- Micron Technology, Inc. v. Innovative Memory Systems, Inc.Some claims unpatentablePTAB · Apr 1, 2020 · IPR2016-00330 · APJ Kevin W Cherry · IPR · Remand
On remand, claims 21, 22, 27, 32, 33, and 38 remain unpatentable; claims 1, 2, 5, 6, 11, 12, 15, 23, 43, 44, 47, and 48 were not shown unpatentable because Tanaka lacks the required …
RulingsRemand decision- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Thus, the zones contain blocks that are already assigned for address translation. As discussed above, the properly construed remaining language in the claim then requires a controller that can adjust boundaries between zones of assigned blocks “such that blocks from one logical zone are shifted to another logical zone.” Id. Given this analysis and the Federal Circuit’s construction, we agree with Patent Owner that “adjusting blocks that are not yet assigned to logical zones to replace defective blocks that are already assigned to logical zones is not enough to satisfy the claim limitations.” PO Br. 2. Indeed, Federal Circuit noted that our original analysis found that “Tanaka discloses taking” slip op. at 13
- ExcludeMotion to exclude, deniedDenied
“A motion to exclude must explain why the evidence is not admissible (e.g., relevance or hearsay), but may not be used to challenge the sufficiency of the evidence to prove a particular fact. Office Patent Trial Practice Guide, 77 Fed. Reg. 48,765, 48,767 (Aug. 14, 2012). While a motion to exclude may raise issues related to admissibility of evidence, it is not an opportunity to file a sur-reply, and also is not a mechanism to argue that a reply contains new arguments or relies on evidence necessary to make out a prima facie case. Liberty Mut. Ins. Co. v. Progressive Cas. Ins. Co., CBM2013–00004, Paper 53, at 62 (PTAB Mar. 13, 2014) (Final Written Decision). Patent Owner’s Motion to Exclude contains such improper arguments, and is in the nature of a sur-reply. Moreover, for the reasons discussed above (see supra Section II.B.2), we find Petitioner’s arguments involving “spare” blocks unpersuasive. For these reasons, Patent Owner’s Motion to Exclude Paragraph 24 of Dr. Subramanian’s Reply Declaration as presenting new arguments is denied.” slip op. at 21
Patent outcomesUS 6,901,498 mixed§ 103 obviousnessPatents in suitUS 6,901,498 - Apple Inc. / Fitbit, Inc. v. Valencell, Inc.Some claims unpatentablePTAB · Aug 6, 2018 · IPR2017-00319 · APJ James B Arpin · IPR · Final written decision
Claims 1–2 and 6–13 are unpatentable as obvious; claims 3–5 were not shown unpatentable over the asserted grounds.
RulingsFinal written decision- BurdenFwd mixedMixed
“demonstrated by a preponderance of the evidence that claims 1, 2, and 6–13 of the ’941 patent are unpatentable based on the challenges asserted in the Petition, but that Petitioner fails demonstrated by a preponderance of the evidence that claims 3–5 of the ’941 patent are unpatentable based on the challenges asserted in the Petition. In particular, we determine that:” slip op. at 77
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther
“1. “physiological information” (Claims 1–13) Petitioner argues that the Specification of the ’941 patent provides an” slip op. at 10
- ExcludeOther
“Although Patent Owner filed objections to evidence submitted with the Petition (Paper 14) and Petitioner filed objections to evidence submitted with Patent Owner’s Preliminary Response (Paper 12) and to evidence submitted with the Patent Owner Response (Paper 23), neither party filed a Motion to Exclude. Consequently, these objections are deemed waived. 37 C.F.R. § 42.64(c) (“A motion to exclude evidence must be filed to preserve any objection.”). Petitioner also filed a list of alleged” slip op. at 3
- PTAB / AIA Trials › Constitutional / APA (Arthrex, Oil States, due process)Decided for petitioner
“IV. PROCEDURAL ISSUES Patent Owner objects to the use of inter partes reviews as unconstitutional based, at least, upon the reasons presented in the petition for certiorari that was granted in Oil States Energy Services, LLC v. Greene’s Energy Group, LLC. PO Resp. 38; see Reply 21. On April 24, 2018, the U.S. Supreme Court upheld the constitutionality of inter partes review; thus, Patent Owner’s arguments are moot. Oil States Energy Servcs. LLC v. Greene’s Energy Grp., LLC, 138 S.Ct. 1365, 1370 (2018).” slip op. at 78
Patent outcomesUS 8,923,941 mixedClaim constructioncites KSR · GrahamPatents in suitUS 8,923,941 - Qualcomm Incorporated v. Bandspeed, Inc.Some claims unpatentablePTAB · Aug 23, 2017 · IPR2016-00623 · APJ James B Arpin · IPR · Final written decision
Claims 1–5, 8–12, 14–20, 23–27, and 29–31 are unpatentable under the asserted § 103 grounds; claims 13 and 28 were not shown unpatentable.
