• Shure Incorporated v. Clearone, Inc.No claims unpatentable
  PTAB · Feb 14, 2022 · PGR2020-00079 · APJ David C Mckone · PGR · Final written decision

  Claims 1–24 were not shown unpatentable because the petitioner failed to prove the asserted §112 grounds and obviousness grounds by a preponderance of the evidence.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “As we stated in the Institution Decision (at 30), Petitioner’s proposal is reasonable in light of the descriptions in the ’653 patent and prior art, and is supported by expert testimony. We further find that Patent Owner’s proposed addition, that a skilled artisan would have had experience with digital signal processing, is consistent with the descriptions in the ’653 patent and prior art. Because the parties do not contend that their disagreement over “at least” has any bearing on this proceeding, we need not evaluate whether a skilled artisan might have had more than three years of work experience or whether that would lead to vagueness. Instead, we adopt Petitioner’s proposal, with Patent Owner’s addition, and omit “at least”: A skilled artisan would have possessed: (i) a bachelor’s degree in mechanical engineering, electrical engineering, physics, or acoustical engineering that included coursework on the design of acoustic and/or antenna arrays, phased arrays, and/or beamforming; or (ii) three years of work experience in the field of directional microphone arrays; and the skilled artisan would have had experience with digital signal processing.” slip op. at 10

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner

    “We disagree with Patent Owner that the claim limitation at issue here specifies a single device that has multiple properties. Rather, claim 1 broadly recites “a ceiling tile combined with the beamforming microphone array.” We agree with Petitioner that the plain language of claim 1 does not require that the entire beamforming microphone array is physically integrated into a single ceiling tile, as combining a ceiling tile and a microphone array is broader than physically installing the microphone array in the ceiling tile. Nor can the language of claim 1 reasonably be read to exclude combining more than one ceiling tile with the microphone array. Where claim 1 assigns specific properties to a ceiling tile, it does so expressly, reciting “the ceiling tile being sized and shaped to be mountable in a drop ceiling in place of at least one of a plurality of ceiling tiles included in the drop ceiling.” Thus, the plain language of claim 1 requires at least one ceiling tile combined in some way with a beamforming microphone array, and each ceiling tile (if there is more than one) is a particular size and shape.” slip op. at 13

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached

    “Second, Patent Owner argues that our construction “should reflect the fact the microphones of a [beamforming microphone array] are located in positions relative to each other, by design, to establish constructive interference in one or more preferred beam directions.” PO Resp. 18–19 (citing Ex. 2013 ¶¶ 31–37, 48). Petitioner responds that claim 1 recites “beamforming” broadly and that Patent Owner attempts to limit “beamforming” to one technique out of several, including techniques that determine time delay between microphones rather than knowing the distances between the microphones. Reply 3 (citing Ex. 1029 ¶¶ 11–21). The parties’ competing proposals here are directed to Petitioner’s allegations that CTG System and Levit render the challenged claims obvious. However, as explained below, Petitioner has not established whether CTG System performs beamforming under either proposed construction. Thus, we need not resolve the parties’ claim construction dispute. See Nidec, 868 F.3d at 1017; Vivid Techs., 200 F.3d at 803.” slip op. at 19

  • Disclosure Requirements (§112) › Definiteness (Nautilus)DefiniteNot shown unpatentable

    “Despite an obligation to identify in the Petition the evidence that supports its indefiniteness allegations,5 Petitioner largely failed to discuss the Specification. Pet. 30; see also Dec. 41 (“Despite enumerating five techniques that it contends exemplify ‘adaptive acoustic processing,’ Petitioner does little to address the description of those techniques in the Specification.”). In one passage cited by Petitioner, the Specification states that an “embodiment of Array 116 may include adaptive acoustic processing that automatically adjusts to the room configuration for the best possible audio pickup.” Ex. 1001, 6:13–16. Petitioner argues that this description “lacks any disclosure providing objective boundaries of the claim’s scope, either through definitions or working examples.” Pet. 30. Petitioner also acknowledges that the Specification “discusses acoustic echo cancellation (in general) as an additional feature from adaptive acoustic processing,” and admits that a skilled artisan “would have recognized that echo cancellation processing occurring automatically in response to a room configuration would be a meaning of adaptive acoustic processing.” Id. at 35 (citing Ex. 1001, 6:5–22). However, Petitioner does not discuss the rest of the Specification in the Petition. Petitioner should have addressed in the Petition the express descriptions of Dr. Vipperman’s enumerated examples of adaptive acoustic processing in the Specification in order to support its 5 Our rules require Petitioner to make its case in the Petition, including identifying “[h]ow the challenged claim is to be construed,” “the specific part of the claim that fails to comply with the statutory grounds raised and . . . how the identified subject matter fails to comply with the statute,” and “specific portions of the evidence that support the challenge.” 37 C.F.R. § 42.204(b). Indeed, “[t]he Board may exclude or give no weight to the evidence where a party has failed to state its relevance or to identify specific portions of the evidence that support the challenge.” Id. at § 42.204(b)(5). otherwise conclusory statement that “[n]one of these techniques are described in the specification,” Pet. 32. If it was Petitioner’s position that these express descriptions were nevertheless not examples of adaptive acoustic processing, Petitioner should have made those arguments in the Petition.” slip op. at 24

