• Lenovo (United States) Inc. / Motorola Mobility LLC v. Theta IP, LLCInstituted
  PTAB · Oct 23, 2023 · IPR2023-00698 · APJ Thomas L Giannetti · IPR · Institution

  The Board instituted review of claims 7–11, 13, and 19–21 on all asserted grounds, finding a reasonable likelihood of prevailing for claims 11 and 13.

  RulingsInstitution decision

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

    “Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the petition “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.” For the reasons stated below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one claim. We, therefore, institute inter partes review as to all of the challenged claims of the ’202 patent and all of the asserted grounds of unpatentability.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “The two proposals are materially similar in the education requirement, but differ marginally in professional experience required (three versus five years). See supra. While we are persuaded, on the present record, that both Petitioner’s and Patent Owner’s proposals are consistent with the problems Petitioner’s proposal is a better reflection of the level of skill in the prior art, and we therefore adopt it for this decision. Our decision would not change, however, if we had applied Patent Owner’s proposed level of ordinary skill.” slip op. at 12

  • BurdenMixed

    “Figure 6 of Rauhala has been annotated by Patent Owner to show that the parallel connection (outlined in red) including resistors R1, R2. R3 and switches ka, kb is outside the signal path (highlighted in yellow) through differential amplifier 61. Prelim. Resp. 38. Petitioner identifies R1, R2, R3 and switches ka and kb as the claimed variable impedance. See, e.g., Pet. 39–41. The Petition (and the supporting Baker Declaration) do not explain adequately how, under this interpretation by Petitioner and its expert, Rauhala meets the adjusting an impedance “in the signal path” limitation. See Prelim. Resp. 39–41. For the reasons given, therefore, even if we were to disagree with Patent Owner’s construction of “impedance,” we agree with Patent Owner that Petitioner fails to demonstrate sufficiently that Rauhala meets the limitation in claims 7 and 19 requiring “dynamically adjusting one or more of an impedance . . . in the [receiver] signal path.” For the reasons given, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing on its challenge to claims 11 and 13 as anticipated by Rauhala. We further determine that Petitioner has not demonstrated a reasonable likelihood of prevailing on its challenge to claims 7 and 19 as anticipated by Rauhala.” slip op. at 26

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

    “We disagree. Noting in the language of the claims requires that these method steps be performed by separate components, or that these method steps “provide two different channel indications at once” (Prelim. Resp. 38), only that they be performed as stated in the claim. In that respect, this case is distinguished from In re Robertson, where the Federal Circuit determined that the “third fastening means” required by the claims was not inherently disclosed by the prior art. Robertson, 169 F.3d at 745 (“The [prior art] patent does not expressly include a third fastening means for disposal of the diaper, as claim 76 requires.”). In further contrast to this case, Robertson addressed mechanical elements of a product (fasteners for disposable diaper), not steps in a process. More pertinent to our facts is the Federal Circuit’s decision in Microsoft Corporation v. Uniloc, 2017 LLC, No. 2021- 2039, 2022 WL 11531235 (Fed. Cir. Oct. 20, 2022), that addresses steps in a method claim. Reversing the Board’s determination that a petitioner had 6 See Ex. 1001, 14:5–6 (claim 7), 14:41–42 (claim 11), 15:18–19 (claim 13), and 17:28–29 (claim 19). Circuit concluded that the Board had misconstrued the claims to require separate acts: We agree with [petitioner] that the Board misconstrued the claims to require that the comparing and determining step are performed by two separate acts in a certain order. Nothing in the intrinsic record requires such a narrow construction, and neither party presented this construction to the Board. Without any such evidence, we decline to impose such a narrow claim construction. Microsoft Corp., 2022 WL 11531235, at *3 (citation and footnote omitted). We find that at this stage, Petitioner has made a sufficient showing that this limitation is met by Rauhala. Pet. 31–33; Baker Decl. ¶¶ 111–114.” slip op. at 22

  § 102 anticipation§ 103 obviousnesscites Graham
  Patents in suitUS 10,524,202
• Precision Planting, LLC / Agco Corp. v. Deere & CompanyNo claims unpatentable
  PTAB · Nov 30, 2020 · IPR2019-01044 · APJ Timothy J Goodson · IPR · Final written decision

  Claims 1–8 were not shown unpatentable under § 103 over Hedderwick, Koning, and Benac because Petitioner did not establish motivation to combine or a reasonable expectation of success.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedPetitioner expert discountedDecided for patent owner

    “have had either (1) a bachelor’s degree plus four years of experience in mechanical engineering, agricultural engineering, or a related field or (2) a master’s degree plus two years of experience in mechanical engineering, agricultural engineering, or a related field.” Pet. 42 (citing Ex. 1002 ¶¶ 19– 20). In the testimony the Petition cites in support of that proposal, Mr. Prairie lists factors that are typically considered in assessing the level of ordinary skill in the art, and then states “[b]ased on these factors together with my experience and expertise,” his opinion of the level of ordinary skill in the art is the same as Petitioner proposes. Ex. 1002 ¶¶ 19–20. This conclusory testimony 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.”).” slip op. at 12

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

    “construed using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b).” See Changes to the Claim Construction Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340, 51,358 (Oct. 11, 2018) (amending 37 C.F.R. § 42.100(b) effective November 13, 2018) (now codified at 37 C.F.R. § 42.100(b) (2019)).6 That standard “includ[es] construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” Id.; see also Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). We determine that no terms require express construction to resolve the parties’ dispute. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (claim terms need only be construed “to the extent necessary to resolve the controversy”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. in the context of an inter partes review). V. OBVIOUSNESS OVER HEDDERWICK, KONING, AND BENAC” slip op. at 14

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner

    “Patent Owner’s expert, Dr. Glancey, explains that [i]f a wheel is used to load and place seeds within a moving belt with brush hairs, the wheel must be able to disengage from seeds while the seeds remain in between brush hairs. If the wheel maintains contact with the seed after the seed has moved into the brush hairs, the wheel will continue to apply force to the seed and eject or remove the seed from the profile of the brush hairs . . . . Ex. 2200 ¶ 223. Dr. Glancey testifies, credibly, that in Petitioner’s combination, seeds would have been rejected from the belt because, as the paddle wheel rotates, seeds “would be scooped through the belt.” Id. ¶ 225.” slip op. at 31

