Trials@uspto.gov
`571-272-7822
`
`
`
` Paper 9
`
`
`Entered: January 9, 2015
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`UNIVERSAL REMOTE CONTROL, INC.,
`Petitioner,
`
`v.
`
`UNIVERSAL ELECTRONICS, INC.,
`Patent Owner.
`
`____________
`
`Case IPR2014-01146
`Patent 8,243,207 B2
`__________
`
`
`Before HOWARD B. BLANKENSHIP, SALLY C. MEDLEY, and
`WILLIAM A. CAPP, Administrative Patent Judges.
`
`CAPP, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`571-272-7822
`
`
`
` Paper 9
`
`
`Entered: January 9, 2015
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`UNIVERSAL REMOTE CONTROL, INC.,
`Petitioner,
`
`v.
`
`UNIVERSAL ELECTRONICS, INC.,
`Patent Owner.
`
`____________
`
`Case IPR2014-01146
`Patent 8,243,207 B2
`__________
`
`
`Before HOWARD B. BLANKENSHIP, SALLY C. MEDLEY, and
`WILLIAM A. CAPP, Administrative Patent Judges.
`
`CAPP, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`Case IPR2014-01146
`Patent 8,243,207 B2
`
`
`Petitioner Universal Remote Control, Inc. filed a Petition (Paper 1,
`
`“Pet.”) requesting inter partes review of claims 12–15 of U.S. Patent No.
`
`8,243,207 B2 (Ex. 1001, the “’207 patent”). Patent Owner Universal
`
`Electronics, Inc. filed a Preliminary Response (Paper 8, “Prelim.
`
`Resp.”). We have jurisdiction under 35 U.S.C. § 314(a). We conclude that
`
`Petitioner has shown a reasonable likelihood of prevailing in challenging
`
`claims 13–15 and we institute inter partes review as to such claims.
`
`I. BACKGROUND
`
`A. The ’207 patent (Ex. 1001)
`
`The ’207 patent, titled System and Method for Activity Based
`
`Configuration of an Entertainment System, relates to methods for
`
`configuring multi-input and/or multi-output home entertainment systems.
`
`Ex. 1001, 1:31–33. The invention routs the outputs and inputs of the various
`
`components of an audio/visual (“AV”) system through one central device,
`
`such as an AV receiver. Id. at 1:34–36.
`
`The invention contemplates sending a signal from a universal remote
`
`control device to a central, “entertainment device” in order to initiate a pre-
`
`defined configuration of the AV system. Id. at 1:37–45. In addition to the
`
`control signals sent to the central entertainment device, the invention also
`
`contemplates sending control signals to other appliances in the AV system.
`
`Id. at 1:45–50. These signals to the other appliances can be transmitted
`
`directly from the remote control to the other appliances or indirectly by a
`
`signal transmitted from the remote to the central entertainment device,
`
`which, in turn, transmits control signals to the other appliances. Id. This
`
`latter feature takes advantage of the fact that the central entertainment device
`
` 2
`
`
`
`
`
`IPR2014-01146
`Patent 8,243,207 B2
`
`
`has access to appliance status information not available to the remote control
`
`device and the remote control device, in turn, has access to appliance
`
`command functions not available to the central entertainment device. Id. at
`
`1:49–57.
`
`Figure 1 of the ’207 patent is shown below.
`
`Figure 1
`
`
`Figure 1 illustrates an AV system in which the outputs of source appliances
`
`such as set top box 104, first DVD player 106, second DVD player 108,
`
`game console 110, and CD changer 112 are all connected as inputs to an AV
`
`receiver or “entertainment device” 102. Id. at 2:27–32. AV receiver 102
`
`switches the input stream to designated outputs which are connected to
`
`various AV devices such as TV 114, projector 118, and/or speakers 116. Id.
`
` 3
`
`
`
`IPR2014-01146
`Patent 8,243,207 B2
`
`
`at 2:33–38. Also illustrated is a universal remote control or “controlling
`
`device” 100 that transmits commands to the appliances. Id. at 2:44–46.
