- Fieldpiece Instruments, Inc. v. Twin Rivers Engineering, Inc.Institution deniedPTAB · Jun 9, 2017 · IPR2017-00362 · APJ Monica S Ullagaddi · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 2, 3, 6, 7, and 9 were obvious over the asserted references.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We are not persuaded by Petitioner’s arguments because Petitioner does not point to sufficient evidence or explain how Wong, Wallack, Sibley, Horiba, Johnson Controls, and Moyer teach or suggest the “without . . . secondary tracer” limitations recited in claims 2, 6, 7, and 9. In the present proceeding, citing to these references generally, particularly without citation to specific portions, is insufficient to meet Petitioner’s burden of persuasion. See DeSilva v. DiLeonardi, 181 F.3d 865, 866–67 (Fed. Cir. 1999) (“A brief must make all arguments accessible to the judges, rather than ask them to play archeologist with the record.”). Moreover, we disagree with Petitioner’s contention that the silence of the references regarding the “without . . . secondary tracer” limitations teaches or otherwise suggests the negative limitation recited in claims 2, 6, 7, and 9. See Santarus, Inc. v. Par Pharm., Inc., 694 F.3d 1344, 1351 (Fed. Cir. 2012) (“Negative claim limitations are adequately supported when the specification describes a reason to exclude the relevant limitation.”); see also Inphi Corp. v. Netlist, Inc., 805 F.3d 1350, 1357 (Fed. Cir. 2015) (“We hold that Santarus did not create a heightened written description standard for negative claim limitations and that properly described, alternative features are sufficient to satisfy the written description standard of § 112, paragraph 1 for negative claim limitations.”)” slip op. at 13
- BurdenInstitution denied
“We are not persuaded by Petitioner’s arguments because Petitioner does not point to sufficient evidence or explain how Wong, Wallack, Sibley, Horiba, Johnson Controls, and Moyer teach or suggest the “without . . . secondary tracer” limitations recited in claims 2, 6, 7, and 9. In the present proceeding, citing to these references generally, particularly without citation to specific portions, is insufficient to meet Petitioner’s burden of persuasion. See DeSilva v. DiLeonardi, 181 F.3d 865, 866–67 (Fed. Cir. 1999) (“A brief must make all arguments accessible to the judges, rather than ask them to play archeologist with the record.”). Moreover, we disagree with Petitioner’s contention that the silence of the references regarding the “without . . . secondary tracer” limitations teaches or otherwise suggests the negative limitation recited in claims 2, 6, 7, and 9. See Santarus, Inc. v. Par Pharm., Inc., 694 F.3d 1344, 1351 (Fed. Cir. 2012) (“Negative claim limitations are adequately supported when the specification describes a reason to exclude the relevant limitation.”); see also Inphi Corp. v. Netlist, Inc., 805 F.3d 1350, 1357 (Fed. Cir. 2015) (“We hold that Santarus did not create a heightened written description standard for negative claim limitations and that properly described, alternative features are sufficient to satisfy the written description standard of § 112, paragraph 1 for negative claim limitations.”)” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“We are not persuaded by Petitioner’s arguments because Petitioner does not point to sufficient evidence or explain how Wong, Wallack, Sibley, Horiba, Johnson Controls, and Moyer teach or suggest the “without . . . secondary tracer” limitations recited in claims 2, 6, 7, and 9. In the present proceeding, citing to these references generally, particularly without citation to specific portions, is insufficient to meet Petitioner’s burden of persuasion. See DeSilva v. DiLeonardi, 181 F.3d 865, 866–67 (Fed. Cir. 1999) (“A brief must make all arguments accessible to the judges, rather than ask them to play archeologist with the record.”). Moreover, we disagree with Petitioner’s contention that the silence of the references regarding the “without . . . secondary tracer” limitations teaches or otherwise suggests the negative limitation recited in claims 2, 6, 7, and 9. See Santarus, Inc. v. Par Pharm., Inc., 694 F.3d 1344, 1351 (Fed. Cir. 2012) (“Negative claim limitations are adequately supported when the specification describes a reason to exclude the relevant limitation.”); see also Inphi Corp. v. Netlist, Inc., 805 F.3d 1350, 1357 (Fed. Cir. 2015) (“We hold that Santarus did not create a heightened written description standard for negative claim limitations and that properly described, alternative features are sufficient to satisfy the written description standard of § 112, paragraph 1 for negative claim limitations.”) Furthermore, Wong at least suggests “introducing or mixing a secondary tracer within the leak detector,” which is directly contrary to the negative limitations at issue. Specifically, Wong discloses The chamber 104 that is to be tested is filled with a test gas and preferably is pressurized with the test gas so as to accelerate the leakage, if any, of the test gas from the chamber. The chamber is surrounded by an ambient gas which may be the air of the atmosphere, or, alternatively, the chamber 104 may be placed within a larger chamber so as to permit the chamber 104 to be surrounded by a chosen ambient gas other than air. In another embodiment, shown in FIG. 3 a localized region on the surface of the chamber may be flooded by a chosen ambient gas that temporarily displaces the air that otherwise would be present. Ex. 1004, 3:52–62 (emphasis added).” slip op. at 13
