- Sony Interactive Entertainment LLC v. Intellectual Pixels LimitedSome claims unpatentablePTAB · Jan 11, 2022 · IPR2020-01248 · APJ Iftikhar Ahmed · IPR · Final written decision
Claims 1–3 are unpatentable as obvious over Schmidt and Keslin; claim 4 was not shown unpatentable over the asserted grounds.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“understanding of a person of ordinary skill in the art at the time of the invention. Graham, 383 U.S. at 17. Petitioner contends that a person of ordinary skill in the art would have had “at least (1) an undergraduate degree in computer science, electrical engineering, or an equivalent subject, together with two years of post-graduate experience in computer graphics; or (2) a master’s degree in computer science, electrical engineering, or equivalent subject, together with one year of postgraduate experience in computer graphics.” Pet. 18 (citing Ex. 1002 ¶¶ 25–27). Patent Owner agrees with Petitioner but adds that “the experience in computer graphics would include experience with multimedia systems, particularly the delivery of video display information across a network.” PO Resp. 10–11 (citing Ex. 2016 ¶ 26). We determine that Petitioner’s proposed level of ordinary skill is consistent with the ’093 patent and the asserted prior art, and also agree with Patent Owner’s assertion regarding the relevant experience. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). Accordingly, we determine that one of ordinary skill in the art at the time of the invention would have had at least (1) an undergraduate degree in computer science, electrical engineering, or an equivalent subject, together with two years of post-graduate experience in computer graphics; or (2) a master’s degree in computer science, electrical engineering, or equivalent subject, together with one year of postgraduate experience in computer” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“1. 3-dimensional graphics (and related terms) The parties inform us of certain terms that were construed in pending district court litigation. See Pet. 17 (citing Ex. 1013, 21); PO Resp. 12–13 (citing Ex. 1013, 12–13). We determine that it is not necessary to expressly construe any of these terms for purposes of our Decision.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“unsupported in view of the plain language of claim 1 and the disclosure of the ’093 patent. Inst. Dec. 20–21. We noted that the claim recites “an application, running on a server, which generates 3-dimensional graphics accordingly.” Id. at 20. Rather than Patent Owner’s narrow reading of this limitation, requiring the server to generate 3-dimensional graphics independently from the claimed application, we determined that a more reasonable construction of this limitation is that the server in its entirety, including the application running on the server, generates the 3-dimensional graphics. Id. In other words, the phrase “which generates 3-dimensional graphics accordingly” cannot be read separately from the first two phrases of the limitation in the manner that Patent Owner proposes. Id. Patent Owner argues that our preliminary construction was improper because it “read[s] out the term ‘application’ by lumping together the ‘application’ and the ‘server,’” “effectively re-writ[ing] the limitation ‘sending user input control signals to an application, running on a server, which generates 3-dimensional graphics accordingly . . . .’ as ‘sending user input control signals to a server, which generates 3-dimensional graphics accordingly . . . .’” PO Resp. 54; see also PO Sur-reply 20. We disagree. Claim 1 plainly requires “sending user input control signals to an language, however, does not clearly distinguish between the two components for the purposes of generating the 3-dimensional graphics, and we therefore, gave the limitation its more reasonable interpretation in light of the specification, i.e., not limiting the claim to either the application or the server alone as generating the 3-dimensional graphics.7” slip op. at 20
- Expert testimonyPetitioner expert creditedDecided for petitioner
“statements about “removing all state and computation from the desktop” and characterization of the SLIM client was a “dumb frame buffer” client suggest that an ordinarily skilled artisan would have found implementing decompression on the SLIM client to be extremely computationally burdensome. Dr. Fuchs testifies that a person of ordinary skill in the art would not have understood “removing all state and computation from the desktop” to mean there can be no decompression on the client, but instead that Schmidt was “referring to the use of the server for application-level state and computation, allowing the user to move from one client to another without loss of application state.” Ex. 1035 ¶ 54 (citing Ex. 1004, 33). Dr. Fuchs quotes Schmidt stating that the servers maintain the true state at all times. Thus, the user is isolated from desktop failures and may move freely between terminals. In our implementation, users can simply present a smart identification card at any desktop, and the screen is returned to the exact state at which it was left. Ex. 1004, 33. Dr. Fuchs further testifies a person of ordinary skill in the art would not have understood Schmidt’s statements about removing state to mean that the client cannot perform any processing whatsoever because the client in Schmidt does perform processing, such as CSCS commands. the client for processing the SLIM commands), 33 (Figure 1 showing the client generates “[m]ouse/keyboard events & other input”), 35 (the “SLIM consoles” include a “100MHz microSPARC-IIep processor”)). We credit Dr. Fuchs’s testimony because it is consistent with our findings of Schmidt’s teachings. Aside from the CSCS command, Schmidt discloses other computational tasks that the SLIM client could handle. For example, Schmidt explains, in comparing its protocol to the X protocol, that if video is scaled to a higher resolution, the X server must perform the operation prior to sending the image to the X client, whereas the Sun Ray 1 console, i.e., Schmidt’s SLIM client, “can do it locally at substantial savings in bandwidth.” Ex. 1004, 45; see also id. at 35 (listing the hardware components of the Sun Ray 1 SLIM client). The record therefore fails to support that a person of ordinary skill in the art would have found the SLIM client to be as computationally underpowered as Patent Owner makes it out to be.” slip op. at 32
Patent outcomesUS 8,667,093 mixedClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,667,093 - Apple Inc. v. Uniloc 2017 LLCSome claims unpatentablePTAB · Jan 15, 2021 · IPR2019-01337 · APJ Jennifer S Bisk · IPR · Final written decision
Claims 1, 2, 4, 5, 7–10, 13–15, and 17 are unpatentable as obvious; claims 3, 6, 11, 12, and 16 were not shown unpatentable.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“this case, we interpret claims in the same manner used in a civil action under 35 U.S.C. § 282(b) “including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” 37 C.F.R. § 42.100(b) (2019). Only terms that are in controversy need to be construed, and then only to the extent necessary to resolve the controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017).” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITADecided for petitioner
