- Qualcomm Incorporated / Zyxel Communications Corporation v. Unm Rainforest InnovationsSome claims unpatentablePTAB · Jul 15, 2022 · IPR2021-00734 · APJ Kristen L Droesch · IPR · Final written decision
Claims 1–4, 6, and 7 are unpatentable over Talukdar and Li; claim 8 was not shown unpatentable over Talukdar and Nystrom. The motion to amend was granted.
RulingsFinal written decision- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, grantedGranted
“7. Conclusion Patent Owner has shown: (1) the amendment proposes a reasonable number of substitute claims; (2) the proposed substitute claims are supported in the original disclosure; (3) the amendment responds to a ground of unpatentability involved in the trial; and (4) the amendment does not seek to enlarge the scope of the claims of the patent or introduce new subject matter. Petitioner has not shown by a preponderance of the evidence that proposed substitute claims 44–47, 49, and 50 are unpatentable. Accordingly, Patent Owner’s Motion to Amend is granted.” slip op. at 82
- ExcludeMotion to exclude, deniedDenied
“Owner’s Motion to Exclude because Dr. Roy’s testimony should not be excluded under Federal Rules of Evidence 702 and 703. Rule “702 imposes a special obligation upon a trial judge to ‘ensure that any and all scientific testimony . . . is not only relevant, but reliable,’” which is a “basic gatekeeping obligation.” Kumho Tire Co. v. Carmichael, 526 U.S. 137, 147 (1999) (quoting Daubert v. Merrell Dow Pharm., Inc., 509 U.S. 579 (1993)). The policy considerations for excluding expert testimony, such as those implemented by Daubert’s gatekeeping framework, are less compelling in bench proceedings such as inter partes reviews than in jury trials because, unlike a lay jury, the Board has significant experience in evaluating expert testimony. Accordingly, the danger of prejudice in this proceeding would be considerably lower than in a lay jury trial and the wholesale exclusion of a witness’s declaration is rarely called for in a proceeding before the Board.” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentableUnpatentable
“testimony (Ex. 1002), we are persuaded that Petitioner has set forth sufficient articulated reasoning with rational underpinning to support the conclusion that it would have been obvious to one of ordinary skill in the art to modify Talukdar’s hybrid frame that includes a first section with data configured in 802.16(e) format for 802.16(e) fixed remote units and a second section that includes data configured in 802.16(m) format for faster moving 802.16(m) mobile remote units, because it would have provided the benefit of enabling the hybrid frame to accommodate data for a greater range of remote units within Talukdar’s wireless system. See Pet. 40–42; KSR, 550 U.S. at 421.” slip op. at 43
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“considerations before reaching our conclusion on obviousness as to the subject matter of claim 1. See WBIP, LLC v. Kohler Co., 829 F.3d 1317, 1328 (Fed. Cir. 2016). Patent Owner asserts that there is evidence of commercial success and licensing of the ’096 Patent to industry leaders in the wireless chip industry. See PO Resp. 53–54 (citing Exs. 2007–2010; IPR2020-01576, Ex. 1028 (confidential patent license agreement filed under seal)). Exhibit 2007 is a notice regarding withdrawn claims entered in UNM Rainforest Innovations v. Dell Technologies, Inc., No. 6:20-cv-00468-ADA (W.D. Tex.). Exhibit 2008 is a notice regarding withdrawn claims entered in UNM Rainforest Innovations v. ASUSTek Computer, Inc., No. 6:20-cv- 00142-ADA (W.D. Tex.). Exhibits 2009 and 2010 are a joint motion to dismiss with prejudice, and an order of dismissal, respectively, entered in UNM Rainforest Innovations v. Apple Inc., No. 1:20-cv-00351 (W.D. Tex.). A copy of IPR2020-01576, Ex. 1028 has not been entered in the record of” slip op. at 49
Patent outcomesUS 8,265,096 mixed§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,265,096 - Qualcomm Incorporated / Zyxel Communications Corporation v. Unm Rainforest InnovationsSome claims unpatentablePTAB · Jul 15, 2022 · IPR2021-00375 · APJ Kristen L Droesch · IPR · Final written decision
Claims 1–4, 6, and 7 are unpatentable over Talukdar and Li; claim 8 was not shown unpatentable over Talukdar and Nystrom.
