• Apple Inc. / Amazon Web Services, Inc. et al. v. Zentian LimitedSome claims unpatentable
  PTAB · Jun 11, 2024 · IPR2023-00036 · APJ Jeffrey S Smith · IPR · Final written decision

  Claims 10, 12–14, 16–18, 20–23, 25–28, 35, 37–39, and 42–45 are unpatentable; claims 1, 2, 4, 6–9, 11, 24, and 29 were not shown unpatentable, principally because the asserted combinations did not establish the claimed …

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for patent owner

    “(“POSITA”) would have had “a master’s degree in computer engineering, computer science, electrical engineering, or a related field, with at least two years of experience in the field of speech recognition, or a bachelor’s degree in the same fields with at least four years of experience in the field of speech recognition,” and that “[a]dditional education or experience might substitute for the above requirements.” Pet. 3 (citing Ex. 1003 ¶¶ 24–25). Patent Owner contends that the Petition and supporting evidence, including the testimony of Mr. Schmandt, does not demonstrate that a person of ordinary skill in the field of speech recognition would have been able to fabricate an integrated circuit. PO Resp. 1. Patent Owner contends that a person of ordinary skill in the field of speech recognition would not also be expected to have specialized knowledge in integrated circuit fabrication in Petitioner does not present arguments to the contrary. See generally Reply. We agree with Petitioner, that a person of ordinary skill in the field of speech recognition would have had a master’s degree in computer engineering, computer science, electrical engineering, or a related field, with two years of experience in the field of speech recognition, or a bachelor’s degree in the same fields with four years of experience in the field of speech recognition.3 Ex. 1001, 1:25–2:27 (describing in the “Background of Invention” section of the ’789 patent various speech recognition systems and methods). We also agree with Patent Owner, and rely on the supporting testimony of Dr. Anderson, in finding that a person of ordinary skill in the field of speech recognition would not have been a person of ordinary skill in the field of integrated circuit fabrication, and would not have had the education, experience, or skill necessary to fabricate an integrated circuit.” slip op. at 8

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

    “Petitioner “applies the plain and ordinary meaning of all claim terms as understood by a POSITA for all terms.” Pet. 5. We conclude that no terms require express construction to resolve a dispute. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“Because we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy,’ we need not construe [a particular claim limitation] where the construction is not ‘material to the . . . dispute.’” (internal citation omitted)).” slip op. at 10

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedMixed

    “We agree with Patent Owner that Petitioner has not shown, by a preponderance of evidence, that state memory 342 of Smyth is fabricated on the same integrated circuit as processor 341. Petitioner, in asserting that processor 341 and state memory 342 are on the same integrated circuit, cites the following testimony of Mr. Schmandt: In my opinion, the Motorola DSP56000 provides both memory and a processor fabricated on a single integrated circuit (IC). Kloker (Ex. 1009), 1 (discussing the Motorola DSP56000 includes “a core processor, RAM, ROM, peripheral interfaces, and a memory expansion interface on a single, 88-pin chip[”)]. . . . A POSITA would have understood or at least found obvious that Smyth thus teaches a single IC on which both classifier processor 341 and state memory 342 are fabricated. Ex. 1003 ¶ 165; Pet. 39. We do not credit Mr. Schmandt’s testimony because it is inconsistent with Smyth’s disclosure. Smyth discloses that classifier 34 comprises classifying processor 341 and state memory 342, and that “classifying processor 341 may be a suitably programmed digital signal processing (DSP) device.” Ex. 1005, 5:55–57, 6:5–6. Thus, Smyth itself, in discussing classifier 34, distinguishes processor 341 from state memory 342 in stating that only processor 341, and not both processor 341 and state memory 342, may be located on the DSP. describe processor 341 and state memory 342 as being fabricated on a single integrated circuit. Ex. 2020 ¶¶ 34–37. Dr. Anderson persuasively explains that processor 341 and state memory 342 could not be fabricated on the same integrated circuit, because the design of the DSP for processor 341 does not include any memory that meets the requirements of state memory 342. Id. ¶¶ 38–45. We rely on the testimony of Dr. Anderson in finding that Petitioner has not shown that Smyth teaches that processor 341 and state memory 342 are fabricated on a single integrated circuit.” slip op. at 17

  • Strike new argumentNew argument disregardedDecided for patent owner

    “In our Decision to Institute, we understood Petitioner’s theory based on the combination of Smyth and Mozer to include fabricating an integrated circuit in stating that we were sufficiently persuaded “that fabricating a single integrated circuit that includes a calculating apparatus and an acoustic model memory . . . was within the level of ordinary skill.” Dec. 23. Our understanding was based on the Petition’s multiple contentions that a person of ordinary skill would have found it obvious to fabricate Smyth’s processor and state memory on a single integrated circuit. See Pet. 41–44. For example, the Petition contends that “[a] POSITA would have found it obvious . . . to fabricate [Smyth’s processor and state memory] on a single integrated circuit” (Pet. 41–42 (emphasis added)); “a POSITA would have understood and found obvious . . . to fabricate a calculating apparatus and acoustic model memory on a single integrated circuit” (Pet. 42 (emphasis added)); “[s]uch a use of a known technique of fabricating a memory and processor on a single integrated circuit” (id. (emphasis added)); “it would have been obvious to modify Smyth to form the classifier processor and associated memory on a single IC” (Pet. 43 (emphasis added)); (“it was well known in the prior art to fabricate a single integrated circuit” (Pet. 43–44 (emphasis added)); “[t]hus, a POSITA would have been motivated . . . to fabricate [Smyth’s processor and state memory] on a single integrated circuit” (Pet. 44 (emphasis added)). integrated circuit to using integrated circuits that were already fabricated. Reply 22–25. According to Petitioner, “the Petition did not map a POSITA physically fabricating an IC, but rather mapped a POSITA modifying Smyth according to Mozer’s undisputed teachings of a single IC on which a calculating apparatus and acoustic model memory were already fabricated.” Id. at 23–24. However, as discussed in the previous paragraph, when discussing the combination of a processor and an acoustic model memory on an integrated circuit, the Petition used the verb “to fabricate” four times in the future tense and once in the present tense, as well as the verb “to form” once in the future tense. The Petition did not use the past tense phrase “were already fabricated” as alleged in the Reply. Moreover, the Petition did not map Smyth’s state memory (which the Petition contends teaches the claimed “acoustic model memory” (see Pet. 11)) to a memory already fabricated on an integrated circuit in the prior art. Rather, the Petition relied on Mozer to support its contention that a person of ordinary skill would have fabricated the calculating apparatus and acoustic model memory of Smyth on an integrated circuit. See Pet. 42, 44. The Petition cited Boike and Ozcelik in contending that fabricating an integrated circuit with processors and memories was well known, and cited Toyoda in contending that fabricating an integrated circuit with a calculating apparatus and an acoustic model memory was well known. Pet. 43–44 (citing Ex. 1006; Ex. 1029; Ex. 1034). However, the Petition did not explain how a memory located in one of the integrated circuits of Mozer, Boike, Ozcelik, or Toyoda would have been able to store Smyth’s state memory. Therefore, we disagree with Petitioner’s contention that “the Petition did not map a POSITA physically fabricating an IC, but rather mapped a single IC on which a calculating apparatus and acoustic model memory were already fabricated.” Reply 23–24. We find that this contention was untimely presented in the Reply. We do not permit Petitioner to propose a mapping of the prior art in the Petition and then completely change that mapping after Patent Owner argues the initial mapping was flawed. A “petitioner may not submit new evidence or argument in reply that it could have presented earlier, e.g., to make out a prima facie case of unpatentability.” TPG 73; see also Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369–70 (Fed. Cir. 2016) (holding that the Board did not err in refusing the reply brief as improper under 37 C.F.R. § 42.23(b) because petitioner relied on an entirely new rationale to explain why one of skill in the art would have combined the references at issue); 37 C.F.R. § 42.23(b); Apple Inc. v. eWatch, Inc., IPR2015-00412, Paper 50, 44 (PTAB May 6, 2016) (“‘Respond,’ in the context of 37 C.F.R. § 42.23(b), does not mean embark in a new direction with a new approach as compared to the position originally taken in the Petition. Accepting such belatedly presented new arguments would be unjust to the Patent Owner and we decline to do so.”).” slip op. at 27

