- AT&T Corp. / AT&T Communications LLC et al. v. Dali Wireless, Inc.All claims unpatentablePTAB · Mar 5, 2024 · IPR2023-00818 · APJ Sharon Fenick · IPR · Final written decision
Claims 1–19 are unpatentable as obvious over Wu alone or Wu with Sabat-552.
RulingsFinal written decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“institution of inter partes review of claims 1–19 (“the challenged claims”) of U.S. Patent No. 10,334,499 B2 (Ex. 1001, “the ’499 patent”). Dali Wireless Inc. (“Patent Owner”) filed a Preliminary Response (Paper 7, “Prelim. Resp.”). Ericsson filed a Preliminary Reply (Paper 9). We determined that the information presented in the Petition established that there was a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims, and therefore we instituted this proceeding on March 9, 2023, as to all challenged claims and all grounds of unpatentability. Paper 11 (“Dec. on Inst.”). We granted a request in IPR2023-00831 by AT&T Corp., AT&T Communications LLC, AT&T Services, Inc., AT&T Mobility LLC, and AT&T Mobility II LLC to be joined as a Petitioner in this proceeding. Paper 19. After a joint request of Patent Owner and Ericsson, we terminated the proceeding as to Ericsson, leaving AT&T Corp., AT&T Communications LLC, AT&T Services, Inc., AT&T Mobility LLC, and AT&T Mobility II LLC (“Petitioner”) as the lead (and sole) petitioner in this proceeding. Papers 16, 17, 20.” slip op. at 2
- PTAB / AIA Trials › §315(e) estoppelEstoppel does not applyDecided for petitioner
“When deciding whether issue preclusion applies, we consider whether: (1) a prior action presents an identical issue; (2) the prior action actually litigated and adjudged that issue; (3) the judgment in that prior action necessarily required determination of the identical issue; and (4) the Apple, Inc., 909 F.3d 1375, 1377 (Fed. Cir. 2018) (citing Stephen Slesinger, Inc. v. Disney Enterprises, Inc., 702 F.3d 640, 644 (Fed. Cir. 2012)). To the extent Petitioner asks us to consider the 01473 IPR institution decision for issue preclusion, we do not. In that decision the Board reached a finding based on the institution standard (showing of a “reasonable likelihood that the petitioner will prevail,” 35 U.S.C. § 314(a)) rather than proof by a preponderance of the evidence, which is before us now (35 U.S.C. § 316(e)). Ex. 1004. Thus issues before us here were not presented and adjudged in that institution decision. Regarding the 01473 IPR adverse judgment decision, that decision did not require determination of any issues before us, as that decision was based on Patent Owner canceling the challenged claims rather than any determination regarding unpatentability that had been shown by a preponderance of the evidence. Ex. 1005.” slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“The record does not contain further argument or evidence regarding the level of skill of one of ordinary skill in the art, and we again adopt Petitioner’s definition, which does not encompass an open-ended (“at least 3 years”) amount of experience and which is supported by the testimony of Dr. Houh. We would reach the same conclusions if we were to remove the open-ended terminology from Patent Owner’s definition and adopt that definition.” slip op. at 14
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“a . . . set of radio resources” is not limited to and does not necessarily include configuration information that is required to or used to reconfigure remote radio units. As Petitioner argues, there does not appear to be any indication in the specification and other intrinsic evidence that “digital representation” should be given more than its ordinary meaning, or that an underlying construction of “radio resources” would not be applied to this claim term, which explicitly includes “radio resources.” Pet. Reply 9–10 (citing Ex. 1001, representation” in the specification of the ’499 patent). Our construction is further supported by the language of the claims, which requires that each “set of radio resources” is “for transmission at an antenna of the first remote unit.” Ex. 1001, 14:17–19, 14:22–24, 15:3–5, 15:8–10, 16:6–8, 16:11–13. With respect to the “digital representation” of “set[s] of radio resources,” the specification of the ’499 patent describes that in the downlink (base station to DRU antenna) path for data, RF signals received at the DAU from base station(s), are down-converted, digitized, and further processed resulting in “independently serialized, parallel data streams” that are delivered to DRUs. Ex. 1001, 4:63–5:12. Petitioner contends that this description of delivery of a digitized version of an RF signal to DRUs describes the sending/transmission of a digital representation of the radio. Pet. 9–10. While Patent Owner appears to argue that a “digital representation” of a radio resource would be only an “identifier” of, e.g., an RF carrier (PO Resp. 18), this does not appear to be supported by the specification or the cited testimony of Dr. Chrissan. We do not see a reason to relate “digital representation of . . . a set of radio resources” in the claims to the description in the ’499 patent specification of the remote configuration of DRU parameter settings via the DAU, including detecting or determining radio resources assigned to a DRU and configuring the DRU, turning on and off individual carriers transmitted and received by a DRU. PO Resp. 16–18 (citing Ex. 1001, 4:50–62, 6:31–44, 7:44–50, 12:15–39, 12:58–13:2). No cited portion of the specification describes these signals sent from a DAU to control a DRU as digital representations of a set of radio resources. While Patent Owner cites, in support, Dr. Chrissan’s declaration, Dr. Chrissan does” slip op. at 16
Patent outcomesUS 10,334,499 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,334,499 - AT&T Corp. / AT&T Communications LLC et al. v. Dali Wireless, Inc.All claims unpatentablePTAB · Mar 5, 2024 · IPR2022-01419 · APJ Sharon Fenick · IPR · Final written decision
Claims 1–19 are unpatentable as obvious over Wu alone or Wu with Sabat-552.