RulingsFinal written decision- ExcludeMotion to exclude, deniedDenied
“Owner’s Motion to Exclude because Dr. Roy’s testimony should not be excluded under Federal Rules of Evidence 702 and 703. Rule “702 imposes a special obligation upon a trial judge to ‘ensure that any and all scientific testimony . . . is not only relevant, but reliable,’” which is a “basic gatekeeping obligation.” Kumho Tire Co. v. Carmichael, 526 U.S. 137, 147 (1999) (quoting Daubert v. Merrell Dow Pharm., Inc., 509 U.S. 579 (1993)). The policy considerations for excluding expert testimony, such as those implemented by Daubert’s gatekeeping framework, are less compelling in bench proceedings such as inter partes reviews than in jury trials because, unlike a lay jury, the Board has significant experience in evaluating expert testimony. Accordingly, the danger of prejudice in this proceeding would be considerably lower than in a lay jury trial and the wholesale exclusion of a witness’s declaration is rarely called for in a proceeding before the Board.” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“testimony (Ex. 1002), we are persuaded that Petitioner has set forth sufficient articulated reasoning with rational underpinning to support the conclusion that it would have been obvious to one of ordinary skill in the art to modify Talukdar’s hybrid frame that includes a first section with data configured in 802.16(e) format for 802.16(e) fixed remote units and a second section that includes data configured in 802.16(m) format for faster moving 802.16(m) mobile remote units, because it would have provided the benefit of enabling the hybrid frame to accommodate data for a greater range of remote units within Talukdar’s wireless system. See Pet. 40–42; KSR, 550 U.S. at 421.” slip op. at 43
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“considerations before reaching our conclusion on obviousness as to the subject matter of claim 1. See WBIP, LLC v. Kohler Co., 829 F.3d 1317, 1328 (Fed. Cir. 2016). Patent Owner asserts that there is evidence of commercial success and licensing of the ’096 Patent to industry leaders in the wireless chip industry. See PO Resp. 53–54 (citing Exs. 2007–2010; IPR2020-01576, Ex. 1028 (confidential patent license agreement filed under seal)). Exhibit 2007 is a notice regarding withdrawn claims entered in UNM Rainforest Innovations v. Dell Technologies, Inc., No. 6:20-cv-00468-ADA (W.D. Tex.). Exhibit 2008 is a notice regarding withdrawn claims entered in UNM Rainforest Innovations v. ASUSTek Computer, Inc., No. 6:20-cv- 00142-ADA (W.D. Tex.). Exhibits 2009 and 2010 are a joint motion to dismiss with prejudice, and an order of dismissal, respectively, entered in UNM Rainforest Innovations v. Apple Inc., No. 1:20-cv-00351 (W.D. Tex.). A copy of IPR2020-01576, Ex. 1028 has not been entered in the record of” slip op. at 49
- Strike new argumentNew argument disregardedDecided for patent owner
“ordinary skill in the art would have been motivated to combine the teachings of Talukdar and Nystrom (i.e., because Talukdar teaches the pilot density for 802.16(e) and 802.16(m) sections of a frame could be different, Nystrom teaches pilot structures for different scenarios, and obvious to try denser pilot symbols) are outside the scope of a proper reply because they were not presented previously in the Petition. Compare Pet. Reply 18–19, with Pet. 60–68. Although Petitioner is permitted in its Reply to address issues discussed in an institution decision, Petitioner may not submit new arguments that it could have presented earlier to make out a prima facie case of unpatentability. See Consolidated Trial Practice Guide18 (“CTPG”) 73. The opportunity to address issues discussed in an institution decision does not mean to proceed in a new direction with a new approach compared to the position taken in the Petition. See id. at 74. Furthermore, a reply that raises a new issue or belatedly presents evidence may not be considered. See id. Accordingly, we decline to consider Petitioner’s belated Reply arguments and evidence asserting new reasons why a person of ordinary skill in the art” slip op. at 60
Patent outcomesUS 8,265,096 mixed§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,265,096 - Polygroup Limited Mco v. Willis Electric Co., Ltd.Some claims unpatentablePTAB · Oct 8, 2020 · IPR2016-01612 · APJ Jeremy M Plenzler · IPR · Remand
On remand, claims 1, 3, 4, 6, 8, and 9 of the ’186 patent were held unpatentable; other remanded challenged claims were not, and substitute claims 29 and 30 were allowed.
RulingsRemand decision- RemandOther
“On appeal, the U.S. Court of Appeals for the Federal Circuit vacated our Original Decision in part and remanded the cases for further proceedings. Polygroup Ltd. MCO v. Willis Elec. Co., Ltd, 759 F. App’x 934 (Fed. Cir. 2019). After conferring with the parties, we permitted additional briefing to address the issues on remand from the Federal Circuit. Paper 196.” slip op. at 2
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“electrical connection in a single step (e.g., “‘when’ the mechanical connection is made, an electrical connection is also made”) as Patent Owner alleges. Rather, claim 1 requires “a first trunk electrical connector” and “a second trunk electrical connector” with “the second tree portion [being] electrically connectable to the first tree portion such that a portion of the first trunk electrical connector of the first trunk portion contacts a portion of the second trunk electrical connector of the second trunk portion.” Although the claim also requires that “the second tree portion is mechanically coupleable to the first tree portion about a central vertical axis,” the claim permits that mechanical connection to be independent of the electrical connection. Giving claim 1 its proper reading, there is no dispute that Miller teaches first and second trunk electrical connectors or that its tree portions are coupleable about a central vertical axis as outlined in the Petition. See Pet. I 45–48.” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“Petitioner contends that one skilled in the art would have modified Miller’s teachings based on those from Lessner. Pet. II 65–70. Petitioner reasons, for example, that “[i]t would have been obvious . . . to enhance the mechanical and electrical connections between the electrical contacts sets and wiring assemblies of Miller[] with the detachable electrical connectors of Lessner” for “ease and speed of assembly and disassembly.” Id. at 65–66 (citing Ex. 1006 ¶¶ 261–67). Petitioner further reasons that “the detachable connectors of Lessner provide a quick-connect engagement allowing the builder to easily and quickly attach the wires to the terminals on the trunk connector during assembly,” which “also allows for easy separation of the wires from the trunk connectors, as needed for repair or replacement of parts.” Id. at 66. Petitioner’s contentions as to why one skilled in the art would have modified Miller’s teachings are unpersuasive. As discussed above, Petitioner cited Miller’s plug and socket connectors as corresponding to the recited trunk connectors. Petitioner’s proposed modification in the Miller alone challenge adds an additional connection point in Miller’s plug and socket connectors, further complicating assembly, rather than providing greater “ease and speed of assembly and disassembly” as alleged. Petitioner’s additional reasoning that the proposed modification “also allows for easy separation of the wires from the trunk connectors, as needed for repair or replacement of parts” is equally unpersuasive. The only difference resulting from the modification is that the plug and socket connectors could be removed from their respective wiring assemblies. That is, it provides for removal of one connector by providing yet another connector, which fails to provide a benefit because Miller’s plug and socket connectors are loose, rather than fixed within the trunk portions like Patent Owner’s connectors. For at least these reasons, Petitioner has failed to establish unpatentability of claim 7 of the ’186 patent by a preponderance of the evidence.” slip op. at 19
- Obviousness (§103) › Objective indicia / secondary considerationsObjective indicia outweighedDecided for petitioner
“D. Secondary Considerations As explained in the Original Decision, Patent Owner provides evidence related to non-obviousness of the claims. Original Decision 43–60. Considering that evidence, as explained in the Original Decision, relative to the fact that Miller alone teaches each element of these claims in a single embodiment16, we determine that Patent Owner’s evidence does not outweigh Petitioner’s case of obviousness for claims 1, 3, 4, 6, 8, and 9. For the reasons set forth above, Petitioner has established by the preponderance of the evidence that claims 1, 3, 4, 6, 8, and 9 are unpatentable. Petitioner has failed to establish by the preponderance of the evidence that claim 7 is unpatentable.” slip op. at 21
Patent outcomesUS 8,454,187 mixedClaim construction§ 103 obviousnessPatents in suitUS 8,454,187 - Polygroup Limited Mco v. Willis Electric Co., Ltd.Some claims unpatentablePTAB · Oct 8, 2020 · IPR2016-01610 · APJ Jeremy M Plenzler · IPR · Remand
On remand, claims 1, 3, 4, 6, 8, and 9 of the ’186 patent were held unpatentable; other remanded challenged claims were not shown unpatentable, and substitute claims 29 and 30 were allowed.
RulingsRemand decision- RemandMixed
“On appeal, the U.S. Court of Appeals for the Federal Circuit vacated our Original Decision in part and remanded the cases for further proceedings. Polygroup Ltd. MCO v. Willis Elec. Co., Ltd, 759 F. App’x 934 (Fed. Cir. 2019). After conferring with the parties, we permitted additional briefing to address the issues on remand from the Federal Circuit. Paper 196.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“and the second wire are detachably connected to the first trunk electrical connector of the first trunk portion.” Petitioner acknowledges that “Miller does not expressly teach that the wiring assembly is ‘modular’ or ‘separably connected.’” Pet. II 65. Petitioner contends that “assemblies for providing a detachable connection between electrical contact sets and wiring harnesses were well-known in the art.” Id. (citing Ex. 1006 ¶¶ 261–67). Petitioner contends that “Lessner teaches a ‘quick-disconnect electrical connector for receiving and releasably retaining a male tab connector’ and a [person of skill in the art (POSA)] would recognize that it may be used to create detachable connections between the electrical contacts of a connector or plug, and the wires of a wiring assembly.” Id. (citing Ex. 1008, 1:10–11; Ex. 1006 ¶¶ 261–67). Petitioner contends that one skilled in the art would have modified Miller’s teachings based on those from Lessner. Pet. II 65–70. Petitioner reasons, for example, that “[i]t would have been obvious . . . to enhance the mechanical and electrical connections between the electrical contacts sets and wiring assemblies of Miller[] with the detachable electrical connectors of Lessner” for “ease and speed of assembly and disassembly.” Id. at 65–66 (citing Ex. 1006 ¶¶ 261–67). Petitioner further reasons that “the detachable connectors of Lessner provide a quick-connect engagement allowing the builder to easily and quickly attach the wires to the terminals on the trunk connector during assembly,” which “also allows for easy separation of the wires from the trunk connectors, as needed for repair or replacement of parts.” Id. at 66. Petitioner’s contentions as to why one skilled in the art would have modified Miller’s teachings are unpersuasive. As discussed above, Petitioner cited Miller’s plug and socket connectors as