“We do not agree with Patent Owner that the quoted language of the ’999 patent requires a construction of the term “second link” that excludes any Bluetooth connection that reuses authentication information. Other than the one vaguely worded sentence in the ’999 patent, Patent Owner does not point to any supporting evidence for this interpretation. PO Resp. 25–26; Ex. 1001, 1:47–53). To the contrary, the evidence supports a finding that when two devices reestablish communication after being disconnected, the subsequent Bluetooth link is considered a different link. See Reply 18 (citing Ex. 1004, 151 (“Consequently, once a semi-permanent link key is defined, it may be used in the authentication of several subsequent connections between the Bluetooth units sharing it.”). This understanding is consistent with the ’999 patent, which refers to “initial Bluetooth link[s]” and “subsequent Bluetooth link[s]” (Ex. 1001, 1:49–50, 1:58, 4:40), and discloses that multiple links can be made between two Bluetooth compatible devices (id. at 1:17–20), without any clarification that such links are considered the same if authentication information is reused. Accordingly, we find that claim 13 requires two different links, one of which occurs later in time than the other, but that those links are not required to be of different types. And we do not agree with Patent Owner’s narrow reading, based on one sentence in the ’999 patent, that Bluetooth links that reuse authentication codes are considered the same link.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“We find, based on the record, that a person of ordinary skill in the art would have understood using Bluetooth’s authentication mechanism in place of Varadharajan’s described “challenge/response routine,” to be a feasible option. This is based on both the intrinsic evidence and extrinsic evidence, which support such a finding, and a lack of evidence in the record to the contrary.7 See Ex. 1003, 4:62–67 (“Each time the portable computer 50 is in local or direct communication with the desk top computer 48 . . . the identity of the portable computer 50 is authenticated by the desk top computer 48 by a suitable test such as a challenge/response routine as outlined below.”); Ex. 1004, 99, 108, 149–154, 169–178, 1043, 1045–1047, 1053; Ex. 1006 ¶¶ 96–123; Ex. 1013 ¶¶ 14–22. We are not persuaded by Patent Owner’s argument that BT Core teaches away from a very long, frequently changed, security key. See PO Resp. 19–20. Nothing in Varadharajan or BT Core may be said to discourage a person of ordinary skill from using the Bluetooth authentication mechanism for the authentication over Varadharajan’s direct link. See In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). To the contrary, the facts suggest that a person of ordinary skill would have understood Varadharajan to encourage the use of any known, robust, authentication scheme (see Ex. 1003, 4:62–67), and the record shows that a person of ordinary skill would have understood Bluetooth’s authentication mechanism to be such a scheme (see Ex. 1001, 1:11–59, 5:38–41; Ex. 1004, 151–152, 157; Ex. 1006 ¶¶ 100–109; Ex. 1013 ¶¶ 17– 21). Finally, we find Petitioner has sufficiently shown that a person of ordinary skill in the art would have had reason to attempt to use Bluetooth’s authentication mechanism over Varadharajan’s direct link because it was a well-known method of implementing robust short-range communication and doing so would have required only the simple substitution of Bluetooth for infrared, in a similar manner, to achieve predictable results. Pet. 32–36; Reply 8–14; Ex. 1006 ¶¶ 96–123; see KSR v. Teleflex, 550 U.S. 398, 417 (2007).” slip op. at 26
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“would have understood using Bluetooth’s authentication mechanism in place of Varadharajan’s described “challenge/response routine,” to be a feasible option. This is based on both the intrinsic evidence and extrinsic evidence, which support such a finding, and a lack of evidence in the record to the contrary.7 See Ex. 1003, 4:62–67 (“Each time the portable computer 50 is in local or direct communication with the desk top computer 48 . . . the identity of the portable computer 50 is authenticated by the desk top computer 48 by a suitable test such as a challenge/response routine as outlined below.”); Ex. 1004, 99, 108, 149–154, 169–178, 1043, 1045–1047, 1053; Ex. 1006 ¶¶ 96–123; Ex. 1013 ¶¶ 14–22. We are not persuaded by Patent Owner’s argument that BT Core teaches away from a very long, frequently changed, security key. See PO Resp. 19–20. Nothing in Varadharajan or BT Core may be said to discourage a person of ordinary skill from using the Bluetooth authentication mechanism for the authentication over Varadharajan’s direct link. See In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). To the contrary, the facts suggest that a person of ordinary skill would have understood Varadharajan to encourage the use of any known, robust, authentication scheme (see Ex. 1003, 4:62–67), and the record shows that a person of ordinary skill would have understood Bluetooth’s authentication mechanism to be such a scheme (see Ex. 1001, 1:11–59, 5:38–41; Ex. 1004, 151–152, 157; Ex. 1006 ¶¶ 100–109; Ex. 1013 ¶¶ 17– 21).” slip op. at 26
Patent outcomesUS 7,136,999 mixedClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,136,999 - Facebook, Inc. / Whatsapp Inc. et al. v. Uniloc 2017 LLCSome claims unpatentablePTAB · Jan 16, 2019 · IPR2017-01667 · APJ Charles J Boudreau · IPR · Final written decision
Claims 3, 6–8, 10–35, 38, and 39 are unpatentable; claims 4 and 5 were not shown unpatentable.
RulingsFinal written decision- ExcludeOther
“Response in each case. IPR2017-01667, Paper 17 (“1667 PO Resp.”); IPR2017-01668, Paper 16 (“1668 PO Resp.”). Petitioner4 then filed Replies. IPR2017-01667, Paper 24 (“1667 Reply”); IPR2017-01668, Paper 22 (“1668 Reply”). Patent Owner also filed a Motion to Exclude as Paper 21 in each case (“Mot. Excl.”), and Petitioner filed an Opposition as Paper 24 in each case (“Opp’n”). We held a consolidated oral argument in both proceedings, as well as in related proceeding IPR2017-01428, on August 30, 2018. A transcript of the oral hearing (“Tr.”) has been entered into the record of IPR2017-01667 as Paper 31 and into the record of IPR2017-01668 as Paper 29.” slip op. at 3
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“01668, Paper 6 (“1668 Prelim. Resp.”). We instituted inter partes review pursuant to 35 U.S.C. § 314 as to all challenged claims. IPR2017-01667, Paper 8 (“1667 Dec. on Inst.”); IPR2017-01668, Paper 8 (“1668 Dec. on Inst.”). During the pendency of the proceedings, Huawei Device Co., Ltd. and LG Electronics, Inc. filed a petition and motion for joinder requesting to join IPR2017-01667, which we granted. IPR2017-01667, Paper 12. Similarly, Apple Inc. filed petitions and motions for joinder requesting to join IPR2017-01667 and IPR2017-01668, which we also granted. IPR2017- 01667, Paper 29; IPR2017-01668, Paper 27.” slip op. at 3
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for petitioner
“1. Instant Voice Message Independent challenged claims 3, 27, and 38 recite the term “instant voice message.” In particular, claim 3 recites a messaging system that “receives an instant voice message” from one of a plurality of instant voice the Patent Trial and Appeal Board,” 83 Fed. Reg. 51,340 (Oct. 11, 2018) (to be codified at 37 C.F.R. pt. 42). message client systems, “wherein the instant voice message includes an object field including a digitized audio file.” Claims 27 and 38 recite a client platform system for “generating an instant voice message and a messaging system for transmitting the instant voice message.” Claim 27 further requires an “instant voice messaging application” that “includes a document handler system for attaching one or more files to the instant voice message.” Certain of the challenged dependent claims recite additional limitations concerning, for example, additional fields included in the instant voice message (claims 4–8), storage, deletion, or retrieval of instant voice messages (claims 10, 14, 17, 28, 31), the generation of the instant voice messages (claims 13, 18, 32), encryption/decryption of instant voice messages (claims 19, 33), compression/decompression of instant voice messages (claims 20, 34), effects indicating receipt of instant voice messages (claims 23, 35), and display of instant voice messages (claim 30). Our Institution Decision in IPR2017-01667 noted Patent Owner’s arguments regarding the “instant voice message” centered on the scope of the term. 1667 Dec. on Inst. 18, 22–23. Patent Owner had argued an implied construction in which “instant voice message” encompasses only the voice message. Id. at 19, 23. The parties were invited to brief the claim construction during trial. Id. at 19–20, 23. In its Response in IPR2017-01667, Patent Owner proposed that an “instant voice message” is “an audio file recording voice data.” 1667 PO Resp. 11–13, 15. In particular, Patent Owner relied on the specification’s use of “i.e.” to indicate lexicography in equating the “instant voice message”” slip op. at 12
Patent outcomesUS 8,724,622 mixedClaim constructioncites KSR · GrahamPatents in suitUS 8,724,622 - Apple Inc. / Facebook, Inc. et al. v. Uniloc Luxembourg S.A.Some claims unpatentablePTAB · May 23, 2018 · IPR2017-00222 · APJ Miriam L Quinn · IPR · Final written decision
