• Sensor Electronic Technology, Inc. v. Lite-On Technology CorporationSome claims unpatentable
  PTAB · Jun 26, 2023 · IPR2022-00395 · APJ Jean R Homere · IPR · Final written decision

  Claims 1, 2, and 5 are unpatentable under § 103; claim 3 was not shown unpatentable. The contingent motion to amend was granted for substitute claims 20–22.

  RulingsFinal written decision

  • PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, grantedGranted

    “5. Conclusion Weighing the Graham factors, we conclude that Petitioner has not” slip op. at 83

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

    “merely by increasing the light extraction due to their low refractive index. Id. at 5. Accordingly, Petitioner submits that a POSITA would be apprised that “the amount of light emitted from the light-emitting element 310 reaching the cup-shaped sidewall of the package…can be reduced, so that deterioration of the package can be prevented.” Id. (citing Ex. 1007 ¶ 42; Ex. 1026, 14:13–20). Thus, Petitioner argues, removing the silicone sealing layer and replacing it with an air gap would increase the light extraction from the package, thus performing the same function of the sealing layer disclosed in Nichia-825. Id. (citing Ex. 1014 ¶¶ 35, 36). Additionally, Petitioner argues that Omata’s air hole is designed to allow air to flow out of the LED package to help balance the pressure inside the package with the external air pressure during the reflow process. Id. at 6–7 (Ex. 1021 ¶ 39; Ex. 1026, 22:10–19, 32:2–4). Thus, Petitioner submits that Omata discloses no concern with introducing external contaminants through the air hole, which allows air to flow in the opposite direction once pressure has been equalized. Id. at 7.” slip op. at 61

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

    “Examiner’s rejections based on the oval-shaped drawing during prosecution of the ’685 patent, and because the depictions of different circles and an oval, each having a different center, were not drawn to scale in the Reply, they cannot be relied upon as evidence to support Petitioner’s position that the center of curvature may involve more than one circle or even an oval, each having a different center. Id. at 7–10. Accordingly, Patent Owner submits that the “center of curvature” should be construed consistent with” slip op. at 13

  Patent outcomesUS 10,916,685 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham · Nautilus
  Patents in suitUS 10,916,685
• Unified Patents, LLC v. Mel Navip, LLCInstituted
  PTAB · May 23, 2023 · IPR2023-00083 · APJ Kevin F Turner · IPR · Institution

  The Board instituted IPR on claims 1–5, finding a reasonable likelihood that claims 1–3 are obvious over Niemoeller, Nishizaki, and Yamamoto, and claims 4–5 over those references and Keely.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner

    “As Fintiv notes, the Board generally disfavors discretionary denial when litigation did not involve the petitioner, unless “the issues are the same as, or substantially similar to those already or about to be litigated, or other circumstances weigh against redoing the work of another tribunal.” Fintiv at 13–14. Given that we that have no indication the litigation is or will be stayed pending an IPR, we decline to speculate as to the possibility of a stay. Thus, this factor is neutral as to discretionary denial.” slip op. at 7

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner

    “2. Discretion Under § 325(d) Petitioner contends that we should not exercise our discretion to deny institution under 35 U.S.C. § 325(d). Pet. 72. Petitioner asserts that no proceeding involving the ’368 Patent has been previously brought before the Office, and that none of the references cited herein was before the Examiner during prosecution. Id. Patent Owner does not argue otherwise. See Prelim. Resp. As such, we decline to exercise our discretion to deny institution of review under 35 U.S.C. § 325(d).” slip op. at 11

  • Skill levelSkill level petitioner adoptedOther

    “had at least a bachelor’s degree in electrical or computer engineering, or an equivalent field, and at least two years of work experience involving telecommunications, signal processing, or speech recognition technology.” Pet. 6; see Ex. 1003 ¶ 17. Petitioner further asserts that “[m]ore education 7 Because we determine Fintiv factors 1–5 weigh against discretionary denial, we need not consider the compelling merits question. See CommScope Techs. LLC. v. Dali Wireless, Inc., IPR2022-01242, Paper 23 at 6 (Feb. 27, 2023) (“The Board should first assess Fintiv factors 1–5; if that analysis supports discretionary denial, the Board should engage the compelling merits question.”) (precedential). can supplement practical experience and vice versa.” Pet. 6. Patent Owner provides a generally commensurate statement in the Preliminary Response, supported by its declarant. Prelim. Resp. 6 (citing Ex. 1003 ¶¶ 9–11). Because we do not discern any substantive difference in the parties’ formulations, we adopt Petitioner’s assessment for purposes of this Decision.” slip op. at 11

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededPlain and ordinary meaningOther

