• Sierra Wireless, Inc. / Thales Dis Ais Deutschland GmbH v. Sisvel International S.A.Some claims unpatentable
  PTAB · May 28, 2024 · IPR2020-01099 · APJ Monica S Ullagaddi · IPR · Remand

  On remand, claims 5–7 and 10 are unpatentable as obvious over Chen; claim 8 was not shown unpatentable over the asserted grounds.

  RulingsRemand decision

  • RemandOther

    “with the Federal Circuit. Paper 53. Petitioner subsequently filed a Notice of Cross-Appeal. Paper 54. The Federal Circuit rendered its Decision on October 6, 2023 (Paper 58) and entered its mandate on November 29, 2023 (Paper 57). In its Decision, the Federal Circuit vacated our conclusion regarding the “means for detecting” limitation recited in claims 5 and 10. Sisvel, 82 F.4th at 1364, 1370. The Court ordered that, on remand, we “must conduct the analysis appropriate for Noah group two, including whether any of the protocols are clearly linked or associated with ‘the function recited in the claim,’[ ] and whether they are ‘adequate structure for performing this function.’” Id. at 1370 (citing Noah Systems, Inc. v. Intuit Inc., 675 F.3d 1302, 1313 (Fed. Cir. 2012)). The Court further held that “the Board should have considered the knowledge of a skilled artisan,” and specifically, Dr. Kakaes’s expert testimony, “to assess whether the protocol name sufficiently discloses an understood algorithm corresponding to the means-plus-function limitation.” Id. at 1369. The Court also held that we “must either (1) determine whether the claim[s] [are] indefinite and then whether such indefiniteness renders it impossible to adjudicate a prior-art challenge on the merits, or (2) resolve the prior art challenge to the patentability of the claims despite the potential indefiniteness of the means-plus-function term.” Id. at 1370. After the Federal Circuit issued its mandate, we ordered the parties to brief these issues including “the supported construction of the ‘means for detecting’ claim term, as well as the attendant patentability issues of indefiniteness and impossibility as relevant to this claim term.” Paper 59, 3. Petitioner filed an Opening Brief on Remand (Paper 63, “Rem. Pet. Br.”). Patent Owner thereafter filed a Response to Petition (Paper 64, “Rem. PO” slip op. at 4

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “In its Patent Owner’s Response, Patent Owner states: [A] person having ordinary skill at the time of invention— September 10, 1999—in the relevant art would be one with a bachelor’s degree in electrical engineering or computer sciences and telecommunications networks, along with at least three or more years of practical experience in the field. A combination of more experience in the field and less education or more education and less experience in the field would also suffice. PO Resp. 7 (citing Inst. Dec. 9; Ex. 2001 ¶ 27). In our original Final Written Decision, we determined that: Although there are differences between the contentions of the parties as to the level of ordinary skill in the art, the parties have not informed us of a dispute that needs to be resolved. We do not find it necessary to resolve the differences between the contentions of the parties as to the appropriate level of ordinary skill in the art because the findings and conclusions rendered in this Decision do not turn on either proposed definition. We determine, on this record, that the level of ordinary skill proposed by Patent Owner is consistent with the ’561 patent and the asserted prior art. As such, we adopt Patent Owner’s proposed definition for a person of ordinary skill in the art. Final Dec. 10. Based on our review of the entire record, we are not apprised of nor can we ascertain any reason to deviate from this determination. As such, in this Final Written Decision on remand, we maintain the definition of level of ordinary skill in the art from the original Final Written Decision.” slip op. at 12

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

    “Claim limitations that include the terms “means” or “means for” are presumed to invoke 35 U.S.C. § 112 ¶ 6. See Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015) (en banc in relevant part). Claims subject to 35 U.S.C. § 112 ¶ 6 are construed in a “two-step process,” whereby we “first identify the claimed function,” and then “determine what structure, if any, disclosed in the specification corresponds to the claimed function.” Id. at 1351. Accordingly, the rules governing this inter partes review require that Petitioner “identify the specific portions of the specification that describe the structure, material, or acts corresponding to each claimed function.” 37 C.F.R. § 42.104(b)(3). It is well established that “the corresponding structure for a § 112 ¶ 6 claim for a computer-implemented function is the algorithm disclosed in the specification.” Aristocrat Techs. Austl. Pty Ltd. vs. Int’l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008) (quoting Harris Corp. v. Ericsson Inc., 417 F.3d 1241, 1249 (Fed. Cir. 2005)); see also EON Corp. IP Holdings, LLC v. AT&T Mobility LLC, 785 F.3d 616, 623 (Fed. Cir. 2015) (“A microprocessor or general purpose computer lends sufficient structure only to basic functions of a microprocessor. All other computer-implemented functions require disclosure of an algorithm.”). The Federal Circuit has held that “[t]he specification can express the algorithm ‘in any understandable terms including as a mathematical formula, in prose, or as a flow chart, or in any other manner that provides sufficient structure.’” Noah, 675 F.3d at 1312 (citing Finisar Corp. v. DirecTV Grp., Inc., 523 F.3d 1323, 1340 (Fed. Cir. 2008) (internal citation omitted)).” slip op. at 13

