- Canon Inc. v. Intellectual Ventures II LLCAll claims unpatentablePTAB · Aug 19, 2015 · IPR2014-00632 · APJ Richard E Rice · IPR · Final written decision
Claims 1–24 are unpatentable: claims 1, 2, 8, 11, 13–16, 19–21, and 24 as anticipated by Mishima; claims 3–7, 9, 10, 12, 15–18, 22, and 23 as obvious over specified combinations.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“Patent Owner’s argument that we should limit “selecting” in claim 1 to “user . . . selecting” (PO Resp. 3) is not persuasive for the reasons that we provided in the Decision to Institute. Inst. Dec. 8–9. In addition, Patent Owner’s proposed claim construction would exclude embodiments in which the image capture device, itself, selects an automatic trigger condition. E.g., Ex. 1001, 10:28–32 (“The camera automatically enters the automatic response mode as soon as power is applied unless otherwise instructed by the operator. Alternately, configuration tools can be provided to select from various sensed conditions.”), 12:23–26 (“Once one or more subjects of interest have been stored, digital image capture device 10 can employ these subjects of interest as image capture triggers whenever it is placed in automatic response mode.”). Patent Owner has not explained sufficiently why “selecting” should be interpreted to exclude such embodiments. See, e.g., Oatey Co. v. IPS Corp., 514 F.3d 1271, 1277 (Fed. Cir. 2008) (holding that, at least where claims can be interpreted reasonably to include a specific embodiment, it is incorrect to construe the claims to exclude that embodiment, absent probative evidence to the contrary). For the above reasons, we determine that the term “selecting” carries its ordinary and customary meanings, and is not limited to acts performed by a user of the image capture device; and we maintain our interpretation.” slip op. at 14
- Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer not foundDecided for petitioner
“[D]isavowal requires that ‘the specification [or prosecution history] make[] clear that the invention does not include a particular feature.’” GE Lighting Solutions, LLC v. AgiLight, Inc., 750 F.3d 1304, 1309 (Fed. Cir. 2014) (quoting SciMed Life Sys. Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1341 (Fed. Cir. 2001)). Applying that standard in this case, we are not persuaded that the prosecution history makes clear that claim 1 does not include “entering” of a threshold level by the image capture device itself. slip op. at 24
- Skill levelSkill level petitioner adoptedDecided for petitioner
“7 Patent Owner does not dispute Petitioner’s definition of the level of skill in the art as “(1) a Bachelor’s degree in electronics, computer science, or a related discipline and 2-3 years of camera electronics design and implementation experience, or (2) a Master’s degree or higher in a field such as electronics, computer science, or a related discipline with some concentration in imaging systems or image processing.” PO Resp. 5 n.2 (citing Ex. 1002 ¶¶ 16–17; Ex. 2006 ¶¶ 25–27). We adopt that definition for purposes of this Final Written Decision. 8 Patent Owner does not contend in the Patent Owner Response that any secondary considerations are present that would render the challenged claims patentable over the combined teachings of these references.” slip op. at 35
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“electronic device.” See Pet. Reply 2 (citing Ex. 1016 ¶¶ 9–16). We credit Dr. Stevenson’s testimony on this point: Data entry in electronic devices occurs through a variety of different mechanisms. For instance, in the context of electronic devices, including digital cameras, “entering” of data encompasses the electronic input of data into a component of the electronic device, such as a processor or memory. An electronic device’s operating instructions may cause the device to input data into a processor or memory. The entered data may be data from another memory (e.g., read-only memory (“ROM”)), a removable memory card, or a network.” slip op. at 19
Patent outcomesUS 7,817,914 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,817,914 - Juniper Networks, Inc. v. Brixham Solutions Ltd.All claims unpatentablePTAB · Jul 27, 2015 · IPR2014-00431 · APJ Kalyan K Deshpande · IPR · Final written decision
