- Intel Corporation / Qualcomm Incorporated et al. v. DSS Technology Management, Inc.All claims unpatentablePTAB · Jun 1, 2017 · IPR2016-00289 · APJ Brian J Mcnamara · IPR · Final written decision
Claims 1–3, 14, and 16 are unpatentable as anticipated by Sakamoto; claims 4–6 and 13 are unpatentable as obvious over Sakamoto and Cederbaum.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“CLAIM CONSTRUCTION In our Decision to Institute, we applied the ordinary and customary meaning to the terms not construed. We applied the broadest reasonable interpretation to the following term that required construction. Noting a claim construction dispute in co-pending district court litigation, Petitioner proposed that we construe the “diffusion region formed in said substrate” to mean “conductive terminal region, such as a source or drain, that contains dopants implanted in the silicon substrate.” Pet. 25. As discussed in the Decision to Institute, we determined that the subject matter of the claims concerns a local interconnect between a gate and a diffusion region and that there was no need to further construe “the diffusion region formed in said substrate” for purposes of this decision. Dec. to Inst. 5–6. Based on the complete record now before us, we discern no reason to change the constructions.” slip op. at 5
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Claim 3 depends from claim 1 and recites that the insulator layer is formed of material selected from the group consisting of silicon oxide and silicon nitride. Petitioner cites Sakamoto’s disclosure of softening and reflowing BoroPhosphoSilicate Glass (BPSG) film to form insulating layer 9, stating that BPSG is a type of silicon oxide. Id. at 46 (citing Bravman Decl. ¶ 90; Ex. 1015, 185).5 We credit Dr. Bravman’s testimony and are persuaded that insulating layer 9 is formed of silicon oxide.” slip op. at 13
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“not shown, we are persuaded that the evidence supports the proposition that the implanted p-well region is part of the silicon substrate. Based on this analysis, we are persuaded that Sakamoto discloses element (a) a silicon substrate with a top surface. As to element (b), we are persuaded by Petitioner’s argument that Sakamoto discloses a diffusion region formed in said substrate. Element (b) also recites that the diffusion region is adjacent said top surface. Having determined that the p-well region is part of the substrate, we agree that Figure 1 of Sakamoto illustrates a diffusion region in the form of source/drain region 7 adjacent to the top surface of the substrate.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“Petitioner persuasively argues that the evidence supports the conclusion that one of ordinary skill would have been motivated to combine the teachings of Cederbaum with those of Sakamoto because they both teach the same type of device and are directed to the same problem, i.e., stacking transistors in an SRAM. Pet. 51. Petitioner points out that Cederbaum and Sakamoto also disclose nearly identical structures with nearly identical components, with both employing an electrically conducting plug within an opening that contains a sidewall spacer to directly connect a diffusion region to a gate. Id. at 52–53. Petitioner cites Cederbaum’s disclosure of materials, such as refractory metals, to be used in forming the conductive plug and Sakamoto’s discussion of the advantages to using a conductive plug of increased conductivity. Id. at 53–54. Thus, Petitioner has demonstrated that it would have been obvious to one of ordinary skill to replace the polycrystalline plug 15 of Sakamoto with a refractory metal plug of tungsten, as disclosed by Cederbaum. Id. at 51. This feature (“said electrically conducting plug is a refractory metal plug”) is recited in claim 5 of the ’924 Patent. Claim 4 recites a metal plug and claim 6 recites the electrically conducting plug is formed of a material selected for the group consisting of titanium, tantalum, molybdenum, and tungsten. Petitioner cites Cederbaum’s disclosure at column 9, lines 31–65 as disclosing a tungsten conducting plug. Id. at 49–50.” slip op. at 15
Patent outcomesUS 5,965,924 unpatentableClaim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 5,965,924 - Arista Networks, Inc. v. Cisco Systems, Inc.No claims unpatentablePTAB · May 25, 2017 · IPR2016-00306 · APJ Miriam L Quinn · IPR · Final written decision
Claim 63 was not shown unpatentable because Spinney does not disclose performing the selecting and determining steps in parallel.
