• TCL Corporation / TCL Communication Technology Holdings, Ltd. et al. v. Telefonaktiebolaget LM EricssonAll claims unpatentable
  PTAB · Feb 1, 2017 · IPR2015-01806 · APJ Barbara A Benoit · IPR · Final written decision

  Claims 58–69 were held unpatentable as obvious over the combination of Palatsi and Moore under § 103.

  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 12 problems, and the educational level of workers active in the field.” Id. In contrast, Dr. Wolfe does not explain the basis for his opinion. 1208 ¶ 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

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

    “Prior to our Institution Decision, Petitioner proposed constructions for “contact-sensitive transducer . . . which produces an output signal.” Pet. 12– 14. Patent Owner did not propose any express constructions or challenge Petitioner’s proposed construction. See generally PO Resp.; Paper 7 (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

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable

    “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” system for a portable telephone. Ex. 1087, 4:14–23; 1:15–20, 2:26–29, 2:57–59; see Pet. 18 (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. 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. 27 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. 1208 ¶ 141–42). As Petitioner correctly indicates (Pet. 18–19), 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 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. 16 (citing Ex. 1012, Abstract, 1:27–35, 3:18–25, 3:54–4:28, Fig. 1; Ex. 1208 ¶ 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 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.” slip op. at 27

  Patent outcomesUS RE43,931 unpatentable
  Claim construction§ 103 obviousnesscites Graham
• TCL Corporation / TCL Communication Technology Holdings, Ltd. et al. v. Telefonaktiebolaget L. M. EricssonAll claims unpatentable
  PTAB · Jan 31, 2017 · IPR2015-01878 · APJ Stacy B Margolies · IPR · Final written decision

  Claims 1–3, 8–12, and 15–19 are unpatentable as obvious over Kurby and the 3GPP LCS Report, with Gilbert added for claim 10.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner does not challenge Dr. Goldberg’s testimony regarding the level of skill in the art. See generally PO Resp. However, Mr. Blackburn, Patent Owner’s declarant, opines that a person of ordinary skill in the art would probably have had a graduate degree in computer engineering, electrical engineering, applied physics, or a related field, and at least three years’ experience in the design and development of GPS or cellular location services, systems, and/or devices or (2) a Bachelor’s degree in computer engineering, electrical engineering, applied physics, or a related field, and at least five years’ experience in the design, analysis, and/or development of GPS, cellular and PSTN location services, systems, and/or devices. Ex. 2006 ¶ 11 (emphases added). As illustrated by the emphasized words above, Mr. Blackburn’s proposed level of ordinary skill differs slightly from Dr. Goldberg’s. Patent Owner, however, does not cite the above testimony in its Patent Owner Response. Nor does Patent Owner or Mr. Blackburn explain the reason for including cellular and PSTN location services, or for adding analysis as an alternative in the description of experience in the field. See generally PO Resp. We determine that the level of ordinary skill proposed by Petitioners’ declarant is consistent with the challenged patent and the asserted prior art, and we therefore adopt Dr. Goldberg’s definition of the level of ordinary skill in the art for the purposes of the analysis below. However, our analysis would not differ if we were to adopt Mr. Blackburn’s definition.” slip op. at 13

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

    “First, the ’815 patent and its prosecution history do not support Patent Owner’s narrow reading. The ’815 patent discloses that a GPS receiver can optimize the time for estimating its current position and minimize radio network traffic “based on one or more quality of service (QoS) parameters.” Ex. 1001, 2:54–58. The patent explains that “[t]hese QoS parameters may be computed internally within the mobile terminal or received in a position request from the network.” Id. at 2:58–60 (emphasis added). The patent further explains that the microprocessor in the mobile terminal determines a desired QoS. Id. at 5:29–30, Fig. 2. Specifically, the ’815 patent discloses: To make this determination of QoS, microprocessor 116 may, for example, prompt the user with a menu of choices related to desired positioning quality of service (QoS). One such menu could contain selections such as “Most accurate,” “Fastest,” “Least Expensive.” In this example, the user chooses the desired QoS from the menu. Alternatively, the positioning application 26 executing in microprocessor 116 could automatically utilize a default QoS value, which the user has previously chosen for a particular application and stored in data memory 120. The QoS parameters could also be supplied to the mobile terminal 100 by the requesting application. Id. at 5:30–42 (emphasis added); see also id. at 5:62–6:4 (similarly disclosing that the positioning application 26 could specify a QoS value in the position request). The ’815 patent discloses that the requesting application (the positioning application 26 that requests the position update) may be external to the mobile terminal 100, either within or outside of the mobile communication network 10 (shown in Figure 1). Id. at 3:58–60. Thus, the specification of the ’815 patent discloses that “determining a desired quality of service” includes receiving a QoS parameter or value from an application external to the mobile terminal and within or outside the communication network. The specification also discloses that the QoS parameter may be received in a position request from the network. The specification describes selection of menu choices for only one of the embodiments. The specification does not require selection of an input (by either the user or the position application) to indicate a desired QoS.” slip op. at 16

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

    “provide persuasive articulated reasoning with rational underpinning for its proposed combination to support the legal conclusion of obviousness. Pet. 32–35 (citing, e.g., Ex. 1052 ¶¶ 188–195); see KSR, 550 U.S. at 418. Petitioners persuasively show that an ordinarily skilled artisan would have been motivated to modify the location determination method disclosed in Kurby to include a request for a current position of a mobile terminal from a requesting application as taught in the 3GPP LCS Report and further determining a quality of service specified in that request in order to apply a threshold based on the specified quality of service. See Pet. 32–35. Petitioners contend, and we agree, that both Kurby and the 3GPP LCS Report are directed to determining the positioning or location of a mobile terminal. Id. at 32–33 (citing Ex. 1027, 3:21–25, 4:31–35; Ex. 1034, 8, 11; Ex. 1052 ¶¶ 188–189). In addition, as Petitioners argue, the 3GPP LCS Report describes that a requesting application can specify a desired quality of service and that quality of service levels (e.g., accuracy) can vary depending on the application. Id. at 33–34 (citing, e.g., Ex. 1034, 15–16, 38–39). Petitioners persuasively show that allowing quality of service to be specified by a requesting application would be beneficial because unnecessary network resource usage could be avoided and users would not have to incur costs associated with frequency obtaining aiding data unnecessarily. Id. at 34–35.” slip op. at 33

