- Charter Communications, Inc. v. Touchstream Technologies, Inc.Institution deniedPTAB · Feb 11, 2025 · IPR2024-01232 · APJ Michelle N Wormmeester · IPR · Institution
The Board denied institution on all challenged claims because Petitioner did not show a reasonable likelihood of prevailing on any obviousness ground; it also found the petition time-barred.
RulingsInstitution decision- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“later than one month after we initially instituted inter partes review in the Comcast IPR. See 37 C.F.R. § 42.122(b). As discussed above, however, inter partes review is no longer instituted in the Comcast IPR. Under these circumstances, we do not grant Petitioner’s Joinder Motion because there is no pending proceeding to join. See 35 U.S.C. § 315(c) (“If the Director institutes an inter partes review, the Director, in his or her discretion, may join as a party to that inter partes review any person who properly files a petition . . . that the Director . . . determines warrants the institution of an inter partes review.”). Petitioner’s Joinder Motion is denied.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalTerm construed board ownDecided for patent owner
“least in part on a second message including at least one command in a second format.’” Pet. 4 (citing Ex. 1104, 168–173). The cited portion of the prosecution history shows that the applicant distinguished its claims from the prior art based on different first and second formats. The applicant argued in particular, Applicant submits that [the prior art] is completely silent with regard to “receiving, from the remote server device, a first message that includes at least one command in a first format, wherein the first message is received based at least in part on a second message including at least one command in a second format having been sent from the associated remote computing device.” In fact, [the prior art] never describes commands in different formats. . . . Ex. 1104, 170. Based on the applicant’s argument in this regard, we find that the prosecution history limits the scope of claim 1 to different first and second formats. In other words, the applicant’s argument during prosecution distinguishing its claims from the prior art based on different first and second formats overcomes the presumption based on claim differentiation that claim 1 encompasses first and second formats that are the same. See Fenner Invs., Ltd. v. Cellco P’Ship, 778 F.3d 1320, 1327 (Fed. Cir. 2015) (“Although claim differentiation is a useful analytic tool, it cannot . . . relieve any claim of limitations imposed by the prosecution history.”). Accordingly, claim 1 is limited to different first and second formats.” slip op. at 10
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“argument and evidence. As discussed above in the claim construction section, the recited first and second formats are limited to different formats. See supra Part IV.A. To satisfy this aspect of limitation 1D under its theory, Petitioner needs to show that in Danciu the format of the control information sent from the remote control to the server is different from the format of the control information sent from the server to the controlled device. The cited disclosures in Danciu, however, do not teach or suggest that these formats are different. Nor does Petitioner explain adequately how Danciu’s disclosures teach or suggest the two formats are different. We recognize that the control information in Danciu may be “processed” or “repackaged,” as Petitioner asserts, but it is not clear that the control information is processed or repackaged such that the format of the control information sent from the remote control to the server and the format of the control information sent from the server to the controlled device are different. Petitioner does not rely on Mahajan to teach or suggest the recited first and second formats but relies on Mahajan instead as providing “implementation details for transmission of commands for controlling a client.” Pet. 27. Petitioner contends that its proposed combination of Danciu and Mahajan would have provided a system where “Danciu’s remote control would translate commands associated with a first type of media playing application to a generic format, transmit them to the controlled device, which would translate them to a command associated with a second type of media playing application for execution.” Id. at 31. In other words, the controlled device would receive the generic commands sent from the remote control and then translate the generic commands. It is not clear how the proposed combination in this way teaches or suggests the format of a command sent from the remote control to a server is different from the format of a command sent from the server to the controlled device.” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“Aldrey and Mahajan meets limitation 1D under Petitioner’s second theory. Petitioner only alleges that it would have been obvious to an ordinarily skilled artisan that Mahajan’s RTS Media Abstraction Module could operate at a server like Aldrey’s service provider network 103. Pet. 65. The Federal Circuit has explained that “obviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.” Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015). Petitioner does not adequately explain why an ordinarily skilled artisan would have considered locating Mahajan’s abstraction module at a server, even if the abstraction module could operate at the server. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[T]here must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.”). We note Petitioner further argues that combining Mahajan and Aldrey would have provided a system where “Aldrey’s end terminal would translate commands associated with a first type of media playing application to a command associated with a second type of media playing application on a STB.” Pet. 66–67; see also id. at 66 (“Mahajan’s server-command teachings could be implemented on Aldrey’s end terminal remote control.”). Arguing that Aldrey’s end terminal would translate commands seems inconsistent with Petitioner’s earlier argument for locating Mahajan’s abstraction module (which translates commands) at Aldrey’s network service provider. See id. at 65–67. Moreover, it is not readily apparent how command translation by Aldrey’s end terminal––rather than Aldrey’s network service provider–– teaches or suggests the format of a command sent from the end terminal to the network service provider is different from the format of a command sent from the network service provider to the STB. Petitioner does not close these logical gaps.” slip op. at 23
Claim construction§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 11,048,751 - Apple, Inc. v. Koss Corp.Institution deniedPTAB · Oct 13, 2021 · IPR2021-00693 · APJ David C Mckone · IPR · Institution
The Board denied institution on all challenged claims, finding no reasonable likelihood of success on the signal-strength claims and declining the duplicative remaining claims for efficiency.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Neither Seshadri nor Seshadri-818 teaches transitioning between sources of digital audio. Seshadri teaches transitioning between two types of wireless communication (e.g., from piconet to WLAN) in order for headphones (wireless headset 10) to continue communicating with the same source (e.g., cellular telephone 36) when the signal strength of the first communication type (e.g., piconet) becomes too low. Ex. 1007 ¶ 42. In another example, Seshadri teaches headset 10 transitioning between one device, wire line telephone 37, and another device, cellular telephone 36. Id. ¶ 44. However, cellular telephone 36 is connected via another path (e.g., the WLAN) to wire line telephone 37 and essentially is acting as a repeater to communicate the telephone information from its source, wire line telephone 37, to headset 10. Id. It is in this context that Seshadri teaches that “headset 10 extends the mobility of its user, extends the range of headset use and expands on headset functionality while preserving privacy and security by seeking service from base units to which it may be registered.” Id. In other words, by using cellular telephone 36 as an intermediary, headset 10 can travel farther away from wire line telephone 37, the source of the phone call, and still communicate with it. This is not, however, an example of transitioning between two sources, as required by claim 58. Wire line telephone 37 still is the only source with which headset 10 communicates in this example. Seshadri-818’s teaching is similar to this second example in Seshadri. Although Seshadri-818 describes transitioning headset 12 from one device to another (e.g., from wire line telephone 14 to cellular telephone 22) based on signal strength, the second device (cellular telephone 22) is used merely as an intermediary between headset 12 and wire line telephone 14 so that the headset can continue to communicate with the wire line telephone, the source of the data. Ex. 1013 ¶¶ 11, 26, 49–50. Again, it is in the context of the second device acting as an intermediary between a headset and a single source that Seshadri-818’s invention “extends the mobility of its user, extends the range of headset use and expands on headset functionality.” Id. ¶ 26 (“Thus, a logical connection is established between the universal wireless headset 12 and the wire line telephone 14 via the cellular telephone 22 and access point 24.”). See also id. ¶¶ 11 (“[A] logical connection may be established between the new device and a host device supporting the communication,” with the benefit that “a universal wireless headset is provided that extends the mobility of the user, extends the range of the headset and expands on its functionality.”), 50 (“This enables the universal wireless headset to roam within the local area network and maintain its wireless headset functionally with one of its host devices as it roams.” (emphasis added)).” slip op. at 23
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied
“The Petition further challenges claims 1–3, 5, 10, 11, 14–16, 19, 23– 25, 28, 32–36, 39, and 42. Pet. 1–2. As noted above, however, each of these claims is challenged in the ’592 IPR on nearly identical grounds. Thus, it would be a waste of resources to institute a duplicative trial on these claims when Petitioner has not shown a reasonable likelihood of success in its challenges to the non-overlapping signal strength claims. Accordingly, we exercise discretion and do not institute a trial on this Petition, which Petitioner filed to challenge the signal strength claims. See supra § II.G. 5. Summary Petitioner filed this Petition to challenge the signal strength claims, claims 4, 6, 8, 12, 13, 17, 18, 20, 22, 26, 27, 29, 31, 38, 40, 41, 44, and 58– 62. See supra § II.G; Notice 2–3. For the reasons addressed above in connection with illustrative signal strength claim 58, Petitioner does not show a reasonable likelihood of prevailing on any of the signal strength claims. But for the signal strength claims, this Petition challenges the same claims as the ’592 petition. See supra § II.G; Notice 2–3. Accordingly, in the interest of efficiency and not duplicating the trial based on the ’592 petition, we exercise our discretion and do not institute a trial on this Petition.” slip op. at 29
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“This, however, ignores Petitioner’s asserted evidence of reasons to combine the references, namely, to maintain a connection between a headset and a host while roaming within a WLAN network that is wider than the piconet that could be established between the headset and that host. Pet. 31 (citing Ex. 1007 ¶ 44; Ex. 1013 ¶¶ 26, 50; Ex. 1003 ¶ 103). Specifically, Petitioner relies on Seshadri’s and Seshadri-818’s similar “use-case[s] in which this transition between two different devices would be useful,” namely the examples in which a cellular phone is used as an intermediary between a headset and a wire line telephone, with the wire line telephone serving as the single source. Pet. 31–32 (citing Ex. 1007 ¶ 44; 8 The Dissent also argues that a skilled artisan would have made the combination because the headset receiving some audio would have been better than it receiving no audio. We do not read the Petition as having made this argument. Ex. 1013 ¶ 26).9 Dr. Cooperstock repeats this reasoning in his testimony. Ex. 1003 ¶¶ 104–105. Thus, Petitioner’s asserted evidence of reasons to combine, taken directly from the two Seshadri references, describes the benefits of maintaining the connection between a headset and a single source (i.e., the host device), and transitioning between devices to maintain that connection. Petitioner does not present persuasive evidence of reasons to transition a headset from playing digital content from one source to playing digital content from another source while roaming within a WLAN, e.g., transitioning among a phone call on a cellular phone, a podcast on a PDA, streaming music on a PC, and an audio book on a laptop computer as the user moves from room to room in their house, changing proximity of the headset to the various devices. Even Petitioner’s citation to Haupt does not provide such evidence. As noted above, Petitioner’s theory for claim limitation 58[h] (“wherein the processor is configured to, upon activation of a user-control of the headphone assembly, initiate transmission of a request to a remote, network-connected server that is in wireless communication 9 Petitioner’s argument, cited by the Dissent, that the method of Seshadri- 818’s Figure 8 “would ensure that the headset only transitions to a better connection and therefore improves audio transmission to the headset,” PO Resp. 30, is still in the context of maintaining a connection between a headset and a single source. In particular, the testimony of Dr. Cooperstock cited to support this argument continues that “[n]otably, Seshadri-818 teaches making a ‘determination’ about ‘which device, or access point, to hand the communication off to’ and discloses an example of ‘determin[ing] that device K is to facilitate the ongoing communication.’” Ex. 1003 ¶ 101 (quoting Ex. 1013 ¶ 40). Paragraphs 39 and 40 of Seshadri-818 describe communication between headset 12 and device C, first using access point H, which has a logical connection to device C, and second using device K, which has a logical connection to device C. with the mobile, digital audio player”) has Seshadri’s PDA 30 and cellular telephone 36 both communicating and receiving audio files from the same server (i.e., the same source) “in the same manner as the operating element BE taught by Haupt.” Pet. 26. Here, Petitioner refers to the server, not either PDA 30 or cellphone 36, as “a source for the audio streams to which Seshadri teaches the base units 16 have access.” Id. at 26–27.” slip op. at 26
- Expert testimonyPetitioner expert discountedDecided for patent owner
