• Nautilus Hyosung Inc. v. Diebold, Inc.Institution denied
  PTAB · Aug 22, 2016 · IPR2016-00633 · APJ Barbara A Benoit · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 1–8 and 12–20 obvious over Graef, Kawai, and Mennie.

  RulingsInstitution decision

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

    “In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). This burden never shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (citing Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1326–27 (Fed. Cir. 2008)) (discussing the burden of proof in inter partes review). Furthermore, Petitioner cannot satisfy its burden of proving obviousness by employing “mere conclusory statements.” In re Magnum Oil Tools Int’l, Ltd., No. 2015-1300, 2016 WL 3974202, at *10 (Fed. Cir. July 25, 2016). Thus, to prevail in an inter partes review, Petitioner must explain how the combination of Graef, Kawai, and Mennie would have rendered the challenged claims unpatentable. At this preliminary stage, we determine whether the information presented in the Petition shows there is a reasonable 9 likelihood that Petitioner would prevail in establishing that one of the challenged claims would have been obvious over Graef, Kawai, and Mennie. For the reasons that follow, we determine that Petition does not show the requisite reasonable likelihood. slip op. at 9

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner’s declarant, Dr. Kaufman, opines that one of ordinary skill in the art relevant to the challenged patent at the time of the claimed invention “would have had a bachelor’s degree in mechanical engineering, computer science, computer engineering, electrical engineering, or a closely related field, along with at least 2 years of industry experience in engineering electromechanical devices” and further opines that “[s]uperior education or work experience would compensate for a deficiency in the other.” Ex. 1003 ¶ 11; see id. at ¶ 12 (describing how Dr. Kaufman arrived at his opinion regarding one of ordinary skill in the art); Pet. 4 (citing Ex. 1003 ¶ 11). Patent Owner does not offer any contrary explanation regarding who would qualify as a person of ordinary skill in the art relevant to the challenged patent. See generally Prelim. Resp. 10 Based on our review of the challenged patent, the types of problems and solutions described in the challenged patent and cited prior art, and the testimony of Dr. Kaufman, we adopt and apply Petitioner’s definition of a person of ordinary skill in the art at the time of the claimed invention. We note that the applied prior art reflects the appropriate level of skill at the time of the claimed invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 10

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “In support of the purported obviousness of including two magnetic read heads, Petitioner cites to Dr. Kaufman’s testimony asserting an advantage of having a second head in Graef’s system. Pet. 15 (citing Ex. 1003 ¶ 52) (“An advantage to Graef’s system of having a second head is that the MICR line scanning speed would be greatly enhanced through the use of a second head. Ex. 1003 at ¶ 52.”); id. at 18–19 (Ex. 1003 ¶ 52). Dr. Kaufman’s testimony elaborates on Petitioner’s statement regarding a purported advantage of including a second head in Graef’s system and contends the advantage would have motivated one of ordinary skill in the art “to make such an improvement.” Ex. 1003 ¶ 52. Dr. Kaufman’s cited testimony, while presenting his opinion, does not present evidence or otherwise provide sufficient factual corroboration to support his explanation, and we discount his testimony accordingly. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) (“[T]he Board is entitled to weigh the declarations and conclude that the lack of factual corroboration warrants discounting the opinions expressed in the declarations.”). Thus, on balance, Petitioner’s contention that one of ordinary skill in the art could have included a second magnetic read head in Graef’s system and an advantage of doing so (Pet. 15, 18–19) does not establish a reasonable likelihood that Graef and Kawai would have conveyed using a second magnetic read head in the manner required by claim 1.” slip op. at 22

  • BurdenNot shown unpatentable

    “cited portion of Mennie on which Petitioner relies teaches two magnetic read heads in its currency reading machine. See Pet. 14, 19. Petitioner’s conclusory statement asserting that the cited portion of Mennie teaches magnetic scanheads is not supported adequately by the cited portion of Mennie itself and is not supported sufficiently by further analysis or evidence in the Petition. Thus, Petitioner does not satisfy its burden of proving obviousness based on Mennie regarding the required two magnetic read heads. See Magnum Oil, 2016 WL 3974202, at *10 (“To satisfy its burden of proving obviousness, a petitioner cannot employ mere conclusory statements.”). Moreover, although we recognize Mennie’s teachings concerning magnetic sensors, we are not “free to adopt arguments on behalf 19 of petitioners that could have been, but were not, raised by the petitioner during an [inter partes review].” Id. at 26.” slip op. at 19

  § 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,832,631
• Arris Group, Inc. / Cox Communications, Inc. v. C-Cation Technologies, LLCAll claims unpatentable
  PTAB · Jul 28, 2016 · IPR2015-01796 · APJ Lynne E Pettigrew · IPR · Final written decision

  Claims 1, 3, and 4 are unpatentable under § 103: claims 1 and 4 over the MPT Specifications, and claim 3 over those specifications with Zdunek and Dufresne.

