. Silzars identifies any context in which backlights would be employed by those of ordinary skill in the art of display technologies, other than in an LCD. Accordingly, on this record and for purposes of this Decision, we determine that the broadest reasonable interpretation of the term “backlight” is “a lamp or set of lamps that illuminates a liquid crystal display from behind.” Because the claims already explicitly define the relationship between the “first backlight” and the “second backlight”—for example, claim 1 recites, in relevant part, that the second backlight is “driven simultaneously with said first backlight” and “ha[s] an oscillation wave whose phase is inverted with respect to an oscillation wave of the first backlight”—we discern no need to provide separate interpretations of “first backlight” and “second backlight.” We also decline to adopt Patent Owner’s proposal to limit the “second backlight” to include “all remaining lamps of the . . . apparatus that are not in the first backlight.” Because independent claims 1 and 16 use the open-ended transitional phrase “comprising,” those claims do not exclude additional, unrecited elements and method steps, respectively. See Manual of Patent Examining Procedure § 2111.03 (9th ed., Rev. 07.2015 Nov. 2015). 2. Other Claim Terms For purposes of this Decision, no other claim terms require express interpretation. Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“claim terms need only be construed ‘to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 10
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)
“B. Anticipation and Obviousness “A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). The elements must be arranged as required by the claim, but this is not an ipsissimis verbis test. In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). [U]nless a reference discloses within the four corners of the document not only all of the limitations claimed but also all of the limitations arranged or combined in the same way as recited in the claim, it cannot be said to prove prior invention of the thing claimed[,] and thus, cannot anticipate under 35 U.S.C. § 102. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008); accord In re Arkley, 455 F.2d 586, 587 (CCPA 1972). Moreover, “it 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.” In re Preda, 401 F.2d 825, 826 (CCPA 1968).” slip op. at 12
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)
“A patent claim is unpatentable under 35 U.S.C. § 103(a) if the differences between the claimed subject matter 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.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations, including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of skill in the art; and (4) objective evidence of nonobviousness, i.e., secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). We analyze the asserted grounds with the principles identified above in mind.” slip op. at 13
- PTAB / AIA Trials › Real party in interest / privityNot reached
“D. Remaining Contentions The above determination makes it unnecessary to resolve any other disputes, including Patent Owner’s assertion that Petitioner failed to list all of the real parties in interest. See Prelim. Resp. 4–14; Petitioners’ Reply to Patent Owner’s Preliminary Response, Paper 9; Patent Owner’s Sur-Reply to Petitioners’ Reply, Paper 10.” slip op. at 33
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,417,833 - Coleman Cable, LLC / Jiawei Technology (HK) Ltd. et al. v. Simon Nicholas RichmondAll claims unpatentablePTAB · Dec 21, 2015 · IPR2014-00935 · APJ Barry L Grossman · IPR · Final written decision
Claims 1–7, 9, 10, 14, 17–20, 23, 28, 43, 45, and 48–50 are unpatentable under the instituted anticipation and obviousness grounds.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“Notwithstanding a “reasonably comprehensive search of U.S. patents and published patent applications on the USPTO website to look for the term ‘surround frame’” by Dr. Ducharme (id. ¶ 81), there is no evidence that the term “surround frame” is a term that has a single recognized meaning to a person of ordinary skill in the technology relevant to the claimed invention of the ’370 patent, or is otherwise considered a term of art. See Tr. 67, ll. 15–23 (“We don’t have anything like that in the record, Your Honor.”). Dr. Ducharme was not able to identify a single patent that used the term “surround frame” in a technology analogous to the claimed invention. Patent Owner maintains, however, that the term “surround frame” has “a uniform, well accepted and consistently used meaning to persons in the art . . . . That is our position.” Id. at 51, ll. 2–6. The evidence of patents and published patent applications directed to doors and window frames, eyeglass frames, and other technologies on which Patent Owner relies, is not persuasive that the detailed construction of the term “surround frame,” advocated by Patent Owner and quoted above, is the broadest reasonable construction of that term based on the intrinsic and extrinsic evidence. The patents and published patent applications have different specifications, use the term in different contexts, and do not show that the term has a common meaning across technology areas.” slip op. at 24
