- Lenovo (United States) Inc. / Motorola Mobility LLC v. Theta IP, LLCNo claims unpatentablePTAB · Oct 16, 2024 · IPR2023-00697 · APJ Barbara A Benoit · IPR · Final written decision
Claims 1, 3, 4, and 8 were not proven unpatentable: Rauhala does not disclose the required simultaneous signal-strength determinations, and Masaaki does not cure the deficiency for claim 4.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Following institution, Patent Owner maintained the same level of ordinary skill proposed in its preliminary response and did not address our discussion of the level of ordinary skill in the art in the Institution Decision. PO Resp. 24–25; see also Prelim. Resp. 24. For the reasons discussed in the Institution Decision, we adopt and apply for this Decision the level of ordinary skill articulated by Petitioner and used previously in our Institution Decision. See Dec. 8–10. In light of our review of the complete record, we find that this formulation is consistent with the ’825 patent, the prior art of record, and is supported by the testimony of Dr. Baker. See Ex. 1002 ¶¶ 27– 31. Our decision would not change, however, if we had applied Patent Owner’s proposed level of ordinary skill.” slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“We agree with Patent Owner that the desired signal and interferer signal must be received at the same time. The plain language of the claim requires the wireless transceiver to “receiv[e] a wireless signal having a desired signal and an interferer signal,” the determining of a signal strength of the interferer signal and the determining of a signal strength of the desired signal must be performed at the same time; otherwise, the determinations of signal strengths would not be of the same wireless signal. The specification supports this understanding. “When a receiver is actively receiving a desired signal, each block in the signal path has at its input the desired signal as well as noise and possibly interfering signals.” Ex. 1001, 5:20–22; see also id. at 5:31–33 (“FIGS. 2A and 2B illustrate examples of desired signals, interferers, and noise that may be received by one of the various circuits in a” slip op. at 21
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“We agree with Patent Owner that Rauhala does not state that the signal strengths are measured simultaneously or at the same time. Indeed, as discussed above, Rauhala indicates unequivocally in the same paragraph the opposite—that detector DET provides to control unit 42 “an indication about either the receive channel signal strength RSS or the strength of any signal on the reception band.” Ex. 1004 ¶ 17. Rauhala describes that “control unit 42 provides two one-bit control signals cA and cM” based on indications received from detector DET. Id. Importantly, Rauhala indicates that “at the same time as” describes how the control unit 42 uses the received inputs RSS and RSSn shown in Figure 4, which are described earlier in paragraph 17 as indications of either RSS or RSSn from detector DET. Id. (“Signal cA is 0 when signal RSS is greater than S4 and signal RSSn is at the 11 Dr. Baker’s reply declaration correctly quotes Rauhala paragraph 17 but cites to paragraph 18. We deem this harmless error. same time smaller than Sn. . . . Signal cM is 1 when signal RSS is not greater than S4 and signal RSSn is at the same time at least Sn. Otherwise, signal cM is 0.”). The burden remains on Petitioner to demonstrate by a preponderance of the evidence that Rauhala discloses the disputed limitations as arranged or combined in the claim. Petitioner does not persuasively reconcile these “either/or” statements regarding the functioning of detector DET with the “at the same time as” statements regarding control signals output by control unit 42 in paragraph 17. We do not find persuasive Petitioner counsel’s position expressed at the hearing that Rauhala’s “either/or” statements are “simply an imprecise description” (Tr. 16:22–24). We do not see a lack of precision in Rauhala’s “either/or” statements.” slip op. at 30
- Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner
“When asked at his deposition to explain Rauhala’s use of the word “or” regarding the functioning of detector DET, Dr. Baker asserted that “[detectors] can be designed to determine RSS or RSSn.” Ex. 2016, 85:5– 12. We find Dr. Baker’s testimony that “it’s reasonable that if you can design . . . the detector to detect one or the other, you can also design it to detect both” to be without factual support. Id. at 85:13–16. He points to no textbook or other independent evidence to support that would have led one of ordinary skill to design such a detector or to support that one of ordinary skill would have understood Rauhala’s detector to be so designed. Furthermore, Dr. Baker recognizes that “Rauhala doesn’t teach the details of what’s in the detector.” Id. at 91:6–7. We give little weight to Dr. Baker’s unsupported testimony that one could design a detector to detect both RSS and RSSn from the same wireless signal. See 37 C.F.R. 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); see also Xerox Corp. v. Bytemark, Inc., No. IPR2022-00624, 2022 WL 3648989, at *6 (PTAB 2022) (precedential) (Director affirming because “the cited declaration testimony is conclusory and unsupported, adds little to the conclusory assertion for which it is offered to support, and is entitled to little weight”).” slip op. at 31
Patent outcomesUS 10,129,825 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,129,825 - Lenovo (United States) Inc. / Motorola Mobility LLC v. Theta IP, LLCNo claims unpatentablePTAB · Oct 16, 2024 · IPR2023-00698 · APJ Thomas L Giannetti · IPR · Final written decision