RulingsFinal written decision- Expert testimonyOther
“of a “clear” channel is “a channel that is not already in use by a non-frequency hopping communications system” and that the broadest reasonable interpretation of an “occupied” channel is “a channel that already is in use by a non-frequency hopping communications system.”” slip op. at 21
- Skill levelSkill level petitioner adoptedOther
“would have a B.S. degree in Electrical and/or Computer Engineering, or an equivalent field, as well as at least 3-5 years of academic or industry experience in the wireless communications field.” E.g., 620 Pet. 11 (citing 620 Ex. 1002 ¶¶ 10–13); see 620 Ex. 1002 ¶ 14. Patent Owner and Patent Owner’s declarant, Dr. Melendez,7 adopt this assessment for purposes of this proceeding. PO Resp. 5–6; Ex. 2001 ¶ 29. We note that both Petitioner’s declarant and Patent Owner’s declarant exceed this assessment (Ex. 1002 ¶¶ 3–8; Ex. 2001 ¶¶ 10–16) and are competent to testify regarding the lower assessment of a person of ordinary skill in the art, and, for purposes of this Final Written Decision and to the extent necessary, we adopt this assessment of a person of ordinary skill in the relevant art. slip op. at 14
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“Id. Thus, Petitioner argues that, because multiple tests must be applied to determine the continued presence of interference regardless of the source, limiting “occupied” to NFH communications systems is overly narrow. Nevertheless, the words chosen by the patentee to describe its invention have significance. In re Morris, 127 F.3d 1048, 1056 (Fed. Cir. 1997) (“It is the applicants’ burden to precisely define the invention, not the PTO’s.”). As noted above, “occupied” is only used in the Specification with respect to NFH communications systems, and neither claims 4 and 19 nor their base claims nor the intervening claims specify a single or multiple tests. Therefore, we find Petitioner’s arguments, which attempt to incorporate the teachings of “bad” and “good” channels from elsewhere in the Specification into the interpretation of these claim limitations, unpersuasive. See Intervet America, Inc. v. Kee-Vet Laboratories, Inc., 887 F.2d 1050, 1053 (Fed. Cir. 1989) (“[I]nterpreting what is meant by a word in a claim ‘is not to be confused with adding an extraneous limitation appearing in the specification, which is improper.’”); In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993).” slip op. at 17
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“4. Other Claim Terms For purposes of this Decision, we discern no other claim terms that require express interpretation. Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (explaining that “claim terms need only be construed ‘to the extent necessary to resolve the controversy’” (quoting to allow us to construe the terms “occupied” and “clear,” we relied less on Dr. Ding’s testimony regarding how a person of ordinary skill in the art would understand these terms. See Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005) (en banc) (“[T]he specification ‘is always highly relevant to the claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of a disputed term.’”). Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)); see PO Resp. 7.” slip op. at 21
Patent outcomesUS 8,873,500 mixedClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,873,500 - Qualcomm IncorporatedSome claims unpatentablePTAB · Aug 23, 2017 · IPR2016-00620 · APJ James B Arpin · IPR · Final written decision
Claims 1–5, 8–12, 14–20, 23–27, and 29–31 are unpatentable under the asserted § 103 grounds; claims 13 and 28 were not shown unpatentable.
RulingsFinal written decision- Skill levelSkill level board ownDecided for petitioner
“F. Assessment of Person of Ordinary Skill in the Art Petitioner argues that a person of ordinary skill in the relevant art “would have a B.S. degree in Electrical and/or Computer Engineering, or an equivalent field, as well as at least 3-5 years of academic or industry experience in the wireless communications field.” E.g., 620 Pet. 11 (citing 620 Ex. 1002 ¶¶ 10–13); see 620 Ex. 1002 ¶ 14. Patent Owner and Patent Owner’s declarant, Dr. Melendez,7 adopt this assessment for purposes of this proceeding. PO Resp. 5–6; Ex. 2001 ¶ 29. We note that both Petitioner’s declarant and Patent Owner’s declarant exceed this assessment (Ex. 1002 ¶¶ 3–8; Ex. 2001 ¶¶ 10–16) and are competent to testify regarding the lower assessment of a person of ordinary skill in the art, and, for purposes of this Final Written Decision and to the extent necessary, we adopt this assessment of a person of ordinary skill in the relevant art.” slip op. at 14
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“1. “hopping sequence” (Claims 1, 14, 16, and 29 and others) In the institution decisions, we determined that, in light of the Specification of the ’500 patent, the broadest reasonable interpretation of the phrase “hopping sequence” is “the order in which the communications network hops among the set of frequencies.” E.g., 620 Dec. on Inst. 10–11 (citing 620 Pet. 11–12). Patent Owner does not contest this construction. PO Resp. 6–7. For the reasons set forth in the Decision on Institution in Case IPR2016-00620, we remain persuaded that Petitioner’s proposed construction is the broadest reasonable interpretation of the phrase “hopping sequence.”” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“Petitioner also provides a persuasive rationale for combining the teachings of Dabak and Kockmann. Id. at 39–40. Petitioner asserts that they are both references directed to the same problem, namely, “to communication performance improvements through adapted frequency hopping to avoid channels disturbed by interference.” Id. at 40 (citing Dabak, Abstract; Kockmann, 2:49–3:20; 620 Ex. 1002 ¶ 113). In addition, according to Petitioner, a person of ordinary skill in the art would have had reason to modify the teachings of Dabak regarding the MSD technique in view of the teachings of Kockmann “to utilize multiple channels to communicate with the slave device over the subset of communication channels according to an adapted hopping sequence” in order to accomplish the shared goals of these references. Id. at 40 (citing 620 Ex. 1002 ¶ 113); see In re Ethicon, Inc., 844 F.3d 1344, 1351 (Fed. Cir. 2017) (“The normal desire of artisans to improve upon what is already generally known can provide the motivation to optimize variables such as the percentage of a known polymer for use in a known device.”). According to Petitioner, the combination of these teachings “is a simple use of known teachings to yield predictable results.” Id. (citing KSR, 550 U.S. at 416 (“The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.”)). Based on our review of Petitioner’s arguments and evidence, we find that Petitioner demonstrates that combined teachings of Dabak and Kockmann teach or suggest all of the limitations of independent claims 1 and 16 and find that a person of ordinary skill in the art would have had reason