- PTAB · Nov 17, 2021 · IPR2021-00544 · APJ Terrence W Mcmillin · IPR · Rehearing
Rehearing was granted and review instituted on all challenged claims and grounds after the Board found the ITC target date made Fintiv factor 2 neutral and Petitioner’s broadened stipulation favored institution.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“Institution stated, “[t]he evidentiary hearing in the ITC investigation is scheduled to begin January 5, 2022, and the final determination is due April 29, 2022.” DDI 9 (citing Ex. 2004, 5; emphasis added). Petitioner is correct that the statement did not correctly state the target date for the ITC’s final determination. According to the Adopted Procedural Schedule for the ITC Investigation, the “Final ID” is due April 29, 2022, and the “Target Date” is August 29, 2022. Ex. 2004, 5. We agree that the ITC’s target date for final determination is more appropriate for evaluating Fintiv factor 2, consistent with the Board’s prior decisions. See Request 2–3 (identifying numerous proceedings). Applying the August 29, 2022, date, we conclude that Fintiv factor 2 is neutral in this proceeding, because of the close proximity between the ITC’s target final determination and our expected final written decision based on the mailing date of this Decision.” slip op. at 9
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied discretionary otherDecided for petitioner
“Institution stated, “[t]he evidentiary hearing in the ITC investigation is scheduled to begin January 5, 2022, and the final determination is due April 29, 2022.” DDI 9 (citing Ex. 2004, 5; emphasis added). Petitioner is correct that the statement did not correctly state the target date for the ITC’s final determination. According to the Adopted Procedural Schedule for the ITC Investigation, the “Final ID” is due April 29, 2022, and the “Target Date” is August 29, 2022. Ex. 2004, 5. We agree that the ITC’s target date for final determination is more appropriate for evaluating Fintiv factor 2, consistent with the Board’s prior decisions. See Request 2–3 (identifying numerous proceedings). Applying the August 29, 2022, date, we conclude that Fintiv factor 2 is neutral in this proceeding, because of the close proximity between the ITC’s target final determination and our expected final written decision based on the mailing date of this Decision.” slip op. at 9
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Summary as to Claim 1 Petitioner has shown a reasonable likelihood of showing that claim 1 of the ’423 patent would have been obvious in view of the combined teachings of Jeon, Everett, and Abramson. 5. Claims 2–4, 6–10, 12–15, 18–23, 25, and 26 Petitioner also contends that claims 2–4, 6–10, 12–15, 18–23, 25, and 26 would have been obvious in view of a combination of the asserted references. See Pet. 26–80. As noted previously, Patent Owner does not address the merits of any portion of the Petitioner’s obviousness showing. See generally Prelim. Resp. Thus, at this stage, Petitioner’s obviousness showing as to claims 2–4, 6–10, 12–15, 18–23, 25, and 26 is undisputed. We have determined that there is a reasonable likelihood that the Petitioner will prevail with respect to at least one of the claims challenged in the Petition pursuant to 35 U.S.C. § 314 and that inter partes review should be instituted. Accordingly, we institute as to all the challenged claims and all the challenges raised in the Petition. SAS Institute Inc. v. Iancu, 138 S.Ct. 1348, 1358 (2018); 37 C.F.R. §42.108 (a) (“When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.”). III. CONCLUSION Petitioner has persuaded us that rehearing is appropriate and we grant the Request for Rehearing. After reconsidering our discretionary denial of the Petition, we determine that discretionary denial is inappropriate. And, we determine that Petitioner has demonstrated a reasonable likelihood of showing at least one of the claims challenged in the Petition would have been obvious. IV. ORDER In consideration of the foregoing, it is hereby: ORDERED that the Request for Rehearing is granted; FURTHER ORDERED that an inter partes review is instituted on all challenged claims under all challenged grounds; and FURTHER ORDERED that pursuant to 35 U.S.C. § 314(a), inter partes review of the ʼ423 patent is hereby instituted commencing on the entry date of this Decision, and pursuant to 35 U.S.C. § 314(c) and 37 C.F.R. § 42.4, notice is hereby given of the institution of a trial.” slip op. at 29
