- Yealink (USA) Network Technology Co., Ltd. / Yealink Network Technology Co., Ltd. v. Barco NVNo claims unpatentablePTAB · Oct 5, 2026 · IPR2025-00598 · APJ David C Mckone · IPR · Final written decision
Claims 1–31 were not shown unpatentable under either § 103 ground because the asserted combinations did not teach required claim limitations.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedOther
“admissions by Patent Owner in litigation, contends that a person of ordinary skill in the art would have had “a Master of Science (M.S.) degree in electrical engineering or computer science, and five years of work experience in a related field” and that “[a]dditional educational experience could substitute for some of the work experience.” Pet. 5 (citing Ex. 1002 ¶¶ 36–37). “Patent Owner does not dispute Petitioner’s proposed level of skill in the art (Petition, 5) at this time.” PO Resp. 6. On the complete record, we adopt Petitioner’s description of the level of ordinary skill in the art, as it is uncontested and is consistent with the technology described in the ’347 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“In the Preliminary Response, “Patent Owner accept[ed] the Petition’s claim construction.” Prelim. Resp. 6. However, in the Patent Owner Response, Patent Owner argues that “the claims of the ’347 Patent require no construction as they are valid under their plain and ordinary meaning.” PO Resp. 6. Based on the complete record, we do not find it necessary to provide express claim constructions of any claim terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we 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 discountedDecided for patent owner
“Beel actually discloses the following: [0321] On the peripheral device 32 the video packets are received at the corresponding plug and play port, e.g. the USB port 11, read by the Human Interface Driver (HID) interface handler 13, unpacked to remove HID protocol headers in an unpacker 20 and then transmitted to the communications network by a transmitter 21. The network can be wireless for example WiFi or LiFi network. [0322] Having been routed over a communications network to the base unit 33, the incoming stream is read from the communications interface such as a WiFi access point 22, unpacked in an unpacker 25, decoded in a decoder 26 and then inserted into a suitable composition such as an OpenGL based composition in the compositor 29 for display on a central display device. Ex. 1005 ¶¶ 321–322 (emphasis added to portions quoted by Petitioner). Patent Owner notes that “[t]he Petition mistakenly cites to ¶ 322 of Beel but quotes ¶ 321.” PO Resp. 20 n.3. However, it appears that Petitioner has grafted together a portion of paragraph 321 that introduces peripheral device 32 with a portion of paragraph 322, which discusses features of base unit 33. However, this grafting has been done in such a way as to convey (incorrectly) that peripheral device 32, not base unit 33, includes unpacker 25, decoder 26, and compositor 29 that process the first processed video data received by the first peripheral device to generate second video data. Dr. Almeroth’s testimony, which copies Petitioner’s incorrectly altered quotation to paragraph 322 of Beel, is unreliable as to this claim limitation and is entitled to no weight.4 Thus, Petitioner has no expert testimony on which to rely for this claim limitation.” slip op. at 19
- Strike new argumentNew argument disregardedDecided for patent owner
“5 At the oral argument, when challenged on its reliance on paragraph 322, Petitioner argued that paragraph 321 of Beel teaches this limitation. Tr. 22:26–23:24. Petitioner did not make this argument in the Petition and, instead, raised it for the first time during oral argument; thus, it will not be considered. See Dell Inc. v. Acceleron, LLC, 884 F.3d 1364, 1369 (Fed. Cir. 2018) (“Unless it chose to exercise its waiver authority under 37 C.F.R. § 42.5(b), the Board was obligated to dismiss Dell’s untimely argument given that the untimely argument in this case was raised for the first time during oral argument.”). Even if we were to consider this new argument, it would not be persuasive. As Patent Owner observes (PO Resp. 20), any processing performed by peripheral device 32 in paragraph 321 is on data received from the processing device and destined for the base station via the network, rather than data flowing in the direction of the first processed video data of claim 1.” slip op. at 22
Patent outcomesUS 11,966,347 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 11,966,347 - Microsoft Corporation / Affirmed Networks, Inc. v. Lemko CorporationNo claims unpatentablePTAB · Aug 30, 2024 · IPR2023-00529 · APJ Brian D Range · IPR · Final written decision
Claims 1–8, 11–16, and 21 were not proven unpatentable over Mauer and Waylett because the asserted combinations did not teach key claim limitations.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“II. ANALYSIS A. LEVEL OF ORDINARY SKILL Petitioner defines the person of ordinary skill in the art as follows: As of February 2006, a person of ordinary skill in the art (“POSITA”) would have been a person with a degree in 1 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) (“AIA”), amended 35 U.S.C. § 103. Because the challenged claims of the ’414 patent have an effective filing date before the effective date of the applicable AIA amendments, we refer to the pre-AIA version of 35 U.S.C. § 103 throughout this Decision. 2 Mauer et al., U.S. Patent No. 7,395,085 B1, issued July 1, 2008 (Ex. 1005, “Mauer”). 3 Waylett et al., U.S. Patent No. 8,184,603 B2, issued May 22, 2012 (Ex. 1006, “Waylett”). computer science, electrical or computer engineering, physics, or a similar discipline . . . [and] would also have at least two years of relevant experience including, for example, work related to telecommunications networks. Pet. 3 (citing Ex. 1003 ¶ 54). The institution decision adopted Petitioner’s definition of a person having ordinary skill in the art. Dec. on Inst. 11–12. Patent Owner applied this definition for its response. Resp. 19. Petitioner’s undisputed definition of a person of ordinary skill in the art is reasonable and consistent with the prior art and ’414 patent specification. Based on the record before us, we adopt Petitioner’s undisputed proposal. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Petitioner does not submit constructions for any claim terms. According to Petitioner, “[t]he Board construes claims under the same standard used in civil actions in federal district court. The district court for the related litigation has not yet construed the claim terms.” Pet. 7. The parties provided briefing regarding construction of “distributed mobile architecture (DMA).” Resp. 19–34; Pet. Reply 1–3; PO Sur-reply 11–14. But we do not need to construe “distributed mobile architecture (DMA)” to resolve this inter partes review. We thus do not construe this claim term. We also do not discern a need to construe explicitly any other claim language because doing so would have no effect on our analyses below of Petitioner’s asserted grounds and will not assist in resolving the present controversy between the parties. 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)). We discuss the meaning of ’414 patent claims to the extent necessary to resolve the issues we address below. Id.” