• Whatfix Inc. v. Walkme Ltd.No claims unpatentable
  PTAB · Mar 28, 2025 · IPR2024-00065 · APJ Charles J Boudreau · IPR · Final written decision

  Claims 1–20 were not shown unpatentable under the Symons and Williams, Allen, or Krishnan and Radhakrishnan obviousness grounds.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “Petitioner proposes that a “person of ordinary skill in the art (‘POSITA’) in the field of the ’317 patent would have [had a] bachelor’s degree in engineering or computer science and two years of experience working on NLP [natural language processing] or automation processes” or “[a]lternatively . . . would have [had] five to six years of experience working on NLP or automation processes.” Pet. 6 (citing Ex. 1003 ¶¶ 43–45). We adopted Petitioner’s proposal for purposes of the Decision on Institution, explaining that it appeared to be consistent with the evidence of record, including the asserted prior art and the ’317 patent. Dec. 12. is inconsistent with the asserted Symons prior art and with factors (4)–(6) set forth in Daiichi Sankyo. PO Resp. 20–21 (citing Ex. 2002 ¶¶ 36–45). According to Patent Owner, the technology of the ’317 patent was “evolving rapidly” and the level of sophistication in the technology was “relatively low” in November 2017. Id. at 21–22 (citing Ex. 1004, 1–2; Ex. 1009, 2; Ex. 2002 ¶ 42; Ex. 2003 (transcript of June 26, 2024, deposition of Dr. Beigi), 141:2–9, 191:18–197:5; Ex. 2007; Ex. 2008). Further, Patent Owner contends, “[a]ctive work[ers] in the field, like Symons,[8] had less experience than [Dr. Beigi] proposed.” Id. at 22 (citing Ex. 2002; Ex. 2003, 112:12–24). Accordingly, Patent Owner argues, “[t]he evidence of record demonstrates a more appropriate level of skill would [be] a worker who had some education, formal or informal, in computer science and 1–2 years’ work experience with chatbots using NLP and/or automation processes.” Id. (emphasis omitted) (citing Ex. 1003 ¶ 44; Ex. 2002 ¶ 44; Pet. 5–6). “Under Patent Owner’s more appropriate analysis,” Patent Owner contends, “Dr. Beigi’s interpretation of what a POSITA would understand are overstated,” as “[h]e expects a POSITA to have ‘more experience’ (like himself) and apply a more ‘technically correct’ (in his view) understanding of the prior art than less skilled authors and artisans would have understood.” Id. (citing Ex. 2003, 141:2–9, 191:18–197:5). Nonetheless, Patent Owner argues, “[s]hould the Board continue to apply Petitioner’s” slip op. at 12

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

    “standard as would be used by a district court to construe a claim in a civil action involving the validity or infringement of a patent. 37 C.F.R. § 42.100(b). Under that standard, claim terms are given their ordinary and customary meaning, as would have been 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 of record. Id.; Phillips v. AWH Corp., 415 F.3d 1303, 1312–19 (Fed. Cir. 2005) (en banc); Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365–66 (Fed. Cir. 2012). “The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (quoting Vivid Techs., Inc. v. Am. Sci. Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). construction” “[f]or purposes of this Petition.” Pet. 6. Patent Owner similarly represents that “[t]he parties agree that the claim terms used in the ’317 Patent claims have their ‘ordinary and custom[ary] meanings of terms’ as would be understood by a POSITA as of November 5, 2017.” PO Resp. 24. After reviewing the parties’ arguments and evidence, we determine that no express claim construction is necessary. See Realtime Data, 912 F.3d at 1375.” slip op. at 15

  • Expert testimonyPatent owner expert creditedDecided for patent owner

    “Ex. 1042 ¶¶ 35–37). Further, Petitioner asserts, “the Petition relies on Williams, not Symons, for its teachings of a ‘web-based’ target system.” Id. (citing Pet. 40). Petitioner does not, however, address Patent Owner’s main point, i.e., that the Petition relies on Symons’s illustration of its RPA bot purportedly filling in a text input field in the GUI of the Cronos Email Signature Generator for limitation 1[g] but relies on Symons’s illustration of its RPA bot interacting with a widget in Internet Explorer for limitation 1[h], despite the recitation in limitation 1[h] of “interacting with a widget in the GUI.” See, e.g., PO Resp. 38. Dr. Beigi acknowledges that, “[a]ccording to the ’317 patent, a widget is a GUI element,” and he concludes, with reference to Petitioner’s annotated version of the screenshot from page 13 of Exhibit 1006 reproduced above, that “Symon[s]’s GUI button is a widget in a GUI.” Ex. 1003 ¶ 100 (emphasis added) (citing Ex. 1001, 10:19–21). But neither the Petition, nor the Reply, nor Dr. Beigi’s testimony persuasively explains how a dialog box in Internet Explorer teaches or suggests a widget in the Cronos GUI. The Reply’s contention that “the Petition relies on Williams . . . for its teachings of a ‘web-based’ target system” is unavailing, because the issue is not whether either the Cronos program or Internet Explorer is “web-based”12 but whether Petitioner has identified a teaching or suggestion of an implementation of an automation process that fills in a text input field in a GUI of a web-based target system and interacts with a widget in the same GUI. 12 In this regard, we credit Mr. Zatkovich’s statement that Internet Explorer is local to and resident on the user’s computer. Ex. 2002 ¶¶ 161–162; cf. Ex. 2003, 219:24–220:5 (Dr. Beigi testifying that he is “not sure where this Windows software is running”).” slip op. at 39

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundReasonable expectation not foundNot shown unpatentable