Claims 5, 6, 14, and 15 are unpatentable as obvious over Bell, Sierra-1, Sierra-2, and Sierra-3.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“Transfer Mode (“ATM”), and Internet Protocol (“IP”) based services.” Ex. 1001, 5:54–58. Also, the ’895 patent describes that “[e]fficiency is greatly increased when each processing engine supports all protocols used in switch 90 at the OSI model layers supported by the processing engines.” Id. at 14:50–52. The ’895 patent further describes an embodiment that includes the link interfaces and processing engines coupled to a control bus, where the control bus “is a 100 Base- T Ethernet communications link . . . [that] employs the 100 Base-T Ethernet protocols for carrying and formatting data,” and in another embodiment the control bus “is a star-like switched Ethernet network.” Id. at 17:23–38. We agree with Petitioner’s construction of this limitation, to mean “two or more of ‘Ethernet, ATM, Frame Relay’ [that] constitute a first and second protocol within a layer,” is consistent with the specification that describes the network switch to provide “Frame Relay, Gigabit Ethernet, Asynchronous Transfer Mode (‘ATM’), and Internet Protocol (‘IP’) based services.” Pet. 25; Ex. 1001, 5:54–58. This construction is also consistent with the construction proffered by Patent Owner, requiring that “a processing engine must be capable of processing data according to at least two of the afore-referenced protocols.” PO Resp. 2. Accordingly, we agree with Petitioner that, under the broadest reasonable construction, the “multiprotocol” limitation means “two or more of ‘Ethernet, ATM, Frame Relay’ that constitute a first and second protocol within a layer” and we further agree with Patent Owner that a “processing engine” is capable of processing data according to at least two of the afore-referenced protocols.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“except for the limitation that the switch is configured to “map data from multiple link interfaces in said plurality of link interfaces to a first processing engine in said plurality of processing engines.” Pet. 28. Petitioner further contends that if Bell does not explicitly or inherently disclose the switch is configured to “map data from multiple link interfaces in said plurality of link interfaces to a first processing engine in said plurality of processing engines,” then Sierra-1, Sierra-2, and Sierra-3 disclose this limitation. Pet. 29–30. Petitioner specifically argues that Sierra-1 discloses flexible data transmissions that allows for time slots of data to be mapped from any port card to any forwarding card and Sierra-2 discloses a “‘connection map’ that is used to map data from the link interfaces to the processing engines.” Pet. 29–30 (citing Ex. 1006, 14, Fig. 2; Ex. 1005, 29–30). Sierra-1 further discloses multicast is supported as an output and can sample data from any input. Ex. 1006, 14, Fig. 2. Petitioner argues that it would have been obvious to combine Sierra-1, Sierra-2, and Sierra-3 with the Bell architecture, because Bell specifically mentions the use of Sierra’s cross-connection component. Pet. 30–31 (citing Ex. 1003 ¶ 261); Ex. 1004, 51:56–65.” slip op. at 12
- ExcludeMotion to exclude, deniedDenied
“Although we agree with Petitioner that Patent Owner’s motion is procedurally defective for the reasons argued by Petitioner (see Opp. 4–6), we also agree with Petitioner that Dr. Lavian’s responses were not “evasive” and highlight this argument for emphasis. For example, Patent Owner’s argument directs us to specific portion of the deposition where Dr. Lavian was asked “did you add that element, 548b?” Supp. Mot. to Exclude 2 (quoting Ex. 2002, 34:18). We agree with Petitioner that Dr. Lavian answered this question to the best of Dr. Lavian’s ability. Opp. 13 (citing Ex. 2002, 34:20–35:2). Furthermore, Patent Owner was able to rephrase the same question and elicit an additional response that Patent Owner did not determine to be “evasive.” See Ex. 2002, 36:6–20. Although Patent Owner directs us to an additional example where Dr. Lavian was allegedly “evasive” and generally concludes that “this type of evasiveness pervaded the entirety of the deposition,” based on our review of Ex. 2002, Patent Owner has not persuaded us that Dr. Lavian did not respond to the questions to the best of his ability. We further agree with Petitioner that Petitioner’s objections were proper. See 37 C.F.R. § 42.53(f)(8) (“Any objection to the content, form, or manner of taking the deposition, including the qualifications of the offier, is waived unless made on the record during the deposition and preserved in a timely filed motion to exclude.”). Based on our review of Ex. 2002, Petitioner’s objections were directed to the content, form, or manner of taking the deposition, and, therefore, were proper under 37 C.F.R. § 42.53(f)(8). We are also not persuaded that the behavior of opposing counsel, alone or “in combination with the occurences at the deposition” (Supp. Mot. to Exclude 4) is a sufficient basis to exclude Exhibit 1003 or Exhibit 1020. Such a remedy is incongruous and disproportional to any alleged harm suffered by Patent Owner during deposition. Accordingly, Patent Owner’s Motion to Exclude Exhibit 1003 and Exhibit 1020 is denied.” slip op. at 15
