- PTAB · Sep 16, 2020 · IPR2018-00754 · APJ Hyun J Jung · IPR · Rehearing
The Board denied Patent Owner’s rehearing request and left in place its determination that claim 9 was unpatentable over White and Lee under § 103(a).
RulingsRehearing decision- RehearingRehearing, deniedDenied
“The party filing a request for rehearing of a final written decision has the burden of showing a decision should be modified, and the request for rehearing must specifically identify all matters the party believes the Board misapprehended or overlooked and the place where each matter was previously addressed in its papers. 37 C.F.R. § 42.71(d); see also Req. Reh’g 1 (quoting from the rule). Therefore, Patent Owner bears the burden of establishing that we misapprehended or overlooked the matters that it requests that we review.” slip op. at 3
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“In our Final Written Decision, we explained that the Specification does not support Patent Owner’s proposed interpretation of the term “token” as being disk-shaped, and determined that “we need only determine that the term ‘token’ does not include an ‘action figure.’” Final Dec. 11–12. The full record indicated to us that, even if we adopted Patent Owner’s proposed interpretation of “token” as an “item required to begin play of a game,” Petitioner had still shown by a preponderance of the evidence that claim 9 is unpatentable over White and Lee. As described in our Final Written Decision, we found that “the teachings of White related to tag 5 in base portion 4a of character 4 used in the toy of Figure 1 support Petitioner’s argument that character 4 teaches a ‘game piece with built-in IC chip.’” Final Dec. 32. We understood that “Petitioner is proposing to modify White so that tag 5 is detachable and results in a ‘token with built-in IC chip,’” so that “the modified White character 4 would have base 4a with detachable tag 5 received in recessed portion 3.” Id. at 37 (citing Pet. 65–66; Dec. to Inst. 23; Pet. Reply 24); see also id. at 41–42 (determining that” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“We also found that “Lee . . . supports Petitioner’s declarant testimony that one of ordinary skill in the art would have modified White so that its tag 5 is detachable in the same manner as Lee so that ‘various action figures can be used with the token.’” Final Dec. 42 (citing Ex. 1002 ¶ 150). Petitioner, thus, showed by a preponderance of the evidence that Lee teaches or suggests a method of attaching a component to a figure that one of ordinary skill in the art would have applied to White’s tag 5 for the reason asserted by Petitioner.” slip op. at 9
Claim construction§ 103 obviousnessPatents in suitUS 7,001,276 - Amazon.Com, Inc. v. M2m Solutions LLCRehearing deniedPTAB · Jun 6, 2019 · IPR2017-01893 · APJ David C Mckone · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, maintaining its claim construction and its finding that Kloba and Multer render claims 1–30 obvious.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. ANALYSIS The burden of showing that the FWD should be modified is on Patent Owner, the party challenging the FWD. See 37 C.F.R. § 42.71(d). In addition, “[t]he 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.” Id.” slip op. at 3
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“As explained above, the Final Written Decision concluded that the ordinary meaning of the claim language is broad enough to encompass the sending of communications, based upon the results of processing consumer usage information, containing management instructions. FWD 25. Patent Owner does not explain persuasively why that conclusion was incorrect. We maintain that conclusion here. In claim 1, for example, it is reasonable to read the phrase “based upon the results of having processed at least some of the received consumer usage information” as modifying either “configured to send communications” or “management instructions that cause the stored data content files of one or more assets to be automatically modified.” Id. at 24. Patent Owner does not explain persuasively why such language could only modify management instructions.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableUnpatentable
“In any case, we addressed these limitations under the construction we adopted in the Final Written Decision, which is close to Patent Owner’s new construction, and found them taught by Kloba. FWD 51–55. Specifically, we found that Kloba’s figures 1I1 and 1X, and the corresponding description, showed that all instructions and objects, including the deltas (differences between objects currently in a client’s database and objects offered by content providers), are transmitted from the server to the client in one transmission during a synchronization, and that this transmission is based, in part, upon the results of processing the information collected through the interfaces of Figures 12 and 17. Id. at 52–54 (citing Ex. 1015, 8:7–19, 19:47, 19:51–25, 20:50–56; Pet. 33–34; Reply 8–9). We rejected Patent Owner’s argument that deltas were communicated separately from other synchronization information. Id.” slip op. at 15
