• Nokia Of America Corporation / Ericsson Inc. et al. v. General Access Solutions, Ltd.No claims unpatentable
  PTAB · Apr 14, 2025 · IPR2023-01416 · APJ Ken B Barrett · IPR · Final written decision

  The Board held claims 1–15 and 18 not unpatentable; the petition failed to prove the asserted anticipation and obviousness grounds, including failure to establish WiMAX as prior art.

  RulingsFinal written decision

  • Adverse judgmentAdverse judgmentOther

    “filed with the Office a statutory disclaimer disclaiming method claims 16, 17, 19, and 20. See Ex. 2007; see also Tr. 33, 21:1–12 (Patent Owner’s counsel informing the Board that the disclaimer had been filed in the USPTO Patent Center, and Petitioner’s counsel having no objection to the filing of the disclaimer as an exhibit in this inter partes review); Tr. 34:19 1 Petitioner identifies Nokia of America Corporation, Ericsson Inc., and T-Mobile USA, Inc. as real parties in interest. Pet. 72. 2 Patent Owner identifies General Access Solutions, Ltd. as the real party in interest. Paper 6, 1. (Patent Owner’s counsel stating, “General Access has disclaimed method Claims 16, 17, 19, and 20.”). We treat disclaimed claims as if they never existed. See Facebook, Inc. v. SKKY, LLC, CBM2016-00091, Paper 12 at 8 (PTAB Sept. 28, 2017) (expanded panel) (precedential) (“The Federal Circuit has held consistently that claims disclaimed under § 253(a) should be treated as though they never existed.”) (citing, inter alia, Vectra Fitness, Inc. v. TWNK Corp., 162 F.3d 1379, 1383 (Fed. Cir. 1998) (“This court has interpreted the term ‘considered as part of the original patent’ in section 253 to mean that the patent is treated as though the disclaimed claims never existed.”); Guinn v. Kopf, 96 F.3d 1419, 1422 (Fed. Cir. 1996) (“A statutory disclaimer under 35 U.S.C. § 253 has the effect of canceling the claims from the patent and the patent is viewed as though the disclaimed claims had never existed in the patent.”)). Accordingly, the remaining claims challenged in this proceeding are apparatus claims 1–15 and method claim 18.” slip op. at 2

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “of both types of parameters to be stored in the same “device” is consistent with the claim language. The claim recites “a profile parameter storage device,” “said profile parameter storage device for storing [two parameter] values,” and refers to “the values stored at said profile parameter storage device.” Ex. 1001, 13:10–16. Accordingly, the claim language speaks of a single device for storing both types of parameters.12 And, Petitioner does” slip op. at 32

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable

    “of both types of parameters to be stored in the same “device” is consistent with the claim language. The claim recites “a profile parameter storage device,” “said profile parameter storage device for storing [two parameter] values,” and refers to “the values stored at said profile parameter storage device.” Ex. 1001, 13:10–16. Accordingly, the claim language speaks of a single device for storing both types of parameters.12 And, Petitioner does” slip op. at 32

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable

    “Id. “[A] work is not publicly accessible if the only people who know how to find it are the ones who created it.” Samsung Elecs. Co. v. Infobridge Pte. Ltd., 929 F.3d 1363, 1372 (Fed. Cir. 2019) (citing SRI Int’l, Inc. v. Internet Sec. Sys., Inc., 511 F.3d 1186, 1196 (Fed. Cir. 2008) Application of Bayer, 568 F.2d 1357 (CCPA 1978)). Accordingly, in this case, Petitioner must demonstrate by a preponderance of the evidence that the WiMAX exhibit was disseminated or otherwise made available to interested ordinary artisans outside of the group that created the document. Petitioner has failed to satisfy that burden.” slip op. at 48

  Patent outcomesUS 6,947,477 not shown unpatentable
  § 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 6,947,477
• Cellco Partnership D/B/A Verizon Wireless v. General Access Solutions, Ltd.No claims unpatentable
  PTAB · Dec 23, 2024 · IPR2023-01147 · APJ Ken B Barrett · IPR · Final written decision

  Claims 1–6 were not shown unpatentable because the asserted references did not establish that the claimed second transceiver routes information based on monitored signal characteristics.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “A person of ordinary skill in the art (“POSA”) at the time of the purported invention would have had either: (1) a Bachelor of Science degree in computer science, electrical or computer engineering, or a related field, and at least 2 years of work or research experience in digital communications systems, such as wireless communications systems and networks, or equivalent, or a Master’s degree in electrical engineering, computer engineering, computer science or similar field. Additional education could compensate for less practical experience and vice versa. Ex. 1002, ¶¶1-46. Pet. 10. Patent Owner does not address the level of ordinary skill in the art. Cf. Ex. 2007 ¶19 (Patent Owner’s declarant, after acknowledging Petitioner’s definition, stating: “Patent Owner has not offered a different understanding of a POSITA, and the PTAB accepted Petitioner’s submission. I accept and use Petitioner’s and the PTAB’s definition of a POSITA.”). 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). For purposes of this decision, we apply Petitioner’s definition of the person of ordinary skill in the art.” slip op. at 11

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

    “During oral argument, both parties confirmed their respective positions that the claim term “route” needs no construction. See, e.g., Tr. 11:7–9 (Petitioner’s counsel: “Frankly, it doesn’t make any difference to the analysis of the prior art. And so, we don’t believe that the PTAB needs to construe the term route, and so we have not proposed a construction.”); id. at 58:25–59:2 (Patent Owner’s counsel: “You know, I don’t think that you have to define routing in order to decide the case. I think you can do it, you know, just apply whatever plain and ordinary meaning is.”); cf. Tr. 40:14–18 (Patent Owner’s counsel at oral argument: “For the routing itself, you know, there is a District Court construction and that’s a construction that the other—the Petitioner did not ask for determination whether that’s appropriate or not appropriate here. We did not address that as well, so the parties aren’t arguing that that construction should be applied here.”). For the reasons discussed below, we determine that Petitioner has not proven by a preponderance of the evidence that the prior art discloses or teaches, under Petitioner’s articulated theories, that a second transceiver routes information based on monitored characteristics. This is dispositive of the inter partes review. Accordingly, we determine that no claim terms require express construction for purposes of deciding the dispositive issues.” slip op. at 13