RulingsFinal written decision- Expert testimonyPetitioner expert discountedDecided for patent owner
“First, we give no credit to Dr. Chao’s opinion in this regard because it is not supported by Spinney. Specifically, we give no weight to Dr. Chao’s opinion that “Spinney makes clear that the CAM lookup and the hashing function (i.e., the forwarding lookup) take place at the same time.” Ex. 1002 ¶ 53. Instead, we find that the parallel operations in Spinney are confined to (1) applying the hash function to the 48-bit address and (2) performing a CAM lookup of the same 48-bit address. For example, Spinney discloses in Figure 8 that incoming address field 85 is subjected to hash function 86 to produce another 48-bit value. See id. at Fig. 8, 15:21−24; 16:16−19 (“The 48-bit destination address 61 from an incoming packet is simultaneously subjected to the hash function 86 and a CAM match” (emphasis added)), 16:44−46 (“this compare in the CAM is done in parallel with the hash function” (emphasis added)). The application of the hash function and the performance of the hash lookup are two different operations that produce different results. The hash function application produces a hashed 48-bit value, while the hash lookup results in pointing to an entry in the translation table that includes the gigaheader information, for processing the packet. See id. at Fig. 8 (identifying hash function 86 applied to input address 85, resulting in hashed address 89); 15:60−63. Spinney further discloses that the hash lookup is performed only if a CAM match is not found and, therefore, must occur after the CAM lookup is performed. Id. at 16:20–26 (“[I]f a CAM match is found in CAM 23, an index into the translation table 94 is immediately generated as indicated by the line 100. If not, the 16-bit field 88 of the hashed address 87 is used to index into the hash table 89 . . . .” (emphasis added)).” slip op. at 14
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“is not supported by Spinney. Specifically, we give no weight to Dr. Chao’s opinion that “Spinney makes clear that the CAM lookup and the hashing function (i.e., the forwarding lookup) take place at the same time.” Ex. 1002 ¶ 53. Instead, we find that the parallel operations in Spinney are confined to (1) applying the hash function to the 48-bit address and (2) performing a CAM lookup of the same 48-bit address. For example, Spinney discloses in Figure 8 that incoming address field 85 is subjected to hash function 86 to produce another 48-bit value. See id. at Fig. 8, 15:21−24; 16:16−19 (“The 48-bit destination address 61 from an incoming packet is simultaneously subjected to the hash function 86 and a CAM match” (emphasis added)), 16:44−46 (“this compare in the CAM is done in parallel with the hash function” (emphasis added)). The application of the hash function and the performance of the hash lookup are two different operations that produce different results. The hash function application produces a hashed 48-bit value, while the hash lookup results in pointing to an entry in the translation table that includes the gigaheader information, for processing the packet. See id. at Fig. 8 (identifying hash function 86 applied to input address 85, resulting in hashed address 89); 15:60−63. Spinney further discloses that the hash lookup is performed only if a CAM match is not found and, therefore, must occur after the CAM lookup is performed. Id. at 16:20–26 (“[I]f a CAM match is found in CAM 23, an index into the translation table 94 is immediately generated as indicated by the line 100. If not, the 16-bit field 88 of the hashed address 87 is used to index into the hash table 89 . . . .” (emphasis added)).” slip op. at 14
Patent outcomesUS 7,023,853 not shown unpatentable§ 102 anticipationPatents in suitUS 7,023,853 - Arista Networks, Inc. v. Cisco Systems, Inc.Some claims unpatentablePTAB · May 25, 2017 · IPR2016-00303 · APJ Bryan F Moore · IPR · Final written decision
Claims 1, 7–10, 12–16, 18–22, 25, and 28–31 are unpatentable as obvious over Huey and ATM UNI; claim 2 was not shown unpatentable.