  Patent outcomesUS 10,728,653 not shown unpatentable
  Claim construction§ 103 obviousness§ 112 disclosurecites Graham
  Patents in suitUS 10,728,653
• Apple Inc. v. Papst Licensing GmbH & Co. KGNo claims unpatentable
  PTAB · Apr 13, 2018 · IPR2016-01863 · APJ Miriam L Quinn · IPR · Final written decision

  The Board held claims 1, 4, 6-8, 10, 11, 14, 20, 21, 23, 30, 34, and 35 not shown unpatentable under the asserted § 103 grounds for failure to establish a sufficient reason to combine …

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We find the Zadok testimony in this regard persuasive as it presents more than just the educational level of a person of ordinary skill in the art. Petitioner’s proposal is more helpful as it identifies the familiar objects of the technology used by a person of ordinary skill at the time of the invention: operating systems (e.g., MS-DOS, Windows, Unix) and their associated file systems (e.g., a FAT file system), device drivers for computer components and peripherals (e.g., mass storage device drivers), and communication interfaces (e.g., SCSI and PCMCIA interfaces). Ex. 1003 ¶ 28. We, therefore, determine that Petitioner’s level of ordinary skill in the art is appropriate.” slip op. at 11

  • Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner

    “required to enable the transfer of files from the ION node to the workstation. In this case, we have testimony from Petitioner’s expert opining that the emulation of the ION node as a disk would lead a person of ordinary skill in the art to understand Pucci as accomplishing the file transfer using “existing SCSI hard disk drivers.” Ex. 1003 ¶ 133. On the other hand, we have testimony of Mr. Gafford that explains Pucci’s workstation program as being involved in the request of the A-to-D converted data by “implement[ing] specific functions by enabling the reading or writing of specific block addresses within the ION drive.” Ex. 2006 ¶ 65. That is, Dr. Zadok’s view of Pucci is that once the ION system is set up to emulate a hard disk, no other software is required to transfer data. In contrast, Mr. Gafford’s testimony does not negate Pucci’s use of the SCSI protocol, but ascribes to the workstation application control over the data read, such that the software is required to enable the transfer data. In this regard, we credit the testimony of Mr. Gafford over the testimony of Dr. Zadok, as it is more consistent with the disclosure of Pucci. Velander v. Garner, 348 F.3d 1359, 1371 (Fed. Cir. 2003) (stating that it is “within the discretion of the trier of fact to give each item of evidence such weight as it feels appropriate”); see also, In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) (“[T]he Board is entitled to weigh the declarations and conclude that the lack of factual corroboration warrants discounting the opinions expressed in the declarations.”). As we stated above with regard to the file system limitation, Pucci’s principle of operation” slip op. at 41

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable

    “In view of Patent Owner’s arguments and evidence, we are not persuaded that a person of ordinary skill in the art would have had reason to combine the teachings of Pucci and Kepley, as asserted by Petitioner, to achieve the challenged claims. Our determination is based on two findings: a) First, we determine that Pucci does not teach or suggest a reason for the use of a file system for storing digitized voice messages at the ION node; and b) Second, we determine that achieving computer-to-computer file transfer, as taught by Kepley, and the “traditional” nature of the substitution proffered by Petitioner, are not sufficient motivations to modify Pucci, in light of the changes to Pucci that would impermissibly alter Pucci’s principle of operation.” slip op. at 21

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightDecided for patent owner