“Petitioner also constructs an “alternative example” or “additional configuration” in which Haupt’s headset hands off streamed audio from one playback device to another based on signal strength, e.g., “transition[ing] from playing streaming audio (e.g., internet radio) from Seshadri’s cellphone 36 to Seshadri’s PDA 30 as the headphones/headset move out of piconet range of the cellphone 36 and into piconet range of the PDA 30.” Pet. 32–33 (citing Ex. 1003 ¶ 106). Petitioner’s alternative theory rests on Dr. Cooperstock’s testimony which, in turn, merely repeats the Petition’s arguments without providing any basis for the testimony. Ex. 1003 ¶ 106. Here, Petitioner appears to rely on Seshadri’s general teaching that a headset could communicate with any one of several devices (Ex. 1007 ¶ 43 (“Wireless headset 10 may establish a piconet with any one of the devices 30–37.”)); that more than one of these devices would have been capable of transmitting digital audio content to the headset (id. ¶ 67); and that Seshadri-818 includes a general teaching of transitioning from one device to another based on signal strength (Ex. 1013 ¶ 50). A user wearing the headset, then, would roam from device to device, giving the user wider range of movement. The Dissent appears to accept this reasoning.8” slip op. at 25
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 10,469,934 - Viptela, Inc. v. Fatpipe Networks Private LimitedInstitution deniedPTAB · Oct 3, 2017 · IPR2017-01125 · APJ Christa P Zado · IPR · Institution
The Board denied institution on claims 4–15, 19, and 22–24, exercising discretion under §§ 314(a) and 325(d) based on overlapping petitions, follow-on arguments, and inefficient use of resources.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“’684 IPR, which in turn was a “copy-cat” of the ’976 IPR petition. Prelim. Resp. 2, 5. However, in deciding whether we should exercise our discretion and decline to go forward with this Petition, our concern is not only whether “the same or substantially the same prior art or arguments previously were presented to the Office,” as expressed in § 325(d), but also whether other factors weigh in favor of denying institution in light of the discretion afforded to us pursuant to § 314(a).” slip op. at 9
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticInstitution denied
“whether at the time of filing of the ’684 petition, Petitioner knew, or should have known, of Pearce, Zhang, and McCullough (“the Additional References”); the length of time that elapsed between learning of the Additional References, and the filing of the instant Petition; whether Petitioner has provided adequate explanation for the time lapse; whether at the time of filing of the instant Petition, Petitioner already had access to Patent Owner’s response in the ’976 IPR; and the finite resources of the Board. See Gen. Plastic Indus. at 16 (Paper 19) (informative). Petitioner provides no explanation of whether it knew or should have known of the Additional References when filing the ’684 petition; of when it first learned of these references; or of any time lapse between learning of these references and the filing of the instant Petition.” slip op. at 13
- Other 314aInstitution denied discretionary otherInstitution denied
“August 14, 2017, and a final decision is due by November 2, 2017. At this point, the decision in the ’976 IPR as to whether to see the matter through to final determination is squarely in our hands, regardless of whether any settlement is reached between the parties. See 37 C.F.R. § 42.74(a) (“The parties may agree to settle any issue in a proceeding, but the Board is not a party to the settlement and may independently determine any question of jurisdiction, patentability, or Office practice.”). Thus, if we deem it appropriate, we can reach a final decision on the grounds presented in the ’976 IPR with or without participation from the parties in that matter. These facts weigh in favor of us exercising our discretion not to move forward with the instant Petition, at least with respect to the ’976 instituted claims insofar as Petitioner’s arguments relate to Karol and are substantially identical to those in the ’976 IPR, because the issues raised are fully briefed and ripe for a final decision in the ’976 IPR, and Petitioner’s non-participation in that proceeding is at best neutral to our analysis. Petitioner is a party to the ’684 IPR, and in that proceeding the petition is directed to the same claims of the same patent as in this Petition. This fact weighs in favor of us not moving forward with the instant Petition. Also, at least with respect to the ’684 instituted claims, insofar as Petitioner’s arguments relate to Karol and are substantially identical to those in the ’684 IPR, Petitioner has the opportunity to address the same art and arguments in the ’684 proceeding. It would be an inefficient use of Office resources, and would run counter to securing the just, speedy, and inexpensive resolution of the challenges to the patentability of the ’235 patent, if we were to allow Petitioner to proceed on the same art and arguments in two separate proceedings.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner submits a list of terms for which Patent Owner has proposed construction in a co-pending district court case. Pet. 7–8. Petitioner, however, asserts that for the purposes of this Decision no terms need to be construed. Id. Patent Owner does not address claim construction in its Preliminary Response. See generally Prelim. Resp. We reviewed the parties’ arguments, and, for the purposes of this Decision, we have determined that no terms require express construction. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).” slip op. at 7