  Patent outcomesUS 6,535,815 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,535,815
• TCL Corporation / TCL Communication Technology Holdings, Ltd. et al. v. Telefonaktiebolaget L. M. EricssonAll claims unpatentable
  PTAB · Jan 31, 2017 · IPR2015-01772 · APJ Stacy B Margolies · IPR · Final written decision

  Claims 1–3, 8–12, and 15–19 are unpatentable: claims 1–3, 8, 9, 11, 12, 15, and 17–19 over Camp and Kingdon; claim 10 with Gilbert; and claim 16 with Kurby.

  RulingsFinal written decision

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

    “Owner’s narrow reading. The ’815 patent discloses that a GPS receiver can optimize the time for estimating its current position and minimize radio network traffic “based on one or more quality of service (QoS) parameters.” Ex. 1001, 2:54–58. The patent explains that “[t]hese QoS parameters may be computed internally within the mobile terminal or received in a position request from the network.” Id. at 2:58–60 (emphasis added). The patent further explains that the microprocessor in the mobile terminal determines a desired QoS. Id. at 5:29–30, Fig. 2. Specifically, the ’815 patent discloses: To make this determination of QoS, microprocessor 116 may, for example, prompt the user with a menu of choices related to desired positioning quality of service (QoS). One such menu could contain selections such as “Most accurate,” “Fastest,” “Least Expensive.” In this example, the user chooses the desired QoS from the menu. Alternatively, the positioning application 26 executing in microprocessor 116 could automatically utilize a default QoS value, which the user has previously chosen for a particular application and stored in data memory 120. The QoS parameters could also be supplied to the mobile terminal 100 by the requesting application. Id. at 5:30–42 (emphasis added); see also id. at 5:62–6:4 (similarly disclosing that the positioning application 26 could specify a QoS value in the position request). The ’815 patent discloses that the requesting application (the positioning application 26 that requests the position update) may be external to the mobile terminal 100, either within or outside of the mobile communication network 10 (shown in Figure 1). Id. at 3:58–60. Thus, the specification of the ’815 patent discloses that “determining a desired quality of service” includes receiving a QoS parameter or value from an application external to the mobile terminal and within or outside the communication network. The specification also discloses that the QoS parameter may be received in a position request from the network. The specification describes selection of menu choices for only one of the embodiments. The specification does not require selection of an input (by either the user or the position application) to indicate a desired QoS.” slip op. at 16

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner does not challenge Dr. Goldberg’s testimony regarding the level of skill in the art. See generally PO Resp. However, Mr. Blackburn, Patent Owner’s declarant, opines that a person of ordinary skill in the art would probably have had a graduate degree in computer engineering, electrical engineering, applied physics, or a related field, and at least three years’ experience in the design and development of GPS or cellular location services, systems, and/or devices or (2) a Bachelor’s degree in computer engineering, electrical engineering, applied physics, or a related field, and at least five years’ experience in the design, analysis, and/or development of GPS, cellular and PSTN location services, systems, and/or devices. Ex. 2005 ¶ 11 (emphases added). As illustrated by the emphasized words above, Mr. Blackburn’s proposed level of ordinary skill differs slightly from Dr. Goldberg’s. Patent Owner, however, does not cite the above testimony in its Patent Owner Response. Nor does Patent Owner or Mr. Blackburn explain the reason for including cellular and PSTN location services, or for adding analysis as an alternative in the description of experience in the field. See generally PO Resp. We determine that the level of ordinary skill proposed by Petitioners’ declarant is consistent with the challenged patent and the asserted prior art, and we therefore adopt Dr. Goldberg’s definition of the level of ordinary skill in the art for the purposes of the analysis below. However, our analysis would not differ if we were to adopt Mr. Blackburn’s definition.” slip op. at 13

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

    “proposed combination to support the legal conclusion of obviousness. Pet. 31–36 (citing, e.g., Ex. 1054 ¶¶ 189–198); see KSR, 550 U.S. at 418. Petitioners persuasively show that an ordinarily skilled artisan would have been motivated to modify Camp’s initiation of the on-demand positioning process to include the requesting application specifying a desired quality of services as taught in Kingdon to allow estimating the position of the mobile terminal using older or newer ephemeris data as desired. Pet. 35–36. As Petitioners explain, and as disclosed in Kingdon, a desired quality of service may vary depending on the application. Pet. 36; Ex. 1025, 8:28–13; see also Ex. 1054 ¶¶ 195–198. Petitioners also contend, and we agree, that both Camp and Kingdon teach a mobile device obtaining location-related data over a network while seeking to minimize the associated cost and network usage and the time it takes to calculate the device’s location. Pet. 31–33 (citing Ex. 1023, 3:23–4:4, 4:7–19, 6:3–9, 7:21–23, 9:24–10:2; Ex. 1025, Abstract, 3:6–8, 6:4–7, 9:9–13; Ex. 1054 ¶¶ 189–191). Petitioners also persuasively contend Kingdon teaches—and a person of ordinary skill in the art would have recognized—that specifying a desired quality of service would have benefitted many applications requesting positioning information on a cell phone. Id. at 33 (citing, e.g., Ex. 1025, 2:23–31, 4:16–20, 7:26– 9:13; Ex. 1023, 10:7–19; Ex. 1054 ¶¶ 192–194). Patent Owner argues against the combination for three reasons: (1) a person of ordinary skill in the art would not have been motivated to include the quality of service of Kingdon in Camp to use ephemeris data older or newer than four hours; (2) Petitioners’ proposed modification would render Camp’s system inoperable for achieving its intended purpose; and (3) there would have been no benefit in modifying Camp with Kingdon. PO Resp. 29–34. Each of these arguments lack merit. First, Patent Owner asserts that an ordinarily skilled artisan would not have modified Camp’s system to allow it to use ephemeris data that is older than four hours “because doing so would render the location attempt effectively nonfunctional.” Id. at 29–30 (citing Ex. 2005 ¶¶ 94–96). Patent Owner also asserts that a skilled artisan would not have modified Camp’s system to use data that is newer than four hours old because ephemeris data in the range of zero to four hours old has substantially the same accuracy. Id. at 30–31 (citing Ex. 2005 ¶¶ 97, 98; Ex. 2002, 41:13–42:5). This argument lacks merit. First, Petitioners’ reasons for combining the teachings of Camp and Kingdon are not limited to changing the ephemeris age parameter. As Petitioners explain, Kingdon teaches the concept of using a desired quality of service, which can include accuracy, timeliness, network impact, or other factors. See Pet. 31–33; Ex. 1025, 6:16–21, 8:28–9:13. We are persuaded that a skilled artisan would have been motivated to use a desired quality of service as taught in Kingdon to determine whether the stored data is sufficient. Second, the cited declaration testimony of Mr. Blackburn that using data older than four hours renders the location attempt nonfunctional is inconsistent with the ’815 patent, which discloses an embodiment in which aged ephemeris data (data older than four hours) could still be used to “acquire and measure satellite signals and compute an approximate position which does not necessarily meet the final accuracy QoS.” Ex. 1001, 6:59–7:13; see also Pet. Reply 17–18.” slip op. at 38