Claim construction§ 103 obviousnessPatents in suitUS 8,577,359 - Amazon.Com, Inc. v. M2m Solutions LLCRehearing deniedPTAB · Jun 6, 2019 · IPR2017-01891 · APJ David C Mckone · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, maintaining that claims 1–30 are unpatentable as obvious over Kloba and Multer under the adopted claim construction.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. ANALYSIS The burden of showing that the FWD should be modified is on Patent Owner, the party challenging the FWD. See 37 C.F.R. § 42.71(d). In addition, “[t]he 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.” Id.” slip op. at 3
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“In any case, we agree with Petitioner that the language of the claims is clear. As we stated in the Final Written Decision, according to the plain language of claims 1 and 20, it is the communication of management instructions, not the management instructions themselves, that is based upon the results of processing at least some of the received consumer usage information. FWD 17–18. We maintain that conclusion here. The natural reading of the claim language is that “based upon the results of processing at least some of the received consumer usage information” modifies “communicate.”” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableUnpatentable
“In any case, we addressed these limitations under the construction we adopted in the Final Written Decision, which is close to Patent Owner’s new construction, and found them taught by Kloba. FWD 43–48. Specifically, we found that Kloba’s figures 1I1 and 1X, and the corresponding description, showed that all instructions and objects, including the deltas (differences between objects currently in a client’s database and objects offered by content providers), are transmitted from the server to the client in one transmission during a synchronization, and that this transmission is based, in part, upon the results of processing the information collected through the interfaces of Figures 12 and 17. Id. at 44–46 (citing Ex. 1015, 8:7–19, 19:47, 19:51–25, 20:50–56; Pet. 32–33; Reply 6–7). We rejected Patent Owner’s argument that deltas were communicated separately from other synchronization information. Id.” slip op. at 14
Claim construction§ 103 obviousnessPatents in suitUS 8,504,007 - FMC Technologies, Inc. v. Onesubsea IP UK LimitedRehearing grantedPTAB · Apr 19, 2018 · IPR2016-00907 · APJ Michelle N Wormmeester · IPR · Rehearing
On rehearing, the Board held claims 36 and 37 unpatentable as obvious over Kelly and Fenton, Kelly, Bednar, and Fenton, and Clair and Fenton.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“III. STANDARD OF REVIEW According to 37 C.F.R. § 42.71(d), “[t]he burden of showing a decision should be modified lies with the party challenging the decision,” and the “request must specifically identify all matters the party believes the Board misapprehended or overlooked.” The burden here, therefore, lies with Petitioner to show we misapprehended or overlooked the matters it requests that we review.” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“sensors, as described by Fenton, are expressly enumerated as being processing apparatus in dependent claim 29.” Id. at 28 (cited by Req. Reh’g 5). The ’306 patent indeed teaches that a processing apparatus may include a temperature, pressure, or flow sensor. Ex. 1001, claim 29 (“the processing apparatus is chosen from at least one of: . . . measurement apparatus; temperature measurement apparatus; flow rate measurement apparatus . . .”); accord id. at claim 37. Accordingly, we also agree that Fenton’s sensors correspond to the recited “processing apparatus.” Petitioner further explained that “[m]odifying Kelly’s subsea choke assembly by adding one or more temperature sensors, pressure sensors, or flow meters as taught by Fenton would provide information related to fluid flow through the assembly and allow more precise control of the choke to achieve desired flow characteristics.” Pet. 27 (emphases added) (cited by Req. Reh’g 1). In light of our current understanding of Petitioner’s argument, based on the record, we find that the combination of Kelly and Fenton teaches a “diverter assembly,” a “choke,” and a “processing apparatus,” and that Petitioner’s proffered reasoning for modifying Kelly’s choke assembly to include Fenton’s temperature sensors, pressure sensors, or flow meters in order to allow for more precise control of the choke is sufficient to support the legal conclusion of obviousness. See Pet. 27–28.” slip op. at 8