Claims 7–11, 13, and 19–21 were not shown unpatentable because Rauhala does not disclose simultaneous desired and interferer signal-strength determinations, defeating anticipation and the obviousness combination.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“The two proposals are materially similar in the education requirement, but differ marginally in professional experience required (three versus five years). See supra. While we were persuaded, on the preliminary record, that both Petitioner’s and Patent Owner’s proposals were consistent with the problems and solutions in the ’202 patent and the prior art of record, on balance, we determined that Petitioner’s proposal was a better reflection of the level of skill in the prior art, and we therefore adopted it for our Institution Decision. See Institution Dec. 12–13. For this Decision, we adopt the description of the person of ordinary skill articulated by Petitioner and used previously in our Institution Decision. In light of our review of the complete record, we find that this formulation is consistent with the ’202 patent, the prior art of record, and is supported by the testimony of Dr. Baker. See Baker I Decl. ¶¶ 28–32. Our Decision would not change, however, if we had applied Patent Owner’s proposed level of ordinary skill.” slip op. at 12
- Expert testimonyPetitioner expert discountedDecided for patent owner
“85:13–16. He admits that “Rauhala doesn’t teach the details of what’s in the detector.” Id. at 91:6–7. He points to no textbook or other independent evidence that would have led a person of ordinary skill to design such a detector. Our Trial Practice Guide cautions against crediting such unsupported testimony: The Board has broad discretion to assign weight to be accorded expert testimony. Yorkey v. Diab, 601 F.3d 1279, 1284 (Fed. Cir. 2010). However, the testimony must be based on sufficient facts and data. Fed. R. Evid. 702(b). “Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.” 37 C.F.R. § 42.65(a). Patent Trial and Appeal Board Consolidated Trial Practice Guide 35 (Nov. 2019).7 We therefore give Dr, Baker’s unsupported testimony on this issue little weight.” slip op. at 24
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“We construe claim terms only as relevant to the parties’ contentions and only to the extent necessary to resolve the issues in dispute. See 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. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017). Having considered the positions of the parties, we find that for the purpose of this decision, we do not need to construe these terms to resolve a dispute.” slip op. at 9
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“requirement.” Pet. Reply 5. We do not agree with Petitioner. We find that the language of the claims supports Patent Owner’s argument that the desired signal and the interferer signal are received together. As discussed infra, claim limitations 7.7 and 7.8 recite determining a signal strength of the interferer signal and determining a signal strength of the desired signal. These determinations must be performed at the same time; otherwise, the determinations of signal strengths would not be of the same wireless signal. See Larson II Decl. ¶ 70; Baker II Decl. ¶¶ 48–49 (explaining that consideration of signal strengths detected at the same time would be “essential”). The specification of the ’202 patent further supports this finding: “When a receiver is actively receiving a desired signal, each block in the signal path has at its input the desired signal as well as noise and possibly interfering signals.” Ex. 1001, 5:22–24; see also Figs. 2A, 2B (showing interferer signals and desired signals together).” slip op. at 17
Patent outcomesUS 10,524,202 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites GrahamPatents in suitUS 10,524,202 - Sony Group Corp. (Japan) / Sony Corp. Of America et al. v. MZ Audio Sciences, LLCNo claims unpatentablePTAB · Apr 8, 2024 · IPR2022-01544 · APJ Karl D Easthom · IPR · Final written decision
Claims 1–10 were not shown unpatentable because Petitioner did not establish sufficient reasons to combine the references in any of the three obviousness grounds.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that a person of ordinary skill in the art “would have had a bachelor’s degree in electrical engineering or a related field with coursework in signal processing, plus two years of academic and/or industry experience in signal processing or a related field. More education could substitute for experience, and vice versa.” Pet. 7. “Patent Owner does not dispute Petitioners’ definition of a [person of ordinary skill in the art].” PO Resp. 2. Based on a review of the record, we adopt Petitioner’s proposed level of ordinary skill in the art because it is consistent with the evidence of record, including the asserted prior art, other references of record, and the ’961 patent specification.