- Skill levelSkill level petitioner adoptedDecided for petitioner
“In determining the level of ordinary skill in the art, a court may consider various factors, including “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (quoting Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir.1986)). The ’370 patent, Ouyang, and Chliwnyj include circuit diagrams, and Norton and Kuelbs address circuitry for lighting assemblies. The parties seem to agree that a person of ordinary skill in the art would be capable of reading the circuit diagrams and understanding what function(s) they perform, at least at some level. PO Resp. 3 (arguing that “[t]he primary area of expertise of a [person of ordinary skill in the art] is that of a person having knowledge of electrical engineering, in particular the ability to recognize how a pre-designed circuit may operate”); Pet. Reply 2–5. Patent Owner in its Response, however, asserts that a person of ordinary skill in the art would have had a “basic knowledge of . . . electrical circuits” and related components in solar garden lights, but he or she would be unable to make any modifications to those circuits and would only be capable of taking them whole cloth and inserting them into another device. See PO Resp. 4–5; see also Ex. 2022 ¶ 39 (Patent Owner’s declarant Dr. Ducharme testifying that a person of ordinary skill would be capable of “making only simplistic changes to the exterior aesthetic of the product to make the product appealing to consumers. But a person of ordinary skill and creativity in the art does not have the ability to re-design the aesthetic effect of a solar garden light by either mechanical or electrical means.”). Patent Owner would seemingly limit the person of ordinary skill in the art to ornamental design changes only. We reject the notion that a person of ordinary skill in the art would only be capable of making ornamental design variations. Under Patent Owner’s proposed level of skill, any functional modification would be beyond the level of ordinary skill in the art and render the modified device patentable (so long as it was not anticipated); this proposed level of skill is so low it eviscerates the notion of obviousness. Instead, upon review of the record before us, we find that a person of ordinary skill in the art is able to comprehend what is being shown in the prior art and has some ordinary level of creativity with respect to their modification. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) (“A person of ordinary skill is also a person of ordinary creativity, not an automaton.”). Based on our review of the factors above in the current record, we agree” slip op. at 34
- Expert testimonyPetitioner expert creditedDecided for petitioner
“1. Dr. Shackle’s Declaration Petitioner cites and relies on the Declaration of Dr. Shackle, which is Exhibit 1002, for evidentiary support. Patent Owner objects to Dr. Shackle’s qualifications as an expert because “Dr. Shackle has never designed a solar light.” PO Resp. 10. Patent Owner also objects to Dr. Shackle’s qualifications because he conducted a “retrospective review” of the prior art. Id. at 11. Dr. Shackle has a Ph.D. in Physics. Ex. 1002 ¶ 2. Physics is “the branch of science concerned with the properties of matter and energy and the relationships between them. It is based on mathematics and traditionally includes mechanics, optics, electricity and magnetism, acoustics, and heat.”6 In addition to his academic credentials, Dr. Shackle has over twenty years of experience in the field of lighting electronics, with particular emphasis on LED drivers and electronic ballasts. Ex. 1002 ¶ 3. This experience includes, but is not limited to: President and Founder of Photolume, a consulting company in the field of lighting electronics products; Director of Power Supply Products at Light Based Technologies; Chief Technologist at Lightech Electronics North America, Inc.; and Director of Engineering and later V.P. of Advanced Technology at Universal Lighting Technologies, Inc. Id. In these positions, Dr. Shackle was responsible for developing a number of LED