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“With regard to combining the relevant teachings of Jeon and Everett relating to this limitation, the Petition states: It would have been obvious to combine this well-known, reduced base station approach velocity with [ ]Jeon . . . Doing so is nothing more than substituting a known feature (e.g., Everett’s reduced base station approach velocity) in an existing system ([ ]Jeon’s robot cleaner) according to known methods (e.g., function of stand-off distance) to achieve a predictable result (avoiding collision with and/or increased maneuverability for accurate alignment with the base station). Id.; KSR, 550 U.S. at 416-418. Selecting a reduced base station approach velocity is a known, obvious, trivial selection from a limited number of options (increasing, decreasing, or maintaining velocity). Likhachev, ¶ 82. Given the benefits of reducing the velocity (e.g., avoiding collision and/or increased maneuverability), to the extent not already understood from [ ]Jeon and the knowledge of a skilled artisan, a skilled artisan would have found it obvious to try reducing the base station approach velocity of [ ]Jeon’s robot cleaner as taught by Everett. Id.; KSR, 550 U.S. at 421. Pet. 19–20. At least at this stage of the proceedings, we determine that Petitioner provides sufficient rationale for combining the relied upon teachings of Jeon and Everett. We determine that, for purposes of institution, Petitioner has shown sufficiently that the cited art teaches this limitation.” slip op. at 24
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,884,423 - PTAB · Sep 24, 2021 · IPR2021-00095 · APJ Terrence W Mcmillin · IPR · Rehearing
The Board granted rehearing, vacated its discretionary denial, and instituted review of claims 1, 2, 6, 8–10, and 12–20 on all asserted grounds.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“misapprehended the nature and fragility of Patent Owner’s assertion of the ’707 Patent in the ITC Investigation and the corresponding likelihood that the ITC Investigation would yield a final invalidity determination before a final written decision is this proceeding, and further that the facts as they stand today do not support the Board’s Decision.” Request 2. We do not agree that the Board misapprehended anything. Our Decision Denying Institution was appropriate under the facts as they existed at the time. We do agree that the facts as they stand today do not support our Decision Denying Institution and, in light of the changed facts, we modify our earlier decision that exercised our discretion to deny institution. The parallel proceeding that served as our basis for exercising our discretion to deny institution no longer involves the ’707 patent. On June 28, 2021, the ITC Investigation was terminated with respect to the ’707 patent. Ex. 1063, 2. Petitioner argues that, “Patent Owner’s decision to terminate the ’707 Patent from the ITC Investigation eliminates the factual basis for the Board’s denial of institution.” Request 4. We agree. In weighing the Fintiv factors, we relied on the involvement of the ’707 patent in an ITC investigation as the basis for our weighing 4 of 6 factors and for our holistic assessment of the factors in favor of our exercising our discretion to deny institution. DDI 9 (factor 1), 10 (factor 2), 11 (factor 3), 14 (factor 5), 15 (holistic assessment). However, the ITC investigation no longer provides any basis for exercising our discretion to deny institution.11 We possess the inherent authority to reconsider our Decision Denying Institution. See GTNX, Inc. v. INTTRA, Inc., 789 F.3d 1309, 1313 (Fed. Cir. 2015). In light of the termination of the ITC investigation with respect to the ’707 patent, we no longer exercise our discretion to deny institution.” slip op. at 7
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“discretion to deny institution no longer involves the ’707 patent. On June 28, 2021, the ITC Investigation was terminated with respect to the ’707 patent. Ex. 1063, 2. Petitioner argues that, “Patent Owner’s decision to terminate the ’707 Patent from the ITC Investigation eliminates the factual basis for the Board’s denial of institution.” Request 4. We agree. In weighing the Fintiv factors, we relied on the involvement of the ’707 patent in an ITC investigation as the basis for our weighing 4 of 6 factors and for our holistic assessment of the factors in favor of our exercising our discretion to deny institution. DDI 9 (factor 1), 10 (factor 2), 11 (factor 3), 14 (factor 5), 15 (holistic assessment). However, the ITC investigation no longer provides any basis for exercising our discretion to deny institution.11 We possess the inherent authority to reconsider our Decision Denying Institution. See GTNX, Inc. v. INTTRA, Inc., 789 F.3d 1309, 1313 (Fed. Cir. 2015). In light of the termination of the ITC investigation with respect to the ’707 patent, we no longer exercise our discretion to deny institution.” slip op. at 7