corresponding to the recited trunk connectors. Petitioner’s proposed modification in the Miller alone challenge adds an additional connection point in Miller’s plug and socket connectors, further complicating assembly, rather than providing greater “ease and speed of assembly and disassembly” as alleged. Petitioner’s additional reasoning that the proposed modification “also allows for easy separation of the wires from the trunk connectors, as needed for repair or replacement of parts” is equally unpersuasive. The only difference resulting from the modification is that the plug and socket connectors could be removed from their respective wiring assemblies. That is, it provides for removal of one connector by providing yet another connector, which fails to provide a benefit because Miller’s plug and socket connectors are loose, rather than fixed within the trunk portions like Patent Owner’s connectors. For at least these reasons, Petitioner has failed to establish unpatentability of claim 7 of the ’186 patent by a preponderance of the evidence.” slip op. at 19
- Obviousness (§103) › Objective indicia / secondary considerationsObjective indicia outweighedUnpatentable
“D. Secondary Considerations As explained in the Original Decision, Patent Owner provides evidence related to non-obviousness of the claims. Original Decision 43–60. Considering that evidence, as explained in the Original Decision, relative to the fact that Miller alone teaches each element of these claims in a single embodiment16, we determine that Patent Owner’s evidence does not outweigh Petitioner’s case of obviousness for claims 1, 3, 4, 6, 8, and 9. For the reasons set forth above, Petitioner has established by the preponderance of the evidence that claims 1, 3, 4, 6, 8, and 9 are unpatentable. Petitioner has failed to establish by the preponderance of the evidence that claim 7 is unpatentable.” slip op. at 21
- BurdenNot shown unpatentable
“The figure reproduced above is a portion of Miller’s Figure 2, which is a front, partial section view of its artificial tree, along with Petitioner’s annotations noting Miller’s electrical connections (circled in red). Pet. I 29. As seen above, Petitioner cites Miller’s plug and socket connection as the electrical connection recited in the claims. See Pet. I 33 (“Miller also teaches that wires 22 of trunks 3, 5 are electrically connectable via plug and socket connectors of Fig. 2.”), 42, 57–58 (presenting similar contentions for claims 20 and 28). The problem with Petitioner’s contentions that rely on Miller alone is that the electrical connection in Miller is independent of the mechanical connection of tree portions (i.e., the mechanical connection does not result in the electrical connection in the manner claimed). For at least this reason, Petitioner’s challenges to claims 10, 20, and 28 based on Miller alone fail.” slip op. at 23
Patent outcomesUS 8,454,186 mixed§ 103 obviousnessPatents in suitUS 8,454,186 - Willis Electric Co., Ltd. v. Polygroup Macau Ltd (Bvi)All claims unpatentablePTAB · May 7, 2018 · IPR2017-00332 · APJ Barbara A Parvis · IPR · Final written decision
Claims 1–30 are unpatentable as obvious over Chen’s non-provisional disclosure alone or with Geisthoff, and independently over Chen’s provisional disclosure.
RulingsFinal written decision- Expert testimonyPetitioner expert creditedDecided for petitioner
“After consideration of Patent Owner’s contentions and Dr. Lebby’s testimony to the contrary, we are persuaded by Petitioner’s contentions and credit and give substantial weight to Dr. Durfee’s testimony (’332 Pet. 34– 35; ’332 Ex. 1002 ¶ 96; Reply 26–29; Ex. 1026 ¶¶ 41–43) because we find that Petitioner’s contentions and Dr. Durfee’s testimony are consistent with Chen’s teachings. For instance, consistent with Petitioner’s contentions and Dr. Durfee’s testimony, we find that Chen at least suggests such a vertically extending section for example, by disclosing that “contact set 302 comprises a coaxial electrical connector” in which “first electrical contact 306 comprises a portion of outside surface of contact set 302” and “[s]econd electrical contact 308 . . . may be located generally at a center, bottom portion of receptacle 310.” Ex. 1007, 12:23–29 (emphasis added), Figs. 9, 10. Dr. Lebby’s testimony indicates that he acknowledges that insulation in some form (e.g., air) is needed between first electrical contact 306 and second electrical contact 308. Ex. 2004 ¶¶ 123, 193. We find that Chen’s disclosure at least suggests that the contact is formed on only an “outside surface” of the cylindrical object depicted in Figure 9 and, further, need not comprise the entire structure, but may be only “a portion” of that object (Ex. 1007, 12:23–29, Figs. 9, 10), with the remainder being insulation as Dr. Lebby acknowledges is needed between contacts 306 and 308 (Ex. 2004 ¶¶ 123, 193). Furthermore, we find that Dr. Durfee’s testimony that one having ordinary skill in the art would have known and had reason to implement an insulator using insulating material is consistent with the evidence of record of the knowledge of the skilled artisan, including Dr. Durfee’s testimony (’332 Ex. 1002 ¶ 96; Ex. 1026 ¶¶ 41–43), as well as the teaching of such an insulator in Chen’s provisional application, incorporated by reference in Chen “[a]n inside surface of connector 448 may be insulated to avoid creating an electrical connection between connector 348 and connector 448.” Ex. 1008, 20:5–7, Fig. 13.” slip op. at 50
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Pet. 19–20 (numbering added) (citing Ex. 1002 ¶ 8). Patent Owner does not dispute Petitioner’s contentions regarding the level of skill. See, e.g., PO Resp. 45–48; see also Prelim. Resp. 39 (“Patent Owner will accept Petitioner’s proposed POSA definition for purposes of this Preliminary Response only”). We adopt Petitioner’s description of a person of ordinary skill in the art as it is consistent with the level of skill implied by the disclosures of the prior art references. 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 15
