- EMC Corporation / EMC International US. Holdings, Inc. et al. v. Clouding Corp.All claims unpatentablePTAB · Oct 17, 2017 · IPR2014-01309 · APJ Rama G Elluru · IPR · Remand
Claims 6, 8, and 14 are unpatentable because Barnett alone, or Barnett combined with Allen ’664, teaches or suggests saving a state of the computer system.
RulingsRemand decision- RemandOther
“On May 1, 2017, the Federal Circuit issued a decision, vacating and remanding our Final Decision. EMC, 686 F. Appx. 858. The Federal Circuit determined we erred, and in particular determined that Petitioner properly argued, and Patent Owner did not dispute, that the combination of Barnett and Allen ’664 teaches the condition “when a likely solution [to a problem in the computer system] cannot be determined.” Id. at 860–62. 1 U.S. Patent 5,664,093 (Ex. 1005). 2 U.S. Patent 5,581,664 (Ex. 1006). The Federal Circuit further determined that Patent Owner admitted that there would have been motivation to combine Barnett and Allen ’664. Id. at 863. Of relevance to this decision, the Federal Circuit determined that Patent Owner’s only argument to the Board in support of nonobviousness was that Petitioner’s proposed combination of Barnett and Allen ’664 would not yield a solution that involves “saving a state of a computer system,” as the second half of claim 6, step 5 requires. Id. Because there is no claim of secondary considerations, the Federal Circuit remanded for us to answer only one question: “whether Barnett and Allen, considered in combination, would [have] suggest[ed] to a person of ordinary skill in the art ‘saving a state of the computer system.’” Id. The mandate issued on June 7, 2017.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“The Federal Circuit further determined that Patent Owner admitted that there would have been motivation to combine Barnett and Allen ’664. Id. at 863. Of relevance to this decision, the Federal Circuit determined that Patent Owner’s only argument to the Board in support of nonobviousness was that Petitioner’s proposed combination of Barnett and Allen ’664 would not yield a solution that involves “saving a state of a computer system,” as the second half of claim 6, step 5 requires. Id. Because there is no claim of secondary considerations, the Federal Circuit remanded for us to answer only one question: “whether Barnett and Allen, considered in combination, would [have] suggest[ed] to a person of ordinary skill in the art ‘saving a state of the computer system.’” Id. The mandate issued on June 7, 2017.” slip op. at 3
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“determine that Petitioner has shown by a preponderance of the evidence that the combination of Allen ’664 teaches and Barnett teaches the limitation at issue. Patent Owner’s argument is not persuasive because it is based improperly on what Allen ’664 teaches individually, and not on the teachings of the combined references. As the Federal Circuit has explained, “[t]he test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference . . . . Rather, the test is what the combined teachings of those references would have suggested to those of ordinary skill in the art.” In re Keller, 642 F.2d 413, 425 (CCPA 1981). In the combined system of Barnett and Allen ’664 proposed by Petitioner, a case template would be created, “when there is a fault in the computer system, to search for a case whose symptoms (i.e., the state of the computer system) match the fault.” Pet. Reply 12 (citing Ex.1024 ¶¶ 22–23, 25; Ex. 1006, 8:31–40). As Petitioner reasons, Allen ’664 teaches “saving of the case template of a problem,” and thus, the case template would comprise facts about the state of the faulty computer system. Id. at 12–13 (citation omitted) (emphasis added); see id. at 13 (Petitioner argues that a skilled artisan would understand that “the case retrieval step in the standard case-based reasoning cycle entails comparing a digital model of the presenting situation with the digital model of each of a collection of cases, and determining if there is a match.”). Petitioner avers, “[t]o match a problem to the cases in the case base [in the combined Barnett and Allen ’664 system], the case template may be constructed for the problem with attribute-value