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“district-court-type standard, as described in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). See 37 C.F.R. § 42.100(b) (2020). Under this standard, claim terms have their ordinary and customary meaning, as would be understood by a person of ordinary skill in the art at the time of the invention, in light of the language of the claims, the specification, and the prosecution history. See Phillips, 415 F.3d at 1313–14. Petitioner relies on the plain and ordinary meaning and contends that it is unnecessary to construe any claim terms explicitly. See Pet. 8 (citing 37 C.F.R. §42.100(b)). Patent Owner “agrees with Petitioner that, for purposes of this Response only, all terms of the ᾽961 patent have their plain and ordinary meaning.” PO Resp. 23. As Petitioner contends, it is not necessary Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Dr. Scordilis. Based on the record, Petitioner fails to provide a sufficient reason to arrive at the claimed invention and satisfy the burden of showing obviousness. As Patent Owner essentially argues, Cabot (and all references relied upon by Petitioner and Dr. Scordilis) do not pertain to “quantizing a phase difference of the at least one overtone relative to the fundamental tone to embed at least one bit of the data to be embedded” as step 1C-2 requires. See PO Resp. 32–33. Petitioner also relies on Kudumakis to modify Srinivasan in asserting that step 1C-2 would have been obvious, but Petitioner’s reliance on Kudumakis is also faulty as explained below. See Pet. 22–27 (relying on Ex. 1006 (Cabot), Ex. 1007 (Kudumakis); Ex. 1028 (Risset), Ex. 1031 (Lipshitz), Ex. 1055 (“Cox-SSSW”); Ex. 1020 (“Cox- 1995” ); Ex. 1021 (“Wu”)). articulated reasoning with some rational underpinning” to show that one of ordinary skill in the art would have had a sufficient reason to modify Srinivasan’s frequencies to embed a quantized phase difference between a fundamental and its harmonic into the harmonic as step 1C-2 requires. See Kahn, 441 F.3d at 988 (“[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”)); In re Fine, 837 F.2d 1071, 1075 (Fed. Cir. 1988) (“teachings of references can be combined only if there is some suggestion or incentive to do so”) (quoting ACS Hosp. Sys., Inc. v. Montefiore Hosp., 732 F.2d 1572, 1577 (Fed. Cir. 1984)). As noted above, Dr. Scordilis states that Cabot merely “opens the venue for exploration” for an artisan of ordinary skill to “try to . . . explore” watermarks. Ex. 2011, 75:16–22. Dr. Scordolis’s testimony relates to an “obvious to try” rationale, but neither Dr. Scordilis’s testimony, nor Petitioner’s showing, satisfies the conditions to support that rationale. In particular, Dr. Scordilis does not testify, and Petitioner does not show, that the technique of embedding phase difference codes into a harmonic relative to its fundamental was one of “a finite number of identified, predictable solutions” and a “known option[]” for hiding data. Cf. KSR, 550 U.S. at 402 (indicating that under an “obvious to try” rationale, “[w]hen 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 in the art has good reason to pursue the known options within his or her technical grasp” (emphasis added)).” slip op. at 25
- Expert testimonyPetitioner expert discountedDecided for patent owner
“The record supports Patent Owner’s characterization of Dr Scordilis’s testimony. Dr. Scordilis does not rely on any references that “have a frequencies specifically.” See Ex. 2011, 90:4–8 (testifying such references are “[n]ot in [his] report”). Moreover, Dr. Scordilis testifies that “[t]he value . . . of Cabot’s work is that he points to the fact that even in this very controlled experiment, although phase is detectable in an A/B type of setup under many, many repetitions, it really opens the venue for exploration that a [person of ordinary skill in the art] would try to capitalize and explore further to develop a watermark.” Id. at 75:16–22 (emphasis added). In summary, Dr. Scordilis testifies that no references (including Cabot) cited in his declaration discuss phase encoding of a harmonic phase relative to a fundamental phase for watermarking, and Cabot merely opens the door so that a person of ordinary skill in the art would “try to . . . explore further to develop a watermark” using harmonic phase coding data. Id.” slip op. at 24
Patent outcomesUS 7,289,961 not shown unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,289,961 - Apple Inc. v. Scramoge Technology Ltd.No claims unpatentablePTAB · May 5, 2023 · IPR2022-00118 · APJ Brian J Mcnamara · IPR · Final written decision
Claims 6, 7, 16, 17, 19, and 20 were not shown unpatentable over Hasegawa under § 103 because Hasegawa did not disclose the separately claimed connection terminals.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“We turn first to the language of the claim. Claim 6 recites a coil, a first connection terminal connected to an outer end of the coil and a second connection terminal connected to an inner end of the coil (claim limitations 6.1, 6.2, and 6.3). Claim 6 further recites a connecting unit (claim limitation 6.5) comprising a third connection terminal connected to the first connection terminal, a fourth connection terminal connected to the first connection terminal, and a wiring layer connected to the third connection terminal (claim limitations 6.6, 6.7, and 6.8). Claim 6 does not explicitly recite a connection between the coil and the connecting unit, except through the first and second terminals, i.e., the first and second connection terminals are connected to the outer and inner ends of the coil and the third and fourth connection terminals of the connecting unit, respectively. The Specification informs us that “the coil unit 200 (subject matter not recited in the claim) may include first connection terminal 210, a second connection terminal 220 and a coil 230” and that “first connection terminal 210 is located at one end of the coil 230 and the second connection terminal is provided at the other end of the coil 230.” Ex. 1001, 4:57–63. The Specification further states “[t]he first and second connection terminals 210 and 220 are necessary for connection with the connecting unit 300.” Id. at 4:66–67. The claim recites the first and second connection terminals are connected to the coil; and the Specification describes the first and second connection terminals 210, 220 as being part of coil unit 200, a structure different from coil 230. The Specification does not describe an embodiment in which the first and second connection terminals are not part of a coil unit that is separate from the connecting unit. Therefore, we do not read claim 6 to encompass an embodiment in which the first and second connection terminals are part of the coil itself or are part of a connecting unit that is directly connected to the coil without a separate coil unit in between them.. A reading of the claim that is consistent with the claim language and the Specification also requires we read claim 6 to require that the coil and the connecting unit are separate.” slip op. at 11