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

    “way the references use endless members in the form of brush belts and paddle wheels, versus the way Petitioner uses those components in the proposed combination. Contrary to Petitioner’s and Mr. Prairie’s assertions, the proposed combination does not merely apply known techniques to a known device, because none of the cited references use brush belts and paddle wheels in the manner Petitioner proposes. As discussed in greater detail below, Benac teaches that a paddle wheel can be used to ensure that seeds jammed in vacuum holes are released reliably, and then dropped to the ground. Benac does not address brush belts as an endless member and, therefore, does not teach that paddle wheels can be used to guide seeds into the bristles of a brush belt, as Petitioner proposes. See Pet. 64. And Koning does not teach a brush belt that captures seeds released from above, as Petitioner and Mr. Prairie propose. See Pet. 61–62; Ex. 1002 ¶ 104; Ex. 2193, 190:10–191:3; Ex. 2263, 167:21–170:9. Rather, Koning’s brush belt maintains the relative position of potatoes lying on a conveying surface by holding them from above while the conveyor moves them to the furrow. Ex. 1004, 3:16–24, 5:3–14, Fig. 4. Petitioner’s arguments do not adequately account for these differences between the references’ use of a brush belt as an endless member and paddle wheels versus the proposed combination. Moreover, Patent Owner points out problems ordinarily skilled artisans would have encountered in attempting to combine the references as Petitioner proposes. Petitioner does not persuasively explain how those issues could have been overcome, and instead simply asserts, essentially, that ordinarily skilled artisans could have figured it out. See, e.g., Ex. 1135 ¶ 80. It is Petitioner’s burden to establish that ordinarily skilled artisans would have been motivated to combine the success in doing so. See 35 U.S.C. § 316(e); In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1376 (Fed. Cir. 2016). Petitioner’s arguments and evidence do not carry that burden.” slip op. at 28

  Patent outcomesUS 8,813,663 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,813,663
• Precision Planting, LLC / Agco Corp. v. Deere & CompanyNo claims unpatentable
  PTAB · Nov 30, 2020 · IPR2019-01046 · APJ Timothy J Goodson · IPR · Final written decision

  Claims 1 and 3 were not shown unpatentable over Hedderwick, Koning, and Yamahata under § 103 because Petitioner did not establish motivation to combine or a reasonable expectation of success.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “Based on the evidence and arguments of record, we determine that the evidence favors Patent Owner’s proposed level of skill. Our determination is primarily based on Dr. Glancey’s analysis and reasons summarized above, as well as the prior art of record and the sophistication of the technology of the ’199 patent. We have considered Mr. Prairie’s opinion, but we give that testimony minimal weight due to the lack of supporting explanation. Accordingly, we adopt Patent Owner’s proposed level of ordinary skill in the art. Specifically, we determine that a person of ordinary skill in agricultural engineering, or a similar field, and two years of experience designing agricultural products or related machinery. Alternatively, a person of ordinary skill in the art would have had five years of experience designing agricultural products or related machinery, without a four-year undergraduate engineering degree.” slip op. at 13

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

    “IV. CLAIM CONSTRUCTION “In an inter partes review proceeding, a claim of a patent . . . shall be construed using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b).” See Changes to the Claim Construction Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340, 51,358 (Oct. 11, 2018) (amending 37 C.F.R. § 42.100(b) effective November 13, 2018) (now codified at 37 C.F.R. § 42.100(b) (2019)).7 That standard “includ[es] construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” Id.; see also Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). We determine that no terms require express construction to resolve the parties’ dispute. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (claim terms need only be construed “to the extent” slip op. at 14

  • BurdenNot shown unpatentable

    “Ex. 1135 ¶ 51. Yet it is Petitioner’s burden to show motivation and reasonable expectation of success for the proposed combination, not Patent Owner’s burden to show that the prior art demonstrates the futility of the proposed combination. See 35 U.S.C. § 316(e); In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1376 (Fed. Cir. 2016). Here, Petitioner’s affirmative showing on motivation and reasonable expectation of success for using Koning’s brush belt in the proposed combination is unpersuasive for the reasons discussed above. And Patent Owner’s evidence of difficulties an ordinarily skilled artisan would have expected to encounter in that proposal serves to highlight the issues that Petitioner’s showing ignores. Petitioner additionally contends that Patent Owner’s arguments are based on the erroneous premise that an ordinarily skilled artisan must be able to physically combine the references. See Pet. Reply 7 (citing In re Mouttet, 686 F.3d 1322, 1332–33 (Fed. Cir. 2012)). We disagree. Patent Owner’s arguments, summarized above, simply point out that an ordinarily skilled artisan would not have expected success in combining the references’ teachings in the way Petitioner proposes. Motivation to combine and reasonable expectation of success are properly assessed with reference to the combination as Petitioner has framed it. The Federal Circuit has explained that doing so is not inconsistent with Mouttet. See Samsung, 925 F.3d at 1382–83 (“We will not fault the Board for analyzing Petitioners’ obviousness grounds in the way presented in the Petition.”).” slip op. at 34