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

    “obtaining additional aiding data from a remote source if said stored aiding data is insufficient to compute said estimate of said current position meeting said desired quality of service” for two reasons. PO Resp. 28–29. First, Patent Owner argues that because Camp and Kingdon fail to teach a mobile terminal determining a desired quality of service, Camp and Kingdon necessarily fail to teach this limitation. PO Resp. 28. For the reasons discussed above in connection with the “determining a desired quality of service” step, this argument lacks merit. Patent Owner also asserts that Kingdon explicitly teaches away from the claim limitation because if the requested quality of service cannot be met, a failure message is sent. Id. at 29 (citing Ex. 1025, 9:14–22; Ex. 2005 ¶ 93). We do not agree with Patent Owner that Kingdon teaches away from Petitioners’ proposed combination. Kingdon discloses that a positioning request will not be performed if the requested quality of service cannot be met, but Kingdon does not criticize, discredit, or otherwise discourage obtaining additional aiding data instead. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Because we agree with Petitioners’ analysis of the evidence, as discussed above, we determine that Petitioners have shown that the combination of Camp and Kingdon teaches “obtaining additional aiding data from a remote source if said stored aiding data is insufficient to compute said estimate of said current position meeting said desired quality of service.” slip op. at 37

  Patent outcomesUS 6,535,815 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,535,815
• TCL Corporation / TCL Communication Technology Holdings, Ltd. et al. v. Telefonaktiebolaget L. M. EricssonAll claims unpatentable
  PTAB · Jan 31, 2017 · IPR2015-01650 · APJ Stacy B Margolies · IPR · Final written decision

  Claims 1–3, 8, 9, 11, 12, and 15–19 are unpatentable as anticipated by King; claim 10 is unpatentable as obvious over King and Gilbert.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner does not challenge Dr. Goldberg’s testimony regarding the level of skill in the art. See generally PO Resp. However, Mr. Blackburn, Patent Owner’s declarant, opines that a person of ordinary skill in the art would probably have had a graduate degree in computer engineering, electrical engineering, applied physics, or a related field, and at least three years’ experience in the design and development of GPS or cellular location services, systems, and/or devices or (2) a Bachelor’s degree in computer engineering, electrical engineering, applied physics, or a related field, and at least five years’ experience in the design, analysis, and/or development of GPS, cellular and PSTN location services, systems, and/or devices. Ex. 2004 ¶ 11 (emphases added). As illustrated by the emphasized words above, Mr. Blackburn’s proposed level of ordinary skill differs slightly from Dr. Goldberg’s. Patent Owner, however, does not cite the above testimony in its Patent Owner Response. Nor does Patent Owner or Mr. Blackburn explain the reason for including cellular and PSTN location services, or for adding analysis as an alternative in the description of experience in the field. See generally PO Resp. We determine that the level of ordinary skill proposed by Petitioners’ declarant is consistent with the challenged patent and the asserted prior art, and we therefore adopt Dr. Goldberg’s definition of the level of ordinary skill in the art for the purposes of the analysis below. However, our analysis would not differ if we were to adopt Mr. Blackburn’s definition.” slip op. at 13

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner

    “Petitioners’ proposed construction of “quality of service,” on the other hand, is consistent with the ’815 patent specification. The specification, for example, describes evaluating criteria such as “accuracy,” “time-to-first-fix” and “sensitivity.” Ex. 1001, 6:9–24. The specification also gives the following examples of quality of service: “Most accurate,” “Fastest,” and “Least Expensive.” Id. at 5:33–36. Moreover, Petitioners’ declarant, Dr. Goldberg, persuasively testifies that the attributes of accuracy, time-to-first-fix (TTFF), sensitivity, speed, and cost are all indications of a grade or level of performance that is to be associated with the computed position estimate. Ex. 1051 ¶ 155. Petitioners’ proposed construction also is supported by the applicant’s statements during prosecution of the ’815 patent and a description of quality of service in a prior art reference as referring to, for example, accuracy, periodicity, and response time. See Pet. 19–20 (citing Ex. 1002, 50; Ex. 1005, 5; Ex. 1051 ¶¶ 155–157). Patent Owner does not challenge Petitioners’ proposed construction of the shorter phrase “quality of service.” See PO Resp. 10–20. We determine that the common term “desired”—for which there is no special definition or disavowal in the specification—need not be expressly construed. See Pet. Reply 3–4. For the foregoing reasons, the broadest reasonable interpretation of “determining a desired quality of service,” as recited in claim 1, and “determine a desired quality of service,” as recited in claim 17, is not limited to “ascertaining a quality of service associated with a computed position estimate as a function of any user- or position application-selectable input related to quality of service,” as proposed by Patent Owner. We also determine that, contrary to Patent Owner’s unsupported argument, the desired QoS may be received from the cellular network. Moreover, for the reasons explained above, we determine that the broadest reasonable interpretation of “quality of service” is “an indication of grade or level of performance associated with a computed position estimate.”” slip op. at 19