Patent outcomesUS 7,535,895 unpatentableClaim construction§ 103 obviousnessPatents in suitUS 7,535,895 - PTAB · Jul 20, 2015 · IPR2015-00517 · APJ Kevin F Turner · IPR · Institution
The Board denied institution because neither petition showed a reasonable likelihood that claims 1, 9, 10, 12, 30, 32, 42, or 45 were unpatentable over Kitamura or Mehrotra.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We review the Petitions under 35 U.S.C. § 314, which provides that an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Based on our review of the record, we conclude that neither Petitioner is reasonably likely to prevail in demonstrating that at least one of the challenged claims is not patentable, based on the Petitions filed. See 35 U.S.C. § 314. B.” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“Kitamura is largely silent as to the specific functioning of the D/A conversion circuit 10. Kitamura discloses that D/A conversion circuit 10 and A/D conversion circuit 13 “preferably share a voltage dividing element and a reference voltage supply (for the purpose of making their characteristics uniform),” and level differences to maximize the operating margin (Ex. 1010 ¶ 11), but does not disclose a “selection” between reference voltages or signals. Although Petitioners emphasize the obviousness of certain elements of the challenged claims (Pet. 25– 26), the obviousness of selecting a reference voltage versus outputting a voltage from a D/A conversion is not discussed. Indeed, Dr. Baker’s discussion is clear (Ex. 1003 ¶¶ 74–79) as to how the output voltages could be set, but it remains unclear how Kitamura itself suggests the examples proffered. The normal function of a D/A converter is not to select between reference voltages, but to render the digital input into analog form. We are not persuaded that Kitamura teaches or suggests the selection of one of a plurality of reference voltages in accordance with the input information, per the challenged claims. In addition, the Petitions fail to provide any rationale for why Kitamura’s disclosure of D/A conversion renders the selection of a reference voltage or signal obvious. For these reasons, Patent Owner’s contentions that Kitamura does not teach or suggest “reference voltage selecting means,” or equivalent elements, or “reference voltages,” per the challenged claims, are persuasive. C.” slip op. at 10
- Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Term construed petitioner construction§112(f) appliesDecided for petitioner
“Reference Voltage Selection Claim 1 recites “reference voltage selecting means for selecting one of a plurality of reference voltages,” with claims 9, 12, and 30 reciting “selecting device which selects one of a plurality of reference signals,” and claims 42 and 45 reciting “selecting one of a plurality of predetermined reference signals.” Petitioners acknowledge that the means-plus-function element in claim 1 is “governed by 35 U.S.C. § 112, ¶ 6,” and that the construction of the claim term in claim 1 “is applicable to claim terms” recited in claims 9, 12, 30, 42, and 45, discussed above. Pet. 5, 8. Petitioners assert that “the verify reference voltage select circuit 222 selects and provides such a reference voltage to the comparator,” and is the corresponding structure described in the specification. Id. at 56 (citing Ex. 1003 ¶¶ 4552). For purposes of this Decision, we construe the referenced claim terms according to that structure and apply the same to the analysis below. B.” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“Reference Voltages” “Reference Signals” All of the independent claims of the challenged claims recite either “reference signals” or “reference voltages.” Petitioners emphasize that “a person of ordinary skill in the art would have interpreted these features to be broad enough to include and be met by either a digital reference voltage/ signal or an analog reference voltage/signal.” Id. at 10 (citing Ex. 1003 ¶¶ 53–58). For purposes of this Decision, we construe the reference voltages and signals terms as being met by either digital or analog reference voltages/signals, and apply that construction to the analysis below. slip op. at 7
Claim construction§ 103 obviousnesscites KSRPatents in suitUS 5,764,571 - PTAB · May 12, 2015 · IPR2014-00242 · APJ Peter P Chen · IPR · Final written decision
The Board canceled claims 1–3, 5, and 6 and denied substitute claims 7–11 because the Patent Owner failed to establish written-description support for claim 10 and patentability over prior art for claims 7–9 and 11.