RulingsFinal written decision- ExcludeMotion to exclude, deniedMixed
“PO Mot. 13–14. A motion to exclude is the wrong vehicle to challenge public availability, which is a substantive issue that goes to the sufficiency of the evidence, not to admissibility at issue here. FLIR Sys., Inc. v. Leak Surveys, Inc., IPR2014-00411, slip. op., Paper 113 at 4 (PTAB September 3, 2015) (“A motion to exclude is not a vehicle for addressing the weight to be given evidence.”); see also 77 Fed. Reg. 48,756, 48,767 (Aug. 14, 2012) (“A motion to exclude . . . may not be used to challenge the sufficiency of the evidence to prove a particular fact.”). For the reasons above, we do not exclude Exhibit 1028.” slip op. at 9
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“35 U.S.C. § 102(b).” In re Hall, 781 F.2d 897, 898–99 (Fed. Cir. 1986). To qualify as a prior art printed publication, the reference must have been disseminated or otherwise made accessible to persons interested and ordinarily skilled in the subject matter to which the document relates prior to the critical date. Kyocera Wireless Corp. v. Int’l Trade Comm’n, 545 F.3d 1340, 1350 (Fed. Cir. 2008).” slip op. at 17
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“References within the statutory terms of 35 U.S.C. § 102 qualify as prior art for an obviousness determination only when analogous to the claimed invention.” In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004) (finding both hair brush art and toothbrush art to be analogous to a claim to a hair brush) (citing In re Clay, 966 F.2d 656, 658 (Fed. Cir. 1992)). “Two separate tests define the scope of analogous prior art: (1) whether the art is from the same field of endeavor, regardless of the problem addressed and, (2) if the reference is not within the field of the inventor's endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved.” Id. (citations omitted). The scope of the field of endeavor is a factual determination based on the scope of the application's written description and claims. Bigio, 381 F.3d at 1326. slip op. at 27
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“There are two problems with Petitioner’s assertion. First, Petitioner has not shown a reason to combine Kogge with Huey and the ATM UNI Specification. Second, to the extent this reference is used to show the scope and content of the art at the time of the invention, Kogge makes it clear that parallelism and pipelining are different concepts that are “generally discernably different in their general approach.” Ex. 1033, 1. Petitioner has not explained how Kogge shows that putting packets through the pipeline without waiting for the previous packet to finish would be considered operating in parallel given that this reference distinguishes parallel operation from pipeline operation. Petitioner argued at the oral hearing that Patent Owner was advocating “a particular flavor of parallelism, as opposed to what’s understood by normal parallel pipelining.” Tr. 41:6–14. However, neither Petitioner nor its declarant has explained what “normal parallel pipelining” is or what the basis is for us to define “normal parallel pipelining.” Thus, we are not persuaded by Petitioner’s contention that one of ordinary skill in the art would modify Huey to meet the limitation of performing at least two of said steps “in parallel using a pipeline.”” slip op. at 33
Patent outcomesUS 6,377,577 mixedClaim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 6,377,577 - Department Of Justice v. Envisionit, LLCInstitution deniedPTAB · May 3, 2017 · IPR2017-00186 · APJ Lynne E Pettigrew · IPR · Institution
The Board denied institution because the Petition did not show a reasonable likelihood of proving claims 14, 15, 23, 27, or 30 unpatentable on any asserted ground.
RulingsInstitution decision- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“We are not persuaded by Patent Owner’s argument. We generally accept a petitioner’s identification of real parties in interest at the time of filing the petition. Petitioner represents that IBM has not funded, directed, or otherwise controlled the preparation of the Petition in this proceeding. Pet. 4. Patent Owner introduces no evidence that reasonably brings into question Petitioner’s identification of real parties in interest. Moreover, Patent Owner has not shown persuasively that the indemnification clause at issue, which gives IBM an “opportunity as is afforded by applicable laws, rules, or regulations to participate in its defense,” gives IBM an opportunity to direct or control this proceeding.8 On this record, we are not persuaded that IBM is a real party in interest.” slip op. at 9
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedDecided for patent owner
“Linköping University in Norrköping, Sweden, and is alleged to have been made available over the Internet. Thus, to determine a date on which Gundlegård was publicly accessible, we look to evidence of the library’s cataloging and indexing practices and any search capability of the library’s website. See Blue Calypso, 815 F.3d at 1348; Voter Verified, 698 F.3d at 1380; SRI, 511 F.3d at 1196.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“The parties propose competing constructions of “broadcast.” Pet. 10– 11; Prelim. Resp. 14–19. Patent Owner also proposes a construction for “validating,” recited in claim 14. Prelim. Resp. 19–21. Nevertheless, we need not construe these or any other terms for the purposes of this Decision to resolve the parties’ dispute. See Vivid Technologies, Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”).” slip op. at 15
- Skill levelSkill level petitioner adoptedDecided for petitioner
“1. Level of Ordinary Skill in the Art Petitioner, relying on the testimony of its declarant, Mr. Randall A. Snyder, contends that a person of ordinary skill in the art would have had a bachelor’s degree in computer science, engineering, physics, mathematics, or other technical field, along with three to five years of practical cellular network and protocol design and software development experience. Pet. 9 (citing Ex. 1011 ¶ 28). Patent Owner does not propose a level of skill or contest Petitioner’s statement. Petitioner’s proposal is consistent with the level of ordinary skill reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). For purposes of this Decision, we adopt Petitioner’s statement of the level of ordinary skill in the art.” slip op. at 16
Claim construction§ 102 anticipation§ 103 obviousnesscites GrahamPatents in suitUS 8,103,719 - Department Of Justice v. Envisionit, LLCInstitution deniedPTAB · May 1, 2017 · IPR2017-00183 · APJ Bryan F Moore · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 1, 11–13, 42, 47, and 57 unpatentable on the asserted obviousness and anticipation grounds.