RulingsFinal written decision- PTAB / AIA Trials › §315(e) estoppelEstoppel does not applyDecided for petitioner
“When deciding whether issue preclusion applies, we consider whether: (1) a prior action presents an identical issue; (2) the prior action actually litigated and adjudged that issue; (3) the judgment in that prior action necessarily required determination of the identical issue; and (4) the Apple, Inc., 909 F.3d 1375, 1377 (Fed. Cir. 2018) (citing Stephen Slesinger, Inc. v. Disney Enterprises, Inc., 702 F.3d 640, 644 (Fed. Cir. 2012)).” slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“We found in the Decision on Institution that Patent Owner’s definition was generally consistent with Petitioner’s definition, with the exception of requiring 3 years or more (as opposed to 2 to 3 years) of work experience in wireless communication systems and, for the purpose of institution, we adopted Petitioner’s provided definition for the level of skill of a person of ordinary skill in the art as reasonable and consistent with the prior art. Dec. on Inst. 8–9. The record does not contain further argument or evidence regarding the level of skill of one of ordinary skill in the art, and we again adopt Petitioner’s definition, which does not encompass an open-ended (“at least 3 years”) amount of experience and which is supported by the testimony of Dr. Houh. We would reach the same conclusions if we were to remove the open-ended terminology from Patent Owner’s definition and adopt that definition.” slip op. at 14
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“b) Our Conclusion We conclude that the proper construction of “digital representation of a . . . set of radio resources” is not limited to and does not necessarily include configuration information that is required to or used to reconfigure remote radio units.” slip op. at 16
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“We do not need to construe “packetizing” because collateral estoppel prevents Patent Owner from arguing that Wu does not disclose “packetizing” as explained below. We also do not need to construe any other terms to resolve the disputes before us. Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms ... that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng'g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 19
Patent outcomesUS 10,334,499 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,334,499 - Opticis Co., Ltd. v. Inneos LLCInstitutedPTAB · Feb 2, 2024 · IPR2023-01256 · APJ Terry J Owens · IPR · Institution
The Board instituted review of claims 1, 2, 6, 7, and 9 on all five §103 grounds in the petition.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority to determine whether to institute an inter partes review. 37 C.F.R. § 42.4(a) (2023). Under 35 U.S.C. § 314(a), an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” A decision to institute under 35 U.S.C. § 314 may not institute on fewer than all claims challenged in the petition. 37 C.F.R. § 42.108(a) (implemented as a result of SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018)). Upon consideration of the arguments and evidence presented by Petitioner and Patent Owner, we are persuaded that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing the unpatentability of at least one challenged claim. See 35 U.S.C. § 314(a). For the reasons explained below, we institute an inter partes review of all challenged claims.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Ground 1 is based upon obviousness, not anticipation. Patent Owner’s argument is not well taken because it does not address what fixing Kurita’s single optical fiber (40) in place.” slip op. at 13
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date, deniedInstituted
“The purpose of requiring reasonable diligence by the first to conceive the invention but second to reduce to practice is to assure that the invention was not abandoned or unreasonably delayed by the first inventor during the period after the second inventor entered the field.” Brown v. Barbacid, 436 F.3d 1376, 1379 (Fed. Cir. 2006). “A patent owner need not prove the inventor continuously exercised reasonable diligence throughout the critical period; it must show there was reasonably continuous diligence.” Perfect Surgical Techniques, Inc. v. Olympus Am., Inc., 841 F.3d 1004, 1009 (Fed. Cir. 2016). “[T]here need not necessarily be evidence of activity on every single day if a satisfactory explanation is evidenced.” Monsanto Co. v. Mycogen Plant Sci., Inc., 261 F.3d 1356, 1369 (Fed. Cir. 2001). Thus, Patent Owner must provide an explanation that is satisfactory to indicate that the relied-upon computer modeling and prior art search update show reasonably continuous diligence from November 10, 2003 to January 15, 2004. Patent Owner has provided some evidence to show diligence from November 10, 2003 to January 15, 2004, but Patent Owner has not explained why, under the facts of this case, the evidence is sufficient to establish reasonably continuous diligence for the period before Bhandarkar’s effective filing date to the date of constructive reduction to practice. We have reviewed Petitioner’s contentions as to how Bhandarkar teaches the subject matter of the claims, and we find them sufficiently persuasive at this stage. Based upon the above-discussed evidence and that the optical combiner claimed in claims 1, 2, 6, 7, and 9 would have been obvious to one of ordinary skill in the art over Bhandarkar. slip op. at 26
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“institution under 35 U.S.C. § 314(a) because the factors identified in Apple, Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”), weigh in favor of denying institution in view of the district court litigation (Prelim. Resp. 68–69). A Memorandum from Director Vidal titled Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (USPTO June 21, 2022) (“Interim Procedure”)2 provides that “the PTAB will not deny institution of an IPR or PGR under Fintiv . . . where a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition” (Interim Procedure 9). Petitioner has submitted such a stipulation (Paper 11). Thus, we do not exercise discretion to deny institution under 35 U.S.C. § 314(a).” slip op. at 27
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 7,198,416 - AT&T Corp. / AT&T Communications LLC et al. v. Dali Wireless Inc.All claims unpatentablePTAB · Jan 30, 2024 · IPR2023-00646 · APJ Karl D Easthom · IPR · Final written decision
Claims 1–12 are unpatentable as obvious over the listed Leng-based grounds, including combinations with Cannon and Gupta.
