- Netflix, Inc. v. Divx, LLCAll claims unpatentablePTAB · Mar 21, 2024 · IPR2020-00511 · APJ Bart A Gerstenblith · IPR · Remand
On remand, the Board held claims 1–3, 5, 6, 10–12, 14, and 15 unpatentable as obvious over the asserted combinations of Chen and Grab-333 with Candelore or Kocher.
RulingsRemand decision- RemandOther
“I. INTRODUCTION This case is on remand from the United States Court of Appeals for the Federal Circuit to address the patentability of claims 1–3, 5, 6, 10–12, 14, and 15 (“the Challenged Claims”) of U.S. Patent No. 9,184,920 B2 (Ex. 1001, “the ’920 patent). Netflix, Inc. v. DivX, LLC, No. 2022-1043, 2023 WL 3115576 (Fed. Cir. Apr. 27, 2023) (nonprecedential). For the reasons discussed herein, we determine that Petitioner has shown, by a preponderance of the evidence, that the Challenged Claims are unpatentable.” slip op. at 2
- Skill levelSkill level board ownDecided for petitioner
“F.2d 86, 91 (CCPA 1978)). As neither party challenges our preliminary finding regarding the level of ordinary skill in the art, we see no reason to disturb that finding. Accordingly, we maintain and reaffirm that one of ordinary skill in the art at the time of the invention would have had “a bachelor’s degree in electrical engineering, computer science, or a similar field with at least two years of experience in video encryption and cryptography or . . . a master’s degree in electrical engineering, computer science, or a similar field with a specialization in video encryption and cryptography.” See Inst. Dec. 9–10 (finding the same).” slip op. at 17
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“In the Response, Patent Owner does not propose a construction for any claim term or contest our preliminary findings regarding limitations 1[a] and 1[b]. See generally PO Resp. Accordingly, we maintain and reaffirm our preliminary determinations regarding the meaning of the recited “user encryption key” and “content encryption key.” [Inst.] Dec. 12– 15. Additionally, we need not construe other claim terms to resolve the present controversy before us.” slip op. at 19
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“obviousness] involves the weighing of the fact findings to conclude whether the claimed combination would have been obvious to an ordinary artisan.” Arctic Cat, 876 F.3d at 1361. On balance, considering the complete record before us, Petitioner has established, by a preponderance of the evidence, that claims 1, 3, 5, 6, 10, 12, 14, and 15 of the ’920 patent would have been obvious to one of ordinary skill in the art at the time of the invention.” slip op. at 103
Patent outcomesUS 9,184,920 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,184,920 - Netflix, Inc. v. Divx, LLCNo claims unpatentablePTAB · Aug 13, 2021 · IPR2020-00511 · APJ Bart A Gerstenblith · IPR · Final written decision
Claims 1–3, 5, 6, 10–12, 14, and 15 were not shown unpatentable under the three § 103 grounds because the combinations did not establish the encrypted-frame limitation.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“person of ordinary skill in the art at the time of the invention would have had “a bachelor’s degree in electrical engineering, computer science, or a similar field with at least two years of experience in video encryption and cryptography or . . . a master’s degree in electrical engineering, computer science, or a similar field with a specialization in video encryption and cryptography.” Pet. 14 (citing Ex. 1003 ¶¶ 65–67). Patent Owner does not address, expressly, the level of ordinary skill in the art in its Response. See generally PO Resp. Dr. Nielson, however, applies Petitioner’s proposed level of ordinary skill in his Declaration (Ex. 2009 ¶ 34) and does not indicate that he does otherwise in his Second Declaration (see generally Ex. 2024). In our Institution Decision, we found that Petitioner’s proposal was consistent with the level of ordinary skill in the art reflected by the prior art of record and we preliminarily adopted Petitioner’s unopposed position. Inst. Dec. 10 (citing 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)). As neither party challenges our preliminary finding regarding the level of ordinary skill in the art, we see no reason to disturb that finding. Accordingly, we maintain and reaffirm that one of ordinary skill in the art at the time of the invention would have had “a bachelor’s degree in electrical engineering, computer science, or a similar field with at least two years of experience in video encryption and cryptography or . . . a master’s degree in electrical engineering, computer science, or a similar field with a specialization in video encryption and cryptography.” See Inst. Dec. 9–10 (finding the same).” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner contends that “the challenged claims are invalid under their plain and ordinary (‘P&O’) meaning.” Pet. 15 (citing Ex. 1003 ¶ 99). In the Preliminary Response, Patent Owner raised the meaning of two claim terms—“user encryption key” and “content encryption key.” Prelim. Resp. 40–44, 46–48. In the Institution Decision, we addressed each term to the extent necessary to resolve the controversy presented, and we found, in each instance, that Petitioner’s mapping of the prior art to these limitations of the claims was sufficient on the record presented at the time. See Inst. Dec. 12– 15 (discussing the construction of the terms), 22–28 (discussing limitation 1[a], which includes “user encryption key”), 28–31 (discussing limitation 1[b], which includes “content encryption key”). In particular, on the preliminary record, we found that “Chen’s master key Kw teaches the recited ‘user encryption key’” (id. at 28) and “Chen’s work key Kw teaches the recited ‘content encryption key’” (id. at 30). In the Response, Patent Owner does not propose a construction for any claim term or contest our preliminary findings regarding limitations 1[a] and 1[b]. See generally PO Resp. Accordingly, we maintain and reaffirm our preliminary determinations regarding the meaning of the recited “user encryption key” and “content encryption key.” Dec. 12–15. Additionally, we need not construe other claim terms to resolve the present controversy before us.6” slip op. at 13
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“techniques, and standards in the industry regarding the same in an attempt to explain how one of ordinary skill in the art would have understood Chen at the time of the ’920 patent. As discussed herein, the weight of the evidence is very closely balanced. Fundamentally, however, it is Petitioner’s burden to establish how one of ordinary skill in the art would have understood Chen and the combined teachings of Chen and Grab-333. And, as we find herein based on the full record developed during trial, Petitioner does not establish that the combined teachings of Chen and Grab-333 would have met limitation 1[c]. Below, we walk through the parties’ arguments and evidence, starting with the Petition, and then we discuss our findings regarding Chen in light of the full trial record.” slip op. at 24
- ExcludeMotion to exclude, grantedMotion to exclude, deniedGranted in part
“To begin, 37 C.F.R. § 42.23(b) specifies, in relevant part, that “[a] sur-reply may only respond to arguments raised in the corresponding reply and may not be accompanied by new evidence other than deposition transcripts of the cross-examination of any reply witness.” 37 C.F.R. § 42.23(b). The Consolidated TPG repeats the above-quoted language of the rule and also explains that [s]ur-replies should only respond to arguments made in reply briefs, comment on reply declaration testimony, or point to cross-examination testimony. As noted above, a sur-reply may address the institution decision if necessary to respond to the petitioner’s reply. This sur-reply practice essentially replaces the previous practice of filing observations on cross-examination testimony. Consolidated TPG at 73–74. Accordingly, Rule 42.23(b) provides a blanket prohibition on a patentee filing exhibits with a sur-reply, as Patent Owner has done here.” slip op. at 54
Patent outcomesUS 9,184,920 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,184,920 - Campbell Soup Company / Campbell Sales Company et al. v. Gamon Plus, Inc.No claims unpatentablePTAB · May 2, 2018 · IPR2017-00087 · APJ Bart A Gerstenblith · IPR · Final written decision
Claims 1–16 were cancelled at Patent Owner’s request; claims 27, 28, and 32–35 were not shown unpatentable over the instituted §103 grounds.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedOther
“Level of Ordinary Skill in the Art Petitioner contends that a person of ordinary skill in the art, as of the earliest priority date of the claims, would have had either: “(1) a Bachelor’s Degree in Industrial Design and at least 1-2 years of experience in designing gravity feed display dispensers, or (2) 5-10 years of experience in designing gravity feed display dispensers.” Pet. 7 (citing Ex. 1002 ¶ 36). Patent Owner does not propose an explicit level of ordinary skill in the art in its Response. Consistent with the level of ordinary skill in the art 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), we adopt Petitioner’s unopposed position as to the level of ordinary skill in the art.” slip op. at 18
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“construed according to their broadest reasonable interpretation in light of the specification of the patent in which they appear. See 37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016). Only terms that are in controversy need to be construed, and these need be construed only to the extent necessary to resolve the controversy. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). In our Institution Decision, we construed several claim terms recited in claims 1–17. Inst. Dec. 13–20. Patent Owner requests cancellation of claims 1–16 and we did not institute inter partes review of claim 17. Thus, none of the claim terms we construed previously are at issue in the trial. Additionally, Patent Owner’s Response and Sur-Reply and Petitioner’s Reply do not request that we construe any additional claim terms. Accordingly, we need not construe expressly any claim terms to resolve the controversy before us. See Vivid Techs., 200 F.3d at 803.” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightNot shown unpatentableMotivation not foundNot shown unpatentable
“how or why an ordinarily skilled artisan would have been led to combine Weichselbaum and Nesso in the manner claimed. On that point, the Petition rests on bare opinion testimony that is not tethered to any disclosure in the prior art or other objective proof. Pet. 32 (citing Ex. 1002 ¶¶ 168–170). We are mindful that a reason to combine prior art may exist “in the content of the public prior art, in the nature of the problem addressed by the invention, or even in the knowledge of one of ordinary skill in the art.” Princeton Biochemicals Inc. v. Beckman Coulter Inc., 411 F.3d 1332, 1338-39 (Fed. Cir. 2005). But when we turn to the opinion testimony that undergirds Petitioner’s argument on the reasons to combine, we find no objective proof and inadequate reasoning. Id. Ultimately, Petitioner presents two very weak reasons based on unstated and unexplained factual assumptions in support of its view that one of ordinary skill in the art would have been prompted to modify Weichselbaum. Additionally, as explained above, Petitioner takes conflicting positions as to how Nesso’s second chute would be incorporated in Weichselbaum’s device and the record remains unclear as to the precise structure resulting from Petitioner’s combination. Accordingly, Petitioner fails to provide sufficient clarity regarding the specific modifications to Weichselbaum, fails to provide a sufficient reason with rational underpinning as to why and how one of ordinary skill in the art would have modified Weichselbaum in light of Nesso, and appears, on this record, to engage in an impermissible exercise of hindsight reconstruction to make out a reason to combine the applied references in the manner claimed. Further, in light of the full trial record, including Patent Owner’s evidence of secondary considerations discussed below, we are persuaded that the bare opinions set forth in the Visser Declaration (Ex. 1002 ¶¶ 168–170) are entitled to little weight. See Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 294 (Fed. Cir. 1985) (“Lack of factual support for” opinion testimony “going to factual determinations” may be of little probative value in validity determination.”).” slip op. at 36
- Obviousness (§103) › Objective indicia / secondary considerations › Commercial successObjective indicia with nexusDecided for patent owner
