- Target Corporation v. Destination Maternity CorporationInstitution deniedPTAB · Sep 25, 2014 · IPR2014-00509 · APJ Michael J Fitzpatrick · IPR · Institution
The Board denied institution because the petition was filed more than one year after Target was served with an infringement complaint, barring review under § 315(b).
RulingsInstitution decision- PTAB / AIA Trials › §315(b) time barInstitution denied time barDenied
“The instant Petition, accorded a filing date of March 14, 2014, was filed more than one year after Petitioner was served with the complaint alleging infringement of the ’531 patent. See Paper 5. We may not institute an inter partes review when “the petition . . . is filed more than 1 year after the date on which the petitioner, . . . is served with a complaint alleging infringement of the patent.” 35 U.S.C. § 315(b). Section 315(b) further states this “time limitation . . . shall not apply to a request for joinder under subsection (c).” Id. Thus, it does not apply to a person’s request to “join as a party to that [i.e., a previously instituted] inter partes review.” 35 U.S.C. § 315(c).2 However, the time limitation does apply to that person’s petition.” slip op. at 3
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“filed more than one year after Petitioner was served with the complaint alleging infringement of the ’531 patent. See Paper 5. We may not institute an inter partes review when “the petition . . . is filed more than 1 year after the date on which the petitioner, . . . is served with a complaint alleging infringement of the patent.” 35 U.S.C. § 315(b). Section 315(b) further states this “time limitation . . . shall not apply to a request for joinder under subsection (c).” Id. Thus, it does not apply to a person’s request to “join as a party to that [i.e., a previously instituted] inter partes review.” 35 U.S.C. § 315(c).2 However, the time limitation does apply to that person’s petition.” slip op. at 3
Discretionary denial - Lenroc Company v. Enviro Tech Chemical Services, Inc.Institution deniedPTAB · Jul 24, 2014 · IPR2014-00382 · APJ Linda M Gaudette · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood of proving any challenged claim unpatentable under the asserted anticipation and obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“3. Analysis “It is axiomatic that for anticipation, each and every claim limitation must be explicitly or inherently disclosed in the prior art.” In re NTP, INC., 654 F.3d 1279, 1302 (Fed. Cir. 2011) (citations omitted). “The anticipation analysis asks solely whether the prior art reference discloses and enables the claimed invention, and not how the prior art characterizes that disclosure or whether alternatives are also disclosed.” Hewlett-Packard Co. v. Mustek Sys., Inc., 340 F.3d 1314, 1324 n.6 (Fed. Cir. 2003).” slip op. at 14
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“G. Analysis Based on our review of the Specification and related prior art, we agree with Patent Owner that one of ordinary skill in the art at the time of the invention would have understood that a wetcake is a wet solid, which physically differs from a dry solid. See Ex. 1001, claims 7, 11, and 12 (requiring a step of drying monoalkali metal cyanurate wetcake to produce a dry solid); Ex. 1001, 7:3-5, 9:16-18 (“[w]hen the cyanuric acid is dry, virgin material, sufficient water may be added so that it can be processed as if it were cyanuric acid wetcake”), id. at 8:60-61, 9:35-39 (describing preparation of a dry solid monoalkali metal cyanurate by drying a monoalkali metal cyanurate wetcake); Ex. 1005, 1:66-68, 2:1, 9-12 (disclosing cyanuric acid is commercially available in powder and granular forms, or in cake/wetcake form); Ex. 1004, 1:17-20, 28-29 (disclosing cyanuric acid is typically available in dry, granulated form and that cyanuric acid in slurry form may settle and form hard cakes); Shimamura 2:39-42 (“Sodium cyanurate that is obtained by the process according to the invention has rich fluidity and is free from any cakes. Thus, it can be used in the form of powder.”). One of ordinary skill in the art would have understood that a wetcake and a powder may have the same moisture content, yet differ physically in that the particles of a wetcake are capable of adhering together to form a cake, while the particles of a powder do not adhere to each other, but are free flowing. Compare Ex. 1005, 2:9-12 (a wet cake of cyanuric acid containing from about 65-99% cyanuric acid) with Shimamura, 1:44- 