Claims 1 and 2 are unpatentable over Vuori and Vuori with Malik; claims 3–8 were not shown unpatentable under any asserted ground.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner’s proffered level of ordinary skill in the art focuses too generally on experience in “communications technology.” The enunciation of such experience is too generic to be useful in determining the level of ordinary skill in the art under any of the GPAC factors. For instance, experience with “communications technology” is untethered to addressing problems and solutions in facilitating short messaging services, such as in Vuori, or to whether active workers in the appropriate field would manifest such a general experience in “communications technology.” Vuori, for instance, focuses on facilitating short messaging service in the context of a wireless telecommunication network. See Ex. 1005 ¶¶ 57. Therefore, we cannot ignore that the field of work would be more narrow than generally “communications technology.” We find that Petitioner’s assessment is proper and consistent with the level of ordinary skill in the art at the time of the invention as reflected in the prior art in the instant proceeding. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). For example, Vuori (Ex. 1005) and Malik (Ex. 1019) address instant messaging systems in the context of telecommunication and computer networks, such as a Global System for Mobile Communications (“GSM”), General Packet Radio Service (“GPRS”), Universal Mobile Telecommunication Systems (“UMTS”), and the Internet. Ex. 1005 ¶¶ 3539, Figs. 3, 6; Ex. 1019 ¶¶ 4, 7; see also Ex. 1021, 1:2544 (addressing audio conferences across networks using the Internet Protocol and VoIP). Thus, it is evident from the prior art that Petitioner’s assessment is appropriate because, in addition to a certain degree, a person of ordinary skill in the art would have experience in communications systems, particularly in messaging systems, data networks including VoIP and mobile telephony, or comparable industry experience. Consequently, we adopt Petitioner’s assessment of the level of ordinary skill in the art.” slip op. at 19
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“(citing Ex. 1005 ¶¶ 35, 43, 47; Ex. 1003 ¶¶ 125126; Reply 511; Ex. 1028 ¶¶ 1625). In particular, we note that the Petition relies on the Forys Declaration to explain that Vuori’s presence information is distributed to other users connected to the network. Pet. 14 (Ex. 1003 ¶ 125). The Easttom Declaration, in contrast, explains that SVM watcher 256 is not a user-facing “client” and “thus does not render obvious the claimed ‘transmitting’ step.” Ex. 2001 ¶ 29. Dr. Forys agreed during cross-examination that SVM watcher 256 (which receives the presence information from the presence service) is not a user device. Ex. 2002, 67:270:22 (line of questioning regarding whether SVM watcher 256 is a user agent). However, in his supplemental declaration, submitted after his deposition, Dr. Forys further explained that SVM watcher 256, although not a user device or user agent, is “user-facing” because there is “coupling” between the SVM watcher and the user agent. Ex. 1028 ¶¶ 16, 20. According to Dr. Forys, the presence status must be distributed to a user agent because Vuori teaches that the status markers of the presence information are “interpretable by programs or by persons and can consist of single or multiple values as spelled out in the IETF model of RFC 2778.” Id. ¶ 21 (referring to Ex. 1005 ¶ 47 (emphasis added)). That is, we understand Dr. Forys’s testimony as explaining that the presence information, although distributed to SVM watcher 256, eventually is also transmitted to SVM watcher UA (“user agent”) 278, because the user/principal must be able to interpret the status of his/her buddy list members. Moreover, Dr. Forys relies on RFC 2778, as described in Vuori (Ex. 1005 ¶ 47), which supports his testimony by stating that the “buddy list” application makes it possible for a user to see the presence of others, resulting in the “buddy list” as the combination of the presence user agent and watcher user agent. Ex. 1028 ¶ 21; Ex. 1005 ¶ 47; Ex. 1025 § 2.7 (providing examples of the disclosed model in a buddy list application). On balance, weighing the expert testimony proffered by the parties, we credit Dr. Forys’s testimony as being more consistent with and supported by Vuori’s teachings. For instance, we agree with Dr. Forys that the user agent is coupled to other system services. See Ex. 1028 ¶ 16 (relying on Ex. 1005 ¶ 46 (“A user agent is purely coupling between a principal and some core entity of the system (SVM inbox 274, SVM sender 272, SVM presentity 254, SVM watcher 256).”)). Vuori teaches that implementation of a user agent will combine at least some of the different kinds of user agents. Ex. 1005 ¶ 46. Thus, we agree, as argued by Petitioner, that a user agent with presence information capability interacts with the presence service via SVM watcher 256 to fetch some presence information and be notified of changes of status marker information from members of the buddy list. Considering Vuori’s explanation of status marker information being interpretable by a principal, we agree with Dr. Forys’s testimony that the user agent will receive the presence information that contains these status markers. Thus, if the user agent receives the presence information via its coupling with SVM watcher 256, we find that presence information 290, distributed on the line 252, (i.e., the “list”) has been shown to be transmitted to the user agent (i.e., the “client”).” slip op. at 35
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“We resolve this close issue by noting that a claim construction that excludes the “single entry” from the claim scope is preferable, because otherwise, the word “each” would be meaningless in instances where the list contained only one entry.3 See Merck & Co. v. Teva Pharm. USA, Inc., 395 F.3d 1364, 1372 (Fed. Cir. 2005) (“A claim construction that gives meaning to all the terms of the claim is preferred over one that does not do so.”); see also Bicon, Inc. v. Straumann Co., 441 F.3d 945, 950–51 (Fed. Cir. 2006) 3 If the “sub-set of the nodes” were a single node, then the word “each” in the phrase “each of the nodes in the sub-set corresponding to the client” would also be superfluous in the circumstances where there was a single node. The term “each” still has meaning in the circumstances where there is more than one. (refusing to construe claim terms in a way that made other claim limitations meaningless). Accordingly, guided by case law governing claim construction, we adopt a construction of the term “list,” as used in claim 1, that requires more than one node in the “sub-set” corresponding to the client.” slip op. at 15
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“During the preliminary stage of the proceeding, Petitioner proposed a claim construction for the term “intercom mode.” Pet. 6. Patent Owner argued that construction of this term was unnecessary, and we agreed with Patent Owner. See Prelim. Resp. 18; Dec. 7. Neither party proposed explicit construction of any other term. It became clear, however, that the scope of the word “list” was at issue, when Patent Owner argued that the “list of the recorded connectivity status” must include the connectivity status of more than one node. Prelim. Resp. 2728. In our Decision on Institution, we disagreed with Patent Owner’s contention regarding the scope of the word “list,” and noted that the Specification seemed to contradict Patent Owner’s position on claim scope. Dec. 1718 (citing Ex. 1001, 7:6164). We invited the parties to provide, during trial, claim construction analysis concerning this dispute.” slip op. at 8
Patent outcomesUS 8,243,723 mixedClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,243,723 - Apple Inc. / HTC Corporation et al. v. Memory Integrity, LLCSome claims unpatentablePTAB · Jun 21, 2016 · IPR2015-01376 · APJ Kerry Begley · IPR · Final written decision
Claims 1–3, 8, and 15–25 are unpatentable: Pong anticipates claims 1–3, 8, 15, 16, and 25; Pong and Smith render claims 17–24 obvious. Claim 11 is not shown unpatentable.
