- Delphi Technologies, LLC v. Microchip Technology Inc.Rehearing deniedPTAB · Dec 11, 2018 · IPR2017-00864 · APJ Daniel N Fishman · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving claims 1, 3–5, 7–9, 11–15, and 18–21 unpatentable because their scope did not require the buffer to store the specified information.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“party challenging the decision,” and, “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed” in the record. 37 C.F.R. § 42.71(d). III. DISCUSSION Patent Owner’s Request does not identify any arguments that we “misapprehended or overlooked” let alone “specifically identify” all such matters. Thus, Patent Owner’s Request fails to comply with our rules. Despite this failure of Patent Owner’s Request, we address the substance of Patent Owner’s argument as follows.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“misapprehended any argument. Furthermore, we are unpersuaded that our Decision was in error regarding independent claims 1, 3, 7, 18, and 23 because these claims have a different scope than claims 17, 22, and 24. As Patent Owner correctly noted, our construction of “dedicated USB connection” is “a USB connection that may include some shared physical communication path and includes a buffer for maintaining dedicated address, configuration and response information for the connection.” Dec. 33. Thus, a dedicated USB connection must include a buffer that is capable of storing/maintaining “dedicated address, configuration and response information” regardless of whether such data is actually stored/maintained therein.” slip op. at 3
Claim constructionPatents in suitUS 7,523,243 - Ebay Inc. / Alibaba.Com Hong Kong Ltd. et al. v. Global Equity Management (SA) Pty. Ltd.Rehearing grantedPTAB · Oct 12, 2018 · IPR2016-01828 · APJ Kevin C Trock · IPR · Rehearing
Rehearing was granted in part: review was instituted on all challenged claims and grounds, but claims 16 and 28 were not shown unpatentable because their scope could not be determined without speculation.
RulingsRehearing decision- RehearingRehearing, grantedGranted in part
“For the reasons explained below, we grant Patent Owner’s request for rehearing to the extent we (1) modify our Institution Decision to institute on all of the challenged claims, including claims 16 and 28, and all of the grounds presented in the Petition, including Ground 2; and (2) modify our Final Written Decision to include a determination with respect to claims 16 and 28. We deny, however, Patent Owner’s request for rehearing to the extent we decline to read claims 16 and 28 on the prior art.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“In SAS, the Supreme Court held that a decision to institute under 35 U.S.C. § 314 may not institute on less than all claims challenged in the petition. SAS Inst., Inc., 1348 at 1359–60. In our Institution Decision, we determined that Petitioner demonstrated a reasonable likelihood that it would establish that at least one of the challenged claims of the U.S. Patent No. 8,650,591 B2 is unpatentable. Inst. Dec. 23. Because of the Supreme Court’s ruling in SAS, we now modify our Institution Decision to institute on all of the challenged claims, including claims 16 and 28, and on all of the grounds presented in the Petition, including Ground 2, and we determine, in this Decision on Patent Owner’s Motion for Rehearing, whether claims 16 and 28 have been shown, by a preponderance of the evidence, to be unpatentable.” slip op. at 4
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“If our unpatentability analysis requires “considerable speculation as to the meaning and assumptions as to the scope” of the claims, In re Steele, 305 F.2d 859, 862 (CCPA 1962), the differences between the claimed invention and the prior art cannot be ascertained. See id.; see also BlackBerry Corp. v. MobileMedia Ideas, LLC, Case IPR2013-00036, slip op. at 19–20 (PTAB Mar. 7, 2014) (Paper 65) (citing Steele, 305 F.2d at 862–63 for the proposition that “the prior art grounds of unpatentability must fall, pro forma, because they are based on speculative assumption[s] as to the meaning of the claims” and reasoning that “an obviousness determination based on less than all of the claimed elements is speculative as to the meaning or scope of the claims”). In other words, “[w]ithout ascertaining the proper claim scope, we cannot conduct a necessary factual inquiry for determining obviousness—ascertaining differences between the claimed subject matter and the prior art.” Id. at 20 (citing Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966)).” slip op. at 6
- Prior constructionPrior construction adoptedDecided for patent owner