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “mobile terminal “determining” a “desired” quality of service because, in King, the mobile station receives a QoS parameter from the network are based on Patent Owner’s proposed construction, which we do not adopt. See supra Section II.C. As explained in the claim construction section above, Patent Owner’s proposal to limit “determining a desired quality of service” to “ascertaining a quality of service associated with a computed position estimate as a function of any user- or position application-selectable input related to quality of service” unreasonably limits the claim to one embodiment in the specification. See supra Section II.C. Moreover, as explained above, Patent Owner’s claim construction argument that the desired QoS is not sent from the cellular network to the mobile terminal is unreasonably narrow in light of express disclosures in the ’815 patent specification that determining a desired quality of service includes receiving a specified quality of service from a source external to the mobile terminal. See id. Thus, Patent Owner’s arguments distinguishing King because King’s mobile terminal receives a QoS from the cellular network, and that King’s mobile terminal does not determine the desired QoS, rest on a proposed claim construction which we do not adopt. Patent Owner’s remaining arguments distinguishing King are based on requirements not recited in the claim—that the quality of service be chosen by a user or a positioning application, and that the quality of service be an input which can prioritize criteria according the user or positioning application’s preference. The disputed limitation merely recites “determining a desired quality of service” without specifying the source of desired quality of service or requiring multiple options for prioritizing criteria (such as the options of most accurate, fastest, or least expensive). Although one embodiment in the ’815 patent specification is providing a user with the ability to select from a number of options, claim 1 is not specific to that embodiment. Indeed, as explained above, claim 1 at least encompasses the subject matter of dependent claims 8, 9, and 10, and only claim 10 is directed to prompting a user to input the desired quality of service. And, claim 10 is not limited to a “selectable input” and does not require input which can prioritize criteria according the user or positioning application’s preference. In sum, Patent Owner’s arguments that King does not disclose “determining a desired quality of service” are based on an unreasonably narrow reading of this claim limitation. Accordingly, for the above reasons, we determine that Petitioners have shown that King discloses “determining a desired quality of service,” as recited in claim 1.” slip op. at 31

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “We also credit and find persuasive, as supported by King, Dr. Goldberg’s testimony (i) that the features on which Petitioners rely are all applicable to assisted GPS; (ii) that the use of DGPS data does not exclude the use of other aiding data such as ephemeris data; and (iii) that an ordinarily skilled artisan would have recognized that King’s embedded algorithm could be used with the steps illustrated in Figures 5, 9A, and 9B of King. Ex. 1056 ¶¶ 32–34. Indeed, the final point is corroborated by the claims of King, which illustrate that the embedded algorithm is one way of computing the predicted accuracy per step 608 of Figure 9A. Specifically, claim 1 of King recites a method for determining a location of the mobile radio handset that includes receiving a point-to-point ephemeris message that includes ephemeris data, receiving a point-to-point differential correction message that includes differential correction data, and determining a prediction of an accuracy of the computed location. Ex. 1026, 28:17–46. According to King, Figures 9A and 9B “are a flowchart of the operation of the handset . . . for request/receive and point-to-point delivery of ephemeris and differential correction data in accordance with the preferred embodiment of the present invention.” Id. at 4:20–24. Claim 3 of King depends from claim 1 and recites that the step of determining a prediction of the accuracy comprises determining a prediction based on covariance information derived by a Weighted Least Square fixing method. Id. at 28:53–58. King discloses a Weighted Least Square fixing method only in connection with the embedded algorithm. See id. at 22:53–24:35.” slip op. at 39

  Patent outcomesUS 6,535,815 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,535,815
• Nautilus Hyosung, Inc. v. Diebold, Inc.Rehearing denied
  PTAB · Jan 31, 2017 · IPR2016-00580 · APJ Georgianna W Braden · IPR · Rehearing

  The Board denied the petitioner’s rehearing request, leaving in place the denial of institution on claims 1, 5-8, 10, 16, 26, and 27 because the obviousness arguments were insufficient.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. STANDARD OF REVIEW A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). The party must identify specifically all matters we misapprehended or overlooked, and the place where each matter was addressed previously in a motion, an opposition, or a reply. Id. When rehearing a decision on a petition, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may be indicated if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). Applying these legal standards, we address the arguments presented by Petitioner.” slip op. at 3