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“a) Combination of Mauer and Waylett In support of both Ground 1 and Ground 2, Petitioner argues that a person of ordinary skill in the art would have been motivated to combine Mauer’s and Waylett’s disclosures, “using Waylett’s Network-in-a-box 224 in each of Mauer’s WWAN 14 and WLAN 12, resulting in at least two DMA systems.” Pet. 11–13. Asserting that “Mauer teaches providing sufficient network coverage by use of different kinds of networks, network interfaces, and protocols,” Petitioner contends that a person of ordinary skill in the art would have recognized that “Waylett discloses an inexpensive way to implement the same networks used in Mauer’s WWAN 14 and WLAN 12.” Id. Citing similarities in Mauer’s and Waylett’s systems, Petitioner argues that “a POSITA would have been able to modify Mauer’s WWAN 14 and WLAN 12 networks so that each network uses Waylett’s NIB 224.” Id. at 14. According to Petitioner, the combination would have included a number of beneficial features from Mauer. Id. at 14–15. Petitioner further advances three reasons that a person of ordinary skill would have had to combine the references’ teaching. Id. at 15–16. First, asserting that Waylett discloses cost benefits and Mauer discloses “an improved method and system for notifying mobile stations,” Petitioner contends the “references each provide reasoning” to combine their disclosures. Id. at 15. Second, Petitioner argues that a person of ordinary skill in the art would have been motivated to “improve Mauer’s distributed wireless network system by consolidating it into a single box, making it compact in design allowing for faster deployment.” Id. at 16. “Third, Waylett’s NIB would help mitigate the shared concern of Mauer—that is, reaching a mobile station as it roams or moves outside of the service or coverage area.” Id.” slip op. at 24
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Petitioner does not establish that Mauer sends calls to voicemail based on the two determinations claim 1 recites. Resp. 55–56. In particular, as we explain above, claim 1 requires making use of the DPR after first determining the second mobile subscriber is not located within a first wireless coverage area based on HLR and VLR information and also determining that the second mobile subscriber is not located within a second wireless coverage area based on certain CLR information. The Petition, at best, attempts to establish that Mauer directs to voicemail when a “communication session cannot be established over the first or second wireless network.” Pet. 37. But a general determination that a “communication session cannot be established” does not teach or suggest claim 1’s specific requirements that first, the DPR is utilized in the specific circumstance that the second mobile subscriber is not located within the first wireless coverage area (with this determination being made based on HLR and VLR information), and second, that the DPR is also not located within the second wireless coverage area (with this determination being made based on CLR information). See PO Sur-Reply 8–9; Ex. 2001 ¶¶ 111–113. For the reasons above, Petitioner does not establish by a preponderance of the evidence that the combined art teaches or suggests the final “when” recitation of claim 1.” slip op. at 29
Patent outcomesUS 7,653,414 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,653,414 - Sony Group Corp. (Japan) / Sony Corp. Of America et al. v. MZ Audio Sciences, LLCNo claims unpatentablePTAB · Apr 8, 2024 · IPR2022-01544 · APJ Karl D Easthom · IPR · Final written decision
Claims 1–10 were not shown unpatentable because Petitioner did not establish sufficient reasons to combine the references in any of the three obviousness grounds.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that a person of ordinary skill in the art “would have had a bachelor’s degree in electrical engineering or a related field with coursework in signal processing, plus two years of academic and/or industry experience in signal processing or a related field. More education could substitute for experience, and vice versa.” Pet. 7. “Patent Owner does not dispute Petitioners’ definition of a [person of ordinary skill in the art].” PO Resp. 2. Based on a review of the record, we adopt Petitioner’s proposed level of ordinary skill in the art because it is consistent with the evidence of record, including the asserted prior art, other references of record, and the ’961 patent specification.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“district-court-type standard, as described in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). See 37 C.F.R. § 42.100(b) (2020). Under this standard, claim terms have their ordinary and customary meaning, as would be understood by a person of ordinary skill in the art at the time of the invention, in light of the language of the claims, the specification, and the prosecution history. See Phillips, 415 F.3d at 1313–14. Petitioner relies on the plain and ordinary meaning and contends that it is unnecessary to construe any claim terms explicitly. See Pet. 8 (citing 37 C.F.R. §42.100(b)). Patent Owner “agrees with Petitioner that, for purposes of this Response only, all terms of the ᾽961 patent have their plain and ordinary meaning.” PO Resp. 23. As Petitioner contends, it is not necessary Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating that “we 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 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Dr. Scordilis. Based on the record, Petitioner fails to provide a sufficient reason to arrive at the claimed invention and satisfy the burden of showing obviousness. As Patent Owner essentially argues, Cabot (and all references relied upon by Petitioner and Dr. Scordilis) do not pertain to “quantizing a phase difference of the at least one overtone relative to the fundamental tone to embed at least one bit of the data to be embedded” as step 1C-2 requires. See PO Resp. 32–33. Petitioner also relies on Kudumakis to modify Srinivasan in asserting that step 1C-2 would have been obvious, but Petitioner’s reliance on Kudumakis is also faulty as explained below. See Pet. 22–27 (relying on Ex. 1006 (Cabot), Ex. 1007 (Kudumakis); Ex. 1028 (Risset), Ex. 1031 (Lipshitz), Ex. 1055 (“Cox-SSSW”); Ex. 1020 (“Cox- 1995” ); Ex. 1021 (“Wu”)). articulated reasoning with some rational underpinning” to show that one of ordinary skill in the art would have had a sufficient reason to modify Srinivasan’s frequencies to embed a quantized phase difference between a fundamental and its harmonic into the harmonic as step 1C-2 requires. See Kahn, 441 F.3d at 988 (“[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”)); In re Fine, 837 F.2d 1071, 1075 (Fed. Cir. 1988) (“teachings of references can be combined only if there is some suggestion or incentive to do so”) (quoting ACS Hosp. Sys., Inc. v. Montefiore Hosp., 732 F.2d 1572, 1577 (Fed. Cir. 1984)). As noted above, Dr. Scordilis states that Cabot merely “opens the venue for exploration” for an artisan of ordinary skill to “try to . . . explore” watermarks. Ex. 2011, 75:16–22. Dr. Scordolis’s testimony relates to an “obvious to try” rationale, but neither Dr. Scordilis’s testimony, nor Petitioner’s showing, satisfies the conditions to support that rationale. In particular, Dr. Scordilis does not testify, and Petitioner does not show, that the technique of embedding phase difference codes into a harmonic relative to its fundamental was one of “a finite number of identified, predictable solutions” and a “known option[]” for hiding data. Cf. KSR, 550 U.S. at 402 (indicating that under an “obvious to try” rationale, “[w]hen 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 in the art has good reason to pursue the known options within his or her technical grasp” (emphasis added)).” slip op. at 25
- Expert testimonyPetitioner expert discountedDecided for patent owner
