Trials@uspto.gov
`571-272-7822
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`
`
`
`Paper 9
`Entered: June 1, 2016
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`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`EURAMAX INTERNATIONAL, INC.,
`Petitioner,
`
`v.
`
`INVISAFLOW, LLC,
`Patent Owner.
`____________
`
`Case IPR2016-00423
`Patent 8,556,195 B1
`____________
`
`
`Before SALLY C. MEDLEY, LYNNE E. PETTIGREW, and
`AMANDA F. WIEKER, Administrative Patent Judges.
`
`WIEKER, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`

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`Case IPR2016-00423
`Patent 8,556,195 B1
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`
`I. INTRODUCTION
`
`Petitioner, Euramax International, Inc., filed a Petition requesting an
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`inter partes review of claims 1–11 of U.S. Patent No. 8,556,195 B1
`
`(Ex. 1001, “the ’195 patent”). Paper 1 (“Pet.”). In response, Patent Owner,
`
`Invisaflow, LLC, filed a Preliminary Response. Paper 7 (“Prelim. Resp.”).
`
`We have jurisdiction under 35 U.S.C. § 314, which provides that an inter
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`partes review may not be instituted “unless . . . the information presented in
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`the petition . . . shows that there is a reasonable likelihood that the petitioner
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`would prevail with respect to at least 1 of the claims challenged in the
`
`petition.”
`
`For the reasons set forth below, we institute an inter partes review of
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`claims 1–11 of the ’195 patent.
`
`A. Related Matter
`
`According to Petitioner, the ’195 patent is involved in the following
`
`lawsuit: InvisaFlow LLC. v. Euramax International, Inc. et al., No. 1:14-cv-
`
`3026 (N.D. Ga.). Pet. 1.
`
`B. The ’195 Patent
`
`The ’195 patent relates to “an attachment for emitting water from a
`
`water source.” Ex. 1001, Abstract. Figures 1 and 2 are reproduced below.
`
`2
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`Case IPR2016-00423
`Patent 8,556,195 B1
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`Figures 1 and 2 depict the attachment of the ’195 patent, which includes
`
`inlet end 14, outlet end 18, and transitional section 16 therebetween. Id. at
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`
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`3:17–20, 3:45–49.
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`C. Illustrative Claim
`
`Claim 1 is the only independent claim. Claims 2–11 depend directly
`
`or indirectly from independent claim 1.
`
`Claim 1, reproduced below, is illustrative:
`
`A drainage attachment for directing water from an
`1.
`
`elevated water source, the attachment comprising:
`an inlet end including an intake opening, the intake
`opening comprising an inlet width, the intake opening including
`an inlet center point defining a longitudinal axis;
`an outlet end comprising a top portion, a bottom portion,
`and first and second side portions, the outlet end including an
`outlet opening, the outlet opening comprising an outlet width;
`and
`
`a transitional section between the inlet end and the outlet
`end, wherein the transitional section increases in width and
`decreases in height towards the outlet end;
`wherein the longitudinal axis extends in a first plane that
`is parallel to a second plane that is located between the top and
`bottom portions of the outlet end and bisects the first and
`second side portions of the outlet end;
`
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`Patent 8,556,195 B1
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`wherein at least a portion of the outlet opening top
`portion is positioned below the first plane; and
`wherein the outlet width is greater than the inlet width to
`disperse water flowing through the attachment and out of the
`outlet opening, thereby reducing the effects of erosion adjacent
`the outlet opening.
`
`Ex. 1001, 6:12–33.