“least one partition of said at least one secondary storage device through said secondary storage partitions window,” “means for manipulating said at least one cabinet record through said cabinet visible partition window,” and “means for modifying said at least one cabinet record through said cabinet visible partition window.” Ex. 101, 9:66–10:25. In related litigation, the district court found in its claim construction opinion that the ’400 patent does not provide structure corresponding clearly to the functions of these limitations. Ex. 1010, 49–61. We have reviewed and considered the district court’s analysis and findings and we concur with the district court’s conclusion. We are unable to discern structure in the ’400 patent that corresponds clearly to the functions recited in the “means for” limitations of claim 16. Claim 28 recites similarly “program code for configuring said at least one partition of said at least one secondary storage device through a secondary storage partitions window,” “program code for manipulating said virtual cabinet record through said cabinet visible partition window,” and “program code for means for modifying said at least one cabinet record through said cabinet visible partition window.” Ex. 1001, 10:65–11:29. The district court also found that the ’400 patent did not provide structure corresponding clearly to the function of these limitations. Ex. 1010, 49–61. We have reviewed and considered the district court’s analysis and findings and we concur with the district court’s conclusion. We are unable to discern structure in the ’400 patent that corresponds clearly to the functions recited in the “program code for” limitations of claim 28.” slip op. at 5
Claim construction§ 103 obviousnesscites GrahamPatents in suitUS 6,690,400 - SK Hynix Inc. / SK Hynix America Inc. et al. v. Netlist, Inc.All claims unpatentablePTAB · Jul 5, 2018 · IPR2017-00692 · APJ Matthew R Clements · IPR · Final written decision
Claims 1–15 are unpatentable: claims 1–14 as anticipated by Best and obvious over Best, and claim 15 as obvious over Best, Mills, and Bonella.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for petitioner
“construction “requires two layers of IC packages, in which a first IC package (the Board’s ‘carrier’) contains one or more second IC packages (the Board’s memory chips).” PO Resp. 39. Petitioner counters that “[t]he Board’s construction does no such thing.” Pet. Reply 18–19. We agree with Petitioner. Patent Owner’s argument is predicated upon the erroneous assertion that “[e]ach memory chip in the Board’s ‘carrier’ requires a different IC package (i.e., a second IC package) that encloses at least one memory die.” PO Resp. 39. Each memory chip does not require its own integrated circuit package. On the contrary, it may be, as Best discloses, a die enclosed with another die in a single IC package. Having considered the arguments and evidence, we maintain our construction of “memory module” to mean “a carrier that contains one or more memory chips,” where “carrier” encompasses an integrated circuit package.” slip op. at 14
- Skill levelSkill level board ownOther
“Otherwise, we determine that no express finding on a specific corresponding level of technical education and experience is necessary. Here, the level of ordinary skill in the art is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 15
- Expert testimonyPetitioner expert creditedDecided for petitioner
“We have reviewed the arguments provided by Patent Owner and determine such arguments are insufficient to have Mr. Maltiel’s declaration excluded in its entirety. Rather, it is within our discretion to assign the appropriate weight to be accorded evidence. See 37 C.F.R. § 42.65(a); see also, e.g., Yorkey v. Diab, 601 F.3d 1279, 1284 (Fed. Cir. 2010) (holding the Board has discretion to give more weight to one item of evidence over another “unless no reasonable trier of fact could have done so”); In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) (“[T]he Board is entitled to weigh the declarations and conclude that the lack of factual corroboration warrants discounting the opinions expressed in the declarations.”); and Velander v. Garner, 348 F.3d 1359, 1371 (Fed. Cir. 2003) (“In giving more weight to prior publications than to subsequent conclusory statements by experts, the Board acted well within [its] discretion.”). Based on the record before us, we are not persuaded that we should give the entirety of Mr. Maltiel’s declaration no weight.” slip op. at 16
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“8–14. Pet. 30–37, 44–49. Notwithstanding Patent Owner’s arguments, which we have considered and which we address below, we are persuaded by Petitioner’s showing, which we adopt as our own findings and conclusions, that claims 1–14 are unpatentable under 35 U.S.C. § 102 as anticipated by Best.” slip op. at 24
Patent outcomesUS 8,874,831 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,874,831 - SK Hynix Inc. / SK Hynix America Inc. et al. v. Netlist, Inc.All claims unpatentablePTAB · Jul 5, 2018 · IPR2017-00561 · APJ Bryan F Moore · IPR · Final written decision
Claims 2–7 were held unpatentable as obvious over Averbuj and Tsern; trial as to claim 1 was terminated based on collateral estoppel.
