• LG Electronics, Inc. v. Broadcom CorporationInstitution denied
  PTAB · Dec 19, 2017 · IPR2017-01624 · APJ Norman H Beamer · IPR · Institution

  The Board denied institution because Diaz did not disclose internally reprogrammable hardware accelerators, and the other grounds did not cure that deficiency.

  RulingsInstitution decision

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

    “3. Construction of “configurable” In construing this term, we have considered the specification of the ’353 patent and its prosecution history. Microsoft Corp. v. Proxycinn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015). In accord with these portions of the ’844 patent specification and file history discussed supra, we conclude that a hardware accelerator is configurable only if its functionality can be internally reprogrammed. Thus, under our construction, an accelerator selected by an API or other instrumentality would not itself be “configurable.” This will be discussed further infra.” slip op. at 8

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

    “However, as Patent Owner argues, Diaz ’353 does not explicitly or inherently disclose hardware accelerators that are configurable to perform decoding functions according to a plurality of decoding methods. In Diaz ’533 the overall decoder — as opposed to the constituent hardware accelerators — is configurable in that the processor controls which hardware accelerators are activated. Prelim. Resp. 2, 5–8. We see no meaningful distinction in this respect between Diaz ’353 and Sullivan ’021 which, as discussed above, discloses an API that is configurable to select various hardware accelerators, but which are not themselves configurable, to assist in the decoding process. See Prelim. Resp. 6. In sum, the functionality of the hardware accelerators of Diaz ’353 cannot be internally reprogrammed, but rather can only be bypassed or reused for various operations. Therefore, in accord with our claim construction set forth above, we determine that those hardware accelerators are not “configurable” as required by claim 1. Accordingly, Petitioner does not demonstrate a reasonable likelihood of prevailing on its challenge of independent claim 1 as anticipated by Diaz ’353.” slip op. at 11

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable

    “C. Obviousness of Claims 8 and 14 over Diaz ’353 and Purcell ’483, and of Claim 12 over Diaz ’353 and Fandrianto ’459 or Kim As discussed above, Petitioner has not demonstrated a reasonable likelihood of prevailing on the issue of whether Diaz ’353 discloses the claim 1 requirement of configurable hardware accelerators. Claims 8, 12, and 14 depend from claim 1 and so also include this requirement by virtue of their dependency. Petitioner’s obviousness grounds directed to these claims is premised on Petitioner’s arguments with respect to claim 1 that Diaz ’353 discloses configurable hardware accelerators. Pet. 51–63. Petitioner does not provide argument or evidence — aside from the above-considered anticipation arguments based on Diaz ’353 alone — that the combination of Diaz ’353 with Purcell ’483, Fandrianto ’459 or Kim teaches or suggests “a hardware accelerator . . . configurable to perform the decoding function according to a plurality of decoding methods.” Accordingly, Petitioner does not demonstrate a reasonable likelihood of prevailing on its challenge of claims 8 and 14 as obvious over Diaz ’353 and Purcell ’483, or of claim 12 as obvious over Diaz ’353 and Fandrianto ’459 or Kim.” slip op. at 12

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

    “Accordingly, Petitioner does not demonstrate a reasonable likelihood of prevailing on its challenge of independent claim 1 as anticipated by Diaz ’353.” slip op. at 11

  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 8,284,844
• Avita Medical Limited v. Renovacare Sciences Corp.Institution denied
  PTAB · Dec 18, 2017 · IPR2017-01243 · APJ Bart A Gerstenblith · IPR · Institution

  The Board denied institution on all grounds, finding the petition relied on the same or substantially the same prior art previously considered by the Office.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied

    “Our discretion pursuant to § 325(d) involves a balance between several competing interests. “On the one hand, there are the interests in conserving the resources of the Office and granting patent owners repose on issues and prior art that have been considered previously.” Fox Factory, Inc. v. SRAM, LLC, Case IPR2016-01876, slip op. at 7 (PTAB Apr. 3, 2017) (Paper 8). “On the other hand, are the interests of giving petitioner the opportunity to be heard and correcting any errors by the Office in allowing a patent—in the case of an inter partes review—over prior art patents and printed publications.” Id.” slip op. at 5