§ 103 obviousnessPatents in suitUS 8,573,306 - PTAB · Nov 14, 2017 · IPR2015-01802 · APJ Matthew R Clements · IPR · Rehearing
Granted rehearing and held claims 2, 4, and 6 unpatentable as obvious over Rabinovich because the wireless-network limitation encompasses a connection through a wireless hub.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“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. With this in mind, we address the arguments presented by Petitioner.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“Ex. 1002, 3:41–49. Thus, the ’680 patent itself does not limit the recited “wireless network” to an ad hoc network. Moreover, we are not persuaded by Patent Owner’s contention that our construction of “computer unit” requires limiting the recited “wireless network” to an ad hoc network. Specifically, dependent claims 2 and 4 each recite “wherein the at least one computer unit and the at least two data storage units are connected over a wireless network.” Dependent claim 6 recites a similar limitation. We construed “computing unit” to encompass any computing device. Dec. 6. We did not, as Patent Owner contends, “construe[] both the ‘computer unit’ and ‘data storage units’ as hosts” (PO Br. 3). Although our construction encompasses Rabinovich’s hosts, it does not require the recited “computer unit” and “data storage units” to be hosts. Moreover, even assuming that both units are Rabinovich’s “hosts,” dependent claims 2, 4, and 6 require only that they be “connected over a wireless network,” not “between” or “directly connected to each other,” as Patent Owner contends (PO Br. 3). Thus, we are not persuaded by Patent Owner’s contention that two hosts “connected over a wireless network” necessarily requires a wireless connection “between” two hosts. Id. Based on our review of the ’680 patent, we construe “connected over a wireless network” as broad enough to encompass a connection through a wireless hub.” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“Ex. 1002, 3:41–49. Thus, the ’680 patent itself does not limit the recited “wireless network” to an ad hoc network. Moreover, we are not persuaded by Patent Owner’s contention that our construction of “computer unit” requires limiting the recited “wireless network” to an ad hoc network. Specifically, dependent claims 2 and 4 each recite “wherein the at least one computer unit and the at least two data storage units are connected over a wireless network.” Dependent claim 6 recites a similar limitation. We construed “computing unit” to encompass any computing device. Dec. 6. We did not, as Patent Owner contends, “construe[] both the ‘computer unit’ and ‘data storage units’ as hosts” (PO Br. 3). Although our construction encompasses Rabinovich’s hosts, it does not require the recited “computer unit” and “data storage units” to be hosts. Moreover, even assuming that both units are Rabinovich’s “hosts,” dependent claims 2, 4, and 6 require only that they be “connected over a wireless network,” not “between” or “directly connected to each other,” as Patent Owner contends (PO Br. 3). Thus, we are not persuaded by Patent Owner’s contention that two hosts “connected over a wireless network” necessarily requires a wireless connection “between” two hosts. Id. Based on our review of the ’680 patent, we construe “connected over a wireless network” as broad enough to encompass a connection through a wireless hub. Because we determine that the “wireless network” recited in dependent claims 2, 4, and 6 need not be an ad hoc network, Patent Owner’s argument that Rabinovich’s replication method would have been unsuitable for use over an ad hoc network does not persuasively rebut Petitioner’s showing. Having considered the arguments and evidence of both parties, we are persuaded that Petitioner has shown by a preponderance of the evidence that dependent claims 2, 4, and 6 are unpatentable under 35 U.S.C. § 103(a) as obvious over Rabinovich.” slip op. at 7
- ExcludeNot reached
“We decline to assess the merits of Petitioner’s Motion to Exclude. Even without excluding the identified evidence, we have concluded that Petitioner has demonstrated, by a preponderance of the evidence, that claims 2, 4, and 6 are unpatentable. Accordingly, Petitioner’s Motion to Exclude is dismissed as moot.” slip op. at 8
Claim construction§ 103 obviousnessPatents in suitUS 7,904,680 - Apple Inc. / Samsung Electronics Ltd et al. v. Smartflash LLCRehearing deniedPTAB · Aug 24, 2016 · CBM2015-00031 · APJ Gregg I Anderson · CBM · Rehearing
The Board denied Smartflash’s rehearing request and left its decision that claims 1, 5, 8, and 10 are unpatentable under § 101 unchanged.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“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 3
- Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptStep2 no inventive conceptUnpatentable