RulingsFinal written decision- PTAB / AIA Trials › §315(e) estoppelEstoppel appliesDecided for petitioner
“Patent Owner asserts that “collateral estoppel does not apply to the application of the claim 1 limitations in assessing dependent claims 2–7.” Id. at 2. Patent Owner further asserts “[a] party seeking to apply collateral estoppel based on a prior action must show that (1) the identical issue was actually litigated; (2) the issue was actually decided in a final decision on the merits; (3) the issue was necessary to the final decision; and (4) the party being estopped was adequately represented in the prior action [i.e. “the United Access test”].” Id. at 2 (citing United Access Techs., LLC v. CenturyTel Broadband Services LLC, 778 F.3d 1327, 1331 (Fed. Cir. 2015)). We agree that this is the proper test to use to assess the applicability of collateral estoppel. Nevertheless, we note United Access applies collateral estoppel in a different context and suggests that issue preclusion can be applied in an obvoisness challenge, even if the final decision on the original issue was considered under an anticipation challenge. In particular, in United Access it was noted that “[i]ssue preclusion [traditionally called “collateral estoppel”3] applies to issues litigated in prior disputes . . . [and, thus, i]t thus makes no difference that the earlier no-damages-due-to-competition ruling arose in a case under the Truth in Negotiation Act and that this dispute arises under the False Claims Act and the common law.” United Access, 778 F.3d. at 726. The “issue” of whether Averbuj teaches the limitations of claim 1 is identical to the issue in and has been litigated in the ‘970 IPR which found that Averbuj anticipates the limitations of claim 1.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“1475, 1480 (Fed. Cir. 1994). Only those terms that 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); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., 868 F.3d 1013, 1017 (Fed. Cir. 2017).” slip op. at 16
- Skill levelSkill level petitioner adoptedDecided for petitioner
“the ‘434 Patent would have been someone with “a Bachelor’s degree in electrical engineering, computer engineering, or in a related field and at least one year of work experience relating to memory systems, and would be familiar with the design of memory devices, memory modules, and BIST.” Pet. 9 (citing Ex. 1003 ¶ 51). Patent Owner asserts through its declarant: [A Person of ordinary skill in the art at the time of the invention would have been] working on the design of memory devices, would have at least a Bachelor of Science degree in Electrical and/or Computer Engineering, and at least five years of industry experience designing memory devices and controllers. Alternatively, one of ordinary skill in the art would have a Master of Science degree in Electrical and/or Computer Engineering, and at least three years of industry experience designing memory devices and controllers. Also alternatively, one of ordinary skill in the art would have a Doctorate degree in Electrical and/or Computer Engineering, and have at least one year of industry experience designing memory devices and controllers. I agree with Petitioner’s expert that the memory industry requires a POSITA with industry experience. Ex. 2010 ¶¶ 32–33. 16 Neither party has argued that the difference between the parties’ articulated level of skill should change the analysis as to patentability. Therefore, we adopt Petitioner’s articulation of the level of skill, above, and acknowledge that, commensurate with that articulation of the level of skill, the level of ordinary skill in the art is also reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 16
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed
“Pet. 41. In other words, Petitioner asserts that because a BIST unit can be incorporated into a chip mounted on a PCB and because memory module 12 is part of the BIST unit, memory unit 12 is mounted on a PCB. We disagree. Unlike claim 1, which simply requires the memory unit is “on” the PCB, claim 2 requires that the memory module be a “physically separate component” and “mounted” on the PCB. Petitioner has not shown sufficient support for its broad reading that a module which is a circuit embedded in a larger circuit included in a chip may be considered a physically separate component mounted on a PCB. Claims 3–7 depend from claim 2, and the Petition fails to provide additional prior art disclosures that cure the deficiency with respect to claim 2; that is, disclosure of separate components 22 mounted on a printed circuit board in Averbuj. Pet. 41–48. Thus, Petitioner has failed to establish, by a preponderance of the evidence, its assertion that claims 2–7 are anticipated by Averbuj.” slip op. at 22
Patent outcomesUS 8,001,434 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,001,434 - SK Hynix Inc. / SK Hynix America Inc. et al. v. Netlist, Inc.All claims unpatentablePTAB · Jul 5, 2018 · IPR2017-00577 · APJ Bryan F Moore · IPR · Final written decision