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

    “overlooked an explanation as to how and why it would have been obvious to modify Dickenson to have the service opening of Gussack. Petitioner provided multiple reason for why a “[person of ordinary skill in the art] would have been prompted to modify the device of Dickenson to have a bottom service opening as described in Gussack.” Pet. 16–18 (emphasis added). Yet, as explained in the Decision Denying Institution, Petitioner’s arguments for combining the cited art for very specific limitations are insufficient, because Petitioner failed to “explain why a person of ordinary skill in the art would combine together the prior art teachings to arrive at the challenged claim as a whole.” Dec. 25. The Petition merely offers conclusory statements that someone of ordinary skill in the art could have modified Dickenson, yet fails to explain persuasively why a person of ordinary skill in the art would have modified the gaming machine of Dickenson to use the removable bottom panel of Gussack in order to have a service opening as required by claim 1.6 Innogenetics, N.V. v. Abbott Labs., 512 F.3d 1363, 1374, n. 3 (Fed. Cir. 2008) (criticizing “a complete absence of any proof that one skilled in the art would find the particular claimed method obvious . . . for any reason”). Therefore, as our Decision Denying Institution states, Petitioner’s analysis is conclusory and fails to explain adequately how the evidence supports the contentions that Dickenson in view of Gussack would have rendered the limitations of challenged claim 1 obvious. See Dec. 17–22, 24–28. 6 We specifically address claim 1, because it was only for claim 1 where Petitioner provided the list of reasons for modifying Dickenson in view of Gussack. See Pet. 16–18. 5 Accordingly, we are not persuaded that we misapprehended or overlooked Petitioner’s argument that it would have been obvious to one of ordinary skill in the art to modify Dickenson to use a removable bottom panel from Gussack’s drawer to teach the claimed “service opening.” Although we recognize that removable panels for servicing of components may have been known in the prior art, Petitioner does not explain what would have led a person of ordinary skill in the art at the time of the invention to choose to use Gussack’s removable panel to create a service opening in a wall in Dickenson’s rolling tray. Rather, as discussed in our Decision, we find Petitioner’s arguments fraught with hindsight bias. See KSR Int’l Co. v. Teleflex, 550 U.S. 398, 418 (2007) (“[A] patent composed of several elements is not proved obvious by merely demonstrating that each of its elements was, independently, known in the prior art.”); Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342, 1368–69 (Fed. Cir. 2012) (“[Smith & Nephew] never offered evidence articulating why a person having ordinary skill in the art would combine the primary references to obtain the disclosed inventions.”); Innogenetics, N.V., 512 F.3d at 1374, n. 3 (“We must still be careful not to allow hindsight reconstruction of references to reach the claimed invention without any explanation as to how or why the references would be combined to produce the claimed invention.”).” slip op. at 5

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundDecided for patent owner

    “overlooked an explanation as to how and why it would have been obvious to modify Dickenson to have the service opening of Gussack. Petitioner provided multiple reason for why a “[person of ordinary skill in the art] would have been prompted to modify the device of Dickenson to have a bottom service opening as described in Gussack.” Pet. 16–18 (emphasis added). Yet, as explained in the Decision Denying Institution, Petitioner’s arguments for combining the cited art for very specific limitations are insufficient, because Petitioner failed to “explain why a person of ordinary skill in the art would combine together the prior art teachings to arrive at the challenged claim as a whole.” Dec. 25. The Petition merely offers conclusory statements that someone of ordinary skill in the art could have modified Dickenson, yet fails to explain persuasively why a person of ordinary skill in the art would have modified the gaming machine of Dickenson to use the removable bottom panel of Gussack in order to have a service opening as required by claim 1.6 Innogenetics, N.V. v. Abbott Labs., 512 F.3d 1363, 1374, n. 3 (Fed. Cir. 2008) (criticizing “a complete absence of any proof that one skilled in the art would find the particular claimed method obvious . . . for any reason”). Therefore, as our Decision Denying Institution states, Petitioner’s analysis is conclusory and fails to explain adequately how the evidence supports the contentions that Dickenson in view of Gussack would have rendered the limitations of challenged claim 1 obvious. See Dec. 17–22, 24–28. 6 We specifically address claim 1, because it was only for claim 1 where Petitioner provided the list of reasons for modifying Dickenson in view of Gussack. See Pet. 16–18. 5 Accordingly, we are not persuaded that we misapprehended or overlooked Petitioner’s argument that it would have been obvious to one of ordinary skill in the art to modify Dickenson to use a removable bottom panel from Gussack’s drawer to teach the claimed “service opening.” Although we recognize that removable panels for servicing of components may have been known in the prior art, Petitioner does not explain what would have led a person of ordinary skill in the art at the time of the invention to choose to use Gussack’s removable panel to create a service opening in a wall in Dickenson’s rolling tray. Rather, as discussed in our Decision, we find Petitioner’s arguments fraught with hindsight bias. See KSR Int’l Co. v. Teleflex, 550 U.S. 398, 418 (2007) (“[A] patent composed of several elements is not proved obvious by merely demonstrating that each of its elements was, independently, known in the prior art.”); Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342, 1368–69 (Fed. Cir. 2012) (“[Smith & Nephew] never offered evidence articulating why a person having ordinary skill in the art would combine the primary references to obtain the disclosed inventions.”); Innogenetics, N.V., 512 F.3d at 1374, n. 3 (“We must still be careful not to allow hindsight reconstruction of references to reach the claimed invention without any explanation as to how or why the references would be combined to produce the claimed invention.”).” slip op. at 5

  • BurdenDecided for patent owner

    “The Board could not have overlooked a detailed explanation or analysis not presented in the Petition. A rehearing request is not a supplemental petition. The petition, itself, must identify “specific portions of the evidence that support the challenge.” 37 C.F.R. § 42.104(b)(5). “The Board may exclude or give no weight to the evidence where a party has failed to state its relevance or to identify specific portions of the evidence that support the challenge.” Id. The Petitioner has the responsibility to identify and explain in the petition specific evidence that supports its arguments. See 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”).” slip op. at 10

  § 103 obviousnesscites KSR
  Patents in suitUS 6,082,616
• TCL Corporation / TCL Communication Technology Holdings, Ltd. et al. v. Ericsson Inc.All claims unpatentable
  PTAB · Jan 25, 2017 · IPR2015-01583 · APJ Patrick R Scanlon · IPR · Final written decision

  Claims 1, 13, and 17–20 are unpatentable as obvious over Korpela and Beaton.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for petitioner

    “Given that the parties’ proposed levels of ordinary skill are substantially similar, we adopt a hybrid of the two proposals for the purposes of this Final Written Decision. Specifically, a person having ordinary skill in the art, for the purposes of the analysis below, is a person having a bachelor’s degree in computer engineering, computer science, or electrical engineering, and five years of experience with communications systems and networking, cellular communication protocols, and/or real-time embedded systems, or equivalent education and experience. Our analysis, however, would not differ if we adopted the level of ordinary skill set forth by either party.” slip op. at 8