- Expert testimonyPetitioner expert discountedDecided for patent owner
“Petitioner’s Declarant, Mr. Laub, testifies that “Wong discloses a hand-held portable infrared leak detector . . . which detects leaks without introducing or mixing a secondary tracer,” but fails to cite any underlying record evidence supporting his testimony.2 Ex. 1003 ¶ 103. Mr. Laub also fails to address the disclosure of Wong described above. Mr. Laub presents similarly unsupported testimony with respect to Wallack and Sibley. See id. ¶¶ 107, 113. We do not find persuasive Mr. Laub’s conclusory and unsupported testimony regarding the disclosure of Wong, Wallack, and Sibley. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). With respect to claim 6, Mr. Laub supports his testimony by citing portions of Moyer. Id. ¶ 172 (citing Ex. 1010, 3:43–45, 3:53–56, 4:22–25). We have reviewed the cited portions of Moyer and disagree that they disclose or suggest the “without . . . secondary tracer” limitations recited in independent claims 2, 6, 7, and 9. 2 Petitioner does not actually cite to this specific portion of Mr. Laub’s testimony. See 37 C.F.R. § 42.104(b)(5) (requiring petitions to include a statement of the precise relief requested, including “identifying specific portions of the evidence that support the challenge . . . [t]he Board may exclude or give no weight to the evidence where a party has failed to state its relevance or to identify specific portions of the evidence that support the challenge”). It is unnecessary to invoke rule 104(b)(5) here because even considering this portion of Mr. Laub’s testimony, we do not find its contents persuasive.” slip op. at 14
§ 103 obviousnessPatents in suitUS 7,022,993 - Unified Patents Inc. v. Hybrid Audio, LLCRehearing deniedPTAB · Apr 7, 2017 · IPR2016-01265 · APJ Monica S Ullagaddi · IPR · Rehearing
The Board denied rehearing of its decision denying institution, finding no overlooked or misapprehended arguments and upholding its construction of “filter” to exclude QMF filters.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“(d) Rehearing. . . . The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“evidence when we determined that the term “filter,” in the context of the ’281 patent and its prosecution history, excludes QMF filters. See id.” slip op. at 5
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“Reh’g Req.”) of our Decision Denying Institution (Paper 7, “Dec.”). Petitioner requests that we reconsider our decision to deny institution of inter partes review with respect to claims 5, 12, 18, 26, 34, 41, 48, 57, 66, 71, 83, 90, 95, 100, 107, 112, 114, 116, and 120 (“the challenged claims”) and our determination that Petitioner had not demonstrated a reasonable likelihood of prevailing in showing that the challenged claims of U.S. Patent No. RE40,281 (Ex. 1001, “the ’281 patent”) would have been obvious over various combinations of Jones, Adelson, and Veldhuis. For the reasons set forth below, the request is denied. slip op. at 2
Claim construction§ 103 obviousness - Kingston Technology Company, Inc. v. Polaris Innovations Ltd.Rehearing deniedPTAB · Apr 6, 2017 · IPR2016-01622 · APJ Matthew R Clements · IPR · Rehearing
The Board denied Kingston’s rehearing request, leaving in place the denial of institution for claim 4 because the Petition did not sufficiently explain how Simpson would meet the claimed board height.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). The party must identify specifically all matters we misapprehended or overlooked, and the place where each matter was addressed previously in a motion, an opposition, or a reply. Id. When rehearing a decision on a petition, we review the decision for an abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion may be indicated if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. See Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). With this in mind, we address the arguments presented by Petitioner.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“Petitioner’s argument is unavailing. Simpson teaches a printed circuit board with a height sufficient to accommodate the components mounted thereon—i.e., two rows of horizontally-oriented memory chips 12A–H. Petitioner relies upon both rows of memory chips as teaching “at least nine identically designed integrated semiconductor memories,” as recited in claim 1. Pet. 18–19. The Intel Specification, by contrast, teaches a single row of vertically-oriented memory chips. Ex. 1003, 7. The Petition and Dr. Subramanian propose modifying the height of Simpson’s printed circuit board, but do not address whether a height in the range of 1 to 1.2 inches would be sufficient to accommodate two rows of horizontally-oriented memory chips, as taught by Simpson. Neither the Petition nor Dr. Subramanian addresses, for example, the dimensions of the components taught by Simpson, whether two rows of memory chips would fit on a printed circuit board that has a height of only 1 to 1.2 inches, or—if the memory chips taught by Simpson would not fit—what a person of ordinary skill in the art would have known about the dimensions of similar memory chips as of the critical date that would have made it obvious to fit two rows of them on a printed circuit board having a height of only 1 to 1.2 inches. In its Rehearing Request, Petitioner does not identify where in the Petition these issues were addressed. As a result, we are not persuaded that we misapprehended or overlooked any arguments and evidence when we concluded that “Petitioner has not explained sufficiently how or why a person of ordinary skill in the art would have modified Simpson to achieve a height of ‘1 to 1.2 inches perpendicular to said contact strip.’” Dec. 17.” slip op. at 5
