- Kaijet Technology International Limited, Inc. v. Sanho CorporationAll claims unpatentablePTAB · Oct 25, 2022 · IPR2021-00886 · APJ Joni Y Chang · IPR · Final written decision
Claims 1–6 and 13–17 are unpatentable over Kwon and Kuo, and over O’Shea, Kuo, and Chang; the O’Shea and Kuo ground alone fails for claim 1.
RulingsFinal written decision- Skill levelOther
“C. Level of Ordinary Skill in the Art In determining the level of ordinary skill in the art, various factors” slip op. at 18
- Expert testimonyOther
“1. Petitioner’s initial burden of production” slip op. at 24
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Other
“For these reasons, we clarify that a main port module is a component” slip op. at 10
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“1. Petitioner’s initial burden of production” slip op. at 24
Patent outcomesUS 10,572,429 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,572,429 - Intel Corporation v. Parkervision, Inc.All claims unpatentablePTAB · Jun 30, 2022 · IPR2021-00346 · APJ Iftikhar Ahmed · IPR · Final written decision
Claims 1, 6–9, 12, and 17–20 are unpatentable as obvious over Downey and Sedra, with Hahnel added for claims 6–9 and 17–20.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownNo construction neededDecided for petitioner
“second sentence using the pronoun “it” and specifically states that “[t]ypically” the type of input that may control the switch is “an electrical or electronic input.” This sentence is important at least because the patentees chose to describe these control inputs as “typically.” The use of “typically,” in this context, is non-limiting. In other words, the ’108 patent expressly leaves open the option that the described switch may be controlled with an input that is not electrical or electronic. The fourth, and final, sentence of this paragraph is critical. It specifically states that “[i]f the switch is controlled by an electronic signal, it is typically a different signal than the signals connected to either terminal of the switch.” This sentence is significant for several reasons. First, by stating “if the switch is controlled by an electronic signal” (emphasis added), the Specification reaffirms that the switch may be controlled by an input that is not an electronic signal. Second, reading the sentence as a whole, it states that “[i]f the switch is controlled by an electronic signal, it is typically a different signal than the signals connected to either terminal of the switch” (emphasis added). To clarify, a signal that is different than the signals connected to either terminal of the switch is what the parties refer to as “an independent control signal.” Thus, the fourth sentence, in the context of the parties’ dispute, means that if the switch is controlled by an electronic signal, it is typically an independent control signal. The same meaning of “typically” applies here, i.e., it is non-limiting. Thus, if the first part of the sentence that provides the conditional clause (if) is met, i.e., the switch is controlled by an electronic signal, the electronic signal is not always an independent control signal because typically does not require always. Putting the discussion above into context, particularly in comparison to the construction advocated by Patent Owner, it is important to recognize that the lexicographic definition does not require a switch to be “dictated by an independent control input” because the definition specifically says that if the switch is controlled by an electronic control signal it is typically a different signal (i.e., an independent signal). Thus, Patent Owner’s proposed construction seeks to limit the term “switch” to what is expressly stated in the Specification as typical.” slip op. at 21
- Skill levelSkill level board ownOther
“understanding of a person of ordinary skill in the art at the time of the invention. Graham, 383 U.S. at 17. Petitioner contends that a person of ordinary skill in the art “would have had at least a bachelor’s degree in 5 Neither party presents evidence of objective indicia of nonobviousness. electrical engineering or a related subject and two or more years of experience in the field of radio frequency circuit design.” Pet. 40 (citing Ex. 1002 ¶ 29). Patent Owner contends that a person of ordinary skill in the art “would have: (a) a Bachelor of Science degree in electrical or computer engineering (or a related academic field), and at least two (2) additional years of experience in the design and development of radio frequency circuits and/or systems, or (b) at least five (5) years of experience and training in the design and development of radio frequency circuits and/or systems.” PO Resp. 5 (citing Ex. 2022 ¶ 20). We determine that the two proposed levels are closely aligned and are consistent with the ’108 patent and the asserted prior art.6 See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). We adopt the following level in determining the patentability of the challenged claims: a person of ordinary skill in the art would have had a bachelor’s degree in electrical or computer engineering, or a related subject, and two years of experience in the field of radio frequency circuit design and development.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Downey alone discloses this limitation. As discussed above, Patent Owner argues at length about why inverter U5A in Downey’s frequency tripler circuit is not configured as a switch and does not operate as a switch. Patent Owner’s arguments are based on the specific circuit components shown in Downey’s frequency tripler circuit and characteristics of the MM74C04 inverter. Patent Owner does not address Petitioner’s contention that the combination of Downey and Sedra also teaches this limitation, except to argue that Sedra’s inverter when combined with Downey “would not change the operation of Downey’s frequency tripler circuit,” and that a person of ordinary skill in the art “would have to ignore all of the disclosure in Downey, and abandon all of the teachings and suggestions of Downey” to combine the two references. PO Resp. 49–50. Patent Owner therefore does not meaningfully address Petitioner’s proposed combination. See In re Mouttet, 686 F.3d 1322, 1333 (Fed. Cir. 2012) (“the test for obviousness is what the combined teachings of the references would have suggested to those having ordinary skill in the art”) (citing In re Keller, 642 F.2d 413, 425 (CCPA 1981)). The claims require “a first switch configured to up-convert.” Sedra specifically discloses a switch used to implement an inverter, and also states that an “inverter is basically a voltage-controlled switch”—disclosure that Patent Owner does not dispute. See Ex. 1004, 908–09, Fig. 13.2. Patent Owner also does not dispute that Downey’s frequency tripler circuit includes an inverter that upconverts the input signal. Ex. 1003, 4:8–13. Patent Owner’s arguments are directed to the inverter U5A that operates as a non-linear amplifier, as disclosed in Downey. PO Resp. 46–50. Patent Owner specifically argues “[i]nverter U5A in the frequency tripler circuit of Downey is not configured as a switch, nor can it be without rendering the circuit unsuitable for its intended purpose.” PO Resp. 48. But Sedra’s inverter is a switch. Patent Owner does not explain why a switch-based inverter would not work in Downey to accomplish the up-conversion.” slip op. at 39