pairs which correspond to notable parameters of the problem.” Pet. Reply 13 (citing Ex. 1006, 5:2–6). Allen ’664 discloses that “[e]ach case 105 may comprise a set of attributes 301, each of which has a value 302. Attributes 301 and values 302 are typically manipulated as an attribute-value pair 303.” Ex. 1006, 4:32–36. Dr. Sacerdoti states that a skilled artisan “would understand that the attributes whose values describe a case template are the same attributes that describe a case that is stored in the case database.” Ex. 1024 ¶ 27. Allen ’664 further discloses that “[t]o match a problem 311 to the cases 105 in the case base 104, a case template 312 may be constructed for the problem 311 with attribute-value pairs 303[,] which correspond to notable parameters of the problem 311.” Ex. 1006, 5:2–6. Thus, we agree with Petitioner that when applying the teachings of Allen ’664 to Barnett, which teaches a fault management for any computer system, the case template includes the “information about the state of the faulty computer system.” See id. at 12; Ex. 1024 ¶¶ 22–26. Furthermore, Allen ’664 teaches saving the “case template” of a problem, as a “new case,” for which it cannot find a solution. Specifically, Allen ’664 teaches that: [T]he inference engine 111 may determine that there is no case 105 which is a good match for the case template 312. The inference engine 111 may create a new case 105 which partly or fully copies the case template 312 and may ask the user 119 (by means of the user interface 118) what the prescribed action 309 for the case 105 should be. The inference engine 111 may add the new case 105 to the case base 104 and proceed to another problem 311 with an augmented case base 104. Ex. 1006, 8:22–30. Thus, we further agree that in the combined Barnett and Allen ’664 system, when Allen ’664’s case template is saved as a “new case,” the “state of the computer system” would also be saved. See Pet. Reply 13–14. Accordingly, we further find that the combination of Barnett and Allen ’664 teaches or suggests “saving a state of the computer system.”” slip op. at 11
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Ex. 1005, 6:66–7:6. According to Dr. Sacerdoti, “it would be clear to a person of ordinary skill in the art that in order for the programmer or user to understand how and when [] additional rules should be added, a state of the computer system should be saved when the AI engine fails to determine a likely solution, so that the programmer or user can later determine the context in which the failure took place.” Ex. 1007 ¶ 75. Dr. Sacerdoti further states that “[because] actions such as this are implemented via rules in a rule-based system, it would be natural and obvious to a skilled artisan to add a rule to the rule base that states that when a likely solution cannot be found, such a state of the computer system should be saved.” Id. With regard to saving a state of the computer system, Dr. Sacerdoti, also opines as follows: It is known in the art that an effective means of enabling the debugging and improvement of virtually any software program is to save the state of the computer system at the point when a failure occurs. If an embodiment of the Barnett patent were not to have such a capability, it would be obvious to a skilled artisan to include this capability when implementing the invention disclosed in Barnett. Id. ¶ 74. We are persuaded by Dr. Sacerdoti’s testimony and determine that Petitioner has demonstrated that it was known that an effective means of enabling the debugging and improvement of almost any software program was to save the state of the computer system when a fault (i.e., failure) occurred, and a skilled artisan would have applied this teaching to Barnett’s fault management system. Accordingly, we find that Barnett alone teaches or suggests “saving a state of the computer system.”” slip op. at 9
Patent outcomesUS 5,944,839 unpatentable§ 103 obviousnessPatents in suitUS 5,944,839 - Neste Oil Oyj v. Reg Synthetic Fuels, LLCSome claims unpatentablePTAB · Jul 26, 2017 · IPR2013-00578 · APJ Christopher L Crumbley · IPR · Remand
Claims 1, 3, 4, and 8 are unpatentable as anticipated by Craig; claims 2 and 5 are not proven unpatentable because Dindi is not prior art.