“The record supports Patent Owner’s characterization of Dr Scordilis’s testimony. Dr. Scordilis does not rely on any references that “have a frequencies specifically.” See Ex. 2011, 90:4–8 (testifying such references are “[n]ot in [his] report”). Moreover, Dr. Scordilis testifies that “[t]he value . . . of Cabot’s work is that he points to the fact that even in this very controlled experiment, although phase is detectable in an A/B type of setup under many, many repetitions, it really opens the venue for exploration that a [person of ordinary skill in the art] would try to capitalize and explore further to develop a watermark.” Id. at 75:16–22 (emphasis added). In summary, Dr. Scordilis testifies that no references (including Cabot) cited in his declaration discuss phase encoding of a harmonic phase relative to a fundamental phase for watermarking, and Cabot merely opens the door so that a person of ordinary skill in the art would “try to . . . explore further to develop a watermark” using harmonic phase coding data. Id.” slip op. at 24
Patent outcomesUS 7,289,961 not shown unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,289,961 - Medivis, Inc. v. Novarad Corp.No claims unpatentablePTAB · Mar 6, 2024 · IPR2023-00042 · APJ Scott Raevsky · IPR · Final written decision
Claims 1–6 and 11–20 were not shown unpatentable: Doo did not disclose the claimed volume, the Doo-Amira combination lacked a persuasive rationale, and the other references were not shown publicly accessible.
RulingsFinal written decision- Skill levelSkill level board ownDecided for petitioner
“We adopt Petitioner’s proposed level of skill, except that we excise part of Petitioner’s definition to produce the following modified version: a bachelor’s degree in computer science, electrical engineering, or a related field with several years of experience in the design, development, and study of augmented reality devices and . . . familiarity with conventional medical imaging data and visualization of data for medical procedures . . . . Our edit removes the alternative of “working with a team including someone with such familiarity” because one’s role in a team may be tangential to their personal experience with medical imaging. Regardless, had we adopted Petitioner’s original definition, our decision would not have changed.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“The parties propose constructions for the claim terms “three- dimensional (3D) data,” “inner layer(s) of the patient,” “confined within a virtual 3D shape,” and “being having.” Pet. 11–14; PO Resp. 11–18. We do not need to construe any of these claim terms in order to resolve the issues presented in this proceeding. See Realtime Data, LLC v. Iancu, 912 F.3d 1368 (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 8
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“First, neither the Petition nor Dr. Kazanzides explains how Doo’s curved plane teaches the claimed “volume.” See Pet. 36–37; Ex. 1012 ¶¶ 74–75 (essentially repeating the Petition). The Petition merely asserts that Doo’s image in Figure 7 “is confined within the volume of the virtual 3D shape illustrated in Figure 9,” without explaining how the shape of Figure 9 has a “volume.” Pet. 37. The Reply does no better, asserting that “Doo’s shape 532 in Figure 9 and shape 432 in Figure 7 are virtual 3D shapes.” Reply 18. This statement is conclusory and does not explain how Doo’s “false 3D” shapes have volume. Petitioner further attempts to establish that Doo’s disclosure of Figure 9’s shape 532 as “mimic[ing] the surface curvature of the patient’s body” is evidence that Doo discloses a 3D shape. Id. (citing Ex. 1008 ¶ 76). This argument, however, is unpersuasive because it takes Doo’s statement out of context. Doo explains that Figure 9’s warped “two-dimensional image 532 . . . mimic[s] the surface curvature of the patient’s body,” not that it has volume. See Ex. 1008 ¶ 76 (emphasis added). In other words, even though Doo’s shape 532 of Figure 9, when projected on a patient’s body (as in Figure 7) may appear to a surgeon like a 9 Our Institution Decision did not rely on Petitioner’s theory based on Doo Figures 7–9. We discuss our Institution Decision’s reasoning below under Petitioner’s second theory based on Doo Figures 6 and 11. half-cylinder shape having a volume, Doo’s technique avoids rendering a 3D shape like a half-cylinder (hence calling these “false 3D shapes”) because it instead simulates the body’s curvature with a mere curved two-dimensional plane. Second, we find that Doo’s curved plane does not, in fact, have a volume.10 Instead, Doo’s curved plane is a 2D plane merely “wrapped around an axis.” See Ex. 1008 ¶¶ 75–76. As Patent Owner persuasively argued at the hearing, Doo’s curved plane is not “half of a cylinder. It’s just a wrapped piece of paper.” Tr. 33:14–15. Just as curving a piece of paper would not give the curved paper a half cylinder’s volume, neither does curving Doo’s flat 2D plane create a half cylinder with volume. Viewed another way, curving a 2D plane does not impart volume to the plane any more than curving a 1D line into a parabola would impart area to the 1D line.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“The U.S. Supreme Court has emphasized that “rejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” KSR, 550 U.S. at 418 (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). Petitioner’s argument fails this standard. Petitioner asserts a generic rationale that one of ordinary skill in the art would have applied Amira to Doo “to take advantage of the visualization technology disclosed in Amira (or any similar visualization software).” Pet. 41. But Petitioner’s assertion contains no explanation why one of ordinary skill would have taken advantage of Amira’s technology in the context of Doo. Petitioner’s rationale is so vague and broad that it could be applied to combine any two references because it merely asserts that one reference would “take advantage of the . . . technology disclosed in” another. See, e.g., In re Van Os, 844 F.3d 1359, 1361 (Fed. Cir. 2017) (explaining that “a finding that a combination of prior art would have been . . . ‘intuitive’ is no different than merely stating the combination ‘would have been obvious’”). This approach wholly misses KSR’s “articulated reasoning” standard. See KSR, 550 U.S. at 418. The Reply’s assertion that reducing a surgeon’s cognitive load in Doo “suggests an improvement on conventional medical imaging displays, such as disclosed in Amira,” fares no better. Reply 20. This assertion again fails to explain why one of ordinary skill in the art would have combined Amira with Doo. For instance, Petitioner provides no explanation as to how Amira’s display would further reduce cognitive load. See Reply 19–20 (only vaguely referring to Amira’s “[t]racking capabilities [that] allow for . . . interaction with the visualization” (Ex. 1005, 14, 26)). Not only that, but Doo itself presents a solution for the cognitive load problem. See Ex. 1008 ¶ 14 (“The present invention is particularly adapted to manage the multitude of medical images needed to be viewed by a surgeon during an operation so that a surgeon is not required to look away from the patient, so that the surgeon does not have to sustain heavy cognitive loading.”). Petitioner does not persuasively explain why one of ordinary skill in the art would turn to yet another reference (like Amira) for an additional solution, or even what that solution would be.” slip op. at 23
Patent outcomesUS 11,004,271 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSRPatents in suitUS 11,004,271 - Ebates Performance Marketing, Inc. D/B/A Rakuten Rewards v. International Business Machines Corp.No claims unpatentablePTAB · Oct 2, 2023 · IPR2022-00438 · APJ Ken B Barrett · IPR · Final written decision
Claims 14–28 were not shown unpatentable because the petition did not establish that the asserted combination taught interactive execution of the ordering and annotation function.