    “Petitioner’s reasoning fails to explain “how the combination of the two references was supposed to work.” See Personal Web Techs., LLC v. Apple, Inc., 848 F.3d 987, 994 (Fed. Cir. 2017). More specifically, Petitioner fails to explain how or why a person of ordinary skill in the art would be motivated to perform Krishnan’s automation process (i.e., fulfilling customer requests) by implementing an “automation process by interacting with a Graphical User Interface (GUI)” and “simulating user input to the GUI,” as purportedly taught by Radhakrishnan. Petitioner’s arguments are focused toward using Radhakrishnan’s RPA bot to perform Krishnan’s customer service requests (i.e., automation process) but fail to explain how Radhakrishnan’s RPA bot’s mirroring of the user’s operations (i.e., the simulation on the displayed user interface) as applied in Krishnan would work or provide sufficient reasoning to do so. See Personal Web, 848 F.3d at 993–994 (“[I]t does not imply a motivation to pick out . . . two references and combine them to arrive at the claimed invention”); In re Kahn, 441 F.3d 977, 986 (Fed. Cir. 2006) (“[M]ere identification in the prior art of each element is insufficient to defeat the patentability of the combined subject matter as a whole”).” slip op. at 60

  Patent outcomesUS 11,558,317 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,558,317
• Whatfix Inc. v. Walkme Ltd.Some claims unpatentable
  PTAB · Mar 18, 2025 · IPR2023-01368 · APJ Kara L Szpondowski · IPR · Final written decision

  Claims 1–8, 12, 13, 16, 19–23, 26, 29, and 31 are unpatentable over Symons and Williams; the remaining challenged claims were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “Petitioner proposes that a person of ordinary skill in the art (“POSITA”) “would have a bachelor’s degree in engineering or computer science and two years of experience working on NLP [natural language processing] and automation processes. Alternatively, a POSITA would have five to six years of experience working on NLP and automation processes.” Pet. 5–6 (citing Ex. 1003 ¶¶ 50–52). We adopted Petitioner’s proposal for purposes of the Decision on Institution, explaining that it appeared to be consistent with the evidence of record, including the asserted prior art and the ’664 patent. Dec. 12.” slip op. at 14

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Plain and ordinary meaningDecided for petitioner

    “We interpret claims using the same claim construction standard that would be used to construe the claims in a civil action under 35 U.S.C. § 282(b). 37 C.F.R. § 42.100(b). Under that standard, words of a claim are generally given their ordinary and customary meaning as understood by a person of ordinary skill in the art at the time of the invention. Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc). However, “the specification may reveal a special definition given to a claim term by the patentee that differs from the meaning it would otherwise possess, and “[i]n such cases, the inventor’s lexicography governs.” Id. at 1316. A patentee may “choose to be his or her own lexicographer by clearly setting forth an explicit definition for a claim term that could differ in scope from that which would be afforded by its ordinary meaning.” Rexnord Corp. v. Laitram Corp., 274 F.3d 1336, 1342 (Fed. Cir. 2001). We only need to construe the claims to the extent necessary to resolve the parties’ disputes. See Realtime Data, LLC. v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019).” slip op. at 18

  • ExcludeGranted in part

    “Exhibits 2015–2017 are three comments made on the Internet in association with the Symons Article. These comments are also shown in Exhibit 2005. According to our rules, “[s]upplemental evidence is not filed at the time of the objection, but simply served, and is filed only in support of an opposition to a motion to exclude.” CTPG14 79 (citing 37 C.F.R. §§ 42.64(a), 42.64(b)(2)). Because no motion to exclude was filed by Petitioner, we agree with Petitioner that Patent Owner improperly filed Exhibits 2014–2017. However, as described above, the comments in Exhibit 2015–2017 are already part of the record in Exhibit 2005, and Petitioner has not filed a motion to expunge Exhibit 2005. Therefore, we are not aware of any harm to Petitioner by leaving these Exhibits in the record, as the information is 14 PTAB Consolidated Trial Practice Guide, November 2019 (the “CTPG”), available at: https://www.uspto.gov/sites/default/files/documents/tpgnov.pdf. already there. See Tr. 100:8–14. Moreover, retaining these Exhibits in the record will avoid confusion in the record and serve the public interest in a full and complete record. Accordingly, we will expunge only Exhibit 2018, as agreed by the parties, and waive the requirements of 37 C.F.R. § 42.64(b)(2) to the extent necessary to retain entry of Exhibits 2014–2017.” slip op. at 27