Claim constructionDiscretionary denialPatents in suitUS 6,775,235 - Toyota Motor Corporation v. Cellport Systems, Inc.Institution deniedPTAB · Dec 16, 2015 · IPR2015-01422 · APJ Scott C Moore · IPR · Institution
The Board denied institution on all claims: claims 1–11 lacked a sufficient showing of the claimed network protocol converter structure, and claims 12–21 were denied as a second, delayed petition.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“network communication means” claim limitation. Claims 2, 6, and 8–11 depend from claim 1 and, thus, incorporate this limitation by way of dependence. A petition for inter partes review “must specify where each element of the claim is found in the prior art patents or printed publications relied upon.” 37 C.F.R. § 42.104(b)(4). Because the “first standard network communication means” is a means-plus-function claim limitation, Petitioner is required to show that both the recited function of this claim limitation and the corresponding structure or an equivalent are present in the applied references. Fresenius USA, Inc. v. Baxter Int’l, Inc., 582 F.3d 1288, 1299 (Fed. Cir. 2009) (“[A] challenger who seeks to demonstrate that a means-plus-function limitation was present in the prior art must prove that the corresponding structure—or an equivalent—was present in the prior art.”). The Petition does not identify any structure in the applied references that is allegedly identical or equivalent to the corresponding structure of the “first standard network communication means” claim limitation, i.e., network protocol converter 26. Petitioner’s entire argument concerning the “first standard network communication means” of claims 1, 3, 4, 5, and 7, is reproduced below: Cao discloses a “first standard network communications means” (i.e., wireless Proxim radio link with base station) that uses Internet Protocol for “presenting information for transmission over the airlink in a first format that is acceptable to a first standardized network that includes the airlink” (i.e., TCP/IP format). See Ex. 1019 at 6; see also supra Section VIII.A.4. Pet. 40. Though Petitioner alleges that the “wireless Proxim radio link with base station” of Cao performs the recited function of the “first standard network communication means,” Petitioner does not compare the structure of the “wireless Proxim radio link with base station” of Cao to the structure of network protocol converter 26. Cited Section VIII.A.4 of the Petition similarly does not address the structure of the “wireless Proxim radio link with base station” of Cao. See Pet. 18–20. Thus, the Petition does not identify any structure in the applied references that is allegedly identical or equivalent to the corresponding structure of the “first standard network communication means” claim limitation. For the foregoing reasons, the Petition fails to show persuasively that the “first standard network communication means” claim limitation is found in the references that Petitioner relies upon with respect to claims 1–11. Thus, the information presented in the Petition is not sufficient to demonstrate a reasonable likelihood that Petitioner will prevail in demonstrating that claims 1–11 are unpatentable. 3.” slip op. at 18
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticInstitution denied
“The 4½ month delay between Petitioner’s first and second Petitions is problematic for several reasons. First, the timing of this Petition makes consolidation impractical, and, thus, frustrates the interest of judicial economy. The oral hearing in IPR2015-00633 is set for April 14, 2016. IPR2015-00633, Paper 12. Thus, it would not be practical to institute a second inter partes review and consolidate that proceeding with IPR2015- 00633. See 35 U.S.C. § 315(d). Assuming that Petitioner has shown here a reasonable likelihood that claims 12–21 are unpatentable, two separate trials would be necessary, requiring the parties, as well as the Board, to expend significant additional resources. Second, even if we were to institute a second inter partes review involving claims 12–21, Petitioner might be unable to “maintain” the second inter partes review upon issuance of a final written decision in IPR2015-00633. 35 U.S.C. § 325(e)(1) provides that any final written decision in IPR2015-00633 on the patentability of claims 12–21 would preclude Petitioner from “maintain[ing] a proceeding before the Office . . . on any ground that the petition raised or reasonably could have raised during [the earlier] post-grant review.” Thus, instituting a second inter partes review may result in a significant waste of time and resources for the parties and for Board. See 37 C.F.R. § 42.1(b) (“This part shall be construed to secure a just, speedy, and inexpensive resolution of every proceeding.”). Third, the timing of the second Petition raises the potential for gamesmanship. Petitioner did not file this Petition until one month after Patent Owner filed its Preliminary Response in IPR2015-00633. The timing of the second Petition gave Petitioner the opportunity to preview the arguments set forth in the Patent Owner Preliminary Response in IPR2015- 00633. Petitioner also has not provided an adequate explanation for the 4½ month delay between the