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Decided for petitioner
“IV. PETITIONER’S OBJECTION TO PATENT OWNER’S DEMONSTRATIVES At the oral hearing, Petitioner objected to Patent Owner’s demonstratives 81 and 82 (see Paper 30) as containing new arguments that were not previously presented by Patent Owner. Tr. 6:17–7:1. Petitioner argued that those demonstratives contain testimony from Dr. van der Weide that Patent Owner did not cite in its Sur-reply and address an issue that was not presented in Patent Owner’s Response. Id. Patent Owner did not rely on those demonstratives during the oral hearing. Id. at 8:10–15 (Patent Owner’s counsel stating that he may not refer to those demonstratives during the hearing). We therefore dismiss Petitioner’s objection as moot.21” slip op. at 70
Patent outcomesUS 8,190,108 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,190,108 - Hulu, LLC v. Sito Mobile R&D IP, LLC And Sito Mobile, Ltd.All claims unpatentablePTAB · May 4, 2022 · IPR2021-00265 · APJ Joni Y Chang · IPR · Final written decision
Claims 15–19, 21, 24, and 27 are unpatentable as obvious over Eyal and Wiser; claims 15, 16, 19, 21, and 27 are also unpatentable over Madison and Wiser.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for patent owner
“The Specification sets forth the following definition: “[a] reservation is a feature that enables the streaming system 102 to reserve system resources, such as switches, processors, or media, either now or in the future, to ensure a quality media experience.” Ex. 1001, 11:59−62 (emphasis added). The Federal Circuit has recognized that “the specification may reveal a special definition given to a claim term by the patentee that differs from the meaning it would otherwise possess,” and “[i]n such cases, the inventor’s lexicography governs.” Phillips, 415 F.3d at 1316 (citing CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002). Therefore, consistent with the definition in the Specification, we construe “reservation” as “a feature that enables the streaming system . . . to reserve system resources, such as switches, processors, or media, either now or in the future, to ensure a quality media experience.” Ex. 1001, 11:59−62. We agree with Patent Owner that the construction of the term “reservation” does 7 not require “a set of instructions uniquely identifying the communication device.” As to “reservation identification,” we adopt Patent Owner’s construction, construing the term “reservation identification” as “identification of a reservation” because this construction is consistent with the term’s plain and ordinary meaning, without requiring the identification to be unique.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“is a feature that enables the streaming system 102 to reserve system resources, such as switches, processors, or media, either now or in the future, to ensure a quality media experience.” Ex. 1001, 11:59−62 (emphasis added). The Federal Circuit has recognized that “the specification may reveal a special definition given to a claim term by the patentee that differs from the meaning it would otherwise possess,” and “[i]n such cases, the inventor’s lexicography governs.” Phillips, 415 F.3d at 1316 (citing CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002). Therefore, consistent with the definition in the Specification, we construe “reservation” as “a feature that enables the streaming system . . . to reserve system resources, such as switches, processors, or media, either now or in the future, to ensure a quality media experience.” Ex. 1001, 11:59−62. We agree with Patent Owner that the construction of the term “reservation” does 7 not require “a set of instructions uniquely identifying the communication device.” As to “reservation identification,” we adopt Patent Owner’s construction, construing the term “reservation identification” as “identification of a reservation” because this construction is consistent with the term’s plain and ordinary meaning, without requiring the identification to be unique.” slip op. at 7
- Skill levelSkill level patent owner adoptedDecided for patent owner
“Here, Petitioner asserts that a person of ordinary skill in the art of the ’360 patent would have had “at least a bachelor’s degree in computer science, electrical or computer engineering, or equivalent.” Pet. 16. And, such an artisan also would have had “at least two years of experience in distributed systems, multimedia streaming, and various HTTP-related technologies, or an equivalent amount of relevant work or research experience,” citing to the Declaration of Henry Houh, Ph.D., for support. Id. (citing Ex. 1003 ¶¶ 59−61). Patent Owner’s declarant, Mr. Michael Adams, provides similar assessment, but also testifies that such an artisan, alternatively, would have had “at least five years of work experience and training in the design and development of distributed network systems and/or multimedia streaming.” Ex. 2012 ¶ 28. Neither party points out any meaningful difference between the parties’ assessments. We apply Patent Owner’s assessment on the level of ordinary skill in the art. However, our analysis would be the same under either party’s description.” slip op. at 9
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableUnpatentable
“added). Dr. Houh testifies that an ordinarily skilled artisan would have used Wiser’s voucher ID in Eyal’s play-list because delivery servers may have a “limited number of active streams of data being delivered at any one time,” so that generating and tracking reservations by the content server using voucher IDs is necessary. Ex. 1003 ¶ 144 (citing Ex. 1006, 14:65−15:1). We agree with and credit Dr. Houh’s testimony, and we find that such an artisan of ordinary skill would have understood that, in Eyal in combination with Wiser, the voucher ID provided in the play-list is uniquely associated with the client device and a viewing session of the media. Ex. 1003 ¶ 151 (citing Ex. 1006, 8:30−33, 15:23−28). We do not agree with Patent Owner’s assertion that “Wiser teaches away from video.” PO Resp. 33 (citing Ex. 2012 ¶ 174). “A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.” In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). Here, nothing in Wiser would discourage a relevant artisan from applying its teachings to video media, as Patent Owner alleges. Patent Owner’s argument of teaching away is based on speculation. As discussed above, Wiser’s disclosure is not limited to audio media. Ex. 1006, 1:5−8, 1:23−26, 3:8−10; Ex. 1083, 145:20−147:21. The “mere disclosure of alternative designs does not teach away.” In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Moreover, KSR instructs us that “if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize 20 that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.” KSR, 550 U.S. at 417. As Dr. Houh testifies, “[s]ervers’ limited streaming capacity was a common media delivery problem, and well-known solutions existed before the ’360 Patent, including generating a reservation to ensure resource availability for streaming media to the user.” Ex. 1003 ¶¶ 106, 167 (citing Ex. 1019, 263 (Discussion on Resource Reservation Protocols (RSVP) in the book entitled “Communication and Computing for Distributed Multimedia Systems”); Ex. 1023 (RSVP Specification); Ex. 1024, 194 (Discussion on the Reservation Protocol in the book entitled “Multimedia Servers”)).” slip op. at 20
Patent outcomesUS 9,591,360 unpatentableClaim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites KSR · GrahamPatents in suitUS 9,591,360 - Hulu, LLC v. Sito Mobile R&D IP, LLC And Sito Mobile, Ltd.All claims unpatentablePTAB · May 4, 2022 · IPR2021-00206 · APJ Thomas L Giannetti · IPR · Final written decision
Claims 1–3, 10, 11, 14, 34, 35, 37, 39, 43, and 47–50 are unpatentable as obvious over the stated prior-art combinations.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“U.S. Patent No. 8,825,887 (“the ’887 patent”). The claims of that patent include the same term referring to “at least one portion,” and the ’887 patent shares its written description with the ’636 patent. In our Final Written Decision in CBM2020-00028 (Paper 33, 9−13), we found that the plain and ordinary meaning of this term encompasses one or more portions of the “requested media,” as well as the entirety of the “requested media.” CBM2020-00028, Paper 33 at 10–11. We declined to adopt Patent Owner’s implicit claim construction because it improperly imports extraneous limitations into the claims and excludes a preferred embodiment. Id. at 11–” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“as “a file containing one or more media references and other information used by a communication device to obtain media.” PO Resp. 14–17. Patent Owner contends that “a play script is not itself limited to being a list.” Id. at 15. Patent Owner argues that a script “is a file, which can be processed by a computer to obtain media” because the claims recite that the play script contains “instructions.” Id. Patent Owner also cites the district court’s adoption of this construction. Id. at 13–14. Whether or not a playlist is a file is not a meaningful distinction for the purposes of this Final Written Decision. As Petitioner notes, all of the “play scripts” identified by Petitioner in the prior art are files. Reply 6. We agree with Petitioner that we need not determine which party’s construction applies for purposes of our analysis. Nidec, 868 F.3d at 1017.” slip op. at 13
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for patent owner
“reservation. Patent Owner now proposes the following construction: “arrangement regarding reserved resources of a streaming system.” PO Resp. 17. Patent Owner cites the specification and Mr. Adam’s testimony 13 for support. Id. (citing Ex. 1001, 10:33−37; Adams Decl. ¶ 110). Mr. Adam relies on the ’636 patent specification, which states that “[a] reservation is a feature that enables the streaming system 102 to reserve system resources, such as switches, processors, or media, either now or in the future, to ensure a quality media experience.” Ex. 1001, 10:33–37. Further, “[t]he reservation uniquely identifies the viewer 118 or 120 and the customized play script.” Id. at 10:27–28, 10:34–37. The Federal Circuit has recognized that “the specification may reveal a special definition given to a claim term by the patentee that differs from the meaning it would otherwise possess,” and “[i]n such cases, the inventor’s lexicography governs.” Phillips, 415 F.3d at 1316 (citing CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002). Based on the description in the specification, we construe “reservation” as “a feature that enables the streaming system 102 to reserve system resources, such as switches, processors, or media, either now or in the future, to ensure a quality media experience.” Ex. 1001, 10:33–37.” slip op. at 13
- Skill levelSkill level patent owner adoptedDecided for patent owner
“Neither party points out any meaningful difference between the parties’ assessments. We therefore apply Patent Owner’s more detailed assessment on the level of ordinary skill in the art. This proposal is consistent with the ’636 patent, the prior art of record, and is supported by 16 the testimony of Mr. Adams. Adams Decl. ¶¶ 27–29. However, our analysis would be the same under either party’s description.” slip op. at 16
Patent outcomesUS 9,135,636 unpatentableClaim construction§ 103 obviousness§ 112 disclosurecites KSR · GrahamPatents in suitUS 9,135,636 - Hulu, LLC v. Sito Mobile R&D IP, LLC And Sito Mobile, Ltd.All claims unpatentablePTAB · Mar 11, 2022 · CBM2020-00028 · APJ Joni Y Chang · CBM · Final written decision