    “Petitioner asserts that “[n]o formal claim constructions are necessary in this proceeding because ‘claim terms need only be construed to the extent necessary to resolve the controversy.’” Pet. 12 (citing Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011)). Petitioner also asserts that because no claim terms use the term “means,” there is a rebuttable presumption that § 112 ¶ 6 does not apply, but Petitioner provides charts identifying the specific portions of the specification that describe the corresponding structure for each such potential limitation, should we decide the presumption is overcome and § 112 ¶ 6 applies. Id. at 12–18. Patent Owner agrees with Petitioner “that no formal claim construction is necessary in this proceeding and that no terms in the Challenged Claims use the terms ‘means’ to recite any means-plus-function limitations.” Prelim. Resp. 6. For purposes of this Decision, we determine that no claim term in the challenged claims of the ’368 Patent requires specific construction. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). Similarly, because no claim recites an explicit “means” limitation, and because neither party deems construction under § 112 ¶ 6 necessary, we construe all limitations of the challenged claims in accordance with their ordinary and customary meaning.” slip op. at 12

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 8,060,368
• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Tot Power Control, S.L.Institution denied
  PTAB · May 2, 2023 · IPR2022-01536 · APJ Lynne E Pettigrew · IPR · Institution

  The Board denied institution because neither asserted obviousness ground showed a reasonable likelihood of establishing claims 1–12 unpatentable.

  RulingsInstitution decision

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

    “institute an inter partes review if “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). After considering the parties’ briefing and the evidence of record, we conclude the information presented does not show there is a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of claims 1–12 of the ’865 patent. Accordingly, we do not institute an inter partes review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “the alleged invention of the ’865 patent “would have had at least a Bachelor’s degree in computer science, electrical engineering, computer engineering, or related field, with 2-3 years of experience in telecommunication systems and knowledge of telecommunication standards, with superior education compensating for less work experience.” Pet. 18 (citing Ex. 1003 ¶ 38). Patent Owner does not dispute Petitioner’s definition of a person of ordinary skill in the art for purposes of its Preliminary Response. Prelim. Resp. 20–21. On the present record, we determine that Petitioner’s proposed level of ordinary skill in the art is consistent with the ’865 patent and asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Therefore, we adopt Petitioner’s proposal for purposes of deciding whether to institute inter partes review, except that we do not include the qualifier “at least,” which would expand the required amount of education and experience indefinitely.” slip op. at 9

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

    “Neither party proposes a construction for any claim term. Petitioner contends that no claim terms require express construction for purposes of applying the prior art. Pet. 17–18. Patent Owner submits that, at this stage of the proceeding, we should adopt the ordinary and customary meaning of the claim terms. Prelim. Resp. 21. For purposes of this decision, we determine that no claim terms require express construction. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy (citing 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 successNot reached

    “received (SIRrec) based on a data signal (107, 108) received from a base station (102, 103) or mobile station (104).” Ex. 1001, 8:48–50. For this limitation, which relates to closed (inner) loop power control, Petitioner relies on a combination of Laakso and TS214. Pet. 35. First, Petitioner contends that Laakso discloses closed loop power control in WCDMA. Id. (citing Ex. 1005, 2:14–23, 8:28–9:8, 9:20–30; Ex. 1003 ¶ 105). Petitioner also contends that a person of ordinary skill in the art would have been aware of closed loop power control standards, such as TS214, which require estimating SIR based on a data signal received from a base station or mobile station. Id. (citing Ex. 1006, 12–15 (§ 5.1.2.2), 49 (Annex B.2); Ex. 1003 ¶ 105). Petitioner further contends that a person of ordinary skill in the art would have been motivated to combine Laakso’s outer loop power control success. Id. (citing Ex. 1003 ¶ 105); id. at 29–33 (citing Ex. 1003 ¶¶ 92–101) (addressing motivation to combine Laakso and TS214).” slip op. at 16

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,532,865
• Lyft, Inc. v. Rideshare Displays, Inc.All claims unpatentable
  PTAB · Apr 10, 2023 · IPR2021-01601 · APJ Thomas L Giannetti · IPR · Final written decision

  Claims 1 and 2 are unpatentable as obvious over both listed combinations; the contingent motion to amend is granted, replacing them with substitute claims 3 and 4.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Prelim. Resp. 5. At the institution stage, we adopted Petitioner’s more general formulation, with a qualification. We stated we would also expect a person of ordinary skill to also have at least some experience in wireless cellular network protocols, as suggested by Patent Owner. Institution Dec. 19. We reasoned that our review of the ’199 patent and the cited prior art did not suggest that specific experience with data privacy policies and protection models would be required, given the focus of the ’199 patent on more general principles of cellular communications and signaling. Id. at 19– 20. However, we observed that the arguments presented by the parties did not depend on the definition of the person or ordinary skill, and therefore, we concluded that our decision would be the same under either formulation. Id. at 20.” slip op. at 10