`
`D. Prior Art Relied Upon
`
`
`
`Petitioner relies upon the following prior art references:
`
`Francis
`
`Farmer
`
`Hicks
`
`Sweers
`
`
`
`
`
`
`
`
`
`
`US 2,397,655
`
`US 1,239,373
`
`US 3,640,465
`
`US 5,658,092
`
`
`
`
`
`
`
`
`
`Apr. 2, 1946
`
`(Ex. 1003)
`
`Sept. 4, 1917
`
`(Ex. 1004)
`
`Feb. 8, 1972
`
`(Ex. 1005)
`
`Aug. 19, 1997
`
`(Ex. 1006)
`
`E. Asserted Grounds of Unpatentability
`
`Petitioner asserts the following grounds of unpatentability:
`
`Reference(s)
`
`Basis
`
`Challenged Claims
`
`Francis
`
`§ 103(a)
`
`1–11
`
`Francis and Sweers
`
`§ 103(a)
`
`8–9
`
`Farmer
`
`§ 103(a)
`
`1–11
`
`Farmer and Hicks
`
`§ 103(a)
`
`9
`
`Francis and Farmer
`
`§ 103(a)
`
`1–11
`
`Francis, Farmer, and Sweers
`
`§ 103(a)
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`8–9
`
`
`
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`Case IPR2016-00423
`Patent 8,556,195 B1
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`II. ANALYSIS
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`A. Claim Interpretation
`
`In an inter partes review, claim terms in an unexpired patent are given
`
`their broadest reasonable construction in light of the specification of the
`
`patent in which they appear. 37 C.F.R. § 42.100(b); see also In re Cuozzo
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`Speed Techs., LLC, 793 F.3d 1268, 1278–79 (Fed. Cir. 2015), cert. granted
`
`sub nom. Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 890 (mem.) (2016).
`
`Under the broadest reasonable construction standard, claim terms are given
`
`their ordinary and customary meaning, as would be understood by one of
`
`ordinary skill in the art in the context of the entire disclosure. In re
`
`Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).
`
`1. “A drainage attachment for directing water from an elevated
`water source” (Claim 1, preamble)
`
`Patent Owner contends that the preamble of claim 1 is limiting
`
`because it represents the essence of the invention and was relied upon during
`
`prosecution of the ’195 patent and its parent, Application No. 12/620,327
`
`(“the ’327 application”). Prelim. Resp. 13–15. Petitioner disagrees. Pet. 6.
`
`Generally, a preamble is not construed as a limitation. Allen Eng’g
`
`Corp. v. Bartell Indus., Inc., 299 F.3d 1336, 1346 (Fed. Cir. 2002). In
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`particular, when the claim body describes a structurally complete invention
`
`such that deletion of the preamble phrase does not affect the structure, the
`
`preamble is not limiting. Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc.,
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`289 F.3d 801, 809 (Fed. Cir. 2002). A preamble is limiting, however, when
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`“it is ‘necessary to give life, meaning, and vitality’ to the claim.’” Id.
`
`(quoting Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1309
`
`5
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`(Fed. Cir. 1999)).
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`Patent 8,556,195 B1
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`We have considered Patent Owner’s arguments; however, we are not
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`persuaded, at this stage of the proceeding and on the record before us, that
`
`the preamble of claim 1 is limiting. The preamble of claim 1 does not recite
`
`essential structure and does not appear necessary to give life, meaning, or
`
`vitality to the claims. For example, the body of claim 1 recites an inlet end,
`
`an outlet end, and a transitional section therebetween, and further recites
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`additional structural limitations concerning the position and orientation of
`
`the inlet and outlet ends. Together, these limitations present a structurally
`
`complete invention without reliance on the preamble of the claim. Ex. 1001,
`
`6:14–33. The preamble indicates merely how these components are
`
`intended to be used, i.e., as a “drainage attachment for directing water from
`
`an elevated water source.” Id. at 6:12–13.
`
`Patent Owner’s reliance on Vizio, Inc. v. International Trade
`
`Commission, 605 F.3d 1330 (Fed. Cir. 2010), is misplaced. Prelim. Resp.
`
`13–14. Unlike in Vizio, 605 F.3d at 1341, the preamble of claim 1 does not
`
`give meaning to the structure recited subsequently in the body of the claim.
`
`Rather, that structure stands alone as an apparatus that has meaning and
`
`purpose, even without the preamble. Additionally, unlike in Vizio, 605 F.3d
`
`at 1340, the preamble of claim 1 does not represent “the essence or a
`
`fundamental characteristic” of the invention. Here, the essence of the
`
`invention lies in the attachment’s “low-profile” nature, not in the specific
`
`water source to which it is connected. See, e.g., Ex. 1001, Title, 2:33–56.
`
`We understand that “whether preamble recitations are structural
`
`limitations or mere statements of purpose or use ‘can be resolved only on
`
`review of the entirety of the patent to gain an understanding of what the
`
`inventors actually invented and intended to encompass by the claim.’” Rowe
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`v. Dror, 112 F.3d 473, 478 (Fed. Cir. 1997); Prelim. Resp. 12, 14–15. Such
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`a review, however, confirms that the preamble is not limiting. For example,
`
`although the ’195 patent Specification discloses that the claimed apparatus
`
`“is used in a gravity flow, surface drainage system,” the Specification also
`
`describes more broadly that the apparatus is used with “a pipe or down
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`spout,” including in “flat elevations.” Ex. 1001, 1:31, 1:66–2:3, 2:40–44,
`
`3:43–45, 5:37–45.
