• Samsung Electronics Co., Ltd. / Micron Technology, Inc. et al. v. Elm 3ds Innovations, LLCNo claims unpatentable
  PTAB · Aug 22, 2017 · IPR2016-00770 · APJ Glenn J Perry · IPR · Final written decision

  Claims 12, 13, 24, 36, 37, 38, 83, 86, 87, and 132 were not shown unpatentable over the asserted combinations because the evidence did not establish substantial flexibility or motivation for the proposed dielectric substitutions.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner, with support of its declarant Paul D. Franzon, Ph.D., contends that one of ordinary skill in the art at the time of the inventions of the challenge patents “would have had at least a B.S. degree in electrical engineering, material science, or equivalent thereof, and at least 3–5 years of experience in the relevant field, e.g., semiconductor processing.” Pet. 7 (citing Ex. 1002 ¶¶ 52–53). Dr. Franzon’s testimony as to the level of 12 ordinary skill is based on “the type of problems encountered in the art, prior art solutions to those problems, the rapidity with which innovations are made, the sophistication of the technology, and the educational level of active workers in the field.” Ex. 1002 ¶ 53. Patent Owner did not propose expressly a particular level of ordinary skill. See generally PO Resp. At the oral hearing, Petitioner indicatedthat there did not seem to be any dispute as to the correct level of ordinary skill. Tr. 112:11–14 (“I don’t think there was any dispute about whether [Dr. Franzon’s proposed level of ordinary skill] was the correct level of skill, although Patent Owner can correct me.”). Having reviewed the prior art asserted in these proceedings (see, e.g., Exs. 1004–07, 1009, 2160), we determine that the level of ordinary skill proposed by Petitioner’s declarant is consistent with the challenged patent and the referenced prior art, and we adopt Petitioner’s proposed definition of the level of ordinary skill in the art for the purposes of the analysis below.” slip op. at 12

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

    “In the context of the Elm 3DS family, we find that the broadest reasonable interpretation of “substantially flexible” is the same as our construction under the Philips standard, which was the standard applied in IPR2016-00386. Under the broadest reasonable construction standard, we presume a claim term carries its ordinary and customary meaning, which “is the meaning that the term would have to a person of ordinary skill in the art in question” at the time of the invention. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). As discussed in detail in the Final Written Decisions in IPR2016-00386, IPR2016-00387, and IPR2016- 00388, the ordinary and customary meaning of “substantially flexible” is “largely able to bend without breaking.” Also as discussed extensively in” slip op. at 14

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

    “same as set forth in IPR2016-00708. Each of the challenged claims in this review require the use of a dielectric having a stress of less than 5 x 108 dynes/cm2 tensile. The evidentiary record in this case with regard to dielectric substitution adds nothing further to the evidentiary record established in IPR2016-00708. For the same reasons set forth in our Final Written Decision in IPR2016-00708, we determine that Petitioner has not met its burden to demonstrate by a preponderance of the evidence that a person of ordinary skill in the art would have made the proposed dielectric substitution.” slip op. at 21

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

    “As noted in our claim construction section, above and as referenced in our Final Written Decision in IPR2016-00386, a preponderance of the evidence establishes that, in the context of semiconductor substrates, mere thinning is not the same as flexibility—being able to bend without breaking. 20 Although Petitioner presents arguments attempting to demonstrate thinning, there are no arguments that this thinning necessarily results in flexibility. Thus, we determine that Petitioner has not met its burden to demonstrate that the required “substantial flexibility.” This reason alone sufficiently supports our conclusion. However, we also conclude, as set forth below that for a second, independent reason, Petitioner has not established that the challenged claims are unpatentable. Petitioner has not sufficiently established that one of ordinary skill would have substituted the dielectric material of Leedy ’695 for the various layers proposed for substitution in Hsu. Therefore we do not credit Leedy ’695 as providing any potential “substantial flexibility” to Hsu.” slip op. at 20

  Patent outcomesUS 8,907,499 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 8,907,499
• Samsung Electronics Co., Ltd. / Micron Technology, Inc. et al. v. Elm 3ds Innovations, LLCNo claims unpatentable
  PTAB · Aug 8, 2017 · IPR2016-00708 · APJ Glenn J Perry · IPR · Final written decision

  Claim 1 was not shown unpatentable because the evidence did not establish substantial flexibility or a reason and reasonable expectation of success for the proposed dielectric substitutions.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner, with support of its declarant Paul D. Franzon, Ph.D., contends that one of ordinary skill in the art at the time of the inventions of the challenge patents “would have had at least a B.S. degree in electrical engineering, material science, or equivalent thereof, and at least 3–5 years of experience in the relevant field, e.g., semiconductor processing.” Pet. 5 (citing Ex. 1002 ¶¶ 52–53). According to Dr. Franzon, his testimony as to the level of ordinary skill is based on considering “the type of problems encountered in the art, prior art solutions to those problems, the rapidity with which innovations are made, the sophistication of the technology, and the educational level of active workers in the field.” Ex. 1002 ¶ 59. Patent Owner did not propose expressly a particular level of ordinary skill. See, e.g., generally PO Resp. At the oral hearing, however, Petitioner indicated” slip op. at 11