  • Expert testimonyPatent owner expert creditedDecided for patent owner

    “Ex. 1004, 5:25–36 (emphasis added). Thus, Palmer discloses that the determination to roam to another cell may be done by the mobile worker’s wireless communication device 20 having a specifically-programmed processor or may be done centrally, with examples being the “network” or central host processor. We disagree that this constitutes a disclosure of the access point 40 performing the roaming determinations. Rather, we find to be persuasive and credible Dr. Chrissan’s testimony that “a POSITA recognizes that an access point does not qualify as ‘centrally, for example, by the network or a central host processor,’” and, “[i]nstead, this phrase refers to one of the centrally located devices such as network 14 or central host processor 12 (in Fig. 1), or a device in administration building 33 (in Fig. 2).” Ex. 2007 ¶ 71 (citing Ex. 1004, Figs. 1, 2). Dr. Chrissan’s opinion is consistent with Palmer’s disclosure, as we will now discuss.” slip op. at 23

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “We determine that Petitioner has not established by a preponderance of the evidence its foundational assertion that Palmer discloses that “access point 40 determines whether roaming by a portable terminal 20 should take place and routes data packets accordingly.” Pet. 26–27; see Technology Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1327 (Fed. Cir. 2008) (“Failure to prove the matter as required by the applicable standard means that the party with the burden of persuasion loses on that point—thus, if the fact trier of the issue is left uncertain, the party with the burden loses.”). As such, Petitioner has not met its burden to show that Palmer discloses, as recited in independent claim 1, a second transceiver that, “based on the first signal characteristics and the second characteristics, routes information to the first mobile station and the second mobile station, respectively,” or, as recited in independent claim 6, “based on the first signal characteristics and the second characteristics, routing, using the second transceiver, information to the first mobile station and the second mobile station, respectively.” Ex. 1001, 10:38–44, 11:19–22. The Petition does not contain a contention that this “route” aspect of the claims would have been obvious. Compare Pet. 25–26 (offering an alternative argument for the monitoring aspect; contending that, “to the extent the Board disagrees that Palmer’s access point 40 performs the monitoring, it would have nonetheless been obvious to a POSA to select the access point 40 to perform the monitoring since it directly communicates with the portable terminals 20.”), with id. at 26–27 (making the anticipationtype contention that “[t]he access point 40 routes information” without an alternative obviousness contention); see also Pet. Reply 12–13 (arguing, under the monitoring-and-routing heading, that monitoring by the access point would have been obvious, but not arguing the same for routing). Petitioner has not shown by a preponderance of the evidence that independent claims 1 and 6 and dependent claims 2–4 are anticipated by or would have been obvious over Palmer.” slip op. at 28

  Patent outcomesUS 9,426,794 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,426,794
• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Power2b Inc.No claims unpatentable
  PTAB · Jun 26, 2023 · IPR2022-00325 · APJ Barbara A Parvis · IPR · Final written decision

  Claims 1–17 were not shown unpatentable: the Keely–Geva combinations lacked sufficient reasoning to combine, and did not teach claimed movement in the third dimension.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “Testimony cannot take the place of disclosure in a prior art reference, when that disclosure is required as part of the unpatentability analysis. See CTPG at 36. More specifically, the Consolidated Trial Practice Guide sets forth the following: Expert testimony, however, cannot take the place of a disclosure in a prior art reference, when that disclosure is required as part of the unpatentability analysis. For example, because “[a] claim is anticipated only if each and every element as set forth in the 8 For exhibits 1004 and 2025, we use the pagination added by the submitting party. 9 Although not relied on for independent claim 1, Kameyama also was cited in that Information Disclosure Statement that was initialed by the Examiner. Id. single prior art reference,” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987), a petitioner asserting anticipation cannot rely on its expert to supply disclosure of a claim element that is not expressly or inherently present in the reference. Similarly, in an obviousness analysis, conclusory assertions from a third party about general knowledge in the art cannot, without supporting evidence of record, supply a limitation that is not evidently and indisputably within the common knowledge of those skilled in the art. K/S Himpp v. Hear-Wear Techs., LLC, 751 F.3d 1362, 1365 (Fed. Cir. 2014). Furthermore, because an inter partes review may only be requested “on the basis of prior art consisting of patents or printed publications,” 35 U.S.C. § 311(b), expert testimony cannot take the place of disclosure from patents or printed publications. In other words, expert testimony may explain “patents and printed publications,” but is not a substitute for disclosure in a prior art reference itself. CTPG at 36. We, therefore, find that Dr. Bederson’s testimony (Ex. 1002 ¶ 92) does not remedy the deficiency in Geva’s disclosures. Petitioner has not shown that Geva teaches element 1[G].” slip op. at 49

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Based on the complete record now before us, we maintain our determination in the Institution Decision (Inst. Dec. 8) that Petitioner’s proposed definition is consistent with the level of skill reflected in the 3 Patent Owner does not present objective evidence of nonobviousness based on the complete record now before us. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Accordingly, we adopt Petitioner’s assessment of the level of skill for one of ordinary skill in the art, except without the “at least” phrase. Our analysis and determinations herein, however, do not turn on which level of skill we adopt.” slip op. at 8

  • Strike new argumentNew argument disregardedDecided for patent owner

    “Importantly, to prevail in its challenge to Patent Owner’s claims, Petitioner must demonstrate that the claims are unpatentable, and that burden never shifts to the patentee. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). “In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (2012)); see also Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016) (“It is of the utmost importance that petitioners in the IPR proceedings adhere to the requirement that the initial petition identify ‘with particularity’ the ‘evidence that supports the grounds for the challenge to each claim.’” (quoting 35 U.S.C. § 312(a)(3))). includes argument and evidence indicating clear reliance on Keely’s teachings of determining pen position, consistent with Patent Owner’s contentions. We further find that the Petition does not include Petitioner’s Reply arguments regarding Geva’s planar element. We conclude that the Petition does not set forth Petitioner’s proposed combination of Keely and Geva argued in the Reply and, therefore, the Reply includes improper, new argument. With respect to Patent Owner’s argument that Petitioner’s Reply and Reply declaration should be disregarded (Sur-reply 3; Paper 33, 1), we need not reach that decision because, as discussed below (see §§ III.D.3.b–c) even upon consideration of Petitioner’s new Reply arguments, Petitioner does not demonstrate that claim 1 is unpatentable. To the extent Patent Owner has not fully explained its opposition to the Petition in its Patent Owner Response, Petitioner must demonstrate that the claims are unpatentable, and that burden never shifts to the patentee. Dynamic Drinkware, 800 F.3d at 1378. We had cautioned Patent Owner that arguments not raised in its Patent Owner Response “may be deemed waived.” Paper 8, 9. We determine that any such waiver is not appropriate here because the Petition does not include Petitioner’s newly raised, improper Reply arguments.” slip op. at 23