Claims 1–3, 7, 8, and 10–12 are unpatentable as obvious over Halbert and Amidi; the other asserted grounds did not establish unpatentability.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Neither party has argued that the difference between the parties’ articulated level of skill should change the analysis as to patentability. Therefore, we adopt Petitioner’s articulation of the level of skill and acknowledge that the level of ordinary skill in the art is also reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. 10 Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“C. Claim Construction Analysis We determine that it is not necessary to provide an express interpretation of any term of the claims.” slip op. at 11
- BurdenNot shown unpatentable
“written to or read from simultaneously. Pet. 37–41. In particular, Petitioner asserts that Halbert’s directing of data, during a write operation, from the system memory data bus to registers 126 and 128 in successive clock cycles means that data being received by the memory devices corresponding to registers 126 and 128, respectively (e.g., ranks 140 and 142, respectively), occurs in successive clock cycles. Thus, according to Petitioner, “those memory devices associated with register 126 (i.e. Rank 140) receive data transmission from the system memory controller in the first clock cycle, but not in the second clock cycle . . . [and] those memory devices associated with register 128 (i.e., Rank 142) receive data transmissions from the system memory controller in the second clock cycle, but not in the first clock cycle.” Id. at 38. Therefore, according to Petitioner, Halbert does not, and cannot, write to the memory devices in ranks 140 and 142 simultaneously, because the memory devices in ranks 140 and 142 do not receive data concurrently. Id. In its Preliminary Response, Patent Owner asserts8 while data is sequentially latched onto registers 126 and 128, that data is then concurrently, not sequentially, written to memory device array 140/142—such operation is illustrated in Fig. 4, 8 Patent Owner chose not to request additional briefing to address this ground and arguments in the Preliminary Response are generally waived (Paper 8, 2–3), however, we acknowledge these arguments due to the unusual circumstance created by the Supreme Court’s decision in SAS. 15 above. Thus, all of Halbert’s memory devices are selected or enabled concurrently such that Halbert can write to all of its memory devices simultaneously. This is not, and is exactly counter to, the Petitioner’s assertions that the memory devices in ranks 140 and 142 receive—and thus, store—data sequentially. Prelim. Resp. 27–28. We agree. Petitioner has not explained how latching data to registers 126 and 128 is data transmission between a memory controller and a memory module when registers 126 and 128 are outside of the memory module. Moreover, Petitioner’s arguments and evidence with respect to claims 2, 3, 7, 8, and 10–12 do not cure this deficiency.” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“Based on Petitioner’s citations to specific prior art disclosures and supporting evidence, we are persuaded that Petitioner sets forth sufficient articulated reasoning with rational underpinning to support the legal conclusion that it would have been obvious to modify the teachings of Halbert with Amidi’s teachings to include rank select functionality. Pet. 64– 66. For example, Petitioner asserts: 19 To employ this chip select functionality of Amidi in the system of Halbert would have been only the arrangement old elements with each performing the same function it had been known to perform and yielding no more than one would expect from such an arrangement, i.e., the predictable result of operating each rank at desired times, and well within the level of ordinary skill to achieve. EX1003 ¶¶175-176. Moreover, a person of ordinary skill in the art would have been motivated to use the chip select functionality of Amidi in the system of Halbert to permit the use of lower density, and therefore cheaper and more readily available, memory in the system of Halbert, while using the existing address and data signal lines of Halbert. EX1019, ¶[0008]; see also id., ¶¶ [0002- 0012]; EX1003 ¶177. A skilled artisan would also have been motivated to include such prior art chip selection signals in Halbert in order to follow the traditional design of memory ranks including the use of traditional memory devices and the traditional address signals, as Halbert explains. EX1005, 3:55-57; EX1003 ¶178. Furthermore, Halbert suggests such a use by disclosing that “[m]any other variations on the illustrated embodiments are possible. For instance, . . . [t]he illustrated examples also show two ranks of memory, but other numbers of ranks are also possible.” EX1005, 9:20-26. Skilled artisans at the time would have understood that, in case the number of ranks is increased, chip/bank select signals would need to be used to activate some but not all of the ranks. See, e.g., EX1019 at FIGS. 5, 6A-6B (showing logic circuitry to generate chip select signals for” slip op. at 19
Patent outcomesUS 8,516,185 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,516,185 - Ebay Inc. / Alibaba.Com Hong Kong Ltd. et al. v. Global Equity Management (SA) Pty. Ltd.All claims unpatentablePTAB · Apr 18, 2018 · IPR2016-01828 · APJ Kevin C Trock · IPR · Final written decision
Claims 1 and 2 are unpatentable as obvious over the Partition Magic 3.0 User Guide because it teaches or suggests all claim limitations, and the secondary considerations lack evidentiary support and nexus.