“specific product and that product ‘is the invention disclosed and claimed in the patent.’” WBIP, 829 F.3d at 1329 (citation omitted). The presumption is rebuttable, but “a patent challenger cannot successfully rebut the presumption with argument alone—it must present evidence.” Id. (citation omitted). Patent Owner has shown that the asserted objective evidence, discussed further below, is tied to a specific product and that product “is the invention disclosed and claimed in the patent.” Id. (quoting J.T. Eaton & Co. v. Atl. Paste & Glue Co., 106 F.3d 1563, 1571 (Fed. Cir. 1997)). “This showing––that the specific products are embodiments of the claimed invention and that the proffered objective evidence relates to these products—is sufficient to establish the presumption of nexus for the objective considerations at issue in this case.” Id. at 1330. It is, therefore, Petitioner’s burden to rebut that presumption. Id. at 1329 (“a patent challenger cannot successfully rebut the presumption with argument alone— it must present evidence”); see Tr. 46:20–47:8 (Petitioner agreeing that nexus is presumed and that Petitioner has the burden to overcome the presumption.). Petitioner does not rebut the presumption of nexus. First, Petitioner’s entire argument is phrased as challenging whether Patent Owner satisfied its burden of establishing nexus, as opposed to whether Petitioner rebuts the presumption of nexus. Pet. Reply 20–21 (“It is Patent Owner’s burden to establish a nexus.”) (citing CaptionCall LLC v. Ultratec Inc., IPR2013- 00540, Paper 78 at 50 (PTAB Mar. 3, 2015)). Second, Petitioner points to other factors, including higher prices and increased advertising, referred to in Campbell’s annual reports that contributed to increased soup sales. Pet. Reply 21–22. There is no dispute that other factors also contributed to the increase in soup sales. But, there is also no dispute that Campbell’s own statements, through its Annual Reports and Mr. Finnel’s interview, tie increased soup sales expressly to Gamon’s display racks. Additionally, Campbell’s internal presentation describes Gamon’s IQ Maximizer as “Breakthrough Gravity Feed Shelving” and attributes the following to the display racks based on the results of its study: • +13.6% volume lift for Corporate Brand • +10% volume lift for Condensed Segment • +9.3% volume lift for Campbell’s Condensed • +5.5% volume lift for Wet Soup Category • Encourages purchase of additional varieties • Billboard effect improves branding: 210% larger • Positive labor impact due to elimination of shelf conditioning Ex. 2032, 4. Although other factors had some degree of impact on commercial success,29 we determine that Patent Owner has established that an appreciable amount of Campbell’s increased commercial success of soup during the relevant time period is attributable to the display rack covered by claim 27 of the ’111 patent. Accordingly, Gamon’s sales to Campbell of about $31 million from 2002–2009 as well as a portion of the increased sales of Campbell’s soup using Gamon’s display racks provide a strong showing of commercial success of the commercial embodiment of claim 27 of the ’111 patent.” slip op. at 61
Patent outcomesUS 8,827,111 not shown unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,827,111 - Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. et al. v. Imperium (IP) HoldingsAll claims unpatentablePTAB · Dec 1, 2016 · IPR2015-01232 · APJ James B Arpin · IPR · Final written decision
Claims 1, 6, 7, 14, and 16 are unpatentable as obvious over Shimada, including the obviousness-based modifications to its lookup table and photometry teachings.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“construction. Tr. 8:4–15; see also id. at 14:16–15:2 (no need to construe “preparatory power value”). Patent Owner agreed, also stating at the hearing that no claim constructions are necessary. Id. at 19:11–25; see PO Resp. 12 (relating to the claim term “interface”); Tr. 50:19–55:4. Nevertheless, Petitioner notes that the parties appear to disagree regarding the plain and ordinary meaning of the term “weighting.” PO Resp. 16–18; see Pet. Reply 15; Tr. 8:9–15. Petitioner argues that “weighting” means “‘according more weight,’ emphasizing, ‘an area of interest of the image,’ or even emphasizing the entire image.” Pet. Reply 16 (citing Ex. 1001, col. 2, ll. 15–17, col. 9, ll. 1–3; Ex. 2003, 62:10–13); see Tr. 8:24–25 (“according more weight or emphasizing a portion or all of an image”). Patent Owner does not propose expressly an alternative construction, but, in attempting to distinguish the teachings of Shimada, contends implicitly that Petitioner’s construction is overly broad. PO Resp. 18; see Pet. Reply 15 (“Though PO never actually proposes an actual construction for ‘weighting,’ it argues Shimada uses a ‘selection process’ and suggests that, in contrast, the claimed ‘weighting’ must be performed numerically.” (citations omitted)). We find Petitioner’s proposed construction to be consistent with the Specification of the ’029 patent, and we construe “weighting” to mean “according more weight or emphasizing a portion or all of an image.” Nevertheless, only terms that are in controversy in this proceeding need to be construed, and then 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). Because the resolution of this controversy does not depend upon the construction of any other claim term, no other claim terms are construed expressly.” slip op. at 9
