Category Archives: Oral Hearing
Final Written Decision Concluding Unpatentability in view of Previously-Cited Reference IPR2014-01084
Takeaway: Whether a prior art reference was previously taken into account by the Patent Office may be a relevant consideration for the Board in an institution decision under 35 U.S.C. § 325(d), but may not be a relevant consideration when determining whether a petitioner has established unpatentability by a preponderance of the evidence. Continue reading
Final Written Decision Finding Challenged Claims Obvious IPR2014-00764
In its Final Written Decision, after having instituted trial on some of the challenged claims, the Board found that Petitioner had shown by a preponderance of the evidence that claims 1-11, 15, and 17-26 of the ’832 patent are unpatentable. The Board also denied Petitioner’s Motion to Exclude.
The ’832 patent relates to “a trajectory detection and feedback system, useful to evaluate trajectory parameters of a basketball shot at a basketball hoop.” The Board first addressed claim construction of the unexpired patent under the broadest reasonable interpretation in light of the specification.
The Board construed the term related to the location of velocity determination: “including trajectory locations after the basketball enters the basketball hoop.” Patent Owner argued that the velocity determination should be limited to “post-hoop velocity” or velocity of the basketball after it enters the hoop as opposed to entry velocity of the basketball. Petitioner argued that the term was not so limited and “is broad enough to include the entry velocity,” pointing to an earlier recitation in the claims of “one or more trajectory locations near the basketball hoop.” The Board found that Patent Owner’s proposed construction was unreasonably narrow, and was persuaded that Petitioner’s interpretation was consistent with the broadest interpretation in light of the specification.
The Board then addressed Petitioner’s Motion to Exclude a table in paragraph 34 of Dr. Silverberg’s Declaration (Ex. 2001), and all testimony related to that table. In particular, Petitioner objected to the table because Dr. Silverberg “did not provide—at least as of the conclusion of Dr. Silverberg’s deposition—source data for the numbers in the table,” and cited to 37 C.F.R. § 42.65(a) in arguing that such testimony without underlying facts or data should be entitled little or no weight. Patent Owner argued that the testimony is admissible as it “is founded on his considerable experience,” and that the motion goes “to weight and not admissibility.” The Board agreed with Patent Owner and denied the motion.
Turning to the obviousness ground based on Marinelli and Mullaney, Patent Owner argued that the prior art did not teach measurement of entry angle and velocity of the basketball, as allegedly required by the independent claims, but rather taught calculation of those values. The Board was not persuaded, finding the argument to be not commensurate in scope with the claims. In particular, the Board noted that the claims require “a processor configured to determine the angle and velocity,” which includes “determination by calculation.” Further, the Board was persuaded by Petitioner’s argument that entry velocity and angle were known to be important characteristics in basketball, and that it would have been obvious to apply the disclosure in Marinelli of a modern “accelerometer network and process, to moveable sports objects in order to determine trajectory characteristics.”
The Board also found Patent Owner’s argument regarding post-hoop velocity unpersuasive because the Board did not adopt Patent Owner’s proposed claim construction. Patent Owner also argued that the Marinelli reference only disclosed measurement of spin rate, having no application in basketball. The Board disagreed with the premise that spin rate has no relevance, but even if so, the Board was still not persuaded because Marinelli also disclosed “the determination of various trajectory characteristics of moving sports objects, not only spin.” As the Board noted, it “will not presume that the person of ordinary skill in the art is an automaton unable to envision applications of the teachings beyond that explicitly disclosed.”
The Board also addressed an argument related to whether Marinelli provided an enabling disclosure that arose from questioning during the oral hearing. Even though the judges apparently elicited the argument from counsel for Patent Owner during the hearing, the Board noted that the argument was not found in Patent Owner’s papers, and counsel’s argument at the hearing cannot serve as a substitute for evidence.