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

    “We need not determine whether Symons alone teaches this limitation, because we are persuaded that Petitioner has sufficiently shown that the combination of Symons and Williams teaches this limitation. We agree with Petitioner that, by disclosing that “chatbots can engage in natural language dialog with the caller and discern, through a series of interactions, the nature of the call[,] . . .capture information required to further handle the request . . [and] then trigger a robot, passing the required information to the robot to complete the request,” Williams teaches “determining . . . an automation process,” as recited in limitation 1[c]. See Pet. 19 (citing Ex. 1011, 3) (some emphasis omitted); see Ex. 1003 ¶ 95. We disagree with Patent Owner’s arguments that the combination is “ill-defined.” Sur-reply 8–9. Petitioner argues that the combination of Symons and Williams “results in a chatbot-RPA bot system capable of handling a user request for automated email signature generation along with other requests, such as automated generation of an electronic letterhead or an electronic invoice.” Pet. 20 (citing Ex. 1003 ¶ 98). In other words, in addition to the capability of handling the automated email signature generation (as taught in Symons), the combined chatbot-RPA bot system can handle other requests as well (as taught in Williams). Further, we agree with Petitioner that “[t]he ability to handle multiple requests would expand the capabilities and flexibilities of the chatbot-RPA bot” as well as “improv[e] costs, time, and capabilities.” Id. at 19–20 (citing Ex. 1003 ¶¶ 95, 96, 99). Both Symons and Williams support this argument. Ex. 1011, 2 (stating that RPA “support[s] repetitive, labor-intensive and transactional business processes,” that “software robots [are] an attractive way to drive operational cost reduction,” and that “[a]utomation through RPA can offer a return on investment (ROI) often ranging between 30 and 50 percent”); id. at 5 (stating that “[d]eployment of these cognitive tools promises new levels of productivity and innovation–freeing human workers to focus on higher-value activities and bringing industrial-level quality, consistency and auditability to business processes”); Ex. 1004, 2 (stating that “combining [RPA bots and chatbots] to automate processes can tremendously boost productivity in multiple organizations” and that “[RPA bots] reduce[] costs and human efforts”). Patent Owner’s argument that “[n]either Symons nor Williams suggest using a single chatbot-RPA to handle multiple requests at once in the same conversation thread” (PO Resp. 38) is not commensurate with the claim language, which does not require a single automation process (e.g., chatbot-RPA) to handle multiple inputs (e.g., multiple requests in the same conversation thread). See Reply 9–10. Regardless, however, we are not persuaded that Williams does not suggest using a single chatbot-RPA to handle multiple requests, as argued by Patent Owner. Sur-reply 9; see Ex. 1011, 2 (stating, for example, that “[t]he most common processes enabled by RPA today include back-office administrative processes and workflow within IT, finance, procurement, and human resources functions” and that “RPA enlists software robots to perform complex, nested routines that cut across multiple applications and interact with these systems”); id. at 3 (“Through several scripted questions, the virtual agent can surmise that the supplier is asking for status on their payment and, thus, trigger an RPA robot to access the appropriate enterprise resource planning (ERP) backend system, validate the caller’s details, retrieve necessary information, and provide status back in real-time to the supplier.”).” slip op. at 35

  Patent outcomesUS 10,819,664 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,819,664
• Qualcomm Incorporated / Zyxel Communications Corporation v. Unm Rainforest InnovationsAll claims unpatentable
  PTAB · Aug 15, 2022 · IPR2021-00741 · APJ Kristen L Droesch · IPR · Final written decision

  Claims 1–5 are unpatentable: claims 1, 2, 4, and 5 are anticipated by Yoon, and claim 3 is obvious over Yoon and Naka; substitute claims 6, 7, 9, and 10 are allowed, but claim 8 …

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITANo construction neededDecided for petitioner

    “We decline to adopt Patent Owner’s construction adding “spanning multiple modulation symbols” to the claim limitation “ones of the plurality of coded bits” because it is improper to read an extraneous limitation into the claim from the specification. See E.I. du Pont de Nemours, 849 F.2d at 1433. An extraneous limitation is “a limitation read into a claim from the specification wholly apart from any need to interpret what the patentee meant by particular words or phrases in the claim.” Id. Patent Owner acknowledges that “the ’326 Patent discloses multiple variations of implementing a circular shift,” including inter-symbol circular shifts and intra-symbol circular shifts. See PO Sur-reply 6. Thus, we are not persuaded “spanning multiple modulation symbols” is necessary based on Patent Owner’s arguments and Dr. Vojcic’s testimony that the claimed circular shift is limited to the inter-symbol circular shift and excludes an intra-symbol shift. Patent Owner’s arguments rest on Dr. Vojcic’s unsupported testimony regarding “key aspects,” certain advantages of reordering significant and non-significant bits between consecutive transmissions, and “[a] key characteristic.” See, e.g., Ex. 2001 ¶¶ 48, 62. Dr. Vojcic cites column 7, lines 31 through 52 and reproduces Figures 4A and 4B of the ’326 Patent to support his testimony. See Ex. 2001 ¶¶ 48, 62. These cited disclosures of the ’326 Patent are silent regarding forward error correction decoding, coding diversity, and channel attenuation, and further are silent regarding any relationship to inter-symbol circular shifts alone compared to intra-symbol circular shifts or a combination of intra-symbol circular shifts and inter-symbol circular shifts. Accordingly, Patent Owner does not present a sufficient underlying factual basis to support Dr. Vojcic’s testimony that: (1) a person of ordinary skill in the art “would [] understand that reordering of significant and non-significant bits between consecutive transmissions would provide channel coding, i.e., forward error correction coding, diversity in that bits/symbols that experienced bad channel conditions in one transmission due to reordering in consecutive transmission, may experience good channel conditions in the subsequent transmission/retransmission,” (Ex. 2001 ¶ 48); and (2) “[a] key characteristic of this invention is the ability to take advantage of varying channel attenuation by different modulation symbols,” (Ex. 2001 ¶ 62). We give little weight to Dr. Vojcic’s aforementioned testimony. 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.”). We also do not credit Patent Owner’s unsupported attorney arguments that: (1) advantages of the ’326 Patent cannot be realized by intra-symbol shifts (see PO Resp. 19 (citing Ex. 2001 ¶ 62), 21 (citing Ex. 2001 ¶ 62), 23 (citing Ex. 2001 ¶ 62); PO Sur-reply 2 (citing Ex. 2001 ¶ 62)); (2) the claimed circular shift of one of the plurality of coded bits cannot be realized within only a single symbol (see PO Resp. 19, 21; PO Sur-reply 2); (3) “the implicit but necessary requirement that the plurality of coded bits span multiple modulation symbols is clearly obvious to a [person of ordinary skill in the art] in all aspects of the invention” (PO Sur-reply 4 (citing Ex. 2001 ¶ 62)); and (4) “a person of skill in the art would understand that the invention cannot be implemented within a single symbol, i.e., the plurality of coded bits necessarily spans multiple symbols” (PO Sur-reply 7 (citing Ex. 2001 ¶ 62)). Argument of counsel cannot take the place of objective evidence. See Gemtron Corp. v. Saint-Gobain Corp., 572 F.3d 1371, 1380 (Fed. Cir. 2009) (unsworn attorney argument is not evidence).” slip op. at 14