circuits and products. Id., App’x A (CV of Dr. Shackle). The ’370 patent refers very generally to LEDs, solar panels, and related circuits. See, e.g., Ex. 1001, col. 6, ll. 25–53. Considering the well-known basic technology of solar cells and solar circuits, and the type and sophistication of the 6 physics. Dictionary.com. Collins English Dictionary - Complete & Unabridged 10th Edition. HarperCollins Publishers. http://dictionary.reference.com/browse/physics (accessed: December 16, 2015) (Ex. 3002). solar cell technology disclosed and claimed in the ’370 patent, Dr. Shackle appears qualified by knowledge, experience, training, and education to testify in the form of an opinion in this proceeding. Patent Owner was entitled to, and did, cross-examine Dr. Shackle based on his Declaration testimony as part of routine discovery. See 37 C.F.R. § 42.51(b)(1)(ii). We discussed the issue of Dr. Shackle’s “retrospective review” above in the” slip op. at 32
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“a. General Legal Principles [U]nless a reference discloses within the four corners of the document not only all of the limitations claimed but also all of the limitations arranged or combined in the same way as recited in the claim, it cannot be said to prove prior invention of the thing claimed and, thus, cannot anticipate under 35 U.S.C. § 102. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008); see also Verdegaal Bros. v. Union Oil Co., 814 F.2d 628, 631 (Fed. Cir. 1987) (“A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.”). “The identical invention must be shown in as complete detail as is contained in the . . . claim.” Richardson v. Suzuki Motor Co., 868 F.2d 1226, 1236 (Fed. Cir. 1989).” slip op. at 36
Patent outcomesUS 8,089,370 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,089,370 - TRW Automotive U.S. LLC v. Magna Electronics Inc.Institution deniedPTAB · Dec 21, 2015 · IPR2015-01429 · APJ Phillip J Kauffman · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood that claims 56–61 were unpatentable under § 103.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“For the reasons set forth below, Petitioner does not demonstrate a reasonable likelihood of prevailing in showing the unpatentability of claims 56–61 of the ’659 patent. Accordingly, the Petition is denied, and no trial is instituted. B.” slip op. at 2
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateDecided for patent owner
“1002, 1:7–23. For a claim to gain the benefit of the filing date of an earlier filed application under 35 U.S.C. § 120, each application in the chain leading back to that earlier application must comply with the written description requirement of 35 U.S.C. § 112, first paragraph. See, e.g., Zenon Envtl., Inc. v. U.S. Filter Corp., 506 F.3d 1370, 1378 (Fed. Cir. 2007). Satisfaction of the written description requirement under 35 U.S.C. § 112, first paragraph, does not require the description to be literally the same as the claim language at issue. In re Wertheim, 541 F.2d 257, 265 (CCPA 1976); In re Lukach, 442 F.2d 967, 969 (CCPA 1971). Rather, by whatever language, the specification only must convey with reasonable clarity to those skilled in the art that, as of the filing date of the application, the inventor was in possession of the claimed invention. Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563–64 (Fed. Cir. 1991); see also Ariad Pharms., Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (citing with approval the standard in Vas Cath, and stating “the test for sufficiency is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.”).” slip op. at 6
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not reached
“and, for the reasons discussed below, Petitioner does not demonstrate a reasonable likelihood of prevailing in showing that the ’287 patent is prior art.” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not found
“b) Rationale Petitioner’s rationale for the proposed modification is not persuasive. First, Petitioner contends that it would have been obvious to utilize Klappenbach’s housing 2 in Blank’s device to provide rain sensor functionality. Pet. 37. Then Petitioner reasons it would have been obvious to replace Klappenbach’s rain sensor with the improved functionality of Schofield’s camera that includes rain sensing capability. See id. at 43. Petitioner’s argument explains why one of ordinary skill in the art would select Schofield’s camera rather than the Klappenbach’s rain sensor, but does not explain why it would have been obvious to mount Schofield’s camera in Klappenbach’s housing. See Prelim. Resp. 32–33. Second, Petitioner reasons that Klappenbach’s housing would advantageously seal the