filing of this Petition and the filing of its previous Petition. Though Petitioner alleges that it was not aware of Cao “at the time it filed Petition No. 2015-00633” (Pet. 2), Petitioner does not state when and under what circumstances, during the 4½ months that preceded the filing of the current Petition, it became aware of Cao. Cao is a technical paper that was published by a major research university in the United States, and, thus, it is not clear on this record why Petitioner was unable to locate Cao at an earlier date. See Ex. 1019, 1. We further note that Petitioner has not identified any meaningful distinctions between the arguments regarding claims 12–21 in this Petition and the arguments Petitioner set forth in its earlier Petition. For instance, Petitioner does not explain in what ways the grounds asserted against claims 12–21 in this proceeding are superior to the grounds against the same claims and on the basis of which we instituted trial in IPR2015-00633. In view of the foregoing, we exercise our discretion and decline to” slip op. at 20
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyDecided for patent owner
“Despite the rebuttable presumption, we do not construe “controller means” as a means-plus-function claim limitation. The presumption is overcome because the claim language does not link the “controller means” to a specific recited function. See York Prod., Inc. v. Cent. Tractor Farm & Family Ctr., 99 F.3d 1568, 1574 (Fed. Cir. 1996) (“Without a ‘means’ sufficiently connected to a recited function, the presumption in use of the word ‘means’ does not operate.”). In addition, the presumption is overcome when the claim specifies detailed structure sufficient to perform any recited or implicit function, e.g., controlling. See TriMed, Inc. v. Stryker Corp., 514 F.3d 1256, 1259–60 (Fed. Cir. 2008) (“Sufficient structure exists when the claim language specifies the exact structure that performs the functions in question without need to resort to other portions of the specification or extrinsic evidence for an adequate understanding of the structure.”); Altiris, Inc. v. Symantec Corp., 318 F.3d 1363, 1376 (Fed. Cir. 2003). Each of independent claims 1, 3, 4, 5, and 7 recites that the “controller means” includes the “processing means” and the “first standard network communication means.” As discussed herein, the processing means and the first standard network communication means are means-plus-function claim limitations that are defined in terms of specific structures disclosed in the Specification. Moreover, the recited “controller” is also a structure that is sufficient to perform any recited or implicit function of the “controller means.” The rebuttable presumption also is overcome because the controller means claim limitation is associated with these structures. Thus, in accordance with the ordinary and customary meaning of the claim language, and consistent with the Specification (see Ex. 1001, 2:66–3:29, 6:11–37, 8:1–45), for purposes of this Decision, we construe “controller means” as “a controller.” 3.” slip op. at 12
- Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)§112(f) appliesDecided for patent owner
“is a means-plus-function limitation is overcome because this limitation lacks an associated function. Prelim. Resp. 13. We agree. The grammatical structure of the claim and, in particular, the fact that the functional language cited by Petitioner appears immediately after the recitation of the “processing means” evidences an intent to associate this functional language with the “processing means” claim limitation. Thus, for purposes of this Decision, we construe “processing means” as a means-plus-function claim limitation having a recited function of “controlling the sending and receiving of said information using said wireless device between said first remote station and the vehicle.” “Structure disclosed in the specification qualifies as ‘corresponding structure’ if the intrinsic evidence clearly links or associates that structure to the function recited in the claim.” Williamson, 792 F.3d at 1352. The Specification of the ’074 Patent indicates that the sending and receiving of vehicle information between the remote station and the vehicle is controlled by processor 90 in conjunction with real time operating system 94. See Ex. 1001, 8:1–23, 13:54–56. Data memory 106 is not linked clearly to the recited function because data memory 106 merely stores information, and does not control the sending and receiving of information. See id. 8:45–58, 9:31–45, 10:58–64, 13:8–10, 23–26. Thus, the structure in the Specification that corresponds to the “processing means” is “processor 90 in conjunction with real time operating system 94.”” slip op. at 11
Claim constructionDiscretionary denialcites GrahamPatents in suitUS 5,732,074 - Zhongshan Broad Ocean Motor Co., Ltd. / Broad Ocean Motor LLC et al. v. Nidec Motor CorporationInstitution deniedPTAB · Jul 20, 2015 · IPR2015-00762 · APJ Patrick M Boucher · IPR · Institution
The Board denied joinder and denied institution because the petition was time-barred under § 315(b), despite finding a reasonable likelihood that claims 1–3, 8, 9, 12, 16, and 19 were anticipated.