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “device associated with a driver at all.” PO Resp. 39 (citing Valenti III Decl. ¶ 94). Patent Owner continues, “Petitioner’s expert acknowledges that Lalancette does not disclose the use of a mobile communication device associated with the driver.” Id. (citing Williams Dep. 128:14–129:25, 132:1–8). This is a misrepresentation of Mr. Williams’s testimony. He was not asked whether Lalancette “discloses” a mobile communication device; he was asked to agree whether Lalancette “identi[fies] the mobile computer as a mobile communication device.” Williams Dep 129:10–13. He explained his response later in his testimony: “In the passage where [Lalancette] references mobile computer, it doesn’t have a specific form factor discussion such as referencing Smartphones.” Id. at 132:5–8. We do not agree with Patent Owner’s argument that this limitation is not met by Lalancette and we do not find the testimony of its expert, Dr. Valenti, credible or helpful. See Valenti III Decl. ¶¶ 94 (“Lalancette does not disclose a mobile device associated with a driver at all.”). As Petitioner points out, the argument supported by Dr. Valenti is an “attempt to improperly narrow the definition of a mobile device to only mean a smartphone of the driver.” Pet. Reply 24. We find that this argument and the supporting expert testimony are contradicted by the ’199 patent specification. See id, at 24–25 (quoting Ex. 1001, 3:10–11, defining mobile communication device broadly). We, therefore, find that the mobile computer disclosed in Lalancette meets the requirement of this claim limitation for a “mobile communication device associated with the driver.” We find for the reasons given that Petitioner demonstrates that Lalancette and Kemler meet limitation 1E.” slip op. at 45

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

    “We declined to adopt this implicit construction (and the related construction “actively generate”). Institution Dec. 23. The claims themselves do not require the controller to “actively formulate” a new indicator for the same rider requesting a subsequent trip for that second trip, or that “a new signal be actively formulated each time a ride is dispatched,” as Patent Owner’s analysis asserts. See infra. Nor is it clear how this construction is supported by the ’199 patent specification. The ’199 patent describes the controller as “communicatively coupled to the transceiver.” Ex. 1001, 2:10–11. Further, “[t]he controller is adapted to generate a first signal to be transmitted by the transceiver to a mobile communication device.” Id. at 2:12–14. Elsewhere in the patent, “controller” is defined as “any type of computing device, computational circuit, or any type of processor or processing circuit capable of executing a series of instructions that are stored in a memory associated with a with the controller.” Id. at 3:6–10. The operation of the controller is also described as follows: “The controller 110 may generate a first signal (also referred to herein as a ‘notification signal’) that is transmitted via the transceiver 120 to the mobile communication device 150 associated with the driver D.” Id. at 5:14–17. Still further, “[t]he controller 110 generates four different notification signals, NOTIFICATION-A, NOTIFICATION-B, NOTIFICATION-C, and NOTIFICATION-D, to be transmitted by the transceiver 120 to a first DRIVER'S MOBILE DEVICE 150A, a second DRIVER'S MOBILE DEVICE 150B, a third DRIVER'S MOBILE DEVICE 150C, and a fourth DRIVER'S MOBILE DEVICE 150D, respectively.” Id. at 6:39–46. And further, “[i]n other embodiments, wherein the vehicle identification system 11 is utilized, an indicatory signal to the rider's mobile communication device may be generated by the controller 110.” Id. at 7:4–7. In none of these descriptions of the controller’s operation is there” slip op. at 15