components of Schofield’s camera to prevent intrusion of elements from the environment. Pet. 38, 44–45 (citing Ex. 1513 ¶ 58). However, Schofield’s camera already is protected from such intrusions. See Ex. 1007, 3:67–4:4; Prelim. Resp. 32, 34. Third, Petitioner reasons that Klappenbach’s technique of attaching the fastening device during windshield manufacture is an advantage because the sensor is not mounted until after the motor vehicle is built. Pet. 37–38 (citing Ex. 1010, 2:11–16; Ex. 1513 ¶ 58). As discussed above, Klappenbach’s device is mounted pressed against and at the angle of the windshield, while Schofield’s is mounted spaced from the windshield and horizontal. Petitioner does not explain persuasively how Klappenbach’s technique provides a manufacturing advantage for a device such as Schofield’s camera that is mounted in a different manner. See Prelim. Resp. 32 (noting this advantage is particular to a refractive rain sensor). Further, Petitioner’s reasoning is contradictory in that it touts that Schofield’s camera “advantageously eliminates the requirement for optical coupling,” yet relies upon Klappenbach’s mounting technique for optical coupling. See Ex. 1513 ¶ 59.” slip op. at 14
§ 103 obviousness§ 112 disclosurecites GrahamPatents in suitUS 8,692,659 - Geox S.P.A. v. Outdry Technologies CorporationAll claims unpatentablePTAB · Dec 18, 2015 · IPR2014-01244 · APJ Donna M Praiss · IPR · Final written decision
Claims 1–15 are unpatentable as obvious under § 103(a); the motion to amend claims 16 and 17 is denied for failure to establish written-description support and patentability.
RulingsFinal written decision- Skill levelSkill level board ownOther
“difference between Petitioner’s and Patent Owner’s proposed levels of ordinary skill in the art that would impact our ultimate conclusions. Petitioner contends that a person of ordinary skill in the art is evidenced by the references. Pet. 11. Patent Owner asserts that “[w]aterproofing leather is not a sophisticated technology, and the education level of a PHOSITA working in the industry is likely a four year degree.” PO Resp. 30. According to Patent Owner, a PHOSITA likely would have knowledge related to making apparel from leather, waterproofing leather using sprays and liners, as well as knowledge of adhesives and bonding leather apparel, and also knowledge of waterproof breathable membranes of various types. Id. We consider the cited prior art as representative of the level of ordinary skill in the art, which Patent Owner essentially summarizes as the knowledge of a PHOSITA. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (finding the absence of specific findings on “level of skill in the art does not give rise to reversible error ‘where the prior art itself reflects an appropriate level and a need for testimony is not shown’”) (quoting Litton” slip op. at 5
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“interpreted to include either a temporary support that is removed, such as a release sheet, or one that becomes part of the final product, such as a liner. Pet. 11. Patent Owner contends that the term should be construed to be limited to “sheets” because “[n]o other material forms are disclosed other than ‘sheets,’ which include paper and fabric support sheets.” PO Resp. 7 (citing Ex. 1001, 2:58–67). According to Patent Owner, the broadest reasonable construction, therefore, “includes any sheet of flexible fabric or fibrous material that is generally fastened to the membrane for structural support or as a lining in the finished product and the attachment is either detachable or firmly fastened to the semi-permeable membrane.” Id. at 7–8. In the Decision on Institution, we construed “support sheet” as “includ[ing] any material that is generally fastened to the membrane for structural support or as a lining in the finished product and the attachment is either detachable or firmly fastened to the semi-permeable membrane.” Dec. on Inst. 6. This construction is based on the Specification, which describes multiple embodiments of the support sheet, including a detachable sheet and an internal liner. Ex. 1001, 2:58–67. The Specification also describes the use of “different materials” to make the support sheet. Id. at 2:63–64. Accordingly, we conclude that the broadest reasonable construction of “support sheet” is not limited to a sheet of fabric or fibrous material as Patent Owner contends, but, rather, explicitly includes “different materials” that can be fastened generally to the membrane for structural support or as a lining in the finished product and the attachment is either detachable or firmly fastened to the semi-permeable membrane. Therefore, consistent with the Specification, we construe “support sheet” to mean a sheet of any material that is generally fastened to the membrane for structural support or as a lining in the finished product and the attachment is either detachable or firmly fastened to the semi-permeable membrane.” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageTerm construed board ownDecided for petitioner