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther

    “To clarify this issue, we note that claim 1 recites “[a] portable wireless communications device, comprising: . . . a read only memory (ROM) having . . . a control program.” Ex. 1001, 7:2–11 (emphases added). Claim 1 also recites “a control processor controlling the operation of said transmitter and said receiver in response to said control messages according to said control program,” and “said man-machine interface operates under the control of said control processor according to said control program.” Id. at 7:16–18, 7:20–22 (emphases added). Each of these recitations of “said control program” refers to the previously recited control program. Thus, Petitioner is correct that claim 1 is not necessarily limited to a single control program because, by virtue of the open-ended language, the portable wireless communications device could include control programs in addition to the control program recited in the claim. Nevertheless, we interpret claim 1 as requiring the transmitter and the receiver and the man-machine interface as being controlled according to the same control program. Other than this clarification, we determine that no other terms in the challenged claims require express construction for purpose of this Final Written Decision.” slip op. at 10

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

    “We find, as Petitioner contends, relying on citations to Beaton and Mr.Ulrich’s testimony, that Beaton discloses a control program written in Java stored in a ROM along with a Java interpreter. Ex. 1023, 4:51–5:11; Ex. 1026 ¶¶ 207–208; see, e.g. Pet. 50 (citing Ex. 1023, 4:51–5:11; Ex. 1026 ¶ 209). Also, we find Korpela discloses a ROM containing a control program and the possibility of storing a control program in an interpreted language and an interpreter for the control program instead of a compiler and a protocol code file. Ex. 1024, 10, 17; Ex. 1026 ¶¶ 201–218; see Pet. 44, 47–48 (arguing same). Our finding is based on citations to Korpela and on Mr. Ulrich’s testimony, which we credit because it cites to Korpela and thus discloses underlying facts on which his opinion is based. 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.”). For the reasons that follow, we determine the combination of Korpela and Beaton set forth by Petitioner would have conveyed to one of ordinary skill in the art the limitation of a ROM having a Java control program and a Java interpreter program, as recited in claim 1. We do not agree with Patent Owner’s argument to the contrary. Despite any alleged deficiencies, Petitioner provides persuasive evidence that, at the time of the invention, Java also provided several known advantages—such as platform independence, high performance, security, and simplicity. Reply 16 (citing Ex. 1026, 33, 37 (citing Ex. 1022, 9); Ex. 1008, 11). Our reviewing court has recognized that a given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate any or all reasons to combine the references. See Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir. 2000) (“The fact that the motivating benefit comes at the expense of another benefit, however, should not nullify its use as a basis to modify the disclosure of one reference with the teachings of another. Instead, the benefits, both lost and gained, should be weighed against one another.”). In this case, the evidence of record does not support a finding that the disadvantages alleged by Patent Owner outweigh the several advantages of using Java. That the ’310 patent fails to explain how the disadvantages Patent Owner asserts would have dissuaded a skilled artisan from using Java were overcome by the claimed invention also supports our finding.” slip op. at 17

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

    “reports. For example, regarding Exhibit 1022, Petitioner correctly points out that “the very next sentence of the report states that ‘[h]owever, by combining certain Java programming conventions with special implementation techniques, it is possible to support varying degrees of realtime reliability,’ including ‘100% guaranteed compliance with hard-real-time constraints.’” Reply 20 (quoting Ex. 1022, 1). Exhibit 1022 also states that “[t]he benefits of a Real-Time Java standard include lower development and maintenance costs, quicker time to market, increased portability, enhanced network connectivity, improved reliability, and increased functionality of real-time systems.” Exhibit 1022, 2 (emphasis added). In view of these additional statements, we determine that Exhibit 1022 does not teach away from using Java in a real-time application. Regarding Exhibit 1013, the same person who states “you can’t write hard real-time parts in Java,” also states, regarding an effort to define real-time extensions to Java, “[y]ou still won’t get microsecond latencies in Java, but you will get safe real-time applications.” Ex. 1013, 6. As such, neither one of these two Exhibits, which represent only a small sample of the commentators in the Java community in any event, completely discredit the use of Java in real-time applications. We, thus, are not persuaded that the statements noted by Patent Owner would have dissuaded one of ordinary skill in the art from making the proposed combination. See DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009).” slip op. at 18

  Patent outcomesUS 6,418,310 unpatentable
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 6,418,310
• TCL Corporation / TCL Communication Technology Holdings, Ltd. et al. v. Telefonaktiebolaget LM EricssonNo claims unpatentable
  PTAB · Jan 25, 2017 · IPR2015-01628 · APJ Stacy B Margolies · IPR · Final written decision

  Petitioners did not show claim 11 unpatentable under either § 103 ground because they did not establish a persuasive motivation to combine Usui and Gong.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner does not challenge Dr. Malek’s testimony regarding the level of skill in the art. See generally PO Resp. However, Dr. Muftic, Patent Owner’s declarant, opines that a person of ordinary skill in the art “would probably have had a Bachelor’s degree in computer science, with at least two years’ experience in the field of software security.” Ex. 2010 ¶ 22. Dr. Muftic’s proposed level of ordinary skill differs slightly from Dr. Malek’s. Patent Owner, however, does not cite the above testimony in its Patent Owner Response. Nor does Patent Owner or Dr. Muftic quarrel with the definition proposed by Petitioner and Dr. Malek. See generally PO Resp. We determine that the level of ordinary skill proposed by Petitioners’ declarant is consistent with the challenged patent and the asserted prior art, and we therefore adopt Dr. Malek’s definition of the level of ordinary skill in the art for the purposes of the analysis below. However, our analysis would not differ if we were to adopt Dr. Muftic’s definition.” slip op. at 14