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “B. Level of Ordinary Skill in the Art Petitioner asserts: As of 2008, a person of ordinary skill in the art (“POSA”) in the field of the ’326 patent would have had a Bachelor’s degree in Electrical Engineering, Computer Engineering, or a related field, and around two years of experience in the design or development of wireless communication systems, or the equivalent. Pet. 26 (citing Ex. 1002 ¶¶ 55–57). Patent Owner offers a slightly different description, as follows: At the relevant time, a person of ordinary skill in the art in the technical field of the ’326 patent would have had at least a master’s degree in Computer Engineering or Electrical Engineering, or equivalent work experience, along with at least 1 year of experience related specifically to wireless communications, including error correction control and modulation. PO Resp. 14 (citing Ex. 2001 ¶ 17). We adopt Patent Owner’s definition of a person of ordinary skill in the art because it is consistent with the level of skill reflected by the ’326 Patent Specification and the asserted prior art, but our conclusions would be the same under Petitioner’s definition.” slip op. at 19

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

    “We do not agree with Patent Owner’s arguments because the arguments are not commensurate in scope with the claim limitations. Contrary to Patent Owner’s arguments, claims 1 and 4 do not recite or require performing a circular shift for each and every retransmission, as suggested by Patent Owner. Claims 1 and 4 recite “performing a circular shift,” which may mean performing one or more circular shifts. See KCJ Corp. v. Kinetic Concepts, Inc., 223 F.3d 1351, 1356 (Fed. Cir. 2000). (“[A]n indefinite article ‘a’ or ‘an’ in patent parlance carries the meaning of ‘one or more’ in open-ended claims containing the transitional phrase ‘comprising.’”). Thus, to meet the limitations of the claim, Yoon need only disclose performing one circular shift, with a variable length related to a modulation order and a number of transmissions. We also do not agree with Patent Owner’s arguments that Yoon does not disclose performing a circular shift on the basis that Yoon discloses a predetermined rearrangement pattern. Claims 1 and 4 do not preclude the use of a “predetermined arrangement pattern” for “performing a circular shift.” Patent Owner’s arguments also overlook Yoon’s explicit disclosures, relied on by Petitioner (see Pet. 30–45) of performing a “2-bit right rotation” for a first retransmission, and a “4-bit right rotation” for a second retransmission for the 64QAM scheme (modulation order 6) of Figure 10, and performing a “1-bit right rotation” for a first retransmission, and a “2-bit right rotation” for a second retransmission 8PSK scheme (modulation order 3) of Figure 11. See Ex. 1010 ¶¶ 104–105, 111–113, Figs. 10–11. Notwithstanding Petitioner’s assertions addressing Yoon’s disclosures of a 1-bit-circular shift within each of the H and L parts of a modulation symbol and compound circular shifts, Yoon’s aforementioned explicit disclosures pertaining to Figures 10 and 11 disclose “performing a circular shift, with variable length related to a modulation order and a number of transmissions, on ones of the plurality of coded bits,” in accordance with the full scope of the claim limitations.” slip op. at 37

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

    “Petitioner asserts that it would have been obvious to one of ordinary skill in the art to incorporate Naka’s techniques of generating a reordered index sequence of coded bits and allocating coded bits based on the reordered index sequence because a person of ordinary skill in the art would have understood that it was one of a finite number of ways that Yoon’s interleaver could have generated a reordered sequence of coded bits, such as directly or by using an index sequence. See Pet. 66 (citing Ex. 1010 ¶¶ 60–61; Ex. 1002 ¶ 177); id. at 68 (quoting KSR, 550 U.S. at 421; citing Ex. 1002 ¶ 175). According to Petitioner, “[u]sing a standard data structure such as [an] array . . . or lookup table to implement the reordered index sequence would have been ‘within a [person of ordinary skill in the art]’s technical grasp,’ and a [person of ordinary skill in the art] would thus have had a good reason to pursue this option.” Id. at 66–67 (citing Ex. 1015 ¶¶ 8, 10, 16, 18; Ex. 1002 ¶ 177; KSR, 550 U.S. at 421). Petitioner further contends that a person of ordinary skill in the art would have had a reasonable expectation of success in making the combination because Naka’s interleaver functioned like Yoon’s interleaver and bit rearranger. See id. at 68–69 (citing Ex. 1010 ¶¶ 60–61; Ex. 1015 ¶¶ 17–26, 55–58, Fig. 2; Ex. 1002 ¶¶ 180–181). Patent Owner does not challenge Petitioner’s assertions addressing the combined teachings of Yoon and Naka. See PO Resp. 44; PO Sur-reply 17. Based on Petitioner’s citations to Yoon, Naka, and Dr. Roy’s supporting testimony (Ex. 1002), we are persuaded Petitioner has set forth sufficient articulated reasoning with rational underpinning to support the conclusion that it would have been obvious to one of ordinary skill in the art to incorporate Naka’s techniques with Yoon’s method. See Pet. 66–67 (citing Ex. 1015 ¶¶ 8, 10, 16, 18; Ex. 1002 ¶ 177; KSR, 550 U.S. at 421).” slip op. at 43