RulingsInstitution decision- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“We are not persuaded by Patent Owner. We generally accept a petitioner’s identification of real parties in interest at the time of filing the petition. Petitioner represents that IBM has not funded, directed, or otherwise controlled the preparation of the Petition in this proceeding. Pet. 4. Patent Owner introduces no evidence that reasonably brings into question Petitioner’s identification of real parties in interest. Moreover, Patent Owner has not shown persuasively that the indemnification clause at issue, which gives IBM an “opportunity as is afforded by applicable laws, rules, or regulations to participate in its defense,” gives IBM an opportunity to direct or control this proceeding.1 On this record, we are not persuaded that IBM is a real party in interest.” slip op. at 9
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“1. Petitioner has not shown that Gundlegård was publicly accessible Gundlegård states on its face that it is a master’s thesis kept at Linköping University in Norrköping, Sweden, and is alleged to have been made available over the Internet. Thus, to determine a date on which Gundlegård was publicly accessible, we look to evidence of the library’s cataloging and indexing practices and any search capability of the library’s website. See Blue Calypso, 815 F.3d at 1348; Voter Verified, 698 F.3d at 1380; SRI, 511 F.3d at 1196.” slip op. at 12
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“III. CONCLUSION Petitioner has not established a reasonable likelihood it would prevail in showing that claims 1, 11–13, 42, 47, and 57 are unpatentable. IV. ORDER For the reasons given, it is: ORDERED that, pursuant to 35 U.S.C. § 314(a), an inter partes review is not instituted for claims 1, 11–13, 42, 47, and 57 of U.S. Patent No. 7,693,938 B2.” slip op. at 31
- Skill levelSkill level petitioner adoptedDecided for petitioner
“of ordinary skill in the art would have had a bachelor’s degree in computer science, engineering, physics, mathematics, or other technical field, along with three to five years of practical cellular network and protocol design and software development experience. Pet. 9–10 (citing Ex. 1011 ¶ 28). Patent Owner does not propose a level of skill or contest Petitioner’s statement. Petitioner’s proposal is consistent with the level of ordinary skill reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); 3 The record does not include allegations or evidence of objective indicia of nonobviousness. In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). For purposes of this Decision, we adopt Petitioner’s statement of the level of skill in the art.” slip op. at 16
§ 102 anticipation§ 103 obviousnesscites GrahamPatents in suitUS 7,693,938 - Apple Inc. v. Immersion CorporationRehearing deniedPTAB · Apr 27, 2017 · IPR2016-01777 · APJ Minn Chung · IPR · Rehearing
The Board denied Apple’s rehearing request, leaving in place the denial of institution because the Petition did not analyze the determining a press limitation as an integral whole.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW “The burden of showing a decision should be modified lies with the party challenging the decision,” and the challenging party “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed” in a paper of record. 37 C.F.R. § 42.71(d). Because Petitioner seeks rehearing of our Decision denying the Petition, it must show an abuse of discretion. See 37 C.F.R. § 42.71(c) (“When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.”). An abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus., Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“construe the “determining a press limitation” or interpreted the limitation to require the first two conditions recited in the limitation be maintained for the duration of a first interval. See Dec. 7–8. Rather, we found that, as illustrated in Figure 3 of the ’507 patent, “the meaning of the ‘first interval has elapsed’ condition as an integral part of the ‘determining a press limitation’ may be very different from its meaning in isolation.” Id. at 14–15 (emphasis added). We determined, based on the plain language of the claim limitation and the disclosure in the Specification, that the “determining a press limitation” recites a single concept of determining a press when all three conditions recited in the limitation are satisfied. Id. at 11–12. We found, therefore, a proper obviousness analysis must address the “determining a press limitation” as an integral whole, including the meaning of the “first interval has elapsed” condition as a part of the “determining a press limitation,” and show how a reference or a combination of references teaches or renders the limitation as a whole obvious. Id. at 12, 14–15 (citing KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007)). We found that the Petition did not present such an analysis. Id. at 12, 15.” slip op. at 3
- Strike new argumentNew argument disregardedDecided for patent owner