    “Petitioner also argues that the ’746 patent works the same way as Pucci in this regard, and, therefore, buffering in real time could be handled as a file even though there is no file at the acquisition time. Reply, 8; Tr. 7 Claim 1 of the ’746 patent, for instance, requires that the “digitized analog data is stored in a file system of the data storage memory as at least one file of digitized analog data,” and Petitioner has identified the “digitized analog data” as the data from the A-to-D converters. Pet. 2728 (emphasis omitted). 24:1221. This argument risks analyzing Pucci in hindsight, with the knowledge of what is disclosed in the ’746 patent. It would be improper, absent any other evidence, for us to rely on the ’746 patent disclosure regarding real-time input to ascertain whether Pucci suggests handling its raw data in the same way. See Nike, Inc. v. adidas AG, 812 F.3d 1326, 1344 n.5 (Fed. Cir. 2016) (“We are troubled by the Board’s citation to the ’011 patent’s written description and the corresponding appearance of using the ’011 patent to find claim 49 unpatentable.”). Instead, as stated above, we rely on what Pucci teaches to a person of ordinary skill in the art at the time of the invention, without the benefit of the ’746 patent disclosure. W.L. Gore & Associates, Inc. v. Garlock, Inc., 721 F.2d 1540, 1553 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984) (“It is difficult but necessary that the decisionmaker forget what he or she has been taught . . . about the claimed invention and cast the mind back to the time the invention was made (often as here many years), to occupy the mind of one skilled in the art.”).” slip op. at 25

  Patent outcomesUS 8,504,746 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,504,746
• RPX Corporation v. Chanbond LLCNo claims unpatentable
  PTAB · May 25, 2017 · IPR2016-00234 · APJ Jacqueline T Harlow · IPR · Final written decision

  RPX did not prove claims 1–31 unpatentable under § 103: the record lacked an adequate reason to combine the cited references.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownOther

    “The broadest reasonable interpretation of the claim terms “digital stream” and “digital information stream” includes no requirement, however, that the packets of the recited stream must be differentiated from other packets by more than destination address. As explained above, independent claims 1 and 19 of the ’822 patent describe the “digital stream” as the product of the combiner combining demodulated channels identified as having information addressed to an addressable device. Ex. 1001, 12:29–40, 15:11–23. Claims 1 and 19 additionally state that the digital stream is output to the addressable device. Id. Neither claim 1 nor claim 19 recites further detail concerning the characteristics of the packets of the “digital stream.” Id. Moreover, the dependent claims of the ’822 patent suggest that a “stream” may include unrelated content from different sources that is 9 addressed to different destinations. For example, claims 14 and 28, which depend indirectly from claims 1 and 19, respectively, recite that the “combiner is configured to combine the digital information demodulated by the wireless demodulator unit with digital information received from at least one addressable device, and output the combined digital information as the outgoing digital information stream to the wideband distribution unit.” Ex. 1001, 14:14–19, 16:49–54. Thus, by their plain language, these claims contemplate that the digital information to be combined may be received from more than one addressable device, and remain agnostic regarding the relationship between the packets in a stream, or the ultimate destination of those packets. See Ex. 1020, 96:11–97:8 (testimony by Dr. Nettles that claims 13 and 14 of the ’822 patent refer to a “digital information stream” that may include packets from different devices, relating to different content, going to different destinations). The specification of the ’822 patent is likewise consistent with an understanding of the claim terms “digital stream” and “digital information stream” as being free from any requirement that the packets of the recited stream be differentiated from other packets by more than destination address. Aside from the claims themselves, the specification of the ’822 patent uses the term “digital stream” in only a single instance, to describe signal throughput (the specification nowhere uses the term “digital information stream”). Ex. 1001, 10:10–14. The specification explains that “the channel width can, for example, be increased from 6 MHz per channel to 12 MHz per channel in order to accommodate, for example, the” slip op. at 9

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningNo construction neededOther