RulingsFinal written decision- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend granted in partGranted in part
“Unlike examination, entry of the proposed substitute claims in an inter partes review is not automatic. As the moving party, Patent Owner must establish that it is entitled to the requested relief. See 37 C.F.R. § 42.20(c). In its Motion to Amend, Patent Owner bears the burden to show, inter alia, that a reasonable number of substitute claims is proposed, there is no broadening of scope, the proposed claims are supported adequately by the written description of the application as filed originally, and the proposed claims are patentable over the prior art. See 37 C.F.R. § 42.121; Idle Free Sys. Inc. v. Bergstrom, Inc., Case IPR2012-00027, slip op. at 5–6 (PTAB June 11, 2013) (Paper 26) (“Idle Free”). We address each of these requirements in turn.” slip op. at 10
- 112 supportDenied
“its Motion to Amend to set forth “[t]he support in the original disclosure of the patent for each claim that is added or amended,” and “[t]he support in an earlier-filed disclosure for each claim for which benefit of the filing date of the earlier filed disclosure is sought.” The test for written description support is “whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010). The purpose of the written description requirement is to convey with reasonable clarity to those skilled in the art that, as of the filing date sought, applicant was in possession of the invention as now claimed. Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563–64 (Fed. Cir. 1991).” slip op. at 12
- ScopeDecided for patent owner
“2. No Broadening of Scope Proposed substitute claims in an inter partes review “may not enlarge the scope of the claims of the patent.” 35 U.S.C. § 316(d)(3); see 37 C.F.R. § 42.121(a)(2)(ii). In its Motion to Amend, Patent Owner proposes claim 7 as a substitute for claim 1, claim 8 as a substitute for claim 2, claim 9 as a substitute for claim 3, claim 10 as a substitute for claim 5, and claim 11 as a substitute for claim 6. Mot. 1–5. Each claim includes all of the limitations of the corresponding challenged claim for which it is a substitute, and adds additional limitations. Id. No limitations from the challenged claims were deleted in the proposed substitute claims. Patent Owner asserts that the proposed substitute claims do not enlarge the scope of the claims of the ’047 patent. See Mot. 1. Petitioner does not dispute this assertion (“patent owner’s proposed substitute claims . . . add ancillary features”). Opp. 1. We are persuaded that each of the proposed substitute claims does not enlarge the scope of each of the challenged patent claims it intends to replace.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“In the Decision to Institute, we determined that no explicit construction was necessary for any of the claim terms beyond their ordinary and customary meanings. Dec. to Inst. 8–9. Neither party has challenged that determination, and based on the record adduced during trial, we see no reason to provide an express construction for any term. For the proposed substitute claims, Patent Owner states that: Like the terms in the original claims, all of [the newly added claim terms in the proposed substitute claims] are simple [claim terms] whose ordinary meaning applies and for which no construction is required, with the possible exception of “member” and “group.” As explained in the specification (Ex. 1) at 3:2–4, “The present invention comprises a method . . . for allowing on-line communications with members of a group of recipients for whom the invention has been implemented.” In the context of proposed independent claim [7], the claimed invention requires that “said first computer system storing information about said plurality of members in a database.” Thus, in the context of the proposed amended claims[,] a “group” is a group of a plurality of members for whom the first computer system has stored information in a database. Mot. 7. Petitioner does not propose alternative constructions for the claim terms “member” or “group.” We cannot discern how the constructions proffered by Patent Owner add any clarity to the terms “member” and “group,” which are simple and commonly understood terms. We decline to provide an express construction for either “member” or “group.”” slip op. at 8
Claim construction§ 101 eligibility§ 103 obviousnesscites AlicePatents in suitUS 8,499,047 - Yamaha Corporation Of America v. Black Hills Media, LLCAll claims unpatentablePTAB · Mar 18, 2015 · IPR2013-00598 · APJ Peter P Chen · IPR · Final written decision