`
`Further, although the preamble was amended during prosecution of
`
`the ’195 patent, it was not amended to overcome a prior art rejection. See,
`
`e.g., Ex. 1002, 63 (amending preamble to recite “A low profile drainage
`
`attachment configured to direct water from a for directing water from an
`
`elevated water source to a drainage location, the attachment comprising”),
`
`88–92 (rejecting claims for obviousness-type double patenting). And
`
`although similar language was added to the claims of the ’327 application, to
`
`overcome prior art rejections, those amendments included notably more than
`
`what is recited in the preamble at issue. For example, the preamble of claim
`
`21 of the ’327 application was amended to require “[a]n attachment for
`
`reducing erosion and directing use in a gravity flow, surface drainage system
`
`configured to direct water from [[a]] an elevated water source to a drainage
`
`location.” Ex. 2001, 45. Additionally, the body of claim 21 was amended
`
`to include limitations purportedly not taught by the applied prior art. Id. at
`
`45, 52–55. The preamble language appearing in claim 1 of the ’195 patent,
`
`therefore, was not relied upon sufficiently during prosecution to convert the
`
`preamble to a positive limitation. See Catalina Mktg. Int’l, Inc., 289 F.3d at
`
`808–809 (“[C]lear reliance on the preamble during prosecution to
`
`distinguish the claimed invention from the prior art transforms the preamble
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`into a claim limitation because such reliance indicates use of the preamble to
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`define, in part, the claimed invention. Without such reliance, however, a
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`preamble generally is not limiting.”) (citation omitted).
`
`Accordingly, for purposes of this Decision, we do not construe the
`
`preamble as a limitation.
`
`2. “thereby reducing the effects of erosion adjacent the outlet opening”
`(Claim 1)
`
`Petitioner contends that this phrase is not entitled to patentable weight
`
`because it states a desired result. Pet. 8–9. Patent Owner contends that this
`
`phrase should be given patentable weight because it is a fundamental
`
`characteristic of the claimed invention upon which the applicant relied when
`
`prosecuting the parent ’327 application. Prelim. Resp. 21–23.
`
`Patent Owner cites Textron Innovations Inc. v. American Eurocopter
`
`Corp., 498 Fed. App’x 23 (Fed. Cir. 2012) (unpublished), which states: “In
`
`certain circumstances functional language may be used to add limitations to
`
`an apparatus claim . . . [where] the language describes something about the
`
`structure of the apparatus rather than merely listing its intended or preferred
`
`uses.” Id. at 28; Prelim. Resp. 12. Generally, however, “apparatus claims
`
`cover what a device is, not what a device does.” Hewlett-Packard Co. v.
`
`Bausch & Lomb Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990).
`
`We have considered Patent Owner’s arguments and we are not
`
`persuaded, at this stage of the proceeding and on the record before us, that
`
`this language is entitled to patentable weight. Specifically, this language
`
`describes merely an intended use of the claimed apparatus, e.g., to reduce
`
`the effects of erosion adjacent the outlet opening. This language does not
`
`“describe[] something about the structure of the apparatus.” Textron, 498
`
`Fed. App’x at 28. Rather, the preceding claim language (“the outlet width is
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`greater than the inlet width to disperse water flowing through the attachment
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`and out of the outlet opening”) describes the structure necessary to perform
`
`this intended function. Ex. 1001, 6:30–32.
`
`Patent Owner argues that applicant relied on this language during
`
`prosecution of the parent ’327 application, to distinguish over the applied
`
`prior art to Robinson, which purportedly disclosed a nozzle. Prelim. Resp.
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`21–22. However, the prosecution history of the ’327 application shows that
`
`those claims were amended to recite also that “the outlet opening is
`
`positioned below the inlet end center point,” a feature purportedly not
`
`present in Robinson. See, e.g., Ex. 2001, 45, 52–54. Therefore, we are
`
`unpersuaded by Patent Owner’s reliance on prosecution history.1
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`Accordingly, for purposes of this Decision, we do not afford
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`patentable weight to the phrase “thereby reducing the effects of erosion
`
`adjacent the outlet opening,” as recited in claim 1.