RulingsFinal written decision- Expert testimonyOther
“annotation function . . . for comparing the user’s ‘user profile’ to the results obtained in the initial search.” Id. at 40–41 (citing Ex. 1005 ¶¶ 111–112, 116–117). Petitioner then concludes that, “[t]hus, Uchiyama discloses limitation [14d-2].” Id. at 41 (brackets in original) (citing Ex. 1003 ¶¶ 157– 160). Petitioner also asserts that: At a minimum, it was obvious to a [person of ordinary skill in the art] to have Uchiyama’s system compare a user’s profile to the returned search results “interactively at the time of each user query” so as to achieve Uchiyama’s goal of returning “more meaningful” search results as “the database grows” and “the search results for the same query improve over time.” (Ex-1005 at ¶0026; Ex-1003-Crovella at ¶162.) Hence, Uchiyama also renders obvious limitation [14d-2]. Id. at 41–42 (brackets in original). However, Petitioner does not elaborate on or explain the basis for this conclusory assertion of obviousness. Id.; see also Ex. 1003 ¶ 162 (Dr. Crovella stating the same). Although Petitioner’s analysis of limitation 14d-2 addresses the timing of the execution of the ordering and annotation function (the recited “at the time of each user query”), the analysis does not contain any form of the claim term “interactively,” other than when quoting the claim language. See Pet. 39–42. Thus, the Petitioner does not clearly and persuasively explain how “interactively” is disclosed or taught by Uchiyama.” slip op. at 17
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art “would have at least a bachelor’s degree in computer science or a related field, plus at least one year of experience in the design and/or implementation of computerized information retrieval technology,” and that “[a]dditional education in the field of computer science may serve as a substitute for experience in the field.” Pet. 8 (citing Ex. 1003 ¶ 29). Patent Owner states that, “[f]or purposes of this proceeding, [Patent Owner] adopts Petitioner’s 4 The parties have not directed our attention to any objective evidence of obviousness or non-obviousness. proposed level of ordinary skill in the art.” PO Resp. 21 (citing Ex. 2011 ¶¶ 30–35). Petitioner’s definition is consistent with the level of ordinary skill reflected in the prior art references of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may reflect an appropriate level of skill in the art). We apply Petitioner’s definition of the person of ordinary skill in the art.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“wherein the ordering and annotation function is executed interactively at the time of each user query” contains two requirements: 1) how the function is executed (“interactively”) and when the function is executed (“at the time of each user query”). Petitioner, in effect, reads out of the claim the “interactively” requirement. Petitioner offers no persuasive reason as to why that is correct. See In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970) (“All words in a claim must be considered in judging the patentability of that claim against the prior art.”). Petitioner, for its proposed claim construction of a single requirement, primarily relies on the Specification’s statement that “the ordering and Annotation step 345 is executed interactively, e.g., at the time of every user query.” Ex. 1001, 8:10–12; see Pet. Reply 12–13 (citing the same for the proposition that “[t]he ’676 patent specification also ties the terms together”); Tr. 16:3–12 (“it’s clear the specification is saying that interactively means at the time of every user query”). Petitioner’s reliance on this statement is misplaced. First, Petitioner agrees that the plain and ordinary meaning of “interactively” means “some sort of interaction with the system,” that the inventor did not utilize its own lexicography to redefine the term “interactively,” and that the Specification does not evidence a disavowal of claim scope. See Tr. 19:4–20. Consistent with that, Petitioner acknowledges that the quoted part of the Specification merely is an example, and is not defining “interactively” as limited to that example. See id. at 19:19–25. Second, Petitioner misreads the Specification as indicating that “at the time of every user query” is an example of “interactively.” See, e.g., id. at 21:25–22:1 (“the way I read this is at the time of every user query is modifying what interactively means”). Rather, the better reading of the Specification’s phrase “executed interactively, e.g., at the time of every user query” is that “at the time of every user query” (as opposed to some other time) is an example of when the function may be interactively executed, not that the two phrases on either side of the “e.g.” are synonymous. slip op. at 21
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable
“annotation function . . . for comparing the user’s ‘user profile’ to the results obtained in the initial search.” Id. at 40–41 (citing Ex. 1005 ¶¶ 111–112, 116–117). Petitioner then concludes that, “[t]hus, Uchiyama discloses limitation [14d-2].” Id. at 41 (brackets in original) (citing Ex. 1003 ¶¶ 157– 160). Petitioner also asserts that: At a minimum, it was obvious to a [person of ordinary skill in the art] to have Uchiyama’s system compare a user’s profile to the returned search results “interactively at the time of each user query” so as to achieve Uchiyama’s goal of returning “more meaningful” search results as “the database grows” and “the search results for the same query improve over time.” (Ex-1005 at ¶0026; Ex-1003-Crovella at ¶162.) Hence, Uchiyama also renders obvious limitation [14d-2]. Id. at 41–42 (brackets in original). However, Petitioner does not elaborate on or explain the basis for this conclusory assertion of obviousness. Id.; see also Ex. 1003 ¶ 162 (Dr. Crovella stating the same). Although Petitioner’s analysis of limitation 14d-2 addresses the timing of the execution of the ordering and annotation function (the recited “at the time of each user query”), the analysis does not contain any form of the claim term “interactively,” other than when quoting the claim language. See Pet. 39–42. Thus, the Petitioner does not clearly and persuasively explain how “interactively” is disclosed or taught by Uchiyama.” slip op. at 17
Patent outcomesUS 6,785,676 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 6,785,676 - Samsung Electronics Co., Ltd. v. Lynk Labs, Inc.No claims unpatentablePTAB · May 25, 2023 · IPR2022-00101 · APJ Scott Raevsky · IPR · Final written decision
