• Samsung Electronics Co., Ltd. / Micron Technology, Inc. et al. v. Elm 3ds Innovations, LLCNo claims unpatentable
  PTAB · 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 unpatentable
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 8,907,499
• Samsung Electronics Co., Ltd. / Micron Technology, Inc. et al. v. Elm 3ds Innovations, LLCNo claims unpatentable
  PTAB · Aug 8, 2017 · IPR2016-00708 · APJ Glenn J Perry · IPR · Final written decision

  Claim 1 was not shown unpatentable because the evidence did not establish substantial flexibility or a reason and reasonable expectation of success 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. 5 (citing Ex. 1002 ¶¶ 52–53). According to Dr. Franzon, his testimony as to the level of ordinary skill is based on considering “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 ¶ 59. Patent Owner did not propose expressly a particular level of ordinary skill. See, e.g., generally PO Resp. At the oral hearing, however, Petitioner indicated” slip op. at 11

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided 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. 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 those Final Written Decisions, the inventor did not give the term “substantially flexible” a particular meaning in the specification with “reasonable clarity, deliberateness, and precision.” In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). The claim at issue here uses the term “substantially flexible” as a modifier of “structure” in the preamble of the claim and as a modifier of “monocrystalline semiconductor layer” in the body of the claim. Thus, a 13 “substantially flexible” structure is a structure that is able to bend without breaking; and a “substantially flexible monocrystalline semiconductor layer” requires a monocrystalline semiconductor layer that is able to bend without breaking.” slip op. at 13

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner
  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundReasonable expectation not foundNot shown unpatentable

    “Similarly, in view of the complex technology involved in integrated circuit fabrication and, particularly and the agreement of both experts that dielectrics have different properties and different methods of forming dielectrics in integrated circuit fabrication result in dielectrics having different properties (as discussed previously), we determine that Petitioner’s contentions and Dr. Franzon’s broad conclusions (Pet. 45–47; Ex. 1002 ¶¶ 111, 113–14) that one of ordinary skill in the art would have reasonable expectation of success to be insufficient to meet its burden, which requires a preponderance of evidence. For example, as discussed previously, we find Petitioner’s contention that Leedy ’695 thus discloses that its dielectrics can be easily used in place of other dielectrics to be insufficiently supported by the evidence of record. 27 Accordingly, having considered the Petition, Patent Owner’s Response, and Petitioner’s Reply, as well as the relevant evidence discussed in those papers, 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 reason to combine the asserted references to arrive at the claimed invention or that a person of ordinary skill would have had a reasonable expectation of success in making the combination proposed by Petitioner.” slip op. at 27

  Patent outcomesUS 8,907,499 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 8,907,499
• Google Inc. v. Patrick ZuiliAll claims unpatentable
  PTAB · May 5, 2017 · CBM2016-00021 · APJ Jameson Lee · CBM · Final written decision

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

  RulingsFinal written decision

  • BurdenFwd all claims unpatentableUnpatentable

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

  • ExcludeMotion to exclude, deniedDenied

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

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

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

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

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

  Patent outcomesUS 7,953,667 unpatentable
  Claim construction§ 101 eligibilitycites Mayo · Bilski · Enfish
  Patents in suitUS 7,953,667
• Duodecad It Services Luxembourg S.à.R.L. / Friendfinder Networks Inc. et al. v. Wag Acquisition, LLCRehearing denied
  PTAB · Apr 4, 2017 · IPR2015-01035 · APJ Trevor M Jefferson · IPR · Rehearing

  The Board denied rehearing and left in place its denial of institution for claims 1–18, finding the petition did not persuasively show Ground 3’s references taught the constant-fill-rate limitation.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. STANDARD OF REVIEW Under 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” An abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus., Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988). The request must identify, specifically, all matters the party believes the Board misapprehended or overlooked. 37 C.F.R. § 42.71(d).” slip op. at 2