RulingsFinal written decision- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“persuasive. Accordingly, we determine that Petitioner shows by a preponderance of evidence claim 1 would have been obvious over Leng alone or the combined teachings of Leng and Cannon.” slip op. at 93
Patent outcomesUS 8,682,338 unpatentable§ 103 obviousnesscites Phillips · KSRPatents in suitUS 8,682,338 - AT&T Corp. / AT&T Communications LLC et al. v. Dali Wireless Inc.All claims unpatentablePTAB · Jan 30, 2024 · IPR2022-01212 · APJ Karl D Easthom · IPR · Final written decision
Claims 1–12 are unpatentable: claims 1–3 as obvious over Leng, and claims 4–12 as obvious over Leng, Cannon, and Gupta.
RulingsFinal written decision- Skill levelOther
“B. Claim Construction In inter partes reviews, the Board construes claims using the same claim construction standard employed in a civil action under 35 U.S.C. § 282(b). 37 C.F.R. § 42.100(b) (2020). Under the principles set forth by our reviewing court, the “words of a claim ‘are generally given their ordinary and customary meaning,’” as would have been understood by a person of ordinary skill in the art in question at the time of the invention. Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc) (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)). “In determining the meaning of the disputed claim limitation, we look principally to the intrinsic evidence of record, examining the claim language itself, the written description, and the prosecution history, if in evidence.” DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing Phillips, 415 F.3d at 1312–17). 1. Determining Load Percentage” slip op. at 10
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“persuasive. Accordingly, we determine that Petitioner shows by a preponderance of evidence claim 1 would have been obvious over Leng alone or the combined teachings of Leng and Cannon.” slip op. at 93
Patent outcomesUS 8,682,338 unpatentable§ 103 obviousnesscites Phillips · KSRPatents in suitUS 8,682,338 - Google LLC / Microsoft Corporation v. Carolyn W. HafemanAll claims unpatentablePTAB · Jan 23, 2024 · IPR2022-01193 · APJ Jeffrey S Smith · IPR · Final written decision
Claims 1–7 are unpatentable as obvious over Jenne and Cohen; the Board did not reach the remaining grounds.