  Patent outcomesUS 8,565,326 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,565,326
• Qualcomm Incorporated / Zyxel Communications Corporation v. Unm Rainforest InnovationsAll claims unpatentable
  PTAB · Aug 15, 2022 · IPR2021-00582 · APJ Kristen L Droesch · IPR · Final written decision

  Claims 1–5 are unpatentable: claims 1, 2, 4, and 5 as anticipated by Yoon, and claim 3 as obvious over Yoon and Naka; amendment is granted for claims 6, 7, 9, and 10 and denied …

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionNo construction neededDecided for petitioner

    “We decline to adopt Patent Owner’s construction adding “spanning multiple modulation symbols” to the claim limitation “ones of the plurality of coded bits” because it is improper to read an extraneous limitation into the claim from the specification. See E.I. du Pont de Nemours, 849 F.2d at 1433. An extraneous limitation is “a limitation read into a claim from the specification wholly apart from any need to interpret what the patentee meant by particular words or phrases in the claim.” Id. Patent Owner acknowledges that “the ’326 Patent discloses multiple variations of implementing a circular shift,” including inter-symbol circular shifts and intra-symbol circular shifts. See PO Sur-reply 6. Thus, we are not persuaded “spanning multiple modulation symbols” is necessary based on Patent Owner’s arguments and Dr. Vojcic’s testimony that the claimed circular shift is limited to the inter-symbol circular shift and excludes an intra-symbol shift. Patent Owner’s arguments rest on Dr. Vojcic’s unsupported testimony regarding “key aspects,” certain advantages of reordering significant and non-significant bits between consecutive transmissions, and “[a] key characteristic.” See, e.g., Ex. 2001 ¶¶ 48, 62. Dr. Vojcic cites column 7, lines 31 through 52 and reproduces Figures 4A and 4B of the ’326 Patent to support his testimony. See Ex. 2001 ¶¶ 48, 62. These cited disclosures of the ’326 Patent are silent regarding forward error correction decoding, coding diversity, and channel attenuation, and further are silent regarding any relationship to inter-symbol circular shifts alone compared to intra-symbol circular shifts or a combination of intra-symbol circular shifts and inter-symbol circular shifts. Accordingly, Patent Owner does not present a sufficient underlying factual basis to support Dr. Vojcic’s testimony that: (1) a person of ordinary skill in the art “would [] understand that reordering of significant and non-significant bits between consecutive transmissions would provide channel coding, i.e., forward error correction coding, diversity in that bits/symbols that experienced bad channel conditions in one transmission due to reordering in consecutive transmission, may experience good channel conditions in the subsequent transmission/retransmission,” (Ex. 2001 ¶ 48); and (2) “[a] key characteristic of this invention is the ability to take advantage of varying channel attenuation by different modulation symbols,” (Ex. 2001 ¶ 62). We give little weight to Dr. Vojcic’s aforementioned testimony. 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.”). We also do not credit Patent Owner’s unsupported attorney arguments that: (1) advantages of the ’326 Patent cannot be realized by intra-symbol shifts (see PO Resp. 19 (citing Ex. 2001 ¶ 62), 21 (citing Ex. 2001 ¶ 62), 23 (citing Ex. 2001 ¶ 62); PO Sur-reply 2 (citing Ex. 2001 ¶ 62)); (2) the claimed circular shift of one of the plurality of coded bits cannot be realized within only a single symbol (see PO Resp. 19, 21; PO Sur-reply 2); (3) “the implicit but necessary requirement that the plurality of coded bits span multiple modulation symbols is clearly obvious to a [person of ordinary skill in the art] in all aspects of the invention” (PO Sur-reply 4 (citing Ex. 2001 ¶ 62)); and (4) “a person of skill in the art would understand that the invention cannot be implemented within a single symbol, i.e., the plurality of coded bits necessarily spans multiple symbols” (PO Sur-reply 7 (citing Ex. 2001 ¶ 62)). Argument of counsel cannot take the place of objective evidence. See Gemtron Corp. v. Saint-Gobain Corp., 572 F.3d 1371, 1380 (Fed. Cir. 2009) (unsworn attorney argument is not evidence).” slip op. at 14

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “B. Level of Ordinary Skill in the Art Petitioner asserts: As of 2008, a person of ordinary skill in the art (“POSA”) in the field of the ’326 patent would have had a Bachelor’s degree in Electrical Engineering, Computer Engineering, or a related field, and around two years of experience in the design or development of wireless communication systems, or the equivalent. Pet. 26 (citing Ex. 1002 ¶¶ 55–57). Patent Owner offers a slightly different description, as follows: At the relevant time, a person of ordinary skill in the art in the technical field of the ’326 patent would have had at least a master’s degree in Computer Engineering or Electrical Engineering, or equivalent work experience, along with at least 1 year of experience related specifically to wireless communications, including error correction control and modulation. PO Resp. 14 (citing Ex. 2001 ¶ 17). We adopt Patent Owner’s definition of a person of ordinary skill in the art because it is consistent with the level of skill reflected by the ’326 Patent Specification and the asserted prior art, but our conclusions would be the same under Petitioner’s definition.” slip op. at 19