“an analysis. Instead, Petitioner argues that, because the claims use the openended transitional phrase “comprising,” the broadest reasonable interpretation of the “determining a press limitation” “requires only that there be at least one scenario in which the satisfaction of [the three recited conditions] . . . results in a determination of a press.” Req. Reh’g 8–10. Petitioner, however, does not identify where in the Petition this argument was presented. Petitioner’s argument appears to be a new argument presented for the first time in its Request for Rehearing to address the deficiencies in the Petition that were identified in our Decision. It was Petitioner’s affirmative duty to explain how the challenged claims should be construed and how, as so construed, they are unpatentable. See 37 C.F.R. § 42.104(b)(3)–(4). Hence, had Petitioner intended to argue, based on the open-ended transitional phrase “comprising” used in the claims, an interpretation of the “determining a press limitation” that differs from the meaning indicated by the plain language of the claim limitation or the disclosure in the Specification, such an analysis should have been made explicit in the Petition. A rehearing request is not a supplemental petition. Nor is it an opportunity to present new arguments or evidence that could have been presented and developed in the first instance in the Petition. Simply put, we could not have misapprehended or overlooked arguments or evidence that were not presented or developed in the Petition.” slip op. at 4
- ExcludeNot reached
“In support of its claim construction argument, Petitioner submits an Administrative Law Judge’s order on claim construction from the related U.S. International Trade Commission proceeding, which was not evidence of record at the time of our Decision. Req. Reh’g 7 (citing Ex. 1010, 59). In general, new evidence is not allowed in a Request for Rehearing, absent showing of good cause. See Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). Petitioner does not explain why there is good cause to admit Exhibit 1010 with its Request for Rehearing. Nonetheless, even when we consider Exhibit 1010, it would not change the outcome of the Petitioner’s Request for Rehearing because we could not have misapprehended or overlooked evidence that was not presented or developed in the Petition.” slip op. at 5
§ 103 obviousnesscites KSRPatents in suitUS 8,749,507 - Department Of Justice v. Envisionit, LLCInstitution deniedPTAB · Apr 26, 2017 · IPR2017-00180 · APJ David C Mckone · IPR · Institution
The Board denied institution because the Petition did not show a reasonable likelihood that claims 1, 2, 4, 17, and 23 were unpatentable as obvious.
RulingsInstitution decision- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“We are not persuaded by Patent Owner. We generally accept a petitioner’s identification of real parties in interest at the time of filing the petition. Petitioner represents that IBM has not funded, directed, or otherwise controlled the preparation of the Petition in this proceeding. Pet. 3. Patent Owner introduces no evidence that reasonably brings into question Petitioner’s identification of real parties in interest. Moreover, Patent Owner has not shown persuasively that the indemnification clause at issue, which gives IBM an “opportunity as is afforded by applicable laws, rules, or regulations to participate in its defense,” gives IBM an opportunity to direct or control this proceeding.1 On this record, we are not persuaded that IBM is a real party in interest.” slip op. at 8
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“1. Petitioner has not shown that Gundlegård was publicly accessible Gundlegård states on its face that it is a master’s thesis kept at Linköping University in Norrköping, Sweden, and is alleged to have been made available over the Internet. Thus, to determine a date on which Gundlegård was publicly accessible, we look to evidence of the library’s cataloging and indexing practices and any search capability of the library’s website. See Blue Calypso, 815 F.3d at 1348; Voter Verified, 698 F.3d at 1380; SRI, 511 F.3d at 1196. The Petition does not provide a detailed statement of Petitioner’s arguments as to the public accessibility of Gundlegård. Rather, Petitioner simply states “[a]s documented by the declaration of Amelia Nuss (Ex. 1021), the thesis was published at least as early as October 27, 2003.” Pet. 14. The detailed basis for Petitioner’s contention is stated in the Nuss Declaration. Patent Owner argues that this constitutes an improper incorporation by reference of arguments from the Nuss Declaration into the Petition, in violation of 37 C.F.R. § 42.6(a)(3). Prelim. Resp. 20–21 n.4. We share Patent Owner’s concern. Nevertheless, we agree with Patent Owner that the Nuss Declaration, even if considered, does not support a finding that Gundlegård was publicly available.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Although the parties propose competing constructions of “broadcast” (Pet. 7–8; Prelim. Resp. 14–18), we need not construe this or any other term for the purposes of this Decision to resolve the parties’ dispute. See Vivid Technologies, Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”).” slip op. at 14
- Skill levelSkill level petitioner adoptedDecided for petitioner
“of ordinary skill in the art would have had a bachelor’s degree in computer science, engineering, physics, mathematics, or other technical field, along with three to five years of practical cellular network and protocol design and software development experience. Pet. 7 (citing Ex. 1011 ¶ 28). Patent Owner does not propose a level of skill or contest Petitioner’s statement. Petitioner’s proposal is consistent with the level of ordinary skill reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); 4 The record does not include allegations or evidence of objective indicia of nonobviousness. In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). For purposes of this Decision, we adopt Petitioner’s statement of the level of skill in the art.” slip op. at 15
Claim construction§ 102 anticipationcites GrahamPatents in suitUS 9,136,954 - Sony Mobile Communications Inc. v. SSH Communications Security OyjAll claims unpatentablePTAB · Apr 20, 2017 · IPR2015-01869 · APJ Bryan F Moore · IPR · Final written decision
Claims 1–32 are unpatentable: claims 1–3, 5–10, 12–16, 18–20, 22–27, and 29–32 as obvious over Bellovin; claims 1, 3–8, 10–12, 14–18, 20–23, 25, and 27–29 over Shuen and RFC 1234.