“As we stated in our Final Written Decision and Petitioners argue, the ’772 patent specification treats as well-known and conventional all potentially technical elements of claims 1, 5, 8, and 10 the claimed code performs generic computer functions, and the claims recite several generic and conventional data types. Final Dec. 14–17; Notice Resp. 1–2. These limitations of claims 1, 5, 8, and 10 “do not yield a result that overrides the routine and conventional manner in which this technology operates.” Final Dec. 20. Rather, each of the challenged claims is “an abstract-idea-based solution implemented with generic technical components in a conventional way,” making it patent ineligible. See BASCOM, 2016 WL 3514158, at *6, 3 We note that U.S. Patent No. 7,334,720 B2 is not at issue in this proceeding. *7. Also, “[t]he concept of storing two different types of information4 in the same place or on the same device is an age old practice.” Final Dec. 22. For example, “the prior art discloses products, such as electronic data, that could store both the content and conditions for providing access to the content, such as ‘a time bomb or other disabling device which will disable the product at the end of the rental period.’” Id. at 22–23 (citing Ex. 1215, Abstract, 10:24–30).” slip op. at 7
- Strike new argumentNew argument disregardedDecided for petitioner
“Rather than providing a proper request for rehearing, addressing particular matters that we previously misapprehended or overlooked, Smartflash’s Request provides new briefing by expounding on argument already made. Smartflash cannot simply allege that an “issue” (e.g., whether the claims are directed to an abstract idea) was previously addressed, generally, and proceed to present new argument on that issue in a request for rehearing. See 37 C.F.R. § 42.71. Smartflash’s arguments are either new or were addressed in our Final Decision. For example, Smartflash’s argument that the challenged claims are not directed to an abstract idea (Req. Reh’g 10–12) is new, and therefore, improper in a request for rehearing, because Smartflash did not argue the first step of the analysis articulated in Mayo and Alice in its Patent Owner Response. See PO Resp. 16–25 (Patent Owner Response argues that claims are statutory under only the second step of Mayo and Alice); see also Paper 42 (transcript of oral hearing), 6:13–16 (Petitioner stating that “Patent Owner has presented no argument whatsoever to contest that its claims are directed to abstract ideas under the first prong of Mayo and Alice.”), id. at 6:17–18 (Petitioner also stating “It [] also never disputed the articulation of those abstract ideas”).” slip op. at 5
§ 101 eligibilitycites AlicePatents in suitUS 8,336,772 - Sandisk Corporation v. Netlist, Inc.Rehearing grantedPTAB · Apr 27, 2016 · IPR2014-00971 · APJ Linda M Gaudette · IPR · Rehearing
Rehearing was granted for claims 9 and 10, held unpatentable over Averbuj and JEDEC Standard and over Huang and JEDEC Standard; rehearing was denied for claims 4 and 15.
RulingsRehearing decision- RehearingRehearing, grantedRehearing, deniedGranted in part
“II. STANDARD OF REVIEW The party requesting rehearing has the burden of showing the decision should be modified, and “[t]he 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.” 37 C.F.R. § 42.71(d).” slip op. at 3
- Strike new argumentNew argument disregardedDecided for patent owner
“C. Analysis Petitioner’s arguments are based on an underlying contention that, because the Board sua sponte raised a patentability challenge based on Huang alone, whereas Petitioner’s challenge was based on a combination of Huang and Tsern, the Board relied on evidence that was not cited in the Petition. Petitioner has not identified, nor do we find, however, any indication in our Institution Decision that we relied on evidence other than that expressly cited by Petitioner, e.g., Dr. Alpert’s statement that “[t]o the extent th[e] additional claim [4] element may not be disclosed by Huang alone, it is disclosed by Tsern” (Dr. Alpert’s first declaration (Ex. 1007) ¶ 156, cited in Pet. 42). See Dec. on Inst. 17–18. Petitioner has not explained, moreover, why it delayed more than a year to bring to our attention the alleged error in our finding that the Petition “identifies where Huang discloses or suggests every element of challenged claim[ 2].” (Dec. on Inst. 18). For example, Petitioner did not file a request for rehearing of our decision denying institution of trial on Petitioner’s challenge based on Huang and Tsern and/or instituting trial based on unpatentability in view of Huang alone. See 37 C.F.R. § 42.71(d) (“A party dissatisfied with a decision may file a single request for rehearing without prior authorization from the Board.”). Nor did Petitioner seek our authorization to withdraw the instituted challenge of claim 4 based on Huang alone. Cf. Ericsson Inc. v. Intellectual Ventures I LLC, 2015 WL 8651563, at *9–10 (PTAB 2015) (denying Petitioner’s motion to withdraw its challenge as to some of the claims where Petitioner delayed in seeking to correct its petition: “[O]ur Decision to Institute should have apprised Ericsson of the problem with its challenge to claim 55.”).” slip op. at 5
