• Google Inc. v. Patrick ZuiliAll claims unpatentable
  PTAB · May 5, 2017 · CBM2016-00021 · APJ Jameson Lee · CBM · Final written decision

  Claims 1–3, 6, 10, 14, 15, 18, 19, and 21 are unpatentable under § 101 because they claim an abstract idea without an inventive concept.

  RulingsFinal written decision

  • BurdenFwd all claims unpatentableUnpatentable

    “3. Conclusion Petitioner has established by a preponderance of the evidence that claims 1–3, 6, 10, 14, 15, 18, 19, and 21 are directed to patent-ineligible subject matter under 35 U.S.C. § 101.” slip op. at 40

  • ExcludeMotion to exclude, deniedDenied

    “to Petitioner Exhibits 1004, 1005, 1010, 1011, 1013, 1014, 1032, and 1037. Paper 33. None of these exhibits was relied on by Petitioner in support of the sole ground on the basis of which trial was instituted in this proceeding, i.e., subject matter eligibility under 35 U.S.C. § 101, or in support of Petitioner’s arguments for establishing the ’667 patent as a covered business method patent eligible for covered business method patent review. Patent Owner in its Reply to Petitioner’s opposition to Patent Owner’s renewed Motion to Exclude asserts that the Board’s Decision on Institution did rely on the Declaration of Mr. Gray and that Mr. Gray’s Declaration does refer to Exhibits 1004, 1005, and 1037. Paper 40, 3. Mr. Gray’s Declaration, however, covers many subjects, and the portions of Mr. Gray’s Declaration cited to in the Decision on Institution do not rely on or refer to Exhibits 1004, 1005, 1010, 1011, 1013, 1014, 1032, and 1037. We have not relied on any portion of Exhibits 1004, 1005, 1010, 1011, 1013, 1014, 1032, and 1037, in this Final Written Decision. Those exhibits all relate to an alleged ground of unpatentability over prior art that has not been instituted for trial and also were not referred to by Mr. Gray in connection with his testimony regarding either patent subject matter eligibility under 35 U.S.C. § 101 or whether the ’667 patent is a covered business method patent eligible for covered business method patent review. Accordingly, Patent Owner’s Renewed Motion to Exclude is dismissed as moot.” slip op. at 40

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for petitioner

    “We are cognizant that a “pay-per-click system” is expressly recited only in claim 1’s preamble, and that a preamble recitation may not be limiting. “Whether a preamble stating the purpose and context of the invention constitutes a limitation of the claimed process is determined on the facts of each case and in light of the overall form of the claim, and the invention as described in the specification and illuminated in the prosecution history.” Applied Materials, Inc. v. Advanced Semiconductor Materials Am., Inc., 98 F.3d 1563, 1572–73 (Fed. Cir. 1996). In this instance, the recitation of a “pay-per-click system” in the preamble of claim 1 is limiting, because it is necessary to give life, meaning, and vitality to the subject matter of claim 1. See Symantic Corp. v. Computer Assocs. Int’l Inc., 522 F.3d 1279, 1288 (Fed. Cir. 2008); Catalina Marketing Int’l. v. Coolsavings.Com, 289 F.3d 801, 808 (Fed. Cir. 2002); Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999). In the Summary of the Invention section, the Specification states: “This invention improves upon existing pay-per-click arrangements . . . .” Ex. 1001, 1:62–64. The Specification describes no environment for the disclosed invention other than in a “pay-per-click” system. The body of claim 1 specifically recites a step of “detecting fraudulent activity by measuring the duration between clicks by said client to said selected website by examining said code and website information.” Id. at 3:12–15. The “fraudulent activity” referred to in the body of the claim depends on the operations of a pay-per-click system to have meaning. For instance, the potentially fraudulent activity related to the duration between clicks is a problem, because the merchant has an obligation to pay for each click in a pay-per-click system. Also in the Summary of the Invention section, the Specification states that determining if certain clicks are illegitimate “allows the pay-per-click company to more fairly invoice the merchants, thereby preventing fraudulent [overuse].” Id. at 2:1–4. Claim 1 expressly requires the links provided to a client be “associated with a plurality of websites associated with a plurality of merchants.” Id. at 3:2–5. For all of these reasons, we determine that the recitation of “pay-per-click system” in the preamble of claim 1 is limiting. We determine, in particular, that the step in the body of claim 1 for detecting fraudulent activity derives its meaning and significance from being implemented in a pay-per-click system.” slip op. at 14

  • Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionUnpatentable

    “above-noted testimony of Mr. Gray, we agree with Petitioner’s articulation of what constitutes an abstract idea to which the claimed invention is directed, i.e., “detecting fraud based on the time between two requests by the same client.” That articulation is reasonably tied to the claims, and not an over-generalization or over-simplification of the claimed subject matter.” slip op. at 29

  Patent outcomesUS 7,953,667 unpatentable
  Claim construction§ 101 eligibilitycites Mayo · Bilski · Enfish
  Patents in suitUS 7,953,667
• American Megatrends, Inc. / Micro- Star International Co., Ltd et al. v. Kinglite Holdings Inc.All claims unpatentable
  PTAB · Jan 19, 2017 · IPR2015-01488 · APJ Trevor M Jefferson · IPR · Final written decision

  Claims 1–50 are unpatentable: claims 1 and 14 over Shipman; claims 2–5, 7–13, 15–18, 20–30, 32–42, and 44–50 over Shipman and Harmer; claims 6, 19, 31, and 43 over Shipman, Harmer, and Patel.