Claims 1–12, 39–41, 45–56, 68, and 98–126 are unpatentable under § 101 because they claim an abstract idea implemented with generic computer components.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“various HTTP-related technologies, or an equivalent amount of relevant work or research experience.” Ex. 1003 ¶ 35. Patent Owner’s declarant, Michael Sprenger, Ph.D., similarly testifies that a person of ordinary skill in the art would have had “a Bachelor of Science degree in computer science, electrical engineering, or computer engineering (or a related academic field), and at least two additional years of work experience in the design and development of distributed network systems and/or multimedia streaming.” Ex. 2009 ¶ 33; PO Resp. 4−5. Dr. Sprenger also testifies that, alternatively, such an artisan would have had “at least five years of work experience and training in the design and development of distributed network systems and/or multimedia streaming.” Ex. 2009 ¶ 33; PO Resp. 4−5. Neither party points out any meaningful difference between the parties’ assessments. Based on the evidence of record, we apply Patent Owner’s assessment on the level of ordinary skill in the art, as Dr. Sprenger provides an alternative to a college degree.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“We agree with Petitioner. Patent Owner’s implicit claim construction improperly imports extraneous limitations into the claims—namely, excluding the entirety of the “requested media” or requiring that the “requested media” be broken up into portions. It is well-settled that if a feature is not necessary to give meaning to what the inventor means by a claim term, it would be “extraneous” and should not be read into the claim. Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1249 (Fed. Cir. 1998); E.I. du Pont de Nemours & Co. v. Phillips Petroleum Co., 849 F.2d 1430, 1433 (Fed. Cir. 1988). The plain and ordinary meaning of the term “at least one portion of the requested media” as used in the ’887 patent does not support Patent Owner’s implicit construction. In the context of the ’887 patent, the plain 4 For example, other variations include “at least a portion of the requested media” recited in claim 1 and “the at least the portion of the requested media” recited in claim 2. 10 and ordinary meaning of the term encompasses one or more portions of the “requested media,” as well as the entirety of the “requested media.” For example, the portions of the Specification relied upon by Patent Owner disclose that the viewer requests a media clip and receives the entirety of the requested media clip, not one portion at a time. Ex. 1001, 13:49−14:2. Patent Owner’s implicit construction ignores the modifiers “at least” and “requested” recited in the term.” slip op. at 10
- Prior constructionPrior construction adoptedDecided for patent owner
“Patent Owner submits that the District Court construed the claim term “settlement record” as “billable event record to be used for revenue 13 settlement.” PO Resp. 29−30; Ex. 2008, 2. This construction is consistent with the Specification. See, e.g., Ex. 1001, 9:18−20 (“to generate the settlement rules that define who will be billed or credited”), 12:17−19 (“RTSMS 106 processes the logs, the billing data, and the state model data and creates a message sequence detail record (MSDR).”), 12:25−26 (“The MSDR represents a billable event record that will be used for revenue settlement purposes.”), 12:56−62. As such, we adopt the District Court’s claim construction, construing “settlement record” as “billable event record to be used for revenue settlement.”” slip op. at 13
- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionDecided for petitioner
“Upon review of this entire trial record, we are persuaded by Petitioner’s showing and find that the challenged claims recite a concept that falls within one of the enumerated groupings of abstract ideas—certain methods of organizing human activity, e.g., “commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations).” See Guidance, 84 Fed. Reg. at 52. The abstract idea here is not meaningfully different from the ideas found to be abstract in other cases before the Federal Circuit. Notably, each challenged claim recites a method in which a “computing device” generates a “communication” based on the characteristics of the user in response to a request for media to be streamed. The Federal Circuit has held that “the concept of delivering user-selected media content to portable devices is an abstract idea.” Affinity Labs of Texas, LLC v. Amazon.com Inc., 838 F.3d 1266, 1269 (Fed. Cir. 2016). The Federal Circuit also has held that claims related to “customizing information based on (1) information known about the user and (2) [specific] data” are directed to abstract ideas. Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1369−70 (Fed. Cir. 2015) (noting that “[a]n advertisement taking into account the time of day and tailoring the information presented to the user based on that information is another ‘fundamental . . . practice long prevalent in our system’” (quoting Alice, 573 U.S. 219)); see also British Telecommunications PLC v. IAC/InterActiveCorp, 813 F. App’x 584, 587 (Fed. Cir. 2020) (holding that the concept of “providing lists of 30 location-specific information sources to users based on their location” was an abstract idea). In addition, we find that the claim limitations involving a “revenue sharing rule” and “producing a settlement record” that reflects the revenue sharing do not remove the challenged claims from the realm of abstract ideas. See, e.g., Pet. 38−40. Notably, recording revenue sharing constitutes a practice of organizing human activity, which is rooted in assessing sales and economic interactions—a fundamental economic practice. The Supreme Court has held in Alice that “a method of exchanging financial obligations between two parties using a third-party intermediary to mitigate settlement risk” is “a fundamental economic practice long prevalent in our system of commerce” and that “the concept of intermediated settlement . . . [is] squarely within the realm of ‘abstract ideas.’” Alice, 573 U.S. at 219−22.” slip op. at 30
Patent outcomesUS 8,825,887 unpatentableClaim construction§ 101 eligibilitycites Alice · Mayo · Bilski · PhillipsPatents in suitUS 8,825,887 - One World Technologies, Inc. D/B/A Techtronic Industries Power Equipment v. The Chamberlain Group, Inc.All claims unpatentablePTAB · Oct 10, 2018 · IPR2017-01132 · APJ Joni Y Chang · IPR · Final written decision