`
`B. Illustrative Claim
`
`Petitioner challenges claims 12–15. Claim 12, reproduced below, is
`
`an independent claim:
`
`12. A method for configuring an audio visual entertainment
`device in communication with a plurality of devices for an
`activity, comprising:
`
`associating a command value corresponding to an activity key
`of a controlling device with a configuration of
`the
`entertainment device, the configuration of the entertainment
`device comprising at least one of the plurality of devices
`being used as an audio visual input source device for the
`entertainment device and at least one of the plurality of
`devices being used as an audio visual output destination
`device for the entertainment device;
`
`causing the entertainment device to access and use the
`configuration
`associated with
`the
`command value
`corresponding to the activity key of the controlling device in
`response to the entertainment device receiving from the
`controlling device a signal which includes the command
`value corresponding to the activity key of the controlling
`device; and
`
`displaying in a display associated with the entertainment device
`a graphical user interface for allowing a user to select at least
`one of
`the plurality of devices
`to be used
`in
`the
`configuration;
`
`wherein the user selection of at least one of the plurality devices
`to be used in the configuration comprises one or more signals
`received from the controlling device having data indicative
`of an appliance, wherein the one or more signals are
`transmitted from the controlling device to the entertainment
`device in response to an activation of a one or more keys of
`the controlling device which are associated within the
`
` 4
`
`
`
`IPR2014-01146
`Patent 8,243,207 B2
`
`
`controlling device to an appliance being selected for use in
`the configuration, and wherein the controlling device further
`uses the activation of the one or more keys to automatically
`configure itself whereupon an activation of one or more
`command keys of the controlling device will cause the
`controlling device to communicate commands to the one or
`more of the audio visual source device and the audio visual
`output destination device.
`
`
`
`C. The Asserted Grounds of Unpatentability
`
`Petitioner challenges claims 12–15 of the ’207 patent based on the
`
`alleged grounds of unpatentability set forth in the table below, as further
`
`supported by the Declaration of James T. Geier (Ex. 1003).1
`
`Reference(s)
`
`Dubil (Ex. 1005)2
`Dubil
`
`Niles (Ex. 1006)3
`Niles and Dubil
`Niles and Kozakai (Ex. 1007)4
`Niles, Dubil, and Kozakai
`
`Basis
`
`§ 102
`§ 103
`§ 103
`§ 103
`§ 103
`§ 103
`
`Claims
`challenged
`12–15
`12–15
`12–15
`12–15
`12–15
`12–15
`
`
`1 The Petition purports to advance only two (2) grounds of unpatentability
`denominated as such. However, due to Petitioner’s use of conjunctive
`and/or disjunctive connectors in each of the two grounds, we calculate that
`Petitioner is asserting six grounds. See Edmund Optics, Inc. v. Semrock,
`Inc., Case IPR2014-00583(PTAB Sept. 19, 2014) (Paper 9) (discussing
`multiplication of grounds due to use of conjunctive and disjunctive
`connectors).
`2 U.S. Patent Pub. 2003/0120831 A1, published June 26, 2003.
`3 Niles Audio Corp., IntelliControl Reference Manual, Ver. 8.1, Apr. 2002.
`4 U.S. Patent 4,527,204 to Kozakai, et al, titled Remote Control System,
`issued July 2, 1985.
`
` 5
`
`
`
`IPR2014-01146
`Patent 8,243,207 B2
`
`
`D. Claim Interpretation
`
`In an inter partes review, claims are given their broadest reasonable
`
`interpretation consistent with the specification. See 37 C.F.R. § 42.100(b);
`
`In re Translogic Tech., Inc., 504 F.3d 1249, 1256 (Fed. Cir. 2007). Within
`
`this framework, terms generally are given their ordinary and customary
`
`meaning, as understood by a person of ordinary skill in the art, in the context
`
`of the entire patent disclosure. Id. at 1257.5
`
`1. “device” (Claims 12-15) and “appliance” (Claim 12)
`
`Petitioner’s proposed construction: the terms “device” and
`“appliance” have the same meaning. [Pet.10–11].
`
`Patent Owner’s proposed construction: none [Prelim. Resp. 7–8].