  Discretionary denial
  Patents in suitUS 9,610,430
• One World Technologies, Inc. D/B/A Techtronic Industries Power Equipment v. The Chamberlain Group, Inc.Institution denied
  PTAB · Dec 13, 2017 · IPR2017-01546 · APJ Jon M Jurgovan · IPR · Institution

  The Board denied institution on all challenged claims under § 314(a), finding that a majority of the General Plastic factors weighed strongly against institution.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticInstitution denied

    “or should have known of the Kikuya reference at the time of filing its first two petitions (September 9, 2016). Petitioner does not provide any explanation as to why the reference could not have been found with a reasonably diligent search at the time of the earlier petitions. See General Plastic at 11 (“Petitioner . . . provided no explanation why it could not have found this new prior art earlier— prior to filing the first-filed petitions—through the exercise of reasonable diligence.”), 19 (“the record is devoid of any explanation why Petitioner could not have found the newly asserted prior art in any earlier search(es) through the exercise of reasonable diligence”). Furthermore, what bearing the Federal Circuit’s claim construction (or those of the Board or the District Court) had on whether the Kikuya reference reasonably could have been located earlier is not explained adequately in the Petition. In this regard, we note that Petitioner states that it requested the later patent search on February 23, 2017, which was shortly after receiving our decisions denying institution in Cases IPR2016-01772 and IPR2016-01774 on February 21, 2017. Petitioner makes no mention of how this factored into the decision to request the later patent search. Moreover, Petitioner states that it requested the patent search that yielded the Kikuya reference on February 23, 2017, and the District Court adopted a “broader construction” in an order issued April 7, 2017. Pet. 7. Given this sequence of events, we do not see how the scope of the patent search could have taken into account a “broader” claim construction that did not exist when Petitioner requested the later patent search. We agree with Patent Owner that factor (2) weighs in favor of exercising our discretion to deny the Petition. See Prelim. Resp. 10–14. In view of the foregoing, this factor weighs against institution.” slip op. at 6

  Discretionary denial
  Patents in suitUS 7,224,275
• Kranos Corporation D/B/A Schutt Sports v. Riddell, Inc.Institution denied
  PTAB · Dec 13, 2017 · IPR2017-01530 · APJ Barry L Grossman · IPR · Institution

  The Board denied institution on all challenged claims and grounds under §325(d), finding substantially the same art and arguments had been presented in an earlier petition.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied

    “on behalf of the Director, may take into account whether, and reject a petition because, the same or substantially the same prior art or arguments previously were presented to the Office. 35 U.S.C. § 325(d). Because the 1530 Petition now before us presents substantially the same prior art, and substantially the same arguments, as asserted in the petition in IPR2016-01650 (see Ex. 3002) (the “1650 Petition”), we exercise our discretion under 35 U.S.C. § 325(d) and deny institution of a trial.” slip op. at 9

  Discretionary denial
  Patents in suitUS 8,938,818
• Fresenius-Kabi USA LLC v. Astrazeneca ABInstitution denied
  PTAB · Dec 11, 2017 · IPR2017-01910 · APJ Grace Karaffa Obermann · IPR · Institution

  The Board denied institution because Petitioner failed to show a reasonable likelihood that claims 1, 2, 5, and 9 were obvious over the asserted prior-art combinations.

  RulingsInstitution decision

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

    “Principles of Law A claim is unpatentable under 35 U.S.C. § 103(a) if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which that subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). “The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” Id. at 416. “If a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability.” Id. at 417. We are, nevertheless, cautioned not to “rel[y] on hindsight reasoning to piece together elements to arrive at the claimed invention.” In re NTP, Inc. 654 F.3d 1279, 1299 (Fed. Cir. 2011) (“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.” (internal quotations and citations omitted)). Thus, a finding of obviousness, “cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” KSR, 550 U.S. at 418 (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). Accordingly, a party petitioning the Board for a determination of obviousness must show that “a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation of success in doing so.” Procter & Gamble Co. v. Teva Pharm. USA, Inc., 566 F.3d 989, 994 (Fed. Cir. 2009) (quoting Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1361 (Fed. Cir. 2007)). D.” slip op. at 20