  • Expert testimonyPatent owner expert discountedDecided for petitioner

    “at 1433. An extraneous limitation is “a limitation read into a claim from the specification wholly apart from any need to interpret what the patentee meant by particular words or phrases in the claim.” Id. Patent Owner acknowledges that “the ’326 Patent discloses multiple variations of implementing a circular shift,” including inter-symbol circular shifts and intra-symbol circular shifts. See PO Sur-reply 6. Thus, we are not persuaded “spanning multiple modulation symbols” is necessary based on Patent Owner’s arguments and Dr. Vojcic’s testimony that the claimed circular shift is limited to the inter-symbol circular shift and excludes an intra-symbol shift. Patent Owner’s arguments rest on Dr. Vojcic’s unsupported testimony regarding “key aspects,” certain advantages of reordering significant and non-significant bits between consecutive transmissions, and “[a] key characteristic.” See, e.g., Ex. 2001 ¶¶ 48, 62. Dr. Vojcic cites column 7, lines 31 through 52 and reproduces Figures 4A and 4B of the ’326 Patent to support his testimony. See Ex. 2001 ¶¶ 48, 62. These cited disclosures of the ’326 Patent are silent regarding forward error correction decoding, coding diversity, and channel attenuation, and further are silent regarding any relationship to inter-symbol circular shifts alone compared to intra-symbol circular shifts or a combination of intra-symbol circular shifts and inter-symbol circular shifts. Accordingly, Patent Owner does not present a sufficient underlying factual basis to support Dr. Vojcic’s testimony that: (1) a person of ordinary skill in the art “would [] understand that reordering of significant and non-significant bits between consecutive transmissions would provide channel coding, i.e., forward error correction coding, diversity in that bits/symbols that experienced bad channel conditions in one transmission due to reordering in consecutive transmission, may experience good channel conditions in the subsequent transmission/retransmission,” (Ex. 2001 ¶ 48); and (2) “[a] key characteristic of this invention is the ability to take advantage of varying channel attenuation by different modulation symbols,” (Ex. 2001 ¶ 62). We give little weight to Dr. Vojcic’s aforementioned testimony. 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.”). We also do not credit Patent Owner’s unsupported attorney arguments that: (1) advantages of the ’326 Patent cannot be realized by intra-symbol shifts (see PO Resp. 19 (citing Ex. 2001 ¶ 62), 21 (citing Ex. 2001 ¶ 62), 23 (citing Ex. 2001 ¶ 62); PO Sur-reply 2 (citing Ex. 2001 ¶ 62)); (2) the claimed circular shift of one of the plurality of coded bits cannot be realized within only a single symbol (see PO Resp. 19, 21; PO Sur-reply 2); (3) “the implicit but necessary requirement that the plurality of coded bits span multiple modulation symbols is clearly obvious to a [person of ordinary skill in the art] in all aspects of the invention” (PO Sur-reply 4 (citing Ex. 2001 ¶ 62)); and (4) “a person of skill in the art would understand that the invention cannot be implemented within a single symbol, i.e., the plurality of coded bits necessarily spans multiple symbols” (PO Sur-reply 7 (citing Ex. 2001 ¶ 62)). Argument of counsel cannot take the place of objective evidence. See Gemtron Corp. v. Saint-Gobain Corp., 572 F.3d 1371, 1380 (Fed. Cir. 2009) (unsworn attorney argument is not evidence).” slip op. at 15

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

    “We do not agree with Patent Owner’s arguments because the arguments are not commensurate in scope with the claim limitations. Contrary to Patent Owner’s arguments, claims 1 and 4 do not recite or require performing a circular shift for each and every retransmission, as suggested by Patent Owner. Claims 1 and 4 recite “performing a circular shift,” which may mean performing one or more circular shifts. See KCJ Corp. v. Kinetic Concepts, Inc., 223 F.3d 1351, 1356 (Fed. Cir. 2000). (“[A]n indefinite article ‘a’ or ‘an’ in patent parlance carries the meaning of ‘one or more’ in open-ended claims containing the transitional phrase ‘comprising.’”). Thus, to meet the limitations of the claim, Yoon need only disclose performing one circular shift, with a variable length related to a modulation order and a number of transmissions. We also do not agree with Patent Owner’s arguments that Yoon does not disclose performing a circular shift on the basis that Yoon discloses a predetermined rearrangement pattern. Claims 1 and 4 do not preclude the use of a “predetermined arrangement pattern” for “performing a circular shift.” Patent Owner’s arguments also overlook Yoon’s explicit disclosures, relied on by Petitioner (see Pet. 30–45) of performing a “2-bit right rotation” for a first retransmission, and a “4-bit right rotation” for a second retransmission for the 64QAM scheme (modulation order 6) of Figure 10, and performing a “1-bit right rotation” for a first retransmission, and a “2-bit right rotation” for a second retransmission 8PSK scheme (modulation order 3) of Figure 11. See Ex. 1010 ¶¶ 104–105, 111–113, Figs. 10–11. Notwithstanding Petitioner’s assertions addressing Yoon’s disclosures of a 1-bit-circular shift within each of the H and L parts of a modulation symbol and compound circular shifts, Yoon’s aforementioned explicit disclosures pertaining to Figures 10 and 11 disclose “performing a circular shift, with variable length related to a modulation order and a number of transmissions, on ones of the plurality of coded bits,” in accordance with the full scope of the claim limitations. In addition, Patent Owner’s following arguments are misplaced: (1) Petitioner uses hindsight reconstruction of Yoon’s disclosures that do not sufficiently disclose the invention of the ’326 Patent to a person of ordinary skill in the art (see PO Resp. 39–40; PO Sur-reply 12–15), and (2) the claimed subject matter would not have been obvious (PO Sur-reply 12, 15). Obviousness and hindsight are not the relevant inquiries to the patentability challenge based on anticipation by Yoon. “[A] claim is anticipated ‘if each and every limitation is found either expressly or inherently in a single prior art reference.’” King Pharm., 616 F.3d at 1274 Based on the entire record, we determine Petitioner shows by a preponderance of the evidence that Yoon discloses “performing a circular shift, with variable length related to a modulation order and a number of transmissions, on ones of the plurality of coded bits.” See Pet. 36–45.” slip op. at 37

  Patent outcomesUS 8,565,326 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,565,326
• Qualcomm Incorporated / Zyxel Communications Corporation v. Unm Rainforest InnovationsAll claims unpatentable
  PTAB · Jul 15, 2022 · IPR2021-00739 · APJ Kristen L Droesch · IPR · Final written decision

  Claims 1, 2, and 11–13 are unpatentable over Hui; the motion to amend with substitute claims 29, 30, and 39–41 is denied because those claims are unpatentable over Hui alone and Hui with Maltsev.