RulingsFinal written decision- Prior constructionPrior construction adoptedDecided for petitioner
“Reply 6. At oral argument, Petitioner’s counsel and Patent Owner’s counsel both agreed that the district court’s construction in the Lead Case with respect to the claim term “virtual cabinet” was acceptable. Tr. 18: 18–20; 25: 6–8, 17–20; 28: 10–13; 31: 8–15; 39: 1–5; 40: 5–8; 41: 13–17. The district court construed the term “virtual cabinet” as follows: “‘virtual cabinet,’ ‘cabinet record,’ and ‘virtual cabinet record’ each means ‘virtual storage device, capable of containing, typically through the use of virtual table of content pointers, all (or partitions of) shared (or non-shared) operating systems, application software (both OS dependent and No-OS embedded), databases and memory.’” Ex. 1010, 32–33. The district court’s construction of “virtual cabinet” is derived from the ’400 patent’s definition of the term “cabinet.” See e.g. Ex. 1001, 2:47–52; 5:24–29. The ’400 patent equates the terms “cabinet,” “Cabinet Record,” and “Virtual Cabinet.” Id. at 2:46–47; 5:22–24. Because the district court’s construction of “virtual cabinet” is reasonable and is based upon the express definition of “cabinet” found in the ’400 patent, we accept and adopt the district court’s construction.” Our analysis does not require the express construction of any additional claim terms.” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner
“preamble of claim 1 should be considered limiting.” PO Resp. 21. We note that this is the opposite position Patent Owner took in the Lead Case, where Patent Owner argued that the preamble is not limiting. See Ex. 1010, 20–21. In the Lead Case, the district court found that the preamble of claim 1 was not limiting. Id. at 25. We agree with the district court. As the district court pointed out, “[t]he preamble simply states the intended use of the” graphical user interface—i.e., “for displaying means for allocating a computer device’s resources to multiple operating system environments, partitioned on individual virtual cabinets, on said computer device.” Id. Moreover, the district court noted “[t]here is nothing in the prosecution history that establishes that the preamble was used to overcome a prior art rejection” and, “[t]o the contrary, the patentee expressly distinguishes the prior art using limitations found in the body of the claim, not using the preamble.” Id. Even if the preamble were limiting, however, we would still not be persuaded by Patent Owner’s argument that the graphical user interface taught by Figure 3.7 of the 3.0 User Guide “is limited to partitioning hard disk space, and fails to allocate any other computer resources such as memory” (PO Resp. 22) because those arguments are not commensurate with the scope of the preamble, which does not recite allocating all of a computer device’s resources or allocating memory specifically. On the contrary, the preamble is satisfied if any of a computer device’s resources are allocated to multiple operating system environments.” slip op. at 14
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner argues that Patent Owner’s proposed level of skill is unreasonably high. Pet. Reply 11–12. Petitioner argues that Mr. Rafizadeh, a named inventor on the ’400 patent, would not qualify as a POSITA under Patent Owner’s proposed standard, because Mr. Rafizadeh did not start working on virtualization until 1997, and would not have had four years of experience in virtualization as of the filing date of the ’400 patent application. Id. (citing Ex. 1026, 22:4–6; Ex. 2007 ¶¶ 21–22). Moreover, Petitioner argues, the other individuals Mr. Rafizadeh believed to be POSITAs at the time of the invention—such as Parviz Moayyad, Peter Druschell, and Jeff Barnes—all had been working on virtualization for only two years as of 1999, and thus would not have qualified as POSITAs under Patent Owner’s proposed level of skill. Id. at 12 (citing Ex. 1026, 54:11–20, 56:2–10). Petitioner also notes that Patent Owner’s Declarant, Dr. Rosenberg, proposed a definition of a POSITA that did not require four years of experience in virtualization. Id. (citing Ex. 2002 ¶ 33). We agree with Petitioner that Patent Owner’s proposed level of skill is unreasonably high. The educational background and experience of those working in the field, including the inventor, are factors considered, among others, in determining the appropriate level of ordinary skill. Daiichi Sankyo Co., Ltd. v. Apotex, Inc., 501 F.3d 1254, 1257 (Fed. Cir. 2007). Here, however, Patent Owner proposes years of experience in computer virtualization beyond that held by the inventor and other acknowledged skilled artisans working in the field at the time of the claimed invention. Accordingly, we decline to adopt Patent Owner’s proposed years of experience in virtualization and find that a POSITA would be a person with a bachelor’s degree in computer science, computer engineering, or the equivalent, having between two to four years of experience in computer operating systems, programs and databases, and/or graphical user interfaces or virtualization.” slip op. at 7