`
`A claim construction analysis begins with, and is centered on, the
`
`claim language itself. See Interactive Gift Express, Inc. v. Compuserve, Inc.,
`
`256 F.3d 1323, 1331 (Fed. Cir. 2001). Claim 12 describes a plurality of
`
`“devices” that can be used as an audio visual input source “device” and an
`
`audio visual output destination “device.” The claim describes that one of the
`
`plurality of “devices” can be used in a configuration and that such devices
`
`can receive signals that have data indicative of an “appliance.” The claim
`
`also describes that an “appliance” can be selected for use in a configuration.
`
`Turning now to the Specification, the Specification discloses that
`
`appliances, controllable by the universal remote control, includes televisions,
`
`VCRs, DVRs, DVD players, cable or satellite converter set-top boxes,
`
`amplifiers, AV receivers, CD players, game consoles, home lighting,
`
`drapery, fans, HVAC systems, thermostats, and personal computers, etc.
`
`
`5 Citing Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc).
`
` 6
`
`
`
`IPR2014-01146
`Patent 8,243,207 B2
`
`
`Ex. 1001, 2:50–55. These appliances are elsewhere referred to in the
`
`Specification as “devices.” Id. at 1:44–45 (“connected devices”); 4:38–39
`
`(“connected device such as TV 114”). Thus, when the claims refer to either
`
`devices or appliances that serve as either AV input sources or AV output
`
`destinations that are connected to the “entertainment device,” the terms have
`
`the same meaning and are used interchangeably. Thus, we partially agree
`
`with Petitioner to the extent that the terms “destination device” and
`
`“destination appliance” are used interchangeably in the Specification and the
`
`claims. Pet. 10–11 (citing Ex. 1001, 7:33–37). That is how they will be
`
`construed for the purpose of this decision.
`
`With respect to the term “entertainment device,” as used in the claims,
`
`referring to Figure 1 and its corresponding description in the Specification,
`
`AV Receiver 102 is connected to various inputs and outputs. Id. at 2:27–38.
`
`Later in the same paragraph, the Specification teaches that the “appliances”
`
`that are controlled by the universal controlling device include AV receivers.
`
`Id. at 2:53. Thus, we construe “entertainment device” as broad enough to
`
`encompass AV receivers and substantially similar devices/appliances that
`
`are capable of being connected to a plurality of AV input sources and a
`
`plurality of AV output destinations.
`
`With respect to the term “controlling device,” the unit or component
`
`that is illustrated as element 100 in Figures 1 and 2 is referred to consistently
`
`throughout the Specification as “controlling device 100” or “the controlling
`
`device.” See e.g., Ex. 1001, 2:45, 2:59, 3:1, 3:21, 4:35. The controlling
`
`device is a commonly used item of consumer electronics with which most
`
`lay persons are familiar as well as persons skilled in the relevant art.
`
`Regardless of what the “controlling device” is called, the dispute between
`
` 7
`
`
`
`IPR2014-01146
`Patent 8,243,207 B2
`
`
`the parties focuses on what it does, not the nomenclature that is assigned to
`
`it. In our opinion, whether element 100 can be construed broadly as either a
`
`“controlling appliance” or “controlling device” is not material to this
`
`decision and we decline to construe it expressly.
`
`2. “Activity Key”(Claims 12, 13, and 14)
`
`Petitioner’s proposed construction: any key or button on the
`remote control that corresponds to a configuration of the
`system.
`
`Pet. 11–12.
`
`Patent Owner’s proposed construction: a key that, upon
`activation, transmits a signal to an entertainment device that
`corresponds to a previously defined configuration for an
`activity.
`
`Prelim. Resp. 10. The two proposals differ in that Patent Owner limits the
`
`construction to require transmission of a signal to an entertainment device,
`
`such as AV Receiver 102 in Figure 1, whereas Petitioner’s proposed
`
`construction is broad enough to allow any configuration or reconfiguration
`
`of an AV system (e.g., change the TV channel), even if no signal is
`
`transmitted to the entertainment device (AV Receiver 102 or an analog
`
`thereof). The Summary of the Invention section of the Specification states:
`
`The inventive methods described herein comprise a cooperative
`effort between the AV receiver and an associated universal
`controlling device such as a remote control in which activation
`of an activity key or button on the controlling device results in
`transmission of a signal to the AV receiver to initiate certain
`previously defined configuration actions . . . .
