- 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 - Emnos USA Corp. v. Dunnhumby LimitedInstitution deniedPTAB · Dec 30, 2015 · CBM2015-00162 · APJ Timothy J Goodson · CBM · Institution
The Board denied institution on all challenged claims because the Petition did not establish that the ’246 patent qualifies as a covered business method patent.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We have jurisdiction under 35 U.S.C. § 324. Pursuant to 35 U.S.C. § 324(a), the Director may not authorize a covered business method patent review unless the information in the petition, if unrebutted, “would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” As explained below, we do not institute a covered business method patent review because the Petition does not establish that the ’246 patent qualifies as a covered business method patent.” slip op. at 2
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“remains deficient. The Petition relies on the Oracle Pro*C reference as disclosing the script template limitations of the independent claims, but as Patent Owner points out, the Petition does not present evidence establishing that Oracle Pro*C qualifies as a prior art printed publication. See Pet. 32– 34; Prelim. Resp. 50–53. Petitioner asserts that Oracle Pro*C “was published in 2002” but does not point to any specific evidence of its publication or public availability in 2002. Id. at 33. If Petitioner’s assertion is based on the “March 2002” statement that appears on the cover of the Oracle Pro*C reference, that statement is hearsay, and Petitioner does not argue that any hearsay exception or exclusion applies. See Ex. 1041, 1; see also ServiceNow, Inc. v. Hewlett-Packard Co., Case IPR2015-00716, slip op. at 16 (PTAB Aug. 26, 2015) (Paper 13) (“To the extent that Petitioner relies on the date on the face of each exhibit and the indications of availability of these references for download . . . for the truth of that information, and considering that Petitioner has not established that any hearsay exception or exclusion applies, we agree [that the statements are inadmissible hearsay].”). Petitioner also argues, with citation to the testimony of Dr. Smyth, that Oracle Pro*C is a reference used by programmers who develop applications in Oracle database environments. Pet. 33 (citing Ex. 1030 ¶ 57). However, neither the Petition nor Dr. Smyth explains how or when the specific Programmer’s Guide, Release 9.2 that Petitioner relies on as the Oracle Pro*C reference (Ex. 1041) was made available to skilled artisans. Because the Petition does not establish that Oracle Pro*C qualifies as prior art, Section VIII.B. of the Petition does not remedy the deficient showing in Section III.D. of the Petition on the first consideration of the technological” slip op. at 11
§ 102 anticipationDiscretionary denialPatents in suitUS 8,214,246 - PTAB · Dec 29, 2015 · IPR2015-01499 · APJ Michael R Zecher · IPR · Institution
The Board denied institution because the Petition did not show a reasonable likelihood that claims 1–9 were obvious over Satou and Noguchi.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“5. Summary Based on the record before us, SDC has not demonstrated a reasonable likelihood that it would prevail on its assertion that claims 1–9 would have been obvious over the combination of Satou and Noguchi because SDC does not provide a sufficient rationale to combine the respective teachings of these asserted references. III. CONCLUSION Taking into account the arguments presented in Gold Charm’s Preliminary Response, we conclude that the information presented in the Petition does not demonstrate that there is a reasonable likelihood that SDC would prevail in challenging claims 1–9 of the ’534 patent as unpatentable under § 103(a). IV. ORDER In consideration of the foregoing, it is ORDERED that the Petition is DENIED and no trial is instituted.” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“On the present record, we are not persuaded that SDC has articulated a sufficient rationale to combine the teachings of Satou and Noguchi. With respect to SDC’s assertion that the teachings of Satou and Noguchi are capable of being combined because both of these references solve the same problem using essentially the same structure, this assertion, at best, indicates that Satou and Noguchi are analogous art to each other. Merely asserting that these prior art references are analogous art to each other, however, does not suffice as an articulated reason with a rational underpinning to combine their respective teachings—more is required to support the legal conclusion of obviousness. See KSR, 550 U.S. at 418. With respect to SDC’s assertion that one of ordinary skill in the art would have implemented components of Satou’s active matrix substrate in accordance with the configurations taught by Noguchi, this assertion lacks a convincing rationale as to why one of ordinary skill in the art would have looked to Noguchi for guidance as to how these components disclosed in Satou should be re-configured in the manner required by independent claim 1. Based on this assertion, we understand SDC to argue that the components disclosed in Satou’s active matrix substrate account for all the features required by independent claim 1, but these components are not configured in the same manner required by this claim. We further understand SDC to argue that one of ordinary skill in the art would have looked to the configurations taught by Noguchi in order to achieve the particular configuration of features required by independent claim 1. Without engaging in impermissible hindsight reconstruction, it is not clear to us why one of ordinary skill in the art would have looked to the configurations taught by Noguchi, especially given that, according to SDC, Noguchi solves the same problem as Satou using essentially the same structure. See Grain Processing Corp. v. Am.-Maize Prods. Co., 840 F.2d 902, 907 (Fed. Cir. 1988) (quoting Orthopedic Equip. Co. v. United States, 702 F.2d 1005, 1012 (Fed. Cir. 1983)) (“Care must be taken to avoid hindsight reconstruction by using ‘the patent in suit as a guide through the maze of prior art references, combining the right references in the right way so as to achieve the result of the claims in suit.”’).” slip op. at 15