  RulingsFinal written decision

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

    “In the Decision to Institute, we applied the following claim constructions. Dec. to Inst. 10–12. We determined that “BIOS initialization code” as recited in claims 1, 14, 27, and 39 as “predetermined amount of BIOS initialization code” does not require further construction. Id. at 11. We also determined that “dispatch manager” as recited in claims 1–4, 14–17, 27–29, and 39–41, is construed as a program that handles the locating, loading and executing of task code. Id. at 12. Finally, we adopted the parties’ agreed construction of “system memory” as “random access memory (RAM).” Id. As neither Petitioner’s nor Patent Owner’s arguments persuade us to revise our interpretations of “BIOS initialization code,” “dispatch manager,” or “system memory,” we adopt as final our determinations of the broadest reasonable interpretations of those terms. Dec. to Inst. 10–12.” slip op. at 9

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Skill in the Art Petitioner contends that a person of ordinary skill in the art for the ’189 patent would be “a person having at least a Bachelor of Science degree in computer science or software engineering or a Bachelor of Science degree in a technical field requiring computer science or software engineering courses and at least one year of industry experience in computer science or engineering related to firmware.” Pet. 10 (citing Ex. 1013 ¶ 15). Patent Owner does not dispute this proposed level of skill in the art. Based on the full record, we agree with Petitioner.” slip op. at 9

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “Mr. Perla’s declaration testimony (Ex. 1013 ¶ 56) is contradicted and undermined by his deposition testimony that shows him scrambling and leading counsel “on a wild goose chase” to support his declaration (PO Resp. 3–54 (citing Ex. 2010, 28:7–8, 29:7–23, 32:20–33:6, 33:15–20, 33:21– 34:14; 35:7–36:25, 46:1–12)). Patent Owner argues that Mr. Perla’s testimony should be ignored because he “fabricates an aspect of modularity” in the Harmer reference to combine it with the modularity contemplated in the Shipman reference. PO Resp. 3–5. We disagree, finding that the deposition testimony cited by Patent Owner concerning “portions of BIOS” as contrasted with “BIOS modules” does not support the conclusion that Mr. Perla’s testimony should be disregarded in its entirety or given no weight. Considered in its entirety (Ex. 2010 and Ex. 1013), we find sufficient support and explanation for Mr. Perla’s testimony regarding modularity of Harmer and Shipman. In addition, Patent Owner’s deposition questions are 4 We note that Patent Owner’s citations to the testimony of Mr. Perla (PO Resp. 3–5) do not support Patent Owner’s contentions. For example, the Patent Owner response quotes Mr. Perla’s testimony (PO Resp. 3–4), but the deposition exhibit citations (Ex. 2010, 28:7–8, 28:10–12, 28:13–16), do not contain the quoted language and do not support Patent Owner’s contentions. In the absence of accurate citations to the record, we have considered Mr. Perla’s testimony in its entirety (see Ex. 2010). narrowly drawn and fail to support Patent Owner’s contentions that Mr. Perla fabricated his testimony regarding the modular teachings of the Harmer reference. PO Resp. 3–5 (citing Ex. 2010, 28:7–8, 29:7–23, 32:20– 33:6, 33:15–20, 33:21–34:14; 35:7–36:25, 46:1–12). Accordingly, we do not disregard the testimony of Mr. Perla.” slip op. at 13

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner

    “Patent Owner contends that there is no motivation to combine the Harmer and Shipman references because there is no support for the testimony of Mr. Perla that Harmer contemplates modular BIOS. PO Resp. 3–5, 11–13. As discussed above, we disagree with Patent Owner’s argument that Mr. Perla’s deposition testimony shows there is no support for his opinion that a skilled artisan would have been motivated to combine Harner and Shipman given that both deal with BIOS modularity because “Harmer’s purported BIOS modularity was fiction.” PO Resp. 11. Considering Mr. Perla’s testimony in its entirety, Mr. Perla’s deposition testimony is consistent with his declaration testimony that Harmer’s teachings of expansion BIOS are similar to the teachings in Shipman relied upon by Petitioner. Compare Ex. 1013 ¶ 56, with Ex. 2010, 30:3–11. We do not find that Mr. Perla’s deposition testimony undermines the testimony regarding what Harmer teaches a person of ordinary skill in the art. Petitioner relies on Harmer to establish that it was known, prior to the time of invention of the ’189 patent, to store BIOS modules in a protected area of a secondary nonvolatile storage device to reduce the cost of the ROM by relocating BIOS components to the mass memory storage of peripheral computer devices. Reply 9–10; Ex. 1013 ¶¶ 110–111; Ex. 1003, 4:63–67; Pet. 32–33. We are not persuaded by Patent Owner’s argument based solely on the” slip op. at 20

  Patent outcomesUS 7,185,189 unpatentable
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 7,185,189
• Duodecad It Services Luxembourg S.à.R.L. / Friendfinder Networks Inc. et al. v. Wag Acquisition, LLCSome claims unpatentable
  PTAB · Oct 20, 2016 · IPR2015-01036 · APJ Glenn J Perry · IPR · Final written decision

  Claims 1, 3, 4, 6, 8, 10, 11, 13, 15, 17, 18, and 20 are unpatentable as obvious; claims 7, 14, and 21 were not shown unpatentable because the references lack per-user server tracking.