RulingsFinal written decision- BurdenOther
“and 37 C.F.R. § 42.73. Having considered the record before us, we determine Petitioner has shown by a preponderance of the evidence that claims 1–3, 8, and 15–25 of the ’121 patent are unpatentable. See 35 U.S.C. § 316(e). Petitioner, however, has not demonstrated by a preponderance of the evidence that claim 11 is unpatentable.” slip op. at 3
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“Communications AB, Sony Mobile Communications (USA) Inc., LG Electronics, Inc., LG Electronics USA, Inc., and LG Electronics Mobilecomm USA, Inc. (collectively, “Subsequent Petitioners”; and with Initial Petitioners, “Petitioner”) filed a Petition in IPR2015-01376, requesting inter partes review of claims 1–3, 8, 11, 12,3 and 15–25 of the 2 The Petition also lists Samsung Telecommunications America, LLC (“STA”) as a petitioner. Paper 6 (“Pet.”), 1. After the filing of the Petition, however, STA merged with and into Samsung Electronics America, Inc. Paper 10. Thus, STA no longer exists as a separate corporate entity. Id. 3 Subsequent Petitioners represented that they included claim 12 “merely to conform” to the Petition and motion for rehearing of the Institution Decision, regarding claim 12, that was pending before the Board and that if the motion was denied, they requested joinder on “all claims except claim 12.” IPR2015-01376, Paper 3 (“IPR2015-01376 Pet.”), 1 n.1, 33 n.5. Because we denied the motion, we understood Subsequent Petitioners to no longer maintain their challenge of claim 12 and to the extent they did, we determined they had not shown the IPR2015-01376 Petition warranted institution of review of the claim. IPR2015-01376, Paper 12, at 12–15. IPR2015-01376 Pet. Subsequent Petitioners also filed a motion for joinder with this proceeding, which we granted. IPR2015-01376, Papers 4, 12.” slip op. at 2
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, deniedDenied
“addresses Koster—a prior art U.S. patent of record as Exhibit 1009 that was filed on July 13, 2004 and issued on April 13, 2004—Patent Owner’s failure to demonstrate enablement of the proposed substitute claims results in a failure to demonstrate novelty and non-obviousness of the proposed substitute claims over the prior art of record. When arguing how the limitations of the proposed substitute claims distinguish them from the disclosures of the references of record, Patent Owner’s Motion addresses Koster only by asserting that “[a]s to . . . Koster . . . , because, as discussed above, all of the substitute claims find support in the [’]347 Application, . . . Koster . . . is not prior art to any of the proposed substitute claims.” Mot. 22. Because Patent Owner does not persuade us that the proposed substitute claims are enabled by the disclosure in the ’347 Application, we find unpersuasive Patent Owner’s suggestion that the proposed substitute claims are entitled to the filing date of the ’347 Application. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (“For a patent to claim priority from the filing date of its provisional application, . . . the specification of the provisional must . . . enable an ordinarily skilled artisan to practice the invention claimed in the non-provisional application.”) (internal citation and quotations omitted); Hyatt v. Boone, 146 F.3d 1348, 1352 (Fed. Cir. 1998) (“The earlier application must contain a written description of the subject matter of the interference count, and must meet the enablement requirement.”); see also Novo Nordisk Pharm., Inc. v. Bio-Tech. Gen. Corp., 424 F.3d 1347, 1359 (Fed. Cir. 2005) (“[If] the 1983 PCT application was . . . not enabled, Novo would not be able to rely upon the application’s priority date to overcome the Brewer patent.”). Accordingly, we also find unpersuasive Patent Owner’s assertion basis for asserting that the proposed substitute claims are patentable over Koster (by itself or in combination with other references of record), we conclude that Patent Owner has not met its burden of demonstrating patentability of the proposed substitute claims over the references of record. See Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1307 (Fed. Cir. 2015) (upholding Board’s requirement that patent owner “show patentable distinction [of the substitute claims] over the prior art of record”); Opp. 1–4. Thus, Patent Owner has not met its burden for proposed substitute claims 26–34.” slip op. at 84
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed
“Decision and maintain in this Decision—in which “states” is not limited to cache coherency states—we determine that Pong’s presence bit vector discloses the recited “probe filtering information” “representative of states associated with selected ones of the cache memories,” where either the write update or the write invalidate protocol is implemented. See Inst. Dec. 7–10; supra § II.B.1.a. First, under this construction, there is no dispute that “states associated with selected ones of the cache memories” includes presence. See Inst. Dec. 9–10; PO Resp. 25 (arguing that Petitioner’s argument that the presence bit vector represents the “state” of presence allegedly is foreclosed only by Patent Owner’s proposed “construction of state as a cache coherence protocol state”); id. at 1–11, 25–27; Reply 15; Ex. 3001, 497–48 (definition of “state”); Ex. 2016 ¶ 87. Nor is there any dispute that the bits in Pong’s presence bit vector represent this state of presence. Pong discloses that when a bit in the presence bit vector is set, the processor that corresponds to the bit “has a copy of the data block,” i.e., a copy of the data block is present. Ex. 1003 ¶ 51. Accordingly, we agree with Petitioner that in both the write update and write invalidate protocols, a set bit represents the state of presence of a cached copy of the data block in a” slip op. at 42
Patent outcomesUS 7,296,121 mixed§ 102 anticipation§ 103 obviousness§ 112 disclosurecites PhillipsPatents in suitUS 7,296,121 - Apple Inc. / HTC Corporation et al. v. Memory Integrity, LLCSome claims unpatentablePTAB · Jun 21, 2016 · IPR2015-00163 · APJ Jennifer S Bisk · IPR · Final written decision
Claims 4–6 and 19–24 are unpatentable over Koster and Koster with Smith, respectively; claims 11 and 12 were not shown unpatentable, and the motion to amend was denied.