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “Petitioner’s and Mr. Prairie’s analysis does not acknowledge, much less bridge, the gap between Koning’s use of a brush belt to hold potatoes from above as they lie on a conveying surface, versus the brush belt’s use in above.10 During his deposition, Mr. Prairie resisted agreeing that the potatoes are lying on the conveyor in Koning, testifying that he takes from Koning’s description that “they are captured within the belt with brush hairs. And that there is some weight that’s along the conveying member 23.” Ex. 2193, 96:24–99:25. Mr. Prairie testified that he “do[es]n’t believe the brush hairs support the full weight of the potatoes,” but that Koning did not provide him sufficient information to answer whether the conveying member supports the majority of the weight of the potatoes. Id. at 106:22–107:21. In our view, it is clear from Koning’s description that the potatoes lie on the conveyor and the purpose of the brush belt is to maintain their position relative to each other while they are moved by the conveyor. Ex. 1004, 3:16–24, 5:3–14, Fig. 4; see also Ex. 2205 ¶¶ 140–141 (Patent Owner’s expert, Dr. Glancey, testifying that a simple mechanical analysis shows that in Koning, about 87% of the potatoes’ weight is supported by the conveying member). Mr. Prairie’s refusal to acknowledge the differences between the brush belt’s function in Koning versus the proposed combination undermines the credibility of his testimony that the proposed combination would have been a simple application of a known technique to a known device. 10 See WBIP, LLC v. Kohler Co., 829 F.3d 1317, 1327 (Fed. Cir. 2016) (noting expert testimony that supported the absence of a motivation to combine: “[I]f I can equate this one to kind of a simple analogy, if you’re trying to build a piece of furniture. What’s a typical thing? You put on a piece of wood. You take a nail, and you hit the nail with a hammer. In control terms, what Mr. Phipps is suggesting is that you put the hammer on the workbench, pick up the piece of furniture and bash the piece of furniture onto the hammer. It’s totally backwards from what I believe one of skill in the art would even attempt . . . .”). have been simple for an ordinarily skilled artisan to adapt Koning’s brush belt for use in the proposed combination, where seeds are deposited onto the brush belt from above—is further undermined by his testimony that he “can’t recall a time where I’ve seen a seed being dropped into a brush belt.” Ex. 2193, 113:5–9; see also Ex. 2263, 81:2–12 (“Q. And you never attempted to drop a seed onto a moving brush belt to see whether that would be inserted into the brush belt, correct? A. As I stated, for the purposes of this case, I did not do any physical experimentation with a moving brush belt as I didn’t feel it was necessary. The prior art discloses sufficient information.”) (objection omitted). Mr. Prairie has “had some industrial design projects where we’ve had to utilize brushes for various applications,” but he “ha[s] not used a brush belt to convey seed.” Ex. 2194, 297:6–16. Mr. Prairie testified that “prior to writing this declaration, brush belt technology was not a specific area that I study, that I was researching.” Ex. 2263, 79:6–9. Indeed, during his initial deposition in this case, the only specific example of a moving brush belt Mr. Prairie could recall seeing was Patent Owner’s ExactEmerge product. Ex. 2193, 108:6–110:10. The basis for Mr. Prairie’s opinion, that a seed would be expected to enter a moving brush belt in the proposed combination, appears to only be Koning itself. Ex. 1002 ¶¶ 79–81; Ex. 2193, 116:12–19, 118:7–23; Ex. 2263, 159:5–160:2. When asked at his deposition, Mr. Prairie did not explain any other engineering analysis he performed to make that determination. Ex. 2193, 114:23–117:12. Mr. Prairie testified that he “did not operate a brush belt for this declaration because [he] didn’t feel it was necessary to make my assessments” and he “did not do study or experimentation on a brush belt as I did not feel it was necessary.” unpersuasive because, as discussed above, Koning does not teach using a brush belt to receive and convey seeds that have been dropped onto it from above. Mr. Prairie does not account for that difference by explaining why an ordinarily skilled artisan would expect Koning’s brush belt to effectively capture and carry seeds dropped from above, as in the proposed combination.” slip op. at 26

  Patent outcomesUS 9,480,199 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,480,199
• DISH Network Corporation / DISH Network L.L.C. v. Customedia Technologies, L.L.C.Some claims unpatentable
  PTAB · Jul 25, 2018 · IPR2017-00724 · APJ Michael W Kim · IPR · Final written decision

  Claims 19 and 26 are unpatentable: claim 19 as anticipated by Hite and claim 26 as obvious over Hite and Baji; claims 32–36 and 41 were not shown unpatentable.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert creditedDecided for patent owner

    “Petitioner, with supporting testimony from Dr. Negus, argues that a person of ordinary skill in the art would have combined Hite’s system with Hill’s teaching of a high access partition in order to increase storage efficiency and address Hite’s goal of providing “advertisers with less waste and greater cost effectiveness.” Pet. 60; Ex. 1008 ¶ 599 (quoting Ex. 1009, 3:21–35; citing Ex. 1010, 4:54–57). According to Petitioner and Dr. Negus, one of ordinary skill would have had reason to combine Hite and Hill— using Hill’s “high access partition allocated for high access data storage” to “store the high access advertisement data of Hite”—to “yield[] the completely predictable and desirable result” of “decrease[d] read and write times of advertisement data stored in Hite’s” storage devices, including optional video storage device 456. Pet. 60, 65; Ex. 1008 ¶ 599; see also Tr. 107:10–15 (asserting the same). Patent Owner argues Dr. Negus’ assertion that advertising data is” slip op. at 26

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

    “at least one addressable and reserved storage space is a partitioned area of a hard disk drive.” Ex. 1003, 49:55–58. Petitioner refers to Hite’s disclosures that its storage devices “can be . . . disks.” Pet. 27–28 (quoting Ex. 1009, 12:6–11; citing Ex. 1009, 10:44–49). Dr. Negus testifies that “‘disks’ at the alleged time of the invention of the ’494 patent were commonly known as ‘hard disk drives.’” Ex. 1008 ¶ 680 (emphases omitted). Petitioner and Dr. Negus represent that a person of ordinary skill in the art would, therefore, “have understood Hite to disclose the use of an entire ‘disk’ (or ‘hard disk’) as the ‘Video Storage Device’” or the RD. Pet. 28 (citing Ex. 1008 ¶ 680). Petitioner, with supporting testimony from Dr. Negus, further contends that “[w]hen the entire ‘hard disk’ storage space is undivided, it is within the broadest reasonable interpretation of the claimed ‘partitioned area of a hard disk drive.’” Pet. 28; Ex. 1008 ¶¶ 680, 683. We disagree. Based on Hite’s explanation that “[t]he storage devices used to implement” its system “can be . . . disks” as well as the evidence before us that “disks” or “hard disks” were known as “hard disks drives” at the relevant time, we agree with Petitioner that an ordinarily skilled artisan would have understood Hite to use an entire disk, hard disk, or hard disk drive for OVS Device 456 and for the RD. Ex. 1009, 10:44–49, 12:6–11; Ex. 1008 ¶ 680; see Ex. 3002 (MICROSOFT COMPUTER DICTIONARY (5th ed. 2002)), 246 (explaining, within definition of “hard disk,” that a “hard disk” is “[a]lso called: hard disk drive” and defining “hard disk drive” as “See hard disk” (emphases omitted)). We part ways with Petitioner, however, in its proffered conclusion that such an “entire,” “undivided” hard disk or hard disk drive falls within the ordinary meaning of “partitioned area of a hard disk drive.” Pet. 28; Ex. 1008 ¶¶ 680, 683; see Ex. 3001, 1087 (defining “partition” as “divide into parts”). The claim language expressly requires a “partitioned area of”—not a whole, entire, or undivided—hard disk drive. Thus, we disagree that an entire hard disk or hard disk drive constitutes the “partitioned area of a hard disk drive” required by claim 32. Accordingly, we are unpersuaded that Hite discloses “wherein said at least one addressable and reserved storage space is a partitioned area of a hard disk drive,” as recited in dependent claim 32. Thus, Petitioner has not met its burden of showing, by a preponderance of the evidence, that dependent claim 32 is anticipated by Hite.” slip op. at 20