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

    “In the context of the Elm 3DS family, we find that the broadest reasonable interpretation of “substantially flexible” is the same as our construction under the Philips standard. Under the broadest reasonable construction standard, we presume a claim term carries its ordinary and customary meaning, which “is the meaning that the term would have to a person of ordinary skill in the art in question” at the time of the invention. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). As discussed in detail in the Final Written Decisions in IPR2016–00386, IPR2016-00387, and IPR2016–00388, the ordinary and customary meaning of “substantially flexible” is “largely able to bend without breaking.” Also as discussed extensively in those Final Written Decisions, the inventor did not give the term “substantially flexible” a particular meaning in the specification with “reasonable clarity, deliberateness, and precision.” In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). The claim at issue here uses the term “substantially flexible” as a modifier of “structure” in the preamble of the claim and as a modifier of “monocrystalline semiconductor layer” in the body of the claim. Thus, a 13 “substantially flexible” structure is a structure that is able to bend without breaking; and a “substantially flexible monocrystalline semiconductor layer” requires a monocrystalline semiconductor layer that is able to bend without breaking.” slip op. at 13

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner
  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundReasonable expectation not foundNot shown unpatentable

    “Similarly, in view of the complex technology involved in integrated circuit fabrication and, particularly and the agreement of both experts that dielectrics have different properties and different methods of forming dielectrics in integrated circuit fabrication result in dielectrics having different properties (as discussed previously), we determine that Petitioner’s contentions and Dr. Franzon’s broad conclusions (Pet. 45–47; Ex. 1002 ¶¶ 111, 113–14) that one of ordinary skill in the art would have reasonable expectation of success to be insufficient to meet its burden, which requires a preponderance of evidence. For example, as discussed previously, we find Petitioner’s contention that Leedy ’695 thus discloses that its dielectrics can be easily used in place of other dielectrics to be insufficiently supported by the evidence of record. 27 Accordingly, having considered the Petition, Patent Owner’s Response, and Petitioner’s Reply, as well as the relevant evidence discussed in those papers, we determine that Petitioner has not met its burden to demonstrate by a preponderance of the evidence that a person of ordinary skill in the art would have reason to combine the asserted references to arrive at the claimed invention or that a person of ordinary skill would have had a reasonable expectation of success in making the combination proposed by Petitioner.” slip op. at 27

  Patent outcomesUS 8,907,499 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 8,907,499
• Google Inc. v. Patrick ZuiliAll claims unpatentable
  PTAB · May 5, 2017 · CBM2016-00021 · APJ Jameson Lee · CBM · Final written decision

  Claims 1–3, 6, 10, 14, 15, 18, 19, and 21 are unpatentable under § 101 because they claim an abstract idea without an inventive concept.

  RulingsFinal written decision

  • BurdenFwd all claims unpatentableUnpatentable

    “3. Conclusion Petitioner has established by a preponderance of the evidence that claims 1–3, 6, 10, 14, 15, 18, 19, and 21 are directed to patent-ineligible subject matter under 35 U.S.C. § 101.” slip op. at 40

  • ExcludeMotion to exclude, deniedDenied

    “to Petitioner Exhibits 1004, 1005, 1010, 1011, 1013, 1014, 1032, and 1037. Paper 33. None of these exhibits was relied on by Petitioner in support of the sole ground on the basis of which trial was instituted in this proceeding, i.e., subject matter eligibility under 35 U.S.C. § 101, or in support of Petitioner’s arguments for establishing the ’667 patent as a covered business method patent eligible for covered business method patent review. Patent Owner in its Reply to Petitioner’s opposition to Patent Owner’s renewed Motion to Exclude asserts that the Board’s Decision on Institution did rely on the Declaration of Mr. Gray and that Mr. Gray’s Declaration does refer to Exhibits 1004, 1005, and 1037. Paper 40, 3. Mr. Gray’s Declaration, however, covers many subjects, and the portions of Mr. Gray’s Declaration cited to in the Decision on Institution do not rely on or refer to Exhibits 1004, 1005, 1010, 1011, 1013, 1014, 1032, and 1037. We have not relied on any portion of Exhibits 1004, 1005, 1010, 1011, 1013, 1014, 1032, and 1037, in this Final Written Decision. Those exhibits all relate to an alleged ground of unpatentability over prior art that has not been instituted for trial and also were not referred to by Mr. Gray in connection with his testimony regarding either patent subject matter eligibility under 35 U.S.C. § 101 or whether the ’667 patent is a covered business method patent eligible for covered business method patent review. Accordingly, Patent Owner’s Renewed Motion to Exclude is dismissed as moot.” slip op. at 40