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

    “construction and construed “playback rate” (as recited in claims 1, 3, 8, 9, and 14) as “a rate at which the data is encoded for playback to a user.” Dec. 6–7 (citing Paper 2 (“Pet.”) 12; Paper 6 (“Prelim. Resp.”) 17). We also declined to adopt Petitioner’s proposed construction for “at about playback rate” as indefinite as it could represent “any rate” (Pet. 12). Dec. 7. We adopted Patent Owner’s proposed construction that “at about playback rate” as recited in claims 1, 8, and 14, should be construed as “at approximately the rate at which the media will be played out.” Dec. 7 (citing Prelim. Resp. 16–18; Ex. 1001, 3:40–42, 4:33–35, 4:47–50, 5:37–40).” slip op. at 3

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

    “indefinite, contends, in the alternative, that “the Board erred in giving a special meaning to ‘about’ or ‘approximately’ in the context of the playback rate as being related to variations that may arise as a result of variable encoding. Petitioners submit that ‘about’ should be ‘approximately’ without imparting such special meaning to the term.” Reh’g Req. 6 (citing Merck & Co. v. Teva Pharms. USA, Inc., 395 F.3d 1364, 1372 (Fed. Cir. 2005); Duraflame, Inc. v. Hearthmark, LLC, 2013 U.S. Dist. LEXIS 21229, *23 (N.D. Cal. Feb. 14, 2013)). We disagree with Petitioner’s arguments that the term “about” in the claim phrase “about playback rate” requires further construction. We note that Petitioner’s rehearing request argument with respect to Chen, Chen FH, Carmel, and ISO-11172 teaching that “the media data elements is sent at a rate that matches the constant fill rate of a server buffer” does not depend on the revised construction of either “playback rate” or the construction of “about” in the claim phrase “about playback rate.” Thus, for purposes of this rehearing decision, we do not further construe “about playback rate”” slip op. at 4

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable

    “Nathaniel Polish, Ph.D. (Ex. 1003 ¶ 63) in arguing that the Board erred in finding that Chen and the Chen FH did not “‘teach or suggest that the server buffer in Chen fills at a constant rate that matches the rate of data coming out of the buffer’” as recited in challenged claims. Reh’g Req. 7–9 (quoting Dec. 15.). The Petition, however, makes no reference to “the case where the stream buffer holds one frame of data” and argues only that in Normal mode the Chen server buffer empties at about playback rate to avoid overflow and underflow conditions. Pet. 19; see also Pet. 31 (citing claim 42 of Chen). In addition, neither the Petition nor Dr. Polish’s declaration cited therein discusses the case where one frame of data is in the Chen stream buffer and subsequently leaves the stream buffer, i.e., that one and only one frame of data is loaded into the stream buffer. Compare Req. Reh’g 9 with Pet. 19, 31; Ex. 1003 ¶ 63. The Board did not misapprehend or overlook arguments that were not presented. In addition, Petitioner’s arguments based on the size of the server buffer in Chen, as presented in the Petition, failed to persuasively show that the server buffer in Chen fills at a constant rate that matches the rate of data coming out of the buffer or that rate into its buffer is constant. Petitioner’s arguments that a one frame buffer “necessarily” shows that one frame is loaded into the Chen buffer is conclusory and not persuasive to the extent it was argued in the Petition.” slip op. at 6

  Claim construction§ 103 obviousness
  Patents in suitUS 8,185,611
• Amazon.Com, Inc. / Blizzard Entertainment, Inc. v. Ac Technologies S.A.Some claims unpatentable
  PTAB · Mar 6, 2017 · IPR2015-01802 · APJ Matthew R Clements · IPR · Final written decision

  Claims 1, 3, 5, and 7–15 are unpatentable as anticipated by Rabinovich; Petitioner did not prove claims 1–15 obvious over Rabinovich.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedPetitioner expert creditedDecided for petitioner

    “Electrical Engineering, and two to three years of experience working in the field, or an equivalent level of experience.” Ex. 1005 ¶ 17; Pet. 16. Patent Owner does not challenge this definition or present its own. Accordingly, we credit the testimony of Dr. Ratner regarding the level of ordinary skill in the art, and find that a person of ordinary skill in the art would have had an undergraduate degree in Computer Science or a related field, such as Electrical Engineering, and two to three years of experience working in the field, or an equivalent level of experience. This level of ordinary skill is reflected not only by the information presented by the parties, but also by the prior art of record. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art itself can reflect the appropriate level of ordinary skill in the art).” slip op. at 9