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed

    “e. Conclusion Upon review of Petitioner’s evidence and analysis, and taking into account Patent Owner’s arguments and evidence, we determine that Petitioner has met its burden of showing, by a preponderance of the evidence, that independent claim 19 is anticipated by Hite. 4. Dependent Claim 26 Claim 26 depends from independent claim 19 and recites, in relevant part, “processing circuitry configured to dynamically merge the particular advertising data with digital media content that is pre-stored in said at least one storage device.” Ex. 1003, 49:6–9. The plain claim language unambiguously and expressly requires that it is the “digital media content” that must be “pre-stored.” Yet in addressing the limitation, the Petition represents, and Dr. Negus testifies, that Hite discloses “‘particular advertising data’ that is ‘pre-stored in said at least one storage device’ (prior to the ‘dynamic merging’ with ‘digital media content’),” because commercials targeted for a display site or consumer according to CID codes are stored in the RD or video storage device. Pet. 26 (emphasis added); Ex. 1008 ¶ 646 (emphasis added). These assertions that Hite’s system pre-stores what Petitioner identifies as the “particular advertising data,” targeted commercials selected using CID codes, fail to address or show adequately that Hite discloses “digital media content that is pre-stored in said at least one storage device,” as claim 26 explicitly requires. Thus, we are unpersuaded that Hite discloses “digital media content that is pre-stored in said at least one storage device,” as recited in dependent claim 26. Accordingly, Petitioner has not met its burden of showing, by a preponderance of the evidence, that dependent claim 26 is anticipated by Hite.” slip op. at 19

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundMotivation foundMixed

    “We agree with Patent Owner that Petitioner’s proffered rationale for combining Hite with Hill is not adequately supported by the record. Specifically, we agree with Patent Owner that Petitioner’s assertion that advertising data is “high access” data is a conclusory statement that fails to “articulate specific reasoning, based on evidence of record” to support an obviousness determination. In re: Magnum Oil Tools Int’l, Ltd., 829 F.3d at 1380. Although Hite discusses preempting broadcast commercials with stored commercials at broadcast breaks (see Ex. 1009, 7:24–30), Petitioner does not cite any portion of Hite, or provide any evidence at all, that explains how frequently the advertising data would have been accessed. Accordingly, because Petitioner has not shown adequately that it would have been obvious to one of ordinary skill in the art to combine Hite and Hill to arrive at “addressable and reserved storage space for storing the particular advertising data,” as recited in independent claim 19, we are unpersuaded that Petitioner has met its burden of showing, by a preponderance of the evidence, that independent claim 19 is obvious over Hite and Hill.” slip op. at 27

  Patent outcomesUS 9,053,494 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,053,494
• DISH Network Corporation / DISH Network L.L.C. v. Customedia Technologies, L.L.C.Some claims unpatentable
  PTAB · Jul 25, 2018 · IPR2017-00717 · APJ Michael W Kim · IPR · Final written decision

  Claims 1–4, 6, 7, 19, 23, 24, and 27 are unpatentable as anticipated by Hite or obvious over Hite; claims 16–18 and 28 were not shown unpatentable.

  RulingsFinal written decision

  • BurdenMixed

    “preponderance of the evidence that the specified claims are unpatentable over the cited prior art. 35 U.S.C. § 316(e). We previously instructed Patent Owner that “any arguments for patentability not raised in the [Patent Owner Response] will be deemed waived.” Paper 10, 6; see also 37 C.F.R. § 42.23(a) (“Any material fact not specifically denied may be considered admitted.”).5 Additionally, the Board’s Trial Practice Guide states that the Patent Owner Response “should identify all the involved claims that are believed to be patentable and state the basis for that belief.” Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012). There are arguments and evidence advanced by Petitioner to support its positions, though, that Patent Owner chose not to address in either its Preliminary Response (Paper 7) or Response (Paper 22), or that was not addressed in the Decision on Institution (Paper 9). We have evaluated those unrebutted arguments and the evidence in support, and we find the Petitioner persuasively established, with sufficient evidence, the manner in which the asserted prior art teaches corresponding elements of the claims. Pet. 18–66 (citing Exs. 1008–1010) (unchallenged portions only). Based on the preponderance of the evidence before us, we conclude that the prior art identified by Petitioner describes all limitations of the reviewed claims that were not contested by the Patent Owner in either its Preliminary Response 5 For the reasons noted in our Order (Paper 43, 2–3), however, for this proceeding, we will also consider the arguments set forth in Patent Owner’s Preliminary Response. (Paper 7) or Response (Paper 22). In re NuVasive, 841 F.3d 966, 974 (2016). We address only the contested limitations below.” slip op. at 7

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

    “correspond properly to the claimed storage device, because it is not capable of recording programming content selected by a user for later playback. PO Resp. 14. We are not persuaded by this argument because, as discussed above, we are persuaded that a proper construction of “storage device” does not require recording programming content for later playback. We are persuaded that Petitioner has shown sufficiently that Hite’s OVS Device 456 corresponds properly to the “at least one storage device,” as recited in each of independent claims 1 and 19.” slip op. at 12

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed

    “We agree with Patent Owner. Petitioner does not explain sufficiently, and the cited portions of Hite do not disclose, how the method by which the progression is made from “children’s aspirin” to “children’s chewable vitamins.” Dr. Negus’s testimony is similarly unavailing, as the only cited paragraph that plausibly supports their position, paragraph 484, is conclusory and unsupported. Absent such explanation or cited disclosure, we are unpersuaded that Petitioner has shown adequately that the recited “key word” is a part of the progression, as required to meet the claim. 8 At least a portion of Dr. Negus’s testimony aligns with this testimony of Dr. Kesan. Ex. 1008 ¶ 669 (“An exemplary targeting characteristic to optimize advertising format scenarios within Hite is the ‘context code’ that ‘could be appended to the commercial’s CID code’ to be ‘compared with program identification codes appended to the program signals’ such that a ‘commercial is displayed if it is in a specific channel or network or show’ as in the example of ‘skiing equipment commercials would be shown during a skiing down hill racing competition’ (emphasis added, see, for example, Ex. 1009 at 4:34–40).”. Upon review of Petitioner’s evidence and analysis, and taking into account Patent Owner’s arguments and evidence, we determine that Petitioner has not met its burden of showing, by a preponderance of the evidence, that dependent claim 4 is anticipated by Hite.” slip op. at 22