45 (“wherein at least one of said starting materials in powder form is a hydrate”). Therefore, we interpret the claim term “wetcake” as meaning a solid material comprising particles having some adherence to one another such that they are not free flowing. We do not adopt Declarant’s proposed construction of “wetcake of monoalkali metal cyanurate” as necessarily encompassing material in the form of a hydrate, see Ex. 1006, 10, ¶ 11c, because Declarant’s testimony is at odds with the intrinsic evidence, see Shimamura 1:44-49 (“wherein at least one of said starting materials in powder form is a hydrate, or both of said starting materials are anhydrates, in which case water is added to the anhydrates in an amount sufficient to produce a hydrate at room temperature, and wherein the starting materials are mixed and kneaded together in powder form”). We find that, for purposes of this Decision, a determination as to the specific moisture content of a “cyanuric acid wetcake” or a “wetcake of a monoalkali metal cyanurate” is unnecessary.” slip op. at 11
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentable
“3. Analysis “It is axiomatic that for anticipation, each and every claim limitation must be explicitly or inherently disclosed in the prior art.” In re NTP, INC., 654 F.3d 1279, 1302 (Fed. Cir. 2011) (citations omitted). “The anticipation analysis asks solely whether the prior art reference discloses and enables the claimed invention, and not how the prior art characterizes that disclosure or whether alternatives are also disclosed.” Hewlett-Packard Co. v. Mustek Sys., Inc., 340 F.3d 1314, 1324 n.6 (Fed. Cir. 2003).” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“C. Obviousness Grounds Petitioner argues claim 10 would have been obvious over Stephan in view of Jany, claims 11 and 12 would have been obvious over Stephan in view of Doonan, and claims 1-9 would have been obvious over Stephan in view of Jany and Doonan. Those grounds depend on Petitioner’s contention that Stephan describes a “wetcake” as specified in the challenged claims. For the reasons stated above, on this record, Petitioner fails to show that Stephan contains such a disclosure, and neither Jany nor Doonan remedies that failure. Based on the information presented, Petitioner has not shown a reasonable likelihood of prevailing at trial with respect to any claim challenged in the remaining grounds.” slip op. at 15
Claim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 7,728,132 - Catapult Innovations Pty Ltd v. Adidas AGInstitution deniedPTAB · Jul 18, 2014 · DER2014-00006 · APJ Jameson Lee · DER · Institution
The Board denied institution of a derivation proceeding for claims 1–10, 12–29, and 31 because the evidence did not support that any challenged claim was derived.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“The threshold showing for institution of a derivation proceeding is whether the petition demonstrates substantial evidence, which if unrebutted, would support the assertion of derivation.1 35 U.S.C. § 135(a); 37 C.F.R. § 42.405(c). Once a derivation proceeding has been instituted, the standard of proof for establishing that a challenged claim constitutes a derived invention is by a preponderance of the evidence. 37 C.F.R. § 42.1(d). For reasons discussed below, Catapult’s Petition to institute a derivation proceeding is denied.” slip op. at 2
- BurdenDenied
“Regardless of which claim serves as Catapult’s qualifying claim, however, Catapult failed to identify and keep a consistent D between the P to D analysis and the D to R analysis. Catapult evidently regards all communicated information as the disclosed invention D in the D to R analysis, but has not identified any of its own claims as being the same or substantially the same as all of that communicated information. In this case, the P to D and the D to R analysis are not aligned.” slip op. at 16
- Expert testimonyOther
“In his declaration (Ex. 1012), Mr. Holthouse does not assert that he “conceived” of any of the features and functionalities disclosed to the Adidas Team on October 19–20, 2010, much less “conceived” an invention which includes all such disclosed features and functionalities. The testimony of Mr. Holthouse does not support an assertion of invention by Mr. Holthouse with regard to what was disclosed to the Adidas Team. The declaration of Mr. Millar is no different. Mr. Millar’s testimony does not corroborate any “conception” of invention by Mr. Holthouse. The testimony of the two witnesses is concerned only with possession and communication, not “conception” of a disclosed invention.” slip op. at 18