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for petitioner

    “We are cognizant that a “pay-per-click system” is expressly recited only in claim 1’s preamble, and that a preamble recitation may not be limiting. “Whether a preamble stating the purpose and context of the invention constitutes a limitation of the claimed process is determined on the facts of each case and in light of the overall form of the claim, and the invention as described in the specification and illuminated in the prosecution history.” Applied Materials, Inc. v. Advanced Semiconductor Materials Am., Inc., 98 F.3d 1563, 1572–73 (Fed. Cir. 1996). In this instance, the recitation of a “pay-per-click system” in the preamble of claim 1 is limiting, because it is necessary to give life, meaning, and vitality to the subject matter of claim 1. See Symantic Corp. v. Computer Assocs. Int’l Inc., 522 F.3d 1279, 1288 (Fed. Cir. 2008); Catalina Marketing Int’l. v. Coolsavings.Com, 289 F.3d 801, 808 (Fed. Cir. 2002); Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999). In the Summary of the Invention section, the Specification states: “This invention improves upon existing pay-per-click arrangements . . . .” Ex. 1001, 1:62–64. The Specification describes no environment for the disclosed invention other than in a “pay-per-click” system. The body of claim 1 specifically recites a step of “detecting fraudulent activity by measuring the duration between clicks by said client to said selected website by examining said code and website information.” Id. at 3:12–15. The “fraudulent activity” referred to in the body of the claim depends on the operations of a pay-per-click system to have meaning. For instance, the potentially fraudulent activity related to the duration between clicks is a problem, because the merchant has an obligation to pay for each click in a pay-per-click system. Also in the Summary of the Invention section, the Specification states that determining if certain clicks are illegitimate “allows the pay-per-click company to more fairly invoice the merchants, thereby preventing fraudulent [overuse].” Id. at 2:1–4. Claim 1 expressly requires the links provided to a client be “associated with a plurality of websites associated with a plurality of merchants.” Id. at 3:2–5. For all of these reasons, we determine that the recitation of “pay-per-click system” in the preamble of claim 1 is limiting. We determine, in particular, that the step in the body of claim 1 for detecting fraudulent activity derives its meaning and significance from being implemented in a pay-per-click system.” slip op. at 14

  • Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionUnpatentable

    “above-noted testimony of Mr. Gray, we agree with Petitioner’s articulation of what constitutes an abstract idea to which the claimed invention is directed, i.e., “detecting fraud based on the time between two requests by the same client.” That articulation is reasonably tied to the claims, and not an over-generalization or over-simplification of the claimed subject matter.” slip op. at 29

  Patent outcomesUS 7,953,667 unpatentable
  Claim construction§ 101 eligibilitycites Mayo · Bilski · Enfish
  Patents in suitUS 7,953,667
• Duodecad It Services Luxembourg S.à.R.L. / Friendfinder Networks Inc. et al. v. Wag Acquisition, LLCRehearing denied
  PTAB · Apr 4, 2017 · IPR2015-01035 · APJ Trevor M Jefferson · IPR · Rehearing

  The Board denied rehearing and left in place its denial of institution for claims 1–18, finding the petition did not persuasively show Ground 3’s references taught the constant-fill-rate limitation.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. STANDARD OF REVIEW Under 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” An abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus., Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988). The request must identify, specifically, all matters the party believes the Board misapprehended or overlooked. 37 C.F.R. § 42.71(d).” slip op. at 2

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

    “construction and construed “playback rate” (as recited in claims 1, 3, 8, 9, and 14) as “a rate at which the data is encoded for playback to a user.” Dec. 6–7 (citing Paper 2 (“Pet.”) 12; Paper 6 (“Prelim. Resp.”) 17). We also declined to adopt Petitioner’s proposed construction for “at about playback rate” as indefinite as it could represent “any rate” (Pet. 12). Dec. 7. We adopted Patent Owner’s proposed construction that “at about playback rate” as recited in claims 1, 8, and 14, should be construed as “at approximately the rate at which the media will be played out.” Dec. 7 (citing Prelim. Resp. 16–18; Ex. 1001, 3:40–42, 4:33–35, 4:47–50, 5:37–40).” slip op. at 3

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

    “indefinite, contends, in the alternative, that “the Board erred in giving a special meaning to ‘about’ or ‘approximately’ in the context of the playback rate as being related to variations that may arise as a result of variable encoding. Petitioners submit that ‘about’ should be ‘approximately’ without imparting such special meaning to the term.” Reh’g Req. 6 (citing Merck & Co. v. Teva Pharms. USA, Inc., 395 F.3d 1364, 1372 (Fed. Cir. 2005); Duraflame, Inc. v. Hearthmark, LLC, 2013 U.S. Dist. LEXIS 21229, *23 (N.D. Cal. Feb. 14, 2013)). We disagree with Petitioner’s arguments that the term “about” in the claim phrase “about playback rate” requires further construction. We note that Petitioner’s rehearing request argument with respect to Chen, Chen FH, Carmel, and ISO-11172 teaching that “the media data elements is sent at a rate that matches the constant fill rate of a server buffer” does not depend on the revised construction of either “playback rate” or the construction of “about” in the claim phrase “about playback rate.” Thus, for purposes of this rehearing decision, we do not further construe “about playback rate”” slip op. at 4

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

    “Nathaniel Polish, Ph.D. (Ex. 1003 ¶ 63) in arguing that the Board erred in finding that Chen and the Chen FH did not “‘teach or suggest that the server buffer in Chen fills at a constant rate that matches the rate of data coming out of the buffer’” as recited in challenged claims. Reh’g Req. 7–9 (quoting Dec. 15.). The Petition, however, makes no reference to “the case where the stream buffer holds one frame of data” and argues only that in Normal mode the Chen server buffer empties at about playback rate to avoid overflow and underflow conditions. Pet. 19; see also Pet. 31 (citing claim 42 of Chen). In addition, neither the Petition nor Dr. Polish’s declaration cited therein discusses the case where one frame of data is in the Chen stream buffer and subsequently leaves the stream buffer, i.e., that one and only one frame of data is loaded into the stream buffer. Compare Req. Reh’g 9 with Pet. 19, 31; Ex. 1003 ¶ 63. The Board did not misapprehend or overlook arguments that were not presented. In addition, Petitioner’s arguments based on the size of the server buffer in Chen, as presented in the Petition, failed to persuasively show that the server buffer in Chen fills at a constant rate that matches the rate of data coming out of the buffer or that rate into its buffer is constant. Petitioner’s arguments that a one frame buffer “necessarily” shows that one frame is loaded into the Chen buffer is conclusory and not persuasive to the extent it was argued in the Petition.” slip op. at 6