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“Consistent with Petitioner’s contentions (Reply 4, 6) and Dr. Durfee’s testimony (Ex. 1026 ¶¶ 6, 12), each of the independent claims recites that the “female end” is of a “trunk section,” not an electrical connector (Ex. 1001, 16:3–11, 16:63–17:4, 17:59–18:2, 18:44–52). Additionally, in each of the independent claims, that “female end of a second trunk section” has “the central contact device and the channel contact device [that are] configured to conduct electricity.” Id. Accordingly, the claims recite that the “end” is that of a trunk section. Furthermore, consistent with Dr. Durfee’s testimony (Ex. 1026 ¶ 7) the ’495 Patent Specification describes the female end as part of a trunk section. Ex. 1001, 4:27–34, 10:41, 11:61–66, 13:35–36, 14:24–25. The ’495 Patent Specification also indicates that Figures 1, 3a–c, 4a–c, 7, depict views of “a female end of a tree trunk section.” Ex. 1001, 4:65–66, 5:4–5, 5:8–9, 5:12–17, 5:26–27, 5:29–30, 5:47, 5:53–54. Accordingly, we determine that “female end” recited in independent claims 1, 11, 21, and 28 is “an end of a trunk section having a central void and a channel void,” as Petitioner proposes (Reply 2).10” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“As discussed supra in Section II.A.1, we agree with Petitioner that the “female end” is of a tree trunk section. 11 In view of our aforementioned determination, based on the record before us, after considering all of the evidence and argument presented by the parties, we see no real difference in the parties’ proposed constructions because the claims recite that the “female end” has a “channel void” and that the male end engages the female end. Ex. 1001, 16:3–11, 16:63–17:4, 17:59–18:15, 18:44–64. Because the claims already recite expressly the additional limitations that are part of Patent Owner’s proposed construction (PO Resp. 11), those limitations structurally define “channel void” such that it is not merely air or space, as Dr. Lebby testifies (Ex. 2004 ¶¶ 108, 110). Although the ’495 Patent Specification depicts the channel void being formed in the power distribution subsystem, the ’495 Patent Specification makes clear that the patent is not limited to these embodiments. Ex. 1001, 6:10–15, 6:22–32, 6:42–47. Accordingly, we adopt Petitioner’s proposed construction, with the caveat the meaning of 11 This stands in contrast to the claims of U.S. Patent No. 8,863,416 B2 (the ’416 patent), which shares a common specification with the ’495 patent. The ’416 patent is at issue in the related IPR2017-00309 proceeding. Claim 1 of the ’416 patent, for example, recites “the second power distribution subsystem comprising a female end, the female end having a central void and a channel void.” “channel void” pertains to just that term and should not be understood to negate the express recitations of each of the independent claims, for example, requiring that the “female end of a second trunk section” has the “channel void.” Ex. 1001, 16:3–11, 16:63–17:4, 17:59–18:15, 18:44–64.” slip op. at 11
Patent outcomesUS 9,119,495 unpatentableClaim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 9,119,495 - Willis Electric Co., Ltd. v. Polygroup Macau Ltd (Bvi)All claims unpatentablePTAB · May 7, 2018 · IPR2017-00331 · APJ Barbara A Parvis · IPR · Final written decision
Claims 1–30 are unpatentable as obvious over Chen’s non-provisional disclosure alone or with Geisthoff, and Chen’s incorporated provisional disclosure.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“Based on the record before us, after considering all of the evidence and argument presented by the parties, we agree with Petitioner’s proposed construction. We credit the testimony of Dr. Durfee (Ex. 1026 ¶¶ 6, 7, 9, 11–17, 22–24; Ex. 1002 ¶ 59) over that of Dr. Lebby (Ex. 2004 ¶¶ 40–44, 94–98, 100) because, as will be explained below, Dr. Durfee’s testimony is consistent with the language of the claims and the ’495 Patent Specification.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“As discussed supra in Section II.A.1, we agree with Petitioner that the “female end” is of a tree trunk section. 11 In view of our aforementioned determination, based on the record before us, after considering all of the evidence and argument presented by the parties, we see no real difference in the parties’ proposed constructions because the claims recite that the “female end” has a “channel void” and that the male end engages the female end. Ex. 1001, 16:3–11, 16:63–17:4, 17:59–18:15, 18:44–64. Because the claims already recite expressly the additional limitations that are part of Patent Owner’s proposed construction (PO Resp. 11), those limitations structurally define “channel void” such that it is not merely air or space, as Dr. Lebby testifies (Ex. 2004 ¶¶ 108, 110). Although the ’495 Patent Specification depicts the channel void being formed in the power distribution subsystem, the ’495 Patent Specification makes clear that the patent is not limited to these embodiments. Ex. 1001, 6:10–15, 6:22–32, 6:42–47. Accordingly, we adopt Petitioner’s proposed construction, with the caveat the meaning of 11 This stands in contrast to the claims of U.S. Patent No. 8,863,416 B2 (the ’416 patent), which shares a common specification with the ’495 patent. The ’416 patent is at issue in the related IPR2017-00309 proceeding. Claim 1 of the ’416 patent, for example, recites “the second power distribution subsystem comprising a female end, the female end having a central void and a channel void.” “channel void” pertains to just that term and should not be understood to negate the express recitations of each of the independent claims, for example, requiring that the “female end of a second trunk section” has the “channel void.” Ex. 1001, 16:3–11, 16:63–17:4, 17:59–18:15, 18:44–64.” slip op. at 11