- Expert testimonyPetitioner expert discountedDecided for patent owner
“We also are not persuaded by the supporting testimony of Mr. Credelle regarding SDC’s rationale to combine the teachings of Satou and Noguchi because it essentially repeats the arguments advanced by SDC in its Petition. Compare Pet. 38–40, with Ex. 1006 ¶¶ 76, 77. For instance, Mr. Credelle testifies that one of ordinary skill in the art would have combined the teachings of Satou and Noguchi because they solve the same problem using essentially the same structure. Ex. 1006 ¶ 76 (citing Ex. 1003, 1:52– 56; Ex. 1004, 2:38–41). Similar to our explanation above, simply demonstrating that these prior art references are analogous art to each other does not suffice as an articulated reason with a rational underpinning to combine their respective teachings—more is required to support the legal conclusion of obviousness. See KSR, 550 U.S. at 418. Mr. Credelle also testifies that one of ordinary skill in the art would have implemented components of Satou’s active matrix substrate in accordance with the configurations taught by Noguchi. Ex. 1006 ¶ 76. Similar to our explanation above, without engaging in impermissible hindsight reconstruction, it is not clear to us why one of ordinary skill in the art would have looked to the configurations taught by Noguchi, especially given that, according to SDC, Noguchi solves the same problem as Satou using essentially the same structure. See Grain Processing, 840 F.2d at 907.” slip op. at 17
§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,211,534 - Ipr2015-01434Institution deniedPTAB · Dec 28, 2015 · IPR2015-01434 · IPR · Institution
The supplied document unit is blank, so the institution outcome and basis cannot be verified.
NonePatents in suitUS 7,908,343 - Terremark North America LLC / Verizon Business Network Services Inc. et al. v. Joao Control & Monitoring Systems, LLCInstitution deniedPTAB · Dec 28, 2015 · IPR2015-01486 · APJ Jason J Chung · IPR · Institution
The Board denied institution on all challenged claims because the petition was filed outside § 315(b)’s one-year time bar.
RulingsInstitution decision- PTAB / AIA Trials › §315(b) time barInstitution denied time barInstitution denied
“An inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent” (emphasis added). 35 U.S.C. § 315(b). Petitioner acknowledges that Terremark North America LLC, Verizon Business Network Services Inc., Verizon Services Corp., Time Warner Cable Inc., iControl Networks Inc., CoxCom, LLC, Verizon Communications Inc., Verizon Corporate Resources Group, LLC, and Verizon Data Services LLC are real-parties-in-interest. Pet. 1–2. Petitioner also acknowledges that Terremark North America LLC, Verizon Communications Inc., and Time Warner Cable Inc. were served with a complaint on June 23, 2014. Exs. 2003, 2005. Inter partes review is precluded for at least the reasons that Terremark North America LLC and Verizon Communications Inc. are real parties-in-interest and were served with a complaint on June 23, 2014. 35 U.S.C. § 315(b). slip op. at 14
- PTAB / AIA Trials › Real party in interest / privityDecided for patent owner
“An inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent” (emphasis added). 35 U.S.C. § 315(b). Petitioner acknowledges that Terremark North America LLC, Verizon Business Network Services Inc., Verizon Services Corp., Time Warner Cable Inc., iControl Networks Inc., CoxCom, LLC, Verizon Communications Inc., Verizon Corporate Resources Group, LLC, and Verizon Data Services LLC are real-parties-in-interest. Pet. 1–2. Petitioner also acknowledges that Terremark North America LLC, Verizon Communications Inc., and Time Warner Cable Inc. were served with a complaint on June 23, 2014. Exs. 2003, 2005. Inter partes review is precluded for at least the reasons that Terremark North America LLC and Verizon Communications Inc. are real parties-in-interest and were served with a complaint on June 23, 2014. 35 U.S.C. § 315(b). CoxCom, LLC, is precluded additionally from filing the Petition for other reasons. In PNC Bank, N.A. et al. v. Maxim Integrated Prods., Inc., Case CBM2014-00041 (PTAB June 3, 2014) (Paper No. 19), the Board addressed a Motion of Adverse Judgement against PNC. In PNC Bank, PNC, one of three petitioners, violated 35 U.S.C. § 325(a)(1) by filing the petition for covered business method review (“CBM”) after it had filed a district court suit challenging the validity of the patent challenged in the CBM. In an attempt to eliminate the statutory bar against PNC, PNC moved for entry of adverse judgment against it in the CBM proceeding and 14 contended that other petitioners could proceed with the petition without further involvement by PNC. The Board denied institution on the CBM petition and dismissed the motion because PNC already had exerted substantial control over the case, and granting PNC’s request for adverse judgment would not obviate the control that PNC already had exerted. Id., slip op. at 4. Similarly, Terremark North America LLC and the named Verizon entities in this case already have exerted substantial control over the case by participating in filing the Petition, appointing counsel, etc. The presence of CoxCom, LLC, therefore, does not remove the statutory bar. slip op. at 14
Discretionary denialPatents in suitUS 6,549,130 - Terremark North America LLC / Verizon Business Network Services Inc. et al. v. Joao Control & Monitoring Systems, LLCInstitution deniedPTAB · Dec 28, 2015 · IPR2015-01482 · APJ Jason J Chung · IPR · Institution
The Board denied institution on all challenged claims because the petition was filed outside the one-year time bar under 35 U.S.C. § 315(b).
