Takeaway: Evidence of what was well known in the art and evidence of a rationale for modifying the teachings of a reference in accordance with that knowledge may be required because an obviousness analysis requires more than an ipse dixit assertion that everything in a reference was also well known in the art.

In its Decision, the Board denied institution of inter partes review of claim 43 of the ‘453 patent. The ‘453 patent “relates generally to methods and apparatuses for acquiring and certifying physical measurements. . . . [and,] [m]ore particularly, . . . to acquiring and cryptographically certifying a measurement representative of a physical parameter, such that the measurement can be verified at a later time.”

The Board first addressed Patent Owner’s contention that “Petitioner’s identification of the real parties-in-interest is incomplete, and that the Petition should be denied as failing to comply with 35 U.S.C. § 312(a)(2).” Specifically, “Patent Owner asserts that in a related litigation involving the ’453 patent, Petitioner identified an insurance company as covering some of the costs of defending the action against Patent Owner.” The Board found, however, that “Patent Owner’s argument is generic and fails to identify any specific evidence that any parties other than those identified by Petitioner actually is exercising control over or could exercise control over this proceeding.” Accordingly, the Board did not deny the Petition on this basis.

Before turning to its analysis of the patentability challenges of the Petition, the Board found that, despite Petitioner’s proposed construction, “no terms require express construction for purposes of this Decision.”

The Board then turned to Petitioner’s assertion that “Bishop discloses each and every element of claim 43 of the ‘453 patent.” “Bishop relates to a ‘system for identifying ships and aircraft, both in position and time, utilizing shipboard cryptographic equipment and satellites.’” The Board found Petitioner’s argument unpersuasive because “because Petitioner fails to show that Bishop’s position P signal is formed from two separate signals based at least in part on two physical measurements.” Petitioner “has not identified where, if at all, Bishop discloses how the navigation equipment generates the position of the ship.” The Board found that Petitioner’s declaration “includes the same statements as the Petition without providing additional explanation or evidentiary support for us to conclude that Bishop expressly or inherently discloses that its position P signal is formed from two separate signals based at least in part on two physical measurements.” Accordingly, the Board was “not persuaded that Petitioner has established a reasonable likelihood of prevailing on the assertion that Bishop discloses each and every element of claim 43 of the ’453 patent.”

The Board next addressed Petitioner’s assertion that “Bishop would have rendered the subject matter of claim 43 obvious to one of ordinary skill in the art.” The Board was not persuaded:

Petitioner’s argument and paragraph 40 of the Nielson Declaration fail to provide any reason as to why one of ordinary skill in the art would have been motivated to modify Bishop by “measur[ing] and includ[ing] other physical measurements . . . with messages that are sent.” Pet. 24. Rather, Petitioner’s entire position, and Dr. Nielson’s complete testimony, as to why this element of claim 43 would have been obvious consist of the same single conclusory sentence quoted above, and nothing more. See 37 C.F.R. § 42.65(a).

Accordingly, “Petitioner has not established, on this record, a reasonable likelihood of prevailing on the assertion that Bishop would have rendered the subject matter of claim 43 of the ’453 patent obvious as of the effective filing date of the claimed invention.”

The Board next addressed Petitioner’s assertion that “Cox discloses each and every element of claim 43 of the ’453 patent.” As an initial matter, the Board agreed with both parties’ apparent recognition “that generating an augmented measurement requires combining specified elements of the claim,” which is “consistent with the specification of the ‘453 patent.” Yet, “Petitioner’s citations to Cox and the Nielson Declaration do not reflect that Cox discloses combining the signature, time, and discriminator data to form an augmented measurement.” Accordingly, the Board was “not persuaded that Petitioner has established a reasonable likelihood of prevailing on the assertion that Cox discloses each and every element of claim 43 of the ’453 patent.”