RulingsFinal written decision- BurdenFwd all claims unpatentableUnpatentable
“c) Conclusion for Claim 1 We find that the combination of Jenne and Cohen teaches the subject matter recited in claim 1 and that a person of ordinary skill in the art would have combined the teachings of Jenne and Cohen in the manner asserted by Petitioner with a reasonable expectation of success in arriving at the subject matter recited in claim 1. Patent Owner’s asserted objective evidence of non-obviousness lacks nexus and does not undermine Petitioner’s showing. Therefore, we conclude that the subject matter of claim 1 would have been obvious based on the combined teachings of Jenne and Cohen.” slip op. at 32
- Skill levelSkill level petitioner adoptedDecided for petitioner
“would have had a bachelor’s degree in computer science, computer engineering, electrical engineering, or the equivalent and at least two years of experience in the relevant field, e.g., electronic communications systems. Significantly more practical experience could also qualify one not having the aforementioned education as a person of ordinary skill in the art while, conversely, a higher level of education could offset a lesser amount of experience. Pet. 12–13 (citing Ex. 1003 ¶ 96). Patent Owner does not dispute this assessment or offer her own assessment. See PO Resp. To the extent necessary, we accept the uncontested assessment offered by Petitioner, except that we delete the qualifier “at least” to eliminate vagueness as to the amount of experience. The qualifier expands the range indefinitely without an upper bound, and thus precludes a meaningful indication of the level of ordinary skill in the art.” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“As explained below, the combination of Jenne and Cohen teaches the content of the return/recovery information under Patent Owner’s construction, and, therefore, we need not resolve whether such information is entitled to patentable weight. Furthermore, as explained below, the combination of Jenne and Cohen teaches displaying the return/recovery information during or after every boot-up and teaches “owner” under Patent Owner’s construction. Therefore, because there are no claim construction disputes between the parties that affect the analysis of unpatentability based on the combination of Jenne and Cohen, we need not resolve these claim construction issues. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“We do not credit Dr. Schaefer’s testimony because it is inconsistent with Cohen’s disclosure. In particular, Cohen discloses “storing of the personal ownership indicia and password data within nonvolatile memory, such as ROM 26,” which Cohen states “is preferably implemented utilizing so-called ‘flash’ ROM or serial EEPROM, which may be electrically altered upon application of suitable control signals.” Ex. 1006, 3:44–47, 4:47–50. Thus, contrary to Dr. Schaefer’s testimony that Cohen states a preference for nonvolatile memory because it cannot be altered, Cohen expressly discloses using nonvolatile memory that can be altered, so that the system may not “be easily defeated by opening the case of portable computer device 10 and temporarily removing the battery, rendering this information erased.” Ex. 1006, 4:54–57. In further contrast to Dr. Schaefer’s testimony, Dr. Zadok testifies that Jenne also discloses storing information in nonvolatile memory, such as nonvolatile random access memory (NVRAM) or a flash ROM. Ex 1003 ¶ 319 (citing Ex. 1005 ¶¶ 23, 27, Fig. 3). Dr. Zadok persuasively testifies that Cohen’s disclosure of storing information in nonvolatile memory is consistent with Jenne’s disclosure. Ex. 1003 ¶ 308. We find Petitioner’s reasoning to combine Jenne and Cohen to be persuasive. As Petitioner correctly points out (Pet. 19), Cohen expressly teaches that the benefits of displaying owner information with a password prompt when the computer is started are that “the likelihood that a lost or misplaced personal computer device will be returned to its owner [is] greatly enhanced and [that] ownership of otherwise fungible devices may be easily determined.” Ex. 1006, 5:52–58; see Ex. 1003 ¶ 289 (Dr. Zadok testifying that Cohen’s disclosure shows that a person of ordinary skill in the art would have been motivated to display owner information during boot-up). Thus, we find that Cohen’s express disclosure provides a rationale for a person of ordinary skill in the art to display a particular type of information, specifically owner information, in the system of Jenne. We agree with Petitioner, that “the combination would have involved a simple substitution of a known generic element (Jenne’s ‘other information’) with a specific type of information (Cohen’s ‘ownership indicia’) to obtain predictable results.” Pet. 20 (citing KSR, 550 U.S. at 415–16).” slip op. at 14
Patent outcomesUS 9,892,287 unpatentableClaim construction§ 103 obviousnesscites KSRPatents in suitUS 9,892,287 - Google LLC / Microsoft Corporation v. Carolyn W. HafemanAll claims unpatentablePTAB · Jan 23, 2024 · IPR2022-01192 · APJ Jeffrey S Smith · IPR · Final written decision