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“In any event, we find the declaration testimony relied on by Petitioner in support of this Request (see Req. Reh’g 13–14) supports our determination that Petitioner failed to show, by a preponderance of the evidence, that Averbuj anticipates claim 15. Dr. Alpert testified that if the “configuration [to selectively input to the address and control ports] is determined to require the structure that performs the selection itself, then the disclosed control module also includes multiplexer 46 of memory interface 41.” Ex. 1007 ¶ 87 (emphasis added). Petitioner did not explain (see Pet. 24–25; Reply 14–15) how Averbuj describes multiplexer 46 as being part of sequencer 8 (the alleged control circuit). See Final Dec. 43–44 (explaining that Petitioner has not addressed Patent Owner’s argument that the device that selectively inputs address and control signals to memory modules 12 is multiplexer 46 of memory interface 41 (the alleged data handler), not sequencer 8 (the alleged control circuit)). In sum, for the above reasons, we are not persuaded of error in our determination that Petitioner did not meet its burden to establish unpatentability of claim 15 under 35 U.S.C. § 102(b) based on Averbuj.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“In its Response, Patent Owner argues that claims 9 and 10 require a system configured to record “failures,” but in the system described in JEDEC Standard, testing stops after only one failure is recorded. Resp. 59– 60. Patent Owner further argues claims 9 and 10 require an internal tester, but the tester in JEDEC Standard is external to the memory system being tested. Id. at 60. In support of these arguments, Patent Owner relies on the declaration testimony of its witness, Dr. Sechen (Exhibit 2012). Id. at 59–60 (citing Ex. 2012 ¶¶ 229–32). Petitioner, in its Reply, argues “[t]he claims are not limited to recording failures during a single test. Instead, the cla[i]ms only require that the data and addresses associated with the failures be stored.” Reply 22. Petitioner directs us to the section of JEDEC Standard relied on its Petition, noting there is a subsection on “Multiple Failures” and a description of “a procedure to generate ‘a complete data log of all failures’ including the address and data associated with the failure.” Id. (citing Ex. 1006 § 8.2.4.5). In response to Patent Owner’s argument that the system in JEDEC Standard uses an external tester, Petitioner, relies on testimony in Dr. Alpert’s second Declaration (Ex. 1009). See Reply 22–23. Petitioner argues Dr. Sechen’s testimony is based on disclosure in JEDEC Standard relating to transparent mode testing (Ex. 1006 § 8.1), which differs from Memory BIST, described in the section of JEDEC Standard cited in the Petition (id. at § 8.2). See id.; Ex. 1009 ¶ 79 (asserting that the sections of JEDEC Standard relied on by Dr. Sechen, e.g., sections 5.1 and 5.5, relate to transparent mode). Dr. Alpert explains that “Transparent Mode is used during FB-DIMM manufacturing to detect defects in the memory devices, interface, and board assembly using data patterns supplied by an external tester. Memory BIST is used for testing a FB-DIMM in a system at power-on initialization without using test equipment external to the system.” Ex. 1009 ¶ 78. During the oral hearing, Patent Owner did not dispute these assertions. See generally, Paper 33 (transcript of the oral hearing). We find that Dr. Sechen’s testimony is related to JEDEC Standard’s description of testing in transparent mode and does not address adequately JEDEC Standard’s discussion of Memory BIST, i.e., the section of JEDEC Standard relied on by Petitioner in support of its patentability challenges as to claims 9 and 10. We also agree with Petitioner that Patent Owner’s arguments are not commensurate in scope with claims 9 and 10. We find Petitioner’s contentions with respect to the teachings of JEDEC Standard and motivation for modifying the respective systems of Averbuj and Huang are supported by JEDEC Standard, and conclude Petitioner has met its burden to show, by a preponderance of the evidence that claims 9 and 10 are” slip op. at 14
§ 102 anticipation§ 103 obviousnessPatents in suitUS 8,359,501 - Captioncall, L.L.C. v. Ultratec, Inc.Rehearing grantedPTAB · Dec 1, 2015 · IPR2013-00543 · APJ Lynne E Pettigrew · IPR · Rehearing
The Board granted rehearing only to modify its analysis of combining Ryan and McLaughlin, denied rehearing otherwise, and maintained that claims 1 and 2 are unpatentable.