    “2. Other Claim Terms In the Decision on Institution, we concluded that the claim terms “when,” “detector,” “additive signal,” and “channel identification information,” for which RPX proffered constructions in its Petition (Pet. 7– 9), did not require express construction, and should be given their plain and ordinary meaning. Dec. 6. Neither RPX nor ChanBond challenges our determination that the plain and ordinary meaning of each of these terms applies in the instant proceedings. Pet. Reply 1 (“RPX agrees with the Board that affording those terms their ordinary and customary meaning is appropriate for the purposes of these proceedings.”); PO Resp. 21 (“[T]he term ‘when’ requires only its ‘ordinary and customary meaning.’ . . . [T]he term ‘detector’ is used in accordance with its regular and customary meaning[.]”), 25 (“Insofar as this construction is consistent with the ‘ordinary and customary meaning’ of this term, Patent Owner agrees, however, it should not be limited unnecessarily by the cited examples from the specification referenced by Petitioner.”), 26 (“[T]he claim is plain in meaning as written, no further construction is necessary.”). Accordingly, we conclude that none of the claim terms “when,” “detector,” “additive signal,” and “channel identification information,” requires express construction, and afford each term its plain and ordinary meaning.” slip op. at 12

  • BurdenNot shown unpatentable

    “We find that the preponderance of the evidence does not support a conclusion that an artisan of ordinary skill would have had reason to combine the network gateway of Rakib with the protocols and formatting disclosed in DOCSIS 1.1.4. We are mindful that obviousness inquiry requires “an expansive and flexible approach.” KSR, 550 U.S. at 415. Such analysis “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” Id. at 418. It is axiomatic, however, that a determination of obviousness “cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” Kahn, 441 F.3d at 988.” slip op. at 18

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable

    “RPX does not offer adequate explanation as to why a relevant skilled artisan would have sought to combine Rakib with DOCSIS 1.1.4, when Rakib is addressed to DOCSIS 1.2, and makes no mention of DOCSIS 1.1.4. Nor does RPX explain why an ordinarily skilled artisan would have understood Rakib’s references to “DOCSIS 1.2 compatible,” “DOCSIS modem,” or “DOCSIS data” as suggesting combination with DOCSIS 1.1.4. In this regard, we highlight that RPX does not present evidence sufficient to establish any relationship between the cited portions of DOCSIS 1.1.4 and DOCSIS 1.2, or otherwise demonstrate a rationale for combining Rakib with 20 DOCSIS 1.1.4. Rather, RPX relies solely on Mr. Koperda’s unsupported, conclusory testimony (in a footnote) that any differences between DOCSIS 1.1.4 and DOCSIS 1.2 are “not relevant to the downstream/upstream RF channel management” (Ex. 1002 ¶ 104 n.3); testimony to which we give little weight (37 C.F.R. § 42.65(a)).” slip op. at 20

  Patent outcomesUS 7,941,822 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,941,822
• Hyundai Mobis Co., Ltd. / Mobis Alabama, L.L.C. v. Autoliv Asp, Inc.No claims unpatentable
  PTAB · Jan 6, 2016 · IPR2014-01005 · APJ Joni Y Chang · IPR · Final written decision

  Claims 1, 2, 4, 6, 8–12, 14, 16, and 18–20 were not shown unpatentable under § 103 because the combination did not teach or render obvious the within-airbag limitation.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner

    “cinch tube,” as distinct elements, and its proposed claim construction would clarify that the “interior of the inflatable airbag cushion” does not include any portion of the interior of the cinch tube. Pet. 10–12. We decline to adopt Petitioner’s proposed construction, which would import an extraneous feature (e.g., “volume”) into the claim, and would not provide further clarity, 10 as alleged by Petitioner. See E.I. du Pont de Nemours & Co. v. Phillips Petroleum Co., 849 F.2d 1430, 1433 (Fed. Cir. 1988). Rather, in light of the Specification, we agree with Patent Owner that the claim term “the terminal end is at least partially within the interior of the inflatable airbag cushion” should be construed as “the terminal end of the cinch tube crosses the theoretical plane into the interior of the inflatable airbag cushion.”5 Tr. 39:14–20. slip op. at 10

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner

    “means for venting gas out of the airbag” and “means for restricting gas venting”—as means-plus-function limitations, invoking 35 U.S.C. § 112, ¶ 6.6 Pet. 12–13. Petitioner proposes the claim constructions for the meansplus-function elements and Patent Owner does not dispute those proposed claim constructions. Pet. 12–13; Prelim. Resp. 27, n. 8. In the Decision on Institution, we agreed with Petitioner that those claim elements are written in means-plus-function format and fall within the purview of § 112, ¶ 6, and adopted Petitioner’s claim constructions. Dec. 10–11. Subsequent to institution, neither party offers a different claim construction as to these claim elements. See generally Reply; PO Resp. 17–22. 5 The “theoretical plane” here would be the plane defined by the aperture in the airbag from which the cinch tubes extend. 6 Section 4(c) of the AIA re-designated § 112, ¶ 6, as § 112(f). Pub. L. No. 112-29, 125 Stat. 284, 296 (2011). Because the ’450 patent has a filing date before September 16, 2012 (effective date of § 4(c)), we will refer to the pre-AIA version of § 112. 11 Based on this entire record, we also discern no reason to modify our prior claim constructions, which are reproduced in the table below. Claim elements (recited slip op. at 11