  RulingsFinal written decision

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner

    “A given reference is publicly accessible upon a satisfactory showing that such document has been [1] disseminated, or [2] otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it. SRI Int’l, Inc. v. Internet Sec. Sys., Inc., 511 F.3d 1186, 1194–95 (Fed. Cir. 2008. Even though Chen issued prior to the USPTO PAIR system, Chen FH was and remains easily requisitioned by any interested person from the USPTO by making the appropriate request and paying the appropriate fee.” slip op. at 18

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundMixed

    “We are not persuaded by Patent Owner’s argument that initially operating Chen in rush mode would cause unstable operation. The only evidence Patent Owner has presented is the declaration testimony of Dr. Mayer-Patel, which was weakened as a result of cross-examination.  For example, Dr. Mayer-Patel admitted that simply setting the water marks to different values would avoid the potential hysteresis instability. See Ex. 1016, pp. 64−66. Further, both Chen and Chen FH disclose that transmission starts in rush mode. Chen states: “transmission occurs in rush mode when the amount of data falls below the lower water mark, i.e., there is not enough data in the client agent packet buffer (33).” Ex. 1004, 6:43–45. Chen FH states at page 86 in the “open file” line: “read data from disk and rush them to CA” (emphasis added). We credit Dr. Polish’s testimony that “Chen and the Chen File History teach that the mode that is used at the start of transmission is the rush mode.” Ex. 1003 ¶ 58. Dr. Mayer-Patel was cross-examined regarding “thrashing.” When asked about setting gamma levels to achieve a stable system, Dr. Mayer- Patel answered that he would set the gammas to different levels for transitioning from rush to normal modes than for transitioning from normal to rush modes. Ex. 1016, 66:9–18; see Ex. 1005, 86–87 (discussing gamma values); Reply 14 n.2 (discussing hysteresis). Based on the testimony of Dr. Mayer-Patel and the evidence cited by Petitioner (Reply 14–15), we conclude that one of ordinary skill would have known how to set gamma levels defining mode transitions to provide the appropriate amount of hysteresis to prevent thrashing, e.g., in the manner that a thermostat hysteresis is set to avoid too rapid a cycling of a furnace. We find that if Chen were operated initially in “rush” mode, it would” slip op. at 29

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedMixed

    “We are not persuaded by Patent Owner’s argument that initially operating Chen in rush mode would cause unstable operation. The only evidence Patent Owner has presented is the declaration testimony of Dr. Mayer-Patel, which was weakened as a result of cross-examination.  For example, Dr. Mayer-Patel admitted that simply setting the water marks to different values would avoid the potential hysteresis instability. See Ex. 1016, pp. 64−66. Further, both Chen and Chen FH disclose that transmission starts in rush mode. Chen states: “transmission occurs in rush mode when the amount of data falls below the lower water mark, i.e., there is not enough data in the client agent packet buffer (33).” Ex. 1004, 6:43–45. Chen FH states at page 86 in the “open file” line: “read data from disk and rush them to CA” (emphasis added). We credit Dr. Polish’s testimony that “Chen and the Chen File History teach that the mode that is used at the start of transmission is the rush mode.” Ex. 1003 ¶ 58. Dr. Mayer-Patel was cross-examined regarding “thrashing.” When asked about setting gamma levels to achieve a stable system, Dr. Mayer- Patel answered that he would set the gammas to different levels for transitioning from rush to normal modes than for transitioning from normal to rush modes. Ex. 1016, 66:9–18; see Ex. 1005, 86–87 (discussing gamma values); Reply 14 n.2 (discussing hysteresis). Based on the testimony of Dr. Mayer-Patel and the evidence cited by Petitioner (Reply 14–15), we conclude that one of ordinary skill would have known how to set gamma levels defining mode transitions to provide the appropriate amount of hysteresis to prevent thrashing, e.g., in the manner that a thermostat hysteresis is set to avoid too rapid a cycling of a furnace.” slip op. at 29

  • Obviousness (§103) › KSR rationalesUnpatentableUnpatentable

    “We find that ISO-11172 would have been well known to those of ordinary skill. It was at the time of the ’839 patent already published and utilized. ISO-11172 demonstrates that it was known to encode frames at constant and variable bit rates. We are not persuaded that Chen’s focus on variable bit rates teaches away from the use of either constant or variable bit rates. The fact that a standard, published before Chen, describes the use of both in detail suggests that it was well known to those of ordinary skill in the art. We therefore conclude that Petitioner has established by a preponderance of evidence of record that Chen describes the constant bit rate feature of claims 3, 10 and 17. We find that Petitioner has produced sufficient evidence to establish that claims 3, 10, and 17 are unpatentable over Chen, Chen FH, and ISO-11172. See Pet. 38–39 (citing Ex. 1003 ¶¶ 68–70).” slip op. at 35

  Patent outcomesUS 8,364,839 mixed
  § 102 anticipation§ 103 obviousness
  Patents in suitUS 8,364,839
• Google Inc. v. Better Food Choices LLCAll claims unpatentable
  PTAB · Aug 18, 2016 · CBM2015-00071 · APJ Minn Chung · CBM · Final written decision

  Claims 1–20 are unpatentable under § 101; claims 1–10 are also indefinite under § 112, ¶ 2 because the specification lacks an algorithm for the claimed correlating function.