§ 103 obviousnessPatents in suitUS 6,850,414 - Unified Patents Inc. v. Cuica, LLCInstitution deniedPTAB · Feb 27, 2017 · IPR2016-01644 · APJ Sheila F Mcshane · IPR · Institution
The Board denied institution on claims 1–4, 6, 7, 9, and 10 because the cited combinations did not show the claimed means-plus-function limitations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the Petition shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons that follow, we conclude that the information presented in the Petition does not establish that there is a reasonable likelihood that Unified would prevail in challenging claims 1–4, 6, 7, 9, and 10 of the ’983 patent as unpatentable under 35 U.S.C § 103(a). Pursuant to 35 U.S.C. § 314, we hereby decline to institute an inter partes review of the ’983 patent.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner
“We agree with Unified’s view that the term “forresta” does not have ordinary meaning because the Specification indicates that the inventor intended to act as a lexicographer for the term based upon the use of quotation marks for identification of the term therein, and referring to “forresta” as “a set of values herein named” and “herein labeled.” Ex. 1001, Abstract, 3:31–33. The Specification states that the invention “overcomes the deficiencies of prior schemes for controlling content dissemination,” by using a “forresta” as “passive information” that is included “within the user’s request,” and that by “[u]sing the functionality provided by the forresta, each of the client requests and each of the server responses are individualized.” Id. at 3:28–34. On this record, we agree that the Specification supports Unified’s proposed construction of the term “forresta” as “any passive data which can be used to identify the user’s level of access to a repository of data,” and we adopt this construction for purposes of this Decision.” slip op. at 11
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner
“means-plus-function terms Independent claims 1 and 9 include several recitations of “means” or “means for” limitations. See Ex. 1001, 20:39–63, 22:43–23:35. Unified advocates that 35 U.S.C. § 112 ¶ 6 applies to the “means for allowing access” term of claim 1 and “means for organizing data” of claim 9 because the claim language does not provide sufficient structure to perform the claimed function.3 Pet. 16–18. We agree with Unified on this issue because the use of the word “means” in a claim element creates a rebuttable presumption that § 112 ¶ 6 applies, and there is no structure identified in the claims. Personalized Media Comm’s, LLC v. ITC, 161 F.3d 696, 703–04 (Fed. Cir. 1998). Unified identifies the “server computer 102 [that] contains . . . data access control (‘DAC’) process 106 of the present invention” as the structure for the “means for allowing access” term of claim 1, and the “reference tool 500,” depicted in Figure 5, as the structure of the “means for organizing data” of claim 9. Pet. 16–18 (citing Ex. 1001, 4:60–67, 7:57–8:5, Figs. 1, 2, 5; Ex. 1002 ¶¶ 25, 27).” slip op. at 12
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Ex. 1006, 7:27–41; see Pet. 32.5 Unified appears to rely upon Shannon’s client computer number or machine addresses such as Internet Protocol (“IP”), Media Access Control (“MAC”) addresses, and/or usernames as teaching the claimed n-byte character sequence. Pet. 32. The claim limitation, however, requires the creation of a forresta identity as an n-byte character sequence, and Shannon merely discloses that there are different identifiers of a computer or of a user of a computer that may be associated with different groups and have different assigned levels of access. See Ex. 1006, 7:11–26. Even assuming the identifiers in Shannon are “an n-byte character sequence,” as recited by the claim, Shannon still fails to teach any “creating” because the computer numbers taught by Shannon—e.g., IP 5 In the Petition, Unified cites to Exhibit 1006 at 7:11–26 (Pet. 32), but the text quoted by Unified, and reproduced above, is at 7:27–41. The erroneous citation appears to be inadvertent error, and we rely on the textual portion of Shannon quoted in the Petition. address or MAC address—already exist and, therefore, are not “creat[ed]” by Shannon’s group/source database 203. Moreover, even assuming that Shannon teaches “creating” computer numbers, we still would not be persuaded that Shannon teaches the recited “means for creating said forresta identity” because Unified does not identify, and we cannot find, any teaching in Shannon of the use of the algorithm disclosed in the ’983 patent “for creating a forresta identity,” i.e., fcode process 900. Unified also does not argue that Shannon’s process is equivalent to fcode process 900, or that He teaches this limitation. We are, therefore, not persuaded that the asserted combination of Shannon and He teaches or suggests the limitation of “means for creating said forresta identity as an n-byte character sequence” of the “access control means” of claim 1. Because claims 2–4, 6, and 7 depend from independent claim 1, and because Unified cites no additional evidence in discussing these claims that would remedy the deficiency of the prior art discussed above with respect to claim 1, the obviousness challenge to dependent claims 2–4, 6, and 7 also is not persuasive.” slip op. at 21