  • Other 314aDecided for petitioner

    “There is no doubt that the Petition was prepared using our prior Mylan Decision as a roadmap in an attempt to cure deficiencies that led to our denial of trial in the Mylan IPR. Id. at 9–12. The Petition repeatedly refers to our Mylan Decision, and is structured to address deficiencies that we identified in the record of the prior proceeding. See id. passim. Patent Owner requests that we exercise our discretion to deny the Petition on the basis that it uses a previous Board decision “as a ‘roadmap’ to address challenges that were advanced, unsuccessfully,” in the Mylan IPR. Prelim. Resp. 6 (quotation omitted). The Mylan IPR, however, involved a different petitioner (Mylan) and a different patent (the related ’680 patent). Based on the particular facts of this case, we decline to issue a discretionary denial and, instead, consider the Petition on its merits. Nevertheless, we approach this case cognizant that the ’680 patent (at” slip op. at 22

  • Skill levelOther

    “Person of Ordinary Skill in the Art. The parties propose similar, albeit non-identical, definitions of one of ordinary skill in the art, both of which are consistent with the high level of ordinary skill demonstrated by the prior art asserted in the Petition. See Pet. 18; Prelim. Resp. 20. Discerning no present conflict between the parties’ proposals, we rely on the level of ordinary skill in the art of developing and treating hormone-dependent diseases of the breast as demonstrated by the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). B.” slip op. at 19

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “experiment in McLeskey that involved powdered—not oil-based— fulvestrant. Prelim. Resp. 50 (citing Pet. 24; Ex. 1014 ¶ 45, 52; Ex. 1008, 707, Fig. 8; Ex. 2002 ¶¶ 93, 161–162). Accordingly, we agree with Patent Owner that this new testimony does not address the Board’s question of in vivo bioavailability, which requires an oil-based fulvestrant formulation. Id. (citing Ex. 1011, 28; Ex. 2162, 28; Ex. 2001 ¶¶ 176, 185, 234–243); see Ex. 1046, 729 (Examiner’s finding that “the unexpected solubility and the bioavailability of using the specific solvent mixture as recited have been demonstrated”). Patent Owner asserts that Petitioner attempts to rewrite the plain disclosure of McLeskey, by raising opinion testimony directed to what the McLeskey authors may have “hoped” to achieve. Prelim. Resp. 18 (citing Pet. 56–57). We agree. As Patent Owner points out, the testimony of Dr. El-Ashry “reverses McLeskey’s conclusion of ‘treatment failure’ . . . and instead claims it was a ‘successful treatment.’” Id. at 5. We accord little weight to the testimony of Dr. El-Ashry, which was executed nearly two decades after McLeskey was published, because it runs counter to the statement of McLeskey within its four corners—“treatment failure,” which was reported at or near the time of the experiments. Ex. 1008, 706.” slip op. at 28

  Claim construction§ 103 obviousnessDiscretionary denialcites KSR
  Patents in suitUS 6,774,122
• Fresenius-Kabi USA LLC v. Astrazeneca ABInstitution denied
  PTAB · Dec 11, 2017 · IPR2017-01912 · APJ Zhenyu Yang · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1, 3, 10, 11, 13, or 20 would have been obvious.

  RulingsInstitution decision

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

    “Institution of an inter partes review is authorized by statute when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314; see 37 C.F.R. §§ 42.4, 42.108. Upon considering the Petition and the Preliminary Response, we determine that Petitioner has not shown a reasonable likelihood that it would prevail in showing the unpatentability of at least one challenged claim. Accordingly, we decline to institute an inter partes review of the ’139 Patent.” slip op. at 2

  • PTAB / AIA Trials › Discretionary denialDenied

    “There is no doubt that the Petition was prepared using our prior Mylan Decision as a roadmap in an attempt to cure deficiencies that led to our denial of trial in the Mylan IPR. See id. at 9–11. The Petition repeatedly refers to our Mylan Decision, and is structured to address deficiencies that we identified in the record of the prior proceeding. See id. passim. Patent Owner requests that we deny the Petition on the basis that it uses a previous Board decision “as a ‘roadmap’ to address challenges that were advanced, unsuccessfully,” in the Mylan IPR. Prelim. Resp. 6 (quotation omitted). The Mylan IPR, however, involved a different petitioner (Mylan) and a different patent (the related ’680 patent). Based on the particular facts of this case, we decline to issue a discretionary denial and, instead, consider the Petition on its merits.” slip op. at 22