`
`3. Remaining Terms
`
`Petitioner also proposes for construction the following terms and
`
`phrases: “an inlet center point defining a longitudinal axis” in conjunction
`
`with “the longitudinal axis extends in a first plane that is parallel to a second
`
`plane that is located between the top and bottom portions of the outlet end
`
`and bisects the first and second side portions of the outlet end”; “an outlet
`
`1 Furthermore, whether the claimed apparatus functions as a nozzle or
`reduces erosion appears to depend on the force of the water applied to the
`apparatus, and is not dictated by any structural feature of the apparatus itself.
`See In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997) (“It is well settled
`that the recitation of a new intended use for an old product does not make a
`claim to that old product patentable. [Appellant’s] contention that his
`structure will be used to dispense popcorn does not have patentable weight if
`the structure is already known, regardless of whether it has ever been used in
`any way in connection with popcorn.”) (citations omitted).
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`end comprising a top portion, a bottom portion, and first and second side
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`portions”; “outlet opening top portion”; “attachment member”; “slot”; and
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`“at least a major portion of the outlet opening.” See Pet. 6–9; Prelim. Resp.
`
`13–24.
`
`At this stage of the proceeding and on the record before us, we need
`
`not construe explicitly these terms and phrases in reaching our Decision.
`
`See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir.
`
`1999). Accordingly, we provide the terms and phrases their ordinary and
`
`customary meaning as understood by a person of ordinary skill in the art in
`
`light of the ’195 patent Specification. Further, we note that the constructions
`
`proposed by Petitioner and Patent Owner for the following phrases do not
`
`add any clarity to each of the phrases, which are relatively simple to
`
`understand: “an inlet center point defining a longitudinal axis” in
`
`conjunction with “the longitudinal axis extends in a first plane that is parallel
`
`to a second plane that is located between the top and bottom portions of the
`
`outlet end and bisects the first and second side portions of the outlet end”;
`
`“an outlet end comprising a top portion, a bottom portion, and first and
`
`second side portions”; and “outlet opening top portion.” See Pet. 6–8;
`
`Prelim. Resp. 15–20.
`
`
`
`
`
`B. Obviousness based on Farmer
`
`Petitioner contends that claims 1–11 of the ’195 patent are
`
`unpatentable under 35 U.S.C. § 103(a) over Farmer. Pet. 35–46. Petitioner
`
`explains how Farmer, in combination with the knowledge of a person of
`
`ordinary skill in the art, teaches the subject matter of each challenged claim,
`
`and relies upon the Declaration of Mr. James B. Goddard to support its
`
`positions. Id.; Ex. 1007 (the “Goddard Declaration”). At this stage of the
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`proceeding, we are persuaded by Petitioner’s explanations and supporting
`
`evidence with respect to claims 1–8, 10, and 11.
`
`1. Principles of Law
`
`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 ordinary skill in the art; and (4) objective evidence of
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`nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`
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`2. Farmer
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`
`
`Farmer discloses a street flushing nozzle. Ex. 1004, Title. Farmer’s
`
`Figure 6 and Figure 7 are reproduced below.
`
`
`
`
`
`Figure 6 and Figure 7 depict a top view and a side sectional view,
`
`respectively, of Farmer’s nozzle head. Id. at 1:54–58. As shown in Figure
`
`6, the nozzle head is “a fan shape, having a curved front face 11a, the side
`
`walls 7a curving gradually backward toward the nipple 9a from the ends of
`
`the front face of the nozzle.” Id. at 2:11–15. Threaded nipple 9a engages
`
`with a supply pipe. Id. at 1:68–71. As shown in Figure 7, top wall 8a of the
`
`nozzle head “curves upwardly, bearing away from the lower wall [6a]
`
`toward the rear end of the nozzle.” Id. at 2:19–22.
`
`3. Analysis
`
`a. Claim 1
`
`Petitioner contends that Farmer discloses all structural limitations of
`
`independent claim 1. Pet. 35–36, 40–43. Petitioner contends that if the
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`preamble is deemed to be limiting, it would have been obvious for a person
`
`of ordinary skill in the art to implement Farmer’s nozzle with an elevated
`
`water source, such as the water tank of a street cleaner truck. Id. at 36–37.