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

    “We agree with and adopt Petitioner’s reasoning and determine Rabinovich to be a printed publication. We credit the unrebutted testimony of Dr. Rabinovich regarding the consistency of his professional practice in 1998 for republication of his AT&T technical memoranda on a webpage that he managed on AT&T’s publicly accessible website. Furthermore, we find the December 1998 IEEE article corroborates the public availability of Rabinovich on that website, and would have been a roadmap, for one of ordinary skill in the art of data management and optimized access to data, to be guided to Rabinovich. See Reply 19–22. As Petitioner points out, Patent Owner’s own declarant states that Rabinovich and the December 1988 IEEE article “are ‘similar[]’ in that they both address ‘problems in network connectivity caused by multiple clients accessing servers.’ (Ex. 2006 at 12).” Id. at 21. Additionally, the passage in the December 1998 IEEE article that cites to Rabinovich refers to an algorithm in Rabinovich for optimizing access to data in order to increase performance. Id. Accordingly, we find that footnote 16 of the IEEE article, which contains the URL to Rabinovich, would have guided one of ordinary skill directly to Rabinovich. We are, therefore, persuaded, that Rabinovich is a printed publication under 35 U.S.C. § 102.” slip op. at 12

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable

    “object xs. Rabinovich defines cnt(s,xs) as the “total access count for xs,” which is equal to cnt(xs). Ex. 1006, 11. According to Dr. Ratner, “[t]he metric cnt(s,xs) measures the total number of times in that window that replica xs has been served to a client computer.” Ex. 1005 ¶ 253. As Patent Owner points out, Rabinovich teaches replicating object xs if the ratio of cnt(s,xs) over aff(xs) is greater than m, i.e., a non-zero value. PO Resp. 34; Ex. 1006, 12, Fig. 4. In view of this, we agree with Patent Owner that if cnt(s,xs) has a value of zero, meaning that object x has not been served to any client computer, then the ratio of cnt(s,xs) to aff(xs) will be zero, i.e., less than m, and Rabinovich will not carry out its replication step. This means that Rabinovich will not replicate object xs until xs has been accessed by a client computer at least once, such that the access count for xs is greater than zero. In this regard, we agree with Patent Owner that Rabinovich object xs is not “sen[t], from the at least one data storage device to the another data storage device . . . independently of an access of the at least one client computer” because Rabinovich teaches explicitly that object xs is not sent unless there has been at least one access from the client computer. We are not persuaded by Petitioner’s argument that Rabinovich” slip op. at 18

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

    “pieces” Claim 1 recites “each file including a plurality of individual pieces, the pieces containing parts of the files.” Ex. 1002, 25:67–26:1. The other independent claims recite limitations commensurate in scope. Neither party proposes explicitly a construction of the term “piece.” Petitioner argues that “files are inherently composed of pieces in the form of bits that make up bytes, the bytes themselves being pieces of the file.” Pet. 32. Patent Owner argues that construing “piece” to cover “bits and bytes” of a file “would read out the ‘pieces’ limitation from the claim entirely” (PO Resp. at 29–30) and that “one of ordinary skill in the art would not read the ‘pieces’ limitation of the claim to include bits and bytes” (id. at 30). The claims themselves define “piece” by requiring that a “file” have a “plurality of individual pieces,” but do not establish a lower bound—i.e., a minimum number of bits or bytes—to qualify as a “piece.” Patent Owner identifies no support in the ’680 patent for its contention that “piece” or “pieces” excludes a byte or bytes of a file, relying instead solely on the testimony of Dr. Paul S. Jacobs. Id. (citing Ex. 2006 ¶¶ 38, 39). We are not persuaded by Dr. Jacobs’s conclusory testimony. Because “piece” and “pieces” are limited by the claims only to being a subset of a file and because a byte or collection of bytes of a file is a subset of that file, we are persuaded that the broadest reasonable interpretation of “piece” and “pieces” in light of the Specification of the ’680 patent encompasses a byte or bytes. slip op. at 7

  Patent outcomesUS 7,904,680 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,904,680
• American Megatrends, Inc. / Micro- Star International Co., Ltd et al. v. Kinglite Holdings Inc.All claims unpatentable
  PTAB · Jan 19, 2017 · IPR2015-01488 · APJ Trevor M Jefferson · IPR · Final written decision