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Id. at 21–23. We determine that Petitioner has provided a showing sufficient to support institution as to why a skilled artisan would have been motivated at the time of the invention to look to the laser ablation scribing system of Suutarinen to implement the solar cell backside scribing techniques of Jinno, with a reasonable expectation of success in meeting the limitations of the claimed invention. Summary as to Claim 1 Petitioner has shown a reasonable likelihood of showing that claim 1 of the ’707 patent would have been obvious in view of the combined teachings of Jinno and Suutarinen.” slip op. at 24
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Motivation to Combine the Relevant Teachings of Jinno and Suutarinen Petitioner provides detailed and well-supported reasoning for combining the relevant teachings of Jinno and Suutarinen. See Pet. 19–26. The Petition states, “[a]s of the effective filing date of the 707 Patent, a Skilled Artisan would have found it obvious to employ the laser ablation scribing system of Suutarinen to implement the solar cell backside scribing techniques of Jinno[ ].” Id. at 19. With specific regard to combining the teachings of these references, the Petition provides: [T]he two systems disclose analogous functionality, such as ablation or laser scribing more generally, a Skilled Artisan would understand combining their techniques to be an efficient and common sense way to implement the combined system in order to obtain the benefits of both, and therefore would have been motivated to make the combination. EX1003,¶80. Further, Jinno[ ], Suutarinen, and the 707 Patent are analogous art because each is in the same field of endeavor— i.e., laser scribing and singulation of semiconductor wafers. See EX1005,Abstract,¶[0006]; EX1006,¶[0002]; EX1001,Abstract. Also, Jinno[ ] and Suutarinen are reasonably pertinent to the particular problem the inventor of the 707 Patent was trying to solve—achieving singulation without the drawbacks of mechanical sawing. See EX1001,2:19-20 (“Conventionally, solar cells are mechanically cut with a saw. However, this technique has numerous disadvantages.”); EX1005,[0005]; EX1006,¶[0005]; EX1003,¶81. A Skilled Artisan would have further understood that the combination of Jinno[ ] and Suutarinen as analyzed here is merely an arrangement of old elements (backside laser scribing of solar cells to a depth of half the solar cell thickness (Jinno[ ]) and blowing gas and vacuum exhaust during laser ablation (Suutarinen)), with each performing the same function it had been known to perform (singulation of semiconductor based solar cells (Jinno[ ]), enhancing scribing via debris removal (Suutarinen)), and yielding no more than what one would expect from such an arrangement (laser ablation and singulation of solar cells with removal of gaseous material generated from the laser processing). The combination could therefore have been made with a reasonable expectation of success and without undue experimentation. EX1003,¶82. Id. at 21–23. We determine that Petitioner has provided a showing sufficient to support institution as to why a skilled artisan would have been motivated at the time of the invention to look to the laser ablation scribing system of Suutarinen to implement the solar cell backside scribing techniques of Jinno, with a reasonable expectation of success in meeting the limitations of the claimed invention.” slip op. at 23
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,522,707 - Samsung Electronics America, Inc. v. Prisua Engineering Corp.Rehearing grantedPTAB · Sep 27, 2018 · IPR2017-01188 · APJ Matthew R Clements · IPR · Rehearing
The Board granted Patent Owner’s rehearing request and authorized it to re-file its Sur-Reply by September 28, 2018.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“reply “as a matter of right,” and does not address explicitly whether a Patent Owner may file a sur-reply in a case that was instituted prior to the Trial Practice Guide Update. Because the Trial Practice Guide Update did not authorize Patent Owner to file its Sur-Reply “as a matter of right,” we are not persuaded that we erred in determining that Patent Owner’s Sur-Reply was unauthorized.” slip op. at 5
- Strike new argumentGranted
“Notwithstanding all of the above, and out of an abundance of fairness to Patent Owner, Patent Owner is authorized to re-file its Sur-Reply no later than Friday, September 28, 2018.” slip op. at 6
NonePatents in suitUS 8,650,591 - Shenzhen Zhiyi Technology Co. Ltd., D/B/A Ilife v. Irobot Corp.Rehearing grantedPTAB · May 1, 2018 · IPR2017-02061 · APJ William V Saindon · IPR · Rehearing