  • BurdenFwd all claims patentableNot shown unpatentable

    “CTPG at 36. We, therefore, find that Dr. Bederson’s testimony (Ex. 1002 ¶ 92) does not remedy the deficiency in Geva’s disclosures. Petitioner has not shown that Geva teaches element 1[G]. For the reasons given, after consideration of the assertions and the evidence based on the complete record now before us, we determine that Petitioner has not shown that its combination of Keely and Geva teaches element 1[G] of claim 1.” slip op. at 50

  Patent outcomesUS 9,946,369 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,946,369
• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Power2b Inc.No claims unpatentable
  PTAB · Jun 23, 2023 · IPR2022-00315 · APJ Barbara A Parvis · IPR · Final written decision

  Claims 1–18 were not shown unpatentable because the Petition did not establish that Keely and Geva teach the touch-sensitive display plane or provide sufficient reasoning to combine them.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Based on the complete record now before us, we maintain our determination in the Institution Decision (Inst. Dec. 8) that Petitioner’s proposed definition is consistent with the level of skill reflected in the 3 Patent Owner does not present objective evidence of non-obviousness into the complete record now before us. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Accordingly, we adopt Petitioner’s assessment of the level of skill for one of ordinary skill in the art, except without the “at least” phrase. Our analysis and determinations herein, however, do not turn on which level of skill we adopt.” slip op. at 8

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

    “federal courts, in other words, “the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. [§] 282(b),” which is articulated in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). 37 C.F.R. § 42.100(b) (2020). Under this standard, the words of a claim generally are given their “ordinary and customary meaning,” which is the meaning the term would have to a person of ordinary skill at the time of the invention, in the context of the entire patent including the specification. Phillips, 415 F.3d at 1312–13.” slip op. at 9

  • Strike new argumentNew argument disregardedDecided for patent owner

    “We find that paragraph 75 of Dr. Bederson’s original Declaration that his testimony “show[s] how Keely’s touch-sensitive plane can be used as Geva’s planar element” (Ex. 1002 ¶ 75 (emphasis added)) is consistent with Patent Owner’s position that the proposed combination in the Petition does not include Geva’s planar element 14. We find that Dr. Bederson’s testimony that “[p]erhaps I could have been more precise by using the word ‘with’ in place of ‘as’ in this sentence, since that is what Geva itself teaches and what I relied on in forming my opinions” (Ex. 1044 ¶ 13) is not a clarification of his initial testimony, but, instead, is a clear revision of his testimony and his opinion. Dr. Bederson’s testimony regarding “using the word ‘with’ in place of ‘as’” (id.) is improper new testimony in his Reply Declaration. Furthermore, Dr. Bederson’s testimony that his new opinion is supported by “what Geva itself teaches” (id.) is not consistent with Geva’s teachings. Geva does not refer to Keely’s LCD or any LCD similar to that in Keely with a digitizer grid, but instead, Geva describes “[a]dvantageously, the position-determining input device does not require a specific, active board with in-built sensors for determining positions.” Ex. 1011, 3:7–9. which the opinion is based is entitled to little or no weight.” 37 C.F.R. § 42.65(a). Here, Dr. Bederson’s original Declaration (Ex. 1002) does not disclose facts or data showing a reliance on Geva’s planar element 14 or any LCD other than the LCD described in Keely, which incorporates by reference the hardware of Keely II.” slip op. at 28

  • BurdenFwd all claims patentableNot shown unpatentable

    “After consideration of the assertions and the evidence of record based on the complete record now before us, we determine that Petitioner has not shown that the combination of Keely and Geva teaches element 1[B]. Accordingly, we conclude that Petitioner has not demonstrated by a preponderance of the evidence that it would prevail in showing that claim 1 is unpatentable under 35 U.S.C. § 103(a) as obvious over the combination of Keely and Geva.” slip op. at 40

  Patent outcomesUS 10,664,070 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,664,070
• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Power2b Inc.No claims unpatentable
  PTAB · Jan 13, 2023 · IPR2021-01257 · APJ Barbara A Parvis · IPR · Final written decision

  Claims 1, 2, 6–8, 13, 14, 16, 18, 19, 21–23, 26, and 30 were not shown unpatentable over Newton or Reime, alone or with Hinckley, because the references did not teach element 1[b].

  RulingsFinal written decision

  • ExcludeOther

    “A. Patent Owner’s Motion to Exclude Patent Owner filed a Motion to Exclude certain of Dr. Bederson’s testimony in his Reply Declaration (Ex. 1035) arguing that the testimony is irrelevant and has little probative value. Mot 1. In particular, Patent Owner 3 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) (“AIA”), amended 35 U.S.C. § 103, and was effective on March 16, 2013. Because the challenged claims of the ’170 patent have an apparent effective filing date before March 16, 2013, we refer to the pre-AIA version of 35 U.S.C. § 103. 4 The Petition lists “Ground 3 and 4” as obviousness over Reime and Hinckley (Pet. 3, 46–60 (emphasis omitted)), and Ground 3 appears to be obviousness over Reime alone. Id. at 58. We treat the omission of the explicit obviousness identification of Reime “alone” as a typographical error. and 21 of Exhibit 1035, which Patent Owner argues are introduced for the sole purpose of supporting attorney argument against Patent Owner’s proposed claim constructions (Mot. 1–2); and (2) paragraphs 28, 31, 34, 36, 37, 43, 45, 47, 49, 50–52, 60, and 62 of Exhibit 1035, which Patent Owner argues are introduced for the sole purpose of supporting attorney argument for Petitioner’s Grounds 1–4 (Mot. 2–3). Patent Owner relies on the Federal Rules of Evidence (“FRE” or “Fed. R. Evid.”) 401 through 403 as legal support for its arguments that the identified paragraphs are inadmissible. See generally Mot. In its Opposition, Petitioner provides a table including the testimony in each contested paragraph, along with citations to the record set forth in that testimony, and the corresponding argument in Patent Owner’s Response that the testimony responds to. Opp’n 2–7. Petitioner argues, in contrast to Patent Owner’s arguments, Dr. Bederson’s testimony directly responds to arguments in Patent Owner’s Response and, therefore, is highly relevant and probative of the issues raised by Patent Owner. Id. at 1, 8. Petitioner also argues that Dr. Bederson’s testimony “is replete with citations to the record” and is “well-supported” proper expert testimony. Id. (citing Fed. R. Evid. 702–704; Consolidated Trial Practice Guide (“TPG”)5). Petitioner argues that the probative value of Dr. Bederson’s testimony in his Reply Declaration (Ex. 1035) is not outweighed by any unfair prejudice or confusion. Opp’n 8. Petitioner argues that Patent Owner’s arguments in that regard are conclusory and unsupported. Id. at 7–8.” slip op. at 7