  Patent outcomesUS 10,839,789 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,839,789
• Apple Inc. / Amazon Web Services, Inc. et al. v. Zentian LimitedAll claims unpatentable
  PTAB · Jun 11, 2024 · IPR2023-01193 · APJ Christopher L Ogden · IPR · Final written decision

  Claims 1, 4, 5, 7, 9, 10, 12, and 14–16 are unpatentable as obvious under § 103(a) over the listed Jiang-based combinations.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Relying on Mr. Schmandt’s testimony, Apple argues that a person of ordinary skill in the art would have had “a master’s degree in computer engineering, computer science, electrical engineering, or a related field, with . . . two years of experience in the field of speech recognition, or a bachelor’s degree in the same fields with . . . four years of experience in the field of speech recognition.” Pet. 3 (citing Ex. 1003 ¶¶ 28–30). Zentian does not contest Apple’s proposed definition of the level of ordinary skill. PO Resp. 5. Because Apple’s articulation of that level of skill is uncontested, supported by testimonial evidence, and appears consistent with the types of problems and solutions in the ’277 patent, we adopt it for this decision. See, e.g., Ex. 1001, 1:4–8:10.” slip op. at 7

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

    “Apple argues that all terms should be given their plain and ordinary meaning, except that the limitation “calculating means for calculating a distance indicating the similarity between a feature vector and a predetermined acoustic state of an acoustic model” in claim 14 (Ex. 1001, 39:6–8) is a means-plus-function limitation and thus invokes 35 U.S.C. § 112 para. 6 (2006). Pet. 5–6. Zentian does not contest these arguments or propose any explicit constructions. See PO Resp. We do not find it necessary to explicitly construe any terms for this decision. To the extent that we need to interpret claim language, we address that language below in the context of the prior art. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’ . . . .” (quoting Vivid Techs., Inc. v. Am. Sci & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 9

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “We find Apple’s arguments persuasive that a person of ordinary skill in the art would have understood Jiang’s pruning technique not to rely on feedback, particularly because Jiang makes no mention of feedback, and Jiang as a whole appears consistent with Apple’s theory that Jiang does not teach feedback-based pruning. See, e.g., Ex. 1004, 2:5–7, 8:52–64, 10:65– 11:15. We credit Mr. Schmandt’s testimony and supporting evidence that “[e]ven though Jiang still describes calculating all scores initially (for each state for example), Jiang explains that pruning thereafter saves on computational resources.” Ex. 1003 ¶ 194 (citing Ex. 1004, 10:65–11:25). We find this testimony more persuasive than Mr. Anderson’s contrary testimony which does not credibly find support in the text of Jiang. See Ex. 2020 ¶¶ 57–71. We also disagree that Apple’s arguments that Jiang’s distance calculations do not rely on pruning are untimely. PO Resp. 19. The Petition argues that Jiang teaches calculating distances, “namely a score for each phoneme branch of the prefix tree.” Pet. 21 (citing Ex. 1004, 8:29–33). Also, Mr. Schmandt clearly opined, in his initial declaration submitted with the Petition, that “each phoneme branch is scored” in Jiang’s search tree. Ex. 1003 ¶ 149. Thus, Zentian had clear notice in the Petition of Apple’s argument that Jiang performs distance calculations for the entire search tree. Apple’s later argument that this process does not necessitate feedback is a natural consequence of its argument in the Petition, and is not untimely.” slip op. at 27

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

    “(1) Apple’s Proposed Combination According to Apple, Brown teaches that processing stages in a speech-recognition system may be pipelined such that “as the frames of data are generated, the data is processed from one stage to another so that the operations are synchronized with the rate of frame generation.” Pet. 44–45 (citing Ex. 1036, 3:32–48; Ex. 1003 ¶¶ 206–209). Apple contends that a person of ordinary skill in the art would have had reason to modify the combination of Jiang and Baumgartner by pipelining data sent from the CPU to the SLA and then back to the CPU because “[p]ipelining data offered numerous well-known advantages including greater throughput of the processor, improved performance, decreased cost, and simplified programming.” Pet. 45 (citing Ex. 1003 ¶ 210). Apple also argues that a person of ordinary skill in the art “would have realized pipelining keeps all processors operating efficiently in a multi-processor system, such that wasteful idle-processing time is minimized.” Pet. 46 (citing Ex. 1003 ¶¶ 212–213). And according to Apple, “Jiang already discusses the importance of time with respect to pruning.” Pet. 46 (citing Ex. 1004, 10:65– 11:25). Apple also argues that a person of ordinary skill in the art would have had a reasonable expectation of success in adding Brown’s pipelining to the Jiang–Baumgartner combination because “[p]ipelining was well-known in the art including in speech recognition systems,” and the three references “teach speech recognition systems using similar hardware, such as various processors to perform similar speech recognition functions,” such that the combination “would have been a trivial modification.” Pet. 46–47 (citing Ex. 1004, 4:60–65, 6:32–36, 6:39–42; Ex. 1007 ¶ 33, Fig. 19; Ex. 1036, 3:11– 15; Ex. 1003 ¶ 214).” slip op. at 21