Granted petitioner’s rehearing request and expanded the instituted review to include whether claims 1–3, 7, and 12 are anticipated by Ueno-642.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“We do not take a position as to the merits of Petitioner’s Request, but note that intervening case law has since clarified that we should not have denied institution of the claims in the anticipation ground while granting institution of the claims in the obviousness ground. The U.S. Supreme Court’s recent decision in SAS Institute holds that a final written decision under 35 U.S.C. § 318(a) “must address every claim the petition has challenged.” SAS Inst. Inc. v. Iancu, 584 U.S. ___, ___ (2018) (slip op., at 5).1 Because we instituted an inter partes review as to claim 42, absent further developments in the proceeding, we must issue a final written decision regarding claims 1–3, 7, 12, and 42 of the ’490 patent. Accordingly, we bring the anticipation ground into the inter partes review to allow a full and fair consideration of the evidence before making any final written decision regarding challenged claims 1–3, 7, 12, and 42.” slip op. at 2
NonePatents in suitUS 6,809,490 - Captioncall, L.L.C. v. Ultratec, Inc.Rehearing grantedPTAB · Dec 1, 2015 · IPR2013-00544 · APJ Lynne E Pettigrew · IPR · Rehearing
Patent Owner’s rehearing request was granted to modify the Ryan–McLaughlin combination analysis and denied otherwise; claims 7–11 remain 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
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference is prior artDecided for petitioner
“Patent Owner Response, that for a patent to serve as prior art the patent must be enabled as to its own earliest claimed effective filing date in 1994. Req. 1–4; PO Resp. 15–22. We addressed this argument in the Final Decision and additionally examined the evidence of record as to whether Ryan would have enabled one of ordinary skill in the art to make the invention without undue experimentation prior to the date of invention of the challenged patent. Final Dec. 22–25. We are not persuaded that we overlooked or misapprehended Patent Owner’s prior argument or made an erroneous interpretation of law.” slip op. at 3
- ExcludeDecided for petitioner
“transcript is inadmissible because it does not satisfy the requirements that all testimony, other than uncompelled direct testimony, must be in the form of a deposition transcript, 37 C.F.R. § 42.53(a), and that the witness shall be sworn, 37 C.F.R. § 42.53(f)(1). Req. 5. Therefore, according to Patent Owner, the Yamamoto transcript was “not taken, sought, or filed in accordance with these regulations [and] is not admissible.” Id. (citing 37 C.F.R. § 42.61(a)). Rule 42.53, however, is titled “Taking Testimony,” and applies only to testimony taken “during a testimony period set by the Board” for purposes of a particular review proceeding. 37 C.F.R. § 42.53(b); see also 37 C.F.R. § 42.53(c) (providing time limits set by the Board); id. § 42.53(d) (providing notice requirements). As stated in our Final Decision, Petitioner sought to admit the Yamamoto transcript as a deposition taken in the district court proceeding, not as deposition testimony taken in this inter partes proceeding. Final Dec. 32. And based on the parties’ stipulation in district court, we treated the Yamamoto transcript as sworn deposition testimony taken in the district court. Id. at 32–33 (citing Ex. 1067 ¶ 5). Petitioner filed the Yamamoto transcript as supplemental information under 37 C.F.R. § 42.123(b), establishing that the Yamamoto transcript reasonably could not have been obtained earlier and that its consideration was in the interests of justice. Paper 59, 7–8. Therefore, Petitioner’s filing of the Yamamoto transcript complied with Board rules, and we properly relied on it in determining the public accessibility of Yamamoto. See Final Dec. 35–38. Having reviewed Patent Owner’s Request, we are not persuaded we misapprehended or overlooked any matter relating to the admissibility of the Yamamoto transcript.” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“disclosure in the ’578 patent of “voice pattern.” Id. at 7–9. We disagree that our reliance on the “Brief Summary of the Invention,” which refers to “a speech recognition computer program which has been trained to the voice pattern of the call assistant,” was improper. See Final Dec. 12 (quoting Ex. 1001, 2:44–46 (emphasis added)). Rather, in our Final Decision, we determined that the ’578 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. 12 (quoting Ex. 1001, 2:44–46; Ex. 1002, 5:44–47). Based on the evidence in the written description (including the disclosure of “voice pattern”), we determined that the ’578 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 7
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,213,578 - 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 - Captioncall, LLC v. Ultratec, Inc.Rehearing grantedPTAB · Dec 1, 2015 · IPR2013-00549 · APJ William V Saindon · IPR · Rehearing
Patent Owner’s rehearing request was denied as to the unpatentability outcome for claims 1–5 and 7, but granted to correct “captioned” to “voice-to-text.”