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 6,466,983 - Arista Networks, Inc. v. Cisco Systems, Inc.Institution deniedPTAB · Apr 12, 2016 · IPR2016-00018 · APJ Peter P Chen · IPR · Institution
The Board denied institution because Arista did not show a reasonable likelihood that claims 1, 2, 6–9, 12, 13, and 17–20 were unpatentable over Chau or Chau and Wils.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review of claims 1, 2, 6–9, 12, 13, and 17–20 of U.S. Patent No. 8,051,211 B2 (Ex. 1001, “the ’211 patent”). Paper 2 (“Pet.”). Patent Owner, Cisco Systems, Inc., filed a Preliminary Response. Paper 7 (“Prelim. Resp.”). Institution of an inter partes review is authorized by statute when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a); see 37 C.F.R. § 42.108. Upon consideration of the Petition and the Preliminary Response, we are not persuaded Petitioner has demonstrated a reasonable likelihood that it would prevail in establishing the unpatentability of claims 1, 2, 6–9, 12, 13, and 17–20 of the ’211 patent. Accordingly, we do not institute an inter partes review.” slip op. at 2
- BurdenNot shown unpatentable
“Petitioner’s only apparent contention for Chau’s disclosure that the first and second LANs are both usable for simultaneous transmission “subsequent to” the aggregation of LANs, is that “the simultaneous transmission occurs as a result of the grouping of the first LAN (channel C2) and second LAN (channel C1).” Pet. 19–20, citing Ex. 1014 ¶ 54. The Lin declaration is similarly worded, and like the Petition, is silent as to whether Chau’s alleged simultaneous transmission occurs “subsequent to,” i.e., after the aggregation of LANs. Petitioner’s argument of simultaneous transmission occurring “as a result of” alleged aggregation of LANs is unavailing, because “subsequent to” means, “after,” not “as a result of.” In fact, in the related ’975 IPR, we expressly rejected the Patent Owner’s proposed construction of “as a result of” for “subsequent to.” See Section II.A. Neither the Petition nor the Lin declaration (Ex. 1014) cite any evidence of simultaneous transmission occurring “after” aggregation of LANs in Chau. Accordingly, we are not persuaded that Petitioner’s showing demonstrates a reasonable likelihood that it would prevail as to claim 1 being anticipated by Chau.” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“In addition, as we determined in the ’975 IPR, for purposes of this decision, we determine that the broadest reasonable construction of “subsequent to” is its ordinary and customary meaning, namely, “after.” See Case IPR2015-00975, slip op. at 7–8 (PTAB Oct. 6, 2015) (declining to adopt Patent Owner’s proposed construction of “as a result of” for “subsequent to”).” slip op. at 7
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“Petitioner’s only apparent contention for Chau’s disclosure that the first and second LANs are both usable for simultaneous transmission “subsequent to” the aggregation of LANs, is that “the simultaneous transmission occurs as a result of the grouping of the first LAN (channel C2) and second LAN (channel C1).” Pet. 19–20, citing Ex. 1014 ¶ 54. The Lin declaration is similarly worded, and like the Petition, is silent as to whether Chau’s alleged simultaneous transmission occurs “subsequent to,” i.e., after the aggregation of LANs. Petitioner’s argument of simultaneous transmission occurring “as a result of” alleged aggregation of LANs is unavailing, because “subsequent to” means, “after,” not “as a result of.” In fact, in the related ’975 IPR, we expressly rejected the Patent Owner’s proposed construction of “as a result of” for “subsequent to.” See Section II.A. Neither the Petition nor the Lin declaration (Ex. 1014) cite any evidence of simultaneous transmission occurring “after” aggregation of LANs in Chau. Accordingly, we are not persuaded that Petitioner’s showing demonstrates a reasonable likelihood that it would prevail as to claim 1 being anticipated by Chau.” slip op. at 11
Claim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 8,051,211 - Arista Networks, Inc. v. Cisco Systems, Inc.Rehearing deniedPTAB · Feb 29, 2016 · IPR2015-00973 · APJ Bryan F Moore · IPR · Rehearing
The Board denied rehearing and again denied institution on all challenged claims because the petition did not show a reasonable likelihood that Hendel disclosed the claimed access result.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“the Board reviews the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may arise if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if an unreasonable judgment is made in weighing relevant factors. Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). The party requesting rehearing has the burden of showing that the decision should be modified, and “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked.” 37 C.F.R. § 42.71(d).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“being forwarded (restriction) or that an output port is selected and altered. Rather, these citations generally state that priority can be given to certain packets and quality of service can be applied to layer 2 routing. Thus, we are not persuaded that Petitioner’s citation to quality of service in general discloses “generating an access result in response to said at least one selected match.”” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownOther
“rehearing, we determine that the phrase “modifications on the intended destination address to which a packet is to be transmitted” introduces uncertainly into the construction.4 The construction in the Decision appears to conflate the “destination” of a packet with the output interface to which a packet is directed. The Specification does not describe, however, modifying the “destination” of the packet; the only “modification” on how the packet is routed specifically described in the Specification is when “the access control element 120 . . . [alters] the output interface, which was selected by the routing element 110, to another selected output interface.” Ex. 1001, 6:13– 4 Petitioner does not seek rehearing of the claim construction (Reh’g Req. 4, n. 1) but our analysis requires that we revisit the claim construction determination from the Decision. 16; Reh’g Req. 4–5. Thus, we modify our construction of “access control” to mean only restrictions on the transmission of a packet or alteration of a selected output interface for the packet.” slip op. at 4
- Expert testimonyPetitioner expert discountedDecided for patent owner
“Additionally, Petitioner cites to its Declarant Dr. Chao. Reh’g Req. 6 (citing Ex. 1003 ¶ 31). Petitioner’s Declarant states without citation that “a switch may modify the forwarding decision to account for network policies such as quality of service determinations. That is, a packet may be destined for a certain MAC address and port on the switch, but the switch may determine that the packet can be transmitted more reliably through another port, and so it will change the destination port for that packet.” Ex. 1003 ¶ 31. Petitioner’s Declarant’s testimony is conclusory and unsupported by evidence, and, therefore, we give that testimony no weight.” slip op. at 7
Claim constructionPatents in suitUS 6,377,577 - Apple Inc. v. Tracbeam, LLCInstitution deniedPTAB · Feb 19, 2016 · IPR2015-01702 · APJ James A Tartal · IPR · Institution
Instituted review in IPR2015-01703 on specified Loomis grounds for claims 1, 3, 6, 7, 11, 18, 20, 24, 25, 27, 39, 78, 81, 155, 162, 165, and 215; denied institution in IPR2015-01702.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the Petition and the Preliminary Response, we conclude the information presented shows there is a reasonable likelihood that Petitioner would prevail in showing the unpatentability of claims 1, 3, 6, 7, 11, 18, 20, 24, 25, 27, 39, 78, 81, 155, 162, 165, and 215, but not of claims 17, 40, or 72. Accordingly, we authorize an inter partes review to be instituted only as to claims 1, 3, 6, 7, 11, 18, 20, 24, 25, 27, 39, 78, 81, 155, 162, 165, and 215 of the ’231 patent. Our factual findings and conclusions at this stage of the proceeding are based on the evidentiary record developed thus far (prior to Patent Owner’s Response). This is not a final decision as” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“and second location estimation determiners determine geographical indications “independently of one another.” Independent claim 17, similar to claim 40, requires that “wherein the second instance does not depend on a geographical location of the mobile station obtained from information indicative of a distance between the mobile station and at least one of the one or more satellites.” Petitioner’s sole contention with respect to claim 40 and the cited portions of claim 17 is: “Location determiners can be independent of each other. See, e.g., 5:7–9; Figs. 6, 9.” 1703-Pet 39, 44. The portion of Loomis cited by Petitioner states that “[t]he outdoor LD system operates independently of the radio LD signal system, and each of these systems can determine the present location of the user at selected times.” IPR-1703, Ex. 1008, 5:7–9. Thus, Petitioner has shown that the outdoor LD system of Loomis is independent of the radio LD signal system, but has not shown that the radio LD signal system is independent of the outdoor LD system. Accordingly, Petitioner has not shown that the determiners are “independent of each other,” as required by claim 40, or that “second instance does not depend on a geographical location . . . obtained from information indicative of a distance between the mobile station and at least one of the one or more satellites,” as required by claim 17 and claim 72, which depends from claim 17.” slip op. at 15
- Other 314aInstitution denied discretionary other
“E. Additional Grounds We decline to institute an inter partes review of claims 1, 3, 6, 7, 11, 18, 20, 24, 25, 27, 39, 78, 81, 155, 162, 165, and 215 based on Bruno, in combination with Olsson and/or Geier. We also decline to institute an inter partes review of claims 1, 3, 6, 7, 11, 17, 18, 20, 24, 25, 27, 39, 40, 72, 78, 81, 155, 162, 165, and 215 based on Green and Hashimoto, and additional art, as asserted in IPR-1702. Petitioner asserts multiple grounds to each challenged claim of the ’231 patent across two separate petitions, but does not address the duplicative nature of its arguments across petitions. The Board’s rules for AIA inter partes proceedings, including those pertaining to institution, are “construed to secure the just, speedy, and inexpensive resolution of every proceeding.” 37 C.F.R. § 42.1(b); accord 35 U.S.C. §§ 316(b) (regulations for AIA inter partes proceedings take into account “the efficient administration of the Office” and “the ability of the Office to timely complete [instituted] proceedings”). Because we institute an inter partes review of these claims based on the grounds discussed above, we exercise our discretion not to institute a review based on these grounds for reasons of administrative necessity to ensure timely completion of the instituted proceeding. See 37 C.F.R. § 42.108(a).” slip op. at 23