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “As Petitioner notes, the claims of the ’450 patent are not limited to frontal airbags. Reply 2; Ex. 1001, 5:20–8:29. The ’450 patent also is said to be related generally to the field of automotive protective systems, specifically inflatable airbags for automobiles. Ex. 1001, 1:6–9. The Specification of the ’450 patent further states: As those of skill in the art will appreciate, the principles of the invention may be applied to and used with a variety of airbag deployment systems including frontal driver and passenger airbags, knee airbags, overhead airbags, curtain airbags, and the like. Thus, the present invention is applicable to airbag cushions of various shapes and sizes. Id. at 1:57–63 (emphasis added). Based on the written description of the ’450 patent, we determine that the relevant field is not limited to frontal airbag design and development, and that persons with ordinary skill in the art would not be only those who had “at least six years of experience in the design, development, and testing of frontal airbags,” as alleged by Patent Owner (PO Resp. 2; Ex. 2015 ¶ 22).” slip op. at 14

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “We determine that Patent Owner has not articulated a persuasive reason for giving Ms. Balavich’s Declaration (Ex. 1017), as a whole, little or no weight. We have reviewed Ms. Balavich’s testimony and cross-examination testimony. Exs. 1002, 2017. Ms. Balavich’s qualification and experience are sufficient to qualify her as an expert in the pertinent field under Federal Rule of Evidence 702. See, e.g., Ex. 1002 ¶¶ 4–12 (“I received a Bachelor of Science degree in Mechanical Engineering. . . . I am a named inventor on seven (7) United States patents for automotive airbag technology. . . . I have authored or co-authored five (5) publications, including technical papers, articles, and conference papers on automotive safety technologies.”). As we discuss above, the relevant field is not limited to frontal airbags, as alleged by Patent Owner, but rather is related generally to the field of automotive protective systems, specifically inflatable airbags for automobiles, as described by the Specification of the ’450 patent. Ex. 1001, 1:6–9. Therefore, the relevant field as well as the description in the ’450 patent are broad enough to encompass Ms. Balavich’s qualifications. In addition, there is no requirement of a perfect match between the expert’s experience and the relevant field. SEB S.A. v. Montgomery Ward & Co., 594 F.3d 1360, 1373 (Fed. Cir. 2010). 15 For the reasons stated above, we decline to accord Ms. Balavich’s Declaration, as a whole, little or no weight, as urged by Patent Owner. Rather, we exercise our discretion to determine the appropriate weight to be accorded to the evidence presented, including expert opinion, based on the disclosure of the underlying facts or data upon which that opinion is based.” slip op. at 15

  Patent outcomesUS 7,347,450 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,347,450
• Groupon, Inc. v. Blue Calypso, LLCNo claims unpatentable
  PTAB · Dec 17, 2014 · CBM2013-00044 · APJ Barbara A Benoit · CBM · Final written decision

  Claims 4-9 were not shown unpatentable because Ratsimor was not established as prior art; cancellation of claims 1-3 and 10-13 was granted.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for petitioner

    “customary meaning, as would be understood by one of ordinary skill in the art in the context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Any special definition for a claim term must be set forth in the specification with reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). We must be careful not to read a particular embodiment appearing in the written description into the claim if the claim language is broader than the embodiment. In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). We construe the terms “incentive program,” “incentive,” and “incentivizing” in accordance with these principles.” slip op. at 9

  • PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, grantedGranted

    “C. Patent Owner’s Motion to Amend Patent Owner’s Motion to Amend (Paper 18) is before us for consideration. In the motion, Patent Owner requests cancellation of claims 1-3 and 10-13 of the ’646 patent. The cancellation of these claims is not based on any contingency. There is no indication, for example, that claims 1-3 and 10-13 should be cancelled only if the claims are determined unpatentable. Rather, the Motion to Amend leaves no doubt that Patent Owner unequivocally requests cancellation of claims 1-3 and 10-13. For these reasons, we grant Patent Owner’s request to cancel claims 1-3 and 10-13 of the ’646 patent. Because Patent Owner requested cancellation of claims 1-3 and 10-13, not based on any contingency, Patent Owner has waived any issues with respect to claims 1-3 and 10-13, and, therefore, we need not address the patentability of those claims.” slip op. at 13