  Claim construction§ 103 obviousness
  Patents in suitUS 8,185,611
• American Megatrends, Inc. / Micro- Star International Co., Ltd et al. v. Kinglite Holdings Inc.All claims unpatentable
  PTAB · Jan 19, 2017 · IPR2015-01488 · APJ Trevor M Jefferson · IPR · Final written decision

  Claims 1–50 are unpatentable: claims 1 and 14 over Shipman; claims 2–5, 7–13, 15–18, 20–30, 32–42, and 44–50 over Shipman and Harmer; claims 6, 19, 31, and 43 over Shipman, Harmer, and Patel.

  RulingsFinal written decision

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

    “In the Decision to Institute, we applied the following claim constructions. Dec. to Inst. 10–12. We determined that “BIOS initialization code” as recited in claims 1, 14, 27, and 39 as “predetermined amount of BIOS initialization code” does not require further construction. Id. at 11. We also determined that “dispatch manager” as recited in claims 1–4, 14–17, 27–29, and 39–41, is construed as a program that handles the locating, loading and executing of task code. Id. at 12. Finally, we adopted the parties’ agreed construction of “system memory” as “random access memory (RAM).” Id. As neither Petitioner’s nor Patent Owner’s arguments persuade us to revise our interpretations of “BIOS initialization code,” “dispatch manager,” or “system memory,” we adopt as final our determinations of the broadest reasonable interpretations of those terms. Dec. to Inst. 10–12.” slip op. at 9

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Skill in the Art Petitioner contends that a person of ordinary skill in the art for the ’189 patent would be “a person having at least a Bachelor of Science degree in computer science or software engineering or a Bachelor of Science degree in a technical field requiring computer science or software engineering courses and at least one year of industry experience in computer science or engineering related to firmware.” Pet. 10 (citing Ex. 1013 ¶ 15). Patent Owner does not dispute this proposed level of skill in the art. Based on the full record, we agree with Petitioner.” slip op. at 9

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “Mr. Perla’s declaration testimony (Ex. 1013 ¶ 56) is contradicted and undermined by his deposition testimony that shows him scrambling and leading counsel “on a wild goose chase” to support his declaration (PO Resp. 3–54 (citing Ex. 2010, 28:7–8, 29:7–23, 32:20–33:6, 33:15–20, 33:21– 34:14; 35:7–36:25, 46:1–12)). Patent Owner argues that Mr. Perla’s testimony should be ignored because he “fabricates an aspect of modularity” in the Harmer reference to combine it with the modularity contemplated in the Shipman reference. PO Resp. 3–5. We disagree, finding that the deposition testimony cited by Patent Owner concerning “portions of BIOS” as contrasted with “BIOS modules” does not support the conclusion that Mr. Perla’s testimony should be disregarded in its entirety or given no weight. Considered in its entirety (Ex. 2010 and Ex. 1013), we find sufficient support and explanation for Mr. Perla’s testimony regarding modularity of Harmer and Shipman. In addition, Patent Owner’s deposition questions are 4 We note that Patent Owner’s citations to the testimony of Mr. Perla (PO Resp. 3–5) do not support Patent Owner’s contentions. For example, the Patent Owner response quotes Mr. Perla’s testimony (PO Resp. 3–4), but the deposition exhibit citations (Ex. 2010, 28:7–8, 28:10–12, 28:13–16), do not contain the quoted language and do not support Patent Owner’s contentions. In the absence of accurate citations to the record, we have considered Mr. Perla’s testimony in its entirety (see Ex. 2010). narrowly drawn and fail to support Patent Owner’s contentions that Mr. Perla fabricated his testimony regarding the modular teachings of the Harmer reference. PO Resp. 3–5 (citing Ex. 2010, 28:7–8, 29:7–23, 32:20– 33:6, 33:15–20, 33:21–34:14; 35:7–36:25, 46:1–12). Accordingly, we do not disregard the testimony of Mr. Perla.” slip op. at 13

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

    “Patent Owner contends that there is no motivation to combine the Harmer and Shipman references because there is no support for the testimony of Mr. Perla that Harmer contemplates modular BIOS. PO Resp. 3–5, 11–13. As discussed above, we disagree with Patent Owner’s argument that Mr. Perla’s deposition testimony shows there is no support for his opinion that a skilled artisan would have been motivated to combine Harner and Shipman given that both deal with BIOS modularity because “Harmer’s purported BIOS modularity was fiction.” PO Resp. 11. Considering Mr. Perla’s testimony in its entirety, Mr. Perla’s deposition testimony is consistent with his declaration testimony that Harmer’s teachings of expansion BIOS are similar to the teachings in Shipman relied upon by Petitioner. Compare Ex. 1013 ¶ 56, with Ex. 2010, 30:3–11. We do not find that Mr. Perla’s deposition testimony undermines the testimony regarding what Harmer teaches a person of ordinary skill in the art. Petitioner relies on Harmer to establish that it was known, prior to the time of invention of the ’189 patent, to store BIOS modules in a protected area of a secondary nonvolatile storage device to reduce the cost of the ROM by relocating BIOS components to the mass memory storage of peripheral computer devices. Reply 9–10; Ex. 1013 ¶¶ 110–111; Ex. 1003, 4:63–67; Pet. 32–33. We are not persuaded by Patent Owner’s argument based solely on the” slip op. at 20

  Patent outcomesUS 7,185,189 unpatentable
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 7,185,189
• American Megatrends, Inc. / Micro-Star International Co. Ltd et al. v. Kinglite Holdings Inc.Some claims unpatentable
  PTAB · Jan 19, 2017 · IPR2015-01515 · APJ Glenn J Perry · IPR · Final written decision

  Claims 1–14, 17–19, 21–27, 30, 32–49, and 51–60 are unpatentable under § 103; claims 15, 16, 28, 29, and 50 were not shown unpatentable.

