• Global Tel*link Corporation v. Securus Technologies, Inc.Rehearing granted
  PTAB · Jul 12, 2017 · IPR2015-01226 · APJ Kevin F Turner · IPR · Rehearing

  The Board denied rehearing in all other respects, leaving in place the denial of the motion to amend proposed claims 29–50 as not shown patentable over the prior art.

  RulingsRehearing decision

  • RehearingRehearing, grantedRehearing, deniedGranted in part

    “II. ANALYSIS The party challenging a decision in a request for rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). A request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed.” Id.” slip op. at 2

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

    “reviewer all audio of the call, including background audio,” and “enables reconstruction of the call, including background noise,” respectively. Patent Owner construes these limitations from the perspective of the prior art, taking into account “the significant technical differences between systems” (id. at 7), so that some of the background audio would not encompass all audio of the call. We construe those limitations from the perspective that they do not recite “all background noise,” and a system that records all audio above a certain threshold would record all background noise above that threshold, even if other background audio, at levels below the threshold, would not be captured. Such a system would 4 capture all of the audio, above a threshold, including background audio, and would be commensurate with the specified limitations of claims 29 and 43. More generally, and consistent with the broadest reasonable construction standard, claim terms are presumed to have their ordinary and customary meaning as understood by one of ordinary skill in the art in the context of the entire patent disclosure at the time of the invention. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). We do not accept the intent of the patent drafter, unless it is clear that the drafter intends for a meaning of a terms or terms to be different from their ordinary meanings by defining the term in the specification with reasonable clarity, deliberateness, and precision. See In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). In the instant case, Patent Owner has indicated that no specific construction is required beyond applying the plain meaning of the terms when read in light of the patent specification. Reh’g Req. 8 (citing Paper 28, 15). Also in the instant case, Patent Owner may have intended to distinguish over systems that intentionally avoiding recording sounds, or are different than how typical prior art systems functioned, but we must examine the claim terms adopted, and construe them according to the broadest reasonable construction consistent with the specification. “All audio of the call” is consistent with all of the audio of a call captured, i.e., above a threshold level, even if portions of the audio below that threshold are not captured.” slip op. at 4

  Claim construction
  Patents in suitUS 8,135,115
• Broadsign International, LLC v. T-Rex Property ABInstitution denied
  PTAB · Apr 26, 2017 · CBM2017-00008 · APJ Barbara A Benoit · CBM · Institution

  The Board denied institution because the challenged patent was not shown eligible for CBM review; claims 1, 11, 12, 49, 51-55, and 58-74 were disclaimed.

  RulingsInstitution decision

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

    “We conclude that the information in the Petition does not demonstrate that the challenged patent is eligible for covered business method patent review. In addition, even after Patent Owner submitted, on February 7, 2017, its Preliminary Response and evidence of filing statutory disclaimer, Petitioner did not request an opportunity to present arguments that any other claims would meet the threshold financial requirement for a covered business method patent review. The remaining challenged claims 13, 42, 43, 48, 50, 56, and 57 on their face do not evince claiming a financial product or service, and the written description describes the invention as being broader than placement of commercial advertising. See, e.g., Ex. 1001, 2:50–53 (encompassing “direct placement of commercial advertisements, public service announcements and other content on electronic displays”). Accordingly, we determine that Petitioner has failed to meet its burden of showing that the challenged patent is eligible for covered business method patent review. Therefore, we do not institute a covered business method patent review for claims 13, 42, 43, 48, 50, 56, and 57 of the ’603 patent.” slip op. at 9

  • Adverse judgmentAdverse judgmentOther

    “that it filed with the Office a statutory disclaimer of claims 1–12, 17, 19, 20, 22, 28–33, 45–47, 49, 51–55, and 58–74 of the challenged patent pursuant to 35 U.S.C. § 253(a) and 37 C.F.R. § 1.321(a). Ex. 2001, 4; see Prelim. Resp. 7. The disclaimer of a claim “shall . . . be considered as part of the original patent.” 35 U.S.C. § 253(a). The language “considered as part of the original patent” means that a patent subject to a disclaimer under § 253(a) “is treated as though the disclaimed claims never existed.” Vectra Fitness, Inc. v. TNWK Corp., 162 F.3d 1379, 1383 (Fed. Cir. 1998) (citing Altoona Publix Theatres v. Am. Tri-Ergon Corp., 294 U.S. 477, 492 (1935); Guinn v. Kopf, 96 F.3d 1419, 1422 (Fed. Cir. 1996)). Thus, even though claims of the challenged patent existed at the time the Petition here was filed, we must now treat the challenged patent as if it had never included those claims. 1. Disclaimed Claims Challenged in the Petition Of the challenged claims, Patent Owner disclaimed claims 1, 11, 12, 49, 51–55, and 58–74. Ex. 2001, 4. A covered business method patent review cannot be instituted based on disclaimed claims. 37 C.F.R. § 42.207(e) (“The patent owner may file a statutory disclaimer under 35 U.S.C. § 253(a) in compliance with 37 C.F.R. § 1.321(a), disclaiming one or more claims in the patent. No post-grant review will be instituted based on disclaimed claims.”). Accordingly, no covered business method patent review will be instituted for disclaimed claims 1, 11, 12, 49, 51–55, and 58–74. Nevertheless, our analysis continues because not all of the claims challenged in the Petition have been disclaimed by Patent Owner.” slip op. at 7