  • Skill levelSkill level board ownDecided for patent owner

    “We find that for the most part Petitioner’s proposed definition is the better definition for purposes of this proceeding, except we again decline to adopt “at least” because that language is vague and open-ended. With respect to the educational qualifications, Petitioner’s proposed qualifications are that one of ordinary skill in the art would have had a bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field. Pet. 8 (citing Ex. 1002 ¶ 41) (emphasis added). The claims are directed to an interactive assembly comprising at least one input sensor to provide an output indicative of an impingement of an electromagnetic radiation spot. Individuals with bachelor’s degrees in physics would be knowledgeable in researching, designing, or developing such assemblies and would be able to comprehend and evaluate the teachings of the prior art. Accordingly, Petitioner’s proposed qualifications are overly narrow in not including individuals with bachelor’s degrees in physics. With respect to work experience, a person having two years of experience would be able to comprehend and evaluate the teachings of the prior art, consistent with Petitioner’s proposal. technical field, and the asserted prior art, we agree therefore with Patent Owner’s addition of “physics” in its proposed qualifications of the educational level for a person having an ordinary level of skill and we otherwise agree with Petitioner’s proposed qualifications, except without the “at least” language. Based on the complete record now before us, the level of skill that we adopt is set forth immediately below. One of ordinary skill in the art would have had a bachelor’s degree in electrical engineering, computer engineering, computer science, physics, or a related field, and at least two years of experience in the research, design, development, and/or testing of touch and/or proximity sensors, human-machine interaction and interfaces, and related firmware and software, or the equivalent, with additional education substituting for experience and vice versa. We find that the definition set forth above is consistent with the level of skill reflected in the specification of the ’170 patent and the asserted prior art references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Our analysis and conclusions herein, however, do not turn on whether we adopt Petitioner’s proposed qualifications, Patent Owner’s proposed qualifications, or the qualifications set forth immediately above.” slip op. at 11

  • Prior constructionPrior construction adoptedTerm construed patent owner constructionDecided for patent owner

    “Based on the complete record now before us, we conclude that our preliminary determination in our Decision to Institute adopting Petitioner’s implicit construction of “impingement of an electromagnetic radiation spot” was not correct. Based on the complete record now before us, for the reasons given below, as urged by Patent Owner in its Response (Resp. 8–15), we adopt the same constructions adopted by the District Court, including that “impingement of an electromagnetic radiation spot” should be construed as “an area of reflected or projected radiation.” Because the constructions that we adopt do not differ from that adopted by the District Court and because Patent Owner urged adoption of those constructions in its Patent Owner Response with detailed substantive argument and explanations, Petitioner has had notice and a full opportunity to respond. Indeed, Petitioner has provided responsive argument disputing Patent Owner’s claim constructions prior art reference meets the limitations under Patent Owner’s proposed constructions. Reply 1–5, 22–23. We have considered the arguments and evidence by both parties in the complete record now before us in making our final determinations herein.” slip op. at 17

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “For the reasons given with respect to claim construction (see supra § II.D.2), we conclude that “impingement of an electromagnetic radiation spot” means “an area of reflected or projected radiation,” which is the same as the claim construction provided by the District Court. See Ex. 1034, 4. For the longer claim recital that includes additional language, as well as the same cited phrase, we conclude that the “plain and ordinary meaning” should apply to the remaining language, which is the same as the construction provided by the District Court. See Ex. 1034, 4. We agree with Patent Owner (Resp. 32) that Newton’s teachings relied on by Petitioner describe an object interrupting an energy beam above an exterior surface of a protective barrier as well as a finger touching or contacting the surface)), but Newton does not teach “an output indicative of an impingement of an electromagnetic radiation spot on at least one of the at interactive surface element” recited in claim 1. See, e.g., Ex. 1012, Figs. 2, 3, 6, ¶¶ 13, 25, 48. After consideration of the contentions and the evidence of record, we determine that Petitioner has not shown that either Newton alone or the combination of Newton and Hinckley teaches element 1[b] of claim 1. Accordingly, based on the complete record now before us, we conclude that Petitioner has not established by a preponderance of the evidence that claim 1 is unpatentable under 35 U.S.C. § 103(a) as obvious over Newton alone or with Hinckley.” slip op. at 37

  Patent outcomesUS 9,317,170 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,317,170
• Next Caller Inc. v. Trustid, Inc.No claims unpatentable
  PTAB · Jul 18, 2022 · IPR2019-00039 · APJ Barbara A Parvis · IPR · Remand

  Claims 8–11, 19, and 20 were not shown unpatentable as obvious over Martin and Kealy or Martin, Abramson, and Kealy.