`
`Ex. 1001, 1:37–43 (italics added). Having reviewed both parties’ proposed
`
`contructions in light of the Specification, we adopt Patent Owner’s proposed
`
`construction as more aligned with the patent’s description of the invention.
`
` 8
`
`
`
`IPR2014-01146
`Patent 8,243,207 B2
`
`
`See Phillips, 415 F.3d at 1316 (quoting Renishaw PLC v. Marposs Societa’
`
`per Azioni, 158 F.3d 1243, 1250 (Fed. Cir. 1998) (“The construction that
`
`stays true to the claim language and most naturally aligns with the patent’s
`
`description of the invention will be, in the end, the correct construction.”)).
`
`3. “Configuration of the Entertainment Device”
`
`This phrase appears in independent claims 12, 13, and 14. Claim 15
`
`depends from claim 14. Thus, this phrase appears in every challenged claim.
`
`Neither party proposed a construction for this term.
`
`In the absence of briefing, arguments of counsel, and detailed citations
`
`to the record from either party, it appears to us that this term is capable of
`
`being construed in either of at least two ways. On the one hand, it could be
`
`construed narrowly so as to require transmission of a signal to the
`
`entertainment device such that the configuration thereof contemplates
`
`affirmatively selecting an AV input source and an AV output destination and
`
`affirmatively performing switching actions accordingly. Such a narrow
`
`construction arguably could be supported by language, such as the
`
`following, in the Specification:
`
`audio/video outputs of a group of various media source
`appliances such as for example a set top box (“STB”) 104, a
`first DVD player 106, a second DVD player 108, a game
`console 110, and a CD changer 112 are all connected as inputs
`to an AV receiver 102. AV receiver 102 in turn functions to
`switch the currently desired input media stream to one or more
`designated outputs of AV receiver 102 which are, in turn,
`connected to various audio and/or video rendering devices such
`as TV 114, projector 118, and/or loudspeakers 116 . . .
`
`Ex. 1001, 2:27–37.
`
`On the other hand, the phrase could be construed broadly such that the
`
`entertainment device and associated input and output appliances are
`
` 9
`
`
`
`IPR2014-01146
`Patent 8,243,207 B2
`
`
`“configured” by selectively powering on and powering off the input and
`
`output appliances so that, for example, only one input appliance supplies an
`
`active input signal to the entertainment device and only one output appliance
`
`renders the output signal. Such a broad construction would cause the claims
`
`to read on AV receivers and other entertainment devices that passively
`
`transmit signals from input to output appliances without necessarily
`
`engaging in any switching activity.
`
`In the absence of receiving proposed constructions from either party
`
`accompanied by arguments and citations to the record, we provide an
`
`interim, preliminary construction for the purpose of this Decision. For
`
`purposes of this Decision only, we will construe “configuration of the
`
`entertainment device” broadly so as to encompass AV system configurations
`
`which do not require active switching between input sources and output
`
`destinations at the AV Receiver/Entertainment Device.6
`
`II. ANALYSIS
`
`A. Anticipation of Claims 12-15 by Dubil
`
`1. Dubil (Ex. 1005)
`
`Dubil discloses a remote control device that provides commands
`
`based on the configuration of components in an AV system. Ex. 1005,
`
`Abstract. One embodiment of Dubil is illustrated in Figure 1 below.
`
`
`6 This interim construction does not foreclose us from using a different
`construction at a later point in the proceeding upon the development of a
`more complete record. See Pfizer, Inc. v. Teva Pharm., USA, Inc., 429 F.3d
`1364, 1377 (Fed. Cir. 2005) (court may engage in a rolling claim
`construction, in which the court revisits and alters its interpretation of the
`claim terms as its understanding of the technology evolves).
`
` 10
`
`
`
`IPR2014-01146
`Patent 8,243,207 B2
`
`
`
`In Figure 1, system 100 includes a television 110, an audio
`
`
`
`system 111, a DVD player 112, a VCR 113, a cable interface 114, a satellite
`
`receiver 115, and a set-top box 116. Ex. 1005 ¶ 17. A remote control device
`
`150 provides for remote control of some or all of the components 110–116.