  RulingsFinal written decision

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner

    “art “printed publications” under 35 U.S.C. §§ 102(b) and 311(b). Pet. 16– 17; PO Resp. 23–26; Pet. Reply 3–5. The determination whether a document is a “printed publication” involves a case-by-case inquiry into the facts and circumstances surrounding its disclosure to members of the public. In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). The key inquiry is whether the reference was made “sufficiently accessible to the public interested in the art” before the critical date. In re Cronyn, 890 F.2d 1158, 1160 (Fed. Cir. 1989). “A given reference is ‘publicly accessible’ upon a satisfactory showing that such document has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art[,] exercising reasonable diligence, can locate it.” Suffolk Techs., LLC v. AOL Inc., 752 F.3d 1358, 1364 (Fed. Cir. 2014) (quoting Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 1378 (Fed. Cir. 2006)). “[O]nce accessibility is shown, it is unnecessary to show that anyone actually inspected the reference.” In re Lister, 583 F.3d 1307, 1314 (Fed. Cir. 2009).” slip op. at 14

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “3. Obviousness of Claim 1 As an initial matter, we adopt Petitioner’s proposed level of ordinary skill in the art as a person with an undergraduate degree in electrical engineering, or an equivalent education experience, and three or more years working in a relevant field employing digital communications technology to deliver telecommunication services, or alternatively a relevant field involving the manufacture of telecommunication products. See Pet. 9 (citing Ex. 1002 ¶ 31). Patent Owner’s proposed level of ordinary skill in the art, see Ex. 2023 ¶ 25, is, according to Patent Owner’s expert, “essentially the same” as Petitioner’s proposal, id. ¶ 27.” slip op. at 18

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

  Patent outcomesUS 5,563,883 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 5,563,883
• T. Rowe Price Investment Services, Inc. v. Secure Axcess, LLCAll claims unpatentable
  PTAB · Jun 13, 2016 · CBM2015-00027 · APJ Barbara A Benoit · CBM · Final written decision

  Claims 1, 3, 5, 16, and 29–32 are unpatentable as anticipated by Houser; claims 2 and 4 are unpatentable as obvious over Houser and Yoshiura.

  RulingsFinal written decision

  • ExcludeMotion to exclude, deniedDenied

    “Contrary to Petitioner’s contentions, the proper inquiry is whether one is “qualified in the pertinent art.” Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1363–64 (Fed. Cir. 2008) (holding “it is an abuse of discretion to permit a witness to testify as an expert on the issue[s] of . . . invalidity unless that witness is qualified as an expert in the pertinent art.”). The Federal Circuit continues by noting that being one of ordinary skill in the art would not “automatically entitle[] a witness to testify as an expert” as to invalidity issues, but the Federal Circuit clarifies that it does not “suggest[] that Rule 702 requires a witness to possess something more than ordinary skill in the art to testify as an expert.” Id. at 1363. Furthermore, 6 Dr. Katz’s declaration states that his curriculum vitae is included as Attachment A (Ex. 2008 ¶ 6), which is not correct. Petitioner also incorrectly states in its Motion that Dr. Katz’s declaration from IPR2014-00475 (Ex. 2007) was “submitted as Exhibit 1037 in this proceeding.” Mot. 4. Accordingly, for clarity and completeness of the record in this proceeding, we have entered Dr. Katz’s Declaration, filed as Exhibit 2007 (including its Attachment A) in IPR2014-00475, as Exhibit 3001 in the instant proceeding. 21 the Federal Circuit has upheld admission of the testimony of an expert who “had experience relevant to the field of the invention,” despite admitting that he was not a person of ordinary skill in the art. Mytee Prods., Inc. v. Harris Research, Inc., 439 Fed. App’x 882, 886–87 (Fed. Cir. 2011) (non-precedential) (upholding admission of the testimony of an expert who “had experience relevant to the field of the invention,” despite admission that he was not a person of ordinary skill in the art). In holding that, to testify as an expert under FRE 702, one must be qualified as an expert in the pertinent art, the Federal Circuit has not placed temporal restrictions, such as requiring an expert be qualified in the pertinent art at the time of the invention.” slip op. at 21

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

    “patent shall be given its broadest reasonable construction, in light of the specification of the patent in which it appears. 37 C.F.R. § 42.300(b); see Versata Dev. Grp., 793 F.3d at 1328 (affirming use of broadest reasonable construction standard in a covered business method patent review); see also In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1275–79 (Fed. Cir. 2015 (“Congress implicitly approved the broadest reasonable interpretation standard in enacting the AIA,” and “the standard was properly adopted by PTO regulation.”), cert. granted sub nom. Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 890 (mem.) (2016). Under that standard, claim terms are presumed to be 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. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Any special definition for a claim term must be set forth in the specification with reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). A particular embodiment 27 appearing in the written description should not be read into the claim if the claim language is broader than the embodiment. SuperGuide Corp. v. DirecTV Enters, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004); In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). Furthermore, “[t]he PTO should also consult the patent’s prosecution history in proceedings in which the patent has been brought back to the agency for a second review.” Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015). We construe the terms below and discuss terms relative to prior art disclosures in accordance with these principles.” slip op. at 27