NonePatents in suitUS 9,141,759 - Catapult Innovations Pty Ltd v. Adidas AGInstitution deniedPTAB · Jul 18, 2014 · DER2014-00005 · APJ Jameson Lee · DER · Institution
The Board denied institution of a derivation proceeding for claims 1–16, 18–20, 22–26, and 29–32 because Catapult did not show prior conception and communication of the disclosed invention.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“As we noted in Section A above, to prove derivation, the party asserting derivation must establish prior conception of the claimed subject matter and communication of that conception to an inventor of the other party. Cooper, 154 F.3d at 1332; Price, 988 F.2d at 1190; Hedgewick, 497 F.2d at 908. There can be no derivation without prior conception on the part of the party alleging derivation. Davis, 620 F.2d at 889; Egnot, 387 F.2d at 687. A charge of derivation addresses originality—who invented the subject matter at issue. Price, 988 F.2d at 1191. Derivation is about prior “conception” and communication of the prior “conception,” and not about prior possession and communication of the prior “possession.”” slip op. at 18
- BurdenDecided for patent owner
“As we noted in Section A above, to prove derivation, the party asserting derivation must establish prior conception of the claimed subject matter and communication of that conception to an inventor of the other party. Cooper, 154 F.3d at 1332; Price, 988 F.2d at 1190; Hedgewick, 497 F.2d at 908. There can be no derivation without prior conception on the part of the party alleging derivation. Davis, 620 F.2d at 889; Egnot, 387 F.2d at 687. A charge of derivation addresses originality—who invented the subject matter at issue. Price, 988 F.2d at 1191. Derivation is about prior “conception” and communication of the prior “conception,” and not about prior possession and communication of the prior “possession.”” slip op. at 18
NonePatents in suitUS 9,317,660 - Catapult Innovations Pty Ltd v. Adidas AGInstitution deniedPTAB · Jul 18, 2014 · DER2014-00002 · APJ Jameson Lee · DER · Institution
The Board denied institution because Catapult did not show prior conception and communication of the disclosed invention, as required to establish derivation.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“The threshold showing for institution of a derivation proceeding is whether the petition demonstrates substantial evidence, which if unrebutted, would support the assertion of derivation.1 35 U.S.C. § 135(a); 37 C.F.R. § 42.405(c). Once a derivation proceeding has been instituted, the standard of proof for establishing that a challenged claim constitutes a derived invention is by a preponderance of the evidence. 37 C.F.R. § 42.1(d). For reasons discussed below, Catapult’s Petition to institute a derivation proceeding is denied.” slip op. at 2
- BurdenDenied
“As we noted in Section A above, to prove derivation, the party asserting derivation must establish prior conception of the claimed subject matter and communication of that conception to an inventor of the other party. Cooper, 154 F.3d at 1332; Price, 988 F.2d at 1190; Hedgewick, 497 F.2d at 908. There can be no derivation without prior conception on the part of the party alleging derivation. Davis, 620 F.2d at 889; Egnot, 387 F.2d at 687. A charge of derivation addresses originality—who invented the subject matter at issue. Price, 988 F.2d at 1191. Derivation is about prior “conception” and communication of the prior “conception,” and not about prior possession and communication of the prior “possession.”” slip op. at 18
NonePatents in suitUS 9,767,257 - PTAB · Apr 24, 2014 · IPR2014-00107 · APJ Kristen L Droesch · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–7 were unpatentable over Goda or the asserted combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We are persuaded that Petitioner’s arguments and supporting evidence do not demonstrate sufficiently that Goda describes a contact hole dimensioned along the major axis so as to maintain focus of an image of the contact hole as the minor axis is reduced in size towards a DOF limit. To the extent that Petitioner asserts that a “DOF margin” is synonymous with a “DOF limit,” Petitioner’s arguments remain unavailing. Petitioner’s assertion that the DOF margin discussed in the ’922 Patent is a type of processing margin discussed in Goda (Pet. 18) (i.e., Goda’s processing margin describes a DOF margin) is not supported by a sufficient underlying factual basis. Ex. 1002 ¶ 48; 37 C.F.R. § 42.65(a). Thus, on the record before us, Petitioner does not demonstrate a reasonable likelihood of prevailing on its assertion that Goda anticipates independent claim 1, and claims 6 and 7 dependent therefrom. 