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

  RulingsFinal written decision

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

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

  • Skill levelSkill level petitioner adoptedDecided for petitioner

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

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

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

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

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

  Patent outcomesUS 7,185,189 unpatentable
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 7,185,189
• American Megatrends, Inc. / Micro-Star International Co. Ltd et al. v. Kinglite Holdings Inc.Some claims unpatentable
  PTAB · Jan 19, 2017 · IPR2015-01515 · APJ Glenn J Perry · IPR · Final written decision

  Claims 1–14, 17–19, 21–27, 30, 32–49, and 51–60 are unpatentable under § 103; claims 15, 16, 28, 29, and 50 were not shown unpatentable.

  RulingsFinal written decision

  • BurdenFwd mixedMixed

    “evidence of record that certain claims of the ’912 patent are unpatentable as summarized in the table below: Claim(s) Reference(s) Basis unpatentable 1–14, 17, 18, 24–27, Chang and Dent 35 U.S.C. § 103 30, 32, 35–49, 51– 53, 55, 56, 59 and 60 Chang, Dent and Bizzarri 35 U.S.C. § 103 19, 21–23, and 54 Chang, Dent, and Aegis 35 U.S.C. § 103 33 and 34 Flaherty and Chang 35 U.S.C. § 103 57 and 58 Petitioner has not established unpatentability of claims 15, 16, 28, 29 and 50 by a preponderance of the evidence IV. ORDER For the reasons given, it is: ORDERED that claims 1–14, 17–19, 21–27, 30, 32–49, and 51–60 are unpatentable; and” slip op. at 64

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

    “Patent Owner argues that there is no motivation to combine Chang and Dent. PO Resp. 6–7. According to Patent Owner, Petitioner’s analysis ignores fundamental differences in operation between the systems taught in the two references. PO Resp. 6. Chang establishes a connection with a server upon detection of a program in the PROM. Pet. 6–7 (citing Ex. 1003 at 6:55–57 (“The system BIOS detects the existence of a program in a ROM socket on a network interface card (step 35) and passes control to this program (step 37).”)). Dent establishes communication only when there is a boot error. Ex. 1004 at 3:4–8 (“to enable remote system level diagnostics through a privately or publicly accessible network in the event of a boot error”). Patent Owner argues that given these differences, there would have been no motivation to combine these references. PO Resp. 6−7. We determine that the differences noted by Patent Owner would not dissuade one of ordinary skill from combining the teachings Chang and Dent. As noted above, Chang, during a boot sequence and prior to loading its operating system (OS), uses its BIOS to enable network communication. Dent describes a boot sequence that establishes an interconnection over a network for remote servicing of an electronic system upon experiencing a boot error. Thus, they address the same general problem and are similar in overall approach to solving that problem.” slip op. at 21

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner

    “Patent Owner continues to argue for a more restrictive construction of “network-enhanced software” that would require various specific functions of software described in the Specification. PO Resp. 8. However, we do not read into this claim term limitations of particular embodiments in the absence of a reason to do so. Here there is none. The term “network-enhanced software” appears only in the claims and not elsewhere in the Specification. We find no description of the term “network-enhanced software” in the Specification that would rise to the level of a definition. Embodiments are described as including a “network-enhanced BIOS.” The term “BIOS” appears in some, but not all, of the claims. We regard the term “network-enhanced software” as being broader in scope than “network-enhanced BIOS” based on our understanding that the term BIOS connotes to computer engineers specialized software particular to the rudimentary operation of a computer. We therefore adopt our preliminary constructions along with our reasoning expressed in our Decision to Institute for purposes of this decision. Dec. to Inst. 12−14.” slip op. at 10