Claims 1–7, 11, 12, and 14 were not shown unpatentable: the asserted obviousness combinations failed to establish required LED voltage matching or a clear, workable combination.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“We are persuaded that Patent Owner’s proposal is more consistent with the problems and solutions in the ’583 patent and prior art of record. We agree that Petitioner’s proposal is overbroad in that it encompasses artisans without LED circuit design experience (“and two or more years of experience with LED devices and/or related circuit design . . .” (emphasis added)). Patent Owner’s definition, in contrast, requires “two or more years of experience with LED devices and related LED circuit design.” We therefore adopt Patent Owner’s definition of the level of skill, but we note that the outcome here would not have changed had we adopted Petitioner’s level of skill.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“preliminarily agreed with Patent Owner that “substrate” may mean “a surface where ‘LEDs, capacitors and/or resistors are formed or mounted.’” Pet. 7; Dec. 19 (quoting Prelim. Resp. 22). We instructed the parties to address the meaning of “substrate” more fully at trial. Dec. 19–20 n.13. Post-institution, the parties propose the following competing constructions for the term “substrate”:” slip op. at 8
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“(2) Our analysis We agree with Patent Owner. Patent Owner’s plain reading of limitation 1(c) is correct, and under this reading, the combination of Shackle and Birrell fails to disclose or suggest limitation 1(c). Limitation 1(c) states in part: “at least one LED circuit having any number of LEDs . . . needed to approximately match the forward voltage drop of a first input voltage to the LED driver.” Ex. 1001, 27:22–25 (emphasis added). We have omitted the language “connected in series or series parallel” to highlight the grammatical relationship between the noun phrase “any number of LEDs” and the verb phrase “needed to approximately match.” The plain reading of this limitation is that the at least one LED circuit has any number of LEDs needed to approximately match the forward voltage drop of the LED driver input. Petitioner’s reading, that “the at least one LED circuit,” rather than “any number of LEDs,” must approximately match the forward voltage drop of the LED driver input, is strained and not grammatically plausible. See Reply 1–3. Petitioner does not assert there is an express disclaimer or disavowal in the specification that supports its position; Petitioner instead relies on examples disclosed in the specification to support its faulty interpretation of limitation 1(c). See Reply 2–3. These arguments are unpersuasive. It is axiomatic that we must not “limit[] the claimed invention to preferred embodiments or specific examples in the specification.” Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1346–47 (Fed. Cir. 2015). Not only that, but Petitioner’s citations to the specification better support Patent Owner’s position. In Petitioner’s view, the specification requires other non- LED components to be combined with one or more LEDs to “appropriately match the voltage.” Reply 2. The main example Petitioner relies on describes 38 LEDs having a total voltage drop of 114 V in a circuit with a bridge rectifier having a 6 V voltage drop. Id. at 2–3 (citing Ex. 1001, 16:64–17:7). Yet the 114 V voltage drop of the LEDs alone “approximately matches” the input voltage of 120 V, without the contribution of the bridge rectifier (6 V). Id. Indeed, 114 V out of 120 V is a 95% match. Thus, this example supports Patent Owner’s view that it is the voltage drop of the LEDs themselves, not the LED circuit as a whole, that must approximately match the LED driver input. See Sur-reply 6–7.” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“combination. The first is that the proposed combination is not at all clear. Although Petitioner need not propose a bodily incorporation of different embodiments, Petitioner must provide a “reasoned analysis” explaining what the combination is. See DSS Tech. Mgmt., Inc. v. Apple Inc., 885 F.3d 1367, 1377 (Fed. Cir. 2018); In re Keller, 642 F.2d 413, 425 (CCPA 1981); see also Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342, 1368 (Fed. Cir. 2012) (“We must be careful not to allow hindsight reconstruction of references to reach the claimed invention without any explanation as to how or why the references would be combined to produce the claimed invention.”) (citation omitted). But the Petition never explains how or where Piepgras’s glass substrate would be combined with Piepgras’s alleged flexible substrate, the rope light of Figure 31. At most, Petitioner suggests incorporating the illumination device 500 of Figure 42 in the rope light of Figure 31. Pet. 48 (“Piepgras provides for configurations where a reflective platform (reflective substrate) mounts lighting system 500 in a manner applicable generally to the inventions of Piepgras . . ., and thus including the rope lighting application discussed above.”). As for the glass substrate, Petitioner merely states that “a POSITA would have found it predictable to configure the Shackle-Piepgras device to implement a flexible substrate mounted to the glass substrate, wherein at least one of the plurality of LED packages is mounted to the flexible substrate.” Id. (citing Ex. 1002 ¶ 150). This vague statement just parrots the claim language and does not explain anything about how the glass substrate would be included in the combination.” slip op. at 28
Patent outcomesUS 10,750,583 not shown unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,750,583 - Juniper Networks, Inc. v. Smart Path Connections, LLCNo claims unpatentablePTAB · Jan 19, 2023 · IPR2021-01356 · APJ Jameson Lee · IPR · Final written decision
Claims 1–24 were not shown unpatentable because the asserted combinations failed to account for required claim limitations.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“In its Preliminary Response, Patent Owner took no position with respect to the level of ordinary skill in the art. In the Decision to Institute, we adopted Petitioner’s articulation of the level of ordinary skill in the art. Inst. Dec. 11. Post institution, Patent Owner does not dispute our adopted level of ordinary skill in the art. Petitioner’s assertion is supported by the testimony of Dr. Lavian. Ex. 1003 ¶¶ 91–100. Petitioner’s assertion also appears consistent with the content of the applied prior art references. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill). Accordingly, in the absence of a contrary contention by Patent Owner, we continue to adopt Petitioner’s proposed level of ordinary skill in the art, as stated in two alternatives noted above. C.” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“Because the above-quoted limitations of claims 1 and 12 plainly require that only a single copy of each data packet be forwarded to the output ports forming a subset (which according to limitations [1.1] and [12.1] forms a LAG), any position of Petitioner asserting the contrary must be contained in the Petition. 