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“Our construction of “virtual cabinet” requires only that a virtual cabinet is capable of containing operating systems, application software, databases and memory, and that this is accomplished typically by using content pointers. See also Ex. 1001, 2:47–52. The 3.0 User Guide teaches that “partitions will be like file cabinet drawers in which you can separate your operating systems, applications, and data files” (Pet. 29–30, quoting Ex. 1005, 3), and that “you should create primary partitions to install operating systems” (Pet. 29, quoting Ex. 1005, 38), allowing users “to make the currently selected partition the active partition” (id., quoting Ex. 1005, 79). The 3.0 User Guide also teaches that “[a] primary partition may contain any operating system (OS) as well as data files, such as applications and user files.” Pet. Reply 16 (quoting Ex. 1005, 126). Thus, we are persuaded that the primary partitions illustrated in Figure 3.7 and taught by the 3.0 User Guide are “capable of containing . . . operating systems, application software . . ., databases, and memory,” as required by our construction, thereby teaching the recited “cabinet selection button bar graphically representing at least one virtual cabinet.”” slip op. at 19
Patent outcomesUS 6,690,400 unpatentableClaim construction§ 103 obviousnessPatents in suitUS 6,690,400 - Cisco Systems, Inc. / Arris Group, Inc. v. TQ Delta, LLCRehearing deniedPTAB · Mar 28, 2018 · IPR2016-01007 · APJ Trevor M Jefferson · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, finding no overlooked or misapprehended matter in its claim construction, obviousness analysis, or handling of reply evidence and argument.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). The party must identify specifically all matters we misapprehended or overlooked, and the place where each matter was addressed previously in a motion, an opposition, or a reply. Id. With this in mind, we address the arguments presented by Patent Owner.” slip op. at 2
- Strike new argumentNew argument consideredDecided for petitioner
“on evidence and argument that Patent Owner objected to as being improper new reply arguments. Req, Reh’g 9–10. Patent Owner does not identify any specific evidence cited in the Final Written Decision that rely on improper new reply arguments from Petitioner. Patent Owner argues that we abused our discretion by authorizing it to” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Patent Owner’s issue is based on a sentence in the claim construction analysis of “during Showtime” in the Final Written Decision that states, “[w]e are not persuaded by Patent Owner’s negative construction, which excludes initialization from normal communication.” The “not” in that sentence is a mistake. In an Errata mailed concurrently herewith, we correct that sentence in the Final Written Decision to read “[w]e are persuaded by Patent Owner’s negative construction, which excludes initialization from normal communication.” The construction in the Final Written Decision is consistent with our discussion that notes that “[t]he parties agree that ‘during Showtime’ is a term of art that encompasses normal communication, which follows the completion of initialization and handshaking, for known DSL standards and protocols.” Dec. 8 (citing PO Resp. 6–7; Reply 10; Kiaei Decl. ¶ 43). Our Final Written Decision also noted that “[t]here is also no dispute that ‘during Showtime’ is intended to distinguish initialization and training.” Dec. 9 (citing PO Resp. 7–8; Reply 9; Tr. 21:19–23:11).” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“Patent Owner also argues that we overlooked its argument, in its Preliminary Response, that it would not have been obvious to combine Milbrandt with ANSI T1.413. Req. Reh’g 6–7. We addressed this argument in our Final Written Decision and found it unpersuasive.2 Dec. 32–34. Contrary to Patent Owner’s arguments (Req. Reh’g 6–7), we addressed Patent Owner’s arguments and did not rely on impermissible evidence. Our Final Written Decision noted that Patent Owner’s argument did not comport with the express text of ANSI T1.413 and credited the Petitioner’s argument and evidence in support of the combination. Dec. 33–34 (citing Ex. 1011, 9:31–34; Ex. 1100 ¶ 38; Ex. 1009 ¶¶ 86–87; Ex. 1011, 9:31–34).” slip op. at 5
Claim construction§ 103 obviousnessPatents in suitUS 8,432,956 - Hamamatsu Corporation v. Sionyx, LLCSome claims unpatentablePTAB · Mar 28, 2018 · IPR2016-01910 · APJ Monica S Ullagaddi · IPR · Final written decision
Claims 1, 2, 4–11, 13–18, 21, and 23–25 were held unpatentable; claims 12 and 26 were not, based on the stated anticipation and obviousness grounds.