`
`In operation, the system 100 may receive audio-video information from the
`
`satellite receiver 115 and provide the video to the television 110 and the
`
`audio to the audio amplifier 111. Id. At another point in time, the
`
`system 100 may provide audio-video information from the VCR 113, and
`
`provide both the video and the audio information to the television 110. Id.
`
`Dubil’s system identifies the components of the system. Id. ¶ 18. An
`
`“activity set” associates select system functions to particular components to
`
`support a particular user activity. Id. Thus, although multiple components
`
`of a system may include an audio output signal, an activity set identifies
`
`which particular component in the system provides the audio output of the
`
`system. Id. Figures 2A and 2B of Dubil are shown below.
`
` 11
`
`
`
`IPR2014-01146
`Patent 8,243,207 B2
`
`
`
`
`
`
`
`Figure 2A illustrates an activity set 200a for satellite broadcasts. Id.
`
`¶ 19. Satellite receiver 115 provides AV information to VCR 113 which
`
`then provides AV information to the television 110. Id. Alternatively, the
`
`system may be configured as illustrated in Figure 2B to view a DVD movie.
`
`Id. ¶ 20. In this activity, DVD player 112 is the source of the AV
`
`information. Id. The DVD player 112 provides the video information to
`
`television 110, and the audio information to audio amplifier 111.
`
`2. Analysis of Claim 12
`
`Petitioner argues that all of the limitations of independent claim 12 are
`
`satisfied by Dubil. Pet. 19–25. Petitioner supports its position with
`
`declaration testimony from James T. Geier. Ex. 1003 ¶¶ 34–42. Petitioner
`
`asserts that Dubil’s VCR 113 is an entertainment device within the meaning
`
`of claim 12. Pet. 19. Petitioner’s case depends, in part, on its assertion that
`
`the limitation in claim 12 directed to signals from the controlling device to
`
`the entertainment device, including data indicative of an appliance selected
`
`for use in the configuration, is satisfied inherently by Dubil. Pet. 22–23.
`
` 12
`
`
`
`IPR2014-01146
`Patent 8,243,207 B2
`
`
`Patent Owner disputes Petitioner’s position, among other things, by
`
`arguing that Petitioner’s above mentioned inherency theory fails. Prelim.
`
`Resp. 17–18. Patent Owner argues that the passage in Dubil that Petitioner
`
`relies on states only that the VCR can provide audio visual information to
`
`various output devices. Id. at 18–19. Based on the record before us, we are
`
`not persuaded that Dubil necessarily requires that a signal is transmitted to
`
`the VCR 113 that contains data pertaining to configuring VCR 113 to
`
`receive input from satellite 115 or configuring VCR 113 to send output to
`
`television 110. Petitioner presents no persuasive extrinsic evidence that
`
`VCR 113 receives signals from the controlling device that necessarily
`
`contains data “indicative of an appliance.” Mr. Geier’s declaration
`
`testimony on this issue is equivocal and, at best, conclusory. Ex. 1003 ¶ 39.
`
`It appears to us that it is possible that Dubil’s remote 150 configures its AV
`
`system by doing nothing more than sending separate signals to satellite 115,
`
`VCR 113, and Television 110 without any of those separate signals
`
`containing data regarding a configuration interrelationship between and
`
`among those three AV system components. It is well settled that inherency
`
`may not be established by mere probabilities or possibilities. See Bettcher
`
`Indus., Inc. v. Bunzl USA, Inc, 661 F.3d 629, 639 (Fed. Cir. 2011). “To
`
`serve as an anticipation when the reference is silent about the asserted
`
`inherent characteristic, such gap in the reference may be filled with recourse
`
`to extrinsic evidence. Such evidence must make clear that the missing
`
`descriptive matter is necessarily present in the thing described in the
`
`reference . . . .” Cont'l Can Co. USA v. Monsanto Co., 948 F.2d 1264, 1268
`
`(Fed. Cir. 1991).