- Skill levelSkill level petitioner adoptedDecided for petitioner
“(1) a person with at least a bachelor’s degree in mechanical engineering or electrical engineering; and at least one to two years of experience in mechanical and electrical design aspects of products having mechanical and electrical connections, or (2) a designer with at least one to two years of experience in designing lighted artificial trees. Pet. 19–20 (numbering added) (citing Ex. 1002 ¶ 8). Patent Owner does not dispute Petitioner’s contentions regarding the level of skill. See, e.g., PO Resp. 45–48; see also Prelim. Resp. 39 (“Patent Owner will accept Petitioner’s proposed POSA definition for purposes of this Preliminary Response only”). We adopt Petitioner’s description of a person of ordinary skill in the art as it is consistent with the level of skill implied by the disclosures of the prior art references. 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 15
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“Patent Owner does not dispute Petitioner’s contentions regarding independent claims 1 and 11, except with respect to “female end” and “channel void,” discussed above. As set forth in our Order of May 9, 2017, issued with our Decision on Institution, Patent Owner has been cautioned “that any arguments for patentability not raised in the response will be deemed waived.” Paper 12, 7. For the reasons given, upon consideration of the arguments and evidence in the entire trial record, we are persuaded by and adopt as our own Petitioner’s contentions and credit and give substantial weight to the testimony of Dr. Durfee that the limitations recited in claims 1 and 11 are taught or suggested by Chen (i.e., Chen’s Non-Provisional Disclosure) alone or in combination with Geisthoff. Additionally, we are persuaded by and adopt as our own Petitioner’s analysis, which relies upon Dr. Durfee’s supporting testimony regarding his articulated reasoning as to why one of ordinary skill in the art would have been motivated to modify the teachings of Chen in the manner recited in claims 1 and 11. Accordingly, based on the evidence in the entire trial record, we determine that Petitioner has 14 Because we adopt Petitioner’s proposed construction, we need not discuss further this alternative example, or Petitioner’s assertions regarding Geisthoff, which simply provides further teachings regarding the shape and reasons to incorporate such a shape into an artificial tree. We discuss these teachings further with respect to claim 20. We, however, note that we are persuaded that these teachings satisfy the recitations of plurality of configurations (claim 1) or locations (claim 11) even under the narrower construction that Petitioner raises, but contends is too narrow. demonstrated by a preponderance of the evidence that claims 1 and 11 are unpatentable as obvious over Chen’s Non-Provisional Disclosure alone or also in combination with Geisthoff.” slip op. at 27
Patent outcomesUS 9,119,495 unpatentableClaim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 9,119,495 - Dynamic Drinkware, LLC v. National Graphics, Inc.All claims unpatentablePTAB · Jan 27, 2016 · IPR2014-01162 · APJ Michael P Tierney · IPR · Final written decision
Claims 1–46 are unpatentable: claims 1, 2, 23, 24, and 27–29 as anticipated by Quadracci ’995; the remaining claims as obvious over the stated combinations.
RulingsFinal written decision- Skill levelSkill level board ownDecided for patent owner
“in the lenticular art “is one who has several years of work experience in the lenticular industry.” Ex. 1013 ¶ 11. Patent Owner’s declarant, Dr. Garcia, testifies that a person of ordinary skill in the art would have five or more years of experience in the lenticular lens industry or have an understanding of optical engineering including first and higher order geometric and physical optics principles. Ex. 2001 ¶ 13. The parties’ definitions of one of ordinary skill in the art are substantially the same and neither party states how any difference in the parties’ articulated levels of skill impacts the proceeding. For purpose of this decision, we hold that the level of ordinary skill in the art is reflected by the prior art of record, such that one of skill in the art would have had years of experience in the lenticular lens industry or had an understanding of optical engineering, including higher order geometric and physical optics principles. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art itself can reflect the appropriate level of ordinary skill in the art).” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionOther
“Patent Owner does not dispute the proposed constructions, except to state that, consistent with Petitioner’s definition of focal length, one of ordinary skill in the art would have understood that focal length in the ’467 refers to the “effective focal length” of the lens. PO Resp. 3–4. We adopt Petitioner’s proposed claim constructions as they are consistent with the Patent Owner’s use of the terms in the ’467 patent Specification. For example, the term gauge thickness is defined in the ’467 patent with reference to g2 of Fig. 1A and states that the thickness is measured from the outermost edge of the curved surface of the lens to the flat back surface of the lens. Ex. 1001, 2:27–33.” slip op. at 7
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“describe . . . each and every claim limitation and enable one of skill in the art to practice an embodiment of the claimed invention without undue experimentation.” Am. Calcar, Inc. v. Am. Honda Motor Corp., 651 F.3d 1318, 1341 (Fed. Cir. 2011) (citing In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009)).” slip op. at 8