§ 103 obviousnessDiscretionary denialPatents in suitUS 7,764,231 - HTC Corporation / HTC America, Inc. et al. v. Parthenon Unified Memory Architecture LLCRehearing deniedPTAB · Feb 17, 2016 · IPR2015-01501 · APJ James B Arpin · IPR · Rehearing
The Board denied rehearing, leaving institution denied for claims 7–10 and 12 because Petitioner did not show the Board overlooked or misapprehended its arguments or evidence.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. DISCUSSION 1. Standard for Reconsideration 37 C.F.R. § 42.71(d) provides that [a] party dissatisfied with a decision may file a single request for rehearing, without prior authorization from the Board. The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. (Emphasis added.) When reconsidering a Decision on Institution, the Board reviews the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). A request for rehearing, however, is not an opportunity merely to disagree with the panel’s assessment of the arguments or weighing of the evidence, or to present new arguments or evidence.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot reached
“Pet. 15–16 (Section IX.A.1.d.); see also id. at 29 (“Based on information cited above for claim elements 1[c] and claim 2, see supra Sections IX.A.1.d, IX.A.2 . . .”). In order to show that there is a reason to combine the teachings of Gulick and the MPEG standard, it is not enough to show that Gulick and the MPEG standard were available at the effective filing date of the ’753 patent. As we explained, we found this argument to be conclusory and inadequately supported. Dec. 19–20. Second, Petitioner argues that we overlooked that Gulick teaches the use of one or more digital signal processors (“DSPs”) in multimedia engine 112 (Reh’g Req. 9–12 (citing Pet. 13, 14, 30); see Ex. 1017, col. 4, ll. 16–18, col. 5, ll. 15–18, col. 7, ll. 37–42, Figs. 2, 3, 5) and that “it was well known in the art at the time of the alleged invention to employ a DSP for MPEG video processing” (Reh’g Req. 12 (citing Pet. 16); see Ex. 1017, col. 5, ll. 15–21; Ex. 1007, col. 1, ll. 62–67, Fig. 5). Essentially, Petitioner argues that because embodiments of Gulick employ DSPs (Reh’g Req. 11; Dec. 14–15 (reproducing Ex. 1017, Fig. 2)) and because the MPEG standard may be implemented on dedicated DSPs (Reh’g Req. 13 (quoting Ex. 1007, col. 6, ll. 56–57)), the common use of DSPs would have been a reason to combine the teachings of these references.4 We did not overlook this argument; instead, we found the argument and supporting evidence insufficient to demonstrate a reason to combine the teachings of Gulick and the MPEG standard to achieve the subject matter recited in claim 7. Dec. 20. As noted above, a request for rehearing is not an opportunity merely to disagree with our assessment of the arguments or weighing of the evidence. See supra Section II.1.” slip op. at 8
§ 103 obviousnesscites KSRPatents in suitUS 7,777,753 - HTC Corporation / HTC America, Inc. et al. v. Parthenon Unified Memory Architecture LLCInstitution deniedPTAB · Jan 6, 2016 · IPR2015-01494 · APJ Matthew R Clements · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood of proving any challenged claim unpatentable over the asserted § 103 combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Electronics Co., Ltd.; and Samsung Electronics America, Inc. (collectively “Petitioner”) filed a Petition requesting inter partes review of claims 1–4, 8– 12, 14, 15, 19, and 20 (“the challenged claims”) of U.S. Patent No. 8,054,315 B2 (Ex. 1001, “the ’315 patent”). Paper 2 (“Pet.”). Parthenon Unified Memory Architecture LLC (“Patent Owner”) did not file a Preliminary Response. We review the Petition pursuant to 35 U.S.C. § 314, which provides that an inter partes review may be authorized only if “the information presented in the petition . . . and any [preliminary] response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a); 37 C.F.R. § 42.4(a). Upon consideration of the Petition and the accompanying evidence, we determine that the information presented by Petitioner does not establish that there is a reasonable likelihood that Petitioner would prevail in showing the unpatentability of any of the challenged claims of the ’315 patent. Accordingly, pursuant to 35 U.S.C. § 314, we deny institution of an inter partes review.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“Apart from the claims, the ’315 patent does not use the term “image decoder circuit.” The ’315 patent’s definition of “decoder” to mean “a video and/or audio decompression device,” and its disclosure that the “decoder/encoder” can be any conventional decoder complying with any conventional standard support a construction of “decoder” that encompasses both hardware and software, but those portions of the Specification do not use the word “circuit,” as the claim term recites. Elsewhere, the Specification uses “circuit” to describe hardware. See, e.g., Ex. 1001, 2:26 (referring to video decoding circuit 12), 3:2 (referring to interface circuit 146), 6:45–51 (referring to decoder/encoder 80 as either a device or a cell in an integrated circuit), 6:52 (referring to video decoding circuit 12), 14:60–62 (“Thus, decoding in a computer can be performed according to the