Claims 1, 2, 6–13, 15–31, 35–42, and 44–46 are unpatentable as obvious over Bi and Erekson, or over Bi, Erekson, and Janik.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“its proposed construction state that songs from a playlist “may be played in the order selected, in random order, or in any other desired order.” PO Resp. 14; Ex. 1001, 3:20–24, 11:41–43. As Petitioner contends in its Reply, the cited excerpts refer to songs selected by the user, and not to the playlist itself. Pet. Reply 4. In addition, these portions of the ’873 patent expressly provide that songs merely “may” be played in an order selected, or even that songs may be played “in a random order.” The term “sequence,” urged by Patent Owner for its construction, appears only once in the specification, in an unrelated summary of the detailed description of the preferred embodiments (“[t]he description sets forth the functions and the sequence of steps for constructing and operating the invention in connection with the illustrated embodiments”). Id. at 7:5–8. Patent Owner also cites to excerpts of the deposition testimony of Petitioner’s expert witness, Dr. V. Michael Bove, Jr., whose testimony that a playlist may be played in a “sequence” refers to how a playlist is played by a media player, rather than to what constitutes a playlist. PO Resp. 14–15; see Pet. Reply 5; Ex. 2012, 217:1–218:7.” slip op. at 8
- Skill levelSkill level board ownOther
“bachelor’s degree in computer science or electrical engineering, and at least one year of practical experience with networked multimedia.” Ex. 1002 ¶ 8. Patent Owner’s proposal is similar, requiring “a person with a bachelor’s degree in computer science or electrical engineering and one year of practical experience with networked media.” Prelim. Resp. 10–11. The parties dispute Petitioner’s use of the qualifying phrase “at least” in describing the level of education and work experience. While we disagree with Patent Owner’s argument that “at least” is “improper because it is open-ended” (PO Resp. 11),2 we determine that an express definition of the level of ordinary skill is not required.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentableUnpatentable
“inoperable, because Erekson’s remote would not be able to control an analog stereo of Bi. PO Resp. 36–38. Petitioner contends that Patent Owner improperly isolates Bi and Erekson individually, citing to KSR and also to Randall Manufacturing v. Rea, 733 F.3d 1355, 1362 (Fed. Cir. 2013), and notes that actual, physical substitution of elements is not required in a determination of obviousness, citing In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012). Pet. Reply 11–12. Petitioner further contends that its expert Dr. Bove “reached the unremarkable conclusion that it would have been obvious to one of ordinary skill in the art to combine the features of Bi and Erekson in order to advantageously provide a single remote control to control various devices that would be used together with the audio playing system of Bi.” Pet. Reply 8. Petitioner adds: There is nothing incompatible about providing the remote navigator of Bi with both Bluetooth control for new devices, which would facilitate remote control of, for example, a new amplifier having Bluetooth capability, and IR control that provides for “legacy” devices. . . . Whether a stereo that is used with the system of Bi is “analog” (i.e., receives an analog audio signal for 18 powering speakers) is unrelated to what kind of signal (e.g., IR or Bluetooth) is used to provide for remote control of that device. Pet. Reply 13. We agree with Petitioner’s arguments that a person of ordinary skill in the art would have added Erekson’s improved control of multiple devices to Bi’s Bluetooth-controlled playback device.” slip op. at 18
- ExcludeOther
“The moving party has the burden of proof to establish that it is entitled to the requested relief. 37 C.F.R. §§ 42.20(c), 42.62(a). Exhibits 1018 and 1019 were submitted by Petitioner as extrinsic evidence in support of its proposed construction of “playlist.” Pet. Reply 7; Reply on Mot. to Excl. 4–5. As stated in section II. A, our construction of “playlist” is based on intrinsic evidence and we do not rely upon either Exhibit 1018 or 1019. The motion therefore is dismissed as moot as to these Exhibits. Exhibit 1020 was submitted by Petitioner to support its proposal for level of ordinary skill in the art. Pet. Reply 2–3; Reply on Mot. to Excl. 7–10. As stated in section II. D, our analysis of the level of ordinary skill in the art is informed by relevant case law authority and we do not rely on Exhibit 1020. The motion to exclude is dismissed as moot for this Exhibit. Exhibit 1022 was submitted by Petitioner with its Reply to support its arguments for combining Bi and Erekson. Pet. Reply 14; Reply on Mot. to Excl. 6–7. As with the other Exhibits, our analysis on the issue did not rely on Exhibit 1022, and the motion to exclude is dismissed as moot for this exhibit as well.” slip op. at 22