  • Obviousness (§103) › KSR rationalesUnpatentableDecided for petitioner

    “Essentially, Patent Owner assertions are the same as those advanced for the anticipation ground for the same claim. We agree with Patent Owner’s assertions for the same reasons as set forth above. Having said that, the assertions are misplaced, because this is an obviousness ground, and Patent Owner does not address the modification to Hite proposed by the Examiner. To that end, we are persuaded by Petitioner that it would have been obvious to code Hite’s viewer responses using keywords, as we agree that such a technique was common and well known at the time of the invention, and that it would have been an obvious design choice. Ex. 1008 ¶ 486. Indeed, Patent Owner acknowledges this possibility, as they do not assert that using key words would not have been known, just that it may not have been preferable under certain circumstances. PO Resp. 53 (citing Ex. 2003 ¶ 92). Insofar as Patent Owner may be asserting that such a preference teaches away from a modification, we have considered it, but determine that it is outweighed by the evidence of the ubiquity of key word searches at the time of the invention. Indeed, we are unclear as to how, other than using numbers or key words, such searches could have been performed. KSR, 550 U.S. at 421 (“When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense.”).” slip op. at 39

  Patent outcomesUS 9,053,494 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR
  Patents in suitUS 9,053,494
• Oracle America Inc. / Oracle Corporation et al. v. Intellectual Ventures I LLCSome claims unpatentable
  PTAB · Jan 8, 2018 · IPR2016-01434 · APJ Michael W Kim · IPR · Final written decision

  Claims 11–13 and 15–20 are unpatentable as obvious; claim 14 was not shown unpatentable because the cited personal notes were not “content contributed.”

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “While the parties use slightly different language, we are unable to discern any substantive differences between the proffered levels of skill and basic qualifications of a person of ordinary skill in the art. Accordingly, we adopt Dr. Papakonstantinou’s articulation of the level of ordinary skill as our own, if for no other reason then for its conciseness, with the understanding that the differences between the proffered levels of ordinary skill are limited and inconsequential in our analysis.” slip op. at 23

  • Expert testimonyPetitioner expert creditedPatent owner expert creditedDecided for patent owner

    “above-identified single statement in the specification, which uses permissible language such as “can be” and “does not need to be,” is sufficient to justify Patent Owner’s assertions, which for all practical purposes, is a disavowal of claim scope. See Home Diagnostics, Inc. v. LifeScan, Inc., 381 F.3d 1352, 1358 (Fed. Cir. 2004) (“Absent a clear disavowal in the specification or the prosecution history, the patentee is entitled to the full scope of its claim language.”) We also credit the testimony of Dr. Almeroth over that of Dr. Papakonstantinou, because, among other reasons, Dr. Almeroth supports his testimony with relevant citations to the specification, while Dr. Papakonstantinou largely repeats that which is set forth in the Patent Owner Response, without further analysis. graphical fields that allow the input of administrative information without programming” are advantageous over “cumbersome programming performed in the past.” Ex. 2002 ¶¶ 44, 47. We treat this argument as subsumed within Patent Owner’s argument that the specification disparages prior art systems that require HTML programming to perform administrative tasks.” slip op. at 16

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

    “224, 232 encompasses a “link to content.” In application, however, “what is a wireless LAN?” 224, 232 is actually two separate components: (1) the underlying technical set of computer instructions that, upon clicking the link associated with “what is a wireless LAN?” 232, transports a user to a web page associated with “what is a wireless LAN?” 232; and (2) the words “what is a wireless LAN?” 224 itself displayed on the computer display, but separate from the technical set of computer instructions set forth in (1). In this example, (1) is “link to content, but not itself ‘content,’” however, (2) is itself “content.” More precisely, when we now consider “what is a wireless LAN?” 224, 232 in relation to the aforementioned construction of “content” as “electronic data embodying information for an individual or individuals,” it becomes clear that “what is a wireless LAN?” 224, 232 is both “links to content” and “content.” Specifically, component (1) of “what is a wireless LAN?” 232 is “links to content,” but not “content” itself, because the underlying technical set of computer instructions is not “electronic data embodying information for an individual or individuals,” but for a computer. By contrast, component (2) of “what is a wireless LAN?” 224 is “content,” as it is clearly “electronic data embodying information for an individual or individuals,” in that the words “what is a wireless LAN?” are intended to convey information to an individual. So, as a practical matter, we discern that every disclosure of a “link to content” that includes “electronic data embodying information for an individual or individuals” (i.e., any information associated with a “link” that is separate from a generic indication of the “link” itself), is “content.” See also Ex. 3001, 6–16 (providing further analysis concerning construction, which we expressly incorporate herein). Accordingly, we determine that a proper construction of “content” is “electronic data embodying information for an individual or individuals,” and excluding “links to content,” but not excluding “content” associated with the “links to content.”” slip op. at 10

  • Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageTerm construed petitioner constructionDecided for petitioner

    “We agree with Petitioner. We are persuaded that “administrative interface” is broader than the “administrative page” mentioned in the specification, in that an “administrative interface” may encompass 9 While discussing “graphical user interface” during oral argument, Patent Owner stated that it was not disclaiming claim scope. Tr. 47:20–22 (“We’re not arguing that the claim terms have been disclaimed in some phrase.”). something other than an “administrative page.” We are also persuaded that the specification’s disclosure of a non-limiting embodiment, that of a highlyautomated and browser-based “administrative page,” does not require that a proper construction of “administrative interface” include “graphical user interface.” As admitted by Patent Owner, these pages are “example[s]” only, and, at best, merely “impl[y]” the presence of a “graphical user interface.” See PO Resp. 8–9 (citing Ex. 1002, 16:39–44; Ex. 2002 ¶ 40). We are persuaded that an “implied example” does not belong in a proper construction of a claim term. Indeed, Petitioner asserts that Patent Owner’s factual premise, concerning the above “implied example,” is flawed, as the specification’s “reference to automation and a browser provides no basis for restricting the claimed ‘administrative interface’ to a graphical user interface.” Pet. Reply 5–6 (citing Ex. 1033 ¶ 15) (Dr. Almeroth testifies that “automation of computer systems does not require a graphical user interface.”). More specifically, Dr. Almeroth identifies other automated “interfaces” in the specification, such as “a networked cash register, bar code scanner or electronic product code reader” (Ex. 1002, 13:8–15, 14:51–52) that do not require a “graphical user interface.” Ex. 1033 ¶ 14. We agree with Dr. Almeroth’s analysis of the specification. Dr. Almeroth asserts further, and we agree, again, that “[o]ne of ordinary skill would understand that that cash register could be connected to a server that is accessible only via a command line interface, and that administrators could use command-line tools . . . to group content on that server.” Ex. 1033 ¶ 14. Patent Owner cites In re Abbott Diabetes Care, Inc., 696 F.3d 1142, 1149–1150 (Fed. Cir. 2012) for its finding of an implicit definition of a” slip op. at 13

  Patent outcomesUS 7,516,177 mixed
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 7,516,177
• Varian Medical Systems, Inc. v. William Beaumont HospitalNo claims unpatentable
  PTAB · May 4, 2017 · IPR2016-00162 · APJ Michael W Kim · IPR · Final written decision

  Claims 1–14, 16–29, 33, and 35–38 were not held unpatentable because the strong evidence of industry praise and long-felt need, with other objective evidence, outweighed the obviousness showing.