RulingsRehearing decision- RehearingRehearing, grantedRehearing, deniedGranted in part
“II. DISCUSSION The party challenging a decision in a request for rehearing bears the burden of showing the decision should be modified. 37 C.F.R. § 42.71(d). A request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed.” Id.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentableUnpatentable
“function. Ex. 1005, 4:19–28. According to Mr. Occhiogrosso, whose testimony we credit on this point, it was well known in the field of speech recognition at the time of the invention that speaker-dependent speech recognition (e.g., trained to the voice of a particular speaker) performed better than untrained, speaker-independent speech recognition. Ex. 1019 ¶¶ 23, 25; Ex. 1036 ¶ 55. This is reflected in Ryan’s teaching that the accuracy of a relay that uses speech recognition software may be improved if a call assistant re-voices the remote user’s words into a terminal with voice recognition software designed to recognize the call assistant’s voice. Ex. 1005, 4:33–38. Thus, McLaughlin teaches the use of automated equipment at a relay, Ex. 1009, 29:20–22, and Ryan teaches a computer with speech recognition software as one form of automated equipment that can be used at a relay, Ex. 1005, 4:33–38. McLaughlin also notes the use of computerized speech recognition in another context, i.e., translation of voice mail messages from voice to text. Ex. 1012, 26:59–62. A person of ordinary skill in the art would have recognized that Ryan’s intermediate re-voicing solution—using voice recognition software trained to the voice of a call assistant at a relay— would address the shortcomings of applying voice recognition directly to a remote caller’s voice, acknowledged by McLaughlin. See Ex. 1036 ¶ 55. As Mr. Occhiogrosso explains, combining the teachings of Ryan and McLaughlin to achieve the claimed invention involves nothing more than directing the captioned telephone device of McLaughlin to connect to a re-voicing relay, as taught in Ryan, rather than a conventional relay. Ex. 1036 ¶ 54; see Reply 12. For these reasons, we are persuaded that a person of ordinary skill in the art would have combined the teachings of Ryan and McLaughlin, using Ryan’s re-voicing relay in place of McLaughlin’s relay, along with McLaughlin’s captioned telephone device.” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“use of trained voice recognition software. Id. at 54–55. In particular, Patent Owner submits that McLaughlin acknowledges the shortcomings of automated speech recognition technology and, therefore, would have discouraged one of ordinary skill in the art from attempting to design the relay claimed in the ’104 patent. Id. at 54 (citing Ex. 1012, 26:54–62). McLaughlin, however, refers to the limitations of speech recognition in the context of translating voice mail messages to text for deaf users, not in connection with relay services discussed in another section of McLaughlin. See Ex. 1012, 26:54–62. Moreover, as discussed previously, we credit the testimony of Mr. Occhiogrosso that it was well known in the field of speech recognition at the time of the invention that speaker-dependent speech recognition (e.g., trained to the voice of a particular speaker), such as that used in Ryan’s re-voicing technique, performed better than untrained, speaker-independent speech recognition, such as would be used in the voice mail application described in McLaughlin. See Ex. 1019 ¶¶ 23, 25; Ex. 1036 ¶ 55. On the facts presented here, we are not persuaded that McLaughlin’s statement regarding limitations of speech recognition technology sufficiently teaches away from the combination of Ryan’s re-voicing scheme with McLaughlin’s relay system to establish nonobviousness. See In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“determined that the ’104 patent contemplated software trained to a “voice pattern of the call assistant,” as set forth in the “Brief Summary of the Invention,” as well as software “specifically trained to the voice of [a] particular call assistant,” as described in the context of a particular relay embodiment shown in Figure 1. Final Dec. 9 (quoting Ex. 1002, 2:54–56, 6:17–20). Based on the evidence in the written description (including the disclosure of “voice pattern”), we determined that the ’104 patent did not indicate expressly how training occurs. Id. Giving the claim language its broadest reasonable construction in light of the specification, we concluded we would not limit “trained to the voice of the call assistant” to require training to the voice of one particular call assistant. Id.” slip op. at 8