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “For example, with respect to the CRC protocol, Dr. Kakaes testifies that “CRCs are often referred to as ‘error detecting codes’ as they are typically used[] to detect whether a received data message is or is not erroneous.” Ex. 1002 ¶ 88. Dr. Kakaes further testifies that [t]o use a CRC, the transmitter runs a polynomial division of the data block (before forward error correcting code has been applied, if any) to calculate a “remainder” consisting of a predetermined number of bits, for example 16, which are also called “parity bits,” or “check bits,” or “checksum bits,” or “CRC bits” that are attached to the block to be encoded and then transmitted, in whichever way it may or may not be encoded, punctured, etc. After reception and channel decoding (recall that means determining the “maximum likelihood” message), the receiver then runs the same polynomial division of the received decoded data block (which includes the parity bits) and, if the result does not match the “remainder,” i.e., the “parity bits” are not consistent with the determined message, the decoded data block “fails” the “check,” i.e., is declared as being erroneous. As it turns out such a determination is never wrong. In other words, the “false negative” rate is 0. Id. (emphasis added). With regard to the ARQ protocol, Dr. Kakaes testifies that “[i]n an ARQ scheme, the receiver automatically requests retransmission of a data packet if it is detected to be erroneous, such as through the use of CRC, as discussed above.” Id. ¶ 91.” slip op. at 20

  Patent outcomesUS 6,529,561 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,529,561
• Allstate Insurance Company v. Atos, LLCSome claims unpatentable
  PTAB · Jan 24, 2023 · IPR2021-01209 · APJ Richard H Marschall · IPR · Final written decision

  Claims 1–4, 6, and 9–25 are unpatentable; claims 5, 7, and 8 are not shown unpatentable, based on anticipation by Kim and obviousness grounds.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art The level of ordinary skill in the art is “a prism or lens” through which” slip op. at 9

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Other

    “C. Claim Construction In inter partes reviews, we interpret claims under the same standard” slip op. at 10

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed

    “Accordingly, Petitioner fails to establish that Kim discloses “determining that the individual is a driver of the vehicle based at least in part on acceleration, forces, velocity, the at least one location point, and time.”” slip op. at 46

  • Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner

    “nexus and therefore fails to establish that any alleged evidence of objective indicia supports a finding of non-obviousness. Accordingly, we give Patent Owner’s reliance on objective indicia of non-obviousness no weight in our obviousness analysis.” slip op. at 65

  Patent outcomesUS 9,152,609 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,152,609
• Allstate Insurance Company v. Atos, LLCSome claims unpatentable
  PTAB · Jan 9, 2023 · IPR2021-01118 · APJ Richard H Marschall · IPR · Final written decision

  Claims 1–5, 7, 8, 10–16, and 18 are unpatentable; claims 6, 9, and 17 were not shown unpatentable, because the asserted prior art did not establish all limitations.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art The level of skill in the art is “a prism or lens” through which we view” slip op. at 9

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “2. Discussion Petitioner argues that Kim discloses every limitation of claim 1, and” slip op. at 23

  • Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner

    “2. Discussion We begin our analysis by addressing Patent Owner’s asserted objective indicia of non-obviousness, and then turn to the merits of Petitioner’s specific obviousness challenges before us.” slip op. at 52

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundMotivation not foundMixed

    “the combination of Kim and Baker discloses “comparing the at least one current geographic location to the first geographic location; setting the location of the individual to the individual is in an outside of the vehicle location, when a distance between the at least one current and the first geographic locations exceeds a predetermined threshold.” Accordingly, we determine that Petitioner has not established by a preponderance of the evidence that claim 6 would have been obvious based on Kim and Baker.” slip op. at 90

  Patent outcomesUS 8,527,140 mixed
  § 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,527,140
• Apple Inc. v. Masimo CorporationSome claims unpatentable
  PTAB · Feb 23, 2022 · IPR2020-01539 · APJ Amanda F Wieker · IPR · Final written decision

  Claims 1–12 and 14–28 are unpatentable under § 103; claim 13 was not shown unpatentable under the Aizawa, Inokawa, Ohsaki, Mendelson-2006, and Bergey ground.