Patent outcomesUS 8,214,873 unpatentableClaim construction§ 103 obviousnesscites KSRPatents in suitUS 8,214,873 - Yamaha Corporation Of America v. Black Hills Media, LLCAll claims unpatentablePTAB · Mar 18, 2015 · IPR2013-00593 · APJ Stacey G White · IPR · Final written decision
Claims 9, 10, and 14 are unpatentable as anticipated by Berman and Wolff; claim 13 is unpatentable as obvious over Berman.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“from the Specification of the ’952 Patent, which defined “playlist 1528 . . . [as] a list of audio files and associated URL’s of where the audio files were retrieved from.” Ex. 1001, 21:6365. Petitioner persuasively argues that the Specification and the claims reflect that the playlist and associated URLs are separate items. Reply 5–6. For example, the Specification discusses a server having “a playlist for the Device 1110” and also “maintain[ing] a list of URL’s from which the device 1110 received audio files listed in the playlists.” Ex. 1001, 16:67–17:6; see also Reply 5–6 (citing Ex. 1001, 21:63–65, 21:45–46, 21:49, 21:51–52, Fig. 15) (pointing out examples in the Specification that discuss the playlist and URLs as separate items); Ex. 2012 ¶¶ 66–71, 75–76, 81–84 (explanation by Patent Owner’s declarant as to why a list of URLs is not a playlist). Thus, we are persuaded that URLs are not part of the playlist. Therefore, the broadest reasonable construction of playlist is “a list of audio files.”” slip op. at 8
- Skill levelOther
“a bachelor’s degree in computer science or electrical engineering, and at least one year of practical experience with networked multimedia.” Ex. 1002 ¶ 8. Patent Owner’s proposal is similar, requiring a person with “a bachelor’s degree in computer science or electrical engineering or its equivalent and 1–2 years of practical experience with media file sharing.” PO Resp. 9–10 (citing Ex. 2012 ¶¶ 26–29). We find this dispute between the parties to be of little value. An express definition of the level of ordinary skill is not required in all situations, as the level of ordinary skill in the art can be reflected in the cited prior art references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“the absence of specific findings on the level of skill in the art does not give rise to reversible error where the prior art itself reflects an appropriate level and a need for testimony is not shown.”) (internal quotations omitted); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). Neither party has provided a sufficient explanation as to how their specific proposal regarding the level of ordinary skill (and in particular the importance of the inclusion or exclusion of “at least”) changes the analysis in this case. We find the level of ordinary skill in the art to be reflected in the cited references, and we determine that no express statement of the level of ordinary skill in the art is required.” slip op. at 11
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Pet. 15–18. Specifically, Petitioner argues that Berman discloses a playback unit that receives a song list from the DUL server. Pet. 17 (citing Ex. 1012, Fig. 3 (step 308)); see also id. at 10:23–28 (describing song list packet sent to playback unit with a user ID “to confirm that the updated song list information was sent to and received by the correct playback unit”). Petitioner also asserts that the songs identified in the song list are stored on audio material server 104, and, thus, the songs are not stored on the playback unit. Id. at 18 (citing Ex. 1012, 4:5152). The playback unit receives URLs for songs on the song list from the audio material server. Id. (citing Ex. 1012, Fig. 3 (step 314), 7:22–54). Finally, Petitioner asserts that the playback unit obtains songs from the audio material server. Id. (citing Ex. 1012, Fig. 4 (step 412), 8:31–34). We agree with Petitioner’s arguments regarding the disclosures of Berman.” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“rendered obvious by the teachings of Berman. Pet. 34–35. Claim 13 depends from 9 and adds further limitations regarding the useage of web sites, which is not disclosed expressly by Berman. Petitioner asserts that it would have been obvious to one of ordinary skill in the art to use a web site as a remote source in place of Berman’s servers. Pet. 20–21. Dr. Bove supports Petitioner’s argument by testifying that “[i]t would have been well known to one of ordinary skill in the art in 2000 that music files could be provided by a Web server. As one example, the MP3.com music server site launched in 1997.” Ex. 1002 ¶ 19. We credit Dr. Bove’s testimony and find Petitioner’s arguments to be persuasive. Patent Owner does not proffer any additional arguments directed to the patentability of claim 13. PO Resp. 40. We determine that Petitioner has demonstrated by a preponderance of the evidence that dependent claim 13 would have been obvious over Berman.” slip op. at 16