RulingsFinal written decision- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“their broadest reasonable construction in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b); see also Cuozzo Speed Techs. LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016) (upholding the use of the broadest reasonable interpretation standard in an inter partes review proceeding). Under the broadest reasonable interpretation standard, claim terms generally are given their ordinary and customary meaning, as would be understood by one of ordinary skill in the art, in the context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).” slip op. at 5
- ExcludeMotion to exclude, deniedDenied
“III. PATENT OWNER’S MOTION TO EXCLUDE Patent Owner moves to exclude Ex. 1040 cited by Petitioner in its Petitioner’s Reply as hearsay and as irrelevant. Mot. to Exclude 1. Petitioner relies on Ex. 1040 to support its obviousness case by stating “[i]n a co-pending action in the United Kingdom, the Patents Court found similar claims of related EP(UK) 2 254 311 invalid.” Pet. Reply 1 n.1. This issue is moot because this Final Written Decision does not cite to or rely upon Ex. 1040 or the Petitioner’s statement quoted above regarding Ex. 1040. For that reason, we do not address the matter on the merits and dismiss Patent Owner’s Motion to Exclude as moot.” slip op. at 48
- Skill levelOther
“differences between the claimed subject matter and the prior art are such that the subject matter, as a whole, would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of ordinary skill in the art; and (4) objective evidence of nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).” slip op. at 17
- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer not foundDecided for petitioner
“specification and prosecution history. Cuozzo, 136 S. Ct. at 2144–46. There are, however, two distinct exceptions. The first is the circumstance in which a patentee sets forth a definition by acting as his own lexicographer. Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed.Cir.2012) (citation omitted). The second is the circumstance in which a patentee disavows the full scope of a claim term either in the specification or during prosecution. Id.; see also PPC Broadband, Inc. v. Corning Optical Commc’ns RF, LLC, 815 F.3d 734, 745 (Fed. Cir. 2016) (citing disavowal as an exception to the broadest reasonable interpretation standard). Here, Patent Owner relies on several embodiments in the Specification and the knowledge of its Declarant, but does not cite to sufficient evidence: 1) of the patentee becoming a lexicographer defining a NAT as bidirectional between two “realms,” or 2) of a clear disavowal of a NAT which translates addresses in a single direction or operates in a single “realm.”” slip op. at 9
Patent outcomesUS 8,544,079 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,544,079 - Xactware Solutions, Inc. v. Eagle View Technologies, Inc.Rehearing deniedPTAB · Mar 6, 2017 · IPR2016-00586 · APJ Bryan F Moore · IPR · Rehearing
The Board denied Xactware’s rehearing request, leaving in place the denial of institution on all challenged claims because the petition did not sufficiently explain how Verma taught the pitch determination marker.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion occurs when a “decision [i]s based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus. Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988). “The burden of showing that a decision should be modified lies with the party challenging the decision.” Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). In its request for rehearing, the dissatisfied party must (1) “specifically identify all matters the party believes the Board misapprehended or overlooked” and (2) identify the place “where each matter was previously addressed.” 37 C.F.R. § 42.71(d); Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,768. We address Petitioner’s arguments with these principles in mind.” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Petitioner’s argument regarding what is taught to a POSITA, however, was not explained sufficiently in the Petition and was not tied to any explanation of how and if handles and operations work together. In the Decision, we noted that “Petitioner cites both Verma’s handles and operations without explaining sufficiently how these elements would interact.” Dec. 11 (citing Pet. 13, 19–20). We are not persuaded that this determination was in error.” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“incorporate Verma’s handles and operations. Req. Reh’g 4. This argument, however, misstates our analysis. In the Decision, we stated that it was “not sufficient for Petitioner to point out different teachings that were available in the prior art; instead, Petitioner must sufficiently articulate a rationale for the combination.” Dec. 11 (citing KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)). The interaction or integration of these various teachings does not require that the disparate elements of Verma be integrated physically. We, instead, were looking for a discussion of how one of ordinary skill in the art would view these teachings and what one of ordinary skill would learn from the combination. Petitioner has not supplied us with a sufficient explanation as to how one of ordinary skill would combine the knowledge gleaned from these passages and, as such, we were not persuaded that Petitioner had put forth a sufficient showing.” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightNot shown unpatentableDecided for patent owner
“combine teachings found in a single reference. Req. Reh’g 13–15. Petitioner argues that “[b]y restricting the teachings of Verma to individual embodiments, the Board failed to evaluate Verma in its entirety and as a whole for all that it teaches and suggests to a POSITA.” Id. at 14 (citing Panduit Corp. v. Dennison Mfg. Co., 774 F.2d 1082, 1093–94 (Fed. Cir. 1985). Panduit, however, does not support Petitioner’s proposition. In that case, the Federal Circuit spoke to the dangers of “disregard[ing] the decisional parameters governing the proper evaluation of prior art.” Panduit, 774 F.2d at 1094. As described in that case, the first “fundamental error[]” is the “picking and choosing of [elements] either absent from the prior art references or there disclosed in entirely distinct form, characteristics, and relationships” without considering the portions of the art that would argue against obviousness. Id. Thus, Panduit, does not support the blurring together of various embodiments and techniques disclosed in a reference in order to support a claim of obviousness. It instead cautions against the dangers of overlooking important differences between the cited art and the challenged claims. The Federal Circuit has long cautioned that “[o]ne cannot use hindsight reconstruction to pick and choose among isolated disclosures in the prior art to deprecate the claimed invention.” SIBIA Neurosciences, Inc. v. Cadus Pharm. Corp., 225 F.3d 1349, 1360 (Fed. Cir. 2000) (quoting In re Fine, 837 F.2d 1071, 1075, 5 USPQ2d 1596, 1600 (Fed. Cir. 1988)). The Supreme Court has noted that “in most, if not all, instances [inventions] rely upon building blocks long since uncovered.” KSR, 550 U.S. at 418. Thus, “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.” Id. Thus, the Supreme Court and Federal Circuit precedents instruct us to avoid hindsight reasoning by seeking articulated reasoning with rational underpinnings to explain why the cited teachings should be combined. See id. at 418–19. Petitioner’s papers, however, lacked an explanation as to how and why the various teachings of Verma would come together to teach one of ordinary skill in the art the recited pitch determination marker. Thus, for all of the foregoing reasons, we are not persuaded of error in the Decision.” slip op. at 8
§ 103 obviousnesscites KSRPatents in suitUS 8,170,840 - Ericsson Inc. / Telefonaktiebolaget LM Ericsson v. Intellectual Ventures II LLCNo claims unpatentablePTAB · Feb 15, 2017 · IPR2015-01872 · APJ David C Mckone · IPR · Final written decision
Claims 1–4, 7, 11–14, 17, and 20–25 were not shown unpatentable because Lu did not teach providing resources to queued users of packet data.