Claims 1–7 are unpatentable as obvious over Jenne and Cohen; the Board did not reach the other asserted grounds.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Pet. 12–13 (citing Ex. 1003 ¶ 96). Patent Owner does not dispute this assessment or offer her own assessment. See PO Resp. To the extent necessary, we accept the uncontested assessment offered by Petitioner, except that we delete the qualifier “at least” to eliminate vagueness as to the amount of experience. The qualifier expands the range indefinitely without an upper bound, and thus precludes a meaningful indication of the level of ordinary skill in the art.” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“As explained below, the combination of Jenne and Cohen teaches the content of the return/recovery information under Patent Owner’s construction, and, therefore, we need not resolve whether such information is entitled to patentable weight. Furthermore, as explained below, the combination of Jenne and Cohen teaches displaying the return/recovery information during or after every boot-up and teaches “owner” under Patent Owner’s construction. Therefore, because there are no claim construction disputes between the parties that affect the analysis of unpatentability based on the combination of Jenne and Cohen, we need not resolve these claim construction issues. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“We find Petitioner’s reasoning to combine Jenne and Cohen to be persuasive. As Petitioner correctly points out (Pet. 19), Cohen expressly teaches that the benefits of displaying owner information with a password prompt when the computer is started are that “the likelihood that a lost or misplaced personal computer device will be returned to its owner [is] greatly enhanced and [that] ownership of otherwise fungible devices may be easily determined.” Ex. 1006, 5:52–58; see Ex. 1003 ¶ 289 (Dr. Zadok testifying that Cohen’s disclosure shows that a person of ordinary skill in the art would have been motivated to display owner information during boot-up). Thus, we find that Cohen’s express disclosure provides a rationale for a person of ordinary skill in the art to display a particular type of information, specifically owner information, in the system of Jenne. We agree with Petitioner, that “the combination would have involved a simple substitution of a known generic element (Jenne’s ‘other information’) with a specific type of information (Cohen’s ‘ownership indicia’) to obtain predictable results.” Pet. 20 (citing KSR, 550 U.S. at 415–16).” slip op. at 15
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“We do not credit Dr. Schaefer’s testimony because it is inconsistent with Cohen’s disclosure. In particular, Cohen discloses “storing of the personal ownership indicia and password data within nonvolatile memory, such as ROM 26,” which Cohen states “is preferably implemented utilizing so-called ‘flash’ ROM or serial EEPROM, which may be electrically altered upon application of suitable control signals.” Ex. 1006, 3:44–47, 4:47–50. Thus, contrary to Dr. Schaefer’s testimony that Cohen states a preference for nonvolatile memory because it cannot be altered, Cohen expressly discloses using nonvolatile memory that can be altered, so that the system may not “be easily defeated by opening the case of portable computer device 10 and temporarily removing the battery, rendering this information erased.” Ex. 1006, 4:54–57. In further contrast to Dr. Schaefer’s testimony, Dr. Zadok testifies that Jenne also discloses storing information in nonvolatile memory, such as nonvolatile random access memory (NVRAM) or a flash ROM. Ex 1003 ¶ 319 (citing Ex. 1005 ¶¶ 23, 27, Fig. 3). Dr. Zadok persuasively testifies that Cohen’s disclosure of storing information in nonvolatile memory is consistent with Jenne’s disclosure. Ex. 1003 ¶ 308. We find Petitioner’s reasoning to combine Jenne and Cohen to be persuasive. As Petitioner correctly points out (Pet. 19), Cohen expressly teaches that the benefits of displaying owner information with a password prompt when the computer is started are that “the likelihood that a lost or misplaced personal computer device will be returned to its owner [is] greatly enhanced and [that] ownership of otherwise fungible devices may be easily determined.” Ex. 1006, 5:52–58; see Ex. 1003 ¶ 289 (Dr. Zadok testifying that Cohen’s disclosure shows that a person of ordinary skill in the art would have been motivated to display owner information during boot-up). Thus, we find that Cohen’s express disclosure provides a rationale for a person of ordinary skill in the art to display a particular type of information, specifically owner information, in the system of Jenne. We agree with Petitioner, that “the combination would have involved a simple substitution of a known generic element (Jenne’s ‘other information’) with a specific type of information (Cohen’s ‘ownership indicia’) to obtain predictable results.” Pet. 20 (citing KSR, 550 U.S. at 415–16).” slip op. at 14
Patent outcomesUS 9,892,287 unpatentableClaim construction§ 103 obviousnesscites KSRPatents in suitUS 9,892,287 - Google LLC / Microsoft Corporation v. Carolyn W. HafemanAll claims unpatentablePTAB · Jan 23, 2024 · IPR2022-01190 · APJ Arthur M Peslak · IPR · Final written decision
Claims 1–7 are unpatentable as obvious over Jenne and Cohen; the Board did not reach the remaining grounds and granted consolidation.