  RulingsRemand decision

  • RemandOther

    “ultimately issued as the ’985 patent and determined “there is no legal basis for the proposition the Board must defer to the examiner’s previous findings in deciding the merits of an [inter partes review].” Id. 2021 WL 4427918, at *7–8. The Federal Circuit, however, stated that “the Board’s analysis with respect to Kealy’s teachings and motivation to combine were insufficient.” 9 Both Decisions were entered into the public record. Papers 83, 84, 85. 10 The Federal Circuit stated that “[t]he Board held claims 15 and 21 had not been shown to be unpatentable” and “[t]hose claims are not at issue on appeal.” Id. at n. 1. Thus, our prior determination upholding the patentability of claims 15 and 21 is not implicated in this Final Written Decision on Remand. Id. 2021 WL 4427918, at *8. The court remanded “for further proceedings consistent with this opinion.” Id. at *9.” slip op. at 5

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “In determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). We do not discern a significant difference in the parties’ standards. We note a slight difference is that Dr. Forys’s testimony indicates expressly that the skilled artisan would have had experience with telecommunications signaling and protocols used for call processing. Ex. 2001 ¶ 36. Mr. Geier’s testimony considered as a whole, however, is substantively significantly the same, as he testifies that the skilled artisan would have had 1–2 years of experience with telecommunications and that such person would have known of state-of-the-art technologies such as those described as background of the ’985 Patent including call routing and use of ANI and caller identification (ID). Ex. 1003 ¶¶ 16, 18–20. On the record before us, we are persuaded and adopt Mr. Geier’s assessment of a person with ordinary skill in the art because it is consistent with the problems and solutions in the prior art of record. We further find that the prior art of record in the instant proceeding reflects the appropriate level of ordinary skill in the art. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art itself can reflect the appropriate level of skill in the art). However, our conclusions and analysis herein do not turn on which definition is selected and would be the same under Patent Owner’s level of the skilled artisan.” slip op. at 13

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

    “interpretation or to assess whether it is consistent with the broadest reasonable construction of the term.”). The District Court determined that “source origin confidence metric” means “a number in a range that represents the credibility of the calling party number or the calling party billing number.” Ex. 1015, 5 (emphasis added). We agree that Patent Owner’s proposed construction is consistent with the District Court’s determination and consistent with the intrinsic record. Final Dec. 24. We rejected Petitioner’s proposal that the term encompasses “a singular determination such as ‘valid’ or ‘invalid.’” Id. at 24–30. We noted that following our Decision to Institute, the District Court issued its Memorandum regarding claim construction. Ex. 1015. The District Court stated “[t]he PTAB, in its Institution Decision, concluded . . . that a ‘source origin confidence metric’ does not ‘encompass[] a binary (valid or invalid) determination.’ (D.I. 82-1 Ex. 2 at 11) The Court agrees with the PTAB’s conclusion.” Id. at 9 n. 6. We determined, in light of the ’985 Patent Specification, that the broadest reasonable interpretation of “metric” is “a measurement produced using statistical methods to indicate a probability, which does not encompass a binary (valid or invalid) determination.” Final Dec. 29.” slip op. at 15

  • Strike new argumentNew argument disregardedDecided for patent owner

    “Petitioner’s new arguments in its post-remand submission relating to “personal risk factors” are pervasive throughout the brief.20 As such, Petitioner’s brief is not in compliance with our Order and we need not consider it for that reason alone. As an independent reason for our determination that the Petition is deficient with respect to showing that the prior art teaches “personal risk factors,” we address certain of Petitioner’s improper, new arguments. With respect to the call management rules, Petitioner states that Kealy shows “suspect callers presented with ‘challenged/response’ scenario ‘to provide a spoken reason for the call, [or] type his number or identity to allow the call recipient to decide whether or not to accept the call etc.’” Pet. Post Remand Br. 3 (citing Pet. 20 (providing a generalized summary of Kealy)). The claimed steps of determining and adjusting the confidence metric occur before the incoming call is answered. See, e.g., Ex. 1001, 15:12, 16:11, Fig. 1. In contrast, the call management operations relied on by Petitioner for the first time in its post-remand submission (Pet. Post Remand Br. 3) occur as the call is being answered. Ex. 1006, 9:38–64 (teaching a “‘challenge/response’ scenario” that “allow[s] the call recipient to decide whether or not to accept the call” and “a ‘reject call’ option” that shows the trust rating). Petitioner does not explain how call management operations occurring as the call is being answered and after Kealy’s trust rating is 20 As discussed above (see § II.F.1.b), Petitioner also makes a new argument relating to the prosecution history and stating that the Examiner “observed Kealy’s complaints render obvious personal risk factors.” Pet. Post Remand Br. 4 n. 4. determined relate to the recitations in the challenged claims, such as determining and adjusting a source original confidence metric that Petitioner states is taught by Kealy’s trust rating (Pet. 44). Also, in its post-remand submission, Petitioner characterizes Kealy as relating to “callers with reduced trust ratings.” Pet. Post Remand Br. 3. The call management operations relied on by Petitioner for the first time in its post-remand submission (id.) include only a single reference to a “caller’s trust rating” (Ex. 1006, 9:57). That statement pertains to a call management rule that rings as a normal call, shows the trust rating, and presents a reject option. Id. at 9:54–59. The sentence includes a reference to a “caller’s” trust rating. Id. To the extent that “caller’s” is relied on to satisfy the requirement that the “risk factors” recited in the claim are “personal” that reliance is not consistent with Kealy’s teachings discussed throughout that make clear that Kealy’s trust rating is associated with the calling device. For instance, Kealy teaches that its trust rating will be reduced based on “accumulated complaints associated with a given calling device,” which is not a reduction based on complaints associated with a caller. Id. at code (57), 14:61–65 (teaching comparing “respective quantities of accumulated complaints associated with each calling device.”) (emphases added). Also, Kealy teaches that its trust ratings “are embedded in certificates of calling devices.” Id. at code (57), 14:58–60. Additionally, Kealy teaches that “a person will still be blacklisted even if he changes his phone number or other identifiers, so long as he maintains the same equipment and therefore the same certificate.” Ex. 1006, 6:57–60. The one statement in Kealy referring to “callers with reduced trust ratings” (id. at 9:57) is not made in connection” slip op. at 54

  Patent outcomesUS 9,001,985 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,001,985
• Leica Microsystems Inc. v. The Regents Of The University Of MichiganNo claims unpatentable
  PTAB · Jan 7, 2022 · IPR2020-01165 · APJ Nathan A Engels · IPR · Final written decision

  Claims 1–26 were not proven unpatentable because Petitioner failed to establish obviousness based on the Folestad combinations or Marriott combinations.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner

    “known to those skilled in the art that it is not even described by the patent references” (Ex. 1002 ¶ 116). See TQ Delta, LLC v. CISCO Sys., Inc., 942 F.3d 1352, 1358 (Fed. Cir. 2019) (“Conclusory expert testimony does not qualify as substantial evidence.”).9 To the contrary, each of the secondary references describes sample preparation and testing procedures in detail, reflecting expert-level knowledge and expert-level considerations that guided the experiments. Petitioner’s proposed use of Folestad’s system to analyze the samples of Laporte, Marriott, or Wittmershaus—each of which describes a complete system for detecting and measuring the fluorescence relevant to the samples at issue—essentially discounts the references’ teachings in favor of Folestad’s teachings, which does not even mention fluorescence. Excessive hindsight guides that proposal, not the generalized “desire to examine fluorescence from multiple fluorophores and engage in time-resolved detection of such fluorescence” (Pet. 22–23).” slip op. at 19

  • BurdenNot shown unpatentable

    “Based on the complete record, we determine the weight of the evidence does not sufficiently support Petitioner’s arguments that the challenged claims would have been obvious based on the combination of Folestad and the secondary references. As Petitioner acknowledges, Folestad does not address fluorescence. Pet. 25. In fact, Folestad does not teach or even suggest studying a sample having fluorophores, much less a sample having multiple fluorophores. Pet. 25 (“Folestad does not mention that [its] sample has a plurality of fluorophores, or that [its] system is specifically intended for fluorescence detection.”); Ex. 2017 ¶ 35.” slip op. at 16

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

    “consistent with Petitioner’s arguments that the proposed combinations of the prior art amount to simple substitutions, that the combinations would have been obvious to try, or that replacing Folestad’s pharmaceuticals with a live mouse would have been merely a new use for an old system. See Pet. 22– 24. We find no evidentiary support from Dr. Knox’s conclusory suggestion known to those skilled in the art that it is not even described by the patent references” (Ex. 1002 ¶ 116). See TQ Delta, LLC v. CISCO Sys., Inc., 942 F.3d 1352, 1358 (Fed. Cir. 2019) (“Conclusory expert testimony does not qualify as substantial evidence.”).9 To the contrary, each of the secondary references describes sample preparation and testing procedures in detail, reflecting expert-level knowledge and expert-level considerations that guided the experiments. Petitioner’s proposed use of Folestad’s system to analyze the samples of Laporte, Marriott, or Wittmershaus—each of which describes a complete system for detecting and measuring the fluorescence relevant to the samples at issue—essentially discounts the references’ teachings in favor of Folestad’s teachings, which does not even mention fluorescence. Excessive hindsight guides that proposal, not the generalized “desire to examine fluorescence from multiple fluorophores and engage in time-resolved detection of such fluorescence” (Pet. 22–23). Nor does the “availability and cost of laboratory equipment” support Petitioner’s arguments that a person of ordinary skill would have selected Folestad’s system (instead of Laporte’s, Marriott’s, or Wittmershaus’s) to “repurpose” Folestad’s system for the study of fluorescence. Pet. 22; Reply 6. First, the record lacks adequate evidence of the equipment available to a person of ordinary skill, and second, our analysis turns on the references’ teachings, not on a hypothetical situation in which a person of ordinary skill wants to study fluorescence and happens to have the “$300,000-$500,000” of equipment on hand to “repurpose” Folestad’s 9 Dr. Knox’s testimony does not disclose the underlying facts or data on which his opinion is based and, therefore, is entitled to little or no weight. See 37 C.F.R. § 42.65(a). Petitioner’s arguments reflect excessive hindsight in the suggestion that a person of ordinary skill would have selected Folestad’s supercontinuum white light laser and streak camera to perform the experiments taught by the secondary references, with essentially no evidence that Folestad’s system would have provided any improvement or benefit. 2. Conclusion Regarding Folestad-Based Grounds Based on the Petition and the evidence of record, we find insufficient evidence to establish that a person of ordinary skill would have had reason to combine the teachings of Folestad with Laporte, Marriott, or Wittmershaus to arrive at the inventions of independent claims 1, 10, and 19. Accordingly, Petitioner has not shown by a preponderance of the evidence that claims 1, 10, and 19, nor dependent claims 2–9, 11–18, and 20–26, are unpatentable.” slip op. at 18

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightDecided for patent owner

    “known to those skilled in the art that it is not even described by the patent references” (Ex. 1002 ¶ 116). See TQ Delta, LLC v. CISCO Sys., Inc., 942 F.3d 1352, 1358 (Fed. Cir. 2019) (“Conclusory expert testimony does not qualify as substantial evidence.”).9 To the contrary, each of the secondary references describes sample preparation and testing procedures in detail, reflecting expert-level knowledge and expert-level considerations that guided the experiments. Petitioner’s proposed use of Folestad’s system to analyze the samples of Laporte, Marriott, or Wittmershaus—each of which describes a complete system for detecting and measuring the fluorescence relevant to the samples at issue—essentially discounts the references’ teachings in favor of Folestad’s teachings, which does not even mention fluorescence. Excessive hindsight guides that proposal, not the generalized “desire to examine fluorescence from multiple fluorophores and engage in time-resolved detection of such fluorescence” (Pet. 22–23). Nor does the “availability and cost of laboratory equipment” support Petitioner’s arguments that a person of ordinary skill would have selected Folestad’s system (instead of Laporte’s, Marriott’s, or Wittmershaus’s) to “repurpose” Folestad’s system for the study of fluorescence. Pet. 22; Reply 6. First, the record lacks adequate evidence of the equipment available to a person of ordinary skill, and second, our analysis turns on the references’ teachings, not on a hypothetical situation in which a person of ordinary skill wants to study fluorescence and happens to have the “$300,000-$500,000” of equipment on hand to “repurpose” Folestad’s 9 Dr. Knox’s testimony does not disclose the underlying facts or data on which his opinion is based and, therefore, is entitled to little or no weight. See 37 C.F.R. § 42.65(a). Petitioner’s arguments reflect excessive hindsight in the suggestion that a person of ordinary skill would have selected Folestad’s supercontinuum white light laser and streak camera to perform the experiments taught by the secondary references, with essentially no evidence that Folestad’s system would have provided any improvement or benefit.” slip op. at 19

  Patent outcomesUS 7,277,169 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 7,277,169
• Samsung Electronics Co., Ltd. v. Ibex PT Holdings Co., Ltd.No claims unpatentable
  PTAB · Apr 10, 2019 · IPR2018-00012 · APJ Kimberly Mcgraw · IPR · Final written decision

  Claims 1–5 were not shown unpatentable as obvious over WD4-v2, Lin, and Zhou II because Petitioner failed to establish that Zhou II was a publicly accessible printed publication.