  RulingsFinal written decision

  • BurdenFwd mixedMixed

    “evidence of record that certain claims of the ’912 patent are unpatentable as summarized in the table below: Claim(s) Reference(s) Basis unpatentable 1–14, 17, 18, 24–27, Chang and Dent 35 U.S.C. § 103 30, 32, 35–49, 51– 53, 55, 56, 59 and 60 Chang, Dent and Bizzarri 35 U.S.C. § 103 19, 21–23, and 54 Chang, Dent, and Aegis 35 U.S.C. § 103 33 and 34 Flaherty and Chang 35 U.S.C. § 103 57 and 58 Petitioner has not established unpatentability of claims 15, 16, 28, 29 and 50 by a preponderance of the evidence IV. ORDER For the reasons given, it is: ORDERED that claims 1–14, 17–19, 21–27, 30, 32–49, and 51–60 are unpatentable; and” slip op. at 64

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

    “Patent Owner argues that there is no motivation to combine Chang and Dent. PO Resp. 6–7. According to Patent Owner, Petitioner’s analysis ignores fundamental differences in operation between the systems taught in the two references. PO Resp. 6. Chang establishes a connection with a server upon detection of a program in the PROM. Pet. 6–7 (citing Ex. 1003 at 6:55–57 (“The system BIOS detects the existence of a program in a ROM socket on a network interface card (step 35) and passes control to this program (step 37).”)). Dent establishes communication only when there is a boot error. Ex. 1004 at 3:4–8 (“to enable remote system level diagnostics through a privately or publicly accessible network in the event of a boot error”). Patent Owner argues that given these differences, there would have been no motivation to combine these references. PO Resp. 6−7. We determine that the differences noted by Patent Owner would not dissuade one of ordinary skill from combining the teachings Chang and Dent. As noted above, Chang, during a boot sequence and prior to loading its operating system (OS), uses its BIOS to enable network communication. Dent describes a boot sequence that establishes an interconnection over a network for remote servicing of an electronic system upon experiencing a boot error. Thus, they address the same general problem and are similar in overall approach to solving that problem.” slip op. at 21

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner

    “Patent Owner continues to argue for a more restrictive construction of “network-enhanced software” that would require various specific functions of software described in the Specification. PO Resp. 8. However, we do not read into this claim term limitations of particular embodiments in the absence of a reason to do so. Here there is none. The term “network-enhanced software” appears only in the claims and not elsewhere in the Specification. We find no description of the term “network-enhanced software” in the Specification that would rise to the level of a definition. Embodiments are described as including a “network-enhanced BIOS.” The term “BIOS” appears in some, but not all, of the claims. We regard the term “network-enhanced software” as being broader in scope than “network-enhanced BIOS” based on our understanding that the term BIOS connotes to computer engineers specialized software particular to the rudimentary operation of a computer. We therefore adopt our preliminary constructions along with our reasoning expressed in our Decision to Institute for purposes of this decision. Dec. to Inst. 12−14.” slip op. at 10

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “knowledge of one of ordinary skill when reading Chang and Dent. This knowledge includes the subject matter described by Melo, Banset, IBM and Bartek. The ordinarily skilled person reading these references would appreciate that when a computer using an Intel 80386 or 80486 processor is first turned on, it begins operation in “real mode.” Pet. 37; Ex. 1019 ¶ 53. Petitioner establishes that Chang meets the “second BIOS” limitation by offering the unrebutted Righi testimony which explains the knowledge of one of ordinary skill of real and protected modes, and that it would have been obvious to execute the second BIOS in protected mode, which was well-known at the time of the invention. Ex. 1019 ¶¶ 48–57. Patent Owner offers no testimony to counter the Righi testimony. We find that, at the time of the invention, real and protected modes were commonly used modes of operation in Intel processors and that these modes would have been known to those of ordinary skill. One of ordinary skill would have applied this knowledge along with the specific teachings of Chang and Dent to make the claimed invention. We therefore conclude that Petitioner has established by a preponderance of the evidence that claims 37 and 51 are unpatentable based on Chang and Dent.” slip op. at 26

  Patent outcomesUS 5,978,912 mixed
  Claim construction§ 103 obviousness
  Patents in suitUS 5,978,912
• Unified Patents Inc. v. William GreciaInstitution denied
  PTAB · Aug 30, 2016 · IPR2016-00602 · APJ Michelle N Wormmeester · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of proving claim 1 unpatentable over DeMello or Pestoni, alone or in the asserted combinations.