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

    “Petitioner proposes constructions for several terms that recite “means.” Pet. 33–35; see 37 C.F.R. § 42.104(b)(3) (A petition must set forth “[h]ow the challenged claim is to be construed. Where the claim to be construed contains a means-plus-function or step-plus-function limitation as permitted under 35 U.S.C. 112(f), the construction of the claim must identify the specific portions of the specification that describe the structure, material, or acts corresponding to each claimed function.”). Patent Owner does not address directly Petitioner’s proposed constructions. See generally Prelim. Resp. 1–11. We conclude that no term needs to be construed expressly in order for us to determine whether a covered business method patent review should be instituted.” slip op. at 6

  Claim construction
  Patents in suitUS 6,430,603
• Captioncall, L.L.C. / Sorenson Communications, Inc. v. Ultratec, Inc.All claims unpatentable
  PTAB · Apr 11, 2017 · IPR2015-01889 · APJ Barbara A Benoit · IPR · Final written decision

  Claims 1–74 are unpatentable as obvious over Liebermann, Engelke ’405, Mukherji, and Engelke ’482; substitute claims 75–81 are denied.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “specificity and the explanation of the facts on which based his conclusion, credible. Furthermore, we have reviewed the challenged patent and prior art of record in this proceeding (Exs. 1001, 1004–1008) and find that evidence consistent with Mr. Occhiogrosso’s opinion. Accordingly, we adopt Mr. Occhiogrosso’s characterization of the level of ordinary skill in the art for purposes of the following analysis.” slip op. at 25

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “specificity and the explanation of the facts on which based his conclusion, credible. Furthermore, we have reviewed the challenged patent and prior art of record in this proceeding (Exs. 1001, 1004–1008) and find that evidence consistent with Mr. Occhiogrosso’s opinion. Accordingly, we adopt Mr. Occhiogrosso’s characterization of the level of ordinary skill in the art for purposes of the following analysis.” slip op. at 25

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
  • Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for patent owner

    “(iv) Conclusion: Nexus For these reasons, we conclude that Patent Owner has proffered” slip op. at 72

  Patent outcomesUS 9,131,045 unpatentable
  § 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,131,045
• Ultratec, Inc. v. Captioncall, L.L.C.Institution denied
  PTAB · Feb 22, 2017 · PGR2016-00037 · APJ Barbara A Benoit · PGR · Institution

  The Board denied institution on all challenged claims because the petition did not show that any claim was more likely than not unpatentable under § 101 or § 103.

  RulingsInstitution decision

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

    “review of claims 1–23 of U.S. Patent No. 9,197,745 B1 (Ex. 1001, “the ’745 patent” or “the challenged patent”). Paper 1 (“Pet.”). Patent Owner, CaptionCall, L.L.C., filed a Preliminary Response. Paper 9 (“Prelim. Resp.”). We have authority to determine whether to institute a post-grant review. 35 U.S.C. § 324; 37 C.F.R. § 42.4(a). The standard for instituting a post-grant review is set forth in 35 U.S.C. § 324(a), which provides that a post-grant review may be instituted only if “the information presented in the petition . . . demonstrate[s] that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” 35 U.S.C. § 324(a). After considering the Petition and the Preliminary Response, we determine that the information presented in the Petition does not demonstrate it is more likely than not that at least one of the challenged claims is unpatentable. Accordingly, we do not institute a post-grant review.” slip op. at 2

  • 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. § 42.200(b); see Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016) (upholding the use of broadest reasonable construction standard in inter partes review9). Consistent with the broadest reasonable construction standard, claim terms are presumed to have their ordinary and customary meaning as understood by one of ordinary skill in the art in the context of the entire patent disclosure at the time of the invention. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Petitioner proposes constructions for “message” recited in claims 2, 4–8, and 12 and for “module” recited in claims 2–6 and 8. Pet. 9–11. Patent Owner challenges Petitioner’s proposed claim constructions as overly narrow. Prelim. Resp. 8–9. We determine, however, that no claim terms need express construction for this decision.” slip op. at 9

  • Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 not directed to exceptionNot shown unpatentable