RulingsRehearing decision- RehearingRehearing, grantedRehearing, deniedGranted in part
“unpatentability by a preponderance of the evidence. 35 U.S.C. § 316(e). The standard of review for rehearing requests is set forth in 37 C.F.R. § 42.71(d), which states: 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
- Obviousness (§103) › Objective indicia / secondary considerationsObjective indicia no nexusDecided for petitioner
“regarding secondary considerations, but found it to be unsupported by facts or data and determined that “his testimony has little probative value.” Final Dec. 30–31. Patent Owner complains that we improperly disregarded the testimony of its declarant here because “[t]here is no rule requiring documentary, rather than testimonial, evidence of how a system operates.” Req. Reh’g 5–6. We cited proper authority in the Final Decision for why we gave Mr. Ludwick’s testimony little probative value.2 Final Dec. 31 (citing In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) and Fed. R. Evid. 702); see also 37 C.F.R. § 42.65 (“testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight”).” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“Liebermann’s disclosure of “party call” compelling. Req. Reh’g 10–14. For example, Patent Owner argues that Petitioner never rebutted Patent Owner’s theory that Liebermann’s “party call” was centrally-switched, versus switched by the Liebermann device as alleged by Petitioner. Id. at 10–12. Patent Owner complains that we placed the burden of proof on it for this reason. Id. at 11. This is incorrect. We made clear in our Decision that Petitioner has the burden of proof. See, e.g., Final Dec. 1 (“we determine that Petitioner has shown, by a preponderance of the evidence . . . .”); id. at 32 (determining that “Petitioner has shown, by a preponderance of the evidence . . . that the subject matter of claim 1 . . . would have been obvious”). We considered Patent Owner’s argument regarding a centrally switched party call mechanism (see, e.g., Final Dec. 18) and found it unconvincing; this does not mean we placed any burden on Patent Owner. Further, we provided an explanation for why Patent Owner’s argument was unpersuasive—namely, that the disclosure of Liebermann provided factual support for Petitioner’s position but not Patent Owner’s. See Final Dec. 18.” slip op. at 7
- Expert testimonyPatent owner expert discountedDecided for petitioner
“regarding secondary considerations, but found it to be unsupported by facts or data and determined that “his testimony has little probative value.” Final Dec. 30–31. Patent Owner complains that we improperly disregarded the testimony of its declarant here because “[t]here is no rule requiring documentary, rather than testimonial, evidence of how a system operates.” Req. Reh’g 5–6. We cited proper authority in the Final Decision for why we gave Mr. Ludwick’s testimony little probative value.2 Final Dec. 31 (citing In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) and Fed. R. Evid. 702); see also 37 C.F.R. § 42.65 (“testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight”).” slip op. at 4
§ 103 obviousnessPatents in suitUS 6,603,835 - Captioncall, L.L.C. v. Ultratec, Inc.Rehearing grantedPTAB · Dec 1, 2015 · IPR2013-00542 · APJ Lynne E Pettigrew · IPR · Rehearing
Patent Owner’s rehearing request was granted to modify the rationale for combining McLaughlin and Ryan, denied in all other respects, and claims 1 and 2 remain 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 foundDecided for petitioner
“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. 1004, 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. 1009, 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 Pet. 26–27; Ex. 1018 ¶ 36; Ex. 1040 ¶ 62. As Mr. Occhiogrosso explains, combining the teachings of McLaughlin and Ryan 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. 1040 ¶ 55; see Reply 11. For these reasons, we are persuaded that a person of ordinary skill in the art would have combined the teachings of McLaughlin and Ryan, 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 55–57. 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 ’740 patent. Id. at 55 (citing Ex. 1009, 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. 1009, 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. 1018 ¶¶ 22, 36; Ex. 1040 3 “TDD” stands for “telecommunication device for the deaf.” Final Dec. 3. ¶ 56. 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
“disclosure in the ’740 patent of “voice pattern.” Id. at 8–11. We disagree that our reliance on the “Brief Summary of the Invention,” which refers to “a speech recognition computer program which has been trained to the voice pattern of the call assistant,” was improper. See Final Dec. 9 (quoting Ex. 1001, 2:45-47 (emphasis added)). Rather, in our Final Decision, we determined that the ’740 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. 9–10 (quoting Ex. 1001, 2:45– 47, 6:34–37). Based on the evidence in the written description (including the disclosure of “voice pattern”), we determined that the ’740 patent did not indicate expressly how training occurs. Id. at 10. 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 7
Claim construction§ 103 obviousnesscites KSRPatents in suitUS 7,319,740
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.