  • Skill levelSkill level board ownDecided for patent owner

    “ANALYSIS A. Person of Ordinary Skill in the Art The parties propose similar, albeit non-identical, definitions of one of ordinary skill in the art, both of which are consistent with the high level of ordinary skill demonstrated by the prior art asserted in the Petition. See Pet. 17–18; Prelim. Resp. 20. Discerning no present conflict between the parties’ proposals, we rely on the level of ordinary skill in the art of developing and treating hormone dependent diseases of the breast as demonstrated by the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 19

  • Prior constructionPrior construction adoptedDecided for petitioner

    “In the Mylan IPR, we determined the meaning of several claim terms of the ’680 Patent. See Ex. 1011, 15–18. The parties contend that the terms of the ’139 Patent claims should be interpreted in accord with our prior construction. Pet. 18–19; Prelim. Resp. 20. We agree.” slip op. at 20

  Claim construction§ 103 obviousnessDiscretionary denialcites KSR
  Patents in suitUS 8,466,139
• Ipr2017-01910Institution denied
  PTAB · Dec 11, 2017 · IPR2017-01910 · IPR · Institution

  The supplied document contains only a blank unit, so the institution outcome and its basis cannot be determined from the text.

  None
  Patents in suitUS 6,774,122
• CSL Behring GmbH / CSL Behring LLC v. Shire Viropharma Inc.Institution denied
  PTAB · Dec 7, 2017 · IPR2017-01512 · APJ Lora M Green · IPR · Institution

  Institution was denied for claims 1-18: Schranz was not shown to be prior art, and the Jiang ground was denied under §325(d) because the same art and arguments were previously presented.

  RulingsInstitution decision

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

    “may request to cancel . . . claims of a patent only on a ground that could be raised under section 102 or 103 and only on the basis of prior art consisting of patents or printed publications.” Before considering the ground before us based on Schranz, we must address whether Petitioner has provided a sufficient threshold showing that Schranz constitutes prior art under 35 U.S.C. § 102—a legal question based on underlying factual determinations. Panduit Corp. v. Dennison Mfg. Co., 810 F.2d 1561, 1568” slip op. at 6

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

    “As was the case in Dep’t of Justice, the use of a joint declaration “invites innumerable practical difficulties in cross-examining the witnesses, in assessing the reliability of the statements made, and in evaluating the weight to be accorded to the opinions expressed.” Dep’t of Justice 10. For example, Dr. Machnig and Mr. Waldhauser declare in “our recollection.” Ex. 1013-A ¶ 4. It is unclear how two different declarants can have the same “recollection.” In addition, the declarants state that “[h]andouts of the poster . . . [were] picked up by us.” Id. ¶ 5. It is unclear from the Joint Declaration, however, if both declarants were together when the hand-out was picked-up, or if each declarant picked up the handout at separate times. We, therefore, afford the Joint Declaration of Dr. Machnig and Mr. Waldhauser little weight. See Dep’t of Justice 11. As it is the primary evidence on which Petitioner relies to demonstrate that Schranz is prior art, we determine that Petitioner has not made a threshold showing that Schranz is prior art to the ’111 patent. As Petitioner has not sufficiently demonstrated that Schranz is prior art to the ’111 patent, we determine that the Petition does not demonstrate a reasonable likelihood that challenged claims 1‒18 are rendered obvious by the combination of Schranz (as evidenced by Cinryze Label and Bock), Gatlin, Pharming, and Levi.” slip op. at 9

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied

    “In the instant proceeding, we agree with Patent Owner that Petitioner is essentially making the same arguments as to obviousness over Jiang that the Examiner already considered. The prosecution history demonstrates that the Examiner considered many of the same issues with respect to the Schranz Declaration as Petitioner is arguing here. Although the Examiner noted in allowing the claims that Applicant Shire had established the secondary consideration of long-felt need and failure of others, the Examiner also stated that the art did not suggest the claimed dosage. We determine, therefore, that the Examiner did address the Schranz Declaration, and the Examiner’s concerns are similar to those raised by Petitioner in the instant proceeding. That is, as the Examiner stated: The Examiner has considered the arguments found in Dr. Schranz’s declaration concerning difficulty in higher concentration formulation. However, Dr. Schranz’s declaration provides little more than an assertion that it is difficult to reach such a concentration formulation, as opposed to actual evidence establishing that this (1) was a recognized problem in the art and (2) was generally not achievable via other means. Ex. 1001-B, 3041. Thus, the Examiner did acknowledge the lack of supporting evidence in the Schranz Declaration demonstrating that it was difficult to reach the claimed concentration.” slip op. at 13