“required degree of contact between the membrane and the leather in the regions that are between the dots of adhesive. The ’171 patent summarizes the invention as enabling a membrane to be applied directly to leather by providing a surface of the membrane with a glue pattern. Ex. 1001, 1:56–61. The invention is said to “avoid the use of a semipermeable lining and the water penetration between leather and lining.” Id. at 1:60–61. The title of the invention states “Process for Waterproofing Leather” and describes the leather used in the process as “leather waterproofed by said process.” Id. at 2:27–28. These disclosures do not define either the word “waterproof” as used in the Specification or the word “directly” as recited in independent claims 1 and 9 to mean that there is constant contact between the membrane and leather such that no water permeates the leather, as Patent Owner contends. In an embodiment of the invention, heating of the membrane during pressing is said to result in “a perfect adhesion” that does not plug the pores with glue. Id. at 2:31–42–45. Heating of the membrane during pressing is carried out also in the single example disclosed in the ’171 patent. Id. at 3:12. The leather samples in the example are said to have been “waterproofed by the process according to the present invention” and “hot-pressed with a hydrophilic non-porous semi-permeable membrane of polyurethane material having a thickness of 10 µm.” Id. at 3:9–14. These disclosures of an embodiment and an example do not define “directly pressing” or “waterproofing” or even “perfect adhesion” to mean constant contact between the leather and the membrane or that no water permeates the leather. Therefore, we decline to import such limitations into the term “directly pressing” based on Patent Owner’s argument that these properties are present inherently in the embodiment of the example in the ’171 patent. Accordingly, we construe “directly pressing” to mean applying pressure without any intervening materials or layers other than the recited adhesive.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“combination of Thornton, Scott, and Hayton. Petitioner has established that Thornton’s process for waterproofing leather by using spaced dots of adhesive in a discontinuous configuration on a semi-permeable membrane that is pressed against the leather meets the requirements of claims 1 and 9 but for the dot density and dot size ranges specified by the claims, respectively. Petitioner also provided a rational underpinning for combining the disclosures of Scott and Hayton, which provide guidance for the density and size of adhesive dots to adhere a semi-permeable membrane to a porous layer. We are not persuaded by Patent Owner’s argument that the teachings of Scott and Hayton are unrelated to the problem of adhering a membrane to a leather layer in view of Thornton’s disclosure that both leather and fabric material are amenable to its process for waterproofing breathable articles of clothing. Ex. 1003, 7:58–62. We also are not persuaded by Patent Owner that the combination of Thornton, Scott, and Hayton does not disclose all of the limitations of claims 1 and 9. The ranges explicitly disclosed in Hayton overlap with the ranges recited in claims 1 and 9. Patent Owner does not argue, and the Specification does not indicate, any criticality associated with the portion of the ranges that are not encompassed by Hayton’s ranges. See In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990). Rather, the claimed ranges appear once in the Specification as a preferred embodiment when the pattern of thermoadhesive glue is dots of polyurethane glue. Ex. 1001, 2:37–42. Patent Owner’s arguments distinguishing Thornton on the basis that it does not teach constant contact between the membrane and the leather in the regions between the spaced dots of adhesive is not persuasive for the reasons discussed above in connection with Patent Owner’s claim construction argument that this is required by the claim term “directly pressing.” In addition, we find that Thornton’s semi-permeable membrane completely covers the leather layer in the sense that the leather layer surface faces the membrane surface to form a composite. Thornton explicitly describes drawing the membrane barrier component over a former, applying adhesive to the outer surface of the film, drawing the outer glove layer onto the former, and bonding the layers by pressing. Ex. 1003, 21:64–22:8; Reply 9. Thornton also discloses layers on the former are placed in register (Ex. 1003, 21:33–35) and that the composite can be formed face to face in sheets (id. at 6:62–66, 7:13–31; Reply 8).” slip op. at 15