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

    “specifically, “a preferences file.”7 Challenged independent claims 1, 29, and 31 each recites “an authenticity stamp is retrieved from the preferences file,” and independent claim 32 similarly recites “retrieving an authenticity stamp from the preferences file.” Additionally, each of the challenged claims requires that the authentication key either be retrieved to locate a preferences file or to be able to locate a preferences file. The dependent claims do not recite additional features or functions for a file. Thus, the plain language of the claims requires a “file” to be able to store something that can be retrieved.” slip op. at 29

  • Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languagePlain and ordinary meaningDecided for petitioner

    “We decline to read limitations into a claim from these preferred embodiments described in the Specification when the claim language is broader than the embodiment. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004); In re Van Geuns, 988 F.2d at 1184. Here, the claim language is broader than the preferred embodiments describing the location of the preferences file as obscured or not readily known and, therefore, should not be narrowed by embodiments in the ’191 patent. Furthermore, the ’191 patent does not set forth a special definition for that claim term with reasonable clarity, deliberateness, or precision that would impose a special meaning requiring the location of the preferences file be obscured or hidden. See In re Paulsen, 30 F.3d at 1480. Accordingly, neither the term “to locate a preferences file” in claims 1, 31, and 32, nor the term enabling “location of a preferences file” in claim 29, require the location of the preferences file be obscured or hidden. Nor does “enabl[ing] authentication of the authenticity key . . . to retrieve an” slip op. at 52

  Patent outcomesUS 7,631,191 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,631,191
• Securus Technologies, Inc. v. Global Tel*link Corp.Institution denied
  PTAB · Jun 8, 2016 · IPR2016-00269 · APJ Georgianna W Braden · IPR · Institution

  The Board denied institution because the petition did not show a reasonable likelihood that claims 1–20 were unpatentable as obvious over the asserted references.

  RulingsInstitution decision

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

    “In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a) (3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)); see also Intelligent Bio-Systems, Inc. v Illumina Cambridge Ltd., No. 2015-1693, 2016 WL 2620512, at *6 (Fed. Cir. May 9, 2016) (“It was [Petitioner]’s burden to demonstrate both that a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation of success in doing so.”). Thus, Petitioner must explain how the combination of Rae and Diener would have rendered the challenged claims unpatentable. For the reasons that follow, we determine that Petitioner has not done so. slip op. at 14

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “Second, although Petitioner cites to Declaration Testimony, Mr. Lipoff merely repeats the unpersuasive, conclusory assertions in the Petition. Compare Ex. 1002 ¶¶ 72–74, with Pet. 25–27. Mr. Lipoff does not provide further explanation or support as to how a disclosure of a cellular telephone using a wireless access point to place a call controlled by a call processing system, capturing call details, and notifying an investigator about the call would have conveyed to one of ordinary skill in the art “producing a detection signal” as required by claim 1.” slip op. at 17

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner’s Declarant, Mr. Lipoff, opines that a person of ordinary skill in the art relevant to the ’229 patent “would have held a bachelor’s or master’s degree in electrical engineering or a similar field and had at least three years of experience working with radio frequency communications systems, such as cellular devices.” Ex. 1002 ¶ 37. Patent Owner does not offer any contrary explanation regarding who would qualify as a person of ordinary skill in the art relevant to the ’229 patent. See generally Prelim. Resp. Based on our review of the ’229 patent, the types of problems and solutions described in the ’229 patent and cited prior art, and the testimony of Petitioner’s Declarant, we adopt and apply Petitioner’s definition of a person of ordinary skill in the art at the time of the claimed invention. We note that the applied prior art reflects the appropriate level of skill at the time of the claimed invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 7

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

    “interpreted according to their broadest reasonable construction in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b); see also In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1275–79 (Fed. Cir. 2015 (“Congress implicitly approved the broadest reasonable interpretation standard in enacting the AIA,” and “the standard was properly adopted by PTO regulation.”), cert. granted sub nom. Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 890 (mem.) (2016). Under that standard, and absent any special definitions, we give claim terms their ordinary and customary meaning, as would be understood by one of ordinary skill in the art at the time of the invention. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Petitioner and Patent Owner each propose constructions for the claim limitation “plurality of cellular telephone transmission detectors.” Pet. 9–11; Prelim. Resp. 6–11. For purposes of this Decision and based on the record before us, we are not persuaded that any specific claim construction must be made in this decision to determine the efficacy of Petitioner’s grounds of unpatentability.” slip op. at 6

  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,606,229
• Securus Technologies, Inc v. Global Tel*link CorporationInstitution denied
  PTAB · Jun 8, 2016 · IPR2016-00313 · APJ Barbara A Benoit · IPR · Institution

  The Board denied institution because the petition did not show a reasonable likelihood that claims 1–18 would have been obvious over Rae and Diener.