  Patent outcomesUS 7,979,277 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,979,277
• Apple Inc. / Amazon Web Services, Inc. et al. v. Zentian LimitedAll claims unpatentable
  PTAB · Jun 11, 2024 · IPR2023-00034 · APJ Christopher L Ogden · IPR · Final written decision

  Claims 1, 4, 5, 7, 9, 10, 12, and 14–16 are unpatentable as obvious under § 103(a) over the identified combinations.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Relying on Mr. Schmandt’s testimony, Apple argues that a person of ordinary skill in the art would have had “a master’s degree in computer engineering, computer science, electrical engineering, or a related field, with . . . two years of experience in the field of speech recognition, or a bachelor’s degree in the same fields with . . . four years of experience in the field of speech recognition.” Pet. 3 (citing Ex. 1003 ¶¶ 28–30). Zentian does not contest Apple’s proposed definition of the level of ordinary skill. PO Resp. 5. Because Apple’s articulation of that level of skill is uncontested, supported by testimonial evidence, and appears consistent with the types of problems and solutions in the ’277 patent, we adopt it for this decision. See, e.g., Ex. 1001, 1:4–8:10.” slip op. at 7

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

    “Apple argues that all terms should be given their plain and ordinary meaning, except that the limitation “calculating means for calculating a distance indicating the similarity between a feature vector and a predetermined acoustic state of an acoustic model” in claim 14 (Ex. 1001, 39:6–8) is a means-plus-function limitation and thus invokes 35 U.S.C. § 112 para. 6 (2006). Pet. 5–6. Zentian does not contest these arguments or propose any explicit constructions. See PO Resp. We do not find it necessary to explicitly construe any terms for this decision. To the extent that we need to interpret claim language, we address that language below in the context of the prior art. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’ . . . .” (quoting Vivid Techs., Inc. v. Am. Sci & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 9

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

    “We find Apple’s arguments persuasive that pruning is not required as part of its proposed combination of Jiang, Baumgartner, and Brown. Nothing in Jiang suggests that pruning is mandatory—it is presented as option, possibly a preferred option, but not a requirement. See Ex. 1004, 8:52 (“[A] pruning technique can be used.” (emphasis added)). Although Apple relied on the possibility of pruning in Jiang as part of the motivation to combine Jiang’s system with Baumgartner’s parallel-processing hardware, Apple never included pruning as an element needed to meet any limitation of claim 1. See Pet. 41, 46; Ex. 1003 ¶¶ 194, 201, 213. Although Jiang teaches the desirability of using pruning, at least “for a large vocabulary” (Ex. 1004, 2:19), there is nothing in claim 1 limiting how small the acoustic model can be. Also, whether or not a person of ordinary skill in the art could have achieved real-time speech-recognition system without pruning is not pertinent to achieving the claimed invention because claim 1 does not require real-time speech recognition. Apple has persuasively shown that a person of ordinary skill in the art would have had reason to implement Jiang’s system on parallel-processing hardware, as Baumgartner teaches, using pipelining as Brown teaches to meet all the limitations of claim 1, even without Jiang’s pruning embodiment, and that this combination would have been within the ordinary skill in the art.” slip op. at 23

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “We find Apple’s arguments persuasive that a person of ordinary skill in the art would have understood Jiang’s pruning technique not to rely on feedback, particularly because Jiang makes no mention of feedback, and Jiang as a whole appears consistent with Apple’s theory that Jiang does not teach feedback-based pruning. See, e.g., Ex. 1004, 2:5–7, 8:52–64, 10:65– 11:15. We credit Mr. Schmandt’s testimony and supporting evidence that “[e]ven though Jiang still describes calculating all scores initially (for each state for example), Jiang explains that pruning thereafter saves on computational resources.” Ex. 1003 ¶ 194 (citing Ex. 1004, 10:65–11:25). We find this testimony more persuasive than Mr. Anderson’s contrary testimony which does not credibly find support in the text of Jiang. See Ex. 2020 ¶¶ 57–71. We also disagree that Apple’s arguments that Jiang’s distance calculations do not rely on pruning are untimely. PO Resp. 19. The Petition argues that Jiang teaches calculating distances, “namely a score for each phoneme branch of the prefix tree.” Pet. 21 (citing Ex. 1004, 8:29–33). Also, Mr. Schmandt clearly opined, in his initial declaration submitted with the Petition, that “each phoneme branch is scored” in Jiang’s search tree. Ex. 1003 ¶ 149. Thus, Zentian had clear notice in the Petition of Apple’s argument that Jiang performs distance calculations for the entire search tree. Apple’s later argument that this process does not necessitate feedback is a natural consequence of its argument in the Petition, and is not untimely.” slip op. at 27

  Patent outcomesUS 7,979,277 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,979,277
• Apple Inc. / Amazon Web Services, Inc. et al. v. Zentian LimitedAll claims unpatentable
  PTAB · Jun 11, 2024 · IPR2023-01192 · APJ Christopher L Ogden · IPR · Final written decision

  The Board held claims 46–51, 53, 54, 58, 59, 64, and 67 unpatentable as obvious under § 103 over the specified combinations of Thelen, Bailey, Chen, and additional references.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “We find Apple’s arguments persuasive notwithstanding Zentian’s arguments to the contrary. We credit Mr. Schmandt’s testimony that consolidating the overlapping data within similar lexical models (such as “sports” models like football or baseball) and storing the consolidated data in a shared memory that multiple processors may access in parallel would have resulted in memory and processing efficiency. Ex. 1003 ¶¶ 83–84. This would have been an improvement over Thelen, where each processor has access to only one, distinct lexical model at a time and there is no shared memory in which multiple processors can access the same consolidated models data in parallel. See Ex. 1030, 7:30–34.11” slip op. at 27