    “We agree with Patent Owner (Prelim. Resp. 12) that claim 1, as a whole, is directed to an apparatus that facilitates voice communication and captioned text communication using a relay for hearing-impaired users over one or more communications networks and, under specified circumstances— when captioning has been enabled by the hearing-impaired user and the system determines that an attempted connection has failed—automatically reconnects to a captioning communication service. In other words, the claim is directed to a communication device that automatically reconnects to a captioning communication service following an unwanted interruption to the 12 captioning communication service in certain circumstances. See Ex. 1001, 1:13–16 (describing the field of the disclosure as relating to a communication device that automatically reconnects to the captioning communication service “following an unwanted interruption to the captioning communication session”). We determine that claim 1 as a whole is not directed to redialing a telephone as “callers have performed for as long as there have been telephones.” See Pet. 20. Moreover, the claim is directed to an apparatus having communication elements and a processor, and requires two connections and captioning, which, taken as a whole, distinguish claim 1 from a conventional telephone and further supports our determination that the claim merely involves, but is not directed to, the concept of reconnection or redialing. Moreover, looking at the elements individually, claim 1 requires communication elements coupled with a processor configured to able to connect a communication device and connect with a captioning session over two connections. Claim 1 recites a function—“automatically connect with the captioning communication service through a second connection to establish a captioning communication session during the voice communication session responsive to a determination that an attempted connection to the captioning communication service failed during a time in which a caption select option has been enabled by the hearing-impaired user, wherein the attempted automatic connection through the second connection is not made during a time in which the caption select option has been 13 disabled by the hearing-impaired user”—which requires more than “redialing” a telephone. See Prelim. Resp. 11–12. Specifically, the claimed apparatus only performs the “automatically connect” function if three conditions are met: (i) responsive to a determination that an attempted connection to the captioning communication service failed (ii) during a time in which a caption select option has been enabled by the hearing-impaired user, and (iii) “the attempted automatic connection through the second connection is not made during a time in which the caption select option has been disabled by the hearing-impaired user.”” slip op. at 12

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

    “excerpts from Parker as purportedly describing aspects of the automatically reconnect limitation. Id. at 40–42. Petitioner does not assert that either the Ultratec User Guide or Parker alone would have conveyed to one of ordinary skill in the art the automatically connect function with the three conditional limitations (id.), nor is such an assertion required under 35 U.S.C. § 103. Petitioner is required under 35 U.S.C. § 103, however, to explain how the combination of the references would have conveyed to one of ordinary skill 25 in the art the recited automatically connect function with its three conditional limitations. Petitioner has not provided such an explanation, much less adequate analysis by Mr. Zatkovich or factual support as to how one of ordinary skill in the art would understand the separate disclosures of the references to teach the automatically connect limitations. Specifically absent from the Petition is any discussion as to how Petitioner’s combination of references would have conveyed to one of ordinary skill in the art the limitations of automatically connecting under the required conditions—the failed attempt limitation, the when-enabled limitation, and the when-not-disabled limitation. Petitioner’s combination relies on Parker’s reconnection function to establish a lost persistent connection, but Parker’s reconnection function does not do so conditionally, much less under the specific conditions required by claim 1. Petitioner does not explain how the combination of Parker’s unconditional reconnection function would be understood by one of ordinary skill in the art to retry conditionally based on whether the Ultratec User Guide’s caption button was enabling captioning and had not been disabled by the caption telephone user. Furthermore, Petitioner contends that “adding an auto-retry and/or auto-reconnect feature as in Parker to a captioned telephone device as disclosed in [the Ultratec User Guide and Engelke] would amount to simply adding a known technique to a known system, wherein the technique operates in the same way as it was already known to operate and dos not have any unpredictable result.” Pet. 34. As such, Petitioner’s combination 26 expressly relies on Parker’s auto-retry and/or auto-reconnect feature “as in Parker,” which is an unconditional retry in the event of a lost connection. In sum, neither reference by itself describes the automatically reconnect limitation and Petitioner fails to articulate how one of ordinary skill in the art would have understood the claimed automatic reconnect in view of the cited disparate disclosures from the references. “[A] patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Petitioner asserts in a conclusory manner that the combination of a teaching of a button to enable or disable captioning with a teaching of automatic reconnection unrelated to whether captioning is enabled or disabled would have conveyed to one of ordinary skill in the art the automatic reconnection limitation. Petitioner fails to provide adequate explanation or factual support. This flaw of the Petition is particularly problematic when the threshold for institution is “more likely than not,” as here, rather than the threshold of “a reasonable likelihood” required to institute an inter partes review. Compare 35 U.S.C. § 324(a), with 35 U.S.C. § 314(a).” slip op. at 25

  Claim construction§ 101 eligibility§ 103 obviousnesscites Alice · Mayo · Enfish · KSR
  Patents in suitUS 9,197,745
• TCL Corporation / TCL Communication Technology Holdings, Ltd. et al. v. Telefonaktiebolaget LM EricssonAll claims unpatentable
  PTAB · Feb 13, 2017 · IPR2015-01674 · APJ Barbara A Benoit · IPR · Final written decision

  Claims 1–11 and 15 are unpatentable over Palatsi and Moore; claim 12 is unpatentable over Palatsi, Moore, and Tiilikainen under § 103.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “In reaching this conclusion, Mr. Ward indicates he “considered the ’931 patent, the types of problems encountered in the art of handheld radio telephone devices and handheld devices, the prior art solutions to those problems, and the educational level of workers active in the field.” Id. In contrast, Dr. Wolfe does not explain the basis for his opinion. 1205 ¶ 58. We determine that the level of ordinary skill proposed by Mr. Ward is consistent with the challenged patent and the asserted prior art, and we therefore adopt this definition of the level of ordinary skill in the art for the purposes of the analysis below. Our analysis would not differ, however, if we adopted Dr. Wolfe’s definition.” slip op. at 13