  RulingsFinal written decision

  • ExcludeMotion to exclude, deniedGranted in part

    “A motion to exclude evidence must be filed to preserve a prior objection to evidence and must identify the objections in the record. 37 C.F.R. § 42.64(c). An objection to evidence submitted prior to the institution of the trial, including evidence submitted with a petition to institute inter partes review, must be filed within ten business days of the institution of the trial. 37 C.F.R. § 42.64(b)(1). Once a trial is instituted, any objection must be filed within five business days of the service of evidence to which the objection is directed. Id. The objection must identify 9 Patent Owner quotes Paper 26 which was expunged and replaced with Paper 36. See Ex. 3001. 10 Paper 30 was expunged and replaced with Paper 37. the grounds for the objection with sufficient particularity to allow for correction in the form of supplemental evidence. Id. An objection to deposition evidence “must be made during the deposition.” 37 C.F.R. § 42.64(a).” slip op. at 8

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner

    “compressed.” Patent Owner’s argument is belied by Dr. Vojcic’s testimony that “quantization may also result in a reduction of data bits.” Ex. 2001 ¶ 74; PO Resp. 14. We agree with Petitioner that the ’204 Patent Specification does not limit compression to compression performed only in ways other than quantizing. We, however, do not agree with Petitioner that the disclosure of column 4, lines 11 through 19 indicates that “‘only quantization’—specifically, ‘quantiz[ing] information regarding time delays and phases of the selected channel taps’—is referred to as ‘compress[ing] the estimated CSI.’” Pet. Reply 10. The ’204 Patent Specification’s disclosure that the mobile station may further compress the estimated CSI indicates that the preceding disclosure that the mobile station may quantize information regarding time delays and phases of the selected channel taps means that the mobile station also compresses, to some extent, the same information regarding time delays and phases. Accordingly, column 4, lines 11–19 of the ’204 Patent Specification discloses that quantizing the information regarding the time delays and phases of channel taps results in some compression of the same information regarding time delays and phases, and further discloses compressing the magnitude component of the estimated CSI by generating a plurality of parameters to represent information regarding magnitudes of the channel taps and thereafter quantizing those parameters. Patent Owner also disagrees with our preliminary finding that “the” slip op. at 24

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “B. Level of Ordinary Skill in the Art Petitioner asserts: As of 2008, a person of ordinary skill in the art (“POSA”) in the field of the ’204 patent would have had a Bachelor’s degree in electrical engineering, computer engineering, or a related field, and around two years of experience in the design or development of wireless communication systems, or the equivalent plus knowledge of [multiple-input, multiple-output (“MIMO”)] and [orthogonal frequency-division multiplexing (“OFDM”)]. Pet. 19 (citing Ex. 1002 ¶ 19). Patent Owner offers a slightly different description as follows: At the relevant time, a person of ordinary skill in the art in the technical field of the ’204 patent would have had at least a Bachelor’s Degree in electrical engineering, computer engineering, or a related field, and approximately one year of experience in the design or development of wireless communications systems or the equivalent, including knowledge of MIMO and OFDM. Id. (citing Ex. 2001 ¶ 31). We adopt Patent Owner’s definition of a person of ordinary skill in the art because it is consistent with the level of skill reflected by the ’204 Patent Specification and the asserted prior art, but our conclusions would be the same under Petitioner’s definition.” slip op. at 32

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “Furthermore, Patent Owner’s arguments challenging the credibility of Dr. Roy go to the weight that should be given to Dr. Roy’s Declaration testimony, not the admissibility of the Declaration. In our patentability analysis that follows, we account for the evidence that Dr. Roy’s Declaration is substantially the same as Dr. Akl’s Declaration, the supporting evidence cited therein, as well as Dr. Roy’s deposition testimony in determining the appropriate weight to give Dr. Roy’s testimony when weighing the record evidence.” slip op. at 14

  Patent outcomesUS 8,249,204 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,249,204
• Samsung Electronics America, Inc. v. Uniloc 2017 LLCAll claims unpatentable
  PTAB · Mar 4, 2020 · IPR2018-01664 · APJ Garth D Baer · IPR · Final written decision

  The Board cancelled claim 22 and denied substitute claim 23 because Petitioner proved it obvious over Pasolini, Goldman, Hyatt, Fabio, Mizell, and Park.