RulingsFinal written decision- Skill levelSkill level board ownDecided for petitioner
“ANALYSIS A. Level of Ordinary Skill in the Art We begin our analysis by addressing the level of ordinary skill in the art. Dr. Horst and Dr. Oklobdzija agree that a person of ordinary skill in the art would have had at least a “bachelor’s degree in electrical engineering, computer engineering, or computer science” and “two years of experience in the design of multiprocessor systems.” Ex. 1014 ¶ 8; Ex. 2016 ¶ 8. We adopt this proposal as the level of ordinary skill in the art, based on the testimony of the parties’ experts as well as our review of the ’121 patent and the prior art involved in this proceeding.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageTerm construed board ownDisclaimer not foundDecided for petitioner
“evidence in Patent Owner’s Response, we remain unpersuaded that the ’121 patent supports limiting the broadest reasonable construction of “states” solely to cache coherence protocol states. A claim term will be interpreted more narrowly than its ordinary and customary meaning only under two circumstances: (1) the “patentee sets out a definition and acts as [its] own lexicographer,” or (2) the “patentee disavows the full scope of a claim term either in the specification or during prosecution.” Aventis Pharma S.A. v. Hospira, Inc., 675 F.3d 1324, 1330 (Fed. Cir. 2012). To disavow claim scope, the specification or prosecution history must “make[] clear that the invention does not include a particular feature” and the feature is then “deemed to be outside the reach of the claims of the patent, even though the language of the claims, read without reference to the specification” or prosecution history, “might be considered broad enough to encompass the feature in question.” SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1341 (Fed. Cir. 2001); see Aventis, 675 F.3d at 1330. To disavow claim scope, the patentee may “include[e] in the specification expressions of manifest exclusion or restriction, representing a clear disavowal of claim scope.” Aventis, 675 F.3d at 1330 (internal quotations omitted). In this context, it is not sufficient “that the only embodiments, or all of the embodiments, contain a particular limitation.” Id.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“The heart of the dispute regarding this limitation, however, lies in whether the disclosure of microprocessors as devices in a system necessarily discloses that those microprocessors are “programmed.” Because the ’121 patent does not illuminate this issue, but instead the parties rely on expert testimony and other extrinsic evidence to support their respective positions, we consider this issue to more properly fall within the category of unpatentability as opposed to claim construction. See Pet. 34–36; PO Resp. 12–19, 25–29; Reply 5–8. Thus, we do not further construe the term “programmed” other than to note that the ’121 patent uses the term in the ordinary and customary manner. See Ex. 1001, 7:49–52, 27:64–28:24, 29:1–3; Ex. 2012, 359; Ex. 2013, 590–91; Ex. 2014, 931.” slip op. at 24
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed
“reasonable likelihood of prevailing on this proposed ground of unpatentability. Inst. Dec. 19–24. We have reviewed Petitioner’s anticipation arguments and supporting evidence, including Koster’s disclosure, the detailed arguments appearing on pages 31–38 of the Petition, and the testimony of Dr. Horst. Despite the counter-arguments in Patent Owner’s Response, and the evidence cited therein, which we also have considered, Petitioner has shown, by a preponderance of the evidence, that each of claims 4–6 is unpatentable under 35 U.S.C. § 102 as anticipated by Koster. Petitioner, however, has not shown, by a preponderance of the evidence that Koster anticipates claims 11 and 12.” slip op. at 27
Patent outcomesUS 7,296,121 mixedClaim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites PhillipsPatents in suitUS 7,296,121 - Apple Inc. / HTC Corporation et al. v. Memory Integrity, LLCSome claims unpatentablePTAB · Jun 21, 2016 · IPR2015-00159 · APJ Kerry Begley · IPR · Final written decision
Claims 1–3, 8, and 15–25 are unpatentable: Pong anticipates claims 1–3, 8, 15, 16, and 25, and Pong and Smith render claims 17–24 obvious; claim 11 was not shown unpatentable.
RulingsFinal written decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Electronics Co. Ltd., Samsung Electronics America, Inc.,2 and Amazon.com, Inc. (collectively, “Initial Petitioners”) filed a Petition requesting inter partes review of claims 1–3, 8, and 11–25 of U.S. Patent No. 7,296,121 B2 (Ex. 1001, “the ’121 patent”). Pet. Pursuant to 35 U.S.C. § 314(a), we determined the Petition showed a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of claims 1–3, 8, 11, and 15–25, and instituted an inter partes review of these claims. Paper 12 (“Inst. Dec.”). We, however, did not institute review of claims 12–14, because we determined the Petition did not show a reasonable likelihood that Petitioner would prevail with respect to these claims. Id. at 23–30.” slip op. at 2
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed
“Dr. Horst’s testimony that as a result, from the perspective of the presence bit vector, “every processor indicated as storing a copy of the memory line in its cache is storing a valid copy.” Ex. 1014 ¶ A-11; see Pet. 26–27. In other words, as Dr. Horst testifies, “because a write update protocol always updates caches to keep them valid,” “when a cache line is present[,] it is necessarily valid.” Ex. 1025 ¶ 23; see Reply 17–18. Indeed, Dr. Oklobdzija agrees that because the write update protocol “force[s the caches] to update their value for a cache line every time it changes”—as Pong discloses— “every processor that has the cache line will have the line in a valid state.” Ex. 2016 ¶ 90 (emphasis added); Ex. 1003 ¶ 48; see also Tr. 115:1–23 (Patent Owner conceding that in a write update protocol, any cached copies could be “considered . . . to be valid” because they are “kept usable” and “updated”). Accordingly, based on Pong’s disclosures, as well as the explanatory testimony of Dr. Horst in addition to Dr. Oklobdzija, we determine that in the write update protocol, a set bit in Pong’s presence bit vector represents that the corresponding cached copy is present and valid.” slip op. at 44
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableUnpatentable
“2. OBVIOUSNESS OVER PONG AND SMITH We turn to the instituted obviousness ground alleging that claims 17–” slip op. at 73
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, deniedDenied