Patent outcomesUS 8,045,952 unpatentableClaim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 8,045,952 - Yamaha Corporation Of America v. Black Hills Media, LLCAll claims unpatentablePTAB · Mar 18, 2015 · IPR2013-00597 · APJ Peter P Chen · IPR · Final written decision
Claims 2, 6, and 10–12 are unpatentable: Bi anticipates claims 2, 6, and 10–12; Gladwin anticipates claims 2, 6, 11, and 12; Berman renders claims 2, 6, 11, and 12 obvious.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for petitioner
“[a] playlist is a list of a user’s favorite selections.” Ex. 1001, 1:33–34. Patent Owner quotes from the specification of the ’099 Patent: Playlists also facilitate the playing of a plurality of selections in a particular order. That is, the playlist may be compiled in an order in which the playing of selections therefrom is desired. The selections may then be automatically played sequentially from the playlist. Typically, selections may also be played randomly from a playlist. PO Resp. 10; Ex. 1001, 1:45–52 (emphasis added).2 As noted by Petitioner, this passage reflects that a playlist may have a particular order of selections (see Pet. Reply 6), but also expressly discloses that selections may be played randomly from a playlist. slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“wireless handheld remote control which is associated with and separate from the media player device,” arguing that the term requires “a handheld remote control that can operate as an independent device relative to the media player that it control.” PO Resp. 14–16 (emphasis and grammatical error in original); see also Tr. 70:1–14 (“independent and separate would be synonyms.”). Petitioner argues that Patent Owner’s proposal is narrow and excludes “a standard remote control for a device,” Pet. Reply 8–9. We agree, as in addition to the Petitioner’s contentions, we note the terms “operate” and “independent” do not appear in the ’099 patent. 9 We decline to adopt Patent Owner’s proposed construction over the ordinary and customary meaning of the term.” slip op. at 9
- Skill levelOther
“year of practical experience with networked multimedia.” Ex. 1002 ¶ 8. Patent Owner’s proposal is similar, requiring “a person with a bachelor’s degree in computer science or electrical engineering and one year of practical experience with networked media.” PO Resp. 7. The parties dispute Petitioner’s use of the qualifying phrase “at least” in describing the level of education and work experience. While we disagree with Patent Owner’s argument that “at least” is “improper because it is open-ended” (PO Resp. 7–8),3 we determine that an express definition of the level of ordinary skill is not required. The level of ordinary skill in the art can be reflected in the cited prior art references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“the absence of specific findings on the level of skill in the art does not give rise to reversible error where the prior art itself reflects an appropriate level and a need for testimony is not shown.”) (internal quotations omitted); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). Here, neither party has provided a sufficient explanation as to how their specific proposal regarding the level of ordinary skill (and in particular the importance of the inclusion or exclusion of “at least”) affects the analysis in this case. Therefore, we find the level of ordinary skill in the art to” slip op. at 11
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, grantedGranted
“B. Motion to Amend In its Motion to Amend, Patent Owner moves to cancel independent claim 1 and dependent claim 9. Paper 25. Petitioner’s Reply does not oppose the motion. Pet. Reply 1. We grant the motion to amend, and proceed to analyze the remaining five claims.” slip op. at 10
Patent outcomesUS 8,230,099 unpatentableClaim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 8,230,099
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.