to combine the teachings of Dabak and Kockmann to achieve the methods of claim 1 and the devices of claim 16. See 620 Pet. 17–20, 33–35, 38–40, 48–49. We conclude that Petitioner has shown by a preponderance of the evidence that independent claim 1 would have been obvious over the combined teachings of Dabak and Kockmann. Moreover, because Petitioner’s arguments for the obviousness of independent claim 16 over Dabak and Kockmann rely on the arguments and evidence presented with respect to independent claim 1, we also conclude that Petitioner has shown by a preponderance of the evidence that independent claim 16 would have been obvious over the combined teachings of Dabak and Kockmann, as well as on its related challenges to dependent claims 2, 3, 5, 8, 9, 12, 14, 15, 17, 18, 20, 23, 24, 27, and 29–31. See 620 Pet. 25–26, 40 (claim 2; citing Dabak, 7:57–60, 8:1–2, Fig. 1; 620 Ex. 1002 ¶ 51, 52), 26–27, 40 (claim 3; citing Dabak, 2:39–40, 3:1–5, 3:50–54, 3:60–62; 620 Ex. 1002 ¶¶ 54, 55), 27–28, 42 (claim 5; citing Dabak, 7:57–67; 620 Ex. 1002 ¶ 57), 28, 44 (claim 8; citing Dabak, 2:58–59; 620 Ex. 1002 ¶ 59), 44–47 (claim 9; citing Kockmann, 7:44–47, 8:39–48; 620 Ex. 1002 ¶¶ 136, 137), 31, 47 (claim 12; citing Dabak, Fig. 3B; 620 Ex. 1002 ¶ 65), 31–32, 47 (claim 14; citing 620 Ex. 1002 ¶¶ 69–75, 152), 32–33, 48 (claim 15; citing Dabak, 3:1–5, 7:57–” slip op. at 31
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“Patent Owner contends, however, that the combined teachings of Dabak and Kockmann fail to teach or suggest all of the limitations of claim 4. In particular, Patent Owner contends that, “[a]s described in Kockmann, ‘disturbed’ does not in fact mean ‘occupied,’ but rather it only means that ‘[a] disturbed carrier frequency is thus a carrier frequency onto which a signal is modulated that exceeds a specific threshold.’” PO Resp. 14 (citing Kockmann, 6:43–49). Patent Owner contends that determining whether a channel is “occupied” “requires analysis beyond the measurements called for by Kockmann (i.e.[,] determining more than just the mere presence of a modulated signal ‘that exceeds a specific threshold,’ but rather whether its source was FH or NFH).” Id. at 15; see 620 Ex. 2001 ¶¶ 33–37. Initially, Petitioner again states that Kockmann discloses that “[d]isturbance thereby means that either a disturbance in the actual sense or an occupancy by some other transmitter is present.” Kockmann, 6:41–43 (emphasis added). Patent Owner contends, however, “that a channel ‘occupied’ by an NFH system and a channel ‘disturbed’ by another transmitter are somehow different because an occupancy determination requires additional ‘analysis.’” Reply 10. Nevertheless, we agree with Petitioner that Patent Owner does not show where the claims recite one type of analysis or prohibit another. Id. Thus, we find that the combined teachings of Dabak and Kockmann teach or suggest all of the limitations of claim 4. Petitioner’s arguments with respect to claim 4 apply equally to claim 19. Based on our review of the arguments and evidence, we conclude that Petitioner has established by a preponderance of the evidence that claims 4 and 19 would have been obvious over the combined teachings of Dabak and Kockmann.” slip op. at 34
Patent outcomesUS 8,873,500 mixedClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,873,500 - Alarm.Com Inc. v. Vivint, Inc.Some claims unpatentablePTAB · May 10, 2017 · IPR2016-00161 · APJ Charles J Boudreau · IPR · Final written decision
Claims 9, 10, 14, and 27 are unpatentable as obvious; claims 17, 18, 22, 25, 26, and 28 were not shown unpatentable because the cited combination did not teach the claimed normal status message.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedOther
“patent “would have had at least a bachelor’s degree in computer science, electrical engineering, or computer engineering (or equivalent experience) and at least two years of experience in supervisory and control systems.” Pet. 8. Alarm.com’s declarant, Mr. Zatarain, assumes this skill level assessment in his declaration and opines that he was a person of ordinary skill, under this assessment, at the time of the invention. Ex. 1107 ¶ 11. Vivint does not dispute Alarm.com’s assessment in its Response, but we note that Vivint’s declarant, Mr. Denning, opines that a person of ordinary skill in the art of the ’654 patent would have had “at least a bachelor’s degree in electrical engineering or computer science and at least four years of experience in remote monitoring and control systems,” with the possibility of less experience being compensated for by more education. Ex. 2010 ¶ 15. We do not discern a material difference between the assessments advanced by the declarants, nor does either party premise its arguments exclusively on its assessment of the level of skill in the art. Moreover, each party’s declarant appears to meet or exceed both parties’ assessments (see Ex. 1107 ¶¶ 2–4, Attachment A; Ex. 2011), and either assessment of the level of skill in the art is consistent with the ’654 patent and the asserted prior art. We adopt Mr. Zatarain’s assessment and apply it to our obviousness evaluation below, but note that our conclusions would be the same under Mr. Denning’s assessment.” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“skill in the art would have had sufficient reason to combine the teachings of Levac with Shetty and Garton, we note that the Supreme Court has held that an obviousness evaluation “cannot be confined by a formalistic conception of the words teaching, suggestion, and motivation, or by overemphasis on the importance of published articles and the explicit content of issued patents.” KSR, 550 U.S. at 419. Instead, the relevant inquiry is whether Alarm.com has set forth “some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), cited with approval in KSR, 550 U.S. at 418. When describing examples of what may constitute a sufficient rationale to combine, the Supreme Court elaborated that, “if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.” KSR, 550 U.S. at 417. After considering the record in its entirety, we are persuaded that Alarm.com’s rationale for combining the teachings of Shetty, Levac, and Garton suffices as articulated reasoning with rational underpinnings to support the legal conclusion of obviousness. When, as here, a technique has been used to improve one device (i.e., Levac’s messaging system creates an .msa file that may incorporate a particular message and a list of destination parameters, such as a recipient site location, required for transmitting a message to a particular destination), and one of ordinary skill in the art would have recognized that it would improve similar devices in the same way (i.e., using the aforementioned disclosure in Levac to improve Shetty’s system), using the technique is obvious unless its actual application is beyond the skill level of an ordinarily skilled artisan. See KSR, 550 U.S. at 417; Pet. 31–33; Ex. 1107 ¶¶ 125–128; see also In re Ethicon, Inc., 844 F.3d 1344, 1351 (Fed. Cir. 2017) (Our reviewing court has recognized “[t]he normal desire of artisans to improve upon what is already generally known.”). Apart from generally asserting that neither Alarm.com nor Mr. Zatarain provides the “what,” “how,” and “why” for the asserted combination of Shetty and Levac (see PO Resp. 51–52), Vivint does not present credible evidence that combining the teachings of these references in the manner proposed by Alarm.com would have been uniquely challenging or otherwise beyond the skill level of an ordinarily skilled artisan.” slip op. at 49