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“The fundamental premise of Petitioner’s argument is inconsistent with our claim construction. Section V supra. Petitioner acknowledges that in Hasegawa the entire line 34, 35 (not just the ends) is a part of the connecting unit. Pet. 31; Reply 2; Hr’g. Tr. 10:1–14:15. In Hasegawa, then, all the connection terminals (the first, second, third and fourth terminals) are on the connecting unit. Thus, we agree with Patent Owner that Hasegawa does not disclose the claimed first and second connection terminals connected to the coil as separate and distinct from the claimed “connecting unit” that overlaps the receiving space. Petitioner has thus failed to establish by a preponderance of the evidence that claim 6 is unpatentable. 3. Independent Claim 16 Independent claim 16 is similar to claim 6, except that instead of limiting the location of the connecting unit to “overlapping the receiving space in a vertical direction perpendicular to the adhesive layer,” as recited in claim 6, claim 16 recites only that the connecting unit is “disposed corresponding to the receiving space.” The difference between claims 6 and 16 does not bear on the parties’ arguments or on the substance of our analysis concerning the disclosures in Hasegawa. See Pet. 38–42. Therefore, we determine that Petitioner has failed to establish by a preponderance of the evidence that challenged claim 16 is unpatentable over Hasegawa.” slip op. at 19
- PTAB / AIA Trials › Motions to amend / substitute claimsNot reached
“Having reviewed the arguments of the parties and the supporting evidence, we conclude that Petitioner has not demonstrated by a preponderance of the evidence that the challenged claims are unpatentable. Having determined that no challenged claims are unpatentable, we dismiss Patent Owner’s Revised Motion to Amend as moot.” slip op. at 2
Patent outcomesUS 10,804,740 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,804,740 - Corning Optical Communications LLC v. Dali Wireless, Inc.No claims unpatentablePTAB · Oct 11, 2022 · IPR2021-00762 · APJ Sharon Fenick · IPR · Final written decision
The Board held claims 1–12 not unpatentable because Petitioner did not show that FlexWave Prism Manual was publicly accessible before the critical date.
RulingsFinal written decision- Skill levelSkill level board ownOther
“Our determination regards obviousness to an ordinarily skilled person rather than “to the judge, or to a layman, or to those skilled in remote arts, or to geniuses in the art at hand.” Envtl. Designs, Ltd. v. Union Oil Co., 713 F.2d 693, 697 (Fed. Cir. 1983)). We therefore remove the open-ended term “a minimum of” from Petitioner’s proposal, and adopt for this decision the following definition: “a person of ordinary skill in the art at the time of the claimed invention would have had: (1) a bachelor’s degree in electrical engineering; and (2) 3–4 years of industry experience in wireless communications networks and engineering. However, an individual with an advanced degree in electrical engineering would require less industry experience (e.g., 1–2 years).” This level of skill comports with the teachings of the ’508 patent and the asserted prior art.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Only those terms that are in controversy need be construed, and only to the extent necessary to resolve the controversy. Nidec Motor Corp., 868 F.3d at 1017 (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). No claim terms require construction to resolve the controversy before us. See Nidec, 868 F.3d at 1017.” slip op. at 8
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“c) Conclusion After considering this record evidence, Petitioner has not shown that one of ordinary skill would have performed the searches Mr. Stravitz performed on the EAS database. Mr. Stravitz’s searches appear to have been performed at the direction of counsel to discover whether and how FlexWave Prism Manual could be retrieved from the EAS database by someone who knew about FlexWave Prism Manual, without consideration of whether one of ordinary skill would have performed the searches absent a search directed towards FlexWave Prism Manual or would have known about the EAS database. Thus, Petitioner has not shown that one interested in and ordinarily skilled in the art relating to the ’508 patent would have found FlexWave Prism Manual using the EAS database.” slip op. at 25
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“For these reasons, our determination is that FlexWave Prism Manual has not been shown to be publicly available. E. Conclusion For the reasons given above, Petitioner has not met its burden to show that FlexWave Prism Manual was disseminated or otherwise made available to the extent that persons of ordinary skill in the art, exercising reasonable diligence, could have located it. All instituted grounds of unpatentability rely on FlexWave Prism Manual. Pet. 23–77; see Dec. on Inst. 17–29. Therefore, Petitioner fails to demonstrate by a preponderance of the evidence that any of the challenged claims are unpatentable based on the instituted grounds.” slip op. at 27