2. 35 U.S.C. § 103 Grounds of Unpatentability for Claims 1–7 We are persuaded that, as applied by Petitioner, none of the An, Kim, Toshiba, or Lee references remedies Goda’s deficiency in teaching “the contact hole is dimensioned along the major axis so as to maintain focus of an image of the contact hole as the minor axis is reduced in size towards a DOF limit.” Prelim. Resp. 30–31; see Pet. 30–58. Petitioner does not rely on any reference other than Goda for this limitation. Therefore, Petitioner does not establish a reasonable likelihood of prevailing on its assertions that claim 1, and claims 2–7, dependent therefrom, would have been obvious over the following combinations of references: (1) Goda and An; (2) Goda, An, and/or Kim; (3) Goda, An, and/or Kim, and Lee; (4) Goda and Toshiba; and (5) Goda, Toshiba, and Lee.” slip op. at 16
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner
“We are not persuaded by Patent Owner’s assertions that the broadest reasonable interpretation of “depth of focus” or “DOF” requires the exposed photoresist to generate line widths within specifications and adequate profiles, or otherwise requires maintaining focus throughout the entire depth of the photoresist. The ’922 Patent does not provide a sufficient factual basis to support Patent Owner’s assertions, because the ’922 Patent is silent regarding exposed photoresist and maintaining focus throughout the entire depth of the photoresist. We are persuaded that the definition in the Specification cited by Petitioner applies. Accordingly, applying the broadest reasonable interpretation, “depth of focus” and “DOF” means “the range of lens-wafer distances over which line widths are maintained within specifications and resist profiles are adequate.” Ex. 1001, col. 2, ll. 20–22.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for petitioner
“2. “DOF Limit” Petitioner and Patent Owner do not provide a proposed construction for “DOF limit,” as recited in claim 1. Consistent with the broadest reasonable interpretation of “depth of focus” and “DOF,” “DOF limit” means “a limit associated with the range of lens-wafer distances over which line widths are maintained within specifications and resist profiles are adequate.” See id.” slip op. at 8
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“We are persuaded that Petitioner’s arguments and supporting evidence do not demonstrate sufficiently that Goda describes a contact hole dimensioned along the major axis so as to maintain focus of an image of the contact hole as the minor axis is reduced in size towards a DOF limit. To the extent that Petitioner asserts that a “DOF margin” is synonymous with a “DOF limit,” Petitioner’s arguments remain unavailing. Petitioner’s assertion that the DOF margin discussed in the ’922 Patent is a type of processing margin discussed in Goda (Pet. 18) (i.e., Goda’s processing margin describes a DOF margin) is not supported by a sufficient underlying factual basis. Ex. 1002 ¶ 48; 37 C.F.R. § 42.65(a). Thus, on the record before us, Petitioner does not demonstrate a reasonable likelihood of prevailing on its assertion that Goda anticipates independent claim 1, and claims 6 and 7 dependent therefrom.” slip op. at 16
Claim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 7,018,922 - PTAB · Mar 18, 2014 · IPR2013-00626 · APJ Benjamin D M Wood · IPR · Institution
The Board denied institution on all challenged claims because Superior did not show a reasonable likelihood that the cited references taught layers permanently affixed together.