Patent outcomesUS 6,855,171 unpatentableClaim construction§ 103 obviousnessPatents in suitUS 6,855,171 - Seagate Technology (US) Holdings, Inc. / Seagate Technology LLC v. Enova Technology Corp.All claims unpatentablePTAB · Dec 18, 2015 · IPR2014-01449 · APJ Timothy J Goodson · IPR · Final written decision
Claims 40–53 are unpatentable under § 103 over Sullivan and SATA Standard because the combination renders the claimed cryptographic SATA operations obvious.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“The Decision to Institute did not provide express constructions for any of the terms of the challenged claims, noting that “claim terms need only be construed ‘to the extent necessary to resolve the controversy.’” Dec. to Inst. 6–7 (quoting Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011)). Patent Owner’s Response does not propose any claim constructions, asserting instead that “even under the claim constructions proposed by Petitioner[], the references of record do not render any claims of the ’057 Patent obvious.” PO Resp. 15. The parties’ arguments in this proceeding following the Decision to Institute do not provide any reason to deviate from the claim construction approach in the Decision to Institute. Based on the record before us, we need not provide express constructions for any claim terms.” slip op. at 6
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the field of this invention would have had at least a bachelor’s degree in electrical engineering, computer engineering, or computer science, and two years of experience in a relevant field, or equivalent knowledge and experience. Pet. 4 (citing Ex. 1006 ¶¶ 16–17). Patent Owner’s Response does not address specifically the level of ordinary skill in the art. We note, however, that Patent Owner’s declarant, Dr. Thomas M. Conte, testifies that because the claims of the ’057 patent describe a cryptographic apparatus, which is a computer hardware device, one of ordinary skill in the art should have experience with the hardware of devices and systems. Ex. 2061 ¶ 18. Dr. Conte’s testimony does not persuade us that hardware encryption experience is a prerequisite for the level of ordinary skill, such that persons having a software background or a degree in computer science are excluded from being persons of ordinary skill. See id. Although the Specification of the ’057 patent and the challenged claims disclose a “cryptographic device,” the ’057 patent teaches that “[t]he above-described embodiments may be implemented in hardware and/or software form, as desired.” Ex. 1001, 12:10–11. After considering the evidence of record, we conclude that a person of ordinary skill in the art at the time of the ’057 patent would have had a bachelor’s degree in electrical engineering, computer engineering or computer science, and at least two years of experience.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“adequately for the disclosure in Sullivan that is broader and more general. For example, in the Background section, Sullivan describes that “[a] system is needed whereby transmission of data in a serial channel can be accomplished in-line and in real time, where the data and control information can be treated separately for both encryption purposes and for handling various types of attacks and covert processes embedded in or achieved by the transmitted information.” Ex. 1002 ¶ 6 (emphasis added); see also id. at ¶ 10 (“The control information, which may include commands and status information, can be subjected to filtering and rejecting operations by the encryption unit, to pass through only a predetermined set of commands and/or to reject a predetermined set of commands.”); id. at ¶ 55 (“[T]he filter module 730 may be configured as an information or command pass filter or blocking filter for any control information that may be included in the packet 700, whether or not in the header.”) (emphasis added); id. at claim 9 (“transmitting the encrypted information with the associated control information to the second device, where the associated control information is transmitted in an unencrypted form”). In view of these teachings, we agree with Petitioner that “Sullivan describes making encryption decisions based on the type of data and not simply the location of the data (e.g., in a header or in a payload).” Reply 