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Because a person of ordinary skill in the art is a hypothetical person, we agree with Apple that Dr. Anderson’s inability to implement a particular computer vision application within the constraints of a particular Texas Instruments parallel-processing environment does not mean that more general knowledge and skill in parallel processing would have been beyond the level of ordinary skill. To the contrary, the evidence of record suggests that a person of ordinary skill in the art at the time of the claimed invention, who, for example, had a master’s degree and two years of experience in the field of speech recognition, would have also had knowledge and experience with parallel processing.” slip op. at 9

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

    “Apple states that it “applies the plain and ordinary meaning of all claim terms,” and does not propose any explicit constructions. See Pet. 7. Likewise, Zentian does not propose any explicit constructions. See PO Resp. We do not find it necessary to explicitly construe any terms for this decision. To the extent that we need to interpret claim language, we address that language below in the context of the prior art. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’ . . . .” (quoting Vivid Techs., Inc. v. Am. Sci & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 11

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

    “would not have been dissuaded from the memory-efficiency benefits of modifying Thelen–Bailey by grouping processors and memory into clusters because memory collisions would have allegedly made recognition slower. Although memory collisions may have been an issue for the ordinarily skilled artisan to consider, Apple has persuasively shown that there are other motivating considerations, such as the known flexibility12 and scalability of distributed processing systems in general, decreased cost because off-the-shelf components may be used, and the added efficiency of data sharing among related sub-context models. See Pet. 40–45. Apple persuasively shows, and we find Mr. Schmandt’s supporting testimony credible, that a skilled artisan would have expected to be able to minimize the effect of memory collisions based on Chen’s teachings and the background knowledge in the art. See Pet. 14–19. For the same reasons, we do not find credible Dr. Anderson’s testimony (see, e.g., Ex. 2020 ¶¶ 44–46)” slip op. at 28

  Patent outcomesUS 7,587,319 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,587,319
• Apple Inc. / Amazon Web Services, Inc. et al. v. Zentian LimitedAll claims unpatentable
  PTAB · Jun 11, 2024 · IPR2023-00033 · APJ Christopher L Ogden · IPR · Final written decision

  Claims 46–51, 53, 54, 58, 59, 64, and 67 are unpatentable as obvious under § 103 over the listed combinations of prior art.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Because a person of ordinary skill in the art is a hypothetical person, we agree with Apple that Dr. Anderson’s inability to implement a particular computer vision application within the constraints of a particular Texas Instruments parallel-processing environment does not mean that more general knowledge and skill in parallel processing would have been beyond the level of ordinary skill. To the contrary, the evidence of record suggests that a person of ordinary skill in the art at the time of the claimed invention, who, for example, had a master’s degree and two years of experience in the field of speech recognition, would have also had knowledge and experience with parallel processing.” slip op. at 9

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “We find Apple’s arguments persuasive notwithstanding Zentian’s arguments to the contrary. We credit Mr. Schmandt’s testimony that consolidating the overlapping data within similar lexical models (such as “sports” models like football or baseball) and storing the consolidated data in a shared memory that multiple processors may access in parallel would have resulted in memory and processing efficiency. Ex. 1003 ¶¶ 83–84. This would have been an improvement over Thelen, where each processor has access to only one, distinct lexical model at a time and there is no shared memory in which multiple processors can access the same consolidated models data in parallel. See Ex. 1030, 7:30–34.11” slip op. at 27

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

    “Apple states that it “applies the plain and ordinary meaning of all claim terms,” and does not propose any explicit constructions. See Pet. 7. Likewise, Zentian does not propose any explicit constructions. See PO Resp. We do not find it necessary to explicitly construe any terms for this decision. To the extent that we need to interpret claim language, we address that language below in the context of the prior art. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’ . . . .” (quoting Vivid Techs., Inc. v. Am. Sci & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 11

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

    “We find Apple’s arguments persuasive notwithstanding Zentian’s arguments to the contrary. We credit Mr. Schmandt’s testimony that consolidating the overlapping data within similar lexical models (such as “sports” models like football or baseball) and storing the consolidated data in a shared memory that multiple processors may access in parallel would have resulted in memory and processing efficiency. Ex. 1003 ¶¶ 83–84. This would have been an improvement over Thelen, where each processor has access to only one, distinct lexical model at a time and there is no shared memory in which multiple processors can access the same consolidated models data in parallel. See Ex. 1030, 7:30–34.11 11 The dissent characterizes Thelen’s common storage 340 as a shared memory. However, each of Thelen’s recognizers only has access (indirectly The evidence of record suggests that the ordinarily skilled artisan would not have been dissuaded from the memory-efficiency benefits of modifying Thelen–Bailey by grouping processors and memory into clusters because memory collisions would have allegedly made recognition slower. Although memory collisions may have been an issue for the ordinarily skilled artisan to consider, Apple has persuasively shown that there are other motivating considerations, such as the known flexibility12 and scalability of distributed processing systems in general, decreased cost because off-the-shelf components may be used, and the added efficiency of data sharing among related sub-context models. See Pet. 40–45.” slip op. at 27

  Patent outcomesUS 7,587,319 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,587,319
• Apple Inc. / Amazon Web Services, Inc. et al. v. Zentian LimitedAll claims unpatentable
  PTAB · Jun 11, 2024 · IPR2023-01194 · APJ Kevin F Turner · IPR · Final written decision

  Claims 1–6 are unpatentable as obvious: claims 1–5 over their listed combinations of Jiang, Smyth, Nguyen, Boike, or Baumgartner, and claim 6 over Jiang, Smyth, Nguyen, Boike, and Baumgartner.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “person of ordinary skill in the art at the time of the invention “would have had a master’s degree in computer engineering, computer science, electrical engineering, or a related field,” and would have had “at least two years of experience in the field of speech recognition, or a bachelor’s degree in the same fields with at least four years of experience in the field of speech recognition.” Pet. 4 (citing Ex. 1003 ¶ 24). Patent Owner indicates that it does not “dispute the Petition’s proposed level of skill for a person of skill in the art,” but also emphasizes that such artisans who possess “ordinary skill in the field of speech recognition, [would] not [be] one of extraordinary creativity.” PO Resp. 4. We continue to determine, as we did in the Institution Decision, that Petitioner’s proposal consistent with the level of ordinary skill in the art reflected by the prior art of record, see Inst. Dec. 7; Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 continue to adopt Petitioner’s unopposed position as to the level of ordinary skill in the art for purposes of this decision.” slip op. at 8