RulingsFinal written decision- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“We do not credit Dr. Schaefer’s testimony because it is inconsistent with Cohen’s disclosure. In particular, Cohen discloses “storing of the personal ownership indicia and password data within nonvolatile memory, such as ROM 26,” which Cohen states “is preferably implemented utilizing so-called ‘flash’ ROM or serial EEPROM, which may be electrically altered upon application of suitable control signals.” Ex. 1006, 3:44–47, 4:47–50. Thus, contrary to Dr. Schaefer’s testimony that Cohen states a preference for nonvolatile memory because it cannot be altered, Cohen expressly discloses using nonvolatile memory that can be altered, so that the system may not “be easily defeated by opening the case of portable computer device 10 and temporarily removing the battery, rendering this information erased.” Ex. 1006, 4:54–57. Dr. Zadok testifies that Jenne also discloses storing information in nonvolatile memory, such as nonvolatile random access memory (NVRAM) or a flash ROM. Ex 1003 ¶ 310 (citing Ex. 1005 ¶¶ 23, 27, Fig. 3). Dr. Zadok testifies that Cohen’s disclosure of storing information in nonvolatile memory is consistent with Jenne’s disclosure. Id. ¶ 321. We find Petitioner’s reasoning to combine Jenne and Cohen to be persuasive. As Petitioner correctly points out (Pet. 19), Cohen expressly teaches that the benefits of displaying owner information with a password prompt when the computer is started are that “the likelihood that a lost or misplaced personal computer device will be returned to its owner [is] greatly enhanced and [that] ownership of otherwise fungible devices may be easily determined.” Ex. 1006, 5:52–58; see Ex. 1003 ¶ 292 (Dr. Zadok testifying that Cohen’s disclosure shows that a person of ordinary skill in the art would have been motivated to display owner information during boot-up). Thus, we find that Cohen’s express disclosure provides a rationale for a person of ordinary skill in the art to display a particular type of information, specifically owner information, in the system of Jenne. We agree with Petitioner that “the combination would have involved a simple substitution of a known generic element (Jenne’s ‘other information’) with a specific type of information (Cohen’s ‘ownership indicia’) to obtain predictable results.” Pet. 20 (citing KSR, 550 U.S. at 415–16).” slip op. at 14
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not dispute this assessment or offer her own assessment. See PO Resp. To the extent necessary, and for purposes of this Decision, we accept the uncontested assessment offered by Petitioner, except that we delete the qualifier “at least” to eliminate vagueness as to the amount of experience. The qualifier expands the range indefinitely without an upper bound, and thus, precludes a meaningful indication of the level of ordinary skill in the art.” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Not reached
“As explained below, the combination of Jenne and Cohen teaches the content of the return/recovery information under Patent Owner’s construction, and, therefore, we need not resolve whether such information is entitled to patentable weight. Furthermore, as explained below, the combination of Jenne and Cohen teaches displaying the return/recovery information during or after every boot-up and teaches “owner” under Patent Owner’s construction. Therefore, because there are no claim construction disputes between the parties that affect the analysis of unpatentability based on the combination of Jenne and Cohen, we need not resolve these claim construction issues. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“We do not credit Dr. Schaefer’s testimony because it is inconsistent with Cohen’s disclosure. In particular, Cohen discloses “storing of the personal ownership indicia and password data within nonvolatile memory, such as ROM 26,” which Cohen states “is preferably implemented utilizing so-called ‘flash’ ROM or serial EEPROM, which may be electrically altered upon application of suitable control signals.” Ex. 1006, 3:44–47, 4:47–50. Thus, contrary to Dr. Schaefer’s testimony that Cohen states a preference for nonvolatile memory because it cannot be altered, Cohen expressly discloses using nonvolatile memory that can be altered, so that the system may not “be easily defeated by opening the case of portable computer device 10 and temporarily removing the battery, rendering this information erased.” Ex. 1006, 4:54–57. Dr. Zadok testifies that Jenne also discloses storing information in nonvolatile memory, such as nonvolatile random access memory (NVRAM) or a flash ROM. Ex 1003 ¶ 310 (citing Ex. 1005 ¶¶ 23, 27, Fig. 3). Dr. Zadok testifies that Cohen’s disclosure of storing information in nonvolatile memory is consistent with Jenne’s disclosure. Id. ¶ 321. We find Petitioner’s reasoning to combine Jenne and Cohen to be persuasive. As Petitioner correctly points out (Pet. 19), Cohen expressly teaches that the benefits of displaying owner information with a password prompt when the computer is started are that “the likelihood that a lost or misplaced personal computer device will be returned to its owner [is] greatly enhanced and [that] ownership of otherwise fungible devices may be easily determined.” Ex. 1006, 5:52–58; see Ex. 1003 ¶ 292 (Dr. Zadok testifying that Cohen’s disclosure shows that a person of ordinary skill in the art would have been motivated to display owner information during boot-up). Thus, we find that Cohen’s express disclosure provides a rationale for a person of ordinary skill in the art to display a particular type of information, specifically owner information, in the system of Jenne. We agree with Petitioner that “the combination would have involved a simple substitution of a known generic element (Jenne’s ‘other information’) with a specific type of information (Cohen’s ‘ownership indicia’) to obtain predictable results.” Pet. 20 (citing KSR, 550 U.S. at 415–16).” slip op. at 14
Patent outcomesUS 10,789,393 unpatentableClaim construction§ 103 obviousnesscites KSRPatents in suitUS 10,789,393 - Google LLC / Microsoft Corporation v. Carolyn W. HafemanAll claims unpatentablePTAB · Jan 23, 2024 · IPR2022-01191 · APJ Arthur M Peslak · IPR · Final written decision
Claims 1–7 are unpatentable as obvious over Jenne and Cohen; the Board did not reach the remaining grounds.