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

    “Petitioners propose constructions for a number of terms, and asserts that “interface component,” “interception module,” “decision entity,” “security access manager,” and “access controller” are means-plus-function limitations. Pet. 16–20; Pet. Br. 5–15. Patent Owner disagrees that the foregoing terms are means-plus-function limitations and asserts that only “software services component” be explicitly construed. PO Br. 6–16; PO Resp. 8–9. As explained below, the dispositive issue in this case is whether Petitioners provide a persuasive articulated reason with rational underpinning to support their contention that a person of ordinary skill would have been motivated to combine Usui and Gong. In reaching this issue, we determine that no claim terms require express construction.” slip op. at 15

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

    “Indeed, Patent Owner cites uncontroverted evidence that in designing the J2ME platform for mobile phones, Sun Microsystems did not use the full security of the Java 2 Standard Edition and its fine-grained protection domains like that described in Gong. See Ex. 2010 ¶¶ 210, 211, 223, 224. For example, the specification for the CLDC of J2ME, which defines a “standard, minimum-footprint Java platform for small, resource-constrained, connected devices,” states that “the J2SE security model is too memory-consuming to be included in a CLDC device that allows only a few hundred kilobytes of total memory budget.” Ex. 2014, 14, 25; see also PO Resp. 21– 26. In addition, a 2000 JavaOne presentation from a Sun Microsystems employee explains that the “J2SE platform security model is much larger than the entire CLDC implementation” and that the “full J2SE™ platform security model” cannot be supported in CLDC target devices. Ex. 2015, 48. In view of this context, Petitioners lack of explanation regarding purported design incentives that would have prompted a skilled artisan to make the proposed combination is significant. See, e.g., Ex. 1010, 5 (disclosing that the Usui team designed the user interface (UI) “so that the Java part was as small as possible” to “achieve good performance of the UI capability in the mobile phone” and noting that “[r]eleasing resources that are no longer used by Java applications is very important for resource-limited systems such as mobile phones”); Ex. 1001, 1:55–61 (disclosing that “drastically increased functionality” in cellular telecommunications systems “has placed substantial demands on the developers of mobile terminals” and this demand “is exacerbated by the fact that a mobile terminal is a ‘resource scarce’ environment that is limited in size, memory, and power”).” slip op. at 30

  Patent outcomesUS 7,149,510 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,149,510
• TCL Corporation / TCL Communication Technology Holdings, Ltd. et al. v. Telefonaktiebolaget LM EricssonNo claims unpatentable
  PTAB · Jan 25, 2017 · IPR2015-01622 · APJ Stacy B Margolies · IPR · Final written decision

  Claims 1–5 and 7–10 were not shown unpatentable because Petitioners did not establish a persuasive motivation to combine Usui and Oaks, including for claim 4’s ground adding Spencer.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner does not challenge Dr. Malek’s testimony regarding the level of skill in the art. See generally PO Resp. However, Dr. Muftic, Patent Owner’s declarant, opines that a person of ordinary skill in the art “would probably have had a Bachelor’s degree in computer science, with at least two years’ experience in the field of software security.” Ex. 2009 ¶ 22. Dr. Muftic’s proposed level of ordinary skill differs slightly from Dr. Malek’s. Patent Owner, however, does not cite the above testimony in its Patent Owner Response. Nor does Patent Owner or Dr. Muftic quarrel with the definition proposed by Petitioner and Dr. Malek. See generally PO Resp. We determine that the level of ordinary skill proposed by Petitioners’ declarant is consistent with the challenged patent and the asserted prior art, and we therefore adopt Dr. Malek’s definition of the level of ordinary skill in the art for the purposes of the analysis below. However, our analysis would not differ if we were to adopt Dr. Muftic’s definition.” slip op. at 14

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

    “Petitioners propose constructions for a number of terms, and asserts that “interface component,” “interception module,” “decision entity,” “security access manager,” and “access controller” are means-plus-function limitations. Pet. 16–22; Pet. Br. 5–15. Patent Owner disagrees that the foregoing terms are means-plus-function limitations and asserts that only “software services component” and “identification of requesting application domain software” be explicitly construed. PO Br. 6–17; PO Resp. 7–11. As explained below, the dispositive issue in this case is whether Petitioners provide a persuasive articulated reason with rational underpinning to support their contention that a person of ordinary skill would have been motivated to combine Usui and Oaks. In reaching this issue, we determine that no claim terms require express construction.” slip op. at 15

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

    “explanation for why, simply because the two references are in the same field of endeavor, a skilled artisan would have had reason to make the proposed combination. See Ex. 1301 ¶ 173. Nor do Petitioners or Dr. Malek elucidate what design incentives would have prompted a skilled artisan to use the finegrained security control of Oaks with the mobile phone platform of Usui, given the design constraints of less memory and resources of a mobile phone. See, e.g., Ex. 1010, 5; Ex. 2014, 14, 25; Ex. 2015, 8. Indeed, Patent Owner cites uncontroverted evidence that in designing the J2ME platform for mobile phones, Sun Microsystems did not use the full security of the Java 2 Standard Edition like that described in Oaks. See Ex. 2009 ¶¶ 90 (security manager does not exist in J2ME), 185. For example, the specification for the CLDC of J2ME, which defines a “standard, minimum-footprint Java platform for small, resource-constrained, connected devices,” states that “the J2SE security model is too memory-consuming to be included in a CLDC device that allows only a few hundred kilobytes of total memory budget.” Ex. 2014, 14, 25; see also PO Resp. 17. In addition, a 2000 JavaOne presentation from a Sun Microsystems employee explains that the “J2SE platform security model is much larger than the entire CLDC implementation” and that the “full J2SE™ platform security model” cannot be supported in CLDC target devices. Ex. 2015, 48. In view of this context, Petitioners lack of explanation regarding purported design incentives that would have prompted a skilled artisan to make the proposed combination is significant. See, e.g., Ex. 1010, 5 (disclosing that the Usui team designed the user interface (UI) “so that the Java part was as small as possible” to “achieve good performance of the UI capability in the mobile phone” and noting that “[r]eleasing resources that are no longer used by Java applications is very important for resource-limited systems such as mobile phones”); Ex. 1001, 1:55–61 (disclosing that “drastically increased functionality” in cellular telecommunications systems “has placed substantial demands on the developers of mobile terminals” and this demand “is exacerbated by the fact that a mobile terminal is a ‘resource scarce’ environment that is limited in size, memory, and power”).” slip op. at 27