  RulingsFinal written decision

  • 112 supportDecided for patent owner

    “Petitioner contends in response only that “within an operational range” lacks written description support in the original specification. See Mot. Amend Opp. 1–5. We nonetheless agree with Patent Owner that the specification includes written description support for the amended claim language. As Patent Owner notes, the original application discloses “glitch correcting logic 235 further may be used to discard non-human motions” that are nevertheless accurately detectable by the sensor. EX1002, pp. 12-13, ¶ 21. This example is further explained in the context 9 The amended claim also makes several changes addressing clerical issues with original claim 22. See Mot. to Amend, Appendix A (changing “generation motion data” to “generate motion data,” changing “a dominant axis” to “the dominant axis,” and replacing a period in the middle of the claim with “; and.”). of “a device [that] is not being used but is in a moving vehicle.” Id. While the vehicle’s motion is measurable by the sensor, it is considered a glitch that “can be discarded as not fitting the signature of human motion.” Id. Mot. Amend 5; see also Ex. 1001, 3:23–27. In short, we agree with Patent Owner that non-human motions due to a vehicle’s motion would be within the device’s operational range. Petitioner is correct that the specification also includes examples of motion outside the device’s operational range. See, e.g., Ex. 1001, 5:19–23 (describing “a glitch correcting logic which removes abnormal data from the motion data”); id at 6:56–65 (explaining “an excessive number of glitches may indicate a problem with the accelerometer”); id. at 3:33–37 (noting “glitches generally are indicative that the accelerometer or sensor is malfunctioning”). Those examples, however, do not undermine the specification’s additional support for a glitch that is within the device’s operational range. See Golight, Inc. v. Wal-Mart Stores, Inc., 355 F.3d 1327, 1331 (Fed. Cir. 2004) (“[P]atentees [are] not required to include within each of their claims all of [the] advantages or features described as significant or important in the written description.”). 3. Responding to a Ground of Unpatentability” slip op. at 11

  • PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend granted in partGranted in part

    “D. MOTION TO AMEND SUMMARY Because the Motion to Amend is non-contingent, we grant Patent Owner’s motion as to cancellation of issued claim 22. After reviewing the entire record, we determine Patent Owner has satisfied the predicate requirements for considering a motion to amend as to substitute claim 23. However, we determine Petitioner has demonstrated by a preponderance of the evidence that the subject matter of substitute claim 23 would have been obvious over the combination of Pasolini, Goldman, Hyatt, Fabio, Mizell, and Park. We therefore deny Patent Owner’s Motion to Amend as to proposed substitute claim 23. Because Petitioner has demonstrated by a preponderance of the evidence that the subject matter of substitute claim 23 would have been obvious over Pasolini, Goldman, Hyatt, Fabio, Mizell, and Park, we do not need to determine whether substitute claim 23 would have been obvious over Petitioner’s alternate asserted grounds involving McMahan in place of Hyatt and Marvit in place of Fabio. In summary: Motion to Amend Outcome Claim(s) Original Claims Canceled by the Amendment 22 Substitute Claims Proposed in the Amendment 23 Substitute Claims: Motion to Amend Granted Substitute Claims: Motion to Amend Denied 23 Substitute Claims: Not Reached IV. ORDER In consideration of the foregoing, it is hereby: ORDERED that Patent Owner’s Motion to Amend is denied as to proposed substitute claim 23; FURTHER ORDERED that claim 22 of the U.S. Patent No. 8,872,646 B2 is cancelled; and” slip op. at 28

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

    “Reason to Combine Pasolini and Goldman Petitioner further asserts it would have been obvious to one skilled in the art to modify Pasolini’s device to include Goldman’s enhanced accelerometer techniques as a known method “to distinguish static acceleration (due to gravity) from dynamic acceleration (due to movement) when calculating acceleration.” Id. at 20–21 (citing Ex. 1010 ¶¶ 68–72). Petitioner explains, with relevant support from its expert, Dr. Essa, that “when analyzing acceleration signals, it is beneficial to factor in calibration, sampling rates, and tilt,” as Goldman teaches, “because the results are more accurate.” Id. at 21 (citing Ex. 1010 ¶ 71). Thus, Petitioner explains, combining Pasolini’s device with Goldman’s accelerometer techniques amounts to no more than “using the known techniques of Goldman to improve the similar device of Pasolini in the same way.” Id. at 22. Patent Owner does not challenge Petitioner’s assertions in this regard. We conclude Petitioner has articulated sufficient reasoning with rational underpinning to support the legal conclusion that its proffered combination of Pasolini and Goldman would have been obvious to one of ordinary skill in the art. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).” slip op. at 18

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

    “In sum, for the foregoing reasons, we determine that Petitioner has demonstrated by a preponderance of the evidence that the subject matter of substitute claim 23 would have been obvious over the combination of Pasolini, Goldman, Hyatt, Mizell, Park, and Fabio. D. MOTION TO AMEND SUMMARY Because the Motion to Amend is non-contingent, we grant Patent Owner’s motion as to cancellation of issued claim 22. After reviewing the entire record, we determine Patent Owner has satisfied the predicate requirements for considering a motion to amend as to substitute claim 23. However, we determine Petitioner has demonstrated by a preponderance of the evidence that the subject matter of substitute claim 23 would have been obvious over the combination of Pasolini, Goldman, Hyatt, Fabio, Mizell, and Park. We therefore deny Patent Owner’s Motion to Amend as to proposed substitute claim 23. Because Petitioner has demonstrated by a preponderance of the evidence that the subject matter of substitute claim 23 would have been obvious over Pasolini, Goldman, Hyatt, Fabio, Mizell, and Park, we do not need to determine whether substitute claim 23 would have been obvious over Petitioner’s alternate asserted grounds involving McMahan in place of Hyatt and Marvit in place of Fabio.” slip op. at 28

  Patent outcomesUS 8,872,646 unpatentable
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 8,872,646
• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. et al. v. Imperium (IP) HoldingsAll claims unpatentable
  PTAB · 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 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,092,029
• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. et al. v. Imperium (IP) HoldingsAll claims unpatentable
  PTAB · 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 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,836,290

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