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “knowledge of one of ordinary skill when reading Chang and Dent. This knowledge includes the subject matter described by Melo, Banset, IBM and Bartek. The ordinarily skilled person reading these references would appreciate that when a computer using an Intel 80386 or 80486 processor is first turned on, it begins operation in “real mode.” Pet. 37; Ex. 1019 ¶ 53. Petitioner establishes that Chang meets the “second BIOS” limitation by offering the unrebutted Righi testimony which explains the knowledge of one of ordinary skill of real and protected modes, and that it would have been obvious to execute the second BIOS in protected mode, which was well-known at the time of the invention. Ex. 1019 ¶¶ 48–57. Patent Owner offers no testimony to counter the Righi testimony. We find that, at the time of the invention, real and protected modes were commonly used modes of operation in Intel processors and that these modes would have been known to those of ordinary skill. One of ordinary skill would have applied this knowledge along with the specific teachings of Chang and Dent to make the claimed invention. We therefore conclude that Petitioner has established by a preponderance of the evidence that claims 37 and 51 are unpatentable based on Chang and Dent.” slip op. at 26

  Patent outcomesUS 5,978,912 mixed
  Claim construction§ 103 obviousness
  Patents in suitUS 5,978,912
• Great West Casualty Company / Bitco General Insurance Corporation et al. v. Intellectual Ventures II LLCAll claims unpatentable
  PTAB · Jan 17, 2017 · IPR2015-01707 · APJ Michael W Kim · IPR · Final written decision

  Claims 11–13 and 15–20 are unpatentable: claims 11, 12, and 16–20 as obvious over Payne, and claims 13 and 15 as obvious over Payne and Ackley.

  RulingsFinal written decision

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

    “guidance in resolving this disagreement. To that end, the relevant portion of independent claim 11 recites “at least one server operative to store one or more of: a) content, b) links to content.” As an initial matter, controlling precedent from our reviewing court instructs us that different claim terms are presumed to have different meanings. Applied Med. Res. Corp. v. U.S. Surgical Corp., 448 F.3d 1324, 1333 n.3 (Fed. Cir. 2006) (“[T]he use of two terms in a claim requires that they connote different meanings.”); CAE Screenplates Inc. v. Heinrich Fiedler GmbH & Co. KG, 224 F.3d 1308, 1317 (Fed. Cir. 2000) (“In the absence of . . . evidence to the contrary, we must presume that the use of these different terms in the claims connotes different meanings.”). Accordingly, on a high level, each of the following express claim terms are presumed to have different meanings: “content”; and, “links to content.”” slip op. at 8

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

    “We disagree with Patent Owner because Patent Owner’s assertions are misplaced. Most prominently, were O’Neil the only factual support for Patent Owner’s position, it may be persuasive. Petitioner’s proposed modification, however, relies not only on O’Neil, but also on Payne and the Declaration of Dr. Greenspun. Pet. 48–49 (citing Ex. 1003 ¶¶ 240, 241; Ex. 1006, 6:9–42, 8:38–53, 9:64–10:1, 5:16–25, and Fig. 5); see also Ex. 1003 ¶ 272. In short, we are persuaded that the following findings in Payne asserted by Petitioner are accurate, and that it supports adequately Petitioner’s proposed modification. The system of Payne already includes functionality requiring a user to log on to an account, Ex. 1006 at 6:9–42, 8:38–53, so it would have been trivial to place the log in functionality directly on the digital advertising documents, which are web pages, see id. at 9:64–10:1, 5:16–25, Fig. 5. Ex. 1003 at ¶ 240. When a patent simply arranges old elements, each performing the same function it had been known to perform and together yielding no more than one would expect from such an arrangement, the combination is obvious. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). Pet. 48; see also Reply 11–16. As counter-evidence, Patent Owner cites to paragraphs 46–48 of the Declaration of Dr. Papakonstantinou. Those paragraphs, however, suffer from the same logical flaw identified above.” slip op. at 23

  • Obviousness (§103) › Analogous artAnalogous artDecided for petitioner

    “Insofar as Patent Owner is asserting that Payne and Ackley are non- analogous art, we disagree. A reference is analogous art to the claimed invention if: (1) the reference is from the same field of endeavor as the claimed invention (even if it addresses a different problem); or (2) the reference is reasonably pertinent to the problem faced by the inventor (even if it is not in the same field of endeavor as the claimed invention). See In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). To that end, Payne discloses that it relates to the field of “user-interactive network sales systems for implementing an open marketplace for goods or services over computer networks such as the Internet.” Ex. 1006, 1:14–17. Ackley discloses that it relates to the field “computer-based systems and methods that enable sales transactions between third parties through a communications network, such as internet auctions and classified systems.” Ex. 1008, 1:21–25. We see little daylight between these two fields, especially given that Ackley’s use of the word “such as” with “internet auctions” indicates that such “internet auctions” are a non-limiting example, and, thus, do not materially limit Ackley’s field of endeavor.” slip op. at 28