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedReference not prior artNot shown unpatentable

    “prior art printed publication “involves a case-by-case inquiry into the facts and circumstances surrounding the reference’s disclosure to members of the public.” In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). The key inquiry is whether the reference was made “sufficiently accessible to the public interested in the art” before the critical date. In re Cronyn, 890 F.2d 1158, 1160 (Fed. Cir. 1989). “A given reference is ‘publicly accessible’ upon a satisfactory showing that such document has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it . . . .” Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 1378 (Fed. Cir. 2006). Indexing is not “a necessary condition for a reference to be publicly accessible,” but is among many factors that may bear on public accessibility. In re Lister, 583 F.3d 1307, 1312 (Fed. Cir. 2009).” slip op. at 16

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “3. The Ratsimor Paper Is Not Prior Art For the foregoing reasons, we determine that Petitioner has not demonstrated, by a preponderance of the evidence, that the Ratsimor paper is a printed publication within the meaning of 35 U.S.C. § 102(b) and, therefore, the Ratsimor paper is not prior art to the claims of the ’646 patent. Therefore, Petitioner may not rely upon the Ratsimor paper for its asserted grounds of patentability under 35 U.S.C. § 103(a). Accordingly, we conclude that Petitioner has not demonstrated that (i) claims 4 and 5 would have been obvious over the Ratsimor paper and Paul, (ii) claims 6-8 would have been obvious over the Ratsimor paper, Paul, and Kitaura, or (iii) claim 9 would have been obvious over the Ratsimor paper, Paul, Hall, and MacEachren.” slip op. at 23

  Patent outcomesUS 8,452,646 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 8,452,646
• Avaya Inc. / Dell Inc. et al. v. Network-1 Security Solutions, Inc.No claims unpatentable
  PTAB · May 22, 2014 · IPR2013-00071 · APJ Justin T Arbes · IPR · Final written decision

  Claims 6 and 9 were not shown unpatentable because Matsuno did not establish the claimed low level current, and the obviousness ground relied on that same missing teaching.

  RulingsFinal written decision

  • Expert testimonyPatent owner expert creditedDecided for patent owner

    “Dr. Knox in his analysis. For example, Avaya contends that Dr. Knox’s assumption for line resistance (247 ohms) and subscriber service area (4945 feet) are lower than the ISDN standards for North America (1300 ohms and 18,000 feet, respectively). Reply 2 (citing Ex. 1041 ¶¶ 18-23). Dr. Knox, however, explains in his declaration how he calculated the line resistance and subscriber service area, based on figures from Matsuno itself and other assumptions that Avaya does not challenge. Ex. 2015 ¶¶ 111-14. Avaya does not explain sufficiently why the identified standards would apply necessarily to the system disclosed in Matsuno. Further, Matsuno does not disclose the actual length for its digital subscriber line. Thus, some assumption must be made, and we are not persuaded that Dr. Knox’s assumptions are unreasonable under the circumstances. Avaya further argues that Dr. Knox’s assumption of a maximum power requirement of 1.1 watts for the NT1 and DTE is unreasonable because it is based on a specification for a Cisco “Class 1” device not introduced until 15 years after Matsuno. Reply 2 (citing Ex. 1041 ¶¶ 24-25). In addition, Avaya contends that Dr. Knox admitted on cross-examination that Cisco “Class 2” or “Class 3” devices would not be “guaranteed” to operate based on Matsuno’s low voltage power supply. Id. at 2-3 (citing Ex. 1041 ¶¶ 27-31; Ex. 1028 at 54:12-24). Although Dr. Knox bases his “conservative” power requirement assumption on a device introduced later in time, we cannot say that the assumption is incorrect or unfounded given the lack of detailed disclosure in Matsuno. Again, because Matsuno does not state expressly the power required by the NT1 and DTE, some assumption must be made. Avaya does not explain sufficiently why the “Class 2” and “Class 3” devices would be any better for making that assumption than the “Class 1” device identified by Network-1. Nor did Avaya and Dr. Zimmerman include any such analysis in the Petition and initial declaration. For the reasons explained above, we find Dr. Knox’s analysis persuasive. We also note, as a final matter, that none of the points raised by Dr. Zimmerman in his reply declaration (Exhibit 1041) were made in his initial declaration (Exhibit 1011) served with the Petition, or in the Petition itself. Unlike Dr. Knox, Dr. Zimmerman did not analyze the disclosure of Matsuno in detail and prepare a technical analysis explaining why the identified current is or is not a “low level current.”8 We have reviewed Dr. Zimmerman’s new analysis only to determine whether it refutes the points made by Dr. Knox in his declaration. We have not considered it as part of Avaya’s attempt to make out a prima facie case of unpatentability of the challenged claims. See Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,767 (Aug. 14, 2012); Rules of Practice for Trials Before the Patent Trial and Appeal Board and Judicial Review of Patent Trial and Appeal Board Decisions; Final Rule, 77 Fed. Reg. 48,612, 48,620 (Aug. 14, 2012) (“Oppositions and replies may rely upon appropriate evidence to support the positions asserted. Reply evidence, however, must be responsive 8 Dr. Zimmerman states in his reply declaration that, in forming his opinion that Matsuno discloses a “low level current,” he “applied the Board’s broadest reasonable construction” from our Decision on Institution in this proceeding. Ex. 1041 ¶ 16. Dr. Zimmerman, however, did not provide an interpretation for “low level current” in his initial declaration, and our Decision on Institution was entered after Avaya filed Dr. Zimmerman’s initial declaration. and not merely new evidence that could have been presented earlier to support the movant’s motion.”).” slip op. at 27