Patent outcomesUS 9,826,508 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,826,508 - Corning Optical Communications LLC v. Dali Wireless, Inc.No claims unpatentablePTAB · Jul 19, 2022 · IPR2021-00408 · APJ Sharon Fenick · IPR · Final written decision
Claims 1–19 are not unpatentable because Petitioner did not show that Kummetz-464 discloses the claimed QoS of network traffic used to reconfigure sectors.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for patent owner
“In the Decision on Institution, we concluded that one of ordinary skill would have had (1) a bachelor’s degree in electrical engineering; and (2) a minimum of 3-4 years of industry experience in wireless communications networks and engineering. Dec. on Inst. 9–10 (citing Ex. 1003 ¶ 28). We additionally concluded that “an individual with an advanced degree in electrical engineering would require less industry experience (e.g., 1-2 years),” and that “the person of ordinary skill at the time of the invention would additionally possess some experience with or knowledge of DAS.” 6 The record does not include any evidence of secondary considerations of nonobviousness. court action), 100:15–102:8). Patent Owner notes its agreement with this conclusion, and its expert adopted it. PO Resp. 22; Ex. 2023 ¶ 5. Petitioner provides no further comment in its post-institution briefing. After considering the record, we conclude that the same level of skill we adopted in the Decision on Institution should apply. This level of skill comports with the disclosures of the ’454 patent and the asserted prior art.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“As noted in the Decision on Institution, a claim construction order issued in the related district court action in the final week of the period set forth for institution. Id. at 16 n.11. This claim construction order adopts Petitioner’s proposed definition. Ex. 1017, 14–21. has not established that Kummetz-464 teaches the determination of a QoS of network traffic. Thus, we need not resolve the parties’ claim construction dispute. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 12
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“We agree with Petitioner that the relative concentration of devices is a function of the number of users, which is a KPI. See Pet. 31; Ex. 1003 ¶ 95. But we determine Petitioner fails to establish the relative concentration of devices is a quality of service of a network traffic. Petitioner’s declarant describes QoS as a function of KPIs without more, and asserts that the relative concentration of devices between coverage zones would be a QoS. Ex. 1003 ¶¶ 93–103 (concluding that “Kummetz[-464] discloses that the controller 108 can determine one or more traffic indicators (i.e., KPIs) and a function of the traffic indicators (i.e., QoS = function of the one or more KPI” and “network performance is expressed by a number of KPIs which leads to the QoS”). While Petitioner’s declarant describes this as consistent with the teachings of the ’454 patent relating to adjusting traffic loads, no explanation is provided as to how capacity (as in Kummetz-464’s example) would meet the requirement of a QoS of network traffic, and no further testimony or evidence was adduced regarding what one of ordinary skill in the art would have thought QoS to mean. See id. We credit the testimony of Patent Owner’s expert that the plain meaning of “QoS” requires that the QoS be a value that indicates network performance.7 Ex. 2023 ¶ 55. We agree with Patent Owner that Petitioner does not establish Kummetz-464 discloses that a concentration of wireless devices is indicates network performance. See PO Resp. 43. As noted by Patent Owner during oral argument, “[y]ou can have perfect information of relative concentration of devices and still not know anything about network traffic.” Tr. 36. Patent Owner provides an example of a church service in which there are a large number of users (large concentration of user devices), but no traffic. Tr. 38. Conversely, we observe that a small concentration of user devices may have a large impact on network performance if engaged in activities requiring heavy network traffic usage. 7 We respectfully disagree with the dissent that the specification requires a different interpretation. The ’454 patent describes a QoS as a weighted combination of three KPIs (cost factors) that indicates network performance. See Ex. 1001 11:48–50, 14:41–51. This supports Patent Owner’s position that the plain and ordinary meaning of quality of service (QoS) indicates network performance. Although the KPIs discussed are exemplary, to fall within the bounds of claim 1, the plain meaning of quality of service of a network traffic requires the function to indicate network performance (i.e., the “quality” of the network). be a function of KPIs, but it is not a QoS according to the plain meaning of that term, and is not “of a network traffic” because it may be unrelated to network traffic. Thus, Petitioner fails to persuade us that Kummetz-464’s description of a concentration of wireless devices discloses a quality of service of a network traffic. We further determine that Petitioner fails to establish Kummetz-464’s” slip op. at 23
Patent outcomesUS 10,506,454 not shown unpatentableClaim construction§ 102 anticipationcites Phillips · KSR · GrahamPatents in suitUS 10,506,454 - Apple Inc. / HTC Corporation et al. v. Invt Spe LLCNo claims unpatentablePTAB · Mar 25, 2020 · IPR2018-01473 · APJ Thu A Dang · IPR · Final written decision
Claims 1–3, 5–9, and 11 were not shown unpatentable under § 103 over Keskitalo and Lindell because Petitioner did not adequately explain why a skilled artisan would combine their teachings.
