- Asustek Computer, Inc. / Asus Computer International v. Avago Technologies General IP (Singapore) Pte. LtdRehearing grantedPTAB · Mar 8, 2017 · IPR2016-00647 · APJ Glenn J Perry · IPR · Rehearing
Granted petitioner’s request for reconsideration and added institution of the §102 Cioffi challenge to claims 8, 11, 12, 14, 15, 18, and 19.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“III. CONCLUSIONS For the foregoing reasons, we are persuaded that our Decision to Institute overlooked or misapprehended the matters discussed in this Decision, and that the information presented in the Petition establishes that there is a reasonable likelihood that Petitioner would prevail with respect to its challenge as to the patentability of claims 8, 11, 12, 14, 15, 18, and 19 as being anticipated by Cioffi. The Board has not made a final determination on the patentability of any challenged claims or the construction of any claim terms. Our final decision will be based on the record as fully developed during trial.” slip op. at 5
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Upon review on rehearing, we are persuaded the Petition demonstrates sufficiently for purposes of institution that data and synchronization signals are multiplexed and encoded by MUX & ENCODER 43 in Cioffi’s Figure 3. Multiplexed sub-symbols are passed to modulator 45, which incorporates an inverse fast Fourier transform (IFFT). Based on this understanding of Cioffi, the detailed reading of claims 8, 11, 12, 14, 15, 18, and 19 on Cioffi at Petition pages 35–53, supported by the Lyon Declaration (Ex. 1003), presents a reasonable likelihood of Petitioner prevailing as to this challenge. We, therefore, modify our Decision on Institution to include this challenge.” slip op. at 4
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“Upon review on rehearing, we are persuaded the Petition demonstrates sufficiently for purposes of institution that data and synchronization signals are multiplexed and encoded by MUX & ENCODER 43 in Cioffi’s Figure 3. Multiplexed sub-symbols are passed to modulator 45, which incorporates an inverse fast Fourier transform (IFFT). Based on this understanding of Cioffi, the detailed reading of claims 8, 11, 12, 14, 15, 18, and 19 on Cioffi at Petition pages 35–53, supported by the Lyon Declaration (Ex. 1003), presents a reasonable likelihood of Petitioner prevailing as to this challenge. We, therefore, modify our Decision on Institution to include this challenge.” slip op. at 4
§ 102 anticipationPatents in suitUS 6,430,148 - Foursquare Labs, Inc. v. Silver State Intellectual Technologies, Inc.No claims unpatentablePTAB · May 26, 2015 · IPR2014-00159 · APJ Lynne E Pettigrew · IPR · Final written decision
Claim 1 was not shown unpatentable because Fraccaroli does not disclose all claim limitations arranged or combined in the same way.
RulingsFinal written decision- BurdenNot shown unpatentable
“example when reviewing an allegedly anticipating prior art reference. Reply 7 (citing Net MoneyIN, 545 F.3d at 1369 n.5). Nevertheless, we still must determine whether the reference discloses all of the limitations arranged or combined in the same way as recited in the claim, even while looking at the reference as a whole. See Net MoneyIN, 545 F.3d at 1371. Claim 1 is a method claim reciting specific steps. Limitation [f] recites the step of “receiving, from the user, additional data regarding the user, the additional data being related to the geographic location of the user.” In Fraccaroli, only the convention application includes this step, with the information in the event field corresponding to the “additional data” recited in the claim. See Ex. 1003, 8:57–9:5. For limitation [h], which recites the step of “receiving from the user an access list of possible requesters of the data and the additional data,” Petitioner relies on information provided by the user in Fraccaroli’s closest friend application, i.e., a list of known persons with whom the user wishes to share information. Pet. 30 (citing Ex. 1003, 8:44–48). Notably, Petitioner does not contend that the user in Fraccaroli’s convention application places the information center or registration desk on an access list. See Pet. 30–31; Tr. 60:7–11. Thus, the convention application does not include the step of receiving an “access list” from the user (limitation [h]), and the closest friend application does not include the step of receiving “additional data” from the user (limitation [f]). For limitation [j]—the step of providing location data