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation foundDecided for petitioner
“Mintz to support its argument that Alarm.com must look to the problem solved by the ’654 patent in its obviousness evaluation, we do not agree. In KSR, the Supreme Court made clear that it is error to “hold[] that courts and [petitioners] should look only to the problem the patentee was trying to solve.” KSR, 550 U.S. at 420. The Supreme Court explained that [t]he question is not whether the combination was obvious to the patentee but whether the combination was obvious to a person with ordinary skill in the art. Under the correct analysis, any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed. Id. Here, as we explain above, Alarm.com provides sufficient reasoning as to why one of ordinary skill in the art would have understood that Shetty allows a user to remotely access user profile database 106 via user interface 110 to configure profiles stored therein. See Pet. 21–23; Pet. Reply 14–16. Alarm.com’s reasoning in this regard is directed specifically to the subject matter at issue in independent claims 9 and 27, and Alarm.com provides sufficient evidence in the record to support its reasoning. As a result, instead of presenting reasoning that is based on impermissible hindsight reconstruction, as asserted by Vivint, Alarm.com has articulated sufficient reasoning as to why one of ordinary skill in the art would have had reason to extend Shetty’s teaching of user access to user profile database 106 via user interface 110 to provide for remote configuration of the profiles stored therein.” slip op. at 42
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“Alarm.com’s explanations and supporting evidence as to how the combination of Shetty and Garton teaches or suggests the remaining limitations recited in independent claims 9 and 27, nor does Vivint address the reasons provided by Alarm.com as to how or why a person of ordinary skill in the art would have combined the teachings of Shetty and Garton. See generally PO Resp. 14–42. We have reviewed Alarm.com’s explanations and supporting evidence in this regard, and we are persuaded that the combination of Shetty and Garton teaches or suggests each such limitation (see Pet. 17–23, 29–31, 33–37, 40–41, and evidence cited therein), as well as that Alarm.com’s rationale for combining the teachings of Shetty and Garton suffices as articulated reasoning with rational underpinnings to support the legal conclusion of obviousness (id. at 31–33; Ex. 1007 ¶ 128). (4) Conclusion We conclude that Alarm.com has demonstrated by a preponderance of the evidence that the subject matter of independent claims 9 and 27 would have been obvious over the combined teachings of Shetty.” slip op. at 45
Patent outcomesUS 6,462,654 mixedClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,462,654 - Alarm.Com Inc. v. Vivint, Inc.Some claims unpatentablePTAB · May 2, 2017 · IPR2016-00173 · APJ Michael R Zecher · IPR · Final written decision
Claims 1, 2, 4–6, 10, 13, and 15–17 were held unpatentable under § 103; the remaining challenged claims were not shown unpatentable.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“the knowledge level of a person of ordinary skill in the art. Alarm.com’s declarant, Mr. Zatarain, testifies that a person of ordinary skill in the art as of January 1999 would be an individual who possesses (1) at least a bachelor’s degree in computer science, electrical engineering, computer engineering, or equivalent coursework; and (2) at least two years of experience in remote monitoring and control systems. Ex. 1106 ¶ 11; Pet. 7 (stating the same). Vivint’s declarant, Mr. Denning, testifies that a person of ordinary skill in the art as of January 1999 would be an individual who possesses (1) at least a bachelor’s degree in electrical engineering or computer science; and (2) at least four years of experience in remote monitoring and control systems. Ex. 2010 ¶ 15. We do not discern a material difference between the assessments advanced by the declarants, nor does either party premise its arguments exclusively on its assessment of the level of skill in the art. Moreover, each party’s declarant appears to meet or exceed both parties’ assessments (see Ex. 1106 ¶¶ 2–4, Attachment A; Ex. 2011), and either assessment of the level of skill in the art is consistent with the ’123 patent and the asserted prior art. We, therefore, adopt Mr. Zatarain’s assessment and apply it to our obviousness evaluation below, but note that our conclusions would be the same under Mr. Denning’s assessment.” slip op. at 22
- Expert testimonyPatent owner expert creditedDecided for patent owner
“In our claim construction section above, we construe the claim term “communication device identification codes” as including either a device ID or serial number of a device. See supra Section II.A.2. Shetty’s telephone numbers and email addresses are not consistent with this construction because they do not identify uniquely a specific device. See Ex. 1103, 2:18– 21, 3:18–20. We also credit Vivint’s declarant, Mr. Denning’s, testimony on this particular issue. See Ex. 2010 ¶¶ 127–130. In particular, Mr. Denning testifies that “[Shetty’s] system can dial a particular phone number, and it will reach whatever device is tied to that phone number at the moment. It is not device-specific.” Id. ¶ 129 (emphasis added). He also testifies that, “[s]imilarly, [Shetty’s] system could send an email, and the recipient would be able to retrieve that email from nearly any Internet-accessible computer device. Again, this is not device-specific.” Id. ¶ 130 (emphasis added). We, therefore, agree with both Vivint and Mr. Denning that Shetty does not teach or suggest the claimed “communication device identification codes.” See PO Resp. 36–37; Ex. 2010 ¶¶ 127–130.” slip op. at 48