RulingsFinal written decision- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner
“Petitioner contends that “[c]laim 1 includes limitations in means-plus[-]function format, which creates a rebuttable presumption that the [Applicant] intended to invoke 35 U.S.C. § 112, ¶ 6.”3 Pet. 7; see also Altiris Inc. v. Symantec Corp., 318 F.3d 1363, 1375 (Fed. Cir. 2003). In the Decision on Institution, we addressed Petitioner’s proposed constructions of the means-plus-function terms (Pet. 10–12), and we determined that Petitioner has set forth proposed structures that support these limitations. Dec. on Inst. 8–12; see 37 C.F.R. § 42.104(b)(3) (2018).” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“As for the other claim limitations of independent claims 1, 6, and 7, and claims 2, 3, 5, 8, 9 and 11 depending therefrom, neither party has proposed a construction of any other term. See Pet. 6–7; PO Resp. 12–13. We determine that we need not further construe expressly any other claim terms to resolve the arguments before us. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (explaining that only claim terms that are in controversy need to be construed and only to the extent necessary to resolve the controversy); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. to an inter partes review).” slip op. at 13
- Skill levelSkill level petitioner adoptedDecided for petitioner
“may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). In that regard, Petitioner’s expert, Andrew C. Singer, Ph.D., testifies that a POSITA at the time of the invention would have been a person having a Bachelor’s degree in electrical engineering or the equivalent plus three years of experience working with digital communication systems or in network engineering or a Master’s degree in electrical engineering with an emphasis on communication systems or the equivalent plus one year of experience working with digital communication systems or in network engineering. Pet. 4–5; Ex. 1003 ¶ 35. Patent Owner does not dispute Dr. Singer’s assessment of the level of ordinary skill in the art. See generally PO Resp. We adopt and apply Dr. Singer’s assessment of the level of ordinary skill in the art, which is consistent with the level of ordinary skill reflected by the prior art of record. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (holding that absent evidence to the contrary, “the prior art itself [may] reflect[] an appropriate level” of ordinary skill in the art).” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundReasonable expectation not foundNot shown unpatentable
“position of Patent Owner. In particular, we are unpersuaded by Petitioner’s contention that it would have been obvious to modify Keskitalo such that its predetermined thresholds for transmission power are average transmission power values in accordance with the teachings of Lindell. Pet. 26. That is, we are not persuaded that Petitioner has demonstrated by the preponderance of the evidence that it would have been obvious to have used Lindell’s average transmission power values as Keskitalo’s predetermined thresholds for transmission power. See Harmonic, 815 F.3d at 1363 (citing 35 U.S.C. § 312(a)(3) as requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”); Magnum Oil Tools, 829 F.3d at 1380 (holding that Petitioner cannot satisfy its burden of proving obviousness by employing “mere conclusory statements”).” slip op. at 24
Patent outcomesUS 6,611,676 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 6,611,676 - Ebay Inc. v. Masterobjects, Inc.No claims unpatentablePTAB · Jul 25, 2018 · IPR2017-00740 · APJ Christa P Zado · IPR · Final written decision
Claims 1–3, 6, 7, 9, 12, 15–17, 21, 24–26, and 32–37 were not shown unpatentable because the petition did not establish the claimed usability test.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“skill in the art include, but are not limited to, the types of problems encountered in the art, the sophistication of the technology, and educational level of active workers in the field. In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995).” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“interpreted according to their “broadest reasonable construction in light of the specification of the patent” in which they appear. 37 C.F.R. § 42.100(b); see also Cuozzo Speed Techs., LLC, v. Lee, 136 S. Ct. 2131, 2141–46 (2016). We interpret claim terms using “the broadest reasonable meaning of the words in their ordinary usage as they would be understood by one of ordinary skill in the art, taking into account whatever enlightenment by way” slip op. at 10
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference is prior artDecided for petitioner
“1. Overview of Kravets (Ex. 1003) Petitioner asserts Kravets is prior art under 35 U.S.C. § 102(e). Pet. 15. Patent Owner does not dispute Petitioner’s assertion that Kravets is prior art. Kravets issued from a patent application filed January 31, 2000. Ex. 1003, [22]. Based on the earliest possible priority date of the ’024 patent (see supra Section I.C), for purposes of this Final Written Decision, we conclude that Kravets is prior art to the ’024 patent under 35 U.S.C. § 102(e).” slip op. at 12
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“display to the user includes 1) PSS 40 identifying a first set of search terms, which preferably comprises 500 search terms, where the first n characters of each search term matches the n-character input string in the request (Ex. 1003, 6:17–36); and 2) PSS 40 selecting a second set of search terms, such as 6 terms, from the first set of search terms by selecting the 6 terms that have the highest value scores (Ex. 1003, 7:26–40). This disclosure does not describe a client object testing for usability by checking that a return message corresponds to the latest query. First, this disclosure relates to actions performed by the server, rather than the client. Id. at 6:17–36, 7:26–40 (describing PSS 40 performing this technique). But claim 1 requires the client object perform the test for usability. Ex. 1001, 32:2–3 (“the client object tests the usability of the results in the return message”) (emphasis added).” slip op. at 20
Patent outcomesUS 8,539,024 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 8,539,024 - Securus Technologies, Inc. v. Global Tel*link CorporationNo claims unpatentablePTAB · Nov 16, 2017 · IPR2016-01123 · APJ Georgianna W Braden · IPR · Final written decision