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

    “We determine that no term in the challenged claims requires express construction for this Final Written Decision. See, e.g., Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘to the extent necessary to resolve the 14 controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 14

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable

    “Pet. Reply 14 (quoting Ex. 1012, Abstract); Ex. 1012, Abstract (“By selecting an appropriate programming mode the touch strips can be made to present a series of programmable or soft keys.”). We agree with Petitioner that these express teachings of Palatsi and Moore would have been a reason to prompt one of ordinary skill in the art to replace Palatsi’s soft keys with Moore’s touch strips. Furthermore, we agree with Petitioner that, because both Palatsi and Moore address improving user input methods for a user interface, one of ordinary skill in the art would have looked to Moore’s touch strips as an alternative input method for improving Palatsi’s push-key user interface. Pet. 18 (citing Ex. 1205 ¶ 141). As Petitioner correctly indicates (Pet. 19), Palatsi identifies a need for portable, hand-held telephones to be smaller, which requires the size of the keypad on the device to be smaller. Ex. 1087, 1:21–29 (describing “a need for portable telephones (especially hand-held portable telephones) to be smaller, to make them more convenient to carry,” while still maintaining ease of use by not making the input keys too small). Moore describes the conventional use of soft keys to limit keyboard size (Ex. 1012, 1:6–12) and, as Petitioner notes, Moore presents an invention of a position-sensitive touch strip that can be used for menu selection, scrolling, and cursor generation/control with a display terminal. Pet. 16 (citing Ex. 1012, Abstract, 1:27–35, 3:18–25, 3:54–4:28, Fig. 1; Ex. 1205 ¶ 137). These arguments, supported by citations to the references and reasoned testimony by Dr. Wolfe, weigh toward a determination of obviousness because both Palatsi and Moore address the problem of making 28 keyboards smaller within the field of user input methods for electronic devices. “[I]f a technique has been used to improve one device, and a person of ordinary skill in the art would recognize 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. Moreover, we also credit Dr. Wolfe’s testimony of how using” slip op. at 28

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “Second, and more importantly, we credit Dr. Wolfe’s testimony that the express disclosure of Moore would have conveyed enabling or disabling the touch strips and, which in combination with Palatsi’s processor, would have conveyed to one of ordinary skill in the art “a second mode wherein the controller is unresponsive to contact with one of the banks of touch strip” (Ex. 1205 ¶¶ 185–87). Dr. Wolfe’s testimony relies on an express disclosure of Moore (switching touch strip banks) and explains how one of ordinary skill in the art would understand that teaching. 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.”). We accord Mr. Ward’s testimony less weight than Dr. Wolfe’s testimony because Dr. Wolfe’s testimony better comports with the express description of Moore of switching between banks of touch strips. In re 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.”). Dr. Wolfe’s testimony also addresses what the combined teachings of Palatsi and Moore would have conveyed to one of ordinary skill in the art (see Ex. 1205 ¶¶ 185–86), whereas Mr. Ward’s testimony unduly focuses on Moore’s isolated disclosures (see, e.g., Ex. 2057 ¶ 78 (“Again, I simply cannot find any disclosure in Moore of the controller ever being rendered unresponsive or the touch strips being rendered disabled or deactivated upon ‘switching between different ones of the banks of strips.’ Ex. 1012 at 4:33–36.”)).” slip op. at 32

  Patent outcomesUS RE43,931 unpatentable
  Claim construction§ 103 obviousnesscites Graham
• TCL Corporation / TCL Communication Technology Holdings, Ltd. et al. v. Telefonaktiebolaget LM EricssonAll claims unpatentable
  PTAB · Feb 8, 2017 · IPR2015-01637 · APJ Patrick R Scanlon · IPR · Final written decision

  Claims 30, 31, 37–41, and 45–57 are unpatentable as obvious over Iwata and Stephan, with claim 53 additionally relying on Capps.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “We agree with Petitioner’s second point. Mr. Ward actually opines that a person of ordinary skill in the art “would probably have had a bachelor’s degree in electrical engineering or computer engineering, at least 2–3 years of hands-on experience working with hand held contact-sensitive user interface devices, and direct knowledge of the types of user interfaces used in mobile phones and handheld devices in 1997.” Ex. 2004 ¶ 22. In reaching this conclusion, Mr. Ward indicates he “considered the ‘931 patent, the types of problems encountered in the art of handheld radio telephone devices and handheld devices, the prior art solutions to those problems, and the educational level of workers active in the field.” Id. In contrast, Dr. Wolfe does not explain the basis for his opinion. 1202 ¶ 58. We determine that the level of ordinary skill proposed by Mr. Ward is consistent with the challenged patent and the asserted prior art, and we therefore adopt this definition of the level of ordinary skill in the art for the purposes of the analysis below. Our analysis would not differ, however, if we adopted Dr. Wolfe’s definition.” slip op. at 10