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“patent, we discern no reason to modify the construction of the claim phrase “message profile containing outgoing message routing instructions” set forth in the Decision on Institution. As we explained in that Decision, we interpret the statement in the ’123 patent that “a list of who to contact via what means depending on which fault has occurred may be referred to as a ‘message profile’” (Ex. 1101, 2:34–36 (emphasis added)), at most, reflects that “a list of who to contact via what means depending on which fault has occurred” could be an example of a message profile, and does not necessarily require “a list of who to contact.” Dec. on Inst. 10. Although we acknowledge Vivint’s interpretation of the phrase “may be referred to as a ‘message profile’” as indicating that “message profile” simply is one of “many” names that could be given to “a list of who to contact via what means depending on which fault has occurred” (see PO Resp. 3, 31), we do not agree with Vivint that its proposed construction of “message profile” represents the broadest reasonable interpretation in light of the Specification of the ’123 patent. As we pointed out in the Decision on Institution, the ’123 patent includes embodiments, in which, for example, multiple messages are sent to multiple recipients via differing media for the same exception condition (Ex. 1101, 4:8–11), or the same person is contacted by different means (e.g., fax or personal communication service) at different times (id. at 6:17–18). Dec. on Inst. 10–11. Vivint’s proposed construction, requiring the message profile to specify “which communication device associated with which individuals” (PO Resp. 31), would exclude such embodiments. In view of the full record developed during trial, we remain unpersuaded by Vivint’s argument that the statement in the specification of the ’123 patent that “a list of who to contact via what means depending on which fault has occurred may be referred to as a ‘message profile’” (Ex. 1101, 2:34–36) provides the requisite “clarity, deliberateness, and precision” to indicate that the patentees intended to act as their own lexicographer and disclaim the embodiments identified above. See Dec. on Inst. 10–11; In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004) (“We have cautioned against reading limitations into a claim from the preferred embodiment described in the specification, even if it is the only embodiment described, absent clear disclaimer in the specification.”); Paulsen, 30 F.3d at 1480 (an inventor may define specific terms used to describe invention, but must do so “with reasonable clarity, deliberateness, and precision” and, if done, must “‘set out his uncommon definition in some manner within the patent disclosure’ so as to give one of ordinary skill in the art notice of the change” in meaning). Accordingly, we again conclude that the broadest reasonable interpretation of “message profile containing outgoing message routing instructions” is a “data record including instructions specifying at least one communication device to which an outgoing message can be routed in response to an incoming exception message.” This construction is consistent with the ordinary and customary meaning of this claim phrase, as would be understood by one with ordinary skill in the art, in light of the claims and specification of the ’123 patent. See Ex. 1101, 2:34–36, 4:8–11, 6:17–18.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentableUnpatentable
“Shetty and Levac, we note that the Supreme Court has held that an obviousness evaluation “cannot be confined by a formalistic conception of the words teaching, suggestion, and motivation, or by overemphasis on the importance of published articles and the explicit content of issued patents.” KSR, 550 U.S. at 419. Instead, the relevant inquiry is whether Alarm.com has set forth “some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), cited with approval in KSR, 550 U.S. at 418. When describing examples of what may constitute a sufficient rationale to combine, the Supreme Court elaborated that, “if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.” KSR, 550 U.S. at 417. When considering the record in its entirety, Alarm.com’s rationale for combining the teachings of Shetty and Levac suffices as articulated reasoning with rational underpinnings to support the legal conclusion of obviousness. When, as here, a technique has been used to improve one device (i.e., Levac’s messaging system creates an .msa file that may incorporate a particular message and a list of destination parameters, such as a recipient site location, required for transmitting a message to a particular destination), and one of ordinary skill in the art would have recognized that it would improve similar devices in the same way (i.e., using the aforementioned disclosure in Levac to improve Shetty’s system), using the technique is obvious unless its actual application is beyond the skill level of an ordinarily skilled artisan. See KSR, 550 U.S. at 417; Pet. 27–28; Ex. 1106 ¶¶ 96–98; see also In re Ethicon, Inc., 844 F.3d 1344, 1351 (Fed. Cir. 2017) (The Federal Circuit previously has recognized “[t]he normal desire of artisans to improve upon what is already generally known.”). Apart from generally asserting that neither Alarm.com nor Mr. Zatarain provide the “what,” “how,” and “why” for the asserted combination of Shetty and Levac (see PO Resp. 38–40), Vivint does not present credible evidence that combining the teachings of these references in the manner proposed by Alarm.com would have been uniquely challenging or otherwise beyond the skill level of an ordinarily skilled artisan. Based on the record developed during trial, we conclude that Alarm.com has demonstrated by a preponderance of the evidence that the subject matter of dependent claims 5 and 16 would have been obvious over Shetty and Levac.” slip op. at 53
Patent outcomesUS 6,535,123 mixedClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,535,123 - Amazon.Com, Inc. / Blizzard Entertainment, Inc. v. Ac Technologies S.A.Some claims unpatentablePTAB · Mar 6, 2017 · IPR2015-01802 · APJ Matthew R Clements · IPR · Final written decision
Claims 1, 3, 5, and 7–15 are unpatentable as anticipated by Rabinovich; Petitioner did not prove claims 1–15 obvious over Rabinovich.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedPetitioner expert creditedDecided for petitioner
“Electrical Engineering, and two to three years of experience working in the field, or an equivalent level of experience.” Ex. 1005 ¶ 17; Pet. 16. Patent Owner does not challenge this definition or present its own. Accordingly, we credit the testimony of Dr. Ratner regarding the level of ordinary skill in the art, and find that a person of ordinary skill in the art would have had an undergraduate degree in Computer Science or a related field, such as Electrical Engineering, and two to three years of experience working in the field, or an equivalent level of experience. This level of ordinary skill is reflected not only by the information presented by the parties, but also by the prior art of record. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art itself can reflect the appropriate level of ordinary skill in the art).” slip op. at 9