Claims 1–11 were not shown unpatentable under either § 103 ground because Petitioner failed to explain adequately why or how a skilled artisan would combine the references.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Petitioner proposes constructions for the claim terms “continuous noise detection algorithm” and “power distribution filter algorithm.” Pet. 24–28. Patent Owner disputes Petitioner’s proposed constructions for these terms. Prelim. Resp. 8–11. After analyzing the claims and supporting specification of the ’726 patent, we determine that we need not provide express constructions for the disputed claim terms in order to reach our decision.” slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not dispute Dr. Williams’ testimony. See generally Prelim. Resp. Patent Owner’s Declarant, Dr. Leonard J. Forys (“Dr. Forys”), however, proffers his own assessment regarding a person of ordinary skill in the art relevant to the ’726 patent. According to Dr. Forys, one of ordinary skill in the art would have had “a B.S. degree in Electrical Engineering, Computer Science, or an equivalent field as well as at least 3–5 years of academic or industry experience in communications systems, or comparable industry experience.” Ex. 2002 ¶ 29. Dr. Forys does not address Dr. Williams’ testimony in this regard or otherwise indicate whether his analysis would change if Dr. Williams’ proffered level of ordinary were adopted. Id. We have reviewed the ’726 patent, the types of problems and solutions described in the ’726 patent and cited prior art, and the testimony of Dr. Williams and Dr. Forys (who mostly agree as to the level of skill of an ordinarily skill artisan). Based on our review, we adopt and apply Dr. Williams’s definition of a person of ordinary skill in the art at the time of the claimed invention for purposes of this Decision. In addition, our analysis would not change if Dr. Forys’ proffered level of ordinary skill were adopted.” slip op. at 14
- Expert testimonyPetitioner expert discountedDecided for patent owner
“time of the ’726 patent would likely understand the relationship between power and energy. We also agree that there is a relationship between power and energy, and that it is possible to derive information about one from the other. See Ex. 1012, 18:14–25:8; Ex. 2001, 25:10–27:14; Ex. 2005, 238. Based on the evidence of record, we do not agree, however, that power and energy “are essentially equivalent and can be used interchangeably” as asserted in the Petition. See id.; see Pet. 36 (citing Ex. 1009 ¶¶ 174–177). Nor do we agree one of ordinary skill in the art would have understood that the Gupta energy threshold is the same as the power level threshold disclosed in Li. See Ex. 1012, 18:14–25; Ex. 2001, 25:10–27:14; Ex. 2005, 238. Petitioner’s reliance on Dr. Williams’s testimony regarding Gupta’s disclosure that “[a] minimum energy threshold may be programmed to [the cadence tone’s] required power level for a valid signal on a line” is equally unpersuasive. Ex. 1009 ¶ 181 (citing Ex. 1004, 6:41–44). We are unpersuaded because neither Petitioner nor Dr. Williams explains sufficiently how Gupta’s minimum energy threshold relates to a required power level or how it relates to Li’s power estimator and the purpose of Li’s power estimators. Given the lack of equivalence between power and energy, we find Petitioner fails to present sufficient evidence explaining why a person of ordinary skill in the art would have switched from detecting a power threshold, such as that described in Li and required by the challenged claims, to detecting an energy threshold as disclosed in McNitt and Gupta. Petitioner must articulate a reason why a person of ordinary skill in the art would combine the prior art references. Personal Web Techs. v. Apple, 848 F.3d 987, 991–92 (Fed. Cir. 2017); In re NuVasive, 842 F.3d 1376, 1382 (Fed. Cir. 2016); Metalcraft of Mayville, Inc. v. The Toro Company, 848 F.3d 1358, 1366 (Fed. Cir. 2017) (“[I]t is insufficient to simply conclude the [prior art] combination would have been obvious without identifying any reason why a person of skill in the art would have made the combination.”); see Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (“obviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention”). Conclusory statements alone, even those provided by a declarant, are inadequate to demonstrate a rationale for why a person of ordinary skill in the art would combine the teachings from prior art references. NuVasive, 842 F.3d at 1383. Instead, Petitioner’s arguments must be supported by a “reasoned explanation.” Id. (citing In re Lee, 277 F.3d 1338, 1342, 1345 (Fed. Cir. 2002)). We understand that a person of ordinary skill is a person of ordinary creativity, not an automaton, but “[w]ithout any explanation as to how or why the references would be combined to arrive at the claimed invention, we are left with only hindsight bias that KSR warns against.” Metalcraft, 848 F.3d at 1367 (“‘[T]he obviousness analysis cannot be confined by a formalistic conception of the words teaching, suggestion, and motivation,’ we also recognize that we cannot allow hindsight bias to be the thread that stitches together prior art patches into something that is the claimed invention” (quoting KSR, 550 U.S. at 420–21)).” slip op. at 30
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundReasonable expectation not foundNot shown unpatentable
“Petitioner must articulate a reason why a person of ordinary skill in the art would combine the prior art references. Personal Web Techs. v. Apple, 848 F.3d 987, 991–92 (Fed. Cir. 2017); In re NuVasive, 842 F.3d 1376, 1382 (Fed. Cir. 2016); Metalcraft of Mayville, Inc. v. The Toro Company, 848 F.3d 1358, 1366 (Fed. Cir. 2017) (“[I]t is insufficient to simply conclude the [prior art] combination would have been obvious without identifying any reason why a person of skill in the art would have made the combination.”); see Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (“obviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention”). Conclusory statements alone, even those provided by a declarant, are inadequate to demonstrate a rationale for why a person of ordinary skill in the art would combine the teachings from prior art references. NuVasive, 842 F.3d at 1383. Instead, Petitioner’s arguments must be supported by a “reasoned explanation.” Id. (citing In re Lee, 277 F.3d 1338, 1342, 1345 (Fed. Cir. 2002)). We understand that a person of ordinary skill is a person of ordinary creativity, not an automaton, but “[w]ithout any explanation as to how or why the references would