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

    “Prior to our Institution Decision, Petitioner proposed constructions for “contact-sensitive transducer . . . which produces an output signal.” Pet. 10– 12. Patent Owner did not propose any express constructions or challenge Petitioner’s proposed construction. See generally Prelim. Resp. 2–27. In the Institution Decision, we determined that no claim term required express construction. Inst. Dec. 6. In its Response, Patent Owner indicates that it “generally agrees that the constructions proposed by [Petitioner] are in keeping with how a [person of ordinary skill in the art] would have understood those terms.” PO Resp. 29. We determine, for purpose of this Final Written Decision, that no term in the challenged claims requires express construction. See, e.g., Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 11

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable

    “We find Petitioner’s argument persuasive. The test for obviousness is not whether the features of a reference may be bodily incorporated into another reference to produce the claimed subject matter; rather, it is what the combination of references makes obvious to one of ordinary skill in the art. See In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012) (“It is well-established that a determination of obviousness based on teachings from multiple references does not require an actual, physical substitution of elements.”). Furthermore, an obviousness analysis “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR, 550 U.S. at 418; see also id. at 421 (“A person of ordinary skill is also a person of ordinary creativity, not an automaton.”). In this case, we determine that a skilled artisan, using ordinary creativity, would not be dissuaded from combining Iwata and Stephan even if Stephan’s scroll regions have fixed locations.” slip op. at 27

  • Expert testimonyPatent owner expert discountedDecided for petitioner

    “The only support provided for asserting that 10 millimeters is “a standard assumption for finger size in the art of touch screen devices” is the testimony of Mr. Ward. Id. at 32 (citing Ex. 2004 ¶ 79). Mr. Ward’s testimony, however, merely repeats this statement from the Patent Owner Response without providing any supporting evidence or reasoning. Ex. 2004 ¶ 79. Accordingly, we give this testimony little weight. 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 to no weight.”). Rather, we agree with Petitioner that the evidence of record does not support the conclusion that, when combining Iwata and Stephan in the manner proposed, a skilled artisan “would have modified Iwata to necessarily have a scroll region width of 3.3 millimeters.” See Reply 28–29 (emphasis added).” slip op. at 19

  Patent outcomesUS RE43,931 unpatentable
  Claim construction§ 103 obviousnesscites KSR
• TCL Corporation / TCL Communication Technology Holdings, Ltd. et al. v. Telefonaktiebolaget LM EricssonAll claims unpatentable
  PTAB · Feb 8, 2017 · IPR2015-01676 · APJ Barbara A Benoit · IPR · Final written decision

  Claims 30, 31, 37–41, and 45–57 are unpatentable under § 103 over Palatsi and Moore, with Tiilikainen additionally applied to claim 49.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “We agree with Petitioner’s second point that Patent Owner has added “graphic user interfaces” “and understood the design and functional tradeoffs with regard to the physical constraints of a hand-held device” to Mr. Ward’s testimony. Rather, Mr. Ward opines that one of ordinary skill in the art “would probably have had a bachelor’s degree in electrical engineering or computer engineering, at least 2–3 years of hands-on experience working with hand held contact-sensitive user interface devices, and direct knowledge of the types of user interfaces used in mobile phones and handheld devices in 1997.” Ex. 2057 ¶ 22. In reaching this conclusion, Mr. Ward indicates he “considered the ’931 patent, the types of problems encountered in the art of handheld radio telephone devices and handheld devices, the prior art solutions to those problems, and the educational level of workers active in the field.” Id. In contrast, Dr. Wolfe does not explain the basis for his opinion. 1206 ¶ 58. We determine that the level of ordinary skill proposed by Mr. Ward is consistent with the challenged patent and the asserted prior art, and we therefore adopt this definition of the level of ordinary skill in the art for the purposes of the analysis below. Our analysis would not differ, however, if we adopted Dr. Wolfe’s definition.” slip op. at 12

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “Second, and more importantly, we credit Dr. Wolfe’s testimony that the express disclosure of Moore would have conveyed enabling or disabling the touch strips and, which in combination with Palatsi’s processor, would have conveyed to one of ordinary skill in the art “a second mode wherein the controller is unresponsive to contact with one of the banks of touch strip” (Ex. 1206 ¶¶ 180–82). Dr. Wolfe’s testimony relies on an express disclosure of Moore (switching touch strip banks) and explains how one of ordinary skill in the art would understand that teaching. 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.”). We accord Mr. Ward’s testimony less weight than Dr. Wolfe’s testimony because Dr. Wolfe’s testimony better comports with the express description of Moore of switching between banks of touch strips. In re 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.”). Dr. Wolfe’s testimony also addresses what the combined teachings of Palatsi and Moore would have conveyed to one of ordinary skill in the art (see Ex. 1206 ¶ 180), whereas Mr. Ward’s testimony unduly focuses on Moore’s isolated disclosures (see, e.g., Ex. 2057 ¶ 78 (“Again, I simply cannot find any disclosure in Moore of the controller ever being rendered unresponsive or the touch strips being rendered disabled or 31 deactivated upon ‘switching between different ones of the banks of strips.’ Ex. 1012 at 4:33–36.”)).” slip op. at 31