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

    “of that claim against the prior art.” In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970). The recitation of claim 1 that FVs are extracted and/or derived means that FVs may not only be extracted from the digital audio stream, thus obtaining a FV based on the scale of the FV (“representing a point in an N-dimensional space,” depending on the value of N (Ex. 1001 13:19–23)). Such FVs, per claim 1, may also be representations of the digital audio stream, i.e., quantities derived therefrom. Any such derived quantities would perhaps even be lossy. See Ex. 1001, 13:13–18. As such, FVs, according to independent claim 1, are not limited to pure feature vectors, which are quantities extracted from the digital audio stream, but also include quantities derived from the stream, which are representations” slip op. at 11

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

    “A claim is unpatentable under 35 U.S.C. § 103(a) if “the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art 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 skill in the art; and (4) when in evidence, objective evidence of obviousness or nonobviousness, i.e., secondary considerations. See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). An obviousness analysis “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR, 550 U.S. at 418. “whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue.” KSR, 550 U.S. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2016) (requiring the adjudicator to provide “some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”)). Furthermore, Petitioner does not satisfy its burden of proving obviousness by employing “mere conclusory statements,” but “must instead articulate specific reasoning, based on evidence of record, to support the legal conclusion of obviousness.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016).” slip op. at 7

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

    “above, we determine that Jiang uses codewords, which are representative feature vectors within the scope of claim 1, and those codewords are used to calculate distances. The Petition discusses a motivation to modify Jiang to use Smyth’s DSP device to perform distance calculations (Pet. 40-41), but it does so in the context of “[t]o the extent Patent Owner argues that Jiang does not teach calculating distances.” Id. at 40. Given that we determine that Jiang does teach performing distancing calculations that meet the claim limitations, Patent Owner’s contention is not persuasive. Rather, we are persuaded by Petitioner’s motivation for using Smyth’s dedicated DSP to perform Jiang’s distance calculations, namely, for the benefit of allowing for segmentation of higher-load processing, resulting in a faster, more efficient, ¶¶ 176–180; Ex. 1004, 6:39–42). We agree with Mr. Schmandt, that “[i]t would have been obvious to modify Jiang’s tree search engine, which performs both distance calculation and word determination, to include Smyth’s distinct processors for performing each respective functionality,” because such a modification “results in a more efficient, faster, and more accurate speech recognition process by segmenting higher-load processing tasks.” Ex. 1003 ¶ 180 (citing Ex. 1012, 19, Ex. 1005, 5:49–53, 6:5–8, 6:43–51; Ex. 1004, 4:60–5:3). Additionally, Patent Owner argues that using Smyth’s probability calculation in the system of Jiang will dramatically increase the computation burden of the calculations, and this is contrary to the purpose of Jiang to reduce computational requirements, as evinced by the use of lossy codewords. PO Resp. 16–19 (citing Ex. 1002 ¶¶ 54–59). Petitioner asserts, with respect to this latter argument, that “the Board need not consider this argument if the Board determines that Jiang teaches limitation 1(g).” Pet. Reply 14. We agree with Petitioner. Given the discussion with respect to limitation 1(g) above, and that Jiang is sufficient to teach or suggest element 1(g), we need not further consider the combination of Smyth and Jiang in the claimed calculation of distances. Therefore, we determine that the motivation proffered by the Petition is sufficient to combine the teachings of Jiang and Smyth, as disclosed in the Petition.” slip op. at 30

  Patent outcomesUS 10,062,377 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,062,377
• Apple Inc. / Amazon Web Services, Inc. et al. v. Zentian LimitedAll claims unpatentable
  PTAB · Jun 11, 2024 · IPR2023-00035 · APJ Kevin F Turner · IPR · Final written decision

  Claims 1–6 are unpatentable as obvious: claims 1–6 under the listed combinations of Jiang, Smyth, and the additional references for dependent claims.

  RulingsFinal written decision

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

    “of that claim against the prior art.” In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970). The recitation of claim 1 that FVs are extracted and/or derived means that FVs may not only be extracted from the digital audio stream, thus obtaining a FV based on the scale of the FV (“representing a point in an N-dimensional space,” depending on the value of N (Ex. 1001 13:19–23)). Such FVs, per claim 1, may also be representations of the digital audio stream, i.e., quantities derived therefrom. Any such derived quantities would perhaps even be lossy. See Ex. 1001, 13:13–18. As such, FVs, according to independent claim 1, are not limited to pure feature vectors, which are quantities extracted from the digital audio stream, but also include quantities derived from the stream, which are representations 8). Given such a definition, vector quantization, which reduces the plurality of quantities in a FV to a single codeword that is associated with a codebook entry, representing multiple values, would also comprise “derived” representations of the “quantities from said digital audio stream” as recited in the claim. Although Patent Owner’s declarant, Dr. Anderson, provides that “[c]odewords are the result of vector quantization (VQ) of the original feature vectors, and are thus not the feature vectors themselves” (Ex. 2020 ¶ 39), that comports with one alternative of what encompasses a FV as recited in claim 1, namely, “extracted quantities,” but not the more expansive definition that includes “derived quantities” provided in independent claim 1. The vector quantization of a feature vector results in a vector quantized feature vector, or codeword, that still represents a multitude of values “derived . . . from said digital audio stream,” but is more computationally expedient. See Ex. 1003 ¶¶ 140–141. We agree with Dr. Anderson that persons of ordinary skill in the art would have understood that calculating distances from a feature vector comprising extracted quantities was distinct from computing probabilities from a codeword (Ex. 2020 ¶ 43), but that, again, does not take into consideration the broader definition of “feature vector” confirmed by the claims. Rather, we agree with Petitioner and Mr. Schmandt, that a person of ordinary skill in the art would have understood that a codeword is a representative feature vector. Pet. 22 (citing Ex. 1003 ¶¶ 140–141). A codeword, or representative feature vector, “comprises a plurality of . . . derived,” or vector quantized, “quantities from said digital audio stream” within the meaning of claim 1. claim 1, comprises a plurality of extracted qualities from the digital audio stream during the defined audio time frame, and/or derived quantities that are representative of the digital audio stream during the defined audio time frame, such as the derived values of a codeword.” slip op. at 11