be combined to arrive at the claimed invention, we are left with only hindsight bias that KSR warns against.” Metalcraft, 848 F.3d at 1367 (“‘[T]he obviousness analysis cannot be confined by a formalistic conception of the words teaching, suggestion, and motivation,’ we also recognize that we cannot allow hindsight bias to be the thread that stitches together prior art patches into something that is the claimed invention” (quoting KSR, 550 U.S. at 420–21)). We agree with Petitioner that the cited references do not need to be physically combinable to render claim 1 obvious. In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012) (“The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference.”); see also In re Etter, 756 F.2d 852, 859 (Fed. Cir. 1985) (en banc). Obviousness, however, “may not be established using hindsight or in view of the teachings or suggestions of the inventor.” Para-Ordnance Mfg. v. SGS Importers Int’l, 73 F.3d 1085, 1087 (Fed. Cir. 1995) (citing W.L. Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1551, 1553 (Fed. Cir. 1983)). Additionally, it is impermissible for Petitioner to “use the claimed invention as an instruction manual or ‘template’ to piece together the teachings of the prior art so that the claimed invention is rendered obvious.” In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) (citing In re Gorman, 933 F.2d 982, 987 (Fed. Cir. 1991)). Accordingly, Petitioner must set forth clearly in the Petition which references it is relying on for each specific limitation and how those combined teachings would render the challenged claims obvious. See 35 U.S.C. § 312(a)(3).” slip op. at 31
Patent outcomesUS 8,630,726 not shown unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,630,726 - Samsung Electronics Co., Ltd. / Micron Technology, Inc. et al. v. Elm 3ds Innovations, LLCNo claims unpatentablePTAB · Aug 22, 2017 · IPR2016-00770 · APJ Glenn J Perry · IPR · Final written decision
Claims 12, 13, 24, 36, 37, 38, 83, 86, 87, and 132 were not shown unpatentable over the asserted combinations because the evidence did not establish substantial flexibility or motivation for the proposed dielectric substitutions.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner, with support of its declarant Paul D. Franzon, Ph.D., contends that one of ordinary skill in the art at the time of the inventions of the challenge patents “would have had at least a B.S. degree in electrical engineering, material science, or equivalent thereof, and at least 3–5 years of experience in the relevant field, e.g., semiconductor processing.” Pet. 7 (citing Ex. 1002 ¶¶ 52–53). Dr. Franzon’s testimony as to the level of 12 ordinary skill is based on “the type of problems encountered in the art, prior art solutions to those problems, the rapidity with which innovations are made, the sophistication of the technology, and the educational level of active workers in the field.” Ex. 1002 ¶ 53. Patent Owner did not propose expressly a particular level of ordinary skill. See generally PO Resp. At the oral hearing, Petitioner indicatedthat there did not seem to be any dispute as to the correct level of ordinary skill. Tr. 112:11–14 (“I don’t think there was any dispute about whether [Dr. Franzon’s proposed level of ordinary skill] was the correct level of skill, although Patent Owner can correct me.”). Having reviewed the prior art asserted in these proceedings (see, e.g., Exs. 1004–07, 1009, 2160), we determine that the level of ordinary skill proposed by Petitioner’s declarant is consistent with the challenged patent and the referenced prior art, and we adopt Petitioner’s proposed definition of the level of ordinary skill in the art for the purposes of the analysis below.” slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“In the context of the Elm 3DS family, we find that the broadest reasonable interpretation of “substantially flexible” is the same as our construction under the Philips standard, which was the standard applied in IPR2016-00386. Under the broadest reasonable construction standard, we presume a claim term carries its ordinary and customary meaning, which “is the meaning that the term would have to a person of ordinary skill in the art in question” at the time of the invention. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). As discussed in detail in the Final Written Decisions in IPR2016-00386, IPR2016-00387, and IPR2016- 00388, the ordinary and customary meaning of “substantially flexible” is “largely able to bend without breaking.” Also as discussed extensively in” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“same as set forth in IPR2016-00708. Each of the challenged claims in this review require the use of a dielectric having a stress of less than 5 x 108 dynes/cm2 tensile. The evidentiary record in this case with regard to dielectric substitution adds nothing further to the evidentiary record established in IPR2016-00708. For the same reasons set forth in our Final Written Decision in IPR2016-00708, we determine that Petitioner has not met its burden to demonstrate by a preponderance of the evidence that a person of ordinary skill in the art would have made the proposed dielectric substitution.” slip op. at 21
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“As noted in our claim construction section, above and as referenced in our Final Written Decision in IPR2016-00386, a preponderance of the evidence establishes that, in the context of semiconductor substrates, mere thinning is not the same as flexibility—being able to bend without breaking. 20 Although Petitioner presents arguments attempting to demonstrate thinning, there are no arguments that this thinning necessarily results in flexibility. Thus, we determine that Petitioner has not met its burden to demonstrate that the required “substantial flexibility.” This reason alone sufficiently supports our conclusion. However, we also conclude, as set forth below that for a second, independent reason, Petitioner has not established that the challenged claims are unpatentable. Petitioner has not sufficiently established that one of ordinary skill would have substituted the dielectric material of Leedy ’695 for the various layers proposed for substitution in Hsu. Therefore we do not credit Leedy ’695 as providing any potential “substantial flexibility” to Hsu.” slip op. at 20
Patent outcomesUS 8,907,499 not shown unpatentableClaim construction§ 103 obviousnesscites KSRPatents in suitUS 8,907,499
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.