`
`Petitioner also contends that Farmer discloses an outlet opening having a
`
`width greater than the width of the inlet opening, to disperse water flowing
`
`through the attachment. Id. at 36, 43. Petitioner contends that if the claim
`
`language “thereby reducing the effects of erosion adjacent the outlet
`
`opening” is deemed to be limiting, Farmer’s nozzle inherently performs this
`
`function because Farmer discloses “the structure claimed to achieve the
`
`desired result.” Id. at 36.
`
`In response, Patent Owner contends that Petitioner fails to disclose “a
`
`drainage attachment for directing water from an elevated water source,” as
`
`recited in the preamble of claim 1, because Farmer teaches a street flushing
`
`nozzle. Prelim. Resp. 32.2 However, because we conclude that the
`
`preamble is not limiting, as discussed in Section II(A) above, this argument
`
`is not persuasive.
`
`Patent Owner also contends that the claim language “the outlet width
`
`is greater than the inlet width to disperse water flowing through the
`
`attachment and out of the outlet opening, thereby reducing the effects of
`
`erosion adjacent the outlet opening” is entitled to patentable weight and is
`
`2 We are unpersuaded by Patent Owner’s discussion of the Robinson
`reference, which was applied against claims of the parent ’327 application.
`Prelim. Resp. 31–32, 34. During prosecution of the ’327 application, the
`Examiner allowed claims over Robinson after an amendment adding “the
`outlet opening is positioned below the inlet end center point,” a feature
`purportedly not present in Robinson. See, e.g., Ex. 2001, 45, 52–53; see also
`supra Section II(A). On the current record, the Petition shows that this
`structural arrangement is present in Farmer. See Pet. 35–36, 42; Ex. 1004,
`Fig. 7.
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`not disclosed by Farmer. Prelim. Resp. 33. Patent Owner contends that
`
`Farmer seeks instead to “increase erosion for cleaning streets” and,
`
`therefore, the Petition’s assertion that Farmer inherently reduces erosion is
`
`“inconsistent with Farmer’s express design considerations.” Id. at 33–34.
`
`Patent Owner does not dispute that Farmer’s nozzle includes an outlet
`
`width greater than the inlet width to disperse water flowing through the
`
`attachment and out of the outlet opening. Id.; see Pet. 36, 43; Ex. 1004, Fig.
`
`6. Because we conclude that the remainder of the cited claim language, e.g.,
`
`“thereby reducing the effects of erosion adjacent the outlet opening,” is not
`
`entitled to patentable weight, as discussed in Section II(A) above, this
`
`argument is not persuasive.
`
`Patent Owner makes no other arguments directed to this proposed
`
`ground of unpatentability. Accordingly, we have reviewed the proposed
`
`ground of unpatentability, the Goddard Declaration, and Patent Owner’s
`
`arguments, and we are persuaded, at this stage of the proceeding and on the
`
`record before us, that Petitioner has established a reasonable likelihood that
`
`that it will prevail on its assertion that independent claim 1 would have been
`
`obvious over Farmer.
`
`b. Claims 2–8, 10, and 11
`
`At this stage of the proceeding, Patent Owner does not address
`
`separately Petitioner’s explanations and supporting evidence regarding
`
`challenged claims 2–8, 10, or 11. See Prelim. Resp. 34; Pet. 37–40, 43–46.
`
`We have reviewed the proposed ground of unpatentability related to these
`
`claims, as well as the Goddard Declaration, and we are persuaded, at this
`
`stage of the proceeding and on the record before us, that Petitioner has
`
`established a reasonable likelihood that that it will prevail on its assertion
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`that dependent claims 2–8, 10, and 11 would have been obvious over Farmer
`
`in combination with the knowledge of a person of ordinary skill in the art.
`
`However, we are not persuaded that Petitioner has established a
`
`reasonable likelihood that it will prevail on its assertion that dependent claim
`
`9 would have been obvious over Farmer in combination with the knowledge
`
`of a person of ordinary skill in the art. Specifically, the Petition fails to
`
`establish sufficiently that it would have been obvious to a person of ordinary
`
`skill in the art to modify the attachment member of Farmer’s inlet to include
`
`a “slot configured to engage the water source,” as claimed, or that a person
`
`of ordinary skill in the art would have been so motivated. See Pet. 39. The
`
`Petition incorporates improperly the Goddard Declaration to make this case,
`
`without setting forth an obviousness analysis in the Petition itself. Id.; Ex.