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

    “elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.” KSR, 550 U.S. at 418. Rather, “it can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does.” Apple, 839 F.3d at 1058 (quoting KSR, 550 U.S. at 418–19); see also KSR, 550 U.S. at 418 (“[T]here must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.”) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). Here, as Petitioner indicates, Palatsi states that touch sensors may be used as an input device in place of soft keys, which Palatsi uses in a “scrolland-select”5 system for a portable telephone. Ex. 1087, 4:14–23; 1:15–20, 2:26–29, 2:57–59; see Pet. 17 (citing Ex. 1087, 4:15–23) (“Rather than having one or more keys as the input means the telephone could have, for example, one or more touch sensors. . . .”). Additionally, as Petitioner notes in its Reply, Moore teaches the use of a touch sensor acting like a soft key. 5 Palatsi explains that a scroll-and-select menu allows the user to scroll through menu items and then select the desired one. Ex. 1087, 2:41–43. 26 Pet. Reply 14 (quoting Ex. 1012, Abstract); Ex. 1012, Abstract (“By selecting an appropriate programming mode the touch strips can be made to present a series of programmable or soft keys.”). We agree with Petitioner that these express teachings of Palatsi and Moore would have been a reason to prompt one of ordinary skill in the art to replace Palatsi’s soft keys with Moore’s touch strips. Furthermore, we agree with Petitioner that, because both Palatsi and Moore address improving user input methods for a user interface, one of ordinary skill in the art “would have looked to Moore’s touch strips as an alternative input method for improving Palatsi’s push-key user interface.” Pet. 16–17 (citing Ex. 1206 ¶ 140). As Petitioner correctly indicates (Pet. 17), Palatsi identifies a need for portable, hand-held telephones to be smaller, which requires the size of the keypad on the device to be smaller. Ex. 1087, 1:21–29 (describing “a need for portable telephones (especially hand-held portable telephones) to be smaller, to make them more convenient to carry,” while still maintaining ease of use by not making the input keys to small). Moore describes the conventional use of soft keys to limit keyboard size (Ex. 1012, 1:6–12) and, as Petitioner notes, Moore presents an invention of a position-sensitive touch strip that can be used for menu selection, scrolling, and cursor generation/control with a display terminal. Pet. 14–15 (citing Ex. 1012, Abstract, 1:27–35, 3:18–25, 3:54–4:28, Fig. 1; Ex. 1206 ¶ 136). These arguments, supported by citations to the references and reasoned testimony by Dr. Wolfe, weighs toward a determination of 27 obviousness because both Palatsi and Moore address the problem of making keyboards smaller within the field of user input methods for electronic devices. “[I]f a technique has been used to improve one device, and a person of ordinary skill in the art would recognize 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. Moreover, we also credit Dr. Wolfe’s testimony of how using Moore’s touch strips would improve the user interface of Palatsi. Ex. 1206 ¶¶ 142–44; see Pet. 17–18. Dr. Wolfe opines that using a touch strip of Moore to cover functionality provided by multiple push-type keys of Palatsi and using a touch strip of Moore to provide for a more intuitive method of scrolling would improve Palatsi’s user interface. Ex. 1206 ¶¶ 141–44; see Pet. 16–17 (citing Ex. 1087, 1:21–29, 4:15–23; Ex. 1012, 3:45–53, 4:20–29; Ex. 1206 ¶¶ 142–43). Dr. Wolfe concludes that these improvements would have been reasons one of ordinary skill in the art would have substituted Moore’s touch strip for Palatsi’s soft keys. Ex. 1206 ¶¶ 142–43; see Pet. 16–17 (citing Ex. 1087, 1:21–29, 4:15–23; Ex. 1012, 3:45–53, 4:20–29). Dr. Wolfe provides sufficient explanation and factual corroboration to support his opinion. 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 26

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightTeaching away not foundDecided for petitioner

    “We do not agree with Patent Owner because, as Petitioner points out in its Reply, Moore itself identifies the benefit of avoiding input from unintended contact. Ex. 1012, 2:64–68 (“The time constant of the filter 32 circuit is appropriately set so as to register most strip actuations which are deliberate and so as not to register most of the touch strip contacts which are unintended.”); see Pet. Reply 18 (quoting Ex. 1012, 2:64–68). Rather, we agree with Petitioner that, because “Palatsi expressly teaches substituting touch strips as input devices and additionally because Moore teaches the added benefit from using touch strips for avoiding responses from unintended contacts with the input device,” the combination of Palatsi and Moore set forth by Petitioner does not impermissibly rely on hindsight. See, e.g., Pet. Reply 20.” slip op. at 32