  RulingsFinal written decision

  • BurdenOther

    “As an initial matter, Patent Owner asserts that Petitioner has not met its burden of proof because Petitioner relies only on the ’115 patent and its prosecution history to argue unpatentability and does not present any other evidence, such as a witness. PO Resp. 6–7, 13–20. Patent Owner argues that Petitioner has presented no evidence of unpatentability because the ’115 patent and its file history “shows the Patent Owner has a valid, issued patent and nothing more.” Id. at 7. We are not persuaded because, as discussed below, in this case we need to look only to the ’115 patent and its prosecution history to support a finding of unpatentability under §§ 101 and 112. See In re TLI Comm. LLC Patent Litig., 823 F.3d 607, 613–14 (Fed. Cir. 2016) (the patent alone is sufficient to sustain a finding of unpatentability under § 101).” slip op. at 12

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner

    “rebuttable presumption that the limitation is written in a means-plus-function format under 35 U.S.C. § 112, ¶ 6. TriMed, Inc. v. Stryker Corp., 514 F.3d 1256, 1259 (Fed. Cir. 2008) (citation omitted). If, in addition to the word “means” and the functional language, the claim recites sufficient structure for performing the described functions in their entirety, the presumption is overcome, and § 112, ¶ 6 does not apply. Id. “Sufficient structure exists when the claim language specifies the exact structure that performs the functions in question without need to resort to other portions of the specification or extrinsic evidence for an adequate understanding of the structure.” Id. at 1259–60.” slip op. at 28

  • Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionUnpatentable

    “with the Supreme Court and Federal Circuit precedents on step one analysis under the Alice framework. In step one of the Alice analysis, to determine whether the challenged claims are directed to an abstract idea, the inquiry is to ask, considered in light of the Specification, whether “their character as a whole” is directed to an abstract idea, not, as Patent Owner contends, identifying the “core invention” of the patent. See Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (quoting Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015)). Relying on the distinction made in Alice between, on one hand, computer-functionality improvements and, on the other, uses of existing computers as tools in aid of processes focused on “abstract ideas,” the court in Enfish clarified that a relevant inquiry in step one of the Alice framework is to ask whether the “focus” of the claims is on the specific asserted improvement in computer capabilities or, instead, on a process that qualifies as an “abstract idea” for which computers are invoked merely as a tool. Enfish, 822 F.3d at 1335–36 (citing Alice, 134 S. Ct. at 2358–59). In this inquiry, claims “directed to an improvement in the functioning of a computer” are contrasted with claims “simply adding conventional computer components to well-known business practices” or “generalized steps to be performed on a computer using conventional computer activity.” See TLI, 823 F.3d at 612 (quoting Enfish, 822 F.3d at 1338). The Federal Circuit further clarified recently and described the first-stage inquiry as “looking at the ‘focus’ of the claims, their ‘character as a whole.’” Elec. Power Grp., LLC v. Alstom S.A., No. 2015-” slip op. at 17

  • Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptStep2 no inventive conceptUnpatentable

    “claims fail to recite any elements that individually or as an ordered combination transform the abstract idea of collecting and correlating information to provide personalized nutritional information of food products to shoppers into a patent-eligible application of that idea. It is well-settled that mere recitation of concrete, tangible components is insufficient to confer patent eligibility to an otherwise abstract idea. TLI, 823 F.3d at 613. Rather, the recited components must involve more than performance of “‘well- understood, routine, conventional activit[ies]’ previously known to the industry.” Alice, 134 S. Ct. at 2359 (quoting Mayo, 132 S. Ct. at 1294).” slip op. at 22

  Patent outcomesUS 5,841,115 unpatentable
  Claim construction§ 101 eligibility§ 112 disclosurecites Alice · Mayo · Bilski · Enfish · Nautilus
  Patents in suitUS 5,841,115
• Hughes Network Systems, LLC / Hughes Communications, Inc. v. California Institute Of TechnologyAll claims unpatentable
  PTAB · Apr 21, 2016 · IPR2015-00059 · APJ Glenn J Perry · IPR · Final written decision

  Claims 1 and 2 are unpatentable as anticipated by Divsalar; Patent Owner’s motion to strike and exclude was denied.

  RulingsFinal written decision

  • PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner

    “Although Petitioner has the ultimate burden of persuasion in an inter partes review, once the Petitioner has represented what it believes to be a proper identification of the real parties-in-interest, Patent Owner has the burden of production in establishing that a real party-in-interest has not been named. Patent Owner has not carried that burden with respect to establishing that Dish is an unnamed real party-in-interest. Petitioner persuasively argues that Patent Owner failed to show that the Petition was filed at the behest of Dish. Paper 15, 1. The key to a real party-in-interest inquiry is the relationship between the potential unnamed real party-in-interest and the proceeding, not the relationship between parties. For example, “[a] common consideration is whether the non-party exercised or could have exercised control over a party’s participation in a proceeding.” 77 Fed. Reg. at 48,759. There is no persuasive evidence of record that Dish controls or even had an opportunity to control Hughes’ decision to file or maintain this inter partes review.” slip op. at 11

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther

    “We construe the term “linear transformation” in order to apply the Divsalar reference. The term “linear transformation” is used in the context of a transformation between two vector spaces. We adopt a linear algebra definition7 that a linear transformation is one that obeys the laws of linear algebra including distributive and associative properties, e.g., the transform of vectors a+b is equal to the transform of a + the transform of b. The linear transform of x (a scalar) times a vector y is equivalent to x times the transform of vector y. We decline to read into the claim limitation the requirement of an irregular repeat. 2. Additional Claim Terms We find it unnecessary to construe additional claim terms.” slip op. at 13

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedReference is prior artDecided for petitioner

    “Based on the same named authors that appear in bibliographic citations in the 1998–1999 time frame, we find that the evidence of record supports that a relatively small community of artisans worked in error correction coding, several of whom referenced the Divsalar paper. Under 9 The presence of the citation in a book copyrighted in 2000 suggests that the author of that portion of the book (here, David Mackay) would have received the article prior to the book’s publication. these circumstances, we find that the Divsalar paper was published to the relevant community of skilled artisans well before the earliest effective filing date of the patent at issue. We determine, based on the totality of the evidence discussed above, that Divsalar is prior art with respect to the ’781 Patent. We conclude that the preponderance of evidence establishes that Divsalar is a printed publication available as prior art against the ’781 Patent as required by 35 U.S.C. § 311(b).” slip op. at 21