invention by means of a low-cost (due to the small number of pins) single integrated circuit . . . .”). Based on our review, the ’315 patent does not use the word “circuit” to refer to software executing on hardware. The dependent claims, however, suggest that the “circuits” recited in claim 1 are not limited to physical hardware. Dependent claim 4, for example, recites “wherein the audio circuit includes a software audio decoding component” (id. at 16:17– 18 (emphasis added)), which suggests that the “audio circuit” recited in claim 1 is broad enough to encompass software. See also id. at 6:57–62 (“The audio decoding can be performed by a separate audio coder-decoder (codec) coupled to the first device 42, or through software. In the preferred embodiment of the invention, when the decoder/encoder 80 is in a system containing a processor and is coupled to the processor, the audio decoding is performed in software.” (emphasis added)). Similarly, dependent claim 8 recites “wherein the first, second, and third onboard memories are configured in the same onboard storage space,” which suggests that the “first onboard memory,” “second onboard memory,” and “third onboard memory” recited as components of the “image decoder circuit” in claim 1 are logical memories rather than distinct, physical memories. Accordingly, on this record, and for purposes of this Decision, we adopt Petitioner’s proposed construction of “image decoder circuit.”” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“On this record, Petitioner does not explain adequately how Gulick would have been modified. It is not clear from the Petition, for example, whether Petitioner is arguing that a person of ordinary skill in the art would have modified Gulick to perform the functions described in MPEG by writing software to execute on the one or more DSPs of Gulick’s multimedia engine 112, or by adding known decoder hardware to the one or more DSPs of Gulick’s multimedia engine 112. Dr. Stone’s testimony is equally insufficient. In paragraph 99, for example, Dr. Stone testifies that “it was well known in the art at the time of the alleged invention to employ a DSP for MPEG video processing.” Ex. 1030 ¶ 99 (citing Ex. 1007; Ex. 1023). Although Exhibit 1007 refers to its “MPEG accelerator circuit” as “a dedicated digital signal processor for video decompression” (6:56–57), it describes the video decompression engine as “hardwired (circuitry)” (7:2). Exhibit 1023, in contrast, suggests the use of software. Ex. 1023, 6:20–24 (“DSP engine 206 which is programmable to perform various functions such as MPEG decoding” (emphasis added)). To the extent Petitioner is arguing that a person of ordinary skill in the art would have implemented the functions described in MPEG by writing software to execute on the one or more DSPs of Gulick’s multimedia engine, we are not persuaded that such a modification would have been obvious. Gulick does not teach that multimedia engine 112 decompresses or decodes video. Although Gulick describes the multimedia engine as performing “video and audio processing functions” (see, e.g., Ex. 1017, 5:18), the examples described—“polygon rendering and texture mapping” (id. at 5:26)—relate to graphics processing rather than to video decoding or decompression. In addition, Gulick describes multimedia engine 112 as including “video processing circuitry and/or firmware” that converts video data into analog signals for output directly to video monitor 114 or for outputting digital video pixel data (id. at 5:37–61), which further suggests that the “video” functions performed by multimedia engine 112 relate to processing graphics data for output rather than to decoding or decompressing video. Neither Petitioner nor its expert explains in sufficient detail why or how a person of ordinary skill in the art would have programmed a DSP intended for graphics processing to perform the functions required for video decoding or decompression. To the extent that Petitioner is arguing that a person of ordinary skill in the art would have implemented the functions described in MPEG by adding known decoder hardware to Gulick’s multimedia engine 112, we are not persuaded that doing so would have constituted a combination of familiar elements according to known methods to yield predictable results. Petitioner also does not explain how known decoder hardware would be added to the digital signal processor of Gulick, or why a person of ordinary skill in the art would have been motivated to do so. Although Exhibit 1007 refers to its MPEG accelerator chip as a “dedicated digital signal processor,” we are not persuaded on that basis alone that the addition of dedicated video decoding hardware to any digital signal processor would have constituted a combination of familiar elements according to known methods to yield predictable results.” slip op. at 16