Claims 12–21 are unpatentable as anticipated by Menard; the Board did not reach the Menard and Lee obviousness ground for claims 13 and 21.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“Ex. 1001, 5:42. Petitioner asserts that the term “status of the movable barrier” should be construed as the state of the moveable barrier (e.g., whether a door is open or closed). Pet. 7. Petitioner argues that the Specification supports this construction as it discloses that, “[i]n order to check the status of the movable barrier[,] the user would go look at the movable barrier to see if it was open or closed.” Id. (citing Ex. 1001, 1:26−28) (emphasis omitted). Petitioner further notes claims 15 and 16 recite “wherein the status of the movable barrier is open,” and “wherein the status of the movable barrier is closed,” respectively. Id. at 7−8; Ex. 1001, 6:11−14. Patent Owner does not dispute Petitioner’s proposed claim construction as to this term. See Prelim. Resp. 2−3; PO Resp. 2. In light of the Specification including the dependent claims, we agree with and adopt Petitioner’s claim construction, construing “status of the movable barrier” as “the state of the moveable barrier (e.g., whether a door is open or closed).”” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“However, Patent Owner’s proposed claim construction, interpreting “computer” as “personal computer,” would improperly import a limitation from a preferred embodiment or specific example into the claims. See In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993) (limitations are not to be read from the specification into the claims). Our reviewing court “has repeatedly cautioned against limiting the claimed invention to preferred embodiments or specific examples in the specification.” Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1346–47 (Fed. Cir. 2015) (citations and quotation marks omitted); SuperGuide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) (noting that “it is important not to import into claim limitations that are not a part of the claim”). Moreover, Dr. Davis conceded during his cross-examination that the term “computer” as used in the ’977 patent is broader than the term “personal computer.” Ex. 1015, 11 87:3−7 (stating that “if you look at all of the devices back in column 2 [of the ’977 patent], a cellular phone, a personal computer, a PDA, at some level, they’re all a computer”). Thus, we decline to adopt Patent Owner’s narrow construction, and conclude that no further construction of “computer” is necessary.” slip op. at 11
- Skill levelSkill level petitioner adoptedDecided for petitioner
“may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). Mr. Lipoff testifies that a person with ordinary skill in the art “would have had at least an undergraduate degree in electrical engineering, or equivalent education, and one to two years of work experience in the fields of: (i) network communication systems; (ii) systems for access control or automated door systems; or (iii) equivalent work 3 Neither party presents objective evidence of nonobviousness in this trial. 13 experience or training.” Ex. 1008 ¶ 30. Patent Owner does not dispute Mr. Lipoff’s assessment regarding the level of ordinary skill in the art. See generally PO Resp. Based on the record before us, we agree with and apply Mr. Lipoff’s assessment regarding the general knowledge of a person with ordinary skill in the art. We further note that the prior art of record in the instant proceeding reflects the appropriate level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (“the prior art itself reflects an appropriate level” of ordinary skill in the art).” slip op. at 13
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“(Ex. 2001 ¶¶ 25−35), however, are based on an unduly narrow interpretation of Menard’s teachings. Anticipation is not an ipsissimis verbis test. See Gleave, 560 F.3d at 1334; Bond, 910 F.2d at 832. It is well established that “‘the dispositive question regarding anticipation [i]s whether one skilled in the art would reasonably understand or infer from [the prior art reference’s] teaching’ that every claim element was disclosed in that single reference.” Dayco Prods., Inc. v. Total Containment, Inc., 329 F.3d 1358, 1368 (Fed. Cir. 2003) (citation and emphasis omitted). Significantly, Patent Owner conflates Menard’s disclosures regarding a one-way pager, which can only receive messages, not transmit them, with a two-way pager, which can receive and transmit messages. Menard explains that the user, using a one-way pager, “may operate the door opener . . . using another communication channel, including for example, a cellular telephone or a personal communication device.” Ex. 1003 ¶ 50 (emphasis added). In contrast, Menard discloses “[u]sing a two way pager, the user may operate the door opener, or operate an actuator, using the reply communication channel of the pager.” Id. (emphasis added). In the very next sentence, Menard states that “[t]he outbound signal (e.g., indicating the 26 door position) may be transmitted to the pager . . . upon inquiry.” Id. (emphases added). As Mr. Lipoff explains, “the” before “pager” refers to the two-way pager from the immediately preceding sentence, which uses a communication channel and “reply” communication channel. Ex. 1014 ¶ 26. The “upon inquiry” wording in paragraph 50 cannot be read in isolation; rather, a person of ordinary skill in the art would have read it in context with the surrounding disclosure in Menard. Mr. Lipoff testifies that such an artisan would have understood from Menard’s full disclosure that the user uses the same two-way pager to request and receive the door position status over the same network. Ex. 1008 ¶¶ 78−79, 89−93; Ex. 1014 ¶¶ 24−26. Again, we credit Mr. Lipoff’s testimony, as it is consistent with Menard’s disclosure (Ex. 1003 ¶¶ 9−11, 29, 41, 44, 50, 69).” slip op. at 26
Patent outcomesUS 6,998,977 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,998,977 - One World Technologies, Inc. D/B/A Techtronic Industries Power Equipment v. The Chamberlain Group, Inc.All claims unpatentablePTAB · Oct 10, 2018 · IPR2017-01137 · APJ Joni Y Chang · IPR · Final written decision
Claims 1–11 and 22–25 are unpatentable: claims 1–4, 6–11, and 22–25 as anticipated by Menard; claims 3, 5, 11, and 25 also as obvious over the stated combinations.