RulingsInstitution decision- PTAB / AIA Trials › §315(b) time barInstitution denied time barDenied
“An inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent” (emphasis added). 35 U.S.C. § 315(b). Petitioner acknowledges that Terremark North America LLC, Verizon Communications Inc., Verizon Services Corp., Verizon Communications Inc., Verizon Corporate Resources Group, LLC, and Verizon Data Services LLC are real-parties-in-interest. Pet. 1–2. Petitioner also acknowledges that Terremark North America LLC and Verizon Communications Inc. were 14 served with a complaint on June 23, 2014. Ex. 2003. Inter partes review is precluded for at least the reasons that Terremark North America LLC and Verizon Communications Inc. are real parties-in-interest and were served with a complaint on June 23, 2014. 35 U.S.C. § 315(b). slip op. at 14
- BurdenDecided for patent owner
“Petitioner was served with a complaint alleging infringement. 35 U.S.C. § 315(b); 37 C.F.R. § 42.101(b). Moreover, a petition is only accorded a filing date once (1) a petition has been filed; (2) payment has been made; and (3) the complete petition is served on the patent owner. 35 U.S.C. § 312(a); 37 C.F.R. § 42.106(a). The Board has discretion to waive non-statutory requirements per 37 C.F.R. § 42.5(b). In addition, our rules permit a party to file a motion to correct a “clerical or typographical mistake.” 37 C.F.R. § 42.104(c). The burden of proof rests with the moving party, which is, in this case, Petitioner. 37 C.F.R. § 42.20(c); Motion 2.” slip op. at 7
- PTAB / AIA Trials › Real party in interest / privityDecided for patent owner
“Petitioner acknowledges that Terremark North America LLC, Verizon Communications Inc., Verizon Services Corp., Verizon Communications Inc., Verizon Corporate Resources Group, LLC, and Verizon Data Services LLC are real-parties-in-interest. Pet. 1–2. Petitioner also acknowledges that Terremark North America LLC and Verizon Communications Inc. were 14 served with a complaint on June 23, 2014. Ex. 2003. Inter partes review is precluded for at least the reasons that Terremark North America LLC and Verizon Communications Inc. are real parties-in-interest and were served with a complaint on June 23, 2014. 35 U.S.C. § 315(b). CoxCom, LLC, is precluded additionally from filing the Petition for other reasons. In PNC Bank, N.A. et al. v. Maxim Integrated Prods., Inc., Case CBM2014-00041 (PTAB June 3, 2014) (Paper No. 19), the Board addressed a Motion of Adverse Judgement against PNC. In PNC Bank, PNC, one of three petitioners, violated 35 U.S.C. § 325(a)(1) by filing the petition for covered business method review (“CBM”) after it had filed a district court suit challenging the validity of the patent challenged in the CBM. In an attempt to eliminate the statutory bar against PNC, PNC moved for entry of adverse judgment against it in the CBM proceeding and contended that other petitioners could proceed with the petition without further involvement by PNC. The Board denied institution on the CBM petition and dismissed the motion because PNC already had exerted substantial control over the case, and granting PNC’s request for adverse judgment would not obviate the control that PNC already had exerted. Id., slip op. at 4. Similarly, Terremark North America LLC and the named Verizon entities in this case already have exerted substantial control over the case by participating in filing the Petition, appointing counsel, etc. The presence of CoxCom, LLC, therefore, does not remove the statutory bar.” slip op. at 14
Discretionary denialPatents in suitUS 7,397,363 - 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 - Terremark North America LLC / Verizon Communications Inc. et al. v. Joao Control & Monitoring Systems, LLCInstitution deniedPTAB · Dec 28, 2015 · IPR2015-01485 · APJ Jason J Chung · IPR · Institution
The Board denied institution on all challenged claims because the petition was filed after the one-year time bar in § 315(b).