  RulingsFinal written decision

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableNot shown unpatentableMixed

    “Accordingly, we do not agree that Ohsaki’s disclosed advantages” slip op. at 57

  • BurdenFwd mixedMixed

    “and 37 C.F.R. § 42.73. For the reasons set forth below, Petitioner has met its burden of showing, by a preponderance of the evidence, that challenged claims 1–12 and 14–28 of the ’554 patent are unpatentable. However, Petitioner has not met its burden of showing, by a preponderance of the evidence, that challenged claim 13 is unpatentable.” slip op. at 2

  Patent outcomesUS 10,588,554 mixed
  § 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,588,554
• Cradlepoint, Inc. / Sierra Wireless, Inc. et al. v. Sisvel International S.A.Some claims unpatentable
  PTAB · Jan 18, 2022 · IPR2020-01099 · APJ Monica S Ullagaddi · IPR · Final written decision

  Claims 1–3 and 9 are unpatentable as obvious over Chen; claims 4–8 and 10 were not shown unpatentable on the instituted grounds.

  RulingsFinal written decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “Response. Paper 10 (“Prelim. Resp.”). We instituted an inter partes review on all challenged claims on all grounds set forth in the Petition. Paper 11 (“Institution Decision” or “Inst. Dec.”).” slip op. at 2

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “Although there are differences between the contentions of the parties as to the level of ordinary skill in the art, the parties have not informed us of a dispute that needs to be resolved. We do not find it necessary to resolve the differences between the contentions of the parties as to the appropriate level of ordinary skill in the art because the findings and conclusions rendered in this Decision do not turn on either proposed definition. We determine, on this record, that the level of ordinary skill proposed by Patent Owner is consistent with the ’561 patent and the asserted prior art. As such, we adopt Patent Owner’s proposed definition for a person of ordinary skill in the art.” slip op. at 10

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

    “Petitioner proposes a construction for the term “code rate.” Separately, with regard to means-plus-function limitations recited in claims 5, 9, and 10, Petitioner provides claim construction contentions that identify the specific portions of the specification that describe the structure, material, or acts corresponding to each claimed function, as required by 37 C.F.R. § 42.104(b)(3). Pet. 33–37. Patent Owner does not propose a definition for any claim term nor does it contest any of Petitioner’s proposed constructions. PO Resp. 7–9. In the Institution Decision, we preliminarily construed the means- plus-function claim limitations as set forth in the table below, but determined that it was not necessary for us to construe the claim term “code rate.” Inst. Dec. 11–20 (citing Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017)).5 Based on the 5 Petitioner notes that “construction may be helpful to establishing the inverse and counterintuitive relationship between code rate and redundancy in which an increased code rate (e.g., 1/2) means that fewer redundant bits are transmitted whereas a decreased code rate (e.g., 1/4) means that more determination that we need not expressly construe “code rate” and our preliminary determinations for the means-plus-functions terms for the reasons set forth in our Institution Decision, which we adopt and do not repeat herein, and which are reflected in the table below. Id. at 11–19. Because Petitioner presents further argument for its construction of “means for detecting” in its Petitioner’s Reply––we address that argument below for completeness.” slip op. at 11

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Term construed board ownDecided for patent owner