  Patent outcomesUS RE43,931 unpatentable
  § 103 obviousnesscites Graham
• TCL Corporation / TCL Communication Technology Holdings, Ltd. et al. v. Telefonaktiebolaget LM EricssonAll claims unpatentable
  PTAB · Feb 1, 2017 · IPR2015-01646 · APJ Patrick R Scanlon · IPR · Final written decision

  Claims 58–69 are unpatentable as obvious over Iwata and Stephan; Petitioner’s motion to exclude is dismissed in part and denied in part.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for petitioner

    “We agree with Petitioner’s second point. Mr. Ward actually opines that a person of ordinary skill in the art “would probably have had a bachelor’s degree in electrical engineering or computer engineering, at least 2–3 years of hands-on experience working with hand held contact-sensitive user interface devices, and direct knowledge of the types of user interfaces used in mobile phones and handheld devices in 1997.” Ex. 2004 ¶ 22. In reaching this conclusion, Mr. Ward indicates he “considered the ‘931 patent, the types of problems encountered in the art of handheld radio telephone devices and handheld devices, the prior art solutions to those problems, and the educational level of workers active in the field.” Id. In contrast, Dr. Wolfe does not explain the basis for his opinion. 1204 ¶ 58. We determine that the level of ordinary skill proposed by Mr. Ward is consistent with the challenged patent and the asserted prior art, and we therefore adopt this definition of the level of ordinary skill in the art for the purposes of the analysis below. Our analysis would not differ, however, if we adopted Dr. Wolfe’s definition.” slip op. at 10

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

    “We determine, for purpose of this Final Written Decision, that no term in the challenged claims requires express construction. See, e.g., Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 11

  • Expert testimonyPatent owner expert discountedDecided for petitioner

    “The only support provided for asserting that 10 millimeters is “a standard assumption for finger size in the art of touch screen devices” is the testimony of Mr. Ward. Id. at 32 (citing Ex. 2004 ¶ 79). Mr. Ward’s testimony, however, merely repeats this statement from the Patent Owner Response without providing any supporting evidence or reasoning. Ex. 2004 ¶ 79. Accordingly, we give this testimony little weight. 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 to no weight.”). Rather, we agree with Petitioner that the evidence of record does not support the conclusion that, when combining Iwata and Stephan in the manner proposed, a skilled artisan “would have modified Iwata to necessarily have a scroll region width of 3.3 millimeters.” See Reply 28–29 (emphasis added).” slip op. at 21

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable

    “As discussed above, Petitioner asserts four reasons supporting why one of ordinary skill in the art would have been led to make the proposed modification. See supra Section III.D.3.a.iv. After considering all evidence and arguments, we determine that Petitioner has provided a persuasive articulated reason with rational underpinning to support its contention that a person of ordinary skill would have had a reason or motivation to combine Iwata and Stephan in the manner provided. We also determine that Petitioner has provided analysis explaining how the combination would have conveyed to one of ordinary skill in the art the claim limitations. See supra Section III.D.3.a. c) Conclusion In view of the above, we determine that Petitioner has demonstrated, by a preponderance of the evidence, that claim 58 is unpatentable under 35 U.S.C. § 103 as directed to subject matter that would have been obvious to a person of ordinary skill in the art in light of Iwata and Stephan.” slip op. at 31

  Patent outcomesUS RE43,931 unpatentable
  Claim construction§ 103 obviousnesscites KSR
• TCL Corporation / TCL Communication Technology Holdings, Ltd. et al. v. Telefonaktiebolaget LM EricssonAll claims unpatentable
  PTAB · Feb 1, 2017 · IPR2015-01761 · APJ Barbara A Benoit · IPR · Final written decision

  Claims 16–26, 29, and 33–36 are unpatentable as obvious over Palatsi and Moore.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “’931 patent, the types of problems encountered in the art of handheld radio telephone devices and handheld devices, the prior art solutions to those problems, and the educational level of workers active in the field.” Id. In contrast, Dr. Wolfe does not explain the basis for his opinion. 1207 ¶ 58. We determine that the level of ordinary skill proposed by Mr. Ward is consistent with the challenged patent and the asserted prior art, and we therefore adopt this definition of the level of ordinary skill in the art for the purposes of the analysis below. Our analysis would not differ, however, if we adopted Dr. Wolfe’s definition.” slip op. at 13

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedMixed

    “Second, and more importantly, we credit Dr. Wolfe’s testimony that the express disclosure of Moore would have conveyed enabling or disabling the touch strips and, which in combination with Palatsi’s processor, would have conveyed to one of ordinary skill in the art “a second mode wherein the controller is unresponsive to contact with one of the banks of touch strip” (Ex. 1207 ¶ 180). Dr. Wolfe’s testimony relies on an express disclosure of Moore (switching touch strip banks) and explains how one of ordinary skill in the art would understand that teaching. 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.”). We accord Mr. Ward’s testimony less weight than Dr. Wolfe’s testimony because Dr. Wolfe’s testimony better comports with the express description of Moore of switching between banks of touch strips. In re 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.”). Dr. Wolfe’s testimony also addresses what the combined teachings of Palatsi and Moore would have conveyed to one of ordinary skill in the art (see Ex. 1207 ¶ 180), whereas Mr. Ward’s testimony unduly focuses on Moore’s isolated disclosures (see, e.g., Ex. 2057 ¶ 78 (“Again, I” slip op. at 31