  RulingsFinal written decision

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable

    “The determination of whether a document is a printed publication involves a case-by-case inquiry into the facts and circumstances surrounding the reference’s disclosure to members of the public. See Medtronic, 891 F.3d at 1380; In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). A document is considered a printed publication if it has been “disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence [could] locate it.” Acceleration Bay, LLC v. Activation Blizzard Inc., 908 F.3d 765, 774 (Fed. Cir. 2018); SRI Int’l, Inc. v. Internet Sec. Sys., 511 F.3d 1186, 1194 (Fed. Cir. 2008). Indexing a reference is not “a necessary condition for a reference to be publicly accessible,” but it is one among various factors that may bear on public accessibility. In re Lister F.3d 1307, 1311 (Fed. Cir. 2009); see also Acceleration Bay, 908 F.3d at 774 (stating “where indexing is concerned, . . . the ultimate question is whether the reference was available to the extent that persons interested and ordinarily skilled in the subject matter or art, exercising reasonable diligence, can locate it”).” slip op. at 12

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “For the foregoing reasons, we conclude that Petitioner has not persuasively shown that a person interested and ordinarily skilled in the subject matter, exercising reasonable diligence, could have located Zhou II on the JCT-VC website, and thus, has not shown that Zhou II was publicly accessible by virtue of its uploading onto the JCT-VC website.” slip op. at 19

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “would have had at least a B.S. degree in electrical engineering, or equivalent thereof, and at least three to four years of experience in the relevant field, which includes video coding technology, or an M.S. degree in electrical engineering and at least two to three years of experience with video coding technology. More education can supplement practical experience. Pet. 8 (citing Ex. 1002 ¶¶ 21–22). Patent Owner contends that a person of ordinary skill in the art would have had credentials that “reflect a practical understanding of the design considerations and challenges associated with the video coding technology at issue in the ’855 patent,” such as “an engineering degree and three or more years of actual industry experience.” PO Resp. 20. The parties’ proposals do not differ in any significant way. We adopt Petitioner’s articulation of the level of ordinary skill in the art, which is supported explicitly by the testimony of Mr. Bross and is commensurate with the level of ordinary skill as reflected in the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 10

  • Strike new argumentNew argument disregardedDecided for patent owner

    “Petitioner, in its Reply, presents evidence and argument for the first time that Zhou II was disseminated at the sixth JCT-VC meeting in Torino in July, 2011 because it was “presented and discussed” during the meeting. Reply 16–17 (citing Ex. 1057, 23, 97) (emphasis added). This argument is an entirely new theory of public accessibility and exceeds the proper scope of a reply. See 37 C.F.R. § 42.23(b) (“A reply may only respond to arguments raised in the corresponding opposition or patent owner’s response.”).” slip op. at 20

  Patent outcomesUS 8,654,855 not shown unpatentable
  § 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,654,855
• Unified Patents Inc. v. Kamatani Cloud, LLCNo claims unpatentable
  PTAB · Sep 19, 2018 · IPR2017-01370 · APJ Barbara A Parvis · IPR · Final written decision

  The Board held claims 1, 2, 5, 7–13, 15–18, 21, 23–28, 30–32, 34, 35, and 38–41 not shown unpatentable under the three § 103 grounds.

  RulingsFinal written decision

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

    “d) Conclusion—“detecting whether the measurement data are capable of being measured” Based on the entire trial record before us, for the reasons given, we are persuaded that Patent Owner’s proposed construction is consistent with the plain and ordinary meaning of the claim language as understood by a person of ordinary skill in the art in the context of the ’940 Patent Specification. See Ex. 1001, 5:40–54, 6:3–13, 7:1–4, Figs. 3, 4. Accordingly we determine that the broadest reasonable interpretation of detecting if data are “capable of being [measured/processed]” or “can be processed” is detecting “if any instrument has the functional ability to measure measurement data,” as proposed by Patent Owner. PO Resp. 14– 21.15 We determine no further express construction is necessary for the detecting recitations in the independent claims.” slip op. at 23

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “C. Person of Ordinary Skill in the Art Petitioner proposes that a person of ordinary skill in the art would have had a degree in computer science, electrical engineering, or computer engineering, or equivalent experience, and at least two years of experience in remote monitoring and control systems. Pet. 7 (citing Ex. 1007 ¶ 16). At the preliminary stage, Patent Owner agreed with Petitioner’s proposal (Prelim. Resp. 8) and Patent Owner has not subsequently disputed Petitioner’s proposal or offered an alternative (see generally PO Resp.). Because we find Petitioner’s statement of the level of skill in the art (Pet. 7; Ex. 1007 ¶ 16) consistent with the level of skill implied by the prior art of record, we adopt Petitioner’s statement of the level of skill in the art. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art itself can reflect the appropriate level of skill in the art).” slip op. at 25

  • Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner

    “Mr. Zatarain testifies “[i]n my opinion, detecting the off-on status of an instrument satisfies a PHOSITA’s understanding of the term ‘capable’ as well as relevant dictionary definitions for that term.” Ex. 1030 ¶ 84. Mr. Zatarain’s testimony then repeats the aforementioned definitions (id.), which we find are consistent with Patent Owner’s proposed construction. Mr Zatarain also testifies that an instrument that is not powered on “lacks the ability to perform any of its general functions.” Id. ¶ 85. But Mr. Zatarain’s testimony does not provide sufficient explanation as to why the meaning of the words “capable” and “available” overlap, as Petitioner contends (Pet. Reply 22–26). Additionally, Mr. Zatarain’s testimony is conclusory. See Ex. 1030 ¶¶ 84–85. We, instead, credit the testimony of Dr. Zavadsky that Patent Owner’s proposed construction is consistent with the understanding of one of ordinary skill in the art. See, e.g., Ex. 2006 ¶¶ 28, 30–36.” slip op. at 23