  • BurdenNot shown unpatentable

    “shown, by a preponderance of the evidence, that Matsuno discloses “delivering a low level current from said main power source to the access device over said data signaling pair,” as recited in claim 6. It is Avaya’s burden to establish that Matsuno discloses the “low level current” step. See 35 U.S.C. § 316(e); Corning Glass Works v. Sumitomo Elec. U.S.A., Inc., 868 F.2d 1251, 1255-56 (Fed. Cir. 1989) (“Anticipation requires that every limitation of the claim in issue be disclosed, either expressly or under principles of inherency, in a single prior art reference.”). Avaya’s position, as argued in the Petition, is that the current generated from low voltage V2 (-48 V) in Matsuno is a “low level current.” Pet. 20-21, 24. Thus, Avaya must show sufficient proof, amounting to a preponderance of the evidence, that such current is a “low level current,” which we interpret to mean a current (e.g., approximately 20 mA) that is sufficiently low that, by itself, it will not operate the access device. Avaya has not done so.” slip op. at 15

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “device over said data signaling pair,” as recited in claim 6. It is Avaya’s burden to establish that Matsuno discloses the “low level current” step. See 35 U.S.C. § 316(e); Corning Glass Works v. Sumitomo Elec. U.S.A., Inc., 868 F.2d 1251, 1255-56 (Fed. Cir. 1989) (“Anticipation requires that every limitation of the claim in issue be disclosed, either expressly or under principles of inherency, in a single prior art reference.”). Avaya’s position, as argued in the Petition, is that the current generated from low voltage V2 (-48 V) in Matsuno is a “low level current.” Pet. 20-21, 24. Thus, Avaya must show sufficient proof, amounting to a preponderance of the evidence, that such current is a “low level current,” which we interpret to mean a current (e.g., approximately 20 mA) that is sufficiently low that, by itself, it will not operate the access device. Avaya has not done so.” slip op. at 16

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable

    “In its Petition, Avaya relies on De Nicolo as teaching the “providing” step of claim 6, including the claimed devices of a data node, access device, data signaling pair, and power sources. Pet. 36-42. Avaya relies on Matsuno as teaching the remaining steps, including “delivering a low level current from said main power source to the access device over said data signaling pair.” Id. at 36-43. Avaya does not contend that delivery of a “low level current” would have been obvious in view of the combination of De Nicolo and Matsuno. For the reasons explained above in Section II.B, we are not persuaded that Matsuno teaches delivery of a “low level current.” Therefore, Avaya has not shown, by a preponderance of the evidence, that claim 6, and claim 9 depending therefrom, would have been obvious over De Nicolo and Matsuno.” slip op. at 30

  Patent outcomesUS 6,218,930 not shown unpatentable
  § 102 anticipation§ 103 obviousness
  Patents in suitUS 6,218,930

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