“addresses Koster—a prior art U.S. patent of record as Exhibit 1009 that was filed on July 13, 2004 and issued on April 13, 2004—Patent Owner’s failure to demonstrate enablement of the proposed substitute claims results in a failure to demonstrate novelty and non-obviousness of the proposed substitute claims over the prior art of record. When arguing how the limitations of the proposed substitute claims distinguish them from the disclosures of the references of record, Patent Owner’s Motion addresses Koster only by asserting that “[a]s to . . . Koster . . . , because, as discussed above, all of the substitute claims find support in the [’]347 Application, . . . Koster . . . is not prior art to any of the proposed substitute claims.” Mot. 22. Because Patent Owner does not persuade us that the proposed substitute claims are enabled by the disclosure in the ’347 Application, we find unpersuasive Patent Owner’s suggestion that the proposed substitute claims are entitled to the filing date of the ’347 Application. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (“For a patent to claim priority from the filing date of its provisional application, . . . the specification of the provisional must . . . enable an ordinarily skilled artisan to practice the invention claimed in the non-provisional application.”) (internal citation and quotations omitted); Hyatt v. Boone, 146 F.3d 1348, 1352 (Fed. Cir. 1998) (“The earlier application must contain a written description of the subject matter of the interference count, and must meet the enablement requirement.”); see also Novo Nordisk Pharm., Inc. v. Bio-Tech. Gen. Corp., 424 F.3d 1347, 1359 (Fed. Cir. 2005) (“[If] the 1983 PCT application was . . . not enabled, Novo would not be able to rely upon the application’s priority date to overcome the Brewer patent.”). Accordingly, we also find unpersuasive Patent Owner’s assertion basis for asserting that the proposed substitute claims are patentable over Koster (by itself or in combination with other references of record), we conclude that Patent Owner has not met its burden of demonstrating patentability of the proposed substitute claims over the references of record. See Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1307 (Fed. Cir. 2015) (upholding Board’s requirement that patent owner “show patentable distinction [of the substitute claims] over the prior art of record”); Opp. 1–4. Thus, Patent Owner has not met its burden for proposed substitute claims 26–34.” slip op. at 84
Patent outcomesUS 7,296,121 mixed§ 102 anticipation§ 103 obviousness§ 112 disclosurecites PhillipsPatents in suitUS 7,296,121 - Apple Inc. / HTC Corporation et al. v. Memory Integrity, LLCSome claims unpatentablePTAB · Jun 21, 2016 · IPR2015-01353 · APJ Jennifer S Bisk · IPR · Final written decision
Claims 4–6 are unpatentable as anticipated by Koster, claims 19–24 are unpatentable as obvious over Koster and Smith, and claims 11–12 were not shown unpatentable.
RulingsFinal written decision- Skill levelSkill level board ownOther
“ANALYSIS A. Level of Ordinary Skill in the Art We begin our analysis by addressing the level of ordinary skill in the art. Dr. Horst and Dr. Oklobdzija agree that a person of ordinary skill in the art would have had at least a “bachelor’s degree in electrical engineering, computer engineering, or computer science” and “two years of experience in the design of multiprocessor systems.” Ex. 1014 ¶ 8; Ex. 2016 ¶ 8. We adopt this proposal as the level of ordinary skill in the art, based on the testimony of the parties’ experts as well as our review of the ’121 patent and the prior art involved in this proceeding.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageTerm construed petitioner constructionDecided for petitioner
“For the reasons discussed below, however, despite the arguments and evidence in Patent Owner’s Response, we remain unpersuaded that the ’121 patent supports limiting the broadest reasonable construction of “states” solely to cache coherence protocol states. A claim term will be interpreted more narrowly than its ordinary and customary meaning only under two circumstances: (1) the “patentee sets out a definition and acts as [its] own lexicographer,” or (2) the “patentee disavows the full scope of a claim term either in the specification or during prosecution.” Aventis Pharma S.A. v. Hospira, Inc., 675 F.3d 1324, 1330 (Fed. Cir. 2012). To disavow claim scope, the specification or prosecution history must “make[] clear that the invention does not include a particular feature” and the feature is then “deemed to be outside the reach of the claims of the patent, even though the language of the claims, read without reference to the specification” or prosecution history, “might be considered broad enough to encompass the feature in question.” SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1341 (Fed. Cir. 2001); see Aventis, 675 F.3d at 1330. To disavow claim scope, the patentee may “include[e] in the specification expressions of manifest exclusion or restriction, representing a clear disavowal of claim scope.” Aventis, 675 F.3d at 1330 (internal quotations omitted). In this context, it is not sufficient “that the only embodiments, or all of the embodiments, contain a particular limitation.” Id.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“The heart of the dispute regarding this limitation, however, lies in whether the disclosure of microprocessors as devices in a system necessarily discloses that those microprocessors are “programmed.” Because the ’121 patent does not illuminate this issue, but instead the parties rely on expert testimony and other extrinsic evidence to support their respective positions, we consider this issue to more properly fall within the category of unpatentability as opposed to claim construction. See Pet. 34–36; PO Resp. 12–19, 25–29; Reply 5–8. Thus, we do not further construe the term “programmed” other than to note that the ’121 patent uses the term in the ordinary and customary manner. See Ex. 1001, 7:49–52, 27:64–28:24, 29:1–3; Ex. 2012, 359; Ex. 2013, 590–91; Ex. 2014, 931.” slip op. at 24
- Expert testimonyPetitioner expert discountedDecided for patent owner
“Petitioner fails to proffer evidence sufficient to rebut Patent Owner’s evidence that Koster’s disclosure of a microprocessor does not necessarily disclose that the microprocessor is programmed. Dr. Horst, in his original declaration, asserts that “a requesting microprocessor must be programmed to complete a memory transaction after receiving a first number of responses to a first data request.” Ex. 1014 ¶¶ D-17–D-18. This assertion, however, is conclusory, and does not sufficiently explain why the microprocessor must be programmed or exclude possibilities other than programming. See id.; PO Resp. 27. In particular, Dr. Horst’s original declaration testimony provides no discussion or explanation as to whether a microprocessor composed solely of hardwired logic would necessarily be programmed and whether the functionality described in Koster could not be implemented using hardwired logic. See Ex. 1014 ¶¶ D-17–D-18; PO Resp. 27.” slip op. at 34
Patent outcomesUS 7,296,121 mixedClaim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites PhillipsPatents in suitUS 7,296,121 - Commerce Bancshares, Inc. / Compass Bank et al. v. Intellectual Ventures II LLCSome claims unpatentablePTAB · Oct 21, 2015 · IPR2014-00801 · APJ Jennifer S Bisk · IPR · Final written decision
Claims 26, 28, and 30–32 are unpatentable as anticipated by Aucsmith; claim 33 was not shown unpatentable.