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “Petitioner’s contentions are premised on its claim construction contentions, which we did not adopt. More specifically, for the reasons discussed supra in Section II.A.2, we are persuaded that the broadest reasonable interpretation of detecting if data are “capable of being [measured/processed]” is detecting “if any instrument has the functional ability to measure measurement data,” as proposed by Patent Owner. PO Resp. 14–21. Petitioner relies on two paragraphs of Miyajima describing determining whether an instrument is powered on and, if so, if it is processing another client’s data. Pet. 38–45 (citing e.g., Ex. 1005 ¶¶ 47, 55). This description, however, merely is of detecting the instrument’s availability. We do not find that Miyajima’s description of determining whether an instrument is powered on and, if so, if it is processing another client’s data (Ex. 1005 ¶¶ 47, 55) teaches “detecting whether the measurement data are capable of being measured by any measurement means in the said server apparatus” (emphasis added) in accordance with our construction, i.e., we do not find Miyajima teaches detecting “if any instrument has the functional ability to measure measurement data.”” slip op. at 31

  Patent outcomesUS 6,873,940 not shown unpatentable
  Claim construction§ 103 obviousnesscites Graham
  Patents in suitUS 6,873,940
• Polygroup Limited v. Willis Electric Co., Ltd.No claims unpatentable
  PTAB · May 7, 2018 · IPR2016-01781 · APJ William V Saindon · IPR · Final written decision

  Claims 1–5, 7, 8, 11, 12, 15–18, and 21–27 were not shown unpatentable because Miller did not teach a claimed tree portion and the proposed combination lacked a supported rationale.

  RulingsFinal written decision

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

    “application that is now the ’186 patent. Ex. 1001, (63). In our Final Written Decision addressing the ’186 patent, we agreed with and adopted Patent Owner’s proposed construction of “tree portion.” Polygroup Ltd. v. Willis Electric Co., Ltd., Case IPR2016-01610, Paper 187, 12–21 (Final Written Decision, Feb. 26, 2018). Because the ’072 patent contains the same specification as the ’186 patent, we determine that a person of ordinary skill in the art reading the ’072 patent claims in light of the specification would arrive at the same construction for “tree portion” as we did for the ’186 patent. Petitioner agrees the extrinsic evidence before us here is the same as presented in IPR2017-01610, addressing the ’186 patent. Tr. 10:3–6. Petitioner asserts that, relative to our Final Written Decision in IPR2017- 01610, a potential difference here is the structure of the claims. Tr. 9:13–20; see also id. at 8:1–9:6 (setting forth the discussion with Petitioner regarding whether the “tree portion” limitation should be construed the same as in IPR2016-01610). We address that argument below. Patent Owner asserts that the extrinsic evidence is the same relative to IPR2017-01610, but that this record includes additional citations to that evidence. Id. at 26:4–19, 27:1–28:2.” slip op. at 12

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Reviewing the parties’ proposed definitions, we find Petitioner’s to be the more appropriate, with one caveat discussed later. Petitioner’s proposed level of skill would allow that person to understand the prior art in this proceeding and make and/or use it. On the other hand, Patent Owner’s proposed level of skill is too low, and includes persons not involved in the design or creation of the product, such as a person tangentially involved with the product in the manufacturing phase; people who would not know how to make and/or use the relevant art. We agree with Petitioner, arguing in its Reply, that a person of ordinary skill in the art requires the technical skills and knowledge to be able to understand, e.g., the electrical connections involved in artificial trees. Pet. Reply 2–6. As to Patent Owner’s argument that Petitioner’s requirement that a person of ordinary skill has an engineering degree and two year’s practical experience is unduly high (PO Resp. 33–34), we note that the person of ordinary skill is a hypothetical person, and that less education can be offset by more experience—in other words, we do not interpret Petitioner’s list as having a strict requirement for an engineering degree, but rather to set forth the idea that a person of ordinary skill in the art is typified by someone with the knowledge of a person with an engineering degree.” slip op. at 14

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “Analysis: Tree Portion Each of the independent claims challenged includes a “tree portion” limitation. Petitioner relies on Miller to teach this limitation. Pet. 28, 37– 38, 54, 57; ’1782 Pet. 26. As we discussed in IPR2016-01610, which we adopt and incorporate herein, Miller does not teach a tree portion. IPR2016- 01610, Paper 187, 33–34. In that decision, we explained that, although Miller’s tree has a trunk, branches, and lights, for example, those structures are not “a mechanically and electrically connectable modular and unitary portion of an artificial tree.” For instance, the branches are not structured as a module along with the trunk—they are completely independent. Accordingly, none of the challenged grounds meet this limitation, and we determine that Petitioner has not shown, by a preponderance of the evidence, that the subject matter of claims 1–5, 7, 8, 11, 12, 15–18, and 21–27 would have been obvious under any of the grounds presented.” slip op. at 21

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

    “a. Not a Known Alternative We are not persuaded by Petitioner’s argument that a tapered electrical connector inside a tube is a known alternative to the snap-fit electrical connector inside a tube of Yang—there is no credible evidence that such a connection was actually known in the art. See Pet. 22–24 (arguing that “a compression-fitted tapered connector [is] one of many known conventional connectors”, “[a] POSA would have known there were numerous but finite designs to enable a secure fit”, “compression-fit connectors were known alternatives”, and characterizing the proposed combination “a substitution of one known element for another” and “obvious to a POSA to try”); see also Pet. Reply 32–33 (making similar arguments). Petitioner’s argument relies heavily on its expert, who in turn cites ten references that, to the extent they represent the state of the art, prove that no one thought to use press-fit electrical connectors in a tube, let alone consider them alternatives to snap-fit electrical connectors. Ex. 1006 ¶¶ 90–100. Instead, these references use terms like taper, press-fit, or the like in different contexts for different reasons, not relevant to the present context of securing an electrical connector inside a tube at a certain location by providing a connector having two different diameters.11” slip op. at 23

  Patent outcomesUS 8,974,072 not shown unpatentable
  Claim construction§ 103 obviousness
  Patents in suitUS 8,974,072

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.