    “We recognize, however, “the testimony of one of ordinary skill in the art cannot supplant the total absence of structure from the specification.” Default Proof Credit Card Sys., Inc. v. Home Depot U.S.A., Inc., 412 F.3d 1291, 1302 (Fed. Cir. 2005); see also Biomedino, LLC v. Waters Techs. Corp., 490 F.3d 946, 950–53 (Fed. Cir. 2007). “The prohibition against using expert testimony in this manner is a direct consequence of the requirement that the specification itself adequately disclose the corresponding structure.” Noah Sys., Inc. v. Intuit Inc., 675 F.3d 1302, 1312 (Fed. Cir. 2012) (citing AllVoice Computing PLC v. Nuance Commc'ns., required that the structure disclosed in the specification be more than simply a general purpose computer or microprocessor.” Aristocrat Techs. Austl. Pty Ltd. v. Int'l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008). The specification must “disclose an algorithm for performing the claimed function.” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1367 (Fed. Cir. 2008); Aristocrat, 521 F.3d at 1333. The Federal Circuit has held that “[t]he specification can express the algorithm ‘in any understandable terms including as a mathematical formula, in prose, or as a flow chart, or in any other manner that provides sufficient structure.’” Noah, 675 F.3d at 1312 (citing Finisar Corp. v. DirecTV Grp., Inc., 523 F.3d 1323, 1340 (Fed.Cir.2008) (internal citation omitted)). “Simply disclosing software, however, ‘without providing some detail about the means to accomplish the function[,] is not enough.’” Id. (citing Finisar, 523 F.3d at 1340–41 (citation omitted)). In the present proceeding, even assuming, arguendo, that the record sufficiently supports a finding that a POSITA would have known of FEC, CRC, ARQ, and hybrid ARQ protocols, Petitioner has not shown that the specification of the ’561 patent discloses a sufficient algorithm, whether “as a mathematical formula, in prose, or as a flow chart, or any other manner that provides sufficient structure” for the “means for detecting,” including an algorithm for performing any one or more of these protocols. Noah, 675 F.3d at 1312. The ’561 patent discloses “means (224) for detecting a need for retransmission of the received coded data block,” “CCU [Channel Coding Unit] [that] is responsible for channel coding, including forward error coding FEC” as well as detecting the “[t]he need for retransmission . . . by an error errors occurring on the channel with sufficient certainty.” Ex. 1001, code (57), 2:25, 6:64–65, 7:54–59; see id. at Fig. 5, Step 508, 10:41–44. Petitioner has not shown that the ’561 patent presents an algorithm for how the error detection code detects an error, nor explained the circumstances under which the error correcting code cannot correct errors and what constitutes “sufficient certainty.” Id. at 7:54–59. Although the ’561 patent discloses examples of incremental redundancy protocols such as “hybrid FEC/ARQ (Forward Error Correction/Automatic Repeat Request), which uses error correction coding in order to decrease the number of retransmissions,” it does not present an algorithm for implementing the same. Id. at 2:33–37. For the foregoing reasons and based on the entirety of the record developed during trial, we conclude that Petitioner fails to identify sufficient algorithmic structure corresponding to the “means for detecting” recited in independent claims 5 and 10.” slip op. at 15

  Patent outcomesUS 6,529,561 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,529,561
• Sharkninja Operating LLC / Sharkninja Management LLC et al. v. Irobot CorporationSome claims unpatentable
  PTAB · Oct 6, 2021 · IPR2020-00735 · APJ Jason W Melvin · IPR · Final written decision

  Claims 1, 2, 4–10, 12, and 14–18 are unpatentable as obvious; claim 13 was not shown unpatentable because the prior art did not meet its schedule limitation.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “A. LEVEL OF ORDINARY SKILL IN THE ART Petitioner proposes that a person of ordinary skill “would have had at least a four-year degree in electrical engineering, mechanical engineering, or a closely related field and have at least one year of experience in the design and implementation of robotics and embedded systems.” Pet. 7 (citing Ex. 1004 ¶¶ 46–47). Patent Owner does not dispute this definition of a person of ordinary skill. See generally PO Resp. We adopt Petitioner’s proposed level of ordinary skill as it appears to be consistent with the level of skill reflected by the specification and in the asserted prior art references.” slip op. at 5

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner

    “We do not agree with Patent Owner. As Petitioner points out, Toshiba’s device includes the ability to report errors to the user. Pet. 40–42 (citing Ex. 1007 ¶ 67); Pet. Reply 10–11. The combination Petitioner asserts takes Ruffner’s teachings and applies them to Toshiba’s device in a way to enable the tangle-indicating functionality. A skilled artisan would understand from Ruffner’s teachings that a combination of sensors is required to indicate a tangled work module—as discussed above, Ruffner expressly discusses that arrangement. Ex. 1009 ¶ 79. And Petitioner asserted allowing it to use sensors to detect the brush’s condition, use software to analyze the sensor feedback, and send an error report about the brush to a user through a proper communication channel.” Pet. 42; accord Pet. Reply 11; Ex. 1004 ¶¶ 116–119. Thus, we do not agree that the combined device would be unable to implement the desired functionality.” slip op. at 11

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

    “We agree with Patent Owner. Although Petitioner identifies instances in the specification where a user defines a schedule, and Petitioner argues “[t]here is no suggestion in the specification that these embodiments are disavowed,” we do not agree that indicates we should necessarily construe the claim language to include all embodiments. Rather, with “generating,” claim 13 requires something beyond merely accepting input from the user. We agree that the claim is limited to the device producing a schedule based on prior cleaning operations initiated by a user. We do not view the plain language of claim 13 as consistent with a user entering a schedule into the device. Petitioner does not contend that the prior art discloses claim 13’s limitations under Patent Owner’s view of the claim. See Pet. Reply 12–15. Accordingly, Petitioner has not proven that claim 13 would have been obvious over Toshiba and Ruffner.” slip op. at 14