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “As was the case in Dep’t of Justice, the use of a joint declaration “invites innumerable practical difficulties in cross-examining the witnesses, in assessing the reliability of the statements made, and in evaluating the weight to be accorded to the opinions expressed.” Dep’t of Justice 10. For example, Dr. Machnig and Mr. Waldhauser declare in “our recollection.” Ex. 1013-A ¶ 4. It is unclear how two different declarants can have the same “recollection.” In addition, the declarants state that “[h]andouts of the poster . . . [were] picked up by us.” Id. ¶ 5. It is unclear from the Joint Declaration, however, if both declarants were together when the hand-out was picked-up, or if each declarant picked up the handout at separate times. We, therefore, afford the Joint Declaration of Dr. Machnig and Mr. Waldhauser little weight. See Dep’t of Justice 11. As it is the primary evidence on which Petitioner relies to demonstrate that Schranz is prior art, we determine that Petitioner has not made a threshold showing that Schranz is prior art to the ’111 patent. As Petitioner has not sufficiently demonstrated that Schranz is prior art to the ’111 patent, we determine that the Petition does not demonstrate a reasonable likelihood that challenged claims 1‒18 are rendered obvious by the combination of Schranz (as evidenced by Cinryze Label and Bock), Gatlin, Pharming, and Levi.” slip op. at 9

  § 102 anticipationDiscretionary denial
  Patents in suitUS 9,616,111
• International Business Machines Corp. v. Groupon, Inc.Institution denied
  PTAB · Dec 5, 2017 · IPR2017-01452 · APJ James A Tartal · IPR · Institution

  The Board denied institution on all challenged claims because the Petition did not show a reasonable likelihood of prevailing on either obviousness ground.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
  • PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Decided for petitioner

    “1 U.S. Patent No. 7,593,740 B2, issued September 22, 2009 (Ex. 1108, “Crowley”). 2 U.S. Patent App. Pub. No. 2003/0004802 A1, published January 2, 2003 (Ex. 1109, “Callegari”). 3 Patent Owner argues that we should exercise our discretion under 35 U.S.C. § 314(a) to deny the Petition. Although Patent Owner asserts that “Petitioner improperly challenges the same claims by filing two Petitions on the same day” that present substantially the same arguments, Patent Owner further asserts that Petitioner has taken “inconsistent positions across each of the Petitions” by equating the claim term “correlating” to “indexing” in one petition and “grouping” in another. Id. at 24–27. We have considered Patent Owner’s arguments and are not persuaded to exercise our discretion to deny institution under the circumstances presented in this case. See Gen. Plastic Indus. Co. v. Canon Kabushiki Kaisha, IPR2016-01357 (PTAB Sept. 6, 2017) (Paper 19, 15–16) (precedential) (discussing factors considered in determining whether to exercise discretion to decline institution of review). Patent Owner also argues that we should decline institution under 35 U.S.C. § 325(d) because the asserted references are “cumulative of the references specifically referenced by the Examiner during prosecution.” Prelim. Resp. at 30. We have considered Patent Owner’s arguments and are not persuaded that the Examiner’s consideration of prior art alleged to be substantially similar to the references asserted by Petitioner warrants denial of the Petition in this case” slip op. at 9

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner

    “1 U.S. Patent No. 7,593,740 B2, issued September 22, 2009 (Ex. 1108, “Crowley”). 2 U.S. Patent App. Pub. No. 2003/0004802 A1, published January 2, 2003 (Ex. 1109, “Callegari”). 3 Patent Owner argues that we should exercise our discretion under 35 U.S.C. § 314(a) to deny the Petition. Although Patent Owner asserts that “Petitioner improperly challenges the same claims by filing two Petitions on the same day” that present substantially the same arguments, Patent Owner further asserts that Petitioner has taken “inconsistent positions across each of the Petitions” by equating the claim term “correlating” to “indexing” in one petition and “grouping” in another. Id. at 24–27. We have considered Patent Owner’s arguments and are not persuaded to exercise our discretion to deny institution under the circumstances presented in this case. See Gen. Plastic Indus. Co. v. Canon Kabushiki Kaisha, IPR2016-01357 (PTAB Sept. 6, 2017) (Paper 19, 15–16) (precedential) (discussing factors considered in determining whether to exercise discretion to decline institution of review). Patent Owner also argues that we should decline institution under 35 U.S.C. § 325(d) because the asserted references are “cumulative of the references specifically referenced by the Examiner during prosecution.” Prelim. Resp. at 30. We have considered Patent Owner’s arguments and are not persuaded that the Examiner’s consideration of prior art alleged to be substantially similar to the references asserted by Petitioner warrants denial of the Petition in this case” slip op. at 9