  RulingsInstitution decision

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

    “In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)); see also Intelligent Bio-Systems, Inc. v Illumina Cambridge Ltd., No. 2015-1693, 2016 WL 2620512, at *6 (Fed. Cir. May 9, 2016) (“It was [Petitioner]’s burden to demonstrate both that a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation of success in doing so.”) (internal quotation marks removed). Thus, Petitioner must explain how the combination of Rae and Diener would have rendered the challenged claims unpatentable. For the reasons that follow, we determine that Petitioner has not done so. slip op. at 9

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “Second, although Petitioner cites to declaration testimony, Mr. Lipoff merely repeats the unpersuasive, conclusory assertions in the Petition. Ex. 1002 ¶ 74. Mr. Lipoff does not provide further explanation or support as to how a disclosure of a cellular telephone using a wireless access point to place a call controlled by a call processing system, capturing call details, and notifying an investigator about the call would have conveyed to one of ordinary skill in the art “producing a detection signal” as required by claim 1.” slip op. at 18

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner’s Declarant, Mr. Stuart J. Lipoff, opines that a person of ordinary skill in the art relevant to the ’880 patent “would have held a bachelor’s or master’s degree in electrical engineering or a similar field and had at least three years of experience working with radio frequency communications systems, such as cellular devices.” Ex. 1002 ¶ 37; Pet. 9 (citing Ex. 1002 ¶ 37). Patent Owner does not offer any contrary explanation regarding who would qualify as a person of ordinary skill in the art relevant to the ’880 patent. See generally Prelim. Resp. Based on our review of the ’880 patent, the types of problems and solutions described in the ’880 patent and cited prior art, and the testimony of Petitioner’s Declarant, we adopt and apply Petitioner’s definition of a person of ordinary skill in the art at the time of the claimed invention. We note that the applied prior art reflects the appropriate level of skill at the time of the claimed invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 8

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

    “5. Analysis of the Rationale for Combining the Cited References When an obviousness determination relies on the combination of two or more references, as here, there must be some suggestion or motivation to combine the references.” WMS Gaming, Inc. v. Int’l Game Tech., 184 F.3d 1339, 1355 (Fed. Cir. 1999); see also Dome Patent L.P. v. Lee, 799 F.3d 1372, 1380 (Fed. Cir. 2015) (“If all elements of a claim are found in the prior art, as is the case here, the factfinder must further consider the factual questions of whether a person of ordinary skill in the art would be motivated to combine those references, and whether in making that combination, a person of ordinary skill would have had a reasonable expectation of success.”). It is axiomatic that that an asserted ground of obviousness must demonstrate articulated reasoning with rational underpinning to support the legal conclusion of obviousness. In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006); see KSR, 550 U.S. at 418 (quoting Kahn). Mere conclusory statements are not sufficient. Kahn, 441 F.3d at 988. Furthermore, “[c]are must be taken to avoid hindsight reconstruction by using ‘the patent in suit as a guide through the maze of prior art references, combining the right references in the right way so as to achieve the result of the claims in suit.’” Grain Processing Corp. v. Am.-Maize Prods. Co., 840 F.2d 902, 907 (Fed.” slip op. at 25

  § 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,233,880
• Securus Technologies, Inc. v. Global Tel*link CorporationInstitution denied
  PTAB · Jun 3, 2016 · IPR2016-00267 · APJ Kevin F Turner · IPR · Institution

  The Board denied institution on claims 1–55 because the petition did not show a reasonable likelihood of prevailing on either obviousness ground.

  RulingsInstitution decision

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

    “In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)); see also Intelligent Bio-Systems, Inc. v Illumina Cambridge Ltd., No. 2015-1693, 2016 WL 2620512, at *6 (Fed. Cir. May 9, 2016) (“It was [Petitioner]’s burden to demonstrate both that a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation of success in doing so.”) (internal quotation marks removed). Thus, Petitioner must explain how the combinations of Bulriss, Hesse, and Rae would have rendered the challenged claims unpatentable. For the reasons that follow, we determine that Petitioner has not done so. slip op. at 6

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

    “teaches away from establishing connections at a scheduled time because doing so would impede or delay court proceeding. Prelim. Resp. 21–25. As Patent Owner explains, the scheduling of visits to resolve issues during a court proceeding would cause unnecessary delay to those same proceedings, because at the time that the judge determines that such communications are needed, per Bulriss, they would not be scheduled as described in Hesse. Id. at 22–23. Patent Owner also points out that the subject communications arise ad hoc, they need to be addressed without delay, and are not amenable to scheduling. Id. at 23. Lastly, Patent Owner emphasizes that Bulriss is concerned with such delays and would teach away from the scheduling provided in Hesse. Id. at 24–25 (citing Ex. 1005, 2:33–67, 5:51–64, 6:4– 10). We agree with Patent Owner that one of ordinary skill in the art would not have been motivated to provide scheduling of video visits, per claims 1 and 30, in the context of Bulriss, in view of Hesse, for the reasons supplied by Petitioner. See Pet. 20–21 (citing Ex. 1002 ¶¶ 74, 86). Thus, for this additional reason, we are persuaded that Petitioner has not made a sufficient showing that Bulris and Hesse would have rendered claims 1 and 30 obvious.” slip op. at 12

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

    “interpreted according to their broadest reasonable construction in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b); see In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1278–79 (Fed. Cir. 2015), cert. granted sub nom. Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 890 (mem.) (2016). Under that standard, claim terms are presumed to be 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. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).” slip op. at 5

  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 7,256,816
• Unified Patents Inc. v. Qurio Holdings, Inc.Institution denied
  PTAB · Apr 4, 2016 · IPR2015-01991 · APJ Barbara A Benoit · IPR · Institution

  The Board denied institution because the Petition did not show a reasonable likelihood that claims 1–5, 7–10, 12, and 14–18 were unpatentable under the asserted obviousness grounds.