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “We agree with Patent Owner that the specification explains how irregular coding is achieved. However, we do not read limitation [a] of claim 1 as being limited to irregular repeat coding, as discussed above in our claim construction. Claim 1 requires “performing a first encoding operation on at least some of the information bits, the first encoding operation being a linear transform operation that generates L transformed bits.” The first encoding can be on “at least some” of the information bits. Thus, it could also be on all of the information bits. Also, according to the claim, the first encoding operation must produce “L” transformed bits. There is no explanation in the claim as to the relationship of “L” to the incoming block of bits being transformed. All that claim 1 recites, at the end of the claim, is that L is 2 or more. Thus, claim 1 could produce a regular repeat code by repeating all of the information bits to generate L (more than 2) transformed bits. Although Patent Owner argues that claim 1 is limited to producing irregular codes, there is no language in the claim that so limits it. Claim 1 is in contrast to claims 9 and 22 (not at issue) which require information bits to appear in a “variable number of subsets.” If limitation [a] were limited to “irregular” codes, Patent Owner’s position would have merit. However, claim 1 embraces more than just “irregular” repeat codes. It includes first and second encoding operations that may produce regular and irregular repeat codes. Thus, on the full record, Patent Owner’s argument is not commensurate in scope with the actual language of claim 1.” slip op. at 24

  Patent outcomesUS 7,916,781 unpatentable
  Claim construction§ 102 anticipationcites Phillips
  Patents in suitUS 7,916,781
• Toshiba Corporation v. Optical Devices, LLCAll claims unpatentable
  PTAB · Mar 8, 2016 · IPR2014-01443 · APJ Erica A Franklin · IPR · Final written decision

  Claims 37, 38, 48, 49, 51–53, 55, 57, 58, 60, 61, 63, 64, 67–69, and 71 are anticipated by Ando; the contingent motion to amend is denied for insufficient written-description support.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for petitioner

    “Patent Owner’s arguments notwithstanding, we conclude that the strongest evidence for construing the term “optical gain” comes from the Specification itself which defines the term. As the Federal Circuit has explained, [The claims] are part of a fully integrated written instrument, consisting principally of a specification that concludes with the claims. For that reason, claims must be read in view of the specification . . . . [T]he specification is always highly relevant to the claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of a disputed term. See Phillips v. AWH Corp., 415 F.3d 1303, 1320–21 (Fed. Cir. 2005) (the specification is “the single best guide to the meaning of a disputed term” and “acts as a dictionary when it expressly defines terms used in the claims or when it defines terms by implication”); In re Abbott Diabetes Care Inc., 696 F.3d 1142, 1149 (Fed. Cir. 2012) (any broadest reasonable construction must be consistent with the specification, and claim language should be read in” slip op. at 12

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

    “Only terms which are in controversy need to be construed, and only to the extent necessary to resolve the controversy. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). For this reason, we provide express constructions for only the following terms.” slip op. at 7

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner asserts that one of ordinary skill in the art at the time of the filing of the ’729 patent as having either: (1) a Bachelor’s of Science Degree in Physics, Optics, Electrical Engineering, or a related field with coursework in Optics technology, Photonics technology, or related technologies, either in industry, academia, or research, or (2) a Master’s degree in Physics, Optics, Electrical Engineering, or a related field with coursework in Optics or Photonics. Pet. 26–27 (citing Ex. 1008 ¶ 32) (emphasis added). Patent Owner asserts that one of ordinary skill in the art in 1967 would have “held a Bachelor of Science and Master of Science Degrees in either Physics or Electrical Engineering with a focus on optics, and additionally, at least two to three (2-3) years of experience in Physics or Electrical Engineering optics research.” PO Resp. 4 (citing Ex. 2104 ¶ 10) (emphasis added). Based on our consideration of the record, we find that the evidence as a whole supports Petitioner’s broader description of the level of ordinary skill in the art. Accordingly, we adopt Petitioner’s statement of the ordinary skill in the art.” slip op. at 15

  • Expert testimonyPatent owner expert discountedDecided for petitioner

    “Contrary to Patent Owner’s assertion, Dr. Leger’s declaration does not confirm that each of the proposed amendments find support in the ’186 application. To begin, the portion of Dr. Leger’s declaration cited by Patent Owner contains a conclusory opinion that is allegedly supported by disclosures in the ’186 application. Ex. 2104 ¶ 134. Dr. Leger, however, does not explain or otherwise justify why one of skill in the art would have understood from those cited portions of the ’186 application that the inventor possessed the claimed subject matter. Further, we agree with Petitioner that Dr. Leger’s testimony on cross-examination undermined his credibility with respect to written description support for the amended claim. In particular, we consider Dr. Leger’s cross-examination testimony regarding detecting radiant flux density and comparing radiant flux density that Petitioner listed:  Making a determination “by comparing the radiant flux density of the retroreflected radiant energy to that of a reference in the scanned area” as recited in claims 72, 74 and 83 requires measuring radiant flux density twice and comparing the measured values. ([Ex.]-1009 at 155:20-160:4.)  Measuring radiant flux density requires measuring radiant flux through a known area, and dividing the radiant flux by the known area. (Id. at 50:9-51:4.)  Without knowing the area (e.g. spot size hitting detector), radiant flux density cannot be measured or determined. (Id. at 53:21-54:1.)  Even if the beam completely fills the detector, a utilization” slip op. at 31