RulingsFinal written decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“National Bank of Omaha, filed a Petition (Paper 1, “Pet.”) requesting an inter partes review of claims 1–33 of U.S. Patent No. 6,715,084 B2 (Ex. 1001, “the ’084 patent”). On December 1, 2014, we instituted a review (Paper 7, “Decision to Institute” or “Dec.”) based upon Petitioner’s assertion that claims 26, 28, and 30–33 are unpatentable, under 35 U.S.C. § 102(b), as anticipated by Aucsmith.1 Dec. 18. Petitioner provides a Declaration from Dr. George Kesidis (Ex. 1003), and Patent Owner provides a Declaration from Dr. David Goldschlag (Ex. 2011). This is a Final Written Decision under 35 U.S.C. § 318(a). Based on the record presented, we are persuaded that Petitioner has shown by a preponderance of the evidence that claims 26, 28, and 30–32 are unpatentable. We are not persuaded that Petitioner has shown by a preponderance of the evidence that claim 33 is unpatentable.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“1. “anomaly” In the Decision to Institute, we construed the term “anomaly” as “a departure from the usual or expected; an abnormality or irregularity.” Dec. 7–8. Specifically, we agreed with Patent Owner’s assertion that this is the plain meaning of the term and is consistent with the specification of the ’084 patent. Id. at 7. For example, the ’084 patent states that “[a]nomaly detection systems look for statistically anomalous behavior . . . [s]tatistical scenarios can be implemented for user, dataset, and program usage to detect ‘exceptional’ use of the system.” Id. at 8 (citing Ex. 1001, 3:54–57). Neither party contests this construction. We discern no reason to deviate from this construction of “anomaly.”” slip op. at 6
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed
“evidence that Aucsmith discloses the detecting limitation as required. First, we are persuaded that the indirect detecting method of Aucsmith satisfies the detecting limitation. Aucsmith discloses that “server 104 can also use the possible security problems reported by all of the agents 106(1)–106(N) to help detect intrusion patterns, new intrusion techniques, and other security problems.” Ex. 1004 ¶ 13. As discussed, although we agree that server 104, using this method, is analyzing reports of “possible security problems” created by distributed agents, we are persuaded that this is within the scope of the claim because the reports include data entering the network. For example, Aucsmith discloses that “server 104 receives notice of the anomaly and can examine the anomaly,” and “[i]n individually examining the anomaly [reported by agent 106], the server 104, may, for example, search for particular information in the anomaly such as a network address previously noted as a security problem . . . .” Ex. 1004 ¶¶ 43, 45; see also id. ¶ 44 (“[S]erver 104 may examine the anomaly in conjunction with other information accessible by the server 104, e.g., information included in the collection of security data 118, information sent to the server 104 from other sources, information accessible to the server 104 through the network 108 and/or the corporate server 116, and other similar types of information.”). We are persuaded that Aucsmith discloses server 104 analyzing data entering the network, although this data may also have been analyzed previously by the distributed agents.” slip op. at 16
- Expert testimonyPatent owner expert creditedDecided for patent owner
“We agree with Patent Owner that Petitioner does not provide sufficient evidence that Aucsmith discloses “adjusting anomaly detection sensitivity and alarm thresholds” sufficient to show anticipation. Dr. Kesidis’s testimony just repeats the language from Aucsmith quoted above and concludes that “Aucsmith discloses each and every limitation of claim 33.” Ex. 1003 ¶¶ 178–81. Dr. Kesidis, however, does not explain why a person of ordinary skill would understand “modifying security procedures” to disclose “adjusts anomaly detection sensitivity and alarm thresholds.” Id. Dr. Goldschlag, on the other hand, states that “[o]ne of ordinary skill in the art would not have understood this term to disclose adjusting either anomaly detection sensitivity or alarm thresholds.” Ex. 2011 ¶ 62 (emphasis added). Thus, we are not persuaded that Petitioner has shown by a preponderance of the evidence that claim 33 is anticipated by Aucsmith.” slip op. at 22
Patent outcomesUS 6,715,084 mixedClaim construction§ 102 anticipationPatents in suitUS 6,715,084 - Square, Inc. v. Rem Holdings 3, LLCSome claims unpatentablePTAB · Jul 7, 2015 · IPR2014-00312 · APJ Denise M Pothier · IPR · Final written decision
Claims 1, 2, 6, 7, and 10–17 are unpatentable under §103 over Lekernel and Padilla, alone or with Wallner; claims 3–5, 8, and 9 are not shown unpatentable.
RulingsFinal written decision- Skill levelSkill level board ownDecided for petitioner
“We agree that the McLaughlin declaration does not outline specific qualifications of one skilled in the art. Ex. 1015 ¶ 9. However, Dr. McLaughlin states, and we agree, that “the level of ordinary skill in the art is evidenced by the prior art references.” Id. and Pet. Reply 3 (citing In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995)). We also agree with Petitioner that Patent Owner has unduly narrowed the qualifications of one of ordinary skill. See Pet. Reply 1. In particular, and in contrast with the above assertions, Patent Owner describes Mr. Bourdeauducq as an expert in the relevant field. PO Resp. 1 (stating “Sebastien Bourdeauducq (See Exhibit 2033), (and an actual expert in the Relevant Field)”). Yet, Mr. Bourdeauducq lacks several of the purported qualifications of an ordinarily skilled artisan that Patent Owner asserts. Pet. Reply 2. For example, Mr. Bourdeauducq was about eighteen years old when he wrote the Lekernel article, had no engineering degree, had about one week of experience with magnetic stripe card readers, and had a general consumer understanding of credit card processing. Id. (citing Ex. 1064, 12:14–15:20). Based on the record, we determine that the level of skill in the art is more aligned with a high school or first-year engineering student taking a class covering the topic of basic circuit analysis and having a general, consumer knowledge of magnetic card readers.4 Mr. Bourdeauducq, Dr. McLaughlin, Dr. Morley, and Mr. Wood all have these qualifications. Ex. 2033 ¶ 3 (referring to Exhibit A) and Ex. 1064, 15:16–20; Ex. 1015 ¶ 2 and Ex. 2035, 88:15–18; Ex. 2031 ¶¶ 6, 9; Ex. 2032 ¶¶ 7–8. As such, contrary to Patent Owner’s assertions, we disagree that the McLaughlin declaration should be given no weight. PO Resp. 11. Also, regardless of whether Dr. McLaughlin has immediate knowledge of certain details about magnetic card readers (e.g., card reader manufacturers, frequency characteristics of a read head signal when a card is swiped), we disagree that he is not qualified as an ordinarily skilled artisan. See PO Resp. 16, 19 (quoting portions from Ex. 2035); see Pet. Reply 1–2.” slip op. at 12
- Expert testimonyPetitioner expert creditedPatent owner expert creditedMixed