- Skill levelSkill level patent owner adoptedDecided for patent owner
“5 Petitioner proposes an assessment of the level of skill for a person of ordinary skill in the art. Pet. 15–16 (citing Ex. 1033 ¶ 20). Patent Owner’s declarant proposes a slightly different and somewhat lower (e.g., two years, instead of four years, of industry experience) assessment of the level of skill for a person of ordinary skill in the art. Ex. 2004 ¶ 26. To the extent necessary and for purposes of this Final Written Decision, we adopt Patent Owner’s declarant’s assessment, which each party’s declarant meets or exceeds. See Ex. 1033 ¶ 21; Ex. 2004 ¶ 27. 6 There is no requirement to enumerate each Graham factor and to include findings specifically in terms of the factors as long as “the required factual determinations were actually made and it is clear that they were considered while applying the proper legal standard of obviousness.” Specialty Composites v. Cabot Corp., 845 F.2d 981, 990 (Fed. Cir. 1988).” slip op. at 11
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“As discussed above (see supra Section IV.A.3.a.i.), Mr. Parulski explains that “Shimada takes a binary approach (either counting an area or discounting an area), utilizing the central four areas of the image in the calculation and ignoring the remainder.” Ex. 1033 ¶ 92 (citing Ex. 1005 ¶ 50). Thus, for example, the four (4) center areas may be weighted one (1), and the sixty (60) surrounding areas may be weighted zero (0). See Ex. 2003, 62:18–63:4, 78:19–84:1; see Pet. Reply 17–18. Shimada discloses “uniform” weighting (Ex. 1001, col. 8, l. 60–col. 9, l. 3), and Mr. Parulski explains that uniform weighting equally weights all areas (see, e.g., Ex. 2003, 171:13–20). See Pet. Reply 18–19. Mr. Parulski testifies that this is how Shimada operates when performing photometry uniformly on all 64 areas of Figure 4. See, e.g., Ex. 2003, 69:10–70:22; see also Ex. 1005 ¶ 50 (“[W]hen the photographic subject is in a normal state other than a backlit state, photometry is performed for a wider area.”); but see Ex. 2004 ¶¶ 42–47. We credit Mr. Parulski’s testimony here. Thus, we are persuaded that Shimada teaches “weighting” as that term is here construed. In its Figure 4, reproduced above (see supra Section IV.A.2.), Shimada further depicts a square imaging element measuring eight “areas” on a side and totaling sixty-four (64) areas. As noted above, Petitioner argues persuasively that Shimada teaches assigning numerical values to each of these areas. Pet. Reply 19 (citing Ex. 2003, 69:10–70:22). Further, Mr. Parulski testifies that: Shimada further describes that “the size of the photometric area substantially may be selected by processing only the signals of the required photometric area.” [Ex. 1005 ¶ 50.] It would have been obvious to a POSITA that Shimada’s disclosure of “processing only the signals of the required photometric area” could advantageously be accomplished by using a memory having “luminance weighting tables” with binary values (e.g., “0” or “1”), which enable the CPU to identify the photometric areas to be included in the processing. Ex. 1033 ¶ 115; see Ex. 2003, 84:11–94:11; see also KSR, 550 U.S. at 417 (“If a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability.”). Again, we credit Mr. Parulski’s testimony. Thus, we are persuaded that such an assignment of numerical values discloses a “weighting table,” such as that recited in challenged claim 16, and that a person of ordinary skill in the art would understand, in view of Shimada’s teachings, that such numerical values might be stored in a memory in the form of a table. Pet. 41 n.36; see Pet. Reply 19 (“Claim 16 differs from claims 1, 6 and 7 in that it requires a memory storing a “weighting table.”).” slip op. at 35