37 C.F.R. § 42.204(b)(3) (“the petition must set forth . . . [h]ow the challenged claim is to be construed.”). If not, Patent Owner is deprived of an adequate opportunity to respond, for example, by relying on expert testimony in a declaration to support its Response. Petitioner’s articulated claim construction position regarding forwarding only a single copy is belated, and no explanation has been provided to justify omission of this claim construction position in the § 42.204(b)(3). Thus, the argument is not entitled to consideration. Even if we do consider Petitioner’s belated claim construction position, it is nonetheless without merit and we are unpersuaded. Petitioner’s contention is based on the doctrine of claim differentiation, which disfavors reading a limitation expressly stated in a dependent claim into a claim from which it depends. See Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 910 (Fed. Cir. 2004). Specifically, the presence of a dependent claim that adds a particular limitation raises a presumption that the limitation in question is not found in the independent claim. Id. Here, dependent claims 3 and 14 respectively narrow independent” slip op. at 13
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“For several reasons, we are not persuaded by Petitioner that Borgione forwards only a single copy of a packet via the output ports of Borgione’s LAG as identified by Petitioner. Nowhere in the above-cited portions of Borgione is an indication that no other copy or replicated packet will be forwarded via the output ports of Borgione’s LAG. The above-cited description discusses one forwarding instance but does not represent that there is no other forwarding of a copied or replicated packet. To the contrary, the cited text indicates that other copies or replicated versions would still be forwarded via the output ports of the same LAG. Borgione describes that upon receipt of a packet with a multicast destination address, i.e., a multicast packet, a linking node such as node 110 identifies the network nodes subscribing to the multicast group and replicates the packet. Ex, 1006, 6:14–17. Borgione further states: “The replicated multicast packets can then be forwarded to the identified network nodes [such as node 120].” Id. at 6:17–18. With regard to distributing forwarded copies to balance the traffic load within the LAG, Petitioner cites to the following disclosure of Borgione:” slip op. at 29
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“First, the articulated motivation to combine is overly general and is disconnected with the circumstances and requirements of Devi. Mazzola discloses an address-translation mechanism using table look-up, as discussed above in Section II.D.3. It makes no mention of and is not concerned with aggregated links, sending a packet to just one port in an aggregated link, or load distribution among the ports in an aggregated link. It makes no distinction between one port and a plurality of ports, as it discloses that the index value retrieved from a table may be associated with either one port or a plurality of ports. Ex. 1007, 9:28–31 (“In response, the LTL translates the received index to a signal that selects a port or a group of ports for receiving the data frame.”). Although Mazzola describes that each port is associated with a unique index value and a VLAN “color” identifier (Ex. 1007, 3:12– 14), Mazzola also describes that “[t]he destination of any frame may be one or more ports” (id. at 6:16–17) and that a port can be a multicast port including a group of ports (id. at 6:20–24). The “efficiency” Mazzola mentions appears to be using a look-up table for address conversion versus not using a look-up table, and has little, if anything, to do with associating an FMID with a port versus associating an FMID with a group of ports or a LAG. Further, with Devi’s disclosure of sending only one packet to a LAG and load balancing among the ports in a LAG (limitation [1.2]), it is uncertain whether table look-up as described in Mazzola would even work in that environment. Petitioner does not address entries have to be revised. The statement of increased efficiency is speculative in the context of Devi. Second, Petitioner has over-simplified the issue with limitation [1.3] and has not adequately explained how Mazzola’s address-translation mechanism would be incorporated into Devi without affecting those portions of Devi relied on by Petitioner to account for limitation [1.2]. It is not adequately explained how Devi would be modified to incorporate teachings from Mazzola. Petitioner does not adequately address whether the proposed combination would impact Devi’s components and functionality that are also relied on by Petitioner. It is unclear why the purported combination would have been successful.” slip op. at 47
Patent outcomesUS 7,697,525 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,697,525 - Intel Corporation v. Koninklijke Philips N.V.No claims unpatentablePTAB · May 12, 2022 · IPR2021-00370 · APJ Scott Raevsky · IPR · Final written decision
Claims 49–54 were not shown unpatentable because Petitioner did not establish a motivation to combine Menezes and Brands-Chaum as proposed.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“The differences between these two definitions are minor. The main distinction we see is that Patent Owner views a POSA as having specific experience in cryptography and digital rights management, whereas Petitioner views a POSA as having more general experience in software engineering and data communications. Yet there is significant overlap between these definitions because Petitioner also states that a POSA “would have understood the basics of digital communication devices and protocols and how to apply basic cryptographic concepts.” Pet. 19. We are persuaded that Patent Owner’s proposal is more consistent with the problems and solutions in the ’809 patent. For example, the ’809 patent refers to the problem of “unauthorized copying and pirating” in the context of “digital rights management (DRM) systems and methods.” Ex. 1001, 1:49, 59–61. Petitioner’s definition of the level of skill omits “digital rights management.” We also note that, according to Mr. Williams, Patent Owner’s proposed level of skill is essentially identical to the level of skill adopted by the ITC in the related ITC investigation:” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Petitioner proposes constructions for the following three terms: “certificate,” “[provide/providing] the secret to the second device,” and “predetermined time.” Pet. 13–14. Patent Owner does not dispute these constructions. See generally PO Resp. We provided a preliminary construction for “predetermined time” at institution, but as the parties do not dispute this term post-institution. Thus, we need not construe any terms now. Dec. 12; see Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms 5 Dr. Karp also finds the differences between the parties’ level of skill definitions to be immaterial. In his second declaration, he opined that “[m]y findings in my declaration still hold for a POSA under the ITC’s definition.” Ex. 1015 ¶ 4. that are in controversy, and only to the extent necessary to resolve the controversy.”) (internal quotation omitted).” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“The problem with the proposed combination is that the express teachings of Brands-Chaum require timing a rapid single bit, and one of ordinary skill in the art would have understood that Menezes’s challenge-response has multiple bits. Patent Owner correctly points out that in Brands- Chaum, “the essential element of a distance-bounding protocol . . . consists of a single-bit challenge and rapid single-bit response.” PO Resp. 21–22 (quoting Ex. 1007, 345) (emphasis added). Not only that, but “each bit of the prover P is to be sent out immediately after receiving a bit from the verifier V.” Id. at 24 (quoting Ex. 1007, 345, 348). Brands-Chaum then repeatedly emphasizes, in each of its five different algorithms, that one device sends a single bit to another device “immediately after he receives” the first bit. Ex. 1007, 347, 348, 349, 350, 356, 357. Brands-Chaum’s repeated italicization of “immediately” underscores the importance to Brands-Chaum of rapidly sending back a single bit right after receiving one. See id.” slip op. at 19
- Strike new argumentNew argument disregardedDecided for patent owner
“Petitioner’s argument was a new argument first raised at the hearing. The Reply cites none of the above testimony from Dr. Karp and makes no such argument. Thus, we dismiss this argument as untimely. See Dell Inc. v. Acceleron, LLC, 884 F.3d 1364, 1369 (Fed. Cir. 2018) (“Unless it chose to exercise its waiver authority under 37 C.F.R. § 42.5(b), the Board was obligated to dismiss Dell’s untimely argument given that the untimely argument in this case was raised for the first time during oral argument.”). But even if we were to consider it, our opinion would not change because Dr. Karp’s testimony contradicts the express disclosure of Brands-Chaum. See Ex. 2019, 166:8–167:9. As we have repeatedly emphasized, Brands- Chaum requires that “[t]he essential element of a distance-bounding protocol . . . consists of a single-bit challenge and rapid single-bit response.” Ex. 1007, 345 (emphasis added). Dr. Karp cites no evidence for his testimony that in a less harsh environment, multiple bits could be used in place of Brands-Chaum’s single bit. This testimony is entitled to little weight. See 37 C.F.R. § 42.65(a).” slip op. at 28
Patent outcomesUS 9,436,809 not shown unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,436,809 - Intel Corporation v. Koninklijke Philips N.V.No claims unpatentablePTAB · May 12, 2022 · IPR2021-00327 · APJ Scott Raevsky · IPR · Final written decision
Claims 1–6 and 9–15 were not shown unpatentable because neither proposed combination with Brands-Chaum made the challenged claims obvious.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“The differences between these two definitions are minor. The main distinction we see is that Patent Owner views a POSA as having specific experience in cryptography and digital rights management, whereas Petitioner views a POSA as having more general experience in software engineering and data communications. Yet there is significant overlap between these definitions because Petitioner also states that a POSA “would have understood the basics of digital communication devices and protocols and how to apply basic cryptographic concepts.” Pet. 24–25. We are persuaded that Patent Owner’s proposal is more consistent with the problems and solutions in the ’809 patent. For example, the ’809 patent refers to the problem of “unauthorized copying and pirating” in the context of “digital rights management (DRM) systems and methods.” Ex. 1001, 1:49, 59–61. Petitioner’s definition of the level of skill omits “digital rights management.” We also note that, according to Mr. Williams, Patent Owner’s proposed level of skill is essentially identical to the level of skill adopted by the ITC in the related ITC investigation:” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner proposes constructions for the following three terms: “certificate,” “[provide/providing] the secret to the second device,” and “predetermined time.” Pet. 13–14. Patent Owner does not dispute these constructions but does propose a separate construction for the term “secret.” PO Resp. 47–50. We provided a preliminary construction for “predetermined time” at institution, but the parties do not dispute this term post-institution, so we need not construe it now. Dec. 12–13. We also need not construe the term “secret” because we find that Petitioner has not shown the challenged claims to be unpatentable for reasons unrelated to the meaning of “secret.” Thus, we need not construe any terms. 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.”) (internal quotation omitted).” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“The problem with the proposed combination is that the express teachings of Brands-Chaum require timing a rapid single bit, and one of ordinary skill in the art would have understood that Menezes’s challenge-response has multiple bits. Patent Owner correctly points out that in Brands-Chaum, “the essential element of a distance-bounding protocol . . . consists of a single-bit challenge and rapid single-bit response.” PO Resp. 22–23 (quoting Ex. 1007, 345) (emphasis added). Not only that, but “each bit of the prover P is to be sent out immediately after receiving a bit from the verifier V.” Id. at 25 (quoting Ex. 1007, 345, 348). Brands-Chaum then repeatedly emphasizes, in each of its five different algorithms, that one device sends a single bit to another device “immediately after he receives” the first bit. Ex. 1007, 347, 348, 349, 350, 356, 357. Brands-Chaum’s repeated italicization of “immediately” underscores the importance to Brands-Chaum of rapidly sending back a single bit right after receiving one. See id.” slip op. at 18
- Expert testimonyPetitioner expert discountedDecided for patent owner
“Petitioner’s argument was a new argument first raised at the hearing. The Reply cites none of the above testimony from Dr. Karp and makes no such argument. Thus, we dismiss this argument as untimely. See Dell Inc. v. Acceleron, LLC, 884 F.3d 1364, 1369 (Fed. Cir. 2018) (“Unless it chose to exercise its waiver authority under 37 C.F.R. § 42.5(b), the Board was obligated to dismiss Dell’s untimely argument given that the untimely argument in this case was raised for the first time during oral argument.”). But even if we were to consider it, our opinion would not change because Dr. Karp’s testimony contradicts the express disclosure of Brands-Chaum. See Ex. 2019, 166:8–167:9. As we have repeatedly emphasized, Brands-Chaum requires that “[t]he essential element of a distance-bounding protocol . . . consists of a single-bit challenge and rapid single-bit response.” Ex. 1007, 345 (emphasis added). Dr. Karp cites no evidence for his testimony that in a less harsh environment, multiple bits could be used in place of Brands-Chaum’s single bit. This testimony is entitled to little weight. See 37 C.F.R. § 42.65(a).” slip op. at 27