RulingsInstitution decision- PTAB / AIA Trials › §315(b) time barInstitution denied
“Petitioners were served with a complaint alleging infringement of the ’349 patent on September 25, 2013. The Petition was filed on February 20, 2015, more than a year later. Notwithstanding our determination that the Petition meets the standard set forth in 35 U.S.C. § 314(a), we conclude that institution of an inter partes review is barred by § 315(b).” slip op. at 11
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“Section 315(c) provides: If the Director institutes an inter partes review, the Director, in his or her discretion, may join as a party to that inter partes review any person who properly files a petition under section 311 that the Director, after receiving a preliminary response under section 313 or the expiration of the time for filing such a response, determines warrants the institution of an inter partes review under section 314. In our view, the phrase “join as a party” indicates that only a person who is not already a party to an instituted inter partes review can be joined to the proceeding. A person cannot be joined as a party to a proceeding in which it is already a party. That the statute uses the expansive term “any person” is of little moment because the overall language of the statute places unambiguous limits on the term. Specifically, the phrase “join as a party” excludes a person who is already a party.” slip op. at 12
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstituted
“We conclude that Petitioners have established a reasonable likelihood of prevailing on their contention that Hideji discloses performing sinewave commutation using independent values of Q and d axis currents in the manner recited in each of independent claims 1, 16, and 19. Thus, we conclude that Petitioners have established a reasonable likelihood of prevailing on their challenge of claims 1–3, 8, 9, 12, 16, and 19 as anticipated by Hideji. B. Time Bar Under 35 U.S.C. § 315(b) Section 315(b) provides: An inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner . . . is served with a complaint alleging infringement of the patent. The time limitation set forth in the preceding sentence shall not apply to a request for joinder under subsection (c). Petitioners were served with a complaint alleging infringement of the ’349 patent on September 25, 2013. The Petition was filed on February 20, 2015, more than a year later. Notwithstanding our determination that the Petition meets the standard set forth in 35 U.S.C. § 314(a), we conclude that institution of an inter partes review is barred by § 315(b).” slip op. at 11
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“contention that Hideji discloses “performing sinewave commutation, using independent values of Q and d axis currents, in response to one or more control signals received from the system controller to produce continuous phase currents in the permanent magnet motor for driving the air-moving component,” recited in each of independent claims 1, 16, and 19. Pet. at 19– 26. Patent Owner contends that Hideji fails to disclose the use of independent values of Q and d axis currents: “In fact, Hideji discloses that it employs calculations in the rotating frame of reference in which Q and d axis currents depend on each other.” Prelim. Resp. 20. Petitioners observe that Figure 2 of Hideji illustrates that three-phase / two-phase coordinate conversion part 36 outputs separate values for Iq and Id, i.e. the Q and d axis currents.3 Pet. 23–24. Hideji discloses that 3 We note that the labels “Iq” and “Id” output from part 36 of Hideji are identified directly as such in the original Japanese reference. Ex. 1003, 8. [t]he three-phase/two-phase coordinate conversion part 36 converts the coordinates of the alternating current Iu and Iv introduced by the current input part 35 to a revolving coordination system (d-q coordination system) on the rotor of the brushless DC motor 30A, and calculates flux current Id (d-axis current) and torque current Iq (q-axis current). Ex. 1005 ¶ 35. Petitioners reason that such transformation results in separate, independent values of Q and d axis currents determined from control signals received from the system controller. Pet. 23. Petitioners support this reasoning with testimony by Dr. Ehsani. Ex. 1009 ¶ 38. Patent Owner responds that “the values coming from part 36 are at best a transform into the rotating frame of reference of actual measured currents” and that “[t]hey are not the demanded currents generated by the controller.” Prelim. Resp. 22. Notwithstanding the explicit identification of these values as “Iq” and “Id” in the original Japanese reference, Patent Owner also contends that they “are not values one of ordinary skill would refer to as Iq and Id.” Id. at 23. In addition, Patent Owner contends that “[i]t is the current control part 40 output that is used to create the continuous phase sine wave commutated currents for the motor after being transformed back out of the rotating frame of reference,” reasoning that “[i]f Iq and Id are not independent at this step, the ‘motor controller’ is not using ‘independent values of Q and d axis current’ to perform ‘sine wave commutation.’” Id. at 24. Patent Owner contends that such inputs are not independent, noting” slip op. at 9
Claim construction§ 102 anticipationDiscretionary denialPatents in suitUS 7,626,349
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.