`
` 13
`
`
`
`IPR2014-01146
`Patent 8,243,207 B2
`
`
`We are not persuaded that Petitioner has made a threshold evidentiary
`
`showing that makes clear that Dubil necessarily operates in accordance with
`
`the claimed method. Accordingly, we find that Petitioner has failed to
`
`establish a reasonable likelihood that it would prevail at trial in establishing
`
`that claim 12 is anticipated by Dubil.
`
`3. Analysis of Claim 13
`
`Independent claim 13 differs in scope from claim 12 in that there is no
`
`requirement that the controlling device transmits a signal to the
`
`entertainment device that contains data indicative of an appliance. Ex. 1001.
`
`Claim 13 also differs in that it contains limitations directed to downloading
`
`configuration information from a computing device to the entertainment
`
`device and also to the controlling device. Id. Petitioner asserts that Dubil
`
`discloses each limitation of the claim. Pet. 25–29. Petitioner asserts that the
`
`first two limitations of claim 13, (1) the “associating a command value”
`
`limitation and (2) the “causing the entertainment device to access”
`
`limitation, are satisfied by paragraphs 18, 19, and 31 of Dubil. Id. at 25–28.
`
`Petitioner asserts that the third limitation of claim 13, the “wherein the
`
`configuration of the entertainment device is downloaded” limitation, is
`
`satisfied by the disclosure in paragraph 34 of Dubil. Id. at 28–29.7
`
`Patent Owner argues that Dubil fails to satisfy the first two limitations
`
`of claim 13. Patent Owner disputes that Dubil: (1) configures an AV device
`
`by associating a command value with a system configuration; and (2) causes
`
`the entertainment device to use the configuration. Prelim. Resp. 22–27.
`
`
`7 With respect to the third limitation of claim 13, we agree with Petitioner
`that paragraph 34 of Dubil discloses downloading device configurations, an
`issue that Patent Owner does not dispute.
`
` 14
`
`
`
`IPR2014-01146
`Patent 8,243,207 B2
`
`
`With respect to the first two limitations of claim 13, paragraphs 18
`
`and 19 of Dubil disclose an AV system configuration that includes an
`
`activity set that associates system functions with particular components to
`
`support a particular user activity, such as watching a satellite broadcast on
`
`television. See Fig. 2A. We agree with Petitioner that this evidence
`
`constitutes a threshold showing sufficient to institute a trial.
`
`Accordingly, we find that Petitioner has demonstrated a reasonable
`
`likelihood that it would prevail at trial in establishing that claim 13 is
`
`anticipated by Dubil.
`
`4. Claim 14
`
`Independent claim 14 is substantially similar in scope to claim 13,
`
`except that it omits limitations directed to downloading device configuration
`
`information from a computing device. Thus, claim 14 is broader than claim
`
`13.
`
`The parties raise essentially the same arguments with respect to
`
`claim 14 that we considered with respect to claim 13. In view of our
`
`discussion of paragraphs 18 and 19 of Dubil above with respect to claim 13,
`
`we find that Petitioner has demonstrated a reasonable likelihood that it
`
`would prevail at trial in establishing that claim 14 is anticipated by Dubil.
`
`5. Claim 15
`
`Claim 15 depends from claim 14 and adds a limitation directed to
`
`displaying information in a graphical user interface associated with the
`
`entertainment device. Petitioner relies on paragraph 31 of Dubil as
`
`satisfying this limitation. Pet. 35. Patent Owner argues that Dubil does not
`
`meet the display claim limitation. Prelim. Resp. 34–35.
`
` 15
`
`
`
`IPR2014-01146
`Patent 8,243,207 B2
`
`
`Paragraph 31 of Dubil states, in pertinent part:
`
`The user invokes an activity set, using, for example, selection
`keys on the remote control device 150, or using a menu that is
`presented on a display device.
`
`Ex. 1005 ¶ 31. This evidence is sufficient to warrant institution of a trial.
`
`Accordingly, we find that Petitioner has demonstrated a reasonable
`
`likelihood that it would prevail at trial in establishing that claim 15 is
`
`anticipated by Dubil.
`
`B. Obviousness of Claims 12–15 Over Dubil
`
`Petitioner presents an obviousness theory as an alternative to its
`
`anticipation theory in the first ground asserted in the Petition. Pet. 18.8
`
`Patent Owner argues that Petitioner’s obviousness case is deficient because
`
`it does not comply with the framework set forth in Graham v. John Deere
`
`Co., 383 U.S. 1, 17–18 (1966). We agree.