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“power values to determine the main flash values presented in Table 1, that such values must be stored within and/or accessible to Shimada’s system, and that Shimada teaches that storage capacity was a concern in the art. Ex. 1005 ¶ 34; see Ex. 2003, 33:7–34:11, 40:9–15. Shimada expressly teaches that two of the pieces of data used to accomplish Shimada’s purpose may be stored in a single memory, ROM 16 of Shimada’s Figure 1. Ex. 1005 ¶¶ 20, 32, 42. Based on the art and arguments presented here, the record suggests a finite number of ways in which distinct pieces of data (e.g., the main flash duration and power values, the preparatory flash duration, and the preparatory flash power values) may be stored and that these would be within the technical grasp of a person of ordinary skill in the art. Ex. 2003, 44:7–45:17, 46:5–47:6; see Tr. 37:3–38:6. On this record, we are persuaded that a person of ordinary skill in the art would have understood that saving information in one file, instead of two or more files, has the ability to conserve storage space. KSR, 550 U.S. at 417 (“[I]f a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.”), 421 (“When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp.”); see Ex. 1005 ¶¶ 34, 35 (describing known problem of, and solutions for, storage capacity).” slip op. at 21
Patent outcomesUS 7,092,029 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,092,029 - Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. et al. v. Imperium (IP) HoldingsAll claims unpatentablePTAB · Nov 30, 2016 · IPR2015-01233 · APJ Charles J Boudreau · IPR · Final written decision
Claims 1 and 10 are unpatentable: claim 1 is anticipated by Roe and Toshiba, and claim 10 is obvious over Umeda or Sears combined with either Roe or Toshiba.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“Having considered the parties’ arguments, we agree with Samsung that the broadest reasonable interpretation of “interface” in light of the specification of the ’290 patent is “a connection used for communicating signals between two or more electrical components,” and we expressly decline to read into claims 1 and 10 requirements that the recited interfaces (1) must perform a data interfacing function “in accordance with a protocol that is recognized and implemented by both the transmitting device and the receiving device” and (2) necessarily must be “higher-level circuits,” as Imperium suggests. Id. at 2, 6–8; PO Resp. 12–13; see Hoganas AB v. Dresser Indus., Inc., 9 F.3d 948, 950 (Fed. Cir. 1993) (“It is improper for a court to add ‘extraneous’ limitations to a claim, that is, limitations added ‘wholly apart from any need to interpret what the patentee meant by particular words or phrases in the claim.’” (quoting E.I. du Pont de Nemours & Co. v. Phillips Petroleum Co., 849 F.2d 1430, 1433 (Fed. Cir. 1988))).” slip op. at 14
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“We are persuaded by Samsung’s arguments and evidence presented in the Petition that Roe’s dual-purpose I/O circuit discloses the “data interface circuit” of claim 1 of the ’290 patent, including single-ended and differential interfaces with selectable outputs arranged as set forth in claim 1, and neither Imperium’s arguments nor its cited evidence persuade us otherwise. See Pet. 17–25; PO Resp. 16–22. As stated in Section II.A.2 supra, we agree with Samsung that the broadest reasonable interpretation of the term “interface,” as recited in claim 1 of the ’290 patent, is “a connection used for communicating signals between two or more electrical components,” and we do not read into claim 1 any requirement that the recited interfaces must be a “higher-level circuit” that performs a data interfacing function in accordance with any particular protocol. Accordingly, we are not persuaded by Imperium’s arguments or Dr. Wright’s testimony that Roe’s I/O circuits are not “interfaces” within the meaning of claim 1. PO Resp. 16–20. We also agree with Samsung that claim 1 does not require sending the selected mode to a downstream receiver. Pet. Reply 12. Accordingly, we are not persuaded by Imperium’s argument that Roe does not describe “sending selection signals to any components on the downstream/receive-side of the output lines.” PO Resp. 21. Additionally, because we understand Samsung to rely on Roe’s “dual-purpose I/O circuit” to disclose the claimed “data interface circuit” (see Pet. Reply 12), we are not persuaded by Imperium’s argument that Roe’s “primary interface itself” does not have selectable single-ended and differential components (PO Resp. 21). c. Conclusion For the foregoing reasons, we conclude that Samsung has shown by a preponderance of the evidence that claim 1 is anticipated by Roe.” slip op. at 21