  RulingsInstitution decision

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

    “requesting inter partes review of claim 1 of U.S. Patent No. 8,887,308 B2 (Ex. 1003, “the ’308 patent”). William Grecia (“Patent Owner”) filed a Preliminary Response (Paper 7, “Prelim. Resp.”). We have jurisdiction under 35 U.S.C. § 314(a), 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.” For the reasons that follow, we have decided not to institute an inter partes review.” slip op. at 2

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

    “reasonable interpretation in light of the specification of the patent in which they appear. See 37 C.F.R. § 42.100(b); Cuozzo Speed Techs. LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016) (upholding the use of the broadest reasonable interpretation standard). Under this standard, claim terms are generally given their ordinary and customary meaning, as would be understood by one of ordinary skill in the art in the context of the entire disclosure. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). A “claim term will not receive its ordinary meaning if the patentee acted as his own lexicographer,” however, and clearly set forth a definition of the claim term in the specification. CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002).” slip op. at 6

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

    “Claim 1 requires the “credential” to be assigned to the apparatus of (a). As Patent Owner points out, the specification of the ’308 patent describes such credential as “an API Key, an Application Secret Key and could also include an Application ID,” which “[is] usually embedded in the source code of the apparatus, or stored on a remote Internet server.” Id. at 28–29 (citing Ex. 100[3], 10:51–56); Ex. 1003, 10:51–66. The apparatus, such as an Internet-powered desktop or a browser-based application, uses the API Key to establish a data exchange session with the API. Ex. 1003, 10:51–58. By contrast, the “credential in DeMello is assigned to the user, not the device.” Prelim. Resp. 28. As Petitioner explains, “[i]n DeMello, the reader prompts a user to provide login credentials (e.g., PASSPORTTM credentials) to connect to the PASSPORT server via the API of the PASSPORT server to authenticate the user at the PASSPORT server.” Pet. 31 (emphases added); see also Ex. 1006, 23:6–10. Further, Mr. Cherukuri characterizes the PASSPORT credentials as “user’s credentials.” See Ex. 1009 ¶ 72 (cited at Pet. 32) (emphasis added). Neither Petitioner nor Mr. Cherukuri explains persuasively how the user PASSPORT credentials in DeMello are assigned to the reader (apparatus of (a)). Based on the record presented, we are not persuaded that DeMello discloses the recited credential. In view of the foregoing, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing in showing that DeMello anticipates claim 1.” slip op. at 9

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

    “B. Obviousness over DeMello, Wieder, and the Admitted Prior Art Petitioner argues that claim 1 of the ’308 patent would have been obvious over DeMello, Wieder, and “the admitted prior art.” See Pet. 19– 39. Petitioner does not cite Wieder or the admitted prior art as teaching the elements found to be lacking in the above discussion with respect to DeMello. Accordingly, on this record, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing on its assertion that claim 1 would have been obvious over DeMello, Wieder, and the admitted prior art.” slip op. at 10

  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 8,887,308
• Google Inc. v. Better Food Choices LLCAll claims unpatentable
  PTAB · Aug 18, 2016 · CBM2015-00071 · APJ Minn Chung · CBM · Final written decision

  Claims 1–20 are unpatentable under § 101; claims 1–10 are also indefinite under § 112, ¶ 2 because the specification lacks an algorithm for the claimed correlating function.

  RulingsFinal written decision

  • BurdenOther

    “As an initial matter, Patent Owner asserts that Petitioner has not met its burden of proof because Petitioner relies only on the ’115 patent and its prosecution history to argue unpatentability and does not present any other evidence, such as a witness. PO Resp. 6–7, 13–20. Patent Owner argues that Petitioner has presented no evidence of unpatentability because the ’115 patent and its file history “shows the Patent Owner has a valid, issued patent and nothing more.” Id. at 7. We are not persuaded because, as discussed below, in this case we need to look only to the ’115 patent and its prosecution history to support a finding of unpatentability under §§ 101 and 112. See In re TLI Comm. LLC Patent Litig., 823 F.3d 607, 613–14 (Fed. Cir. 2016) (the patent alone is sufficient to sustain a finding of unpatentability under § 101).” 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

    “rebuttable presumption that the limitation is written in a means-plus-function format under 35 U.S.C. § 112, ¶ 6. TriMed, Inc. v. Stryker Corp., 514 F.3d 1256, 1259 (Fed. Cir. 2008) (citation omitted). If, in addition to the word “means” and the functional language, the claim recites sufficient structure for performing the described functions in their entirety, the presumption is overcome, and § 112, ¶ 6 does not apply. Id. “Sufficient structure exists when the claim language specifies the exact structure that performs the functions in question without need to resort to other portions of the specification or extrinsic evidence for an adequate understanding of the structure.” Id. at 1259–60.” slip op. at 28

  • Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionUnpatentable

    “with the Supreme Court and Federal Circuit precedents on step one analysis under the Alice framework. In step one of the Alice analysis, to determine whether the challenged claims are directed to an abstract idea, the inquiry is to ask, considered in light of the Specification, whether “their character as a whole” is directed to an abstract idea, not, as Patent Owner contends, identifying the “core invention” of the patent. See Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (quoting Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015)). Relying on the distinction made in Alice between, on one hand, computer-functionality improvements and, on the other, uses of existing computers as tools in aid of processes focused on “abstract ideas,” the court in Enfish clarified that a relevant inquiry in step one of the Alice framework is to ask whether the “focus” of the claims is on the specific asserted improvement in computer capabilities or, instead, on a process that qualifies as an “abstract idea” for which computers are invoked merely as a tool. Enfish, 822 F.3d at 1335–36 (citing Alice, 134 S. Ct. at 2358–59). In this inquiry, claims “directed to an improvement in the functioning of a computer” are contrasted with claims “simply adding conventional computer components to well-known business practices” or “generalized steps to be performed on a computer using conventional computer activity.” See TLI, 823 F.3d at 612 (quoting Enfish, 822 F.3d at 1338). The Federal Circuit further clarified recently and described the first-stage inquiry as “looking at the ‘focus’ of the claims, their ‘character as a whole.’” Elec. Power Grp., LLC v. Alstom S.A., No. 2015-” slip op. at 17

  • Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptStep2 no inventive conceptUnpatentable

    “claims fail to recite any elements that individually or as an ordered combination transform the abstract idea of collecting and correlating information to provide personalized nutritional information of food products to shoppers into a patent-eligible application of that idea. It is well-settled that mere recitation of concrete, tangible components is insufficient to confer patent eligibility to an otherwise abstract idea. TLI, 823 F.3d at 613. Rather, the recited components must involve more than performance of “‘well- understood, routine, conventional activit[ies]’ previously known to the industry.” Alice, 134 S. Ct. at 2359 (quoting Mayo, 132 S. Ct. at 1294).” slip op. at 22

  Patent outcomesUS 5,841,115 unpatentable
  Claim construction§ 101 eligibility§ 112 disclosurecites Alice · Mayo · Bilski · Enfish · Nautilus
  Patents in suitUS 5,841,115
• American Megatrends, Inc. / Micro-Star International Co., Ltd. et al. v. Kinglite Holding, Inc.Institution denied
  PTAB · May 31, 2016 · IPR2016-00122 · APJ Brian J Mcnamara · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 1–20 obvious over BBS and the knowledge of an ordinarily skilled artisan.

  RulingsInstitution decision

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

    “For this reason, Petitioner has not demonstrated that a person of ordinary skill would have been motivated to modify BBS to arrive at the subject matter recited in claim 1. Independent Claims 10 and 19 Petitioner contends that the combination of BBS and the knowlege of one of ordinary skill renders independent claim 10 obvious for reasons similar to those discussed with respect to claim 1 (Pet. 26) and that claim 19 is a computer program product claim similar in scope to apparatus claim 1 (id at 29). For the same reasons as discussed with respect to claim 1, we are not persuaded by Petitioner’s arguments concerning claims 10 and 19.” slip op. at 22

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

    “Reordering priorities, as urged by Petitioner, expressly contradicts the disclosure in BBS that the user cannot change priority using the Boot Menu. Ex. 1006, 42. BBS states: [u]nlike in Setup, the Boot Menu doesn’t allow you to edit the position of an IPL device in the IPL Priority. This menu simply allows you to select a Boot First device. A Boot First device attempts booting first before the regular IPR Priority is considered. You select a Boot First device from the Boot Menu by using the up/down keys to move the highlight bar to the desired device, and then by pressing <ENTER> the ordinal value from the IPL Priority for this selection is stored so that that later the INT 19h handler can boot from this device. Id. Thus, BBS discloses that a user who exercises the <HOT KEY> option during POST may select a Boot First device by highlighting it on a pop-up menu. Upon making this selection, the identifier of the Boot First device is saved and that device is used to boot the O/S. The user does not have the option of changing IPL Priority. BBS explicitly states that the Boot Menu does not allow a user to change the position of an IPL device in the IPL Priority. Thus, the priority swapping described by Petitioner as suggested by BBS is not allowed using the BBS Boot Menu. In BBS a user must reenter Setup to change the priority. Prelim. Resp. 14. Based on this disclosure alone, we agree with Patent Owner that one of ordinary skill would not have been motivated to swap priorities or the device numbers corresponding to the priorities.” slip op. at 21

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

    “Determine if a boot process should proceed from and determining whether to boot from Petitioner contends that there is no substantive difference between the two expressions determine if a boot process should proceed from (claims 1 and 19) and determining whether to boot from (claim 10) and that they are co-extensive in scope. Pet. 8. According to Petitioner, both expressions should be read to mean “[determine/determining], based on a user’s command to continue to boot from.” Id. at 9. Patent Owner contends that Petitioner reads “based on the user input” into these terms from an example in the specification and that Petitioner’s construction is superfluous if the claim preamble, which recites “based on user input” (independent claims 1 and 10),2 is given patentable weight. Prelim. Resp. 3–4. We agree with Patent Owner that the expressions are self-explanatory and should be given their plain and ordinary meaning in the context of the claims in which they appear.” slip op. at 8

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

    “If not Petitioner contends that if not should be construed to be at least as broad as “[determine/determining] to not continue to boot from.” Pet. 9. Patent Owner contends that if not should be construed to mean “if it is determined not to proceed with a boot process from a currently configured device. Prelim. Resp. 6. Patent Owner notes that the use of the word “continue” in Petitioner’s definition implies that a boot process has already been initiated, when that is not the case. Id. at 7. Patent Owner points to Figure 3 of the ’641 Patent in which the process flow first determines whether the boot process proceeds from the currently specified drive (step 120) and later, after making that determination and the desired drive is complete, the process flow initiates the boot process (step 140). Claim 1 recites as step (b) performing sub-steps (b.1), (b.2), and (b.3) if the condition in step (a) is not satisfied. The condition in step (a) is determining if a boot process should proceed from a currently configured device. The claim requires no further construction. If the boot process should proceed from the currently configured device the condition in step (a) is met, step (b) is by-passed, and at step (c) the boot process is initiated; if the boot process should not proceed from the currently configured device, the condition in step (a) is not met, the process moves to step (b) and sub-steps (b.1), (b.2), and (b.3) are performed.” slip op. at 10

  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,282,641
• Hospitality Core Services, LLC v. Nomadix, Inc.Institution denied
  PTAB · May 3, 2016 · IPR2016-00073 · APJ Trevor M Jefferson · IPR · Institution

  The Board denied institution on claims 1–17 because Petitioner did not show a reasonable likelihood of proving anticipation by Slemmer or obviousness over the asserted combinations.