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Level of Ordinary Skill in the Art Petitioner, supported by Mr. Schmandt’s testimony, proposes that a person of ordinary skill in the art at the time of the invention “would have had a master’s degree in computer engineering, computer science, electrical engineering, or a related field,” and would have had “at least two years of experience in the field of speech recognition, or a bachelor’s degree in the same fields with at least four years of experience in the field of speech recognition.” Pet. 4 (citing Ex. 1003 ¶ 24). Patent Owner indicates that it does not “dispute the Petition’s proposed level of skill for a person of skill in the art,” but also emphasizes that such artisans who possess “ordinary skill in the field of speech recognition, [would] not [be] one of extraordinary creativity.” PO Resp. 4. We continue to determine, as we did in the Institution Decision, that Petitioner’s proposal consistent with the level of ordinary skill in the art reflected by the prior art of record, see Inst. Dec. 7; Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 continue to adopt Petitioner’s unopposed position as to the level of ordinary skill in the art for purposes of this decision.” slip op. at 8

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

    “We are not persuaded by Patent Owner’s arguments. As discussed above, we determine that Jiang uses codewords, which are representative feature vectors within the scope of claim 1, and those codewords are used to calculate distances. The Petition discusses a motivation to modify Jiang to use Smyth’s DSP device to perform distance calculations (Pet. 40-41), but it does so in the context of “[t]o the extent Patent Owner argues that Jiang does not teach calculating distances.” Id. at 40. Given that we determine that Jiang does teach performing distancing calculations that meet the claim limitations, Patent Owner’s contention is not persuasive. Rather, we are persuaded by Petitioner’s motivation for using Smyth’s dedicated DSP to perform Jiang’s distance calculations, namely, for the benefit of allowing for segmentation of higher-load processing, resulting in a faster, more efficient, ¶¶ 176–180; Ex. 1004, 6:39–42). We agree with Mr. Schmandt, that “[i]t would have been obvious to modify Jiang’s tree search engine, which performs both distance calculation and word determination, to include Smyth’s distinct processors for performing each respective functionality,” because such a modification “results in a more efficient, faster, and more accurate speech recognition process by segmenting higher-load processing tasks.” Ex. 1003 ¶ 180 (citing Ex. 1012, 19, Ex. 1005, 5:49–53, 6:5–8, 6:43–51; Ex. 1004, 4:60–5:3). Additionally, Patent Owner argues that using Smyth’s probability calculation in the system of Jiang will dramatically increase the computation burden of the calculations, and this is contrary to the purpose of Jiang to reduce computational requirements, as evinced by the use of lossy codewords. PO Resp. 16–19 (citing Ex. 1002 ¶¶ 54–59). Petitioner asserts, with respect to this latter argument, that “the Board need not consider this argument if the Board determines that Jiang teaches limitation 1(g).” Pet. Reply 14. We agree with Petitioner. Given the discussion with respect to limitation 1(g) above, and that Jiang is sufficient to teach or suggest element 1(g), we need not further consider the combination of Smyth and Jiang in the claimed calculation of distances. Therefore, we determine that the motivation proffered by the Petition is sufficient to combine the teachings of Jiang and Smyth, as disclosed in the Petition.” slip op. at 30

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “Weighing the evidence proffered by both parties, we are not persuaded that Jiang discloses feedback-based pruning. Petitioner’s declarant disputes that Jiang teaches feedback-based pruning (Ex. 2016, 18:16–19:14), and Jiang itself, within its entire discussion of pruning (Ex. 1004, 8:52–64, 10:65–11:15), never discusses feedback of pruned results. We are left with Patent Owner’s assertions that such feedback-based pruning is implicitly taught by Jiang, and we determine that to be insufficient to require a disclosure that is not explicit. We acknowledge that Patent Owner’s declarant (Ex. 2020 ¶ 64–76) provides testimony, based on the teachings of Jiang and contemporaneous teachings in the art, that Jiang’s pruning requires feedback from the search stage to the calculation stage, but we are not persuaded that Jiang must operate with such feedback. We are also persuaded by Petitioner’s point that Jiang computes a score for each phoneme branch considered in the tree, that contradicts Patent Owner’s theory that scores are computed for only active, non-pruned phoneme Lastly, Patent Owner seems to rely, at least partially, that “Jiang never states it does not use feedback-based pruning” (PO Sur-reply 25), but an absence of evidence is not evidence of absence. As such, given that we are not persuaded that Jiang must employ feedback-based pruning, we are not persuaded that the methods of Nguyen cannot be used in the combination of Jiang and Smyth, as proffered by the Petition with respect to claims 2 and 3. In addition, we agree with Petitioner that Jiang discloses that “a pruning technique can be used,” and find that Jiang’s pruning technique is optional. Pet. Reply 16; Ex. 1004, 8:52–64. Although Patent Owner contends that Mr. Schmandt includes Jiang’s pruning as part of his combination theory (PO Resp. 20–22), we agree with Petitioner that the Petition does not rely on Jiang’s pruning technique in mapping Jiang’s process to the search stage of independent claim 1. Pet. Reply 16; see Pet. 44–61. We find that the Petition does not rely on the portions of Mr. Schmandt’s testimony that consider Jiang’s pruning. Further, even under Mr. Schmandt’s combination theory, Mr. Schmandt testifies that the pruning “threshold value can be set at any desired level, based primarily on desired memory and computational savings, and a desired error rate increase caused by memory and computational savings.” Ex. 1003 ¶ 174 (quoting Ex. 1004, 2:25–46). Mr. Schmandt testifies that “if the speech recognition system is programmed to carry more hypotheses forward in the tree (because a relatively lower threshold value is set), the system has a higher recognition accuracy.” Id. ¶ 177. Mr. Schmandt testifies that modifying Jiang’s tree search engine 74 to comprise two digital signal processors, where a first processor performs distance calculations and the second performs other speech recognition tasks, yields the benefit of given that using two digital signal processors allows the first processor to increase accuracy by reducing the pruning threshold, and given that the pruning threshold can be set to any desired level based on a desired error rate, a person of ordinary skill in the art would have set the pruning threshold to zero for the benefit of increasing recognition accuracy and lowering the error rate as much as possible. With the pruning threshold set to zero, the combination does not perform pruning, even under Mr. Schmandt’s combination theory.” slip op. at 35

  Patent outcomesUS 10,062,377 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,062,377
• Nespresso USA, Inc. v. K-Fee System GmbHInstitution denied
  PTAB · Jun 10, 2024 · IPR2024-00239 · APJ Jon B Tornquist · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–20 would have been obvious over either asserted combination.