  RulingsInstitution decision

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

    “A claim is unpatentable as obvious “if the differences between the claimed subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art.” 35 U.S.C. § 103. “In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., No. 2015-1072, 2016 WL 798192, at *4 (Fed. Cir. March 1, 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). Thus, Petitioner must explain how the combination of Lambourne and Elabbady would have rendered the challenged claims unpatentable. For the reasons that follow, we determine that Petitioner has not done so.” slip op. at 8

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

    “claim limitations. Pet. 6–7; Prelim. Resp. 9–15. On this record and for purposes of this decision, we determine that no claim terms require express construction.” slip op. at 7

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

    “teachings of the references would have suggested to those having ordinary skill in the art.” In re Mouttet, 686 F.3d 1322, 1333 (Fed. Cir. 2012) (citing In re Keller, 642 F.2d 413, 425 (CCPA 1981)). Moreover, it is axiomatic, that an asserted ground of obviousness must demonstrate articulated reasoning with rational underpinning to support the legal conclusion of obviousness. In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). Mere conclusory statements are not sufficient. Id. Furthermore, “[c]are must be taken to avoid hindsight reconstruction by using ‘the patent in suit as a guide through the maze of prior art references, combining the right references in the right way so as to achieve the result of the claims in suit.’” Grain Processing Corp. v. Am.-Maize Prods. Co., 840 F.2d 902, 907 (Fed. Cir. 1988) (quoting Orthopedic Equip. Co. v. United States, 702 F.2d 1005, 1012 (Fed. Cir. 1983)). Accordingly, the central issue before us is why one of ordinary skill in the art at the time the invention was made would have combined Elabbady’s media catalog with Lambourne’s system in the manner proposed by Petitioner and required by the claims: by storing Elabbady’s media catalog (the recited “media database”) on Lambourne’s controller (the recited “mobile device”). Petitioner provides insufficient analysis or evidence that one of ordinary skill in the art would have combined Elabbady’s media catalog with the controller of Lambourne.” slip op. at 16

  • Expert testimonyPetitioner expert discountedOther

    “generation techniques with Lambourne’s system does not provide sufficient reasoning for why the combination of Lambourne and Elabbady would have suggested to one of ordinary skill in the art placing Elabbady’s media catalog on the controller of Lambourne. For a purported reason to combine the references, Petitioner states “caching metadata for the music menu would reduce network congestion and improve performance and enhance the ability to remotely control multimedia, as advocated by Elabbady and Lambourne.” Pet. 11 (citing Ex. 1006, 1:44–53; Ex. 1005, 2:5–13; Ex. 1002 ¶ 45). Petitioner’s statement, which merely restates Dr. Weissman’s testimony, is conclusory. Ex. 1002 ¶ 45 (“Given the disclosure of Lambourne, one of ordinary skill would be motivated to include this feature, because caching metadata for the music menu would reduce network communication and therefore improve performance and enhance the ability to remotely control multimedia, as both Elabbady and Lambourne advocate. EX1006 at 1:44-52; EX1005 at 2:5–13.”). Neither Petitioner, nor its declarant, explains sufficiently how the benefits of caching the music menu would have conveyed to one of ordinary skill in the art the idea of storing the media 17 catalog/database on Lambourne’s controller. Thus, we accord Dr. Weissman’s testimony in this regard little weight. 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”).” slip op. at 17

  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 7,787,904
• Directv, LLC v. Qurio Holdings, Inc.Institution denied
  PTAB · Apr 4, 2016 · IPR2015-02006 · APJ Jason J Chung · IPR · Institution

  The Board denied institution on both §103 grounds because the Petition failed to explain the prior-art differences, justify the combinations, and avoid hindsight.