RulingsInstitution decision- PTAB / AIA Trials › §315(b) time barInstitution denied time barDenied
“Petitioner was served with a complaint alleging infringement. 35 U.S.C. § 315(b); 37 C.F.R. § 42.101(b). Moreover, a petition is only accorded a filing date once (1) a petition has been filed; (2) payment has been made; and (3) the complete petition is served on the patent owner. 35 U.S.C. § 312(a); 37 C.F.R. § 42.106(a). The Board has discretion to waive non-statutory requirements per 37 C.F.R. § 42.5(b). In addition, our rules permit a party to file a motion to correct a “clerical or typographical mistake.” 37 C.F.R. § 42.104(c). The burden of proof rests with the moving party, which is, in this case, Petitioner. 37 C.F.R. § 42.20(c); Motion 2.” slip op. at 7
- PTAB / AIA Trials › Real party in interest / privityInstitution denied time barDecided for patent owner
“the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent” (emphasis added). 35 U.S.C. § 315(b).” slip op. at 13
Discretionary denialPatents in suitUS 7,397,363 - Terremark North America LLC / Verizon Business Network Services Inc. et al. v. Joao Control & Monitoring Systems, LLCInstitution deniedPTAB · Dec 28, 2015 · IPR2015-01484 · APJ Jason J Chung · IPR · Institution
The Board denied institution on all challenged claims because the petition was filed, served, and paid one day after the § 315(b) one-year time bar.
RulingsInstitution decision- PTAB / AIA Trials › §315(b) time barInstitution denied time barInstitution denied
“Petitioner was served with a complaint alleging infringement. 35 U.S.C. § 315(b); 37 C.F.R. § 42.101(b). Moreover, a petition is only accorded a filing date once: (1) a petition has been filed; (2) payment has been made; and (3) the complete petition is served on the patent owner. 35 U.S.C. § 312(a); 37 C.F.R. § 42.106(a). The Board has discretion to waive non-statutory requirements per 37 C.F.R. § 42.5(b). In addition, our rules permit a party to file a motion to correct a “clerical or typographical mistake.” 37 C.F.R. § 42.104(c). The burden of proof rests with the moving party, which is, in this case, Petitioner. 37 C.F.R. § 42.20(c); Motion 2. It is undisputed that at least two of the petitioning parties were served with a complaint alleging infringement of the ’010 patent on June 23, 2014. Ex. 2001 ¶¶ 1–4; Exs. 2002–2005. On June 23, 2015, Petitioner failed to comply with the statutory requirements of 35 U.S.C. § 312(a) by not paying the required fee and failing to meet the requirements of 37 C.F.R. § 42.106(a) by not filing and serving the Petition and its supporting evidence. Motion 2–6 (citing Ex. 1008 ¶¶ 1–13; Ex. 1009 ¶¶ 1–12). On June 24, 2015, one day after the one year statutory deadline, Petitioner completed filing of the Petitions at issue. Id. at 5–6 (citing Ex. 1008 ¶¶ 1– 13; Ex. 1009 ¶¶ 1–12).” slip op. at 5
Discretionary denialPatents in suitUS 7,277,010 - American Express Company / American Express Travel Related Services Company, Inc. v. Signature Systems, LLCInstitution deniedPTAB · Dec 28, 2015 · CBM2015-00153 · APJ Michael P Tierney · CBM · Institution
The Board denied institution for claims 1–16 because those originally issued claims had been cancelled or amended during reexamination; it did not reach the merits.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We are persuaded that the particular facts of this proceeding counsel against institution. Our decision whether to institute a covered business method patent review must be based on the claims of the ’402 patent as it exists today. See 35 U.S.C. § 324(a). Petitioner challenged original claims 1–16, which Patent Owner has either cancelled or amended during ex parte reexamination. See Ex. 3001. Original claims 1–16, as challenged by Petitioner, no longer exist, and any decision as to the patentability of original claims 1–16 we might reach in this proceeding would be moot and purely advisory. We do not see how the efficient administration of the Office, or the just, speedy, and inexpensive resolution of every proceeding, would be secured by instituting a covered business method patent review in this proceeding. 37 C.F.R. § 42.1(b). In denying institution, we do not reach the merits of the unpatentability arguments in the Petition, and express no opinion on those arguments at this time. Furthermore, based on the current record, we agree with Patent Owner that Petitioner is not prejudiced as they may elect to file a new Petition directed to the amended claims.3” slip op. at 8
Discretionary denialPatents in suitUS 8,423,402
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.