RulingsRemand decision- RemandDecided for patent owner
“To remove Dindi as a prior art reference, the record must establish either: (1) a conception and reduction to practice before the filing date of Dindi; or (2) a conception before the filing date of the Dindi patent combined with diligence and reduction to practice after that date. See Taurus IP, LLC v. DaimlerChrysler Corp., 726 F.3d 1306, 1323 (Fed. Cir. 2013). The Federal Circuit held that the record before us establishes, with sufficient corroboration, that Mr. Abhari conceived of the invention of claims 2 and 5 of the ’804 patent on April 29, 2008. REG Synthetic Fuels, 841 F.3d at 963. It is undisputed that Dindi was filed on June 13, 2008, and that Mr. Abhari filed on December 4, 2008 the application that issued as the ’804 patent. Dindi is not prior art—and, therefore, Neste’s ground of unpatentability fails—if either: (1) Mr. Abhari actually reduced to practice the invention of claims 2 and 5 between April 29 and June 13, 2008, or (2) Mr. Abhari exercised reasonably continuous diligence between June 13 and December 4, 2008, when the invention was constructively reduced to practice by filing of a patent application. Because, as set forth below, we find sufficient evidence of actual reduction to practice, we do not address Mr. Abhari’s alleged diligence.” slip op. at 5
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedNot shown unpatentableNot shown unpatentable
“To remove Dindi as a prior art reference, the record must establish either: (1) a conception and reduction to practice before the filing date of Dindi; or (2) a conception before the filing date of the Dindi patent combined with diligence and reduction to practice after that date. See Taurus IP, LLC v. DaimlerChrysler Corp., 726 F.3d 1306, 1323 (Fed. Cir. 2013). The Federal Circuit held that the record before us establishes, with sufficient corroboration, that Mr. Abhari conceived of the invention of claims 2 and 5 of the ’804 patent on April 29, 2008. REG Synthetic Fuels, 841 F.3d at 963. It is undisputed that Dindi was filed on June 13, 2008, and that Mr. Abhari filed on December 4, 2008 the application that issued as the ’804 patent. Dindi is not prior art—and, therefore, Neste’s ground of unpatentability fails—if either: (1) Mr. Abhari actually reduced to practice the invention of claims 2 and 5 between April 29 and June 13, 2008, or (2) Mr. Abhari exercised reasonably continuous diligence between June 13 and December 4, 2008, when the invention was constructively reduced to practice by filing of a patent application. Because, as set forth below, we find sufficient evidence of actual reduction to practice, we do not address Mr. Abhari’s alleged diligence.” slip op. at 5
- ExcludeNot reached
“As noted above, the Federal Circuit vacated our decision on Neste’s Motion to Exclude as to Exhibits 2012, 2013, 2057, and 2062, for further consideration of the hearsay objections in light of the decision on appeal, “because [they] may be relevant for diligence and reduction to practice.” REG Synthetic Fuels, 841 F.3d at 965. Upon review, however, we have determined that we need not rely on any of the exhibits in question to reach our decision in REG’s favor. For this reason, Neste’s objections to the exhibits are moot, as we would have found against Neste on the merits regardless of the outcome of the Motion.” slip op. at 19
Patent outcomesUS 8,231,804 mixed§ 102 anticipationPatents in suitUS 8,231,804 - Athena Automation Ltd. v. Husky Injection Molding Systems Ltd.All claims unpatentablePTAB · Apr 28, 2017 · IPR2013-00290 · APJ Jennifer S Bisk · IPR · Remand
On remand, the Board held claims 2, 3, 17, and 19 unpatentable as anticipated by Glaesener/Choi; claims 1, 4–16, and 20–22 remained unpatentable as set forth in the prior decision.
RulingsRemand decision- RemandDecided for petitioner
“In remanding this case, the Federal Circuit explained that “Glaesener identifies with sufficient particularity what it incorporates from Choi.” Husky, 838 F.3d 1236, 1248–49. This is true even though “Choi does not recite either of the words ‘pineapple’ or ‘toothed-ring’” because “Choi explicitly identifies toothed components when discussing its securing/clamping assemblies, i.e., its [only] locking mechanism.” Id. (citing Ex. 1002; Ex. 1003, 5:40–6:5, Fig. 3A). The Federal Circuit concludes that “Glaesener’s two paragraphs, ¶ 35 and ¶ 49, accordingly work in concert to incorporate at least some portions of Choi.” Id. Ultimately, the Federal Circuit explains that Glaesener incorporates Choi “for purposes of anticipation” and it is “of no consequence” whether Glaesener incorporates the rest of Choi. Id. at 1249. Patent Owner argues that the Federal Circuit held only that “the toothed components of the piston (44a) and tie bar (20a), shown in Figure 3A, and discussed at 5:40–6:5 is incorporated into Glaesener.” PO Remand Br. 