RulingsFinal written decision- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“prior art under § 102(a) because it was published at least as early as on July 1, 2002. Pet. 3. Petitioner also avers that the HomeRF v2.0 Specification (Ex. 1012) is prior art under § 102(b) because it were published at least as early as May 7, 2001. Pet. 3. Each reference includes a revision date on its first page. Ex. 1004, 1; Ex. 1012, 1. Moreover, Petitioner proffers the Declaration of Wayne Caswell, who confirms the publicly-available dates of these references. Ex. 1011 ¶ 6. In addition, Petitioner asserts that Held (Ex. 1005) is prior art under § 102(b) because it was published on May 31, 2000 by CRC Press LLC, and it was publicly available in Stanford University’s Engineering Library at least as early as October 26, 2000. Pet. 3. Petitioner proffers a copy of Held showing a date stamp of “OCT 26 2000” from Stanford University’s Engineering Library. Ex. 1006, 4. Patent Owner does not dispute Petitioner’s assertions and supporting evidence regarding the publication dates of these references. See generally PO Resp. Based on the evidence before us, we find Petitioner has established that the HomeRF Specifications and Held are prior art printed publications under 35 U.S.C. § 102. See Pet. 3; Exs. 1006, 1011.” slip op. at 6
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyNo construction neededDecided for patent owner
“We agree with Patent Owner. As stated by the United States Court of Appeals for the Federal Circuit, “[t]he standard is whether the words of the claim are understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for structure.” Williamson, 792 F.3d at 1349. Petitioner does not account sufficiently for how the term “controller” is used in the context of the ’977 patent and the relevant art. For example, as Patent Owner notes, the Specification of the ’977 patent “describes ‘a moveable barrier operator’ that includes a ‘power drive unit 20’ having a ‘controller 300 . . . which controls the motor of power drive 20 to control the movement and/or position of the barrier.’” Prelim. Resp. 4 (citing Ex. 1001, 2:47−49). The Specification also indicates that such moveable barrier operators were known in the art. Id. 2:49−53 9 (explaining “[i]t should be well understood that . . . any properly equipped system for controlling a moveable barrier can make use of the status identifying apparatus disclosed herein.”). Therefore, controllers were known in the art as components of existing barrier movement operators. See also Pet. 10–11 (acknowledging that controllers for “controlling movement of a movable barrier” were “well-known in the prior art”). Moreover, Petitioner does not explain why a person ordinarily skilled in the field of controlling and monitoring power doors would not have appreciated a “controller” to have a sufficiently definite meaning as the name for structure, in view of the prior art of record—for example, Menard discloses a system with a processor for controlling and managing a door opener remotely from a pager or a cellular telephone (Ex. 1003 ¶ 9, Fig. 2). In light of the foregoing, we decline to adopt Petitioner’s proposed claim construction that interprets “a controller for controlling movement of a movable barrier” as a means-plus-function claim element invoking § 112, ¶ 6. Rather, we conclude that the term is not governed by § 112, ¶ 6, and that no further interpretation is necessary.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“network.” Ex. 1001, 5:11−12. Petitioner asserts that the term “status of the movable barrier” should be construed as the state of the moveable barrier (e.g., whether a door is open or closed). Pet. 11. Petitioner argues that the Specification supports this construction as it discloses that, “[i]n order to check the status of the movable barrier[,] the user would go look at the 10 movable barrier to see if it was open or closed.” Id. (citing Ex. 1001, 1:26−28) (emphasis omitted). Petitioner further notes claims 15 and 16 recite “wherein the status of the movable barrier is open,” and “wherein the status of the movable barrier is closed,” respectively. Id. at 11−12; Ex. 1001, 6:11−14. Patent Owner does not dispute Petitioner’s proposed claim construction as to this term. See generally PO Resp. In light of the Specification including the dependent claims, we agree with and adopt Petitioner’s claim construction, construing “status of the movable barrier” as “the state of the moveable barrier (e.g., whether a door is open or closed).”” slip op. at 10
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“claims 1 and 22 requires that a status request be received over a network or plurality of networks and the status be sent over the same network or plurality of networks in response to the status request, we are not persuaded by Patent Owner’s arguments and supporting evidence that Menard fails to disclose the limitations. Rather, we determine Petitioner has established that an ordinarily skilled artisan would have understood Menard to disclose a user using a two-way communication device to request and receive the door position status over the same network or networks. Ex. 1008 ¶¶ 108−110; Ex. 1014 ¶ 25. First, Patent Owner opposes Petitioner’s assertion that Menard’s signal indicating the door position status sent “upon inquiry” discloses “the status request is received over a network.” PO Resp. 5. Patent Owner argues that Menard does not disclose the source of the status inquiry, and that the status inquiry is not received over a network. Id. at 3−16. In Patent Owner’s view, the status inquiry could be sent from the system itself to the door position sensor, not from the user’s communication device over a network. Id. Patent Owner contends that Figure 8 of Menard supports its 29 argument that the status inquiry is not a request over the network because the flowchart in Figure 8 does not show the communication device transmitting any type of “inquiry” over the network. Id. at 6−8. Patent Owner’s argument and Dr. Davis’ supporting testimony (Ex. 2001 ¶¶ 25−38), however, are based on an unduly narrow interpretation of Menard’s teachings. Anticipation is not an ipsissimis verbis test. See Gleave, 560 F.3d at 1334; Bond, 910 F.2d at 832. It is well established that “‘the dispositive question regarding anticipation [i]s whether one skilled in the art would reasonably understand or infer from [the prior art reference’s] teaching’ that every claim element was disclosed in that single reference.” Dayco Prods., Inc. v. Total Containment, Inc., 329 F.3d 1358, 1368 (Fed. Cir. 2003) (citation and emphasis omitted). Significantly, Patent Owner conflates Menard’s disclosures regarding” slip op. at 29
Patent outcomesUS 6,998,977 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,998,977 - Panduit Corp. v. CCS Technology, Inc.All claims unpatentablePTAB · Oct 4, 2018 · IPR2017-01323 · APJ Daniel J Galligan · IPR · Final written decision
Claims 3 and 4 are unpatentable as obvious over the combined teachings of Eichenberger and Bennett under § 103(a).