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

    “We agree with Petitioner that Abramson discloses or suggests cleaning at a power between the minimum and maximum. When Abramson discusses brush speed, it gives two speeds as examples (Ex. 1010 ¶ 79) but that does not limit Abramson’s approach to just those two particular speeds. Reply 17–18. Further, Abramson discloses varying more than just the brush speed—it also discloses varying cleaning power, cleaning mode, and the robot’s speed. Ex. 1010 ¶ 123; Pet. Reply 16. Thus, varying those parameters would result in power levels between the minimum and maximum. Having considered all of the parties’ contentions and evidence, we are persuaded that Petitioner has proven that claim 2 would have been obvious over Toshiba, Ruffner, and Abramson.” slip op. at 16

  Patent outcomesUS 10,045,676 mixed
  Claim construction§ 103 obviousness
  Patents in suitUS 10,045,676
• Sharkninja Operating LLC / Sharkninja Management LLC et al. v. Irobot CorporationSome claims unpatentable
  PTAB · Oct 4, 2021 · IPR2020-00734 · APJ Jason W Melvin · IPR · Final written decision

  Claims 8, 10, and 13 are unpatentable as obvious; claims 14–16 were not shown unpatentable because the asserted combinations did not establish the claimed concurrent mapping and cleaning.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “II. ANALYSIS A. LEVEL OF ORDINARY SKILL IN THE ART Petitioner submits that a person of ordinary skill in the art “would have at least a four-year degree in mechanical engineering, electrical engineering, or a closely related field and at least one year of experience in the design and implementation of robotics and embedded systems.” Pet. 4. Patent Owner does not contest that definition, and we apply it in our analysis, as it appears consistent with the prior art and challenged patent.” slip op. at 6

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

    “Reply 9–12. Further, Petitioner takes issue with Patent Owner’s characterizations asserting that claim 10 would read on “navigating based solely on features such as physical attributes of one or more points such as color/size, or information encoded in the points, even when there is no consideration of the robot’s location relative to the points.” See Pet. Reply 10–11 (quoting PO Resp. 9–10). We agree that Patent Owner’s statement stretches our view of the claim scope. The claim language states that the device must navigate “based on a location of the . . . device relative to the points.” Ex. 1001, 20:16–19. That language requires location-based navigation and our Institution Decision did not hold otherwise. Rather, when we stated that the claim requires using a captured image “to determine the robot’s position,” that implied the claimed requirement that the “position” is relative to the captured points (and thus relative to the room). Inst. 11–12;” slip op. at 7

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner

    “begin cleaning as soon as the claimed command is received. We are not persuaded that the claim language and specification are consistent with Patent Owner’s construction. The claim language requires that the device “initiate the area rug cleaning operation” “responsive to receiving data indicative of a user-selected command.” We view the “responsive to” language as sufficiently ambiguous as to intervening steps such that we should look to the specification for guidance. The specification describes that a user may select “area rug” mode, after which the remote indicates “AREA RUG MODE ACTIVE” and “ROBOT WILL CLEAN THE RUG ONLY,” and cleaning does not start until the user places the robot appropriately and presses “CLEAN.” Ex. 1001, Figs. 21A, 21B, 17:63–18:10. Because the claim language requires data indicative of a “command to initiate an area rug cleaning operation,” some aspect of the command must be specific to area-rug cleaning. Pressing the “CLEAN” button does not satisfy that requirement, as nothing about the command itself indicates the claimed operation.10 Patent Owner contends that “what command is going to be sent” “depends on what mode you’re in” (Tr. 25:13–19), but we find no support for that in the specification. Indeed, Patent Owner agrees that the specification does not go into such detail but submits that we “can infer that the command and the data that’s sent associated with that command is different.” Tr. 27:16–28:2. We do not agree and determine that, instead, the specification is consistent with a command to initiate area-rug cleaning that indicates to the robot the desired mode but does not immediately start cleaning. That is, the claimed command is described as selecting an “AREA RUG” mode, which does not 10 In this regard, Patent Owner’s proposed construction would suffer from a similar deficiency as Petitioner’s mapping to Toshiba’s priority mode discussed below. See infra at 10. In that mapping, Toshiba’s device would clean an area rug if it happens to lie in a map grid selected for cleaning. Similarly, the “CLEAN” button would initiate area-rug cleaning if the “AREA RUG” mode happens to have been selected prior to that. We think the claim language requires more, in both instances. cause the robot to begin operation; a later-issued generic “CLEAN” command causes the robot to begin operation. Ex. 1001, 17:63–18:10.” slip op. at 9