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“We agree with and adopt Petitioner’s reasoning and determine Rabinovich to be a printed publication. We credit the unrebutted testimony of Dr. Rabinovich regarding the consistency of his professional practice in 1998 for republication of his AT&T technical memoranda on a webpage that he managed on AT&T’s publicly accessible website. Furthermore, we find the December 1998 IEEE article corroborates the public availability of Rabinovich on that website, and would have been a roadmap, for one of ordinary skill in the art of data management and optimized access to data, to be guided to Rabinovich. See Reply 19–22. As Petitioner points out, Patent Owner’s own declarant states that Rabinovich and the December 1988 IEEE article “are ‘similar[]’ in that they both address ‘problems in network connectivity caused by multiple clients accessing servers.’ (Ex. 2006 at 12).” Id. at 21. Additionally, the passage in the December 1998 IEEE article that cites to Rabinovich refers to an algorithm in Rabinovich for optimizing access to data in order to increase performance. Id. Accordingly, we find that footnote 16 of the IEEE article, which contains the URL to Rabinovich, would have guided one of ordinary skill directly to Rabinovich. We are, therefore, persuaded, that Rabinovich is a printed publication under 35 U.S.C. § 102.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable
“object xs. Rabinovich defines cnt(s,xs) as the “total access count for xs,” which is equal to cnt(xs). Ex. 1006, 11. According to Dr. Ratner, “[t]he metric cnt(s,xs) measures the total number of times in that window that replica xs has been served to a client computer.” Ex. 1005 ¶ 253. As Patent Owner points out, Rabinovich teaches replicating object xs if the ratio of cnt(s,xs) over aff(xs) is greater than m, i.e., a non-zero value. PO Resp. 34; Ex. 1006, 12, Fig. 4. In view of this, we agree with Patent Owner that if cnt(s,xs) has a value of zero, meaning that object x has not been served to any client computer, then the ratio of cnt(s,xs) to aff(xs) will be zero, i.e., less than m, and Rabinovich will not carry out its replication step. This means that Rabinovich will not replicate object xs until xs has been accessed by a client computer at least once, such that the access count for xs is greater than zero. In this regard, we agree with Patent Owner that Rabinovich object xs is not “sen[t], from the at least one data storage device to the another data storage device . . . independently of an access of the at least one client computer” because Rabinovich teaches explicitly that object xs is not sent unless there has been at least one access from the client computer. We are not persuaded by Petitioner’s argument that Rabinovich” slip op. at 18
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“pieces” Claim 1 recites “each file including a plurality of individual pieces, the pieces containing parts of the files.” Ex. 1002, 25:67–26:1. The other independent claims recite limitations commensurate in scope. Neither party proposes explicitly a construction of the term “piece.” Petitioner argues that “files are inherently composed of pieces in the form of bits that make up bytes, the bytes themselves being pieces of the file.” Pet. 32. Patent Owner argues that construing “piece” to cover “bits and bytes” of a file “would read out the ‘pieces’ limitation from the claim entirely” (PO Resp. at 29–30) and that “one of ordinary skill in the art would not read the ‘pieces’ limitation of the claim to include bits and bytes” (id. at 30). The claims themselves define “piece” by requiring that a “file” have a “plurality of individual pieces,” but do not establish a lower bound—i.e., a minimum number of bits or bytes—to qualify as a “piece.” Patent Owner identifies no support in the ’680 patent for its contention that “piece” or “pieces” excludes a byte or bytes of a file, relying instead solely on the testimony of Dr. Paul S. Jacobs. Id. (citing Ex. 2006 ¶¶ 38, 39). We are not persuaded by Dr. Jacobs’s conclusory testimony. Because “piece” and “pieces” are limited by the claims only to being a subset of a file and because a byte or collection of bytes of a file is a subset of that file, we are persuaded that the broadest reasonable interpretation of “piece” and “pieces” in light of the Specification of the ’680 patent encompasses a byte or bytes. slip op. at 7
Patent outcomesUS 7,904,680 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,904,680 - Sandisk Corp. v. Netlist, Inc.Some claims unpatentablePTAB · Sep 28, 2016 · IPR2015-01020 · APJ Peter P Chen · IPR · Final written decision
Claims 17, 22, 24, 26, and 33 are unpatentable as obvious over Takeda, JEDEC, and Connolly; claims 15, 16, 31, and 32 were not shown unpatentable over Takeda and JEDEC.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“We are unpersuaded by Patent Owner’s position. First, the claim language does not recite any physical or structural connection, rather, only “electrically coupling.” Pet. Reply 3, 8–9. In addition, the specification of the ’150 patent does not define explicitly the term “selectively electrically coupling.” Therefore, as in IPR2014-00882 and IPR2014-01011, we refer to its ordinary and customary meaning, as would be understood by one of ordinary skill in the art in the context of the entire disclosure. Translogic Tech., 504 F.3d at 1257. A technical dictionary, the IEEE Dictionary,4 defines “electrical coupling” as “[e]lectrical charges in conductors of a disturbed circuit formed by electrical induction.” Ex. 3001. The IEEE Dictionary explains that “[s]ince the ratio of a conductor’s electrostatic charge to the potential difference between conductors (required to maintain that charge) is the general definition of capacitance, electrical coupling is also called capacitive coupling.” Id. The IEEE Dictionary defines” slip op. at 9
- Skill levelSkill level board ownOther
“Based on our review of the ’150 patent and the types of problems and solutions described in the ’150 patent and cited prior art, we conclude a person of ordinary skill in the art at the time of the ’150 patent would have a Bachelor’s degree in electrical engineering, computer engineering, computer science, or related field, and at least one year of work experience, including familiarity with computer memory systems and related industry standards such as JEDEC standards for DRAM memories and memory modules. We further note that the applied prior art reflects the appropriate level of skill at the time of the claimed invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). D. Declarant Testimony” slip op. at 13
- Expert testimonyPetitioner expert creditedDecided for petitioner