- Expert testimonyPetitioner expert discountedPetitioner expert creditedDecided for patent owner
“Based on the evidence of record, we credit the ray tracing testimony of Mr. Raymond and are persuaded that the lenticular lens disclosure of Quadracci ’995 is enabling. Specifically, Dr. Garcia acknowledges that focal length formulas other than those recited in the ’467 patent were known in the art and Mr. Raymond demonstrates that, consistent with the teachings of Quadracci ’995, one of ordinary skill in the art could make the described lenses. c. Mr. Raymond’s Gauge Thickness and Focal Length Calculations Patent Owner states that Mr. Raymond’s thickness calculation in his first declaration is either wrong, or it uses an unacceptable index of refraction. Mr. Raymond, in his first declaration, testifies that using the general lens formulas described in the ’467 patent, he arrived at a gauge thickness of 3.4 mils. Ex. 1013 ¶¶ 26–28. Mr. Raymond, however, does not disclose the index of refraction that he used to determine the gauge thickness. Expert testimony that does not disclose the underlying data on which the opinion is based is entitled to little or no weight. 37 C.F.R. 42.65(a). As Mr. Raymond failed to disclose the index of refraction used in his calculations and provide support for his selected refraction index, we do not credit Mr. Raymond’s gauge thickness calculation in his first declaration with respect to Quadracci ’995. As discussed below, however, Mr.” slip op. at 14
Patent outcomesUS 6,424,467 unpatentableClaim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 6,424,467 - Microsoft Corporation v. Enfish, LLCSome claims unpatentablePTAB · Mar 2, 2015 · IPR2013-00560 · APJ Barbara A Parvis · IPR · Final written decision
Claims 47–48 are unpatentable as anticipated by Visual Basic, and claims 49–50 as obvious over Visual Basic and Jensen; claims 51–53 were not shown unpatentable, and claims 17–23 were terminated.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownNo construction neededDecided for patent owner
“Enfish contends that our construction for “object identification number” is incomplete. PO Resp. 15. We evaluate Enfish’s contention below. Enfish also provides a proposed construction for “anchor,” recited in claims 21 and 51. PO Resp. 22. Because we determine that Microsoft has not met its burden with respect to these claims for other reasons, no construction of this term for the purposes of this Decision is necessary. We discern no reason, based on the complete record now before us, to change our constructions in the Decision to Institute of “logical table,” “object identification number,” and “attribute set.”” slip op. at 8
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“evidence, and the detailed claim analysis, which reads persuasively all elements of claim 47 onto the disclosure of Visual Basic. Pet. 33–46 (citing Ex. 1104, LR 162, 185, 280, 425, 484, 532, 558, PF 1, 3, 18, 37–39, 40, 47, 76, 80, PG 453, 471, 481, 482 ; Ex. 1119 ¶¶ 67–98). For example, we are persuaded that Microsoft has shown by a preponderance of the evidence that Visual Basic discloses configuring memory according to a logical table, as recited in claim 47. In the cited portions above, Visual Basic discloses storing data in a computer formatted as a table object, which is “a logical representation of a physical table.” Ex. 1104, LR 558. The table object comprises “records (rows) and fields (columns).” Id.” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundMotivation not foundMixed
“2007 ¶ 231. In contrast to Dr. Jagadish’s statement, however, Jensen teaches an object-oriented application for managing information retrieved from a structured database, such as a relational database. Ex. 1106, Abstract. Enfish further contends that Microsoft does not explain why one of ordinary skill in the art would have been motivated to apply the pointers of Jensen to the indexing structure in Visual Basic. PO Resp. 35. We, however, are persuaded that Microsoft has shown a sufficiently articulated reason with rational underpinning to support obviousness (Pet. 48–49 (citing Ex. 1119 ¶¶ 387–404)). Microsoft, for example, states “[i]t was well known in the art at the time that indexes such as the index disclosed in [Visual Basic], maintain object identification numbers of the cell for locating data.” Pet. 49 (emphasis added). Microsoft continues, “Jensen discloses containing the address in a pointer, e.g., a physical memory address (i.e., OIDs).” Id. (citing Ex. 1106, 7:29–35). Dr. Hosking testifies “[i]t was well known in the art at the time that Index Objects locate data by maintaining object identification numbers in the internal pointers as disclosed in Jensen.” Ex. 1119 ¶ 403 (emphasis added). Dr. Hosking further testifies “[a] person of ordinary skill in the art would be motivated to combine Jensen’s teaching of maintaining the OIDs in a pointer with [Visual Basic’s] disclosure of identifying the logical columns / rows with the OIDs.” Ex. 1119 ¶ 404. The predictable use of familiar prior art elements according to their established functions renders the recited invention obvious. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 417 (2007).” slip op. at 19