  RulingsFinal written decision

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Other

    “its broadest reasonable construction in light of the specification of the patent in which it appears. 37 C.F.R. § 42.100(b); see also Cuozzo Speed Techs., LLC v. Lee, 136 S.Ct. 2131, 2142 (2016) (affirming that USPTO has statutory authority to construe claims according to 37 C.F.R. § 42.100(b)). Under the broadest reasonable construction standard, claim terms are generally given their ordinary and customary meaning, as would have been understood by one of ordinary skill in the art in the context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). For the purposes of this Decision, we determine that only the following claim terms need express interpretation. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”). 7 A.L. Boyer, Laser “cross-hair” sidelight, Med. Phys., 5:58-60 (1978) (Ex. 1108, “Boyer”).” slip op. at 6

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

    “dimensional information” appears facially to be co-extensive with any information relevant to three dimensions. We discern that “length, width, and depth” are just such information. We have considered Patent Owner’s above-cited portions of the ’502 Patent, but are unpersuaded that those portions narrow “three dimensional information” with sufficient “reasonable 8 In evaluating the assertions set forth in the Declaration of James Balter, Ph.D., in Support of Petitioner’s Reply (Ex. 1500), we considered Patent Owner’s Motion for Observations on the Cross-Examination of Dr. James Balter (Paper 48) and Petitioner’s Response to Patent Owner’s Motion for Observations on Cross-Examination (Paper 56). 9 In the Decision on Institution, we preliminarily agreed with Petitioner’s proposed construction of “three dimensional information.” Dec. 7–8. clarity, deliberateness, and precision” such that one of ordinary skill would have understood “three dimensional information” as co-extensive with Patent Owner’s proffered construction. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). For example, column 2, lines 42–48 and 51–55 certainly disclose that “volume” is desirable, but does not provide any equivalence between “three dimensional information” and “volume.” Indeed, column 2, lines 54–55 disclose “provide information regarding the location of soft-tissue target volumes,” indicating that “information” is a subset of “volume.” In another example, column 3, lines 40–43, mentions “three-dimensional (3- D) images,” which we agree would appear to require “volumetric” data; however, the claim limitation at issue is the broader term “three dimensional information.” In a further example, column 9, line 62, through column 10, line 5, clearly refers to “volumetric data,” but does not indicate its relation to “three dimensional information.” In yet another example, column 16, lines 43–45 and 58–62, do not recite “three dimensional information,” instead disclosing “3-D structure” and “3-D nature” in relation generally to “volumetric data,” but, again, not in a manner sufficient to indicate a particular relationship. Finally, in regard to assertions set forth in the Declaration of Dr. Hashemi, we discern some merit in his assertion that when reading the claim limitation “three dimensional information” in conjunction with another claim limitation “cone-beam computed tomography,” “a CBCT image is a volumetric image that provides the location, shape, and spatial orientation of the target volume in all directions, not just its length, width, and depth.” Ex. 2080 ¶ 85. The claim limitation at issue, however, reads “an image of said object, wherein said image contains at least three dimensional information of said object based on one rotation of said x-ray source around said object” (emphasis added). Accordingly, the claim limitation does not preclude an image having more information than “information concerning three dimensions of an object (such as length, width, and depth),” such as “a volumetric image of an object generated by reconstructing 2-D projection images.” Under Patent Owner’s construction, however, the image would be required to have such information. We are unpersuaded that such information is required under a proper construction of “three dimensional information” for the reasons set forth supra. We construe “three dimensional information” as “information concerning three dimensions of an object (such as length, width, and depth).”” slip op. at 7

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyDecided for patent owner

    “In the Institution Decision, we preliminary determined that “we are not persuaded that the term ‘computer’ fails to recite sufficiently definite structure. As a result, we decline to construe this limitation as a means-plusfunction limitation in accordance with § 112 ¶ 6.” Dec. 10. In its Response, Patent Owner agreed with the Board’s preliminary determination. PO Resp. 11. Petitioner did not address this construction in its Reply. See generally Pet. Reply 1–4. After considering our preliminary determination anew, in light a complete trial record, we remain unpersuaded that the term “computer” fails to recite sufficiently definite structure. Accordingly, we decline to construe this limitation as a means-plus-function limitation in accordance with § 112 ¶ 6.” slip op. at 10

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Dr. Balter, Petitioner’s expert, proffers that a hypothetical person of ordinary skill in the art, with respect to and at the time of the’502 patent, would have the following qualifications: “a medical physicist with a Ph.D. (or similar advanced degree) in physics, medical physics, or a related field, and two or more years of experience in radiation oncology physics and image processing/computer programming related to radiation oncology applications.” Ex. 1102 ¶ 13. Dr. Hashemi, Patent Owner’s expert, essentially agrees, with the only major differences to the above being that an M.S. is acceptable in lieu of a Ph.D, and that three years of experience is preferred. Ex. 2080 ¶ 17. Nominally, we accept Petitioner’s proffered level of ordinary skill in the art based on Dr. Balter’s more complete explanation. We note, however, that neither party has explained substantively any significance that the difference in the proffered levels of ordinary skill in the art would have in the obviousness analysis. See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966); Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“[T]he level of skill in the art is a prism or lens through which a judge, jury, or the Board views the prior art and the claimed invention.”); Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991) (“The importance of resolving the level of ordinary skill in the art lies in the necessity of maintaining objectivity in the obviousness inquiry.”). To that end, we note that the prior art itself often reflects an appropriate skill level. See Okajima, 261 F.3d at 1355.” slip op. at 10

  Patent outcomesUS 6,842,502 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,842,502
• Varian Medical Systems, Inc. v. William Beaumont HospitalNo claims unpatentable
  PTAB · May 4, 2017 · IPR2016-00170 · APJ Kalyan K Deshpande · IPR · Final written decision