8. Further, a skilled artisan would not have understood Sullivan’s teaching to strip out the header and encrypt the payload as a prescription for how each individual FIS should be treated when Sullivan is applied to a SATA device, because that encryption strategy would yield a non-functioning SATA device. It is undisputed that implementing Sullivan in a SATA device in this manner would result in a non-functional system, because doing so would result in encryption of payloads that should not be encrypted, thereby rendering the FISes unintelligible to the host or the peripheral device intended to process them. See PO Resp. 25; Reply 9. As summarized above, Patent Owner argues that this non-functionality demonstrates a flaw in Petitioner’s proposed combination. See PO Resp. 25. Yet, we view Patent Owner’s argument regarding non-functionality as detracting from the persuasiveness of Patent Owner’s contentions regarding how a skilled artisan would have understood Sullivan’s disclosure. In particular, it strains credulity that a skilled artisan would apply Sullivan in the manner Patent Owner urges when doing so would result in a non-functioning device. We agree with Petitioner that an artisan having ordinary skill and creativity would not have applied Sullivan’s teachings in such a simplistic and plainly counterproductive fashion. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) (“A person of ordinary skill is also a person of ordinary creativity, not an automaton.”); see also Reply 9–10 (citing In re Sovish, 769 F.2d 738, 743 (Fed. Cir. 1985); Scanner Techs. Corp. v. ICOS Vision Sys. Corp., 528 F.3d 1365, 1382 (Fed. Cir. 2008)). We further agree with Petitioner that a skilled artisan would have recognized that “Sullivan teaches a flexible cryptographic device that can be implemented using a variety of data transfer protocols . . . and is designed to ‘accommodate[] whatever standard is used.’” Reply 8–9 (quoting Ex. 1002 ¶ 50).” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“However, because Sullivan describes the rejection feature as alternative or additional, we find Dr. Long’s description of how a skilled artisan would have understood these teachings to be more credible. Dr. Long testifies that Sullivan’s paragraph 55 “reminds us there’s a number of ways to do this, look-up table, formula logic, whatever. It discloses the idea of you can pass some subset of commands to the encryption unit, and you can block other set of commands. It’s silent on the intersection of those two sets.” Ex. 2060, 74:3–8. Elaborating further, Dr. Long testifies: 3 Sullivan does not state expressly what becomes of the information that is rejected. Dr. Conte testifies that it is “rejected and filtered out.” Ex. 2061 ¶ 122. Dr. Long appears to be in agreement that information blocked by the rejection feature is not processed further. See Ex. 2060, 74:17–18 (testifying that “[t]here is a set of things that are blocked, which means they don’t go anywhere”). There’s a set of things that are passed to the encryption unit. There is a set of things that are blocked, which means they don’t go anywhere. And a person of ordinary skill in the art would think this through, but there could be things that are in neither set. Id. at 74:16–21. In other words, Sullivan’s description of the filter module leaves open the possibility that some of the information will be neither passed for encryption nor rejected and discarded. Thus, Sullivan’s description of the filter module does not criticize, discredit, or otherwise discourage a skilled artisan from causing certain FISes to bypass the cryptographic engine. Moreover, we agree with Petitioner that passing a PIO Setup FIS without encrypting it would have been obvious to a skilled artisan implementing Sullivan’s teachings in view of SATA Standard. As discussed above in the context of the “associated with” limitation, we agree with Petitioner that Sullivan teaches that control information should not be encrypted or decrypted. For example, Sullivan’s claim 9 describes “transmitting the encrypted data with the associated control information to the second device, where the associated control information is transmitted in an unencrypted form.” Ex. 1002, claim 9. Further, Dr. Long testifies that a skilled artisan would have known that the PIO setup FIS contains control information. Ex. 1006 ¶ 82, 179. Accordingly, we find persuasive Petitioner’s argument that it would have been obvious to pass a PIO Setup FIS from device interface to host interface without encrypting it.” slip op. at 24
Patent outcomesUS 7,900,057 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,900,057
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.