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“invention, the totality of the evidence submitted, including objective evidence of nonobviousness, may lead to a conclusion that the claimed invention would not have been obvious to one with ordinary skill in the art. In re Piasecki, 745 F.2d 1468, 1471–72 (Fed. Cir. 1984). However, to accord substantial weight to objective evidence requires the finding of a nexus between the evidence and the merits of the claimed invention. In re GPAC Inc., 57 F.3d 1573, 1580 (Fed. Cir. 1995); see also In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996) (“success is relevant in the obviousness context only if there is proof that the sales were a direct result of the unique characteristics of the claimed invention.”). Enfish contends that the claimed invention received industry accolades, including praise from Microsoft, satisfied a long-felt need, resulted in success where others had failed, as well as commercial success. PO Resp. 42–47. Enfish points to features of claim 17, which Enfish contends are the features of the claimed invention that resulted in the objective indicia of success to which Enfish refers. Id. at 43–44. Claim 17 of the ’775 patent, however, is challenged on the basis that it is anticipated by Visual Basic. Secondary considerations do not weigh into determinations regarding anticipation. Cohesive Techs., Inc. v. Waters Corp., 543 F.3d 1351, 1364 (Fed. Cir. 2008). Because we conclude that Microsoft has not shown that claims 51–53 of the ’775 patent are unpatentable for other reasons, the only claims that we need to evaluate are dependent claims 49 and 50 of the ’775 patent. Microsoft asserts that claims 49 and 50 are obvious over the combination of Visual Basic with a reference that teaches referencing objects through two-way pointers. Pet. 49 (citing Ex. 1106, 7:29–35). Enfish has not shown a nexus between any of the accolades or successes it says occurred and the use of two-way pointers.” slip op. at 24
Patent outcomesUS 6,163,775 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 6,163,775 - Facebook, Inc. / Linkedin Corp. et al. v. Software Rights Archive, LLCSome claims unpatentablePTAB · Jan 30, 2015 · IPR2013-00480 · APJ Barbara A Parvis · IPR · Final written decision
Claim 14 was held unpatentable as anticipated by Fox Thesis; claims 1, 5, 15, and 16 were not shown unpatentable.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“determine whether “cluster links” means relationships between two nodes, which are represented in data stored in a computer. Claim 1 recites a method of analyzing data in a database with indirect relationships using links and nodes. Claim 14 similarly recites a method for representing the relationship between nodes, using stored direct links, paths, and candidate cluster links. As explained in the ’494 Patent specification, data in the database may be represented as a node. Ex. 1001, 12:29–33. Exemplary nodes include an object or a portion of an object, a document or section of a document, and a World Wide Web page. Id. at 12:35–38. The ’494 Patent specification states that a link is a “relationship between two nodes.” Id. at 12:65–66. The ’494 Patent specification continues, “[a] link [] can be represented by a vector or an entry on a table and contain information for example, a from-node identification [] (ID), a to-node ID [], a link type [], and a weight.” Id. at 13:3–6. As described in the ’494 Patent specification, a link is represented in data stored in a computer. We, therefore, determine that “cluster links” means relationships, which are represented in data stored in a computer and are used for grouping interrelated nodes.” slip op. at 11
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“As described in Fox SMART, the concentration tests that are cited by Petitioner are performed as part of forming the cluster tree. Id. Petitioner does not identify disclosure in Fox SMART of deleting clusters other than those that simply overlap, or duplicate, other clusters. Overlapping clusters are deleted following a routine that identifies plausible clustering with “no limit on overlap.” Id. Additionally, Fox SMART includes code that collects orphans. Id. at 52. Petitioner, however, has not shown that Fox SMART describes a subset which does not include these orphans. Dr. Fox’s supplemental testimony that “Fox SMART teaches that potential (i.e., candidate) clusters are rejected (‘deleted’) if they fail any one of these tests” (Ex. 1028 ¶ 281 (citing Ex. 1005, 51)) suggests that the terms “rejected” and “deleted” are the same. We do not agree. In view of Dr. Fox’s testimony in both of his Declarations and the testimony of Dr. Jacobs, we find that one of ordinary skill in the art reasonably would have understood Fox SMART as describing deleting overlap that had been generated by the immediately preceding software routine. Additionally, we find that one of ordinary skill in the art reasonably would have understood Fox SMART as describing that the tests referred to by Dr. Fox are processed during formation of the tree. We, therefore, determine that Dr. Fox’s testimony does not address persuasively the requirement in claim 1 of deriving a subset of the already generated candidate cluster links.” slip op. at 15
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, grantedGranted
“FURTHER ORDERED that Patent Owner’s Motion to Amend to cancel claims 8, 10, 11, 35, and 40 of the ’494 Patent is GRANTED;” slip op. at 24
- ExcludeMotion to exclude, deniedDenied
“arguments for the first time. Paper 44, 1. A reply may respond to arguments raised in the corresponding patent owner response. 37 C.F.R. § 42.23(a). Examples of indications that a new issue has been raised in a reply include new evidence necessary to make out a prima facie case for the unpatentability of a claim. Office Patent Trial Practice Guide, 77 Fed.Reg. 48,756, 48,767 (Aug. 14, 2012). We determine that the evidence presented in the Reply Fox Declaration that is discussed in this Decision properly responds to arguments raised in the Patent Owner Response. Additionally, we do not rely on evidence in the Reply Fox Declaration in our determination that Petitioner established by a preponderance of the evidence that claim 14 is unpatentable. For the reasons given, we deny Patent Owner’s Motion to Exclude.” slip op. at 22
Patent outcomesUS 5,832,494 mixedClaim construction§ 102 anticipationcites PhillipsPatents in suitUS 5,832,494
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.