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

    “We find that the Petition and supporting expert testimony sufficiently demonstrate that a person of ordinary skill would have combined the teachings of Kemler and Kalanick with a reasonable expectation of success. Pet. 21–25. In addition to the reasons given supra, Petitioner explains that Kalanick’s “on-demand service system can also use location information from the driver’s device and/or transport information . . . to automatically determine the driver’s state or state of the transport service.” Id. at 22 (citing Ex. 1006 ¶¶ 29, 35). Petitioner explains that in Kalanick, “[w]hen a service application on the driver’s device determines that the transport service is to change state, such as to ‘arriving now,’ based on a determination that the driver is within a predetermined distance, the service application can trigger the indication device to output the user’s specific color.” Id. at 23 (citing Ex. 1006 ¶ 37). Thus, Kalanick’s system can “control the indication device to output the user’s color or other unique distinctive indicator based on the transport state.” Id. (citing Ex. 1006, ¶ 38). Petitioner explains that Kemler describes a central dispatching system in which one or more server computing devices of the centralized dispatching system may select a vehicle to be dispatched based upon the location of the client computing device. Id, (citing Ex. 1008, 10:3–33). Thus, Petitioner explains that Kemler, like Kalanick, “discloses ride-matching based on proximity and distance to match requesting riders with drivers based at least in part on the proximity of their respective locations.” Id. Petitioner demonstrates that “a [person of ordinary skill] would find it obvious to modify Kalanick’s vehicle identification system in view of Kemler, at least because both systems disclose substantially similar ride-matching techniques based on proximity and distance to match requesting riders with drivers based at least in part on the proximity of their respective locations.” Id. at 23–24. Petitioner also explains that a person of ordinary skill would “anticipate success of such a modification.” Id. at 24. Petitioner explains that “the controller in Kalanick is already in communication with the car and could easily send a signal to activate the display with the unique code.” Id. (citing Williams I Decl. ¶ 121). Petitioner recognizes that although both Kalanick and Kemler “focus” slip op. at 28

  Patent outcomesUS 10,559,199 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,559,199
• Lyft, Inc. v. Rideshare Displays, Inc.All claims unpatentable
  PTAB · Apr 10, 2023 · IPR2021-01598 · APJ Thomas L Giannetti · IPR · Final written decision

  Claims 1–9 and 11–20 are unpatentable as obvious over either asserted combination; the motion to amend is granted for substitute claims 29, 31, and 32.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Prelim. Resp. 5. At the institution stage, we adopted Petitioner’s more general formulation, with a qualification. We stated “[w]e would also expect a person of ordinary skill to also have at least some experience in wireless cellular network protocols, as suggested by Patent Owner.” Institution Dec. 16. We reasoned that our review of the ’637 patent and the cited prior art does not suggest that specific experience with data privacy policies and protection models would be required, given the focus of the ’637 patent on more general principles of cellular communications and signaling. Id. However, we observed that the arguments presented by the parties did not depend on the definition of the person or ordinary skill, and, therefore, our decision would be the same under either formulation. Id. at 16–17.” slip op. at 10

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “Resp. 12–14. The fact that Kalanick may not “disclose any problem” arising from the possibility of two passengers in the same area having the same signal does not prove a problem did not exist or that a person of ordinary skill would not be motivated to improve upon the solution for it. See Pet. Reply 5–6. Similarly, we are not persuaded by Patent Owner’s argument that there would be no reasonable expectation of success based on Kemler’s disclosure of a server farm. PO Resp. 24 (“The immense expense and complexity of operating a server ‘farm’ would be a reason to avoid Kemler’s teachings.”). Testimony from Mr. Williams establishes the advantages of such systems. Pet. Reply 7 (citing Williams I Decl. ¶¶ 124); Williams Dep. 82:1–88:25, 92:13–93:1; Williams III Decl. ¶¶ 34–35.5” slip op. at 33

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

    “We find that the Petition and supporting expert testimony sufficiently demonstrate that a person of ordinary skill would have combined the teachings of Kemler and Kalanick with a reasonable expectation of success. Pet. 21–27; Williams I Decl. ¶¶ 113–125; Williams III Decl. ¶¶ 5–17. In addition to the reasons given supra, Petitioner explains that Kalanick’s “on-” slip op. at 30

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner

    “The ’637 patent describes an indicator as “a ‘code’ (e.g., a text string or an alphanumeric string), an icon, or other identifier, on the display 130 and on a mobile communication device 140 associated with the user P to enable the user P to identify the vehicle that he/she has requested for a ride service.” Ex. 1001, 4:6–10. Consistent with this description in the specification, we construed the term “indicator” as a code (e.g., a text string or an alphanumeric string), an icon, or other identifier, for display to enable a match between a user/rider and a driver. Institution Dec. 20. We did not see a basis in the claims or specification for Patent Owner’s contention that a “new unique indicator” must be “actively formulate[d] . . . for each rider-driver trip while the driver is in transit.” Id. at 20 (citing Prelim. Resp. 29). Patent Owner does not address the construction of “indicator” in its Response. For the reasons given, therefore, we maintain our construction of this term. We discuss Patent Owner’s contention that a new indicator must be “actively formulated” further in connection with our consideration of the claim term “generate,” infra.” slip op. at 15

  Patent outcomesUS 9,892,637 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,892,637
• Lyft, Inc. v. Rideshare Displays, Inc.All claims unpatentable
  PTAB · Apr 10, 2023 · IPR2021-01600 · APJ John D Hamann · IPR · Final written decision