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“ordinary skill in the art, adopted in Section II.C.3.b supra, as well as the testimony of both Dr. Wright (Ex. 1040; Ex. 1046; Ex. 2008) and Dr. Baker (Ex. 1008; Ex. 1041; Ex. 2007), we are persuaded by Samsung’s arguments and evidence that it would have been within the skill of a person of ordinary skill in the art to incorporate a dual interface as taught by either Roe or Toshiba into Umeda’s image sensor. We also agree with Samsung that Umeda, Roe, and Toshiba are analogous art with respect to claim 10 of the ’290 patent. See Pet. Reply 17–18; PO Resp. 29. As Samsung points out (Pet. Reply 17), the question of whether prior art references are “analogous” is evaluated with respect to the claimed invention, not with respect to other references. See, e.g., Innovention Toys, LLC v. MGA Entm’t, Inc., 637 F.3d 1314, 1321 (Fed. Cir. 2011) (“A reference qualifies as prior art for a determination under § 103 when it is analogous to the claimed invention.”). A prior art reference is considered to be analogous to a claimed invention if it is either: (1) from the same field of endeavor, regardless of the problem addressed; or (2) reasonably pertinent to the particular problem with which the inventor is concerned, regardless of the field of endeavor. In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). In this case, we determine that Umeda is analogous art with respect to claim 10 under at least the first prong of Bigio, and that Roe and Toshiba are both analogous art under at least the second prong. In particular, Umeda generally describes solid state image sensors, including CMOS-type image sensors, that include a data interface circuit and an image processor connected to the image sensor to receive the signals output by the data interface circuit (see supra Section II.C.3.a and citations therein), which are within the same field of endeavor as the CMOS imaging apparatus of claim 10. Moreover, because each of Roe and Toshiba discloses an interface that provides selectable single-ended and differential signal output with reuse of output pins, we find that those references clearly are pertinent to the problem set forth in the ’290 patent, namely fulfilling a “need for an improved interface circuit that would allow either a single-ended or a differential output and using as few pins as possible” (Ex. 1001, 3:17–19; see also id. at 1:11–15 (“The field of the invention relates generally to the field of interface circuits, and more particularly, to interface circuitry for providing selectable single-ended and differential signal output from a CMOS image sensor to an external digital signal processor.”)).” slip op. at 37
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“We are persuaded, moreover, that a person of ordinary skill in the art would have had reason in view of Umeda’s teachings, as cited by Samsung, to make the proffered combinations. See, e.g., Ex. 1006, 1:61–67 (stating the goal of “mak[ing] the most of the[] characteristic features” of a MOS type image sensor and the importance of using “an appropriate interface” to avoid increases in chip area, package size, and cost), Fig. 14 (listing both single-ended (“PC Card”) and differential (“IEEE 1394”) interface types). We conclude that the recited combination of claim 10 is no more than “the predictable use of prior art elements according to their established function,” and that a person of ordinary skill in the art would have been prompted to combine those elements in the claimed fashion. KSR, 550 U.S. at 417, 418. We, accordingly, are persuaded that Samsung has shown that the first three Graham factors weigh in favor of finding that Umeda in combination with either Roe or Toshiba would have rendered the subject matter of claim 10 of the ’290 patent obvious to one of ordinary skill in the art at the time of the invention.” slip op. at 38
Patent outcomesUS 6,836,290 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,836,290 - Square, Inc. v. Think Computer CorporationRehearing grantedPTAB · Feb 9, 2016 · CBM2014-00159 · APJ Michael W Kim · CBM · Rehearing
The Board granted Patent Owner’s rehearing request insofar as it addressed the assertions in the decision, but denied it in all other respects; the prior analysis remained unchanged.