RulingsFinal written decision- Skill levelSkill level board ownOther
“Although there are differences between the proposed levels of ordinary skill in the art, the parties and their declarants agree that an ordinarily skilled artisan would have had a four-year technical degree and some amount of professional experience with fiber optic equipment. Based on the evidence of record, including the testimony of the parties’ declarants, the subject matter at issue, and the prior art of record, we determine that the skill level of a person of ordinary skill in the art would have been that of a person having a four year technical degree with a minimum of two years of professional technical experience in fiber optic equipment design. We apply this level of ordinary skill in the art in our analysis below. However, we note that our analysis would be the same if we adopted either party’s proposed level of ordinary skill.” slip op. at 5
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“Based on the evidence of record, we maintain our determination that an optical interconnection module requires an optical connection within the module. See Dec. on Inst. 10. This is consistent with the intrinsic record, particularly the ’600 patent’s disclosure that “the optical paths of connector 40 and the optical connectors at stations 51–56 are optically interconnected by optical fibers disposed in cavity 62 of the module 60, the fiber pairs being formed by the optical fibers.” Ex. 1001, 3:20–24, Fig. 2. As discussed above, the module itself does not require fibers to be plugged into it. Rather, an “optical assembly,” such as that recited in claim 3, is formed by connecting modules via fibers. We further clarify that, because it is an “optical interconnection module,” it must be a module that forms an optical interconnection. This is consistent with the ’600 patent’s disclosure that “[m]odule 60 also includes an optical interconnection section having an optical connector. The preferred connector is an MTP or MPO connector 40.” Ex. 1001, 2:49–51 (emphasis added). In Figure 2, the optical interconnection section optically interconnects with fibers in ribbon 20. The ’600 patent describes that the optical paths of the connector in the optical interconnection section are “immediately adjacent to at least one other optical path for optical alignment with the optical fibers in an optical fiber ribbon.” Ex. 1001, 2:57–60.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“We are persuaded by these contentions. Eichenberger discloses that “the connectors 64 have key tabs 69 which limit the orientation of the connector when inserted in connector receptacle 56, in that the connector can only be mated to the receptacle with the key tab point upwards in FIG. 1.” Ex. 1004, 7:52–56. We find Eichenberger’s disclosure of a key on the connector for proper mating with the adapter teaches an adapter having a key. See Ex. 1003 ¶ 53. We further credit Dr. DeCusatis’s testimony that “[a] key 69 would provide no orientation limitation without a compatible, keyed adapter 56 configured to receive the key 69.” Ex. 1003 ¶ 54. We further find a person of ordinary skill in the art would have been motivated to include a key on adapter 56 to properly mate the keyed connector with the adapter, to the extent this is not taught, as we find it is. See Ex. 1003 ¶ 54; Ex. 1004, 7:52–56.” slip op. at 24
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“c. Conclusion as to Claim 3 In summary, we find that the combination of Eichenberger and Bennett teaches all of the limitations of claim 3, and we find that a person of ordinary skill in the art would have had reason to, and would have been motivated to, combine the teachings of Eichenberger and Bennett in the manner asserted. Patent Owner does not present any objective evidence of nonobviousness as to any of the challenged claims. Having considered the full record developed during trial, we conclude that Petitioner has shown, by a preponderance of the evidence, that claim 3 would have been obvious based on Eichenberger and Bennett under 35 U.S.C. § 103(a). 4. Dependent Claim 4 Claim 4 depends from claim 3 and recites that “all of said optical paths remain with their respective color from one module to another.” Petitioner argues that “[t]he straight ribbon illustrated in modified Fig. 3 shows that all colors are connected to the same colors.” Pet. 35 (citing Ex. 1003 ¶ 79). Although Patent Owner does not provide specific arguments regarding claim 4, the burden remains on Petitioner to demonstrate unpatentability, as discussed above. We agree with Petitioner that all of the optical paths stay with their respective colors from one module to another in Petitioner’s proposed configuration because, as discussed above with respect to claim 3, the optical paths stay with their respective colors between the modules. Therefore, having considered the full record developed during trial, we conclude that Petitioner has shown, by a preponderance of the evidence, that claim 4 would have been obvious based on Eichenberger and Bennett under 35 U.S.C. § 103(a).” slip op. at 28
Patent outcomesUS 6,758,600 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,758,600 - Panduit Corp. v. CCS Technology, Inc.All claims unpatentablePTAB · Oct 4, 2018 · IPR2017-01375 · APJ Daniel J Galligan · IPR · Final written decision
Claims 6, 7, and 11 are unpatentable under § 103: claim 6 over Toyooka, Eichenberger, and Giebel; claim 7 over Toyooka and Eichenberger; and claim 11 over Toyooka and Giebel.
RulingsFinal written decision- Skill levelSkill level board ownOther
“Although there are differences between the proposed levels of ordinary skill in the art, the parties and their declarants agree that an ordinarily skilled artisan would have had a four-year technical degree and some amount of professional experience with fiber optic equipment. Based on the evidence of record, including the testimony of the parties’ declarants, the subject matter at issue, and the prior art of record, we determine that the skill level of a person of ordinary skill in the art would have been that of a person having a four year technical degree with a minimum of two years of professional technical experience in fiber optic equipment design. We apply this level of ordinary skill in the art in our analysis below. However, we note that our analysis would be the same if we adopted either party’s proposed level of ordinary skill.” slip op. at 8
- Prior constructionPrior construction adoptedDecided for petitioner
“We see nothing the record before us indicating that we should deviate from our construction of the term “optical ribbon” in the Final Written Decision in IPR2016-01648. See IPR2016-01648, Paper 27, 10–19. We, therefore, adopt the construction in that case—that the broadest reasonable interpretation of the term “optical ribbon” in view of the specification of the ’227 patent “encompasses optical fibers that are bonded together in a generally planar array or optical fibers that are grouped and aligned in a generally planar array.” IPR2016-01648, Paper 27, 18–19. We apply this construction below in our analysis of the grounds of unpatentability.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“2. Remaining Terms In our Decision on Institution, we determined that the remaining terms of the challenged claims did not require express constructions at that time. Dec. on Inst. 19. Based on the record developed during trial, we maintain our initial determination that the remaining terms of the challenged claims do not require express constructions.” slip op. at 12
- Expert testimonyPetitioner expert creditedOther
Patent outcomesUS 6,869,227 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,869,227 - Comcast Cable Communications, LLC v. Veveo, Inc.All claims unpatentablePTAB · Jul 25, 2018 · IPR2017-00715 · APJ Kevin C Trock · IPR · Final written decision