Patent outcomesUS 9,436,809 not shown unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,436,809 - Shure Incorporated v. Clearone, Inc.No claims unpatentablePTAB · Feb 14, 2022 · PGR2020-00079 · APJ David C Mckone · PGR · Final written decision
Claims 1–24 were not shown unpatentable because the petitioner failed to prove the asserted §112 grounds and obviousness grounds by a preponderance of the evidence.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“As we stated in the Institution Decision (at 30), Petitioner’s proposal is reasonable in light of the descriptions in the ’653 patent and prior art, and is supported by expert testimony. We further find that Patent Owner’s proposed addition, that a skilled artisan would have had experience with digital signal processing, is consistent with the descriptions in the ’653 patent and prior art. Because the parties do not contend that their disagreement over “at least” has any bearing on this proceeding, we need not evaluate whether a skilled artisan might have had more than three years of work experience or whether that would lead to vagueness. Instead, we adopt Petitioner’s proposal, with Patent Owner’s addition, and omit “at least”: A skilled artisan would have possessed: (i) a bachelor’s degree in mechanical engineering, electrical engineering, physics, or acoustical engineering that included coursework on the design of acoustic and/or antenna arrays, phased arrays, and/or beamforming; or (ii) three years of work experience in the field of directional microphone arrays; and the skilled artisan would have had experience with digital signal processing.” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“We disagree with Patent Owner that the claim limitation at issue here specifies a single device that has multiple properties. Rather, claim 1 broadly recites “a ceiling tile combined with the beamforming microphone array.” We agree with Petitioner that the plain language of claim 1 does not require that the entire beamforming microphone array is physically integrated into a single ceiling tile, as combining a ceiling tile and a microphone array is broader than physically installing the microphone array in the ceiling tile. Nor can the language of claim 1 reasonably be read to exclude combining more than one ceiling tile with the microphone array. Where claim 1 assigns specific properties to a ceiling tile, it does so expressly, reciting “the ceiling tile being sized and shaped to be mountable in a drop ceiling in place of at least one of a plurality of ceiling tiles included in the drop ceiling.” Thus, the plain language of claim 1 requires at least one ceiling tile combined in some way with a beamforming microphone array, and each ceiling tile (if there is more than one) is a particular size and shape.” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Second, Patent Owner argues that our construction “should reflect the fact the microphones of a [beamforming microphone array] are located in positions relative to each other, by design, to establish constructive interference in one or more preferred beam directions.” PO Resp. 18–19 (citing Ex. 2013 ¶¶ 31–37, 48). Petitioner responds that claim 1 recites “beamforming” broadly and that Patent Owner attempts to limit “beamforming” to one technique out of several, including techniques that determine time delay between microphones rather than knowing the distances between the microphones. Reply 3 (citing Ex. 1029 ¶¶ 11–21). The parties’ competing proposals here are directed to Petitioner’s allegations that CTG System and Levit render the challenged claims obvious. However, as explained below, Petitioner has not established whether CTG System performs beamforming under either proposed construction. Thus, we need not resolve the parties’ claim construction dispute. See Nidec, 868 F.3d at 1017; Vivid Techs., 200 F.3d at 803.” slip op. at 19
- Disclosure Requirements (§112) › Definiteness (Nautilus)DefiniteNot shown unpatentable
“Despite an obligation to identify in the Petition the evidence that supports its indefiniteness allegations,5 Petitioner largely failed to discuss the Specification. Pet. 30; see also Dec. 41 (“Despite enumerating five techniques that it contends exemplify ‘adaptive acoustic processing,’ Petitioner does little to address the description of those techniques in the Specification.”). In one passage cited by Petitioner, the Specification states that an “embodiment of Array 116 may include adaptive acoustic processing that automatically adjusts to the room configuration for the best possible audio pickup.” Ex. 1001, 6:13–16. Petitioner argues that this description “lacks any disclosure providing objective boundaries of the claim’s scope, either through definitions or working examples.” Pet. 30. Petitioner also acknowledges that the Specification “discusses acoustic echo cancellation (in general) as an additional feature from adaptive acoustic processing,” and admits that a skilled artisan “would have recognized that echo cancellation processing occurring automatically in response to a room configuration would be a meaning of adaptive acoustic processing.” Id. at 35 (citing Ex. 1001, 6:5–22). However, Petitioner does not discuss the rest of the Specification in the Petition. Petitioner should have addressed in the Petition the express descriptions of Dr. Vipperman’s enumerated examples of adaptive acoustic processing in the Specification in order to support its 5 Our rules require Petitioner to make its case in the Petition, including identifying “[h]ow the challenged claim is to be construed,” “the specific part of the claim that fails to comply with the statutory grounds raised and . . . how the identified subject matter fails to comply with the statute,” and “specific portions of the evidence that support the challenge.” 37 C.F.R. § 42.204(b). Indeed, “[t]he Board may exclude or give no weight to the evidence where a party has failed to state its relevance or to identify specific portions of the evidence that support the challenge.” Id. at § 42.204(b)(5). otherwise conclusory statement that “[n]one of these techniques are described in the specification,” Pet. 32. If it was Petitioner’s position that these express descriptions were nevertheless not examples of adaptive acoustic processing, Petitioner should have made those arguments in the Petition.” slip op. at 24
Patent outcomesUS 10,728,653 not shown unpatentableClaim construction§ 103 obviousness§ 112 disclosurecites GrahamPatents in suitUS 10,728,653
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.