RulingsRehearing decision- RehearingRehearing, grantedGranted in part
“A request for rehearing can only point out that which the Board misapprehended or overlooked, and will be reviewed for abuse of discretion. 37 C.F.R. § 42.71(d). Moreover, as the moving party, the burden of persuasion falls on Patent Owner. 37 C.F.R. § 42.20(c). The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and where each matter was previously addressed in a motion, an opposition, or a reply. Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012).” slip op. at 1
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“are unpersuaded that they would alter our construction. For example, Patent Owner asserts that the claim limitation “any particular transaction” requires that “bidirectional account” be construed as allowing an account to function simultaneously as both a merchant account and a purchaser account under all transactions. We disagree, primarily because we are unclear as to what Patent Owner means by “under all transactions.” The relevant limitation of independent claim 1 reads “wherein the first account and the second account are adapted to selectively function as either a merchant or a purchaser account during any particular transaction.” We find that “[a]ny particular transaction” means any specific transaction, and is not necessarily limited to all transactions going forward, and find further that, logically, an account need only function in “merchant mode” or “purchaser mode” for that particular transaction; otherwise the account would be in the awkward position of performing a transaction with itself. Moreover, we are unclear as to why the same account cannot function as both, depending on the transaction, as an account is merely a repository within which funds are held, and whether the account is in “merchant mode” (i.e., the ability to send funds from the account) or “purchaser mode” (i.e., the ability to send funds to the account) does not alter the fundamental repository nature of the account itself. A similar analysis of the cited portions of the prosecution history and Specification yields similar conclusions. For example, Patent Owner’s discussion of the prosecution history on pages 4 and 5 of the Request for Rehearing do not amount to Patent Owner providing an explicit definition of “selectively function,” “during any particular transition,” or any other claim term as meaning “simultaneously”; nor do Patent Owner’s statements rise to the level of a clear and unmistakable disclaimer with respect to the meaning of the claim terms.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“2. whether Dalzell fails to meet the claims’ requirements Based on Patent Owner’s proposed claim construction of “bidirectional accounts,” Patent Owner asserts that Dalzell does not disclose “bidirectional accounts.” Req. 7‒10. As we are unpersuaded, however, that the Board misapprehended or overlooked the items identified by Patent Owner in construing “bidirectional accounts,” we are unpersuaded that our analysis of Dalzell and “bidirectional accounts” set forth on pages 28 to 29 of the Final Written Decision should be modified in any way. See Dec. 29 (“[W]e find that a more logical reading of paragraph 59 of Dalzell is that a buyer, from a particular account, can add a seller feature to that particular account, without the need to create a whole new account. Such a finding is supported by extensive analysis and testimony by Dr. Sadeh-Koniecpol, with explicit citations to Dalzell, which we find credible, reasonable, and persuasive. Ex. 1002 ¶¶ 147-164 (citing Ex. 1006 ¶¶ 9, 27, 49, 57, 61, 82, 85, 87, 132, 163, Figs. 1A, 1B).”)” slip op. at 9
Claim construction§ 103 obviousnessPatents in suitUS 8,396,808
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.