  Claim 1 is unpatentable under § 103 over Lalancette; the Board did not reach the Kalanick/Kemler or Lalancette/Kalanick grounds.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “definition, with a qualification. Dec. on Inst. 17. In particular, we determined that a person of ordinary skill in the art also would have had at least some experience in wireless cellular network protocols, as suggested by Patent Owner. Id. We also noted that from our review of the ’525 patent and the cited prior art, requiring specific experience with data privacy policies and protection models was not warranted, given the focus of the ’525 patent on more general principles of cellular communications and signal transmission. Id. On the full record, we determine that Petitioner’s definition, with the above qualification, is consistent with the ’525 patent and the asserted prior art, and thus, we maintain it for purposes of this Final Written Decision. See” slip op. at 8

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

    “We determine that no express construction is needed for this term because Petitioner shows that Lalancette teaches this limitation under either parties’ proposed construction, and Patent Owner does not dispute that Lalancette teaches the term. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’”); see also infra Section V.B (finding that Petitioner demonstrates that Lalancette teaches “a display associated with a front windshield of a vehicle”).” slip op. at 11

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningOther

    “Simply put, these arguments incorrectly conflate “signal” and “indicator” (e.g., icon). Claim 1 recites that a controller generates a signal representing an indicator, rather than reciting that the controller generates the indicator. Ex. 1001, 8:13–18. And the Specification of the ’525 patent is replete with examples of the controller generating signals that represent an indicator for transmission by a transceiver, which is different than generating the indicator itself. See, e.g., Ex. 1001, 2:1–5, 5:4–7, 6:30–37, 6:62–65.” slip op. at 12

  • Expert testimonyPatent owner expert discountedDecided for petitioner

    “requires a new indicator (e.g., icon) for each trip, and that the indicator cannot be pre-selected. PO Resp. 29. The language of claim 1 sets forth no such requirements. Ex. 1001, 8:8–23. Notably, Patent Owner does not cite to the Specification or claim language to support these arguments. Id.” slip op. at 12

  Patent outcomesUS 10,395,525 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 10,395,525
• Lyft, Inc. v. Rideshare Displays, Inc.All claims unpatentable
  PTAB · Apr 10, 2023 · IPR2021-01599 · APJ Lynne E Pettigrew · IPR · Final written decision

  Claims 1, 2, 4, and 6–8 are unpatentable as obvious over Kalanick and Kemler, anticipated by Lalancette, or obvious over Lalancette and Kemler.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Prelim. Resp. 5. At the institution stage, we adopted Petitioner’s more general formulation, with one qualification. Inst. Dec. 19. We stated we would also expect a person of ordinary skill to have at least some experience in wireless cellular network protocols, as suggested by Patent Owner. Id. at 19–20. We reasoned that our review of the ’987 patent and the cited prior art did not suggest that specific experience with data privacy policies and protection models would be required, given the focus of the ’987 patent on more general principles of cellular communications and signaling. Id. at 20. However, we observed that our decision would be the same under either formulation. Id. at 20.” slip op. at 10

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “We also find unavailing Patent Owner’s argument that Mr. Williams, Petitioner’s expert, “acknowledges that Lalancette does not disclose the use of a mobile communication device associated with the driver.” Id. (citing Ex. 2022, 128:14–129:25, 132:1–8). Patent Owner misrepresents Mr. Williams’s testimony. Mr. Williams was not asked whether Lalancette “discloses” a mobile communication device, but rather was asked “You’ll agree that La[l]ancette doesn’t identify the mobile computer as a mobile communication device associated with the driver?” Ex. 2022, 129:10–13. specifically referenced, that description is not in that passage.” Id. at 129:14–16. Notably, Mr. Williams also testified that (i) “[t]he nature of La[l]ancette requires some sort of computing device in the taxi that has the ability to receive and communicate in order to get information, for example, icon information from the central computer”; (ii) “mobile computer . . . has a variety of form factors inclusive of something like a [s]martphone”; and (iii) “[i]n the passage where [Lalancette] references mobile computer, it doesn’t have a specific form factor discussion such as referencing [s]martphones.” Id. at 125:17–22, 129:20–25, 132:5–8.” slip op. at 38

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner

    “1. “indicator” In our Institution Decision, we construed the term “indicator” as a “code (e.g., a text string or an alphanumeric string), an icon, or other identifier, for display to enable a match between a user/rider and a driver.” Inst. Dec. 22. We determined this construction was consistent with the description of an indicator in the specification of the ’987 patent. Id. at 21–22 (citing Ex. 1001, 4:9–13). Neither party challenges this construction, which we maintain for this Final Written Decision. See PO Resp. 6; Pet. Reply 2; PO Sur-reply 2.” slip op. at 12