`
`Essentially, Petitioner merely alleges that Dubil anticipates claims 12
`
`through 15 and, to the extent that it may not anticipate, it nevertheless
`
`renders the claims obvious. See e.g., Pet. 19. This is not sufficient to set
`
`forth a case of obviousness. Novelty under 35 U.S.C. § 102 and
`
`nonobviousness under 35 U.S.C. § 103 are separate conditions of
`
`patentability. See Cohesive Tech., Inc. v. Waters Corp., 543 F.3d 1351,
`
`1363 (Fed. Cir. 2008). “[I]t does not follow that every technically
`
`anticipated invention would also have been obvious.” In re Fracalossi, 681
`
`F.2d 792, 796 (CCPA 1982) (Miller, J., concurring).
`
`
`8 “Ground 1: Claims 12-15 Are Anticipated by the '831 Publication Under
`35 U.S.C. § 102, and if not Anticipated, Are Rendered Obvious by the '831
`Publication Under [35] U.S.C. § 103.” Pet. 18.
`
` 16
`
`
`
`IPR2014-01146
`Patent 8,243,207 B2
`
`
`The tests for anticipation and obviousness are different. Cohesive,
`
`543 F.3d at 1364. Obviousness requires an analysis under the Graham
`
`factors. Id. In this case, Petitioner did not present a proper obviousness case
`
`under Graham. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406–407
`
`(2007); 35 U.S.C. § 312(a); 37 C.F.R. § 42.104(b)(5).
`
`Consequently, we do not find that Petitioner has demonstrated a
`
`reasonable likelihood that it would prevail at trial in establishing that claims
`
`12–15 are obvious over Dubil.
`
`C. Obviousness over Niles and Combinations Based on Niles
`
`Petitioner’s second stated ground of invalidity is phrased in terms of a
`
`plurality of alternatives.
`
`Ground 2: Claims 12-15 Are Unpatentable as Obvious Over
`Niles Alone or in View of the '831 Publication and/or the '204
`Patent Under 35 U.S.C. § 103(a).
`
`Pet. 35. After accounting for the various conjunctive and disjunctive
`
`connectors, Petitioner actually is asserting four grounds of obviousness,
`
`namely, over: (1) Niles alone; (2) Niles and Dubil; (3) Niles and Kozakai;
`
`and (4) Niles, Dubil, and Kozakai. For the reasons discussed below, we do
`
`not find that Petitioner has demonstrated a reasonable likelihood that it
`
`would prevail at trial in establishing that claims 12–15 are obvious over any
`
`of these four alternatives.
`
`1. Obviousness Over Niles Alone
`
`With respect to all four challenged claims, 12–15, Petitioner does not
`
`engage in a proper obviousness analysis under Graham and KSR. In
`
`particular, Petitioner has not provided us with any cogent explanation or
`
`analysis articulating why someone of ordinary skill in the art, having first
`
` 17
`
`
`
`IPR2014-01146
`Patent 8,243,207 B2
`
`
`found differences between Niles and the claimed invention, would have had
`
`reason to modify Niles to bridge those differences in order to achieve the
`
`claimed invention. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
`
`2006)(requiring an obviousness conclusion to be based on explicit
`
`articulated reasoning with rational underpinning) cited with approval in KSR
`
`Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) .
`
`Our rules require that a petition identify the evidence relied upon and
`
`the relevance of the evidence that is relied upon to challenge a claim. 37
`
`C.F.R. § 42.104(b)(5). Petitioner relies primarily on the declaration
`
`testimony of Mr. Geier to bridge the gap between Niles and the claimed
`
`invention. Pet. 35-53. However, Mr. Geier’s testimony does not supply the
`
`requisite reasoning with some rational underpinning to modify Niles alone to
`
`achieve the claimed invention. Instead, Mr. Geier resorts to secondary
`
`references to supply what is missing from Niles without an explanation as to
`
`why a person of ordinary skill in the art would have modified Niles with the
`
`secondary references. See e.g., Ex. 1003 ¶¶ 63, 65, 67, 68. Petitioner’s
`
`repetitious, conclusory allegations that it would have been obvious to
`
`achieve the invention of claims 12- 15 in view of Niles alone, without more,
`
`are insufficient to make a threshold showing to warrant institution of a trial.