“We agree that the McLaughlin declaration does not outline specific qualifications of one skilled in the art. Ex. 1015 ¶ 9. However, Dr. McLaughlin states, and we agree, that “the level of ordinary skill in the art is evidenced by the prior art references.” Id. and Pet. Reply 3 (citing In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995)). We also agree with Petitioner that Patent Owner has unduly narrowed the qualifications of one of ordinary skill. See Pet. Reply 1. In particular, and in contrast with the above assertions, Patent Owner describes Mr. Bourdeauducq as an expert in the relevant field. PO Resp. 1 (stating “Sebastien Bourdeauducq (See Exhibit 2033), (and an actual expert in the Relevant Field)”). Yet, Mr. Bourdeauducq lacks several of the purported qualifications of an ordinarily skilled artisan that Patent Owner asserts. Pet. Reply 2. For example, Mr. Bourdeauducq was about eighteen years old when he wrote the Lekernel article, had no engineering degree, had about one week of experience with magnetic stripe card readers, and had a general consumer understanding of credit card processing. Id. (citing Ex. 1064, 12:14–15:20). Based on the record, we determine that the level of skill in the art is more aligned with a high school or first-year engineering student taking a class covering the topic of basic circuit analysis and having a general, consumer knowledge of magnetic card readers.4 Mr. Bourdeauducq, Dr. McLaughlin, Dr. Morley, and Mr. Wood all have these qualifications. Ex. 2033 ¶ 3 (referring to Exhibit A) and Ex. 1064, 15:16–20; Ex. 1015 ¶ 2 and Ex. 2035, 88:15–18; Ex. 2031 ¶¶ 6, 9; Ex. 2032 ¶¶ 7–8. As such, contrary to Patent Owner’s assertions, we disagree that the McLaughlin declaration should be given no weight. PO Resp. 11. Also, regardless of whether Dr. McLaughlin has immediate knowledge of certain details about magnetic card readers (e.g., card reader manufacturers, frequency characteristics of a read head signal when a card is swiped), we disagree that he is not qualified as an ordinarily skilled artisan. See PO Resp. 16, 19 (quoting portions from Ex. 2035); see Pet. Reply 1–2.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“§§ “Requisites,” “Hardware,” and “Improvements” and Ex. 1015 ¶¶ 39–42). Patent Owner does not dispute these findings related to Padilla or reasons to combine the references. See generally PO Resp. The record also reflects that conditioning signals within a circuit to achieve a desired result was known and, given the combined Lekernel/Padilla system, one skilled in the art would have conditioned signals sent from the card reader to the microphone input based on the cell phone’s characteristics. See Dec. on Inst. 12, 14–15 (citing Pet. 17–18 (discussing proving an analog signal in an acceptable processing range) and citing Ex. 1015 ¶ 29). In the Decision to Institute, we discussed cell phone characteristics, such as Padilla’s, and how these characteristics relate to whether signal attenuation is needed for the phone’s input. See Dec. on Inst. 14 (citing Ex. 1015 ¶ 29). For example, Padilla suggests using phones other than “the Siemens MC60” to turn a mobile phone into a magnetic stripe reader. Ex. 1010 § “Foreword.” Accordingly, based on the cell phone selected and its characteristics, we determine that one skilled in the art would have recognized that conditioning signals inputted and received by a cell phone’s microphone input may be necessary. Dec. on Inst. 12 (citing Pet. 17), 14. Specifically, we concluded that “an ordinarily skilled artisan would have recognized that the characteristics of the cell phone’s microphone input impact whether attenuation between the read head and the cell phone’s microphone input is needed.” Dec. on Inst. 14; see also Pet. 21–22, 24–25. The record includes two particular examples where one skilled in the art would have added resistance to Lekernel’s circuit and attenuated the signal received by the phone of the combined Lekernel/Padilla system. See Dec. on Inst. 14 (citing to Ex. 1015 ¶ 29). First, Dr. McLaughlin describes a known technique of providing the microphone input an acceptable level for the cell phone using a voltage divider by placing a resistor at the output of coil 24 or the read head. Ex. 1015 ¶ 16. To be clear, in this scenario, the resistor would be added outside Figure 2’s amplifier in Lekernel to achieve a voltage drop and to “to ensure the signal falls within a range of signals detectable and usable by a cell phone,” preventing damage to a recipient device. See Ex. 1015 ¶¶ 9, 14. Dr. McLaughlin further discusses impedance matching the card reader circuit with the cell phone’s microphone input when the cell phone has internal amplification. Dec. on Inst. 14 (citing Ex. 1015 ¶ 29); Ex. 1015 ¶¶ 28–29. Given the background knowledge of an ordinary artisan, one skilled in the art would have understood to add resistance to the combined Lekernel/Padilla system (e.g., after the amplifier in Lekernel’s Figure 2) for attenuating the signal sent to the microphone input in order to achieve an acceptable level for the cell phone and/or to impedance match the read head device with the cell phone.” slip op. at 18
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“In the context of this proceeding, we do not agree with Patent Owner’s contention that when the marketed product embodies and is coextensive with the claimed features, a secondary consideration factor (e.g., commercial success) is a presumptively attributed to the claimed invention. PO Resp. 49–50. For example, In re Huang, 100 F.3d 135 (Fed. Cir. 1996) states “that [commercial] success is relevant in the obviousness context only if there is proof that the sales were a direct result of the unique characteristics of the claimed invention-as opposed to other economic and commercial factors unrelated to the quality of the patented subject matter.” Id. at 140 (emphasis added); see also In re Huai-Hung Kao, 639 F.3d 1057, 1068 (Fed. Cir. 2011) (indicating there is no nexus where the evidence results from something other than what is both claimed and novel in the claim). Thus, in establishing a nexus with a secondary consideration in this proceeding, Patent Owner needs to show a specific feature of the claim is attributable to the commercial success of Square’s card reader and not just that the device is coextensive with the claimed features. Patent Owner points to an interview of Mr. Jack Dorsey, described as Square’s CEO. PO Resp. 51–52. In the interview and in response to asking what Square was, Mr. Dorsey states “OK, well [ah] Square is [ahh] a very simple little device that plugs into your iPhone or Android device and allows anyone to accept credit card immediately wherever they are.” PO Resp. 52 (citing Ex. 2047). Patent Owner asserts that this discussion establishes a nexus to the claimed “output plug” feature. Id. Yet, this statement just describes the plug and does not relate the plug itself to any of Square’s commercial success. The statement is also vague as how the device plugs into a phone, such that there is an insufficient tie to the recited “output plug, adapted to be inserted into a jack associated with a microphone input associated with a cell phone” in claim 1. Ex. 1001, 6:66– 67 (emphasis added). Although stating the reader is “very simple” and “little,” Patent Owner has not demonstrated these features are claimed and are a novel or unique feature of the claims — a requisite needed to outweigh the case for obviousness based on commercial success.” slip op. at 25
Patent outcomesUS 8,584,946 mixed§ 102 anticipation§ 103 obviousnessPatents in suitUS 8,584,946
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.