and additional data to possible requesters on the access list—Petitioner cites Fraccaroli’s description of message signals sent after a match is made. Pet. 31–32. Petitioner contends that message signals containing information from a user’s matching profile are sent in any of the embodiments disclosed in Fraccaroli. Reply 13 (citing Ex. 1003, 10:40–67). Nevertheless, Fraccaroli does not describe a process that includes both the steps of receiving “additional data” from a user and receiving an “access list” from a user. Therefore, even if message signals are sent in all embodiments or applications described in Fraccaroli, the reference does not disclose a process in which message signals including “additional data” are sent to possible requesters on an “access list,” as set forth in limitation [j]. Accordingly, we find that Petitioner has not shown that Fraccaroli discloses all of the limitations arranged or combined in the same way as recited in claim 1 and, thus, has not shown that Fraccaroli anticipates claim 1.” slip op. at 13
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“example when reviewing an allegedly anticipating prior art reference. Reply 7 (citing Net MoneyIN, 545 F.3d at 1369 n.5). Nevertheless, we still must determine whether the reference discloses all of the limitations arranged or combined in the same way as recited in the claim, even while looking at the reference as a whole. See Net MoneyIN, 545 F.3d at 1371. Claim 1 is a method claim reciting specific steps. Limitation [f] recites the step of “receiving, from the user, additional data regarding the user, the additional data being related to the geographic location of the user.” In Fraccaroli, only the convention application includes this step, with the information in the event field corresponding to the “additional data” recited in the claim. See Ex. 1003, 8:57–9:5. For limitation [h], which recites the step of “receiving from the user an access list of possible requesters of the data and the additional data,” Petitioner relies on information provided by the user in Fraccaroli’s closest friend application, i.e., a list of known persons with whom the user wishes to share information. Pet. 30 (citing Ex. 1003, 8:44–48). Notably, Petitioner does not contend that the user in Fraccaroli’s convention application places the information center or registration desk on an access list. See Pet. 30–31; Tr. 60:7–11. Thus, the convention application does not include the step of receiving an “access list” from the user (limitation [h]), and the closest friend application does not include the step of receiving “additional data” from the user (limitation [f]). For limitation [j]—the step of providing location data and additional data to possible requesters on the access list—Petitioner cites Fraccaroli’s description of message signals sent after a match is made. Pet. 31–32. Petitioner contends that message signals containing information from a user’s matching profile are sent in any of the embodiments disclosed in Fraccaroli. Reply 13 (citing Ex. 1003, 10:40–67). Nevertheless, Fraccaroli does not describe a process that includes both the steps of receiving “additional data” from a user and receiving an “access list” from a user. Therefore, even if message signals are sent in all embodiments or applications described in Fraccaroli, the reference does not disclose a process in which message signals including “additional data” are sent to possible requesters on an “access list,” as set forth in limitation [j]. Accordingly, we find that Petitioner has not shown that Fraccaroli discloses all of the limitations arranged or combined in the same way as recited in claim 1 and, thus, has not shown that Fraccaroli anticipates claim 1.” slip op. at 13
- RehearingRehearing, grantedGranted
“Subsequent to institution, Petitioner filed a Request for Rehearing, Paper 8, which we granted for the limited purpose of modifying our construction of one claim term, Paper 13 (“Reh’g Dec.”). Thereafter, Patent Owner filed a Patent Owner Response, accompanied by a Declaration of Dr. Craig Rosenberg. Paper 14 (“PO Resp.”). Petitioner filed a Reply to the Patent Owner Response, along with a Declaration of Mr. Chris Schmandt. Paper 17 (“Reply”); Ex. 1027. We held an oral hearing on February 24, 2015. A transcript of the oral hearing is included in the record. Paper 27 (“Tr.”).” slip op. at 2
Patent outcomesUS 7,343,165 not shown unpatentable§ 102 anticipationPatents in suitUS 7,343,165
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.