Claim construction§ 103 obviousnesscites KSRPatents in suitUS 7,555,104 - Bank Of America, N.A. / PNC Financial Services Group, Inc. et al. v. Intellectual Ventures I LLCRehearing deniedPTAB · Jun 25, 2015 · CBM2014-00030 · APJ Thomas L Giannetti · CBM · Rehearing
The Board denied Patent Owner’s rehearing request, leaving claims 1–23 unpatentable under § 101 because no matter was overlooked or misapprehended and the Board did not abuse its discretion.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“A party dissatisfied with a decision may file a 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, opposition, or a reply. In Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347, 2355” slip op. at 3
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“Patent Owner’s expert does not rebut convincingly Dr. Myers’s claim-by-claim analysis. Instead, Patent Owner’s expert addresses the claims in two groups only. Ex. 2003, ¶¶ 26–28. We find this approach unconvincing, and therefore, credit Dr. Myers’s testimony as to specific claims over the testimony of Patent Owner’s expert.” slip op. at 8
- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionUnpatentable
“Decision. The first statement, regarding “abstract level,” was cited twice in the Final Decision. In the first instance, the citation followed a discussion of the first element of the Alice test. Final Dec. 9. Patent Owner’s main argument was that the ʼ382 patent did not fall within the categories of unpatentable, abstract ideas enumerated in Alice. Without reference to Mr. Martin’s testimony, the Board agreed with Petitioners that these enumerated categories are not exclusive. Id. The Board went on to state in a sentence that they were “influenced” by Mr. Martin’s testimony, which is then quoted in full, in determining that the patent is directed to an abstract idea. But the Board also had before it Dr. Myers’ testimony to the same effect. Myers Decl. ¶¶ 24–27. The second citation of this statement by Mr. Martin, also in a single sentence,1 follows a lengthy discussion of the patent claims based on the oral argument and Dr. Myers’ analysis. Final Dec. 11–14.” slip op. at 6
- Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptStep2 no inventive conceptUnpatentable
“[Patent Owner’s] supposed “inventive concept”—“delivering tailored web pages through an interactive interface as a function of web site navigation history”—fails to meet this standard. It is merely a restatement of the ’382 patent’s abstract idea (i.e., “tailoring an information provider’s web pages based on data about a particular information user”). This “concept” fails to include how to tailor web pages or use the web site navigation data. It therefore cannot “ensure that the patent in practice amounts to significantly more than a patent upon the ineligible concept itself,” as required by Alice Corp. Pet. Reply 5–6 (footnote omitted). Nor are we persuaded that the argument was overlooked or misapprehended by the Board. The Board considered all arguments presented. The Board was not persuaded by Patent Owner’s argument on this issue. In fact, this argument was rejected by the Federal Circuit in Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 714 (Fed. Cir. 2014). The patent owner there argued “abstract ideas remain patent-eligible under §101 as long as they are new ideas, not previously well known, and not routine activity.” Ultramercial, 772 F.3d at 714. The Federal Circuit rejected this argument, concluding “[w]e agree with [defendant] that the claims of the ʼ545 patent are not directed to patent-eligible subject matter.” Id. Petitioners cite this very holding of Ultramercial in their response to Patent Owner’s “inventive concept” argument. Pet. Reply 5, n.1. We, therefore, did not overlook or misapprehend the “inventive concept” argument put forth by Patent Owner. We simply found Petitioners’ argument more persuasive under the prevailing legal authorities, including Ultramercial.” slip op. at 4
§ 101 eligibilitycites AlicePatents in suitUS 7,603,382
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.