  RulingsInstitution decision

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

    “the differences between” the claimed subject matter and the prior art “are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” 35 U.S.C. § 103(a); KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The legal conclusion of obviousness is resolved on the basis of underlying factual determinations, including: (1) “the scope and content of the prior art,” (2) “differences between the prior art and the claims at issue,” (3) “the level of ordinary skill in the pertinent art,” and (4) any “secondary considerations,” or objective indicia, of nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). These underlying factual determinations “must be considered by the trier of fact” in an obviousness analysis. ATD Corp. v. Lydall, Inc., 159 F.3d 534, 546 (Fed. Cir. 1998). Here, the Petition fails to identify sufficiently the differences between independent claim 1 (and independent claim 17 as similarly recited) of the ’863 patent and the asserted prior art references, Taesombut, Ducharme, and Wijting. Pet. 31–39, 42. Rather than address these differences, the Petition creates a combination of Taesombut, Ducharme, and Wijting—based on six assertions to combine Taesombut, Ducharme, and Wijting. Id. at 31–39, 42. First, the Petition asserts that a person of ordinary skill in the art would have combined Ducharme and Taesombut “as a possible implementation of some of the techniques taught in Taesombut,” then would have applied Wijting’s cross-layer optimization techniques to the Taesombut and Ducharme combination “to improve the wireless delivery of video to clients over WLAN networks.” Id. at 31–32 (citing Decl. of Dr. Tal Lavian, Ex. 1005 ¶¶ 164–175). Second, the Petition asserts that a person of ordinary skill in the art would have combined Taesombut, Ducharme, and Wijting “because of their overlapping technical teachings with respect to this [preamble] limitation.” Id. at 33–34 (citing Ex. 1005 ¶¶ 185–198). Third, the Petition contends that “because Taesombut and Ducharme describe delivery of video data over a WLAN, one of skill would be motivated to apply Wijting’s cross-layer performance enhancing proxy to similarly improve delivery of video over wireless channels of varying quality.” Id. at 35 (citing Ex. 1005 ¶¶ 164–175). Fourth, the Petition argues that a person of ordinary skill in the art would have combined Taesombut, Ducharme, and Wijting “because of their overlapping technical teachings on this [Element 1B]10 limitation.” Id. at 36 (citing Ex. 1005 ¶¶ 199–217). Fifth, the Petition argues that “[i]t would be obvious to combine the EMMs of Ducharme with the DRM rules of Taesombut, as both are examples of rules or messages for processing digital rights or content permissions in the gateway to facilitate security.” Id. at 38 (citing Ex. 1005 ¶¶ 164–175). Sixth, the Petition contends that “Ducharme, Taesombut, and Wijting contain similar technical teachings which support the combination.” Id. at 39 (citing Ex. 1005 ¶¶ 164–175). As noted above, the Petition argues in conclusory fashion, that the combination of Taesombut, Ducharme, and Wijting meets each of the limitations of the claims. Id. at 31–39, 42. This analysis—which compares the challenged claims to the combination of Taesombut, Ducharme, and Wijting as well as the knowledge of one of ordinary skill in the art— obscures any comparison of the individual prior art references to the claim limitations. In particular, it does not explain with any particularity which claim limitations are absent from Taesombut, Ducharme, and Wijting. Id. at 33–39, 42. Therefore, the Petition fails to perform an adequate Graham analysis, as required for an obviousness determination. slip op. at 7

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

    “the differences between” the claimed subject matter and the prior art “are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” 35 U.S.C. § 103(a); KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The legal conclusion of obviousness is resolved on the basis of underlying factual determinations, including: (1) “the scope and content of the prior art,” (2) “differences between the prior art and the claims at issue,” (3) “the level of ordinary skill in the pertinent art,” and (4) any “secondary considerations,” or objective indicia, of nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). These underlying factual determinations “must be considered by the trier of fact” in an obviousness analysis. ATD Corp. v. Lydall, Inc., 159 F.3d 534, 546 (Fed. Cir. 1998). Here, the Petition fails to identify sufficiently the differences between independent claim 1 (and independent claim 17 as similarly recited) of the ’863 patent and the asserted prior art references, Taesombut, Ducharme, and Wijting. Pet. 31–39, 42. Rather than address these differences, the Petition creates a combination of Taesombut, Ducharme, and Wijting—based on six assertions to combine Taesombut, Ducharme, and Wijting. Id. at 31–39, 42. First, the Petition asserts that a person of ordinary skill in the art would have combined Ducharme and Taesombut “as a possible implementation of some of the techniques taught in Taesombut,” then would have applied Wijting’s cross-layer optimization techniques to the Taesombut and Ducharme combination “to improve the wireless delivery of video to clients over WLAN networks.” Id. at 31–32 (citing Decl. of Dr. Tal Lavian, Ex. 1005 ¶¶ 164–175). Second, the Petition asserts that a person of ordinary skill in the art would have combined Taesombut, Ducharme, and Wijting “because of their overlapping technical teachings with respect to this [preamble] limitation.” Id. at 33–34 (citing Ex. 1005 ¶¶ 185–198). Third, the Petition contends that “because Taesombut and Ducharme describe delivery of video data over a WLAN, one of skill would be motivated to apply Wijting’s cross-layer performance enhancing proxy to similarly improve delivery of video over wireless channels of varying quality.” Id. at 35 (citing Ex. 1005 ¶¶ 164–175). Fourth, the Petition argues that a person of ordinary skill in the art would have combined Taesombut, Ducharme, and Wijting “because of their overlapping technical teachings on this [Element 1B]10 limitation.” Id. at 36 (citing Ex. 1005 ¶¶ 199–217). Fifth, the Petition argues that “[i]t would be obvious to combine the EMMs of Ducharme with the DRM rules of Taesombut, as both are examples of rules or messages for processing digital rights or content permissions in the gateway to facilitate security.” Id. at 38 (citing Ex. 1005 ¶¶ 164–175). Sixth, the Petition contends that “Ducharme, Taesombut, and Wijting contain similar technical teachings which support the combination.” Id. at 39 (citing Ex. 1005 ¶¶ 164–175). As noted above, the Petition argues in conclusory fashion, that the combination of Taesombut, Ducharme, and Wijting meets each of the limitations of the claims. Id. at 31–39, 42. This analysis—which compares the challenged claims to the combination of Taesombut, Ducharme, and Wijting as well as the knowledge of one of ordinary skill in the art— obscures any comparison of the individual prior art references to the claim limitations. In particular, it does not explain with any particularity which claim limitations are absent from Taesombut, Ducharme, and Wijting. Id. at 33–39, 42. Therefore, the Petition fails to perform an adequate Graham analysis, as required for an obviousness determination. slip op. at 7