  RulingsInstitution decision

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

    “review. 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2022). The standard for institution is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless the Director determines . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons set forth below, Petitioner does not demonstrate a reasonable likelihood of prevailing with respect to any of claims 1–20 of the ’094 patent. Accordingly, we do not institute an inter partes review.” slip op. at 2

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

    “The express language of the claim, however, does not support using the “central axis” as the measuring point for determining if one object is laterally offset from another. For example, the term “central axis” is not used in the relevant claim phrase and the dictionary definitions of “lateral” relied upon by Petitioner and Mr. Jobin to show the ordinary meaning of the claim term do not suggest that the “central axis” is the reference point for determining whether a first object is “laterally offset” from a second object. As such, we determine that the claim language supports Patent Owner’s construction requiring that the “groove” be “off to the side” of the entire mandrel, and not merely the “central axis” of the mandrel. Prelim. Resp. 54. We must also resolve whether the entire groove is required to be laterally offset from the chamfered mandrel, or only a portion of it. On this point, the claims do not use the term “portion,” but rather specify that the “groove” is “laterally offset from the chamfered mandrel.” Ex. 1001, 14:4– 5, 15:19–20. This suggests that the entire “groove” must be offset from the “chamfered mandrel.”” slip op. at 10

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

    “That argument, however, does not explain why it would have been obvious to laterally offset the groove of Yoakim from the chamfered mandrel. Rather, as demonstrated by Mr. Jobin’s testimony, this argument relates to the general use of a sealing member in a groove, to the extent it was ultimately determined that such a configuration is not expressly disclosed in Yoakim. Id.; Ex. 1003 ¶ 296 (“It would have been obvious to one skilled in the art to position a sealing member in a groove to solidify the between counter-force portion 161 and engaging portion 157 in Figure 35 of Yoakim is more appropriately identified as the claimed “groove.” Prelim. Resp. 60–61. We need not resolve this issue, however, as Petitioner does not persuasively demonstrate that either potential “groove” is “laterally offset” from the chamfered mandrel. placement of the seal and improve its sealing stability and strength. Furthermore, it would have been obvious to one skilled in the art to utilize a groove and seal configuration in the brewing head . . . .”) (emphasis added). Even if we interpret the recited portion of the Petition as an argument for placing the groove entirely to the side of the mandrel in Yoakim, the Petition does not persuasively explain why one of ordinary skill in the art would have sought to do so. In Figure 35 of Yoakim, the seal and groove, as well as an elastic loading means, act as a valve means to control the level of pressure exerted in the capsule and “optimize interaction of water and the ground coffee particles to obtain a good extraction of the coffee and aroma compounds.” Ex. 1004 ¶¶ 370–372, 382, 396–398, 434–436, 445; Ex. 1003 ¶¶ 286–290; Pet. 63. These are the same beneficial properties relied upon by Petitioner to support the proposed combination, and Petitioner does not persuasively explain why one of ordinary skill in the art would have modified Yoakim in order to achieve results that are already obtained in the identified embodiment. Pet. 63. In view of the foregoing, we determine that Petitioner does not demonstrate a reasonable likelihood that claims 1 and 12 would have been obvious over the combined disclosures of Yoakim, Jarisch 929, and Rossi.” slip op. at 20

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,542,094
• Mahle Behr Charleston Inc. v. Frank Amidio CatalanoOther
  PTAB · May 24, 2024 · IPR2023-00861 · APJ Christopher M Kaiser · IPR · Remand

  The Board denied institution because Petitioner did not show a reasonable likelihood that any challenged claim was unpatentable under any asserted ground.

  RulingsRemand decision

  • RemandOther

    “Accordingly, the Director instructed us to “determine whether Petitioner has demonstrated that Figure 1 of Godefroy ‘is clear on its face’ or would have reasonably suggested the placement of Godefroy’s sacrificial anode ‘within 10 inches’ of the hot liquid inlet.” Id. at 9. “In making this determination,” the Director instructed us to “consider whether the expert testimony provides sufficient ‘technical detail, explanation, or statements supporting why the expert determines that the feature in question was required or would have been obvious based on the prior art disclosure.’” Id. In addition, although the Director’s decision “is limited to [our] application of Hockerson to the grounds in the Petition involving Godefroy,” the Director instructed us also to “consider what effect, if any, this decision has on the other asserted grounds.” Id. Finally, the Director instructed us to “set forth [our] interpretation” of “the limitation ‘within 10 inches of a hot liquid inlet to the radiator.’” Id. at 8 n.4.” slip op. at 4

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

    “original decision, the Director’s decision, and the evidence currently of record, we determine that Petitioner has not shown a reasonable likelihood that it will prevail in showing that at least one of the challenged claims is unpatentable. Accordingly, we do not institute an inter partes review of any challenged claim based on any ground asserted in the Petition. IV. ORDER For the reasons given, it is: ORDERED that, pursuant to 35 U.S.C. § 314, the Petition is denied, and no inter partes review is instituted.” slip op. at 19

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

    “evidence. The challenged claims require that a sacrificial anode be placed within a certain distance—10 inches—of the hot liquid inlet, and, because the inlet has some non-zero size, it might be possible for an anode to be within that distance from some parts, but not from all parts, of the inlet. Accordingly, specifying the center axis of the inlet as the point from which to measure the distance to the anode improves on the plain words of the claim in terms of achieving the claim’s objective of placing the anode within a specified distance of the inlet. Moreover, when discussing the distance from the inlet to the anode, the specification of the ’494 patent uses the language “within 10 inches in any direction of the center axis of the inlet connection.” Ex. 1001, 7:61–64. Thus, the intrinsic evidence supports adopting Petitioner’s claim construction. Petitioner’s declarant, Dr. Medlin, relies on Petitioner’s proposed construction. See, e.g., Ex. 1004 ¶¶ 20 (noting that the construction “within 10 inches of the center axis of [a] hot liquid inlet” “ha[s] been adopted by Petitioner”), 96 (“the sacrificial anodes contained in each of the turbulators 2 would be placed within 10 inches of a center axis of a hot liquid inlet to the radiator of Tomosada”), 144 (“A POSITA would understand from Figure 1 that the sacrificial anode 14 is within 10 inches of a center axis of a hot liquid inlet”), 267 (“These teachings would further motivate a POSITA to located the sacrificial anode 12 within 10 inches of a center axis of the hot liquid inlet.”). This support for Petitioner’s proposed construction provides further reason for us to adopt it. Because it is supported by the intrinsic evidence of record, because Patent Owner proposes no alternative construction, and because Petitioner’s expert supports it, we adopt the construction of “within 10 inches of a hot liquid inlet to the radiator” that Petitioner proposes. Thus, we construe this term as “within 10 inches of the center axis of a hot liquid inlet to the radiator.” In other words, when discussing the distance between a hot liquid inlet and a sacrificial anode, we interpret “hot liquid inlet” as “center axis of the hot liquid inlet.”” slip op. at 5