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

    “Petitioner states that in district court proceedings Patent Owner contends the preamble language of various claims of the ’360 patent is not limiting, but also proposes constructions if it is limiting. Pet. 12–13. Petitioner, however, fails to state whether Petitioner contends the preambles are limiting. A petition must set forth “[h]ow the challenged claim is to be construed.” 37 C.F.R. § 42.104(b)(3). Merely stating Patent Owner’s contentions from a district court proceeding is not sufficient. In this case neither party has shown that any preamble language is limiting. Moreover, in the absence of any dispute over the meaning of any preamble terms, we determine no express construction is necessary for purposes of this decision. See Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim 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

  Claim construction§ 103 obviousnessDiscretionary denialcites KSR · Graham
  Patents in suitUS 7,856,360
• Hutchinson Technology Inc. / Hutchinson Technology Operations (Thailand) Co., Ltd. v. Nitto Denko CorporationInstitution denied
  PTAB · Dec 5, 2017 · IPR2017-01499 · APJ Melissa A Haapala · IPR · Institution

  The Board denied institution on claims 1–4 and 6 because Petitioner did not show a reasonable likelihood of proving anticipation or obviousness on the asserted grounds.

  RulingsInstitution decision

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

    “We find that the cited evidence does not support Petitioner’s position that the specific identified trace 53 meets the “eighth line” limitation. Petitioner’s own annotated version of Figure 2A shows the identified trace 53 bypassing the lines identified as the fifth and sixth lines and not “branching from fifth and sixth lines” as asserted by Petitioner. 1 See Pet. 24. The cited portions of Contreras also fail to describe that the identified trace 53 extends to be branched from the end of line 72 (fifth line) or the end of line 74 (sixth line). See Ex. 1005, 3:6–16, 4:26–34. We do not find credible Dr. Coughlin’s testimony that there is a mistake in Figure 2A because it is conclusory and not supported by evidence. See 37. C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); see also Skky, Inc. v. MindGeek, s.a.r.l., 859 F.3d 1014, 1022 (Fed. Cir. 2017)” slip op. at 13

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “that the specific identified trace 53 meets the “eighth line” limitation. Petitioner’s own annotated version of Figure 2A shows the identified trace 53 bypassing the lines identified as the fifth and sixth lines and not “branching from fifth and sixth lines” as asserted by Petitioner. 1 See Pet. 24. The cited portions of Contreras also fail to describe that the identified trace 53 extends to be branched from the end of line 72 (fifth line) or the end of line 74 (sixth line). See Ex. 1005, 3:6–16, 4:26–34. We do not find credible Dr. Coughlin’s testimony that there is a mistake in Figure 2A because it is conclusory and not supported by evidence. See 37. C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); see also Skky, Inc. v. MindGeek, s.a.r.l., 859 F.3d 1014, 1022 (Fed. Cir. 2017) 1 Figure 2A does show a trace that extends from the ends of lines 71, 72, 73, 74, but Petitioner maps this trace to the claimed “fourth line” and not the “eighth line.” See Pet. 21–22. (“The Board reviewed the evidence presented by the parties, and chose not to credit Skky’s expert testimony. . . we discern no reversible error in that choice.”). Furthermore, we agree with Patent Owner that even if Dr. Coughlin’s testimony is correct that the identified line should be connected with the buried conductive island (Ex. 1007 ¶ 96), Petitioner fails to explain how a line that connects to the buried conductive island meets the claim limitation “extends to be branched from the other end of said fifth line or the other end of said sixth line” (emphasis added).” slip op. at 13

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner

    “In view of our analysis, we do not find it necessary to construe any terms for purposes of this Decision. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”).” slip op. at 9

  Claim construction
  Patents in suitUS 7,923,644

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.