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed

    “mapping first, then using that map to clean, we consider the claim language to the contrary. The claim does not use any punctuation that would suggest “to perform the one or more cleaning operations” modifies anything other than the preceding phrase—“navigating the autonomous robotic cleaning device about the home.” And, as Patent Owner identifies (see Tr. 33:8–34:10), the specification supports a claim to mapping while cleaning. It states that the vehicle may “improve its cleaning function . . . to roughly mark areas . . . where large obstacles exist, so that those areas can potentially be avoided in future runs.” Ex. 1001, 11:36–41. That describes mapping during cleaning because marking areas is a form of mapping and “in future runs” shows that the mapping was performed during a “run,” or cleaning operation. Another passage relates to Figure 6, which depicts how the “vehicle uses a number of signals for headings to move from room to room.” Id. at 12:17–19, Fig. 6. The specification addresses when the vehicle’s “power level drops below a predetermined level, requiring its return to a base charging station 622.” Id. at 12:20–23. The returning vehicle continues cleaning during the return. See id. at 12:54–58 (“Upon detecting the unique marker associated with a particular working space, the autonomous vehicle may alter its cleaning function.”). The returning vehicle “detects and stores information about each coded signal that it detects along its route.” Id. at 13:23–26. By doing so, the “vehicle can create a map.” Id. at 13:26–29. Therefore, “[a]fter charging, the autonomous vehicle can return to the room it was working in prior to returning to its base” using the map. Id. at 13:29– 32. Based on the specification passages, we conclude the claim language, which has ordinary meaning requiring cleaning while mapping, is consistent with the specification. Toshiba’s sequential process is not the same as the concurrent process recited by claim 14. Nor does Petitioner account for the differences. See Pet. 57–58; accord Pet. Reply 21 (arguing that Toshiba discloses claim 14’s additional limitations only under Petitioner’s construction). Because we do not agree with Petitioner’s claim construction, we conclude that Petitioner has not proven claim 14 would have been obvious.” slip op. at 15

  Patent outcomesUS 9,921,586 mixed
  Claim construction§ 103 obviousness
  Patents in suitUS 9,921,586
• Unified Patents Inc. v. S.I.Sv.El. Societa Italiana Per Lo Sviluppo Dell’Elettronica S.P.A.Some claims unpatentable
  PTAB · Jun 25, 2020 · IPR2019-00471 · APJ Terrence W Mcmillin · IPR · Final written decision

  Claims 1, 4, 8, 11–13, and 16–18 are unpatentable as obvious over Easty and Hendricks, and Easty, Hendricks, and Kittaka; claim 10 was not shown unpatentable.

  RulingsFinal written decision

  • Skill levelOther

    “that a person of ordinary skill would have had “(i) an undergraduate degree in computer science, computer engineering, or similar technical field; and (ii) one to two years of experience in analysis, design, or development related to recommender systems and collaborative filtering, with additional education substituting for less experience and vice versa.” Pet. 6 (citing Ex. 1003 (Terveen Decl.) ¶¶ 22–24). Patent Owner contends the applicable level of ordinary skill in the art would have had “(i) a B.S. in Computer Science or a closely related field with three or more years of experience in either embedded systems or recommendation systems or (ii) at least an M.S. in Computer Science. Additional education or experience may serve as a substitute for these requirements.” PO Resp. 19 (citing Ex. 2001 (Pazzani Decl.) ¶ 24) (internal citations omitted). Although these contentions differ slightly in the amount of required experience, they are very similar, and neither party contends that these differences are material to any issue in dispute.” slip op. at 9

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner

    “We are also guided by the principle that we only construe claim terms if, and to the extent that, it is necessary. See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). In the Petition, Petitioner proposes constructions for “implicit filtering” and “explicit filtering.” Pet. 8–9. Patent Owner does not dispute Petitioner’s proposed constructions. Prelim. Resp. 33. Patent Owner does not dispute Petitioner’s showing that the cited art teaches “implicit filtering” and “explicit filtering” as used in the context of the claims of the ’680 patent. See generally PO Resp. Thus, we do not discern any dispute between the parties regarding these terms. As construction of these terms is not necessary in order to resolve this proceeding, we do not explicitly construe these terms.” slip op. at 11

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner

    “We do not agree. First and foremost, the Specification does not provide that this “metaphor” or “pictorial representation” is a limiting contrary. The Specification states: “While the library metaphor is a particularly useful personalized visualization of heterogeneous media, other useful visualizations are possible. Other possible visualizations include, for example, simple nested menus and an office and file drawer metaphor.” Id. at 5:11–15. Patent Owner does not explain, and we do not discern, how the alternative visualizations of “simple nested menus” or “an office and file drawer metaphor” support Patent Owner’s proposed construction. Second, the description of the “virtual library” metaphor in the Specification does not support Patent Owner’s proposed construction. With regard to that portion of Patent Owner’s proposed construction that provides “a personalized collection of information,” the same paragraph Patent Owner cites states, “The types of floors in the virtual library, the types of stacks populating each floor, and the specific media items on each of the stacks preferably are selected based on the user’s profile, although they may also be based on all of the information that is available to the metabrowser when the available information is a relatively small and manageable amount.” Ex. 1001, 3:10–15 (emphasis added). The alternative of displaying “all of the information that is available to the metabrowser,” as opposed to content “selected based on the user’s profile,” does not support limiting “virtual library” to require personalization.” slip op. at 13

  • Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer not foundDecided for petitioner

    “providing that a disclaimer of claim scope during prosecution must be clear and unmistakable. PO Resp. 5 (citing Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314, 1325–26 (Fed. Cir. 2003) (“Although a patent’s prosecution history is relevant to the claim construction analysis, any disclaimer of claim scope based on prosecution history must be ‘clear and unmistakable.’”)). Patent Owner does not argue or explain how or why the passages it quotes from the prosecution history constitute a clear and unmistakable disclaimer. See PO Resp. 21–22. These passages were used by the Applicant in its patentability arguments. See Ex. 1002, 124, 125, 151, 153. In response to these arguments, the Examiner found the Applicant was arguing unclaimed features of the invention. Id. at 177–178. The Examiner wrote: As per Appellant’s argument that a meta-browser is not an obvious variant of a browser, Appellant is arguing matter not explicitly claimed in the claims of the specification. Appellant further argues that the claimed invention involves searching a multitude of sources, where Rapaport[17] teaches searching the single source of the Internet. However, Appellant does not distinguish in claims what that [sic] a multitude of sources are searched in addition to the Internet. Applicant further argues that the meta-browser “preferably monitors for data events even if the user engages in other activities such as…” Appellant continues to argue features not claimed in the claims of the specification. As per Appellant’s argument that the virtual library of the claimed invention searches outside the scope of the Internet and is more than just a text-based search engine, Appellant is arguing features not claimed in the claims of the specification. Id., see also id. at 367. And, on appeal from this rejection, this argument was evaluated and rejected by a predecessor of the Board, the Board of” slip op. at 18

  Patent outcomesUS 7,734,680 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,734,680
• Apple Inc. v. Qualcomm IncorporatedSome claims unpatentable
  PTAB · Feb 24, 2020 · IPR2018-01282 · APJ Daniel N Fishman · IPR · Final written decision

  Claims 1–3, 6–10, 12–22, 25–30, 46, 47, and 49–53 are unpatentable over the stated grounds; claims 4, 5, 23, 24, and 48 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We discern no significant distinction between Dr. Allen’s definition of the level of ordinary skill and that of Patent Owner. In view of Patent Owner’s admission that any differences are not material to the issues we decide here, we discern no reason to depart from our definition of the level 5 Patent Owner does not present arguments or evidence of such secondary considerations in its briefs. Therefore, secondary considerations do not enter into our analysis. Inst. 10. Accordingly, we adopt Dr. Allen’s definition of the level of ordinary skill in the art and determine that a person of ordinary skill in the art at the time of the invention of the ’865 patent would have had a Bachelor of Science degree in either computer science or electrical engineering, together with at least two years of study in an advanced degree program in artificial intelligence, machine learning, or pattern recognition, or comparable work experience.” slip op. at 9

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

    “Second, we agree with Petitioner that Patent Owner’s proffered interpretation, requiring a “pattern” to include relationships between two or more such pairs, incorrectly excludes embodiments where a “pattern” may be identified by the value of only a single parameter. We find nothing in the intrinsic evidence that supports Patent Owner’s narrow interpretation. By contrast, Petitioner identifies support in the ’865 patent Specification referring to a “pattern” being represented by “one or more” values of parameters in support of its interpretation that encompasses a single parameter value representing a “pattern.” See Pet. 12 (citing Ex. 1001, 6:49–55, 9:63–67). Furthermore, Petitioner points to deposition testimony of Patent Owner’s expert (Dr. Villasenor) as extrinsic evidence to support the contention that a “pattern” encompasses the value of even a single parameter.” slip op. at 15

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “monitoring and detecting steps in the teachings of Louch. Having reviewed the parties’ arguments and supporting evidence in the complete trial record, we are persuaded Louch teaches the monitoring and detecting steps of claim 1 (as well as related recitations of claims 21 and 46). See Ex. 1011, 8:24–26 (“In some implementations, the process 400 can begin when input from one or more sensors on the mobile device are used to determine a current state of the mobile device ( 410).”), 8:33–35 (“the determining can include detecting and determining two or more different states based on inputs from two or more different sensors”), 8:55–57 (“[t]he states can be determined based on sensor inputs, as described in reference to FIGS. 1-4”); see also Ex. 1021 ¶ 119.” slip op. at 31