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner

    “Because the specification and prosecution history do not explicitly provide a definition for the term “generate,” we looked to extrinsic sources to determine its plain meaning. Inst. Dec. 24. The Federal Circuit has approved the use of dictionaries for guidance in claim construction, “so long as the extrinsic evidence does not contradict the meaning otherwise apparent from the intrinsic record.” Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1382 (Fed. Cir. 2008); see also Comaper Corp. v. Antec, Inc., 596 F.3d 1343, 1348 (Fed. Cir. 2010) (approving of “consult[ing] a general dictionary definition of [a] word for guidance” in determining ordinary meaning); Praxair, Inc. v. ATMI, Inc., 543 F.3d 1306, 1325 (Fed. general dictionary definitions as an aid to claim construction.”) (citation omitted). One dictionary definition of “generate” is “to bring into existence: such as: . . . to originate by a vital, chemical, or physical process: PRODUCE.” See https://www.merriam-webster.com/dictionary/generate. We therefore construed the term “generate” as it relates to the controller in reference to a signal in accordance with its plain and ordinary meaning, which is “to originate or produce the signal.” Inst. Dec. 24–25.” slip op. at 13

  Patent outcomesUS 10,169,987 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,169,987
• Lyft, Inc. v. Rideshare Displays, Inc.All claims unpatentable
  PTAB · Apr 10, 2023 · IPR2021-01602 · APJ John D Hamann · IPR · Final written decision

  Claims 1–5 are unpatentable as obvious over Lalancette; the Board did not reach the anticipation or Kalanick–Kemler obviousness grounds.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “On the full record, we determine that Petitioner’s definition, with the above qualification, is consistent with the ’417 patent and the asserted prior art, and thus, we maintain it for purposes of this Final Written Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); GPAC, 57 F.3d at 1579; In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). Our analysis herein, however, does not turn on which of the parties’ definitions we adopt. The parties’ statements made during the oral hearing are consistent with this point. See Tr. 75:17–18 (Patent Owner stating that “[i]t’s not clear to us that the level of ordinary skill arguments actually matter”), 106:12–17 (Petitioner stating that its arguments do not depend on which definition we adopt). In sum, we maintain Petitioner’s definition, as qualified, for the level of one of ordinary skill in the art, and employ it in our analysis of the parties’ unpatentability arguments.” slip op. at 9

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningOther

    “In addition, because the Specification and file history do not explicitly provide a definition for the term “generate,” we look to a dictionary definition to illustrate its plain meaning for the parties. The Federal Circuit has approved the use of dictionaries for guidance in claim construction, “so long as the extrinsic evidence does not contradict the meaning otherwise apparent from the intrinsic record.” Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1382 (Fed. Cir. 2008); see also Comaper Corp. v. Antec, Inc., 596 F.3d 1343, 1348 (Fed. Cir. 2010) (approving of “consult[ing] a general dictionary definition of [a] word for guidance” in determining ordinary meaning); Praxair, Inc. v. ATMI, Inc., 543 F.3d 1306, 1325 (Fed. Cir. 2008) (“[O]ur decisions, including Phillips, do not preclude the use of general dictionary definitions as an aid to claim construction.”) (citation omitted). A dictionary definition of “generate” is “to bring into existence: such as: . . . to originate by a vital, chemical, or physical process: [produce].” Merriam-webster.com (accessed April 8, 2022), https://www.merriam-webster.com/dictionary/generate (Ex. 3001). We therefore construe the term “generate” as it relates to the controller in reference to a signal in accordance with its plain and ordinary meaning, which is to originate or produce the signal.” slip op. at 12