  RulingsInstitution decision

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

    “1, “Pet.”) to institute an inter partes review of claims 1–17 of U.S. Patent No. 8,156,246 B2 (Ex. 1001, “the ’246 patent”) pursuant to 35 U.S.C. §§ 311–319. Patent Owner, Nomadix Inc., filed a Preliminary Response to the Petition. (Paper 6, “Prelim. Resp.”). We have jurisdiction under 35 U.S.C. § 314(a). Section 314(a) 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.” After considering the Petition, the Preliminary Response, and associated evidence, we conclude that Petitioner has not demonstrated a reasonable likelihood that it would prevail in showing unpatentability of claims 1–17.” slip op. at 2

  • Prior constructionPrior construction adoptedDecided for patent owner

    “Based on the record before us, neither Petitioner nor Patent Owner has provided sufficient evidence or argument that the CRU’s interpretation of “redirection server” should be discarded. Petitioner’s support for rejecting the CRU’s construction is to point to Patent Owner’s comments after the CRU’s reexamination decision in the ’894 patent. Pet. 31 (citing Ex. 1004, 1–2; Ex. 1001, 24:60–66, 36:52–55). Patent Owner’s comments do not definitively refute the reasoning and construction of “redirection server” and “redirection unit” set out by the CRU and applied in the ’894 reexamination. See Ex. 1004, 1–2; Ex. 1004, 67. We are also not persuaded by Patent Owner’s argument that the Specification of the ’246 patent indicates that the “redirection server” or “redirection unit” need not be a separate device. Prelim. Resp. 7. The Specification states that the redirection server may be located within the gateway device, which does not directly refute the CRU’s construction. Based on the record before us, we determine that the CRU’s interpretation of “redirection server” as claimed is not in error. Accordingly, we determine that “a redirection server [or portal page redirection unit] is a piece of hardware that can be configured as a stand-alone unit or an add-in module for a gateway device” and “is not software.” Ex. 1004, 67. B. Anticipation Based on Slemmer (Ex. 1005) and Obviousness Based on” slip op. at 7

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

    “Regardless of the confidential markings, Mr. Olsen does not indicate why, in his service as the lead software programmer (Ex. 1011 ¶ 1) with the “role of software development,” which included “working on all aspects of IPORT system including the development, implementation, and documentation” relating to the IPORT system (id. ¶ 3), he was privy to when, or whether, particular documents were placed on the company’s website. Further, although Mr. Olsen submits that documents including IPORT were “distributed to a number of major hotel chains,” and “many other existing and prospective customers” (id. ¶ 50) — with no clear indication of when — the Declaration does not allege or explain that distribution to those entities means that the document “must have been sufficiently accessible to the public interested in the art.” Lister, 583 F.3d at 1311. “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.” SRI Int’l, Inc. v. Internet Sec. Sys., Inc., 511 F.3d 1186, 1194 (Fed. Cir. 2008) (quoting Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 1378 (Fed. Cir. 2006)). Further, although Mr. Olsen testifies (Ex. 1020 ¶ 49) that information “describing IPORT” was “published on [ATCOM’s] website,” the testimony does not indicate how one of ordinary skill in the art, exercising reasonable diligence, could locate the IPORT documents in question. See SRI Int’l, 511 F.3d at 1186. We conclude that, on this record, Petitioner has failed to meet its burden of at least a preliminary showing that IPORT are printed publications as contemplated by 35 U.S.C. §§ 102 and 311(b).” slip op. at 13

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

    “1005) (Pet. 36–39) and rendered obvious by Slemmer and Vu (Ex. 1006) (Pet. 39–40). Petitioner relies on the “software control program” in Slemmer (Ex. 1005, 4:40–42) to disclose the “portal page redirection unit” in claim 1 and the “redirection server” in claims 6 and 9 of the ’246 patent. Petitioner concedes, however, that if “redirection server” and “portal page redirection unit” are construed as in the ’894 patent reexamination proceedings “to exclude a software proxy running on the gateway,” then the software proxy of Slemmer does not disclose the recited “redirection server” or “portal page redirection unit.” Pet. 36, 40. Based on our construction of “redirection server” and “portal page redirection unit” discussed above, we agree with Petitioner that the software program of Slemmer does not disclose the “portal page redirection unit” in claim 1 and the “redirection server” in claims 6 and 9 of the ’246 patent. Accordingly, we find that Petitioner has not demonstrated that there is a reasonable likelihood that it would prevail in showing that claims 1–17 are unpatentable as obvious under 35 U.S.C. § 103(a) over Slemmer and Vu, or unpatentable as anticipated by Slemmer under 35 U.S.C. § 102(e).” slip op. at 10

  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 8,156,246

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.