  Claims 1–13 and 20–31 were not held unpatentable because the strong evidence of industry praise and long-felt need, with supporting evidence of commercial success and copying, outweighed the obviousness showing.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Dr. Balter, Petitioner’s expert, proffers that a hypothetical person of ordinary skill in the art, with respect to and at the time of the’765 Patent, would have the following qualifications: “a medical physicist with a Ph.D. (or similar advanced degree) in physics, medical physics, or a related field, and two or more years of experience in radiation oncology physics and image processing/computer programming related to radiation oncology applications.” Ex. 1102 ¶ 13. Dr. Hashemi, Patent Owner’s expert, essentially agrees, with the only major differences to the above being that an M.S. is acceptable in lieu of a Ph.D., and that three years of experience is preferred. Ex. 2080 ¶ 17. Nominally, we accept Petitioner’s proffered level of ordinary skill in the art based on Dr. Balter more complete explanation. We note, however, that neither party has explained substantively any significance that the difference in the proffered levels of ordinary skill in the art would have in the obviousness analysis. See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966); Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“[T]he level of skill in the art is a prism or lens through which a judge, jury, or the Board views the prior art and the claimed invention.”); Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991) (“The importance of resolving the level of ordinary skill in the art lies in the necessity of maintaining objectivity in the obviousness inquiry.”). To that end, we note that the prior art itself often reflects an appropriate skill level. See Okajima, 261 F.3d at 1355.” slip op. at 12

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyNot shown unpatentable

    “In our Decision on Institution, we were not persuaded that the terms “computer” (claim 1), “controller” (claim 7), “structure” (claim 20), and “support table” (claim 26) fail to recite sufficiently definite structure, and, therefore, we declined to construe these terms as means-plus-function limitations in accordance with 35 U.S.C. § 112 ¶ 6. Dec. 10‒12. Neither Patent Owner nor Petitioner provide any more argument or evidence to disturb our interpretation of these terms. See PO Resp. 12. Accordingly, we do not construe these terms as means-plus-function limitations under 35 U.S.C. § 112 ¶ 6. See SAS Institute, Inc. v. ComplementSoft, LLC., 825 F.3d 1341, 1351 (Fed. Cir. 2016) (The Board may not change a claim interpretation from the institution decision where neither party anticipated that “already-interpreted terms were actually moving targets.”).” slip op. at 6

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

    “We begin first with the claim language, and note that “three- dimensional information” appears facially to be co-extensive with any information relevant to three-dimensions. We discern that “length, width, 6 In evaluating the assertions set forth in the Declaration of James Balter Ph.D. in Support of Petitioner’ Reply (Ex. 1500), we considered Patent Owner’s Motion for Observations on the Cross-Examination of Dr. James Balter (Paper 48) and Petitioner’s Response to Patent Owner’s Motion for Observations on Cross-Examination (Paper 56). 7 In the Decision on Institution, we preliminarily agreed with Petitioner’s proposed construction of “three-dimensional information.” Dec. 9–10. and depth” are just such information. We have considered Patent Owner’s above-cited portions of the ’765 patent, but are unpersuaded that those portions narrow “three-dimensional information” with sufficient “reasonable clarity, deliberateness, and precision” such that one of ordinary skill would have understood “three-dimensional information” as co-extensive with Patent Owner’s proffered construction. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). For example, column 2, lines 44‒56 certainly disclose that “volume” is desirable, but does not provide any equivalence between “threedimensional information” and “volume.” Indeed, column 2, lines 55–56 disclose “provide information regarding the location of soft-tissue target volumes,” indicating that “information” is a subset of “volume.” In another example, column 3, lines 41–56, mentions “three-dimensional (3-D) images,” which we agree would appear to require “volumetric data;” however, the claim limitation at issue is the broader term “three-dimensional information.” In a further example, column 9, line 54‒64, clearly refers to “volumetric data,” but does not indicate its relation to “three-dimensional information.” In yet another example, column 16, lines 23–25 and 38–42, do not recite “three-dimensional information,” instead disclosing “3-D structure” and “3-D nature” in relation generally to “volumetric data,” but, again, not in a manner sufficient to indicate a particular relationship. Finally, in regards to assertions set forth in the Declaration of Dr. Hashemi, we discern some merit in his assertion that when reading the claim limitation “three-dimensional information” in conjunction with another claim limitation “cone-beam computed tomography,” “a CBCT image is a volumetric image that provides the location, shape, and spatial orientation of the target volume in all directions, not just its length, width, and depth.” Ex. 2080 ¶ 85. Furthermore, the claim limitation does not preclude an image having more information than “three-dimensional information concerning said object” (such as length, width, and depth), “based on a plurality of two-dimensional projection images.” Under Patent Owner’s construction, however, the image would be required to have such information. We are unpersuaded that such information is required under a proper construction of “three-dimensional information” for the reasons set forth supra. We construe “three-dimensional information” as “information” slip op. at 8

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

    “We are unpersuaded for several reasons. Primarily, we are unpersuaded because a fundamental assumption made by Patent Owner is that the patient must remain unrestrained. Patent Owner makes this assumption based on the assertion that “the primary goal of the Adler/Depp systems is to permit a patient to be relatively unrestrained during the radiotherapy procedure.” PO Resp. 33. We have reviewed Patent Owner’s supporting evidence, and are unpersuaded that the evidence supports Patent Owner’s assertion that “the primary goal of the Adler/Depp systems is to permit a patient to be relatively unrestrained during the radiotherapy procedure.” For example, Patent Owner cites to certain paragraphs of Dr. Hashemi’s Declaration, which in turn cite to certain portions of Depp. Ex. 2080 ¶¶ 117, 133, 136 (citing Ex. 1104, 11:66–12:23, Fig. 9). We have reviewed those portions of Depp, and find that while they do disclose that target location and treatment periods are on the order of seconds, they do not mention anything about “the primary goal of the Adler/Depp systems is to permit a patient to be relatively unrestrained during the radiotherapy procedure.”11 Accordingly, absent such an evidentiary foundation, we do not find credible Dr. Hashemi’s assertions concerning this matter. Even without explicit analysis by Patent Owner, we logically understand the connection between longer image acquisition and processing times, and the higher likelihood of interim patient movement. Absent the aforementioned “primary goal,” however, we are unclear as to why the converse of that goal would not be correct, i.e., that one of ordinary skill would have resolved the timing consideration by restraining the patient. Indeed, in opposition, Petitioner asserts, and we agree, that “POSA would understand that in the majority of radiotherapy treatment settings, patients are in fact restrained to some degree.” Pet. Reply 7‒8 (citing Ex. 1500 ¶¶ 33–35; Ex. 2080 ¶¶ 54–55; Ex. 1502, 142:23–143:19). In particular, we are persuaded by the consistency of Dr. Balter’s and Dr. Hashemi’s testimony that molds were used in 2000 to minimize unwanted patient motion during treatment. Ex. 1500 ¶ 35; Ex. 2080 ¶ 55.” slip op. at 23