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

    “Simply put, these arguments incorrectly conflate “signal” and “indicator” (e.g., icon). Claim 1 recites that a controller generates a signal, rather than reciting that the controller generates an indicator. Ex. 1001, 8:1–6. And the Specification of the ’417 patent is replete with examples of the controller generating signals, including those that represent an indicator, for transmission by a transceiver, which is different than generating the indicator itself. See, e.g., Ex. 1001, 2:1–5, 5:4–7, 6:30–37, 6:62–65. And we find unavailing Patent Owner’s arguments that claim 1 requires a new indicator (e.g., icon) for each trip, and that the indicator cannot be pre-selected. PO Resp. 32. The language of claim 1 sets forth no such requirements. Ex. 1001, 7:31–8:14. Notably, Patent Owner does not cite to the Specification or claim language to support these arguments. PO Resp. 30–32. Rather, Patent Owner cites to the testimony of Dr. Valenti. Id. (citing Ex. 2023 ¶¶ 78–82). We find that this testimony lacks factual 7 The’417 patent describes “an indicator” as “a ‘code’ (e.g., a text string or an alphanumeric string), an icon, or other identifier.” Ex. 1001, 4:8–10 (emphasis added). support and is entitled to 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 or no weight.”); see also Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1583 (Fed. Cir. 1996) (finding that when “an analysis of the intrinsic evidence alone will resolve any ambiguity in a disputed claim term[,] . . . it is improper to rely on extrinsic evidence”). In addition, because the Specification and file history do not explicitly provide a definition for the term “generate,” we look to a dictionary definition to illustrate its plain meaning for the parties. The Federal Circuit has approved the use of dictionaries for guidance in claim construction, “so long as the extrinsic evidence does not contradict the meaning otherwise apparent from the intrinsic record.” Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1382 (Fed. Cir. 2008); see also Comaper Corp. v. Antec, Inc., 596 F.3d 1343, 1348 (Fed. Cir. 2010) (approving of “consult[ing] a general dictionary definition of [a] word for guidance” in determining ordinary meaning); Praxair, Inc. v. ATMI, Inc., 543 F.3d 1306, 1325 (Fed. Cir. 2008) (“[O]ur decisions, including Phillips, do not preclude the use of general dictionary definitions as an aid to claim construction.”) (citation omitted). A dictionary definition of “generate” is “to bring into existence: such as: . . . to originate by a vital, chemical, or physical process: [produce].” Merriam-webster.com (accessed April 8, 2022), https://www.merriam-webster.com/dictionary/generate (Ex. 3001). We therefore construe the term “generate” as it relates to the controller in reference to a signal in accordance with its plain and ordinary meaning, which is to originate or produce the signal.” slip op. at 11

  • Expert testimonyPatent owner expert discountedDecided for petitioner

    “indicator” (e.g., icon). Claim 1 recites that a controller generates a signal, rather than reciting that the controller generates an indicator. Ex. 1001, 8:1–6. And the Specification of the ’417 patent is replete with examples of the controller generating signals, including those that represent an indicator, for transmission by a transceiver, which is different than generating the indicator itself. See, e.g., Ex. 1001, 2:1–5, 5:4–7, 6:30–37, 6:62–65. And we find unavailing Patent Owner’s arguments that claim 1 requires a new indicator (e.g., icon) for each trip, and that the indicator cannot be pre-selected. PO Resp. 32. The language of claim 1 sets forth no such requirements. Ex. 1001, 7:31–8:14. Notably, Patent Owner does not cite to the Specification or claim language to support these arguments. PO Resp. 30–32. Rather, Patent Owner cites to the testimony of Dr. Valenti. Id. (citing Ex. 2023 ¶¶ 78–82). We find that this testimony lacks factual 7 The’417 patent describes “an indicator” as “a ‘code’ (e.g., a text string or an alphanumeric string), an icon, or other identifier.” Ex. 1001, 4:8–10 (emphasis added). support and is entitled to 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 or no weight.”); see also Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1583 (Fed. Cir. 1996) (finding that when “an analysis of the intrinsic evidence alone will resolve any ambiguity in a disputed claim term[,] . . . it is improper to rely on extrinsic evidence”). slip op. at 11

  Patent outcomesUS 10,748,417 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 10,748,417
• Palo Alto Networks, Inc. v. Centripetal Networks, LLCAll claims unpatentable
  PTAB · Mar 13, 2023 · IPR2021-01158 · APJ Lynne E Pettigrew · IPR · Final written decision

  Claims 1–20 are unpatentable: claims 1, 7–10, 15, and 19–20 as obvious over Church and Amsler-003; claims 2–6, 11–14, and 16–18 as obvious over Church, Amsler-003, and Fellin.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “In the Institution Decision, we noted that Patent Owner did not dispute Petitioner’s assessment of the level of ordinary skill in the art, and we adopted Petitioner’s assessment for purposes of institution based on the information presented in the Petition and Dr. Lee’s testimony. Inst. Dec. 16 (citing Pet. 13; Ex. 1004 ¶ 30). Patent Owner does not dispute the level of See PO Resp. On the complete record, we maintain the definition of the level of ordinary skill in the art adopted at institution, which is consistent with the ’899 patent and the prior art of record.” slip op. at 9

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

    “In our Institution Decision, we noted that the parties’ proposed constructions differ slightly, but we determined it was unnecessary for us to construe “reportability likelihood” to decide whether to institute this inter partes review. Inst. Dec. 17. In papers filed during trial, the parties agree that arguments regarding whether the claims are unpatentable for obviousness do not turn on whether the Board adopts Petitioner’s or Patent Owner’s proposed construction. See Pet. Reply 3 n.2; PO Sur-reply 3. We agree with the parties’ assessment, and therefore we determine it is before us. See Realtime Data, 912 F.3d at 1375.” slip op. at 11