`
`Consequently, we find that Petitioner has failed to establish a
`
`reasonable likelihood that it would prevail at trial in establishing that claims
`
`12–15 are obvious over Niles alone.
`
`2. Obviousness of Claims 12–15 over Niles and Dubil; Niles and
`Kozakai; and/or Niles, Dubil, and Kozakai
`
`Petitioner’s assertion of obviousness over various combinations of
`
`references based on Niles suffers from essentially the same infirmities that
`
` 18
`
`
`
`IPR2014-01146
`Patent 8,243,207 B2
`
`
`we have identified above with respect to obviousness over Niles alone.
`
`Petitioner’s assertion of obviousness merely recites allegations that all of the
`
`claim limitations are satisfied by the combination of Niles and various
`
`secondary references. There is no cogent analysis of the differences
`
`between the prior art and the claimed invention. Additionally, Petitioner has
`
`not provided us with any cogent explanation or analysis articulating why
`
`someone of ordinary skill in the art would have had reason to combine Niles
`
`with either Dubil or Kozakai or both to achieve the claimed invention. See
`
`KSR, 550 U.S. at 418 (it can be important to identify a reason that would
`
`have prompted a person of ordinary skill in the art to combine elements in
`
`the way the claimed new invention does). Petitioner merely offers the
`
`following conclusory statements from its declarant, Mr. Geier.
`
` 56. Due to their common subject matter, it is evident that the
`teachings of [Dubil] and/or [Kozakai] can be used
`to
`supplement and combine with the teachings of the Niles
`reference.
`
` 57. Accordingly, it is my opinion that a person of ordinary
`skill in the art would have understood the combined disclosure
`of Niles, [Dubil] and/or [Kozakai] to render claims 12-15 of the
`'468 patent obvious.
`
`Ex. 1003 ¶¶ 56–57. Such conclusory assertions are insufficient to satisfy
`
`Petitioner’s evidentiary burden to warrant institution of a trial. See
`
`Innogenetics, N.V. v. Abbott Labs, 512 F.3d 1363, 1373 (Fed. Cir. 2008)
`
`(criticizing patent challenger’s expert report, among other things, for failing
`
`to explain how or why a person of ordinary skill in the art would have found
`
`claims obvious in light of combinations of particular references); 37 C.F.R.
`
`§ 42.65(a).
`
` 19
`
`
`
`IPR2014-01146
`Patent 8,243,207 B2
`
`
`Accordingly, we find that Petitioner has failed to establish a
`
`reasonable likelihood that it would prevail at trial in establishing that claims
`
`12–15 are obvious over Niles and various combinations of secondary
`
`references.
`
`III. CONCLUSION
`
`We conclude that Petitioner has shown a reasonable likelihood of
`
`prevailing in establishing that claims 13–15 are unpatentable under
`
`35 U.S.C. § 102 as anticipated by Dubil.
`
`
`
`IV. ORDER
`
`In consideration of the foregoing, it is hereby:
`
`ORDERED that, pursuant to 35 U.S.C. § 314(a), an inter partes
`
`review is hereby instituted as to claims 13–15 under 35 U.S.C. § 102 as
`
`anticipated by Dubil.
`
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(c) and
`
`37 C.F.R. § 42.4 (2013), notice is hereby given of the institution of a trial,
`
`such trial commencing on the entry date of this Order; and
`
`FURTHER ORDERED that the trial is limited to the grounds
`
`identified above and no other grounds set forth in the Petition.
`
`
`
` 20
`
`
`
`IPR2014-01146
`Patent 8,243,207 B2
`
`For Petitioner:
`
`Souglas A. Miro
`dmiro@ostrolenk.com
`
`Peter Kang
`pkang@sidley.com
`
`Theodore Chandler
`tchandler@sidley.com
`
`Ferenc Pazmandi
`fpazmandi@sidley.com
`
`Keith Barkaus
`kbarkaus
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