  Patent outcomesUS 7,471,765 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,471,765
• Karl Storz Endoscopy-America, Inc. v. Novadaq Technologies, Inc.All claims unpatentable
  PTAB · Mar 8, 2017 · IPR2015-01847 · APJ Daniel N Fishman · IPR · Final written decision

  Claims 1–17 are unpatentable: all are obvious over Yabe; claims 10, 12, and 14 are also anticipated by Krauter.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for patent owner

    “1. Level of Ordinary Skill Mr. Gunday testified, In my opinion, a person having ordinary skill in the relevant art at the time of the alleged invention is a person with a Bachelor of Science degree in Physics, Computer Engineering, Computer Science, or other similar degree, and two ([2]) to three (3) years of work experience relating to medical endoscopic imaging. Such a person would have had an understanding of, or experience in, designing, implementing, and using endoscopic imaging systems, including light sources and endoscopic video and image processing. Ex. 1011 ¶ 76. Mr. Jaggi agrees with Mr. Gunday’s opinion in this regard, adding only that degrees in “Electrical engineering or Engineering Physics” would each qualify as Mr. Gunday’s “other similar degree.” Ex. 2001 ¶¶ 53–54. We agree with and adopt the view of the parties regarding the level of ordinary skill in the art.” slip op. at 22

  • Expert testimonyPatent owner expert discountedDecided for patent owner

    “Initially, we note bodily incorporation of the features of the embodiments is not the test of obviousness; rather, the test lies in what is taught or suggested to the ordinarily skilled artisan by the proposed combination of embodiments of Yabe. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Furthermore, “the [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. “If a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability.” Id. at 417. Yabe discloses multiple embodiments and expressly discloses interchangeability of rotary (“surface-sequential-type”) filters as disclosed in Yabe’s second embodiment (Figure 2) and mosaic (“built-in”) filters as disclosed in Yabe’s first and third embodiments (Figures 1a and 10). Ex. 1007, 18:17–21. Yabe’s express disclosures outweigh the unsupported assertions of Patent Owner’s expert regarding the complexity of constructing the proposed combination of embodiments. “Combining two embodiments disclosed adjacent to each other in a prior art patent does not require a leap of inventiveness.” Boston Sci. Scimed, Inc. v. Cordis Corp., 554 F.3d 982, 991 (Fed. Cir. 2009). Therefore, we are persuaded, by a preponderance of the evidence, that the ordinarily skilled artisan would have had reason to combine the embodiments of Yabe, as proposed by Petitioner, “because it would serve the same purpose as the existing rotary filter/CCD arrangement and lead to predictable results.” See Pet. 20; see also KSR, 550 U.S. at 417.” slip op. at 28

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

    “We are disinclined to adopt Patent Owner’s proposed construction of this phrase, as recited in claim 1, to require mathematical manipulation. Claim 1 recites “calculates” in a self-defining manner, specifically reciting calculating the image signals “by minimizing the contribution from signals produced by the image sensor in response to red illumination light.” Thus, claim 1 is clear on its face that the calculation to be performed is by minimizing the contribution from red light. Therefore, our analysis shifts to determining the meaning of “minimizing” as recited in claim 1. The ’151 patent discloses a variety of embodiments for “minimizing” the contribution of red light.5 For example, in support of the Patent Owner’s 5 Additionally we observe that “minimizing” appears only once in the ’151 patent—in claim 1 (and, thereby, also in its dependent claims 2–9). construction, the ’151 patent does disclose exemplary embodiments that minimize red light contribution utilizing mathematical manipulations including, for example, CMYG filter computations that are “considered to be well known to those of ordinary skill in the art” (Ex. 1001, 4:66–7:59) and averaging blue and green signals to “compute” a cyan signal (id. at 4:21–24). The ’151 patent, however, also specifically recites, Because the passbands of the red mosaic filters do not significantly overlap with the pass bands of the other filters for a short wavelength imaging mode, the contribution of the image signals due to red illumination light can be reduced or largely eliminated by not assigning the image signals produced by image sensor pixels that are sensitive to red light to their corresponding display pixels. Id. at 4:5–12 (emphasis added). The ’151 patent further states “a short wave-length image (or the color components of such an image) can be computed from a subset of image sensor signals (i.e. excluding the signal data from red light).” Id. at 8:29–32 (emphasis added). Thus, the ’151 patent also encompasses the contribution of red light in the image being” slip op. at 12

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

    “Although the ’151 patent does not address “analog” or “digital” in reference to “memory,” we agree with Patent Owner, based primarily on the cross-examination testimony of Petitioner’s expert, Mr. Gunday, that the ordinarily skilled artisan at the time of the ’151 patent filing would have understood “memory,” in the context of the ’151 patent, to be referring to digital memory rather than analog buffers. The signals stored in Krauter’s analog buffers are transitory, analog signals propagating from circuits that calculate a value, through the analog buffer, to an analog input of a display monitor. We are persuaded that an ordinarily skilled artisan would not have considered such analog buffers to be a memory in the context of the ’151 patent. Thus, we determine “memory,” as recited in claim 1, means any digital memory capable of storing image signals that minimize the contribution of red light.” slip op. at 17

  Patent outcomesUS 7,420,151 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,420,151
• TCL Corporation / TCL Communication Technology Holdings, Ltd. et al. v. Telefonaktiebolaget LM EricssonAll claims unpatentable
  PTAB · Feb 8, 2017 · IPR2015-01637 · APJ Patrick R Scanlon · IPR · Final written decision

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

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

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

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

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

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

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

  • Expert testimonyPatent owner expert discountedDecided for petitioner

    “The only support provided for asserting that 10 millimeters is “a standard assumption for finger size in the art of touch screen devices” is the testimony of Mr. Ward. Id. at 32 (citing Ex. 2004 ¶ 79). Mr. Ward’s testimony, however, merely repeats this statement from the Patent Owner Response without providing any supporting evidence or reasoning. Ex. 2004 ¶ 79. Accordingly, we give this testimony little weight. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little to no weight.”). Rather, we agree with Petitioner that the evidence of record does not support the conclusion that, when combining Iwata and Stephan in the manner proposed, a skilled artisan “would have modified Iwata to necessarily have a scroll region width of 3.3 millimeters.” See Reply 28–29 (emphasis added).” slip op. at 19

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

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.