RulingsFinal written decision- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner
“1. Means-plus-function Terms Claims 11–14 and 17 recite several terms in means-plus-function format. Claim 24 recites several terms in the form of “logic for” performing the functions of parallel terms recited in claim 11. In the Institution Decision, we adopted Petitioner’s proposed constructions, set forth at pages 10–15 of the Petition, as our constructions for the means-plus-function terms of claims 11–14 and 17. Dec. 17–18. We also determined to treat the “logic for” terms of claim 24 as means-plus-function terms, see Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1349 (Fed. Cir. 2015), and adopted Petitioner’s statement of the structure corresponding to the “logic for” terms (Pet. 10–13). Id. at 18. Patent Owner does not dispute these constructions. PO Resp. 8. On the complete record, we maintain these constructions.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Read in light of the Specification, “providing said communication resource to queued packet data users on a tier-by-tier basis,” as recited in claim 1, means providing the communication resource to queued users of packet data on a tier-by-tier basis. We are persuaded by Patent Owner that this is the only reasonable reading that is consistent with the Specification. Petitioner provides no examples in the Specification consistent with its reading. Although the preamble of claim 1 recites a “method of processing queued data packets,” this is consistent with the Specification’s general statement that the invention pertains to “an improved packet data queueing algorithm,” Ex. 1001, 9:3. We do not read this general statement in the preamble of claim 1 (or the similar preamble recitations in claims 11 and 24) to provide a basis for construing more specific language in the body of the claim in a manner inconsistent with the description in the Specification. In sum, the only reasonable reading of “queued packet data users,” in the context of the dependent claims, and in light of consistent description in the Specification, is queued users of packet data, not users of queued packet data.” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“such as initial class queues 416–438, organized into high, medium, and low classes, are “a plurality of individual packet data queues.” Pet. 19–20. As to claim element 1[b], “determining a total number of data packets that can use an available communication resource,” Petitioner points to Lu’s description of using a weight-based scheduling scheme to transfer packets from one level queue to another. Id. at 23–24. Petitioner identifies the transmission capacity of the output link (e.g., 209) as the “available communication resource,” and contends that such weighted transfer during a cycle includes determining a total number of data packets that can be transferred for a cycle.5 Id. at 24. Petitioner further contends that Lu’s description of using subscriber weights based on subscriber volumes for particular classes teaches “allocating different weights to each tier of service based on a number of users requiring access to the available communication resource,” as recited in claim element 1[c]. Id. at 28–30. Regarding claim element 1[d], Petitioner argues that “[b]ecause the weights of Lu vary with the 4 We refer the claim elements 1[a]–1[e] as identified in Section I.E, above. 5 Patent Owner contends that Lu does not teach claim element 1[b]. PO Resp. 12–23. Because we decide that Petitioner has not shown that Lu teaches claim element 1[e], as detailed below, we do not decide whether Petitioner has shown that Lu teaches claim element 1[b]. available capacity (which in turn would affect the ‘total number of data packets that can use an available communication resource’), the weights of Lu consistently indicate how much (i.e., ‘proportion’) of the capacity (‘total number of data packets’) each class (i.e., ‘tier of service’) will receive.” Id. at 32.” slip op. at 22
- Strike new argumentNew argument disregardedDecided for patent owner
“Petitioner’s Reply argument is not simply rebuttal to the Patent Owner Response. Rather, it is an attempt to formulate a new prima facie case of obviousness. The Office has instructed that such improper Reply argument will not be considered: A reply may only respond to arguments raised in the corresponding opposition. [37 C.F.R.] § 42.23. While replies can help crystalize issues for decision, a reply that raises a new issue or belatedly presents evidence will not be considered and may be returned. . . . Examples of indications that a new issue has been raised in a reply include new evidence necessary to make out a prima facie case for the patentability or 6 In the Institution Decision, we considered Petitioner’s argument and evidence (including Mr. Lanning’s testimony, Ex. 1006 ¶¶ 96–97) and determined that Petitioner did not present evidence sufficient to show a reason to modify Lu and, accordingly, declined to institute as to claims 5 and 15. Dec. 26–27. unpatentability of an original or proposed substitute claim, and new evidence that could have been presented in a prior filing. Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,767 (Aug. 14, 2012); see also Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1370 (Fed. Cir. 2016) (The “Board did not err in refusing the reply brief as improper under 37 C.F.R. § 42.23(b) because IBS relied on an entirely new rationale.”). Accordingly, we do not consider Petitioner’s Reply argument for claim element 1[e]. For the same reasons, we do not consider the argument Petitioner made for the first time at the oral argument (Tr. 22:17–23:2). Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,768 (“A party may rely upon evidence that has been previously submitted in the proceeding and may only present arguments relied upon in the papers previously submitted. No new evidence or arguments may be presented at the oral argument.”); see also Dell Inc. v. Acceleron, LLC, 818 F.3d 1293, 1301 (Fed. Cir. 2016) (“In this case, the Board denied Acceleron its procedural rights by relying in its decision on a factual assertion introduced into the proceeding only at oral argument, after Acceleron could meaningfully respond.”).” slip op. at 25
Patent outcomesUS 7,385,994 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,385,994
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.