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Independent claim 1 recites “a shared memory.” Petitioner identifies Gulick’s multimedia memory 160 and argues that it is “shared” because Gulick teaches that “arbiter block 161 performs arbitration between the CPU 102 and the multimedia engine 112 for the multimedia memory.” Pet. 22– 23 (quoting Ex. 1017, 4:41–43). We are not persuaded, however, that Gulick’s multimedia memory 160 is “shared.” The ’315 patent describes decoder/encoder 80 and a first device using a single memory. See, e.g., Ex. 1001, Figs. 2–4. Gulick, in contrast, describes main memory 110 in addition to multimedia memory 160. The system described in Gulick does not, therefore, realize the advantage of sharing a single memory described by the ’315 patent. Gulick describes CPU 102 as using primarily main memory 110: Referring again to FIG. 1, in the preferred embodiment, the main memory 110 stores the operating system and applications software as well as driver software, including video drivers and audio drivers. The CPU 102 executes applications software and driver software from the main memory 110 and writes any associated video and audio data to the main memory 110. The CPU 102 then provides high level instructions directly to the multimedia memory 160 and/or to the DMA engine 164, or to the multimedia engine 112. Ex. 1017, 6:13–22. Gulick describes CPU 102 using multimedia memory 160 only in exceptional circumstances, such as when main memory 110 is full: Thus the multimedia memory 160 is available to store non-multimedia data as needed. In other words, if the main memory 110 becomes full and additional memory is needed, the CPU 102 can store code and data in the multimedia memory 160. Thus, the multimedia memory 160 is used for real-time or multimedia data and is also used by the CPU 102 as overflow memory space. Id. at 4:34–40; see also id. at 8:2–3 (“Thus the multimedia memory 160 is available to store non-multimedia data as needed.”). Because multimedia memory 160 exists in addition to main memory 110 and because CPU 102 uses main memory 160 only in exceptional circumstances, we are not persuaded that multimedia memory 160 is the “shared memory” of claim 1. Moreover, to the extent Petitioner is arguing that Gulick’s main” slip op. at 13
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 8,054,315 - HTC Corporation / HTC America, Inc. et al. v. Parthenon Unified Memory Architecture LLCInstitution deniedPTAB · Jan 6, 2016 · IPR2015-01503 · APJ Matthew R Clements · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 1, 6–12, or 17 unpatentable under any asserted obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Electronics Co., Ltd.; and Samsung Electronics America, Inc. (collectively “Petitioner”) filed a Petition requesting inter partes review of claims 1, 6– 12, and 17 (“the challenged claims”) of U.S. Patent No. 8,681,164 B2 (Ex. 1001, “the ’164 patent”). Paper 1 (“Pet.”). Parthenon Unified Memory Architecture LLC (“Patent Owner”) did not file a Preliminary Response. We review the Petition pursuant to 35 U.S.C. § 314, which provides that an inter partes review may be authorized only if “the information presented in the petition . . . and any [preliminary] response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a); 37 C.F.R. § 42.4(a). Upon consideration of the Petition and the accompanying evidence, we determine that the information presented by Petitioner does not establish that there is a reasonable likelihood that Petitioner would prevail in showing the unpatentability of any of the challenged claims of the ’164 patent. Accordingly, pursuant to 35 U.S.C. § 314, we deny institution of an inter partes review.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“Petitioner proposes to construe the term to mean “hardware and/or software that translates data streams into video or audio information and vice versa.”2 Pet. 9–10 (citing Ex. 1001, 2:1–6 (“Video and/or audio compression devices (hereinafter ‘encoders’)” and “a video and/or audio decompression device (hereinafter ‘decoder’)”), 6:62–7:5, 15:38–41 (“[a]ny conventional decoder including a decoder complying to the MPEG-1, MPEG-2, H.261, or H.261 standards, or any combination of them, or any other conventional standard can be used as the decoder/encoder.”), 16:63–64, and 17:9–13). Petitioner further relies upon a dictionary definition for “decoder” as evidence of the term’s ordinary and customary meaning to a person of ordinary skill in the art as of the effective filing date of the ’164 patent, in the context of the entire patent including the Specification. Id. at 10 (citing Ex. 1014, 56 (“decoder (n). Any hardware or software system that translates data streams” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner offers no other constructions of any claim term in the challenged claims. See Pet. 8–11. Only terms which are in controversy in this proceeding need to be construed, and then only to the extent necessary to resolve the controversy. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). For purposes of this Decision, no other claim terms require express construction.” slip op. at 9
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Independent claim 1 recites “a shared main memory.” Petitioner identifies Gulick’s main memory 110 and multimedia memory 160 and argues that multimedia memory 160 is “shared” because Gulick teaches that DMA engine 164 “performs transfers between the main memory 110 and the multimedia memory 160.” Pet. 14–15 (quoting Ex. 1017, 4:44–46). We are not persuaded, however, that Gulick’s multimedia memory 160 is “shared” main memory. The ’164 patent describes decoder/encoder 80 and a first device using a single memory. See, e.g., Ex. 1001, Figs. 2–4. Gulick, in contrast, describes main memory 110 in addition to multimedia memory 160. The system described in Gulick does not, therefore, realize the advantage of sharing a single memory described by the ’164 patent. Gulick describes CPU 102 as using primarily main memory 110:” slip op. at 12
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 8,681,164
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.