RulingsFinal written decision- BurdenMixed
“In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). This burden never shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (citing Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1326–27 (Fed. Cir. 2008)) (discussing the burden of proof in inter partes review). Furthermore, Petitioner cannot satisfy its burden of proving obviousness by employing “mere conclusory statements.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016). Thus, to prevail in an inter partes review, Petitioner must explain how the prior art anticipates the challenged claims and how the proposed combinations of prior art would have rendered the challenged claims unpatentable. We analyze the challenges presented in the Petition in accordance with the above-stated principles. slip op. at 16
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner’s declarant, Dr. Souri, testifies that a person of ordinary skill in the art relevant to the ’591 patent “would hold a bachelor’s degree in physics, electrical engineering, or a related discipline, and have at least one year of experience working in the field of semiconductor processing or optoelectronic device design.” Ex. 1010 ¶ 32; Pet. 8. Patent Owner applies Petitioner’s proposed level of ordinary skill in the art for purposes of this proceeding. PO Resp. 7 n.2. Based on our review of the ’591 patent, the types of problems and solutions described in the ’591 patent and cited prior art, the testimony of Petitioner’s and Patent Owner’s declarants, and the arguments and evidence adduced at trial, we agree with and apply Petitioner’s definition of a person of ordinary skill in the art at the time of the claimed invention. See Inst. Dec. 14–15.” slip op. at 17
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“that it would not affect incident light.7 We agree with Petitioner that Nakashiba’s “contact surface S1 is exposed to air, which has a refractive index of about 1, and is formed on a silicon substrate, which has an index of refraction between 3.5-6.5, depending on the wavelength of light,” and “[t]hus, there will be an interaction (reflection and/or refraction) with [incident] light at the contact surface S1.” Reply 6 (citing Ex. 1014 ¶¶ 30, 31); see id. at 7. We credit the testimony of Dr. Souri, who testifies as to differences in the refractive indices of air, silicon, and a finger, and that, when there is a change in refractive index between materials, there is an interaction with light. See Ex. 2012, 119:22–121:16. Dr. Souri further testifies that [W]hen light is incident upon a boundary between materials of different refractive index, both refraction and reflection occur, as is depicted in the diagram above. The fraction of incident light that is refracted, and the fraction which is reflected, may be calculated by Fresnel’s equations, using the angles of incidence and refraction given by Snell’s law. . . . [A] person of ordinary skill in the art would understand that these reflection and refraction effects constitute an interaction with electromagnetic radiation; and, consequently, said person would understand that the roughened surface S1 of Nakashiba satisfies the requirements of the term “interact” as used in the claims of the ’591 patent.” slip op. at 23
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“a textured region interacting with electromagnetic radiation in a manner that results in an enhanced response and/or filtering of the radiation, the embodiments do not require the textured region to provide this enhanced response and/or filtering and further, do not define the term “interaction” as an enhanced response or filtering. See Liebel-Flarsheim, 358 F.3d at 908 (“[T]he specification does not describe the invention as limited to embodiments having pressure jackets, and none of the other reasons that have been invoked for giving claims a narrow reading are present.”). The claim language “interact with” is plainly broader than Patent Owner’s proffered construction, and the “position” limitations can be read to encompass features not described in the written description. See Liebel-Flarsheim, 358 F.3d at 908 (“The fact that a patent asserts that an invention achieves several objectives does not require that each of the claims be construed as limited to structures that are capable of achieving all of the objectives.”)” slip op. at 9
Patent outcomesUS 8,680,591 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,680,591 - DISH Network, LLC v. TQ Delta, LLCAll claims unpatentablePTAB · Feb 10, 2018 · IPR2016-01469 · APJ Trevor M Jefferson · IPR · Final written decision
Claims 1, 2, 11, and 12 are unpatentable over Bowie, Morelli, and ANSI T1.413; claims 4, 14, 16, and 18 are unpatentable over Bowie and Morelli.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“Having considered the parties’ arguments and evidence, we do not agree with Patent Owner’s proposed construction that “maintaining synchronization” requires timing synchronization by correcting errors or differences between timing references. The claims of the ’268 patent do not recite “synchronization signal” or “synchronization frame” but refer only to “maintaining synchronization” during low power mode without specification as to the method of synchronization. See, e.g., Ex. 1001, 10:6–17 (claims 1 and 2). Indeed, claims 2 and 12 do not recite any particular synchronization signal or synchronization frame as a limitation.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“In light of the arguments and evidence presented, we are not persuaded that this term requires an express construction. Patent Owner’s proposed construction does not add necessary clarity to the claims, as it merely replaces “full power mode operation” with “transmission and/or reception of data during normal operation.” The parties, however, do not dispute the meaning of “full power mode operation.” Accordingly, an express construction is not necessary to resolve the disputes between the parties.” slip op. at 13
- Skill levelOther
“We determine that no express finding on a specific corresponding level of technical education and experience is necessary. Here, the level of ordinary skill in the art is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 14