As to the dependent claims, Patent Owner did not argue them separately. Thus, the Board found that Petitioner had shown by a preponderance of the evidence that claims 1-6, 11, 15, 21, 23, 25, and 26 would have been obvious over Marinelli and Mullaney. The Board also found that Petitioner had established unpatentability of claims 7-10, 17-20, 22, and 24 on the remaining grounds for similar reasons.
Infomotion Sports Tech., Inc. v. Pillar Vision, Inc., IPR2014-00764
Paper 30: Final Written Decision
Dated: November 12, 2015
Patent: 8,622,832 B2
Before: Ken B. Barrett, James P. Calve, and Jacqueline Wright Bonilla
Written by: Barrett
Related Proceedings: Pillar Vision, Inc. v. InfoMotion Sports Technologies, Inc., No. 2:14-cv-00043-RDP (N.D. Ala. filed Jan. 8, 2014)
Denying Motion for Live Testimony to Respond to Lack of Nexus Assertions IPR2014-00687
In its Order, the Board granted the parties’ requests for oral argument in the three related proceedings. The Board also denied Patent Owner’s request to offer live testimony from Mr. Robin Walker, its former Vice President of Sales and Marketing Director, because the Board was not persuaded that the testimony “would further the efficient administration of these proceedings or is necessary in the interest of justice” under 37 C.F.R. § 42.5. Continue reading
Denying Motion for Live Testimony at Oral Argument IPR2014-00599
In its Decision, the Board denied Petitioner’s request to present live testimony from its expert witness at the hearing in this proceeding. Continue reading
Denying Leave to File an Additional Motion to Exclude IPR2014-00042
In its Order, the Board refused Patent Owner’s request for authorization to file an additional motion to exclude. Also, the Board ordered that Paper 46 be expunged from the record. Continue reading
Order re Oral Hearing IPR2014-00041, 43, 51, 54, 55
In its Order, the Board postponed the date for the oral hearing in the proceedings and authorized Petitioner’s request to file a Sur-reply in response to Patent Owner’s Reply in support of Patent Owner’s Motion relating to real parties-in-interest. Continue reading
Final Written Decision IPR2013-00296
Takeaway: Parties are not permitted to raise new arguments or evidence at oral hearing.
In its Decision, the Board held that each of challenged claims 1-15 of the ’879 patent was unpatentable. In particular, the Board found that Petitioner had shown by a preponderance of the evidence that claims 1-7 and 15 were unpatentable over Kammerl and Iwami; that claims 8, 9, and 11–13 were unpatentable over Kammerl, Iwami, and Kobayashi; that claim 10 was unpatentable over Kammerl, Iwami, Kobayashi, and Chau; and that claim 14 was unpatentable over Kammerl, Iwami, and Gordon. Continue reading
Final Written Decision IPR2013-00240
68 claims found unpatentable; 3 claims found patentable
In its Final Written Decision, the Board ordered that Petitioner had shown by a preponderance of the evidence that claims 1-6, 11-12, 15-18, 22-33, 41-72, and 74-85 of the ’905 patent are unpatentable. In particular, the Board found that Petitioner has demonstrated by a preponderance of the evidence that claims 1-4, 11, 15-18, 22–33, 41-57, 59-72, and 74-85 are anticipated by Hoffberg; that claims 1, 2, 4-6, 11-12, 15-16, 18, 22, 24-29, 41-55, 57-72, and 74-85 are anticipated by Fleming III; and that claims 1-6, 11-12, 15-18, 22-33, 41-72, and 74-85 would have been obvious over Fleming III and Hoffberg. At the same time, the Board ordered that Petitioner had not shown by a preponderance of the evidence that claims 36-38 of the ’905 patent are unpatentable. Continue reading
Authorizing Opposition to Motion to Exclude IPR2013-00535
In its Order, the Board authorized Petitioner to file an Opposition to Patent Owner’s Motion to Exclude, including appropriate supporting evidence. The Board also indicated that no authorization was needed for Patent Owner to substitute its back-up counsel, which requires only the filing of updated mandatory notices. The Board also clarified how the oral hearings would proceed in the three related inter partes review proceedings. Continue reading