RulingsFinal written decision- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“I. INTRODUCTION In these inter partes reviews, Google LLC and Microsoft Corporation (collectively “Petitioner”) challenge the patentability of claims 1–7 of U.S. Patent 10,789,393 B2 (Ex. 1001 (“’393 patent”)), which is owned by Carolyn W. Hafeman (“Patent Owner”). Petitioner requests that we consolidate these cases. IPR2022-01190, Paper 24 at 1. Patent Owner opposes. IPR2022-01190, Paper 28 at 1. Because these cases address the same claims, we grant Petitioner’s request to consolidate them pursuant to 37 C.F.R. § 42.122(a). See also 35 U.S.C. § 315(d) (giving Director discretion to consolidate proceedings).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not dispute this assessment or offer her own assessment. See PO Resp. To the extent necessary, and for purposes of this Decision, we accept the uncontested assessment offered by Petitioner, except that we delete the qualifier “at least” to eliminate vagueness as to the amount of experience. The qualifier expands the range indefinitely without an upper bound, and thus, precludes a meaningful indication of the level of ordinary skill in the art.” slip op. at 6
- Expert testimonyPatent owner expert discountedDecided for patent owner
“security by keeping ownership indicia constant after the initial set-up or configuration change.” PO Resp. 32 (citing Ex. 2040 ¶ 54(b)). Patent Owner cites the following testimony from Dr. Schaefer to support this assertion: Cohen discloses a method where the owner enters “a textual indicia of personal ownership” “during set-up or during a configuration change.” Cohen is specifically designed to keep ownership indicia constant. Although Cohen states that ownership indicia can be stored in RAM or nonvolatile memory, Cohen makes clear that nonvolatile memory is preferred because it cannot be altered, whereas ownership information stored in the RAM could be “easily defeated” by removing the battery. Thus, Cohen’s objective is to keep its local ownership indicia constant after an initial set-up or configuration change. Ex. 2040 ¶ 54(b) (citing Ex. 1006, 2:31–35, 4:50–5:4); see PO Resp. 29 (quoting this testimony), 32 (citing this testimony). We do not credit Dr. Schaefer’s testimony because it is inconsistent with Cohen’s disclosure. In particular, Cohen discloses “storing of the personal ownership indicia and password data within nonvolatile memory, such as ROM 26,” which Cohen states “is preferably implemented utilizing so-called ‘flash’ ROM or serial EEPROM, which may be electrically altered upon application of suitable control signals.” Ex. 1006, 3:44–47, 4:47–50. Thus, contrary to Dr. Schaefer’s testimony that Cohen states a preference for nonvolatile memory because it cannot be altered, Cohen expressly discloses using nonvolatile memory that can be altered, so that the system may not “be easily defeated by opening the case of portable computer device 10 and temporarily removing the battery, rendering this information erased.” Ex. 1006, 4:54–57. Dr. Zadok testifies that Jenne also discloses storing information in nonvolatile memory, such as nonvolatile random access” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Petitioner argues that certain language in each independent claim should be interpreted to require the automatic display of certain information “during or after every boot-up.” Pet. 9–11. Second, Petitioner argues that the return and recovery information recited in the claims is merely printed matter that is not entitled to patentable weight. Pet. 12. Patent Owner disagrees with Petitioner’s claim construction arguments. PO Resp. 9–21. For her part, Patent Owner argues that the terms “computer recovery information,” “recovery information,” and “return information” mean “information provided by the owner so that the device can be returned to the owner,” and she argues that “owner” means “the person or entity that owns, rents, or licenses the recovery application or program, and/or the person or entity who controls the recovery service.” PO Resp. 21 (citing Ex. 1001, 3:33–34, 4:4–5, 4:49–51, 11:11–13; Ex. 2035, 6–7, 19–20). As explained below, the combination of Jenne and Cohen teaches the content of the return/recovery information under Patent Owner’s construction, and, therefore, we need not resolve whether such information is entitled to patentable weight. Furthermore, as explained below, the combination of Jenne and Cohen teaches displaying the return/recovery information during or after every boot-up and teaches “owner” under Patent Owner’s construction. Therefore, because there are no claim construction disputes between the parties that affect the analysis of unpatentability based on the combination of Jenne and Cohen, we need not resolve these claim construction issues. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 7
Patent outcomesUS 10,789,393 unpatentableClaim construction§ 103 obviousnesscites KSRPatents in suitUS 10,789,393 - Google LLC / Microsoft Corporation v. Carolyn W. HafemanAll claims unpatentablePTAB · Jan 23, 2024 · IPR2022-01189 · APJ Daniel J Galligan · IPR · Final written decision