6. According to Patent Owner, to find any more of Choi incorporated “would go beyond the Federal Circuit’s directive and analysis.” Id. Petitioner, on the other hand, argues that the Federal Circuit held that Glaesener incorporates “all portions of Choi that a skilled artisan would understand describe how to use the Choi Lock with a platen, in particular, the portions of Choi cited by Athena during trial.” Pet. Remand Br. 3. We are not persuaded that, for purposes of this Decision, there is a meaningful difference between the positions of the two parties. To the extent that Patent Owner’s proposal strictly limits the portions of Choi incorporated by reference into Glaesener to those explicitly referred to in the Federal Circuit decision, we disagree. Instead, we agree with Petitioner’s reading of the Federal Circuit decision. Accordingly, we will rely, for our anticipation analysis below, on all portions of Choi that a skilled artisan would understand describe how to use the disclosed lock, as shown in Figure 3A, with a platen.5” slip op. at 15
- Prior constructionPrior construction adoptedDecided for petitioner
“In the Final Decision, we explicitly construed several claim terms. Final Dec. 11–25. Nothing in the Federal Circuit’s decision or in post-remand briefing from the parties indicates that any of our constructions need be revisited or that any further terms need be construed explicitly. See Husky, 838 F.3d 1236 at 1247–49; PO Remand Br.; Pet. Remand Br. We, therefore, rely on the constructions, as summarized below, set forth in the Final Decision. Final Dec. 11–25.” slip op. at 10
- Expert testimonyPetitioner expert creditedDecided for petitioner
“With respect to the relative flex zones of the platen, we are persuaded that Petitioner has shown, by a preponderance of the evidence, that Glaesener/Choi’s platen 50 includes zones equivalent to those claimed and that Glaesener/Choi’s teeth 38 and 48 are engagable within the relatively lower flex zone of platen 50. Pet. 32–35; Ex. 1006 ¶¶ 27, 44–55. In particular, we agree with Petitioner’s assertion that Glaesener/Choi teaches that “the portions of the platen 50 adjacent each bore 14 that coincide with ribs 40 and gussets 42 experience a relatively lower flex than portions of the platen 50 that do not coincide with the ribs 40 and gussets 42 during clamping.” Pet. 25 (citing Ex. 1006 ¶ 27). Mr. Link corroborates this assertion, explaining that he supervised a 3D computer modeling and finite element analysis to predict the deformation of Glaesener’s platen 50 using Choi’s lock member. Ex. 1006 ¶¶ 44–55; see Pet. 33–35. According to Mr. Link, he regularly relies upon such analyses. Ex. 1006 ¶ 44. Moreover, Mr. Link describes, in some depth, the process followed, tools used, and assumptions made for the analysis. Id. at 45–55. We find Mr. Link’s testimony, including his description of the finite element analysis and its results, credible. Patent Owner does not direct us to any evidence to the contrary. Thus, we determine that Petitioner has provided sufficient evidence to show that Glaesener/Choi necessarily discloses engagement within the relatively lower flex zone, as required by the claims.” slip op. at 18
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Contrary to Patent Owner’s assertion, the Federal Circuit’s holding negates our determination, in the Final Decision, that Petitioner has not met its burden to show that “the various portions of Choi and Glaesener, on which it relies, are combined in the same way as recited in the challenged claims.” Final Dec. 31. The Final Decision explains that this determination was based on our understanding that (1) Petitioner “does not explain how the relied upon elements of Choi’s device secure the tie-bar nuts of Glaesener to real wall 16 of Glaesener’s platen,” (2) Choi does not use the term “pineapple and toothed-ring mechanism,” and (3) “Petitioner does not provide persuasive evidence as to what part of Choi is included in the term ‘pineapple and toothed-ring mechanism.’” Id. at 30–31. The Federal Circuit, however, disagreed, holding that a reasonably skilled artisan would understand Glaesener’s use of the term “pineapple and toothed-ring” to refer to the locking mechanism described in Choi. Husky, 838 F.3d at 1249. Given this knowledge of the person of ordinary skill in the art, we determine Petitioner has provided sufficient evidence to show that Glaesener discloses its platen and Choi’s locking mechanism arranged in the same way as recited in claims 1, 12, and 18. See Pet. 32–39; Ex. 1006 ¶¶ 25–30, 44–55. Accordingly, we are persuaded Petitioner has shown, by a preponderance of the evidence, that Glaesener/Choi anticipates independent claims 1, 12, and 18.” slip op. at 19
Patent outcomesUS 7,670,536 unpatentableClaim construction§ 102 anticipationPatents in suitUS 7,670,536
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.