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

    “We agree with Petitioner’s construction of “event log” as “aggregation of data associated with a detected threat event,” which the challenge this construction of “event log,” arguing instead that steps involving event logs recited in claim 1 must be performed in a certain manner. PO Resp. 16–17 (citing Ex. 2011 ¶¶ 66–68). We see no basis for importing other language of the claims into the construction of the term “event log” itself. To the extent those claim steps require construction, we consider the meaning of the claim language in the context of our obviousness analysis below.” slip op. at 12

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

    “f. Conclusion for Claim 1 For the reasons explained above, we are persuaded that the combination of Church and Amsler-003 teaches or suggests all the limitations of claim 1 and that a person of ordinary skill in the art would have combined Church and Amsler-003 in the manner asserted in the Petition. The parties do not present arguments or evidence regarding objective indicia of non-obviousness as set forth in the fourth Graham factor. See Pet. 70; PO Resp. Having considered the evidence of obviousness under the first three Graham factors, we determine that Petitioner has shown by a preponderance of the evidence that claim 1 of the ’899 patent is unpatentable under 35 U.S.C. § 103 as obvious over the combination of Church and Amsler-003.” slip op. at 31

  Patent outcomesUS 10,503,899 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,503,899
• Motorola Mobility LLC v. Maxell, Ltd.Instituted
  PTAB · Feb 24, 2023 · IPR2022-01348 · APJ Terrence W Mcmillin · IPR · Institution

  The Board instituted IPR on claims 2–9, finding a reasonable likelihood that the challenged claims are unpatentable on the asserted Phillips and Russ grounds.

  RulingsInstitution decision

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

    “inter partes review may not be instituted unless the information presented in the Petition and the Preliminary Response shows that “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). After considering the Petition, the Preliminary Response, and the evidence of record, we institute an inter partes review as to the challenged claims of the ’394 patent on the grounds of unpatentability presented.” slip op. at 2

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

    “We construe only terms that are in controversy and then 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). We determine that, as shown below, it is not necessary to explicitly construe any claim terms in order to make this institution decision. 12,13” slip op. at 8

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notNot reached

    “17 We adopt the parsing of the claims as set forth in the Petition in order to follow the contentions in the Petition. 18 “[W]here a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention, the preamble is not a claim limitation.” Rowe v. Dror, 112 F.3d 473, 478 (Fed. Cir. 1997). The preamble of claim 2 is a statement of purpose or intended use and claim 2 otherwise appears to define a structurally complete invention. Thus, our initial determination is that the preamble of claim 2 is not limiting. However, we need not decide whether the preamble of claim 2 is limiting as we determine the Petitioner establishes the cited art teaches a digital content reproducing apparatus. Figure 1 of Phillips depicts “an interactive television system.” Ex. 1005, 4:60–61. As quoted in the Petition (Pet, 27–28), the related description of Figure 1 of Phillips states, “[c]ontent such as television programming and digital music may be provided from programming sources 12 to television distribution facilities such as television distribution facility 14 using communication path 16” (Ex. 1005, 6:32–36) and “[t]he user equipment may receive television and music programming and other information from television distribution facility 14 over communication paths 26, 27, and 28” (id. at 6:56–59). Patent Owner does not argue the preamble of claim 2. Based on this record, we determine that the preamble of claim 2 is disclosed by Phillips.” slip op. at 27

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

    “Phillips and as obvious in view of Phillips and Ackley, and Phillips and Wallis. Pet. 8. Petitioner further challenges claims 3, 6, and 9 in view of Phillips and Uchida, Phillips and Ackley and Uchida, and Phillips and Wallis and Uchida. Id. For each of these additional challenges based on Phillips alone and Phillips in combination with additional references, the Petition includes a detailed argument for each challenged claim in which the cited art is mapped to the limitations and, for each obviousness challenge, contentions as to motivation to combine. Id. at 25–59. For each of these challenges based on Phillips alone and Phillips together with one or more other references, Patent Owner limits its arguments to those discussed above with regard to Phillips. See generally Prelim. Resp. We have considered all of Petitioner’s challenges based on Phillips alone and Phillips in combination with one or more references and Patent Owner’s contrary arguments relating to Phillips. We determine that for each of these challenges Petitioner has demonstrated a reasonable likelihood of showing the claims challenged in the Petition are unpatentable. For each of these additional claims and challenges, Petitioner has shown that institution is independently appropriate under the applicable legal standard. See 35 U.S.C. § 314(a).” slip op. at 40

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,170,394

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.