The Board next addressed Petitioner’s assertion that Cox would have rendered the subject matter of claim 43 obvious to one of ordinary skill in the art. The Board noted that “Petitioner provides no meaningful analysis of its obviousness challenge over Cox independent of its anticipation challenge.” Because an “obviousness analysis requires more than an ipse dixit assertion that everything in a reference was also well known in the art,” see generally Samsung Elecs. Co. v. Imperium Holdings, Case IPR2015-01233, slip op. at 18 (PTAB Dec. 1, 2015) (Paper 14), [f]ailure to present evidence of that knowledge and evidence of a rationale for modifying the teachings of the reference in accordance with that knowledge does not comply with 37 C.F.R. §§ 42.104(b)(4) and 42.104(b)(5).” Accordingly, “Petitioner has not established, on this record, a reasonable likelihood of prevailing on the assertion that Cox would have rendered the subject matter of claim 43 of the ’453 patent obvious as of the effective filing date of the claimed invention.”

The Board next addressed Petitioner’s assertion “that Swanson discloses each and every element of claim 43 of the ’453 patent.” As with its analysis of Cox, the Board agreed “with the parties’ implications that ‘generating an augmented measurement’ requires effecting a combination based at least in part on the first, second, and third signals” but that “Petitioner’s reliance upon Dr. Nielson’s testimony fares no better” because “Dr. Neilson repeats the same conclusory statement, without additional elaboration or explanation.” Accordingly, the Board was “not persuaded that Petitioner has established a reasonable likelihood of prevailing on the assertion that Swanson discloses each and every element of claim 43 of the ’453 patent.”

The Board next addressed Petitioner’s assertion that Swanson would have rendered the subject matter of claim 43 obvious to one of ordinary skill in the art. As before, however, “Petitioner provides no meaningful analysis of its obviousness challenge over Swanson independent of its anticipation challenge.” Accordingly, the Board found that Petitioner has not established, on this record, a reasonable likelihood of prevailing on the assertion that Cox would have rendered the subject matter of claim 43 of the ’453 patent obvious.

The Board next addressed Petitioner’s assertion “that Clark discloses each and every element of claim 43 of the ’453 patent.” The Board found that Petitioner “has not shown where Clark discloses effecting the combination based on first, second, and third signals that its implicit construction of ‘generating an augmented measurement’ requires.” And assuming “Petitioner intended to rely on Clark’s use of the term ‘validated,’ Petitioner does not explain how or why one of ordinary skill in the art would understand that ‘validated’ results in such generation of an augmented measurement.” Accordingly, the Board was “not persuaded that Petitioner has established a reasonable likelihood of prevailing on the assertion that Clark discloses each and every element of claim 43 of the ’453 patent.”

The Board next addressed Petitioner’s assertion that Clark would have rendered the subject matter of claim 43 obvious to one of ordinary skill in the art. As before, however, the Board found that Petitioner has not established, on this record, a reasonable likelihood of prevailing on the assertion that Clark would have rendered the subject matter of claim 43 of the ’453 patent obvious.

Lastly, the Board addressed Petitioner’s assertion “that the combination of Clark and FIPS 113 would have rendered the subject matter of claim 43 obvious to one of ordinary skill in the art.” The Board found, however, that “Petitioner does not contend that FIPS 113 remedies the deficiencies discussed above with respect to whether Clark teaches or suggests the ‘generating an augmented measurement’ step of claim 43.” Accordingly, “Petitioner has not established, on this record, a reasonable likelihood of prevailing on the assertion that Clark and FIPS 113 would have rendered the subject matter of claim 43 of the ’453 patent obvious as of the effective filing date of the claimed invention.”

Accordingly, the Board denied institution of inter partes review.

Sensus USA, Inc. v. Certified Measurement, LLC, IPR2015-01439

Paper 13: Decision Denying Institution of Inter Partes Review

Dated: December 11, 2015

Patents: 6,289,453 B1

Before: Phillip J. Kauffman, Bart A. Gerstenblith, and Patrick M. Boucher

Written by: Gerstenblith

Related Proceedings: Sensus USA, Inc. v. Certified Measurement, LLC, No. 3:14-cv-01069 (D. Conn.); Certified Measurement, LLC v. Centerpoint Energy Houston Electric, LLC and Itron, Inc., No. 2:14-cv-00627 (E.D. Tex.); ALSTOM Grid Inc. v. Certified Measurement, LLC, No. 1:15-cv-00072 (D. Del.); and ABB Inc. v. Certified Measurement, LLC, No. 1:15-cv-00461 (D. Del.); IPR2015-00572.