`
`1007 ¶¶ 98–100; see also 37 C.F.R. § 42.63(a)(3).
`
`C. Obviousness based on Farmer and Hicks
`
`Petitioner contends that claim 9 of the ’195 patent is unpatentable
`
`under 35 U.S.C. § 103(a) over the combination of Farmer and Hicks.
`
`Pet. 46–49. Petitioner explains how this proffered combination teaches the
`
`subject matter of the challenged claim, and presents rationales to combine
`
`the references’ respective teachings. Id. Petitioner also relies upon the
`
`Goddard Declaration to support its positions. Id.; Ex. 1007 ¶¶ 105–107.
`
`At this stage of the proceeding, Patent Owner does not provide
`
`substantial analysis of this proposed ground of unpatentability. See Prelim.
`
`Resp. 34. Rather, Patent Owner states only that Farmer’s deficiencies with
`
`respect to independent claim 1 are fatal to dependent claim 9, and Hicks
`
`does not cure those deficiencies. Id.
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`We have reviewed the proposed ground of unpatentability based on
`
`Farmer and Hicks, as well as the Goddard Declaration, and we are
`
`persuaded, at this stage of the proceeding and on the record before us, that
`
`Petitioner has established a reasonable likelihood that it will prevail on its
`
`assertion that claim 9 would have been obvious over Farmer and Hicks.
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`Petitioner contends that Hicks teaches a hose system with “a coupling
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`member 21 having a tapered groove 33 that releasably fastens in the female
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`snap-fit coupling portion 13.” Pet. 46–49. Petitioner presents sufficiently an
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`articulated reasoning with some rational underpinning to support the legal
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`conclusion of obviousness, which is supported by the Goddard Declaration.
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`Id.; see KSR, 550 U.S. at 418. We are not persuaded by Patent Owner’s
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`argument that Farmer is deficient with respect to claim 1, for the reasons
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`discussed in Section II(B) above.
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`D. Remaining Grounds Challenging Claims of the ’195 Patent
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`The promulgated rules for inter partes review proceedings are to “be
`
`construed to secure the just, speedy, and inexpensive resolution of every
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`proceeding.” 37 C.F.R. § 42.1(b). As a result, and in determining whether
`
`to institute an inter partes review of a patent, the Board, in its discretion,
`
`may “deny some or all grounds for unpatentability for some or all of the
`
`challenged claims.” Id. § 42.108(b). Therefore, we exercise our discretion
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`and decline to institute review based on any of the asserted grounds
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`advanced by Petitioner that are not identified below as being part of the trial.
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`See 35 U.S.C. § 314(a).
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`III. CONCLUSION
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`
`
`For the foregoing reasons, we are persuaded that the information
`
`presented in the Petition establishes a reasonable likelihood that Petitioner
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`Case IPR2016-00423
`Patent 8,556,195 B1
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`would prevail in showing that claims 1–11 of the ’195 patent are
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`unpatentable. At this stage of the proceeding, the Board has not made a final
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`determination with respect to the patentability of the challenged claims.
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`In consideration of the foregoing, it is:
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`IV. ORDER
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`ORDERED that pursuant to 35 U.S.C. § 314(a), an inter partes
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`review is hereby instituted based on the following grounds:
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`A. claims 1–8, 10, and 11 of the ’195 patent as unpatentable under
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`§ 103(a) over Farmer; and
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`B. claim 9 of the ’195 patent as unpatentable under § 103(a) over
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`Farmer and Hicks;
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`FURTHER ORDERED that no other ground of unpatentability
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`asserted in the Petition is authorized for this inter partes review;
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`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(c) and
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`37 C.F.R. § 42.4, notice is hereby given of the institution of a trial; the trial
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`will commence on the entry date of this decision.
`
`
`
`17
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`

`
`Case IPR2016-00423
`Patent 8,556,195 B1
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`PETITIONER:
`
`Wab Kadaba
`wkadaba@kilpatricktownsend.com
`
`Renae Wainwright
`rwainwright@kilpatricktownsend.com
`
`
`
`PATENT OWNER:
`
`Richard Matthews
`rmatthews@williamsmullen.com
`
`Andrew Shores
`ashores@williamsmullen.com
`
`
`
`
`18