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner

    “Petitioner argues Louch and Nadkarni are in the same field of endeavor, argues both Louch and Nadkarni are pertinent to the problem addressed by the ’865 patent, and articulates reasons for the proposed combination of Louch and Nadkarni. Pet. 41–45. Patent Owner does not dispute Petitioner’s reasons for combining the references. Having reviewed Petitioner’s arguments (Pet. 41–45), we are persuaded Petitioner has articulated a reason for combining Louch and Nadkarni based on rational underpinnings.” slip op. at 43

  Patent outcomesUS 8,768,865 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Alice · Phillips · KSR · Graham
  Patents in suitUS 8,768,865
• Apple Inc. v. Qualcomm IncorporatedSome claims unpatentable
  PTAB · Feb 24, 2020 · IPR2018-01281 · APJ Daniel N Fishman · IPR · Final written decision

  Claims 1–3, 5, 6, 8–22, 24, 25, 27–30, 46–49, and 51–53 are unpatentable; claims 4 and 23 are not shown unpatentable because Wang does not teach the claimed response between fixing and reduced parameters.

  RulingsFinal written decision

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

    “Second, we agree with Petitioner that Patent Owner’s proffered interpretation, requiring a “pattern” to include relationships between two or more such pairs, incorrectly excludes embodiments where a “pattern” may be identified by the value of only a single parameter. We find nothing in the intrinsic evidence that supports Patent Owner’s narrow interpretation. By contrast, Petitioner identifies support in the ’865 patent Specification referring to a “pattern” being represented by “one or more” values of parameter value representing a “pattern.” See Pet. 11–12 (citing Ex. 1001, 6:49–55, 9:63–67). Furthermore, Petitioner points to deposition testimony of Patent Owner’s expert (Dr. Villasenor) as extrinsic evidence to support the contention that a “pattern” encompasses the value of even a single parameter.” slip op. at 15

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We discern no significant distinction between Dr. Allen’s definition of the level of ordinary skill and that of Patent Owner. In view of Patent Owner’s admission that any differences are not material to the issues we decide here, we discern no reason to depart from our definition of the level 5 Patent Owner does not present arguments or evidence of such secondary considerations in its briefs. Therefore, secondary considerations do not enter into our analysis. Inst. 10. Accordingly, we adopt Dr. Allen’s definition of the level of ordinary skill in the art and determine that a person of ordinary skill in the art at the time of the invention of the ’865 patent would have had a Bachelor of Science degree in either computer science or electrical engineering, together with at least two years of study in an advanced degree program in artificial intelligence, machine learning, or pattern recognition, or comparable work experience.” slip op. at 9

  • Expert testimonyPatent owner expert discountedDecided for patent owner

    “illustrated in Wang’s Table 1. In view of these numerous references to the exemplary user states and associated features illustrated in Wang’s Table 1, Patent Owner’s assertion, supported by Dr. Villasenor, that Wang does not use Table 1 to identify states is not credible. Based on Wang’s frequent by Petitioner (Pet. 17, 22–24), we determine that Wang’s implementation uses the states and features illustrated in Table 1 to recognize/identify a pattern as claimed (a particular set of feature values illustrated in Table 1), based on a condition (the corresponding present user state represented in Table 1).” slip op. at 39

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “illustrated in Wang’s Table 1. In view of these numerous references to the exemplary user states and associated features illustrated in Wang’s Table 1, Patent Owner’s assertion, supported by Dr. Villasenor, that Wang does not use Table 1 to identify states is not credible. Based on Wang’s frequent by Petitioner (Pet. 17, 22–24), we determine that Wang’s implementation uses the states and features illustrated in Table 1 to recognize/identify a pattern as claimed (a particular set of feature values illustrated in Table 1), based on a condition (the corresponding present user state represented in Table 1). It is true that there is no particular algorithm, program code, or data structure that discloses precisely how Table 1 is used. However, the claims do not require any particular data structure, algorithm, or programmed instructions. Claim 1 merely requires that the first pattern be identified “based, at least in part, on said at least one detected condition.” Wang’s frequent reference to the information illustrated in Table 1 and use of that information (feature values) to determine a user state sufficiently teaches the ordinarily skilled artisan the claimed identifying step, as discussed by Dr. Allen. See, e.g., Ex. 1003 ¶¶ 105–107. Accordingly, we find that Wang teaches the identifying step because Table 1 illustrates the exemplary states recognized (identified) by EEMSS along with the patterns (State Features) used to identify the states.” slip op. at 39

  Patent outcomesUS 8,768,865 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Alice · Phillips · KSR · Graham
  Patents in suitUS 8,768,865

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.