Claims 1–31 are unpatentable: claims 1–10, 12–24, and 26–31 as obvious over Gross and Smith; claims 11 and 25 as obvious over Gross, Smith, and Robarts.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“We agree with Petitioner that Patent Owner’s proposed construction improperly imports a limitation from the specification into the claim. Merely because a particular embodiment describes the association of “descriptors” with “content items” for purposes of searching and retrieving those content items, does not justify importing that limitation into the claim language. Claim 1, as written, does not recite “descriptors,” and it would be error to import this limitation into the broader claim. See Superguide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) (“it is important not to import into a claim limitations that are not part of the claim. For example, a particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment”). The specification provides examples showing how “descriptors” are associated and used with “content items.” See, e.g., Ex. 1001, 2:11–19, 3:19–22. A person of ordinary skill in the art reading the claims in light of the specification would therefore understand that “content items” are not “descriptors.” Although Patent Owner points to the same or similar disclosures in the specification, Patent Owner does not explain why such disclosures limit the term “content item” to require “having one or more associated descriptors.” See PO Resp. 15 (citing Ex. 1001, 2:7–12, 3:5–8). For example, Patent Owner does not argue that it was acting as its own lexicographer or it disavowed the full scope of the term in the specification or during prosecution. See GE Lighting Sols., LLC v. AgiLight, Inc., 750 F.3d 1304, 1309 (Fed. Cir. 2014) (“[T]he specification and prosecution history only compel departure from the plain meaning in two instances: lexicography and disavowal.”). Therefore, we do not agree with Patent Owner that the term “content item” requires “having one or more associated descriptors.”” slip op. at 6
- Skill levelSkill level board ownDecided for petitioner
“Patent Owner argues a person of ordinary skill in the art would have had a bachelor’s degree in computer science and two years of experience in the field of search-query processing with particular experience analyzing, constructing and testing systems that utilize data and/or information search techniques. PO Resp. 8 (citing Ex. 2009 ¶¶ 16–17). The parties essentially agree on the level of ordinary skill in the art. We, therefore, find that a person of ordinary skill in the art in the field of the ’685 patent is a person who has a bachelor’s degree in computer science and at least two years of experience in the field of search-query processing, with experience analyzing, designing, constructing, and/or testing systems that utilize data and/or information search techniques. C. Prior Art References and Alleged Grounds of Unpatentability” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“Full consideration of Petitioner’s evidence and arguments shows consistently that Petitioner is instead proposing to “modify the method and its implementation on a wireless phone described by Gross to be used on an overloaded keypad with the numeric indexing system of Smith” by “incorporat[ing] the prefix indexing system and method described by Gross with the overloaded keypad environment with a numeric index taught by Smith.” Pet. 29 (emphasis added). “A [person of ordinary skill in the art] would have been motivated to modify Gross so that its numeric indexing and searching could be applied to the overloaded keypads commonly found on wireless phones.” Id. at 30 (emphasis added). “Such a combination would have the anticipated result of implementing the indexing and search system on a computer-networkable wireless phone, as taught by Gross, with an overloaded keypad, as taught by Smith.” Id. (emphasis added). As discussed supra, Gross teaches or suggests all the limitations of the independent claims except for the recited “overloaded keys of a keypad.” Gross explains, however, that its indexed strings can be strings that are input to a “computer-networkable wireless phone.” Ex. 1003 ¶ 60. As Dr. Fox testifies, a person of ordinary skill would have known that many computer-networkable wireless phone keypads at the time of the invention were non-full keyboard input devices where a single key would actually be an input for multiple characters, i.e., overloaded keys. Ex. 1006 ¶ 88. Indeed, the ’696 patent recognizes that such overloaded keypads were prior art. See Ex. 1001, Fig. 1, 1:32–40. Smith teaches using just such an overloaded keypad “[for the purpose of] providing relevant search results in response to an ambiguous search query.” Ex. 1004, 1:65–2:3; see also id., Fig. 5b, 5:3– 13. There is no dispute in this case that Gross, Smith, and overloaded keypads are all prior art. Petitioner has articulated clearly a motivation to combine Gross and Smith in the manner proffered by Petitioner—modify Gross to include, as suggested by Gross and as taught by Smith, a set of overloaded keys as the input device. Pet. 37–39. A person of ordinary skill would have had a reason, the knowledge, and the skills to modify Gross’ “computer-networkable wireless phone,” (Ex. 1003 ¶ 60), so that strings could be input using an overloaded keypad (Ex. 1006 ¶¶ 90–94). Thus, Petitioner’s proposed combination appears to be the predictable use of prior art elements according to their established functions. See KSR, 550 U.S. at 417. Gross’ incremental prefix searching is retained, and the mappings of content items to key sequences correlated with the alphanumeric search strings are extended (via Smith) to apply to numeric overloaded keys (0-9). See Ex. 1006 ¶¶ 88–93; Ex. 1009 ¶¶ 12–17. For all the reasons stated above, we are persuaded that Petitioner has” slip op. at 32
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundUnpatentable
“We disagree with Patent Owner. Robarts provides “an electronic program guide (EPG) which enables creation of queries to facilitate simple and complex searches across predefined and arbitrary fields.” Ex. 1005, 3:53–55. Robarts provides users with multiple search capabilities, including both incremental single-character searching and searching using pre-mapped content to overloaded keys. See e.g., Ex. 1005, 17:39–52 (describing incremental searching using a 10-key keypad); 18:66–19:10 (describing searching using pre-mapped identification numbers). Robarts’ search capabilities are not mutually exclusive or technically incompatible as Patent Owner’s argument suggests, but rather optional ways of assisting a user to find the particular program it desires. As Robarts explains, [s]uppose a viewer wants to watch a particular program or network, but cannot remember what channel it is on . . . the EPG enables the viewer to enter data from the 10-key keypad for both channel numbers or letters in the program or network name. The EPG performs the mapping to identify any program, channel, or network that matches the entered data. . . . An alternative technique to searching on each number or letter is to pre-map the program and network names into associated identification numbers which can be stored as part of the data record in the EPG database. Id. at 17:26–19:2. Moreover, a reference does not teach away if it merely expresses a general preference for an alternative invention from amongst options available to the ordinarily skilled artisan, where the reference does not discredit or discourage investigation into the invention claimed. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). We find, on the basis of the evidence and explanation provided by” slip op. at 48
Patent outcomesUS 8,433,696 unpatentableClaim construction§ 103 obviousnessPatents in suitUS 8,433,696
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.