  Patent outcomesUS RE40,927 unpatentable
  Claim construction§ 102 anticipationcites Phillips · Graham
• Toshiba Corporation v. Optical Devices, LLCAll claims unpatentable
  PTAB · Mar 8, 2016 · IPR2014-01439 · APJ Glenn J Perry · IPR · Final written decision

  Claims 48–53 are unpatentable as anticipated by Ando; the motion to amend with substitute claims 54–59 is denied for insufficient written-description support.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Based on our consideration of the record, we find that the evidence as a whole supports Petitioner’s broader description of the level of ordinary skill in the art. Accordingly, we adopt Petitioner’s statement of the ordinary skill in the art.” slip op. at 9

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner

    “Optical Devices’ arguments notwithstanding, we conclude that the strongest evidence for construing the term “optical gain” comes from the Specification itself which clearly defines the term. [The claims] are part of a fully integrated written instrument, consisting principally of a specification that concludes with the claims. For that reason, claims must be read in view of the specification . . . . [T]he specification is always highly relevant to the claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of a disputed term. See Phillips v. AWH Corp., 415 F.3d 1303, 1320–21 (Fed. Cir. 2005) (the specification is “the single best guide to the meaning of a disputed term” and “acts as a dictionary when it expressly defines terms used in the claims or when it defines terms by implication”); In re Abbott Diabetes Care Inc., 696 F.3d 1142, 1149 (Fed. Cir. 2012) (any broadest reasonable construction must be consistent with the specification, and claim language should be read in light of the specification. We give less weight to Optical Devices’ argument that all embodiments should be embraced by the construction. “‘[E]ach claim does not necessarily cover every feature disclosed in the specification. When the claim addresses only some of the features disclosed in the specification, it is improper to limit the claim to other, unclaimed features.’” Broadcom Corp. v. Qualcomm Inc., 543 F.3d 683,689 (Fed. Cir. 2008) (quoting Ventana Med. Sys., Inc. v. Biogenex Labs., Inc., 473 F.3d 1173, 1181 (Fed. Cir. 2006)). The ’913 patent includes description of a radar system embodiment with respect to Figures 13 and 14. Ex. 1001, 9:34–65. It is described that the radar system is detected by means of the “retroreflection principles” of the invention. However, the term “optical gain” is not used in connection with this embodiment. The term appears in the Specification only in connection with embodiments relying on what has traditionally been referred to as “optical.” WEBSTER’S SEVENTH NEW COLLEGIATE DICTIONARY 592 (1967) (Ex. 3002)3 (the adjective “optic” defined as “of or relating to vision or the eye” and the adjective “optical” defined as “relating to the science of optics” and “relating to vision”).” slip op. at 15

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “We agree with Optical Devices’ description of Ando, but not with Optical Devices’ conclusion. We do not read into the “detecting” step of claim 48 a requirement of detecting an optical gain. The ’913 patent invention lies in discerning a retroreflector from its background. The retroreflector provides a brighter spot than does its background because of the concentration of flux caused by the retroreflector that makes it appear brighter. However, that key feature is missing from claim 48. Claim 48 requires “receiving reflected radiation energy with an optical gain after retroreflection of the radiant energy.” However, the “detecting” step that follows simply requires detecting the reflected radiant energy after retroreflection to determine at least one characteristic of the object. Ando does indeed detect reflected radiant energy after retroreflection. It also determines at least one characteristic of the object, namely its contour. Ex. 1007 at Abstract. We “determine that there is no reasoned basis to read into the “detecting” step of claim 48 a requirement of detecting an optical gain. We, therefore, conclude that Ando meets the limitations of claim 48.” slip op. at 20

  • Expert testimonyPetitioner expert creditedDecided for patent owner

    “Dr. Hesselink opines that the additional limitations of the substitute claims are not taught by the ’913 patent. Ex. 1010 ¶¶ 36–37. We find his testimony to be persuasive. Further, under cross-examination in his deposition Dr. Leger testified that (1) the detectors described in the ’913 patent could not detect radiant flux density because they do not know the size of the spot hitting the detector (Ex. 1009, 50:9–51:4, 53:21–54:1) and measuring radiant flux density cannot be done with detectors that only measure radiant flux like those described in the ‘913 patent (Id. at 82:6–10, 85:18–86:6, 145:14– 146:4, 148:22–25) and (2) the ’913 patent does not describe a detector or utilization means that compares radiant flux density values to determine a change (Id. at 163:20–25, 164:20–24). 4. Conclusions Considering and weighing the priority document references, the” slip op. at 34

  Patent outcomesUS RE42,913 unpatentable
  Claim construction§ 102 anticipationcites Phillips · Graham
• Google, Inc. v. Michael MeiresonneAll claims unpatentable
  PTAB · Jan 20, 2016 · IPR2014-01188 · APJ Glenn J Perry · IPR · Final written decision

  Claims 16, 17, 19, and 20 are unpatentable as obvious over Hill and Finseth because their combined teachings and the motivation to combine outweigh the objective evidence.