“To testify as an expert under Federal Rule of Evidence 702, a person need not be a person of ordinary skill in the art, but rather must be “qualified in the pertinent art.” Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1363–64 (Fed. Cir. 2008); see SEB S.A. v. Montgomery Ward & Co., 594 F.3d 1360, 1372–73 (Fed. Cir. 2010) (upholding a district court’s ruling to allow an expert to provide testimony at trial because the expert “had sufficient relevant technical expertise” and the expert’s “knowledge, skill, experience, training [and] education . . . [wa]s likely to assist the trier of fact to understand the evidence”); Mytee Prods., Inc. v. Harris Research, Inc., 439 F. App’x 882, 886–87 (Fed. Cir. 2011) (non-precedential) (upholding admission of the testimony of an expert who “had experience relevant to the field of the invention,” despite admission that he was not a person of ordinary skill in the art). As noted above, Dr. Jagannathan has designed and implemented hardware virtual memory caches, and researched theoretical performance measures of various cache coherency protocols, and has experience in the design of memory systems. We find that, although Dr. Jagannathan may be less experienced than Dr. Sechen in the area of memory module design, he is nonetheless qualified sufficiently to testify about memory systems and memory modules. E. Asserted Obviousness of Claims 15, 16, 31, and 32 in view of Takeda” slip op. at 14
- ExcludeMotion to exclude, deniedDenied
“We have reviewed the parties’ contentions on this issue, and exercise our discretion to determine that Petitioner’s Reply and the Jagannathan Supplemental Declaration will not be excluded. We find that, although they may be “inartfully” drafted, the first Jagannathan declaration and Petition sufficiently outlined Petitioner’s position on the function of the chip select signal, namely, that the chip select signal was not itself the logic signal enabling operation of bit-switches. We further find that Petitioner’s Reply and the Supplemental Jagannathan Declaration did not present an entirely new rationale of unpatentability based on Takeda, JEDEC, and Connolly. Cf. Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369–70 (Fed. Cir. 2016) (affirming Board’s exclusion of reply brief and declaration that changed unpatentability theory to “an entirely new rationale”). Moreover, there is no dispute that Patent Owner was aware of Petitioner’s position by no later than the Jagannathan deposition, which preceded Patent Owner’s Response by ten days. Patent Owner could have addressed Petitioner’s chip select signal contention, procedurally or substantively, in its Response, but chose to raise the issue only after Petitioner filed its Reply and Supplemental Jagannathan Declaration. Accordingly, Patent Owner had notice of Petitioner’s position and an opportunity to refute that position in its Response.” slip op. at 24
Patent outcomesUS 7,881,150 mixedClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,881,150 - LG Electronics, Inc. v. Ati Technologies UlcSome claims unpatentablePTAB · Jun 28, 2016 · IPR2015-00326 · APJ Brian J Mcnamara · IPR · Final written decision
Claims 1–3, 5, 6, 8–11, 13, 15, 17, and 18 are unpatentable; claim 20 was not shown unpatentable because the cited combinations did not establish its concurrent vertex and pixel calculation limitation.
RulingsFinal written decision- Skill levelSkill level board ownDecided for petitioner
“the claimed subject matter and the prior art are “such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” We resolve the question of obviousness on the basis of underlying factual determinations, including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of skill in the art;2 and (4) objective evidence of nonobviousness, i.e., secondary considerations. See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). In an obviousness analysis, some reason must be shown as to why a person of ordinary skill would have combined or modified the prior art to achieve the patented invention. See Innogenetics, N.V. v. Abbott Labs., 512 F.3d 1363, 1374 (Fed. Cir. 2008). A reason to combine or modify the prior art may be found explicitly or implicitly in market forces; design incentives; the “interrelated teachings of multiple patents”; “any need or problem known in the field of endeavor at the time of invention and addressed by the patent”; and the background knowledge, creativity, and common sense of the person of ordinary skill. Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 2 Petitioner and Patent Owner rely on substantially similar assessments of the level of ordinary skill in the relevant art. Ex. 1003 ¶ 41; Ex. 2003 ¶ 30. Although the parties are critical of the experience level of each other’s expert witness (PO Resp. 49, Reply 25), each of Petitioner’s and Patent Owner’s declarants appear to exceed the qualifications required for a person of ordinary skill in the relevant art (see Ex. 1003 ¶¶ 3–8; Ex. 2003 ¶¶ 6–17), and we credit their testimony as to the definition of a person of ordinary skill in the art.” slip op. at 7
- Expert testimonyPetitioner expert creditedPatent owner expert creditedDecided for petitioner
“2 Petitioner and Patent Owner rely on substantially similar assessments of the level of ordinary skill in the relevant art. Ex. 1003 ¶ 41; Ex. 2003 ¶ 30. Although the parties are critical of the experience level of each other’s expert witness (PO Resp. 49, Reply 25), each of Petitioner’s and Patent Owner’s declarants appear to exceed the qualifications required for a person of ordinary skill in the relevant art (see Ex. 1003 ¶¶ 3–8; Ex. 2003 ¶¶ 6–17), and we credit their testimony as to the definition of a person of ordinary skill in the art.” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“processing on data retrieved from processor memory 34. Bagherzadeh Decl. ¶ 216. However, Petitioner cites a disclosure in Rich that suggests making vertex data locally accessible, thereby recognizing that Rich could be operated using local on-chip memory to store vertex data. Reply 17 (citing Ex. 1005, col. 9, ll. 1–12). Rich discloses that the image generation system accesses the database of primitives defining the image to be generated and assigns the primitives to processing elements 32 of processing element array 30 and that “the database may reside in memory accessible through the host processor 22 or locally accessible.” Ex. 1005, col. 9, ll. 3–7, 10–12. Processing elements 32 transform the primitives defined in model space to x, y coordinates or screen coordinates. Id. at col. 9, ll. 17–21. Thus, we agree with Petitioner that Rich suggests making vertex data locally accessible. In addition, although Rich also discloses external memory circuitry may be necessitated when processing elements 32 have only a small amount of memory 34, we credit the testimony of Petitioner’s declarant, Dr. Bagherzadeh, that, at the time of the ’871 Patent, it would have been within the ability of one of ordinary skill to add more memory to the processing elements and that the use of on-chip memory was well known and commonly used in the art of data processing for fast access. Reply 20 (citing Bagherzadeh Decl. ¶ 223). Petitioner further argues that simply moving the vertex data to an on-chip memory would not render Rich’s system inoperable. Reply 17. As Petitioner notes, one of ordinary skill seeking to gain faster access to vertex data would have had reason to trade off pixel processing efficiency, without rendering the system inoperable for its intended purpose. Thus, we conclude that Petitioner has demonstrated that a person of ordinary skill would have had reason to modify Rich to arrive at the subject matter broadly recited in claim 15.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“meaning that Rich would not work for its intended purpose. Id. at 39–40. Patent Owner also argues that Rich “teaches away” because a person of ordinary skill would have understood that the Rich’s external memory is a shared memory for all processing elements, whereas its on-chip memory 34 is dedicated to one processing element. Id. at 41–42. Patent Owner also disputes the testimony of Petitioner’s expert that a person of ordinary skill would be motivated to store vertex data on chip for faster and more efficient access because Rich discloses that processing elements 32 have only a small amount of memory 34 in their own dedicated circuitry. Id. at 40–41.” slip op. at 10