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

    “provide sufficiently articulated reasoning, with rational underpinning, to combine Taesombut, Ducharme, and Wijting to reach the invention recited in the challenged claims and, instead, is driven by conclusory reasons to combine the references and improper hindsight. As explained supra in Part II.B.1., Petitioner improperly makes six conclusory assertions when attempting to combine Taesombut, Ducharme, and Wijting. In addition, The Supreme Court has explained that an obviousness analysis should “determine whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue.” KSR, 550 U.S. at 418. Similarly, the Federal Circuit has made clear that an obviousness determination “cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006); see KSR, 550 U.S. at 418 (quoting Kahn, 441 F.3d at 988). An obviousness analysis, however, must “avoid hindsight reconstruction by using the patent in suit as a guide through the maze of prior art references, combining the right references in the right way so as to achieve the result of the claims in suit.” In re NTP, Inc., 654 F.3d 1279, 1299 (Fed. Cir. 2011). We find the six rationales to combine proffered in the Petition for the proposed modifications to be conclusory and superficial for the reasons explained supra in Part II.B.1. In all six of the aforementioned examples, the Petition notes, in conclusory fashion, that overlapping technical teachings is a reason to combine the references. Id. at 33–39. Yet the Petition does not provide a persuasive reason to combine Taesombut, Ducharme, and Wijting beyond overlapping technologies. These proposed modifications are supported by little to no reasoning to support a determination that it would have been obvious to combine the elements as proposed in the Petition.” slip op. at 12

  • BurdenDenied

    “The Petition’s practice of citing multiple pages of the Dr. Lavian Declaration to support conclusory statements and to expand its thin analysis violates our rules in two respects. First, this practice amounts to incorporation by reference—which is impermissible under our rules. See 37 C.F.R. § 42.6(a)(3) (“Arguments must not be incorporated by reference from one document into another document.”); Cisco Sys., Inc. v. C-Cation Techs., LLC, Case IPR2014-00454, slip op. at 7–10 (PTAB Aug. 29, 2014) (Paper 12) (informative). This incorporation by reference from the Declaration into the Petition “serves to circumvent the page limits imposed on petitions for inter partes review, while imposing on our time by asking us to sift through over 2[5]0 pages of Dr. [Lavian’s] Declaration . . . to locate the specific [relevant] arguments” and supporting evidence. Cisco Sys., Inc., IPR2014-00454, at 10 (Paper 12). We will not consider arguments and information that are not presented and developed in the Petition, and instead are incorporated by reference to the Dr. Lavian Declaration. Second, the Petition’s consistent citations to large portions of the Dr. Lavian Declaration runs afoul of the particularity and specificity required of supporting evidence under our governing statute and rules. See 35 U.S.C. § 312(a)(3); 37 C.F.R. §§ 42.22(a)(2), 42.104(b)(4)–(5). Further, the cited portions of Dr. Lavian’s Declaration relied upon by Petitioner to support its reasons to combine Taesombut, Ducharme, and Wijting provide the same conclusory reasons to combine Taesombut, Ducharme, and Wijting as the Petition. We, therefore, are not persuaded that Dr. Lavian’s testimony remedies Petitioner’s reasons to combine Taesombut, Ducharme, and Wijting because Dr. Lavian’s testimony relies on conclusory statements. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 294 (Fed. Cir. 1985) (stating a lack of objective support for an expert opinion “may render the testimony of little probative value in [a patentability] determination”).” slip op. at 10

  § 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,102,863
• Directv, LLC v. Qurio Holdings, Inc.Institution denied
  PTAB · Apr 4, 2016 · IPR2015-02007 · APJ Kerry Begley · IPR · Institution

  The Board denied institution on both §103 grounds because the petition lacked particularity and adequate support for its combinations and did not show a reasonable likelihood of proving any challenged claim obvious.

  RulingsInstitution decision

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

    “Pursuant to 35 U.S.C. § 314(a), an inter partes review may not be instituted unless “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Having considered the Petition and the Preliminary Response, we determine that the information presented does not show that there is a reasonable likelihood that Petitioner would prevail in establishing that any of the challenged claims of the ’567 patent are unpatentable. Accordingly, we deny institution of an inter partes review.” slip op. at 2