  • BurdenNot shown unpatentable

    “Inherency may be relied upon in arguing either anticipation or obviousness. Schering, 339 F.3d at 1377 (applying inherency in an anticipation context); Par Pharma. Inc. v. TWI Pharma., Inc., 773 F.3d 1186, 1195–96 (Fed. Cir. 2014) (applying inherency in an obviousness context). In both cases, however, “[t]he mere fact that a certain thing may result from a given set of circumstances is not sufficient.” Therasense, Inc. v. Becton, Dickinson & Co., 593 F.3d 1325, 1332 (Fed. Cir. 2010). Instead, “the limitation at issue necessarily must be present, or the natural result of the combination of elements expressly disclosed by the prior art.” Par Pharma., 773 F.3d at 1195–96. Here, Petitioner has not shown sufficiently that, in Godefroy, the sacrificial anode necessarily is placed within 10 inches of the center axis of the hot liquid inlet. Dr. Medlin testifies that Figure 1 of Godefroy shows that “an entirety . . . or at least a significant portion of the sacrificial anode 14, is within 10 inches of a center axis of the inlet.” Ex. 1004 ¶ 144. But we cannot say that Figure 1 of Godefroy is clear on its face, or reasonably suggests, that this is necessarily the case. There are no dimensions shown on Figure 1, so it is unclear from the figure what the diameter of pipe 12 is. If that diameter is larger than 20 inches, then it simply is untrue that “sacrificial anode 14 is . . . necessarily placed within 10 inches of a center axis of a hot liquid inlet to the radiator,” as Dr. Medlin testifies. Id. ¶ 361. As noted above, neither Petitioner nor Dr. Medlin relies on the hot liquid inlet of Godefroy having any particular diameter, and Godefroy is silent as to the diameter of its inlet. Pet. 69–70; Ex. 1004 ¶¶ 144, 359–361, 381–382, 406–408; Ex. 1008, 1–15. Moreover, as Patent Owner notes, there is a wide range of sizes of radiators, including automobile radiators, available. Prelim. Resp. 3–5; Exs. 2001–2003. In the absence of any testimony or other evidence that tends to show that radiator inlet pipes necessarily have diameters less than 20 inches, Petitioner has not shown sufficiently that the diameter of Godefroy’s inlet pipe is small enough to ensure that any portion of the anode necessarily is within 10 inches of the center axis of the inlet.” slip op. at 11

  Claim constructioncites Phillips
• Canon U.S.A., Inc. / Canon Inc. v. Slingshot Printing LLCAll claims unpatentable
  PTAB · May 20, 2024 · IPR2022-01541 · APJ Jon B Tornquist · IPR · Final written decision

  Claims 1–7, 9, 10, 20–22, and 24 are unpatentable as obvious over Hamafuku, Whitman, and Imanaka, with Cleland added for claim 5.

  RulingsFinal written decision

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

    “Upon review of the prior art of record, we determine that no claim terms require construction for purposes of this Final Written Decision. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 11

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Upon review of the prior art of record, we adopt Petitioner’s definition of a person of ordinary skill in the art as it is consistent with the prior art of record, but note that neither party contends the outcome of this case depends on whether a person of ordinary skill could include an individual with a degree in Materials Science.” slip op. at 10

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

    “In this case, there was a known desire to increase nozzle pitch in inkjet printheads, Imanaka’s heater and nozzle configuration had been used in the art to achieve this goal, and there is no suggestion that combining the teachings of Hamafuku, Whitman, and Imanaka was beyond the skill of an ordinarily skilled artisan. See Intel Corp. v. PACT XPP Schweiz AG, 61 F.4th 1373, 1381 (Fed. Cir. 2023). Thus, we credit the testimony of Mr. Curley that one of ordinary skill in the art would have sought to use Imanaka’s heater and nozzle pitch in Hamafuku in order to provide a more compact and higher density printhead. Ex. 1002 ¶¶ 404–05. A conclusion of obviousness requires a reasonable expectation of success. Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1365 (Fed. Cir. 2016). This inquiry asks whether one of ordinary skill in the art would have had a reasonable expectation of combining the references to achieve what is claimed in the patent-at-issue. Id. at 1367. The inquiry does not look to whether unclaimed elements or functions would or would not also be achieved, or whether “one would reasonably expect the prior art reference to operate as those references intended once combined.” Id.” slip op. at 42

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

    “As noted by Patent Owner, the components of Imanaka are made of silicon-based materials, manufactured using thin film technology. PO Resp. 53–54 (citing Ex. 1008, 6:50–61). We are not persuaded, however, that Imanaka’s preference for silicon-based materials would teach away from, or otherwise discourage, one of ordinary skill in the art from combining Hamafuku, Whitman, and Imanaka. Imanaka does not suggest that failure to use silicon-based materials would result in an inoperable device. Rather, Imanaka states that use of silicon-based materials may “improve the mechanical characteristics” and “reliability” of “the liquid discharge head.” Ex. 1008, 6:50–61. Given the considerable increase in printhead nozzle pitch and print resolution provided by Imanaka’s heater and nozzle pitch configuration, we are not persuaded that a failure to capture the same improvement in mechanical characteristics and reliability from the use of silicon-based materials would prevent one of ordinary skill in the art from implementing Imanaka’s nozzle pitch in Hamafuku and Whitman or counsel against this modification.” slip op. at 41

  Patent outcomesUS 7,152,951 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,152,951

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.