  RulingsFinal written decision

  • ExcludeMotion to exclude, grantedMotion to exclude, deniedGranted in part

    “Exhibits 2005 and 2009 are articles that include statements from Mr. Gomes, a Google employee. Thus, the Gomes statements are potentially hearsay within hearsay. See F.R.E. 805. Meiresonne correctly notes, however, that the Gomes statements are made by a Google employee offered against Google. Meiresonne Oppos. 4–5. Therefore, the Gomes statements are not hearsay under F.R.E. 801(d)(2). Nevertheless, even if the Gomes statements do not constitute hearsay, we agree with Google that the articles themselves are being offered by Meiresonne to prove the truth of the matter asserted in those exhibits. As such, they are hearsay, and Meiresonne has not pointed to any hearsay exception that would apply to the articles under the circumstances. We therefore exclude Exhibits 2005 and 2009.” slip op. at 10

  • Skill levelSkill level board ownDecided for petitioner

    “between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.’” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 405 (2007) (quoting 35 U.S.C. § 103(a)). Dr. Bederson testifies that he believes a person of ordinary skill in the art would have had “at least a bachelor’s degree in computer science or related field, and approximately one year of experience in web site design.” Ex. 1011 ¶ 27. Dr. Jacobs agrees. Ex. 2013 ¶¶ 17–18. Based on the record presented, including our review of the ’096 patent and the types of problems and solutions described in the ’096 patent and cited prior art, we determine that a person of ordinary skill in the art would have had an undergraduate degree in computer science or a related field (or equivalent work experience) and at least one year of experience with web site design, and apply this level of ordinary skill in the art for purposes of this Decision.” slip op. at 16

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “combination, the elements disclosed in Hill and Finseth would operate in known ways to achieve predictable results. See Pet. 19; Reply 4; Ex. 1011 ¶ 59. Additionally, based on the record presented, we do not see any reason why incorporating Finseth’s preview feature into the arrangement of Hill would have achieved an unexpected result or would have been uniquely challenging or otherwise beyond the level of skill of an ordinarily skilled artisan. See KSR, 550 U.S. at 416, 421; Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1161–62 (Fed. Cir. 2007). Google’s arguments as to why a person of ordinary skill in the art would have had reason to combine the teachings of Hill and Finseth are supported by the disclosures of the references themselves, as well as the testimony of Dr. Bederson,5 and are persuasive. See KSR, 550 U.S. at 417–18 (requiring “some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness” based on the combined teachings of the references) (quotation omitted)). 5 We are not persuaded by Meiresonne’s arguments regarding Dr. Bederson’s testimony. See Resp. 14–16. As Petitioner points out, Dr. Bederson testified regarding reasons to combine the references in his declaration. See Ex. 1011 ¶¶ 59–61. Meiresonne’s questions during cross-examination, to which Dr. Bederson responded that he had no “opinion,” were directed to specific aspects of Hill, not the general combination that Dr. Bederson describes in his declaration. See Ex. 2014, 37:24–38:21. Dr. Bederson also corrected his testimony later during cross-examination and explained why adding Finseth’s preview functionality would have improved the “user experience.” Id. at 38:24–39:15.” slip op. at 20

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable

    “not consider Finseth’s teachings as a whole. See Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1166 (Fed. Cir. 2006) (explaining that in an obviousness analysis, “the prior art must be considered as a whole for what it teaches”). Although it is true that Finseth describes the descriptive text of the time as “cursory, if not cryptic,” Finseth describes an express benefit to using a graphical preview of the contents of the linked web pages—namely, that more information is available to the user. See Pet. 19–20; Reply 9–11; Ex. 1011 ¶¶ 60–61; Ex. 1007, 1:54–63 (“Such review or perusal of some summary form of a web page, even if cursory, provides a significant amount of information as the form in which graphical information is presented often indicates to a significant degree its content.”), 2:27–34 (the graphical preview “greatly enhances the ability to review search engine results”), 3:11–14 (the graphical preview “provide[s] quicker review of search engine results”), 8:30–32 (“more convenient perusal or review of the results of the Internet search or other URL listing”), 10:31–63 (“By providing the visual index method of the present invention, vast amounts of graphical data can be perused by a user much faster than by previously available methods or means.”); see also Brown & Williamson Tobacco Corp. v. Philip Morris Inc., 229 F.3d 1120, 1125 (Fed. Cir. 2000) (evidence of a motivation to combine prior art references “may flow from the prior art references themselves”). Thus, Finseth would have suggested to a person of ordinary skill in the art that the graphical view is better than the descriptive text of the time, but does not suggest that the descriptive text should be abandoned wholesale. In the end, both sources—the descriptive text and the graphical preview—provide information useful to the user; the only difference is that one is more useful than the other. We are persuaded by Google’s argument that in its proposed combination, the elements disclosed in Hill and Finseth would operate in known ways to achieve predictable results. See Pet. 19; Reply 4; Ex. 1011 ¶ 59. Additionally, based on the record presented, we do not see any reason why incorporating Finseth’s preview feature into the arrangement of Hill would have achieved an unexpected result or would have been uniquely challenging or otherwise beyond the level of skill of an ordinarily skilled artisan. See KSR, 550 U.S. at 416, 421; Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1161–62 (Fed. Cir. 2007). Google’s arguments as to why a person of ordinary skill in the art would have had reason to combine the teachings of Hill and Finseth are supported by the disclosures of the references themselves, as well as the testimony of Dr. Bederson,5 and are persuasive. See KSR, 550 U.S. at 417–18 (requiring “some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness” based on the combined teachings of the references) (quotation omitted)).” slip op. at 19

  Patent outcomesUS 8,156,096 unpatentable
  § 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,156,096
• Ace Bed Co., Ltd. v. Sealy Technology LLCAll claims unpatentable
  PTAB · Nov 24, 2015 · IPR2014-01119 · APJ Glenn J Perry · IPR · Final written decision

  Claims 1–3, 5–8, and 10–17 were held unpatentable: claims 1–3, 5–8, 10–13, and 17 as anticipated by Ahn, and claims 14–16 as obvious over Ahn, Flesher, and Oakhill.