  Patent outcomesUS 7,149,510 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,149,510
• TCL Corporation / TCL Communication Technology Holdings, Ltd. et al. v. Telefonaktiebolaget LM EricssonNo claims unpatentable
  PTAB · Jan 25, 2017 · IPR2015-01605 · APJ Stacy B Margolies · IPR · Final written decision

  Claims 1–5 and 7–10 were not shown unpatentable because Petitioners failed to establish a persuasive motivation to combine Usui and Gong, including for claim 4’s ground with Spencer.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner does not challenge Dr. Malek’s testimony regarding the level of skill in the art. See generally PO Resp. However, Dr. Muftic, Patent Owner’s declarant, opines that a person of ordinary skill in the art “would probably have had a Bachelor’s degree in computer science, with at least two years’ experience in the field of software security.” Ex. 2003 ¶ 22. Dr. Muftic’s proposed level of ordinary skill differs slightly from Dr. Malek’s. Patent Owner, however, does not cite the above testimony in its Patent Owner Response. Nor does Patent Owner or Dr. Muftic quarrel with the definition proposed by Petitioner and Dr. Malek. See generally PO Resp. We determine that the level of ordinary skill proposed by Petitioners’ declarant is consistent with the challenged patent and the asserted prior art, and we therefore adopt Dr. Malek’s definition of the level of ordinary skill in the art for the purposes of the analysis below. However, our analysis would not differ if we were to adopt Dr. Muftic’s definition.” slip op. at 14

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

    “Petitioners propose constructions for a number of terms, and asserts that “interface component,” “interception module,” “decision entity,” “security access manager,” and “access controller” are means-plus-function limitations. Pet. 16–22; Pet. Br. 5–15. Patent Owner disagrees that the foregoing terms are means-plus-function limitations and asserts that only “software services component” and “identification of requesting application domain software” be explicitly construed. PO Br. 6–17; PO Resp. 7–11. As explained below, the dispositive issue in this case is whether Petitioners provide a persuasive articulated reason with rational underpinning to support their contention that a person of ordinary skill would have been motivated to combine Usui and Gong. In reaching this issue, we determine that no claim terms require express construction.” slip op. at 15

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

    “general field of endeavor and, as recognized by the Supreme Court, known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art.” Pet. 29–30 (citing Ex. 1201 ¶ 175) (emphasis omitted). Petitioners’ declarant, Dr. Malek, repeats this statement from the Petition but fails to provide any additional explanation for why, simply because the two references are in the same field of endeavor, a skilled artisan would have had reason to make the proposed combination. See Ex. 1201 ¶ 175. Nor do Petitioners or Dr. Malek elucidate what design incentives would have prompted a skilled artisan to use the fine-grained security control of Gong with the mobile phone platform of Usui, given the design constraints of less memory and resources of a mobile phone. See, e.g., Ex. 1010, 5; Ex. 2014, 14, 25; Ex. 2015, 8. Indeed, Patent Owner cites uncontroverted evidence that in designing the J2ME platform for mobile phones, Sun Microsystems did not use the full security of the Java 2 Standard Edition and its fine-grained protection domains like that described in Gong. See Ex. 2003 ¶¶ 187, 188, 200, 201. For example, the specification for the CLDC of J2ME, which defines a “standard, minimum-footprint Java platform for small, resource-constrained, connected devices,” states that “the J2SE security model is too memory-consuming to be included in a CLDC device that allows only a few hundred kilobytes of total memory budget.” Ex. 2014, 14, 25; see also PO Resp. 17– 18. In addition, a 2000 JavaOne presentation from a Sun Microsystems employee explains that the “J2SE platform security model is much larger than the entire CLDC implementation” and that the “full J2SE™ platform security model” cannot be supported in CLDC target devices. Ex. 2015, 48. In view of this context, Petitioners lack of explanation regarding purported design incentives that would have prompted a skilled artisan to make the proposed combination is significant. See, e.g., Ex. 1010, 5 (disclosing that the Usui team designed the user interface (UI) “so that the Java part was as small as possible” to “achieve good performance of the UI capability in the mobile phone” and noting that “[r]eleasing resources that are no longer used by Java applications is very important for resource-limited systems such as mobile phones”); Ex. 1001, 1:55–61 (disclosing that “drastically increased functionality” in cellular telecommunications systems “has placed substantial demands on the developers of mobile terminals” and this demand” slip op. at 29

  Patent outcomesUS 7,149,510 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,149,510
• TCL Corporation / TCL Communication Technology Holdings, Ltd. et al. v. Telefonaktiebolaget LM EricssonAll claims unpatentable
  PTAB · Jan 25, 2017 · IPR2015-01602 · APJ Patrick R Scanlon · IPR · Final written decision

  Claims 1–12 and 15 are unpatentable under § 103 over Iwata and Stephan (claims 1, 2, and 15), and Iwata, Stephan, and Capps (claims 3–12).

  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. 1201 ¶ 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 9

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

    “given its broadest reasonable construction in light of the specification of the patent in which it appears.” 37 C.F.R. § 42.100(b); see also Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016) (upholding the use of the broadest reasonable interpretation standard). There is a presumption that a claim term carries its ordinary and customary meaning. CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002); In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Furthermore, only those terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). Prior to our Institution Decision, Petitioner proposed constructions for “contact-sensitive transducer . . . which produces an output signal” and “graphical object(s).” Pet. 10–13. Patent Owner did not propose any express constructions or challenge Petitioner’s proposed construction. See generally Prelim. Resp. 2–15. 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. Accordingly, 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 10

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation 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.v. 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 1 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 30

  • Expert testimonyPatent owner expert discountedOther

    “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.