  • BurdenDenied

    “i. Non-Compliance with 35 U.S.C. § 312(a)(3) and 37 C.F.R. §§ 42.22(a)(2), 42.104(b)(4)–(5) Under 35 U.S.C. § 312(a)(3), a petition “may be considered only if . . . the petition identifies, in writing and with particularity, each claim challenged, the grounds on which the challenge to each claim is based, and the evidence that supports the grounds for the challenge to each claim” (emphases added). Our rules further address the showing required in a petition. In particular, 37 C.F.R. § 42.104(b)(4) provides that “[t]he petition must specify where each element of the claim is found in the prior art patents or printed publications relied upon” (emphasis added), and 37 C.F.R. § 42.104(b)(5) adds that the Petition must “identify[] specific portions of the evidence that support the challenge” (emphasis added). Similarly, 37 C.F.R. § 42.22(a)(2) states that a petition “must include . . . [a] full statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence” (emphases added). For the reasons discussed below, we agree with Patent Owner that the Petition fails to comply with the requirements of 37 C.F.R. § 42.104(b)(4)–(5). See Prelim. Resp. 1. We also determine that the Petition does not meet the standards of 35 U.S.C. § 312(a)(3) and 37 C.F.R. § 42.22(a)(2).” slip op. at 6

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

    “combining O’Connor’s teachings with Taesombut, Ducharme, and Wijting or reasoning as to why one of ordinary skill in the art would have done so. See id. ¶¶ 197–199, 200–202. Thus, the Petition’s asserted reason to combine O’Connor’s teaching with Taesombut, Ducharme, and Wijting is merely attorney argument, devoid of evidentiary support, and is entitled to no weight. See Gemtron Corp. v. Saint-Gobain Corp., 572 F.3d 1371, 1380 (Fed. Cir. 2009) (“[U]nsworn attorney argument . . . is not evidence.”); Enzo Biochem, Inc. v. Gen-Probe, Inc., 424 F.3d 1276, 1284 (Fed. Cir. 2005) (“Attorney argument is no substitute for evidence.”). Accordingly, the Petition does not support adequately this alleged reason to combine O’Connor’s teachings distinguishing secure and non-secure memory with the other asserted prior art references. In addition, the Petition’s reasoning addresses only an alleged reason to combine O’Connor’s teachings with the other asserted prior art references—without addressing how a person of ordinary skill would have done so and whether such a person would had a reasonable expectation of success in arranging a secure and non-secure data cache in the manner recited in claim 1. See PAR Pharm., Inc. v. TWI Pharm., Inc., 773 F.3d 1186, 1193 (Fed. Cir. 2014) (“A party asserting that a patent is obvious must demonstrate . . . that a skilled artisan would have had reason to combine the teaching of the prior art references to achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation of success from doing so.”) (internal citations and quotations omitted). In sum, the Petition does not present adequate reasoning, with rational underpinning, to support combining O’Connor’s teachings of secure and non-secure memory with the other asserted prior art references to reach the “secure data cache associated with the offload engine” and “a non-secure data cache” recited in independent claim 1.” slip op. at 19

  § 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,879,567
• Captioncall, L.L.C. v. Ultratec, Inc.Institution denied
  PTAB · Mar 16, 2016 · IPR2015-01885 · APJ William V Saindon · IPR · Institution

  The Board denied institution because Petitioner’s anticipation ground depended on a claim construction the Board found inconsistent with the specification.

  RulingsInstitution decision

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

    “D. Conclusion Regarding the When Limitation We have considered the evidence before us, including the claim language itself, the ’024 patent’s specification (e.g., Ex. 1001, 2:16–19, 4:24–26, 5:34–41, 5:56–60, 6:62–7:16), the prosecution history (Ex. 1006, 316, 327, 348), and the level of ordinary skill (e.g., Ex. 1004 ¶ 32). We are not persuaded that Petitioner’s construction is the broadest reasonable interpretation in light of the specification. Petitioner argues that its construction is not precluded by the specification,3 but the broadest” slip op. at 12

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

    “19. When discussing the dial delay feature (essentially, the opposite scenario as claimed, where the assisted user is initiating the call), the ’024 patent instructs the reader to “[a]ssume . . . that the assisted user wants the default configuration to be that his or her calls are . . . captioned.” Id. at 4:24–26. This is in line with the prior goal of making the device automatic and, at least facially, suggests that the user does not intervene to initiate calling; a setting is made prior to receipt/placement of the call. In another section, the ’024 patent describes the assisted user’s phone to be “set up to answer and automatically initiate captioning by a call on the second telephone line 18 to the relay 20.” Id. at 5:34–36. Specifically, “when a call is received by the telephone 10, it can test the condition of the second telephone line.” Id. at 5:36–37. The word “when” here is used in the if-then, “in what circumstances” meaning of the word, implying that it performs one step then another in sequence. In yet another section, the ’024 patent discusses a similar feature in which one step is performed and then another: “If an incoming call is received . . . while the telephone is ringing, the captioned telephone device 12 checks the status of the second telephone line 18. If the second telephone line 18 is available, the normal implementation of two-line captioning can proceed.” Id. at 5:56–60. It is clear that the call to the relay here occurs immediately, without waiting for a user, because the ’024 patent states that if the second line is unavailable, it notifies the user so that she can decide whether to answer the call without captioning. Id. at 5:60–66. These passages convey a general theme of the ’024 patent to make the calling of the relay automatic upon receiving a call, without user intervention; this is consistent with Patent Owner’s construction. On the other hand, we do not find any embodiments in the ’024 patent specification explicitly consistent with Petitioner’s construction.” slip op. at 11

  Claim construction
  Patents in suitUS 8,515,024

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.