  RulingsFinal written decision

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Decided for petitioner

    “proposes a construction of “step” based on an explicit definition in the specification — “non-helical shaped segments of the described coils.” Ex. 1001, 3:8–10. Pet. 12. We adopt this construction.” slip op. at 7

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “Ahn’s “contact-preventing ends” appear to be substantially coaxial with the longitudinal axis of the coil bodies that terminate at opposed axial ends which are generally perpendicular to the longitudinal axis of the coil. Linear segments (see base of coil 100 shown in Ahn Fig. 1a) of the coil spring accommodate interconnections by lacing wire (shown in Ahn Fig. 2a and 2b). Id. Transition segments (visible in Ahn Fig. 4d) connect coil ends with the “contact-preventing ends.” Pet. 14. Given these disclosures, we find that Ahn anticipates claim 1.” slip op. at 11

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable

    “We agree with Ace that it would have been obvious to a person of ordinary skill in the art to include a linear segment in the upper end of the coil disclosed in Ahn to facilitate a connection with lacing wire at the upper end of the coil – either in addition to, or in place of the linear segments already present in the Ahn coil. Pet. 43. Coils connected by lacing wires in that location were taught by Flesher to be both stable and “a common practice.” Ex. 1007, 1:13–26. A person of ordinary skill would have been motivated to connect the coils disclosed in Ahn at their ends to improve stability and form a matrix of interconnected coils in accordance with standard practice in the art. Coils so connected are nothing more than a predictable variation of the coils disclosed in Ahn. Accordingly, this limitation would have been obvious in view of Ahn alone, and/or in combination with Flesher. The preponderance of evidence establishes that claim 1 is unpatentable under 35 U.S.C. § 103(a) over Ahn and Flesher.” slip op. at 18

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

    “Claims 14–16 Dependent claim 14 states a range of spring height of 140 mm to 190 mm. Thus, the Oakhill range falls within the claimed range. Claim 15 depends from claim 14 and further requires that the “step” is substantially coaxial with the longitudinal axis of the coil body. As with claim 11, Ace has shown that this limitation is met by Ahn.” slip op. at 19

  Patent outcomesUS 7,404,223 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 7,404,223
• Webasto Roof Systems, Inc. v. Uusi, LLCAll claims unpatentable
  PTAB · Oct 13, 2015 · IPR2014-00649 · APJ Hyun J Jung · IPR · Final written decision

  Claims 7 and 13 are unpatentable as anticipated by Bernard; claim 1 is unpatentable as obvious over Bernard and Chikaraishi.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageTerm construed board ownDecided for petitioner

    “The record before us does not present a clear disavowal in the prosecution history that would limit the plain and ordinary meaning of the disputed term. Patent Owner cites to portions of the prosecution history of the ’037 patent that argues how the as-filed application provides support for the claimed subject matter. PO Resp. 25–28; Ex. 1004 at 384, 388, 484– 498, 585–779. These cited portions do not discuss the scope of the claim language and do not indicate that Applicants intended to limit the claim language to the cited embodiments. See Ex. 1004 at 384, 388, 484–498, 585–779. Also, we decline to import into the claims a limitation based on specific embodiments in the Specification. See, e.g., SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) (“[A] particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment.”). Accordingly, based on the complete record before us, we construe “different parameter values” in accordance with its plain meaning. Our construction includes parameter values that are either values of a parameter measured at different times or values of two or more different kinds of parameters. Ex. 1003, 18:29–44.” slip op. at 9

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner

    “Petitioner replies, and we agree, that “‘frame,’ ‘closure,’ and ‘drive motor’ are separately recited in claims 1 and 7, so it would be redundant to read them into the ‘power system.’” Reply 4. We also agree with Petitioner that “the additional requirement of ‘a modularized or preassembled’ has no basis in the intrinsic record; it is not mentioned in the ’037 patent.” Id. (citing Reply Decl. ¶ 17). Petitioner argues that “‘power system’ only appears in the claims,” that the “’037 patent ‘concerns motor driven actuator control systems” and references a standard “that ‘establishes requirements for power window control systems,’” and that the “disclosure indicates that . . . ‘power system’ refers to a ‘motor driven system,’ e.g., for use in a power window.” Id. (citing Ex. 1003, 1:24–26, 1:30–33; Reply Decl. ¶ 15), 16 (citing Reply Decl. ¶¶ 14–15). Accordingly, based on the complete record before us, we construe “power system” in accordance with its plain meaning. Our construction does not require that power system be a modularized or preassembled power unit.” slip op. at 10

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “As explained above in Part III.A.1, our construction of “different parameter values” includes values of a parameter measured at different times and is not limited to values of two or more different kinds of parameters. Also, as discussed in Part III.A.2, our construction of “power system” does not require that it be a modularized or preassembled power unit or further include frame, closure, and drive motor, which are recited separately in claim 7. Accordingly, based on the complete record before us, we determine that Petitioner, by a preponderance of the evidence, has shown that claim 7 is anticipated by Bernard.” slip op. at 18

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

    “As discussed above in Parts III.A.1 and III.A.2, our construction of “different parameter values” includes values of a parameter measured at different times and our construction of “power system” does not require that it be a modularized or preassembled power unit or further include frame, closure, and drive motor, which are recited separately in claim 1. Accordingly, based on the complete record before us, we determine that Petitioner, by a preponderance of the evidence, has shown that claim 1 is unpatentable over Bernard and Chikaraishi.” slip op. at 22

  Patent outcomesUS 7,548,037 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 7,548,037

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.