Patent outcomesUS 6,897,871 mixed§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,897,871 - Sandisk Corporation v. Netlist, Inc.Some claims unpatentablePTAB · Dec 14, 2015 · IPR2014-00970 · APJ Linda M Gaudette · IPR · Final written decision
Claims 1, 14, 15, 19–25, and 27–34 are unpatentable; the Board found other challenged claims not shown unpatentable on the grounds decided.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“The difference in the opinions of the two experts is that Dr. Sechen believes a person of ordinary skill in the art would have an additional four years of experience, education, or a combination of the two, beyond that proposed by Dr. Alpert. See Ex. 1009 ¶ 7. According to Dr. Alpert, the difference in the proposed levels of ordinary skill in the art is not material to any dispute over claim construction or patentability in this inter partes review. Id. We accord greater weight to Dr. Alpert’s opinion as to the level of ordinary skill in the art because he has experience in both teaching students and working with engineers in the industry, while Dr. Sechen’s experience is primarily in teaching. Compare Ex. 1007 ¶¶ 7, 21 with Ex. 2012 ¶¶ 3, 5. Moreover, based on our review of the ’434 patent and the types of problems and solutions described in the ’434 patent and cited prior art, we agree with Dr. Alpert’s opinion on the level of ordinary skill. Accordingly, we find that a person of ordinary skill in the art at the time of the ’434 patent would have a Bachelor’s degree in electrical engineering, computer engineering, or in a related field and at least one year of work experience relating to memory systems, and would be familiar with the design of memory devices, memory modules, and BIST.” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“The above disclosure uses the term “operable independently” to describe the data handlers as being discrete and functioning without being physically or logically connected to each other. Based on our review of the ’434 patent, the specification and claim 27 both use the term “operable independently” in the same manner, i.e., to describe a feature of the data handler that is distinct from its data generation feature. We agree with Petitioner, therefore, that when interpreted in the context of the ’434 patent in its entirety, the claim term “operable independently” “merely means that each data handler can operate without influence or control by any of the other data handlers.” Reply 5. The ’434 patent specification uses the term “operable independently” in accordance with its plain and ordinary meaning, and we find no basis for applying the narrower construction advanced by Patent Owner to any of the challenged claims. Accordingly, we interpret “operable independently” as “operable without influence or control by another.” See Cuozzo, 793 F.3d at 1278–79.” slip op. at 19
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Based on the above description in Averbuj, we agree with Patent Owner that Averbuj describes memory interfaces (the alleged data handlers) that are configured to produce address and control signals, and that Averbuj describes producing address and control signals in certain circumstances, e.g., when Averbuj’s sequencer (the alleged control module) specifies writing data in a particular pattern that requires transformation to conform to a particular configuration of a memory module. See PO Resp. 33. We also agree with Petitioner, however, that Averbuj’s memory interfaces are further configured to apply to the memory modules the same address and control signals received from, and produced by, the sequencers for testing (see Reply 15), e.g., when the sequencer sends signals that can be applied, without modification or transformation (see Ex. 1003 ¶ 56), directly to a memory module irrespective of its physical configuration. Thus, Petitioner has shown, by a preponderance of the evidence, that Averbuj’s sequencer meets the limitation of “a control module configured to generate address and control signals for testing the memory devices” as recited in challenged independent claims 1, 20, and 29 of the ’434 patent.” slip op. at 41
- Obviousness (§103) › Motivation to combine / reasonable expectation of successReasonable expectation not foundNot shown unpatentableNot shown unpatentable
“As discussed in Section IV.B.2.e., a petition must include “[a] full statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence including material facts, and the governing law, rules, and precedent” (37 C.F.R. § 42.22(a)(2)), and “[a] reply may only respond to arguments raised in the corresponding . . . patent owner response” (37 C.F.R. § 42.23(b)). We agree with Patent Owner that the Reply does more than merely respond to or rebut arguments made in Patent Owner’s Response; rather, it sets forth a theory that was not presented clearly in the Petition. Patent Owner’s position is supported by the fact that Dr. Sechen, whose skill level is at least (and appears to exceed) that of the ordinary artisan, apparently was unable to envision how Huang and Averbuj could be combined. Further, Dr. Alpert’s second declaration includes, at a minimum, opinions as to the understanding of the ordinary artisan with respect to the teachings of Huang and Averbuj that were not presented in his first declaration. In our judgment, consideration by the Board of the above-noted arguments in the Reply and evidence presented in Dr. Alpert’s second declaration in support thereof would be improper under 37 CFR § 42.23 and unfair to Patent Owner. We have, however, reviewed and considered the arguments in the Petition and evidence therein, and are in agreement with Patent Owner that Petitioner has not provided adequate explanation or evidence to support its contention that one of ordinary skill in the art would have had a reasonable expectation of success in combining Huang and Averbuj. Accordingly, Petitioner has not met its burden to show, by a preponderance of the evidence, that claims 7–12, 17, 18, 20–25, 27, 28, and 30–35 would have been unpatentable over Huang and Averbuj.” slip op. at 59
Patent outcomesUS 8,001,434 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,001,434
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.