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“Petitioner notes, Morelli expressly discusses the receiver receiving while the transmitter is in low power mode. Reply 8–9; Ex. 1005, Fig. 6A (block 102), 15:46–52; 16:29–34). Thus, Morelli does not disclose mere boilerplate language that is not specific or nonenabling, but specifically discloses a transmitter 12 and receiver 16 in Figures 6A–9 where the receiver remains on while the transmitter is off. Reply 7–8. We are not persuaded by Patent Owner’s argument regarding Morelli’s Received Signal Strength Indicator (RSSI). PO Resp. 31–32, 33–34 (discussing RSSI). We do not agree with Patent Owner that Morelli’s teaching regarding using RSSI to determine whether to enter or exit a low power (“sleep”) (Ex. 1005, Abstract) could indicate that the receiver in Morelli is performing the RSSI function to determine when data is “available to be received,” but not actually using the receiver to receive data during the transceiver’s low power mode. Id. Such speculation is belied by the express teachings of Morelli. As Petitioner argues, Morelli states that “it is equally possible to have either the transmitter 12 or receiver 16 be designed to enter a sleep mode as described herein while the other is always in an active mode” (Ex. 1005, 21:51–54). Pet. 23, 40–41. We are also persuaded by Petitioner’s argument and evidence that Morelli is enabling, as it discloses in Figures 6A–9 and accompanying embodiments that the data received by the receiver is provided to MAC 30 to determine if the received packet requires a response necessary to switch the transmitter from sleep to active mode. Reply 9; Ex. 1005, Figs. 1 (control signal on line 38), 6A (block 102), 15:46–52, 15:59–62, 16:29–34; see also Pet. 40–41 (citing Ex. 1005, 1:45–50, 6:43–51, 8:16–20, 8:46–59, Fig. 2, 8:60–9:57, Fig. 3, 14:6–64, 19:7–10, 21:51–54). As Petitioner argues, in the case when Morelli determines that a response is not required, the receiver in Morelli is on and actively receiving data to make the determination based on the data received, while the transmitter is off or sleeping. Reply 8–9; Ex. 1005, Fig. 5A, 15:46–52; see also Pet. 40–41. We also note that Petitioner has provided testimony that a person of ordinary skill in the art would have been able to configure a circuit in accordance with the operation of Morelli and Bowie combined. Ex. 1002 ¶¶ 152–153; Pet. 41; Reply 8–9. Accordingly, we determine that Morelli provides sufficient detailed disclosure teaching of a receiver in full power mode and the transmitter in low power mode as required in the challenged claims.” slip op. at 22
Patent outcomesUS 9,094,268 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,094,268 - Cisco Systems, Inc. / DISH Network, LLC et al. v. TQ Delta, LLCRehearing deniedPTAB · Feb 1, 2018 · IPR2016-01020 · APJ Matthew R Clements · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, finding no overlooked or misapprehended matter that would change its prior decision applying the prior art to the challenged claims.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). The party must identify specifically all matters we misapprehended or overlooked, and the place where each matter was addressed previously in a motion, an opposition, or a reply. Id. With this in mind, we address the arguments presented by Patent Owner.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“carrier phases.” Independent claims 13 and 20 similarly recite “scramble[s] a plurality of phases.” We adopted Patent Owner’s proposed construction in part by construing “scrambling . . . a plurality of carrier phases” to mean “adjusting the phases of a plurality of carriers in a single multicarrier symbol.” Dec. 6–9. We did not add to that construction “by pseudo-randomly varying amounts” because Patent Owner did not show why that additional language should be included for the broadest reasonable construction of the term “scrambling . . . a plurality of carrier phases.” Id. Patent Owner argues that our construction is overly broad because it encompasses adjusting the phases of every carrier in the single multicarrier symbol by the same amount. Req. Reh’g. 1–2. Such an adjustment, according to Patent Owner, would not reduce peak-to-average power ratio (“PAR”), which the parties and the panel all agree scrambling must do. Id. at 3–5. “The FWD misapprehends or overlooks that, under any proper construction, there must at a minimum be varying amounts by which the phases are adjusted within a single multicarrier symbol (i.e., from carrier-tocarrier) such that PAR is reduced.” Id. at 2.” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“technique “will increase PAR” (Dec. 27–28), but does not characterize Shively as having a “high” or “increased” PAR.4 Our Decision relies upon page 28 of Patent Owner’s Response (Paper 12), which concedes that “Shively’s ‘spreading’ technique will contribute a small uptick in clipping probability.” Patent Owner does not dispute, in its Request for Rehearing, Shively’s technique increases PAR. With respect to Patent Owner’s argument that “there is no PAR problem presented by Shively” (Req. Reh’g. 13) and “the only PAR problem in this case relates to clipping” (id. at 14), we considered that argument and found it unpersuasive. Dec. 27–28. As we noted, “Petitioner’s reason to combine does not depend on the PAR increase exceeding some specific numeric threshold,” “there also is no dispute that equipment designed to handle a higher PAR can be larger, more expensive, and more power hungry than equipment designed to handle a lower PAR,” and, therefore, “a person of ordinary skill in the art . . . would have been motivated to reduce PAR regardless of whether Shively’s technique resulted in clipping.” Id. In other words, as we explained in our Decision, Shively’s PAR need not result in clipping in order to motivate a person of ordinary skill in the art because we are persuaded such a person would have been motivated sufficiently to reduce PAR by the benefit of being able to use smaller, less expensive, less power hungry components.” slip op. at 8
Claim construction§ 103 obviousnessPatents in suitUS 9,014,243
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.