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Based on the current record, we are not persuaded that Superior is reasonably likely to show that Seo teaches a flexible inner layer and an exterior hard layer permanently affixed together. As Speck points out, Seo teaches that it is “impossible” to apply a different material to the surface of the body base of the phone case. Ex. 1002, 2:7-9. Neither Superior nor Dr. Kazmer addresses this teaching or explains how it can be consistent with the notion that Seo teaches permanently affixing Seo’s soft silicone layer to the hard resin layer. On the contrary, this teaching suggests that a soft silicone layer would not adhere or bond to a hard resin layer, and thus must be attached to the hard layer in the mechanical manner that Seo teaches. Moreover, we are not persuaded that Seo’s mechanical attachment method is “permanently affixed,” such that the hard and soft layers cannot be separated without damaging the layers or the rivets that connect the layers. Superior relies on Seo’s teaching that the layers are “integrally formed” or “integrally attached” to support this contention. Pet. 10. But there is insufficient evidence in the record to persuade us that “integrally” attached necessarily means “permanently” attached. Moreover, the combination of the softness and flexibility of Seo’s inner silicone layer with the “impossibility” of applying that layer to the surface of Seo’s hard outer layer leaves open the possibility that the layers may be separated without damaging the layers or the rivets that connect the layers. Thus, we are not persuaded on the present record that Superior is reasonably likely to prevail in showing that any of the challenged claims is anticipated by Seo, would have been obvious over Seo, or would have been obvious over Seo and Cozip.” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“the written description define the term. In the absence of an express definition, it is reasonable to consult a general dictionary definition of the word for guidance in determining the ordinary and customary meaning of the claim term as viewed by a person of ordinary skill in the art. Comaper Corp. v. Antec, Inc., 596 F.3d 1343, 1348 (Fed. Cir. 2010). “Permanent” is commonly understood to mean “continuing or enduring without fundamental or marked change; stable.” MERRIAM-WEBSTER’S COLLEGIATE DICTIONARY 922 (11th ed. 2005). To “affix” means “to attach physically.” Id. at 21. Based on these definitions, the ordinary meaning of the phrase permanently affixed would be “attached physically such that the attachment continues or endures without fundamental or marked change.” Thus, a flexible inner layer and an exterior hard layer are permanently affixed when they cannot be separated without “fundamental[ly] or marked[ly] chang[ing]” – i.e., damaging – the layers or the bond between the layers. For purposes of this decision, therefore, permanently affixed, in the context of claim 1, requires that the flexible inner layer and the outer hard layer cannot be separated without damaging the layers or the bond between the layers.1” slip op. at 6
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“Based on the current record, we are not persuaded that Superior is reasonably likely to show that Seo teaches a flexible inner layer and an exterior hard layer permanently affixed together. As Speck points out, Seo teaches that it is “impossible” to apply a different material to the surface of the body base of the phone case. Ex. 1002, 2:7-9. Neither Superior nor Dr. Kazmer addresses this teaching or explains how it can be consistent with the notion that Seo teaches permanently affixing Seo’s soft silicone layer to the hard resin layer. On the contrary, this teaching suggests that a soft silicone layer would not adhere or bond to a hard resin layer, and thus must be attached to the hard layer in the mechanical manner that Seo teaches. Moreover, we are not persuaded that Seo’s mechanical attachment method is “permanently affixed,” such that the hard and soft layers cannot be separated without damaging the layers or the rivets that connect the layers. Superior relies on Seo’s teaching that the layers are “integrally formed” or “integrally attached” to support this contention. Pet. 10. But there is insufficient evidence in the record to persuade us that “integrally” attached necessarily means “permanently” attached. Moreover, the combination of the softness and flexibility of Seo’s inner silicone layer with the “impossibility” of applying that layer to the surface of Seo’s hard outer layer leaves open the possibility that the layers may be separated without damaging the layers or the rivets that connect the layers. Thus, we are not persuaded on the present record that Superior is reasonably likely to prevail in showing that any of the challenged claims is anticipated by Seo, would have been obvious over Seo, or would have been obvious over Seo and Cozip.