Claims 1–7 are unpatentable as obvious over Jenne and Cohen; the Board did not reach the remaining grounds and granted consolidation.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not dispute this assessment or offer her own assessment. See PO Resp. To the extent necessary, we accept the uncontested assessment offered by Petitioner, except that we delete the qualifier “at least” to eliminate vagueness as to the amount of experience. The qualifier expands the range indefinitely without an upper bound, and thus precludes a meaningful indication of the level of ordinary skill in the art.” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“As explained below, the combination of Jenne and Cohen teaches the content of the return/recovery information under Patent Owner’s construction, and, therefore, we need not resolve whether such information is entitled to patentable weight. Furthermore, as explained below, the combination of Jenne and Cohen teaches displaying the return/recovery information during or after every boot-up and teaches “owner” under Patent Owner’s construction. Therefore, because there are no claim construction disputes between the parties that affect the analysis of unpatentability based on the combination of Jenne and Cohen, we need not resolve these claim construction issues. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“We do not credit Dr. Schaefer’s testimony because it is inconsistent with Cohen’s disclosure. In particular, Cohen discloses “storing of the personal ownership indicia and password data within nonvolatile memory, such as ROM 26,” which Cohen states “is preferably implemented utilizing so-called ‘flash’ ROM or serial EEPROM, which may be electrically altered upon application of suitable control signals.” Ex. 1006, 3:44–47, 4:47–50. Thus, contrary to Dr. Schaefer’s testimony that Cohen states a preference for nonvolatile memory because it cannot be altered, Cohen expressly discloses using nonvolatile memory that can be altered, so that the system may not “be easily defeated by opening the case of portable computer device 10 and temporarily removing the battery, rendering this information erased.” Ex. 1006, 4:54–57. In further contrast to Dr. Schaefer’s testimony, Dr. Zadok testifies that Jenne also discloses storing information in nonvolatile memory, such as nonvolatile random access memory (NVRAM) or a flash ROM. Ex 1003 ¶ 319 (citing Ex. 1005 ¶¶ 23, 27, Fig. 3). Dr. Zadok persuasively testifies that Cohen’s disclosure of storing information in nonvolatile memory is consistent with Jenne’s disclosure. Ex. 1003 ¶ 320. We find Petitioner’s reasoning to combine Jenne and Cohen to be persuasive. As Petitioner correctly points out (Pet. 19), Cohen expressly teaches that the benefits of displaying owner information with a password prompt when the computer is started are that “the likelihood that a lost or misplaced personal computer device will be returned to its owner [is] greatly enhanced and [that] ownership of otherwise fungible devices may be easily determined.” Ex. 1006, 5:52–58; see Ex. 1003 ¶ 301 (Dr. Zadok testifying that Cohen’s disclosure shows that a person of ordinary skill in the art would have been motivated to display owner information during boot-up). Thus, we find that Cohen’s express disclosure provides a rationale for a person of ordinary skill in the art to display a particular type of information, specifically owner information, in the system of Jenne. We agree with Petitioner that “the combination would have involved a simple substitution of a known generic element (Jenne’s ‘other information’) with a specific type of information (Cohen’s ‘ownership indicia’) to obtain predictable results.” Pet. 20 (citing KSR, 550 U.S. at 415–16).” slip op. at 14
- Expert testimonyPatent owner expert discountedPetitioner expert creditedDecided for petitioner
“We do not credit Dr. Schaefer’s testimony because it is inconsistent with Cohen’s disclosure. In particular, Cohen discloses “storing of the personal ownership indicia and password data within nonvolatile memory, such as ROM 26,” which Cohen states “is preferably implemented utilizing so-called ‘flash’ ROM or serial EEPROM, which may be electrically altered upon application of suitable control signals.” Ex. 1006, 3:44–47, 4:47–50. Thus, contrary to Dr. Schaefer’s testimony that Cohen states a preference for nonvolatile memory because it cannot be altered, Cohen expressly discloses using nonvolatile memory that can be altered, so that the system may not “be easily defeated by opening the case of portable computer device 10 and temporarily removing the battery, rendering this information erased.” Ex. 1006, 4:54–57. In further contrast to Dr. Schaefer’s testimony, Dr. Zadok testifies that Jenne also discloses storing information in nonvolatile memory, such as nonvolatile random access memory (NVRAM) or a flash ROM. Ex 1003 ¶ 319 (citing Ex. 1005 ¶¶ 23, 27, Fig. 3). Dr. Zadok persuasively testifies that Cohen’s disclosure of storing information in nonvolatile memory is consistent with Jenne’s disclosure. Ex. 1003 ¶ 320. We find Petitioner’s reasoning to combine Jenne and Cohen to be persuasive. As Petitioner correctly points out (Pet. 19), Cohen expressly teaches that the benefits of displaying owner information with a password prompt when the computer is started are that “the likelihood that a lost or misplaced personal computer device will be returned to its owner [is] greatly enhanced and [that] ownership of otherwise fungible devices may be easily determined.” Ex. 1006, 5:52–58; see Ex. 1003 ¶ 301 (Dr. Zadok testifying that Cohen’s disclosure shows that a person of ordinary skill in the art would have been motivated to display owner information during boot-up). Thus, we find that Cohen’s express disclosure provides a rationale for a person of ordinary skill in the art to display a particular type of information, specifically owner information, in the system of Jenne. We agree with Petitioner that “the combination would have involved a simple substitution of a known generic element (Jenne’s ‘other information’) with a specific type of information (Cohen’s ‘ownership indicia’) to obtain predictable results.” Pet. 20 (citing KSR, 550 U.S. at 415–16).” slip op. at 14
Patent outcomesUS 10,325,122 unpatentableClaim construction§ 103 obviousnesscites KSRPatents in suitUS 10,325,122
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.