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

    “Prior to our Institution Decision, Petitioner proposed constructions for “contact-sensitive transducer . . . which produces an output signal” and “graphical object(s).” Pet. 11–13. Patent Owner did not propose any express constructions or challenge Petitioner’s proposed construction. See generally PO Resp.; Paper 6 (Patent Owner’s Preliminary Response). In the Institution Decision, we determined that no claim term required express construction. Inst. Dec. 6. In its Response, Patent Owner indicates that it “generally agrees that the constructions proposed by [Petitioner] are in keeping with how a [person of ordinary skill in the art] would have understood those terms.” PO Resp. 23. We determine that no term in the challenged claims requires express construction for this Final Written Decision. See, e.g., Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 14

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

    “3. Analysis We agree with Petitioner’s analysis described above and adopt it as our own. We, therefore, determine that the combination of Palatsi and Moore as set forth by Petitioner would have conveyed to one of ordinary skill in the art all the limitations recited by independent claim 16. Our inquiry continues because “[a] patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.” KSR, 550 U.S. at 418. Rather, “it can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does.” Apple, 839 F.3d at 1058 (quoting KSR, 550 U.S. at 418–19); see also KSR, 550 U.S. at 418 (“[T]here must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.”) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).” slip op. at 26

  Patent outcomesUS RE43,931 unpatentable
  Claim construction§ 103 obviousnesscites Graham
• TCL Corporation / TCL Communication Technology Holdings, Ltd. et al. v. Telefonaktiebolaget LM EricssonAll claims unpatentable
  PTAB · Feb 1, 2017 · IPR2015-01641 · APJ Patrick R Scanlon · IPR · Final written decision

  Claims 16–26, 29, and 33–36 are unpatentable: claims 16–17 and 18–26, 29 as obvious, and claims 33–36 as anticipated or, alternatively, obvious over Iwata.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “We agree with Petitioner’s second point. Mr. Ward actually opines that a person of ordinary skill in the art “would probably have had a bachelor’s degree in electrical engineering or computer engineering, at least 2–3 years of hands-on experience working with hand held contact-sensitive user interface devices, and direct knowledge of the types of user interfaces used in mobile phones and handheld devices in 1997.” Ex. 2004 ¶ 22. In reaching this conclusion, Mr. Ward indicates he “considered the ‘931 patent, the types of problems encountered in the art of handheld radio telephone devices and handheld devices, the prior art solutions to those problems, and the educational level of workers active in the field.” Id. In contrast, Dr. Wolfe does not explain the basis for his opinion. 1203 ¶ 58. We determine that the level of ordinary skill proposed by Mr. Ward is consistent with the challenged patent and the asserted prior art, and we therefore adopt this definition of the level of ordinary skill in the art for the purposes of the analysis below. Our analysis would not differ, however, if we adopted Dr. Wolfe’s definition.” slip op. at 10

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

    “In its Response, Patent Owner indicates that it “generally agrees that the constructions proposed by [Petitioner] are in keeping with how a [person of ordinary skill in the art] would have understood those terms.” PO Resp. 29. We determine, for purpose of this Final Written Decision, that no term in the challenged claims requires express construction. See, e.g., Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 12

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

    “As discussed above, Petitioner asserts four reasons supporting why one of ordinary skill in the art would have been led to make the proposed modification. See supra Section III.D.3.a.iv. After considering all evidence and arguments, we determine that Petitioner has provided a persuasive articulated reason with rational underpinning to support its contention that a person of ordinary skill would have had a reason or motivation to combine Iwata and Stephan in the manner provided. We also determine that Petitioner has provided analysis explaining how the combination would have conveyed to one of ordinary skill in the art the claim limitations. See supra Section III.D.3.a.” slip op. at 30

  • Expert testimonyPatent owner expert discountedDecided for petitioner

    “The only support provided for asserting that 10 millimeters is “a standard assumption for finger size in the art of touch screen devices” is the testimony of Mr. Ward. Id. at 32 (citing Ex. 2004 ¶ 79). Mr. Ward’s testimony, however, merely repeats this statement from the Patent Owner Response without providing any supporting evidence or reasoning. Ex. 2004 ¶ 79. Accordingly, we give this testimony little weight. 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 to no weight.”). Rather, we agree with Petitioner that the evidence of record does not support the conclusion that, when combining Iwata and Stephan in the manner proposed, a skilled artisan “would have modified Iwata to necessarily have a scroll region width of 3.3 millimeters.” See Reply 28–29 (emphasis added).” slip op. at 20

  Patent outcomesUS RE43,931 unpatentable
  Claim construction§ 103 obviousnesscites KSR

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.