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“The above images depict perspective and front views of the Cozip case. Ex. 1003 at 8, 10. Superior asserts that Cozip discloses a case with “an exterior hard layer ha[ving] four corner joints with cut-away portions.” Pet. 28. Superior argues that “it would have been obvious to one of ordinary skill in the art to fill the shell and corners of Cozip . . . with the flexible layer of Seo.” Id. at 33. Superior, therefore, is proposing that a person of ordinary skill would attach Seo’s soft silicone layer to Cozip’s polycarbonate case, with Cozip’s cut-away portions serving as the “dispensing portions” as taught by Seo. Superior reasons that it would be obvious to fill permanently the cut away portion of Cozip with the flexible inner layer 20 of Seo to attach tightly and integrally the inner layer 20 to Cozip’s outer layer as taught by Seo. Pet. 39 (citing Ex. 1002, 5:9-16). But Superior does not explain how attaching Seo’s inner silicone layer to Cozip’s case would result in “permanently affix[ing]” the two layers together, given that Seo teaches that it is “impossible to apply different material to the surface of the body case.” Ex. 1002, 2:7-9. Accordingly, as with the grounds based on Seo as the primary reference, we are not persuaded that Superior is reasonably likely to show that a person of ordinary skill in the art at the time of the invention would “permanently affix” Seo’s soft silicone layer to Cozip’s polycarbonate case. Therefore, we do not institute an inter partes review on any of the grounds based on Cozip as the primary reference.” slip op. at 12
Claim construction§ 102 anticipation§ 103 obviousnesscites PhillipsPatents in suitUS 8,204,561 - Mastercard International Incorporated v. John D’AgostinoInstitution deniedPTAB · Mar 7, 2014 · CBM2013-00058 · APJ Kalyan K Deshpande · CBM · Institution
The Board denied institution on claims 1-30 because Cohen and Flitcroft did not qualify as prior art for a covered business method review under AIA § 18(a)(1)(C).
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“THRESHOLD—The Director may not authorize a post-grant review to be instituted unless the Director determines that the information presented in the petition filed under section 321, if such information is not rebutted, would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable. Petitioner challenges the patentability of claims 1-30 of the ’486 patent under 35 U.S.C. §§ 102 and 103. Taking into account Patent Owner’s preliminary response, we determine that the information presented in the petition does not demonstrate that it is more likely than not that the challenged claims are unpatentable. Pursuant to 35 U.S.C. § 324(a), we deny the institution of a covered business method patent review as to claims 1-30 of the ’486 patent.” slip op. at 2
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference not prior artNot shown unpatentable
“neither Cohen nor Flitcroft was published prior to the effective filing date of the ’486 patent. As such, we agree with Petitioner that both Cohen and Flitcroft only qualify as § 102(e) references. Accordingly, neither Cohen nor Flitcroft qualifies as prior art, for a covered business methods review, under Section 18(a)(1)(C) of the AIA. Petitioner does not direct us to any further evidence to demonstrate that Cohen and Flitcroft qualify as prior art under Section 18(a)(1)(C) of the AIA. Instead, Petitioner argues that the Board previously has instituted a covered business method patent review on the basis of a reference that qualifies under § 102 (e). Pet. 15, n. 6 (citing CBM2013-00008, paper 20, 20-21, 35). Nonetheless, Section 18 (a)(1)(C) of the AIA governs what qualifies as prior art in this proceeding, and in that earlier Board proceeding the Board issued a clarifying order, effectively amending the decision to institute and withdrawing the previously instituted ground based on the § 102(e) reference, reasoning that the reference does not qualify as prior art in CBM proceedings under Section 18(a)(1)(C) of the AIA. See CBM2013- 00008, paper 24, 2-3. Because Petitioner has not demonstrated that Cohen or Flitcroft qualifies as prior art under Section 18(a)(1)(C) of the AIA, we are not persuaded that Petitioner demonstrates that it is more likely than not that claims 1-15 and 22-30 are unpatentable as being anticipated by Cohen or Flitcroft. We similarly are not persuaded that Petitioner demonstrates that it is more likely than not that claims 16-21 are unpatentable as being obvious over Cohen or Flitcroft, and Musmanno.” slip op. at 9
§ 102 anticipationPatents in suitUS 7,840,486
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.