  Patent outcomesUS 7,516,177 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,516,177
• Great West Casualty Company / Bitco General Insurance Corporation et al. v. Intellectual Ventures II LLCAll claims unpatentable
  PTAB · Jan 17, 2017 · IPR2015-01706 · APJ Michael W Kim · IPR · Final written decision

  Claims 11, 12, and 16–20 are unpatentable as obvious over MyLibrary.

  RulingsFinal written decision

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

    “In summary, we construe “content” as “electronic data embodying information for an individual or individuals,” and excluding “links to content,” but not excluding “content” associated with the “links to content.”5” slip op. at 16

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner

    “written decision is issued shall be given its broadest reasonable construction in light of the specification of the patent in which it appears.” 37 C.F.R. § 42.100(b); see also Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2142 (2016) (Affirming that USPTO has statutory authority to construe claims according to 37 C.F.R. § 42.100(b).). When applying that standard, we interpret the claim language as it would be understood by one of ordinary skill in the art in light of the Specification. In re Suitco Surface, Inc., 603 F.3d 1255, 1260 (Fed. Cir. 2010). Thus, we generally give claim terms their ordinary and customary meaning. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007) (“The ordinary and customary meaning ‘is the meaning that the term would have to a person of ordinary skill in the art in question.’”). For the purposes of this decision, and on this record, we determine that most claim terms do not need express interpretation. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (Only those terms which are in controversy need to be construed, and only to the extent necessary to resolve the controversy.).” slip op. at 5

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

    “7. Conclusion We are persuaded that Petitioner has shown, by a preponderance of the evidence, that claims 11, 12, and 16–20 are unpatentable as obvious in view of MyLibrary. In addition to findings we make above in connection with our analysis of claims 11, 12, and 16–20 as obvious in view MyLibrary, we also adopt as our findings Petitioner’s positions as to how MyLibrary discloses each of the limitations of claims 11, 12, and 16–20. We further adopt as our own Petitioner’s rationales for modifying MyLibrary, as referenced above.” slip op. at 32

  Patent outcomesUS 7,516,177 unpatentable
  Claim construction§ 103 obviousnesscites Graham
  Patents in suitUS 7,516,177
• Commscope Technologies, LLC v. Communications Components Antenna Inc.Institution denied
  PTAB · Nov 3, 2016 · IPR2016-00999 · APJ Jeffrey S Smith · IPR · Institution

  The Board denied institution because the petition did not show a reasonable likelihood of proving claims 1–28 unpatentable, principally because Yea did not establish the claimed asymmetrical coverage areas.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “partes review of claims 1–28 of U.S. Patent No. 8,311,582 B2 (Ex. 1001, “the ’582 patent”). Paper 1 (“Pet.”). Patent Owner, Communications Components Antenna Inc., filed a Preliminary Response. Paper 7 (“Prelim. Resp.”). Institution of an inter partes review is authorized by statute when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a); see 37 C.F.R. § 42.108. Upon consideration of the Petition and the Preliminary Response, we are not persuaded Petitioner has demonstrated a reasonable likelihood that it would prevail in establishing the unpatentability of claims 1–28 of the ’582 patent. Accordingly, we do not institute an inter partes review.” slip op. at 2

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

    “Petitioner’s proposed construction of this limitation is supported by the specification of the ’582 patent. The ’582 patent discloses replacing a single sector coverage area with sub-sector coverage areas, at least one of which is an asymmetrical coverage area. Ex. 1001, 3:16–18. The ’582 patent discloses that the use of asymmetrical coverage areas permits the total coverage area to closely approximate the symmetrical sector coverage area being replaced, without creating excessively large sub-sector handover zones or introducing sever degradation in network performance. Id. at 3:18–24. The ’582 patent discloses creating the asymmetrical coverage areas by replacing an existing antenna with an antenna that has substantially the same coverage area, but divides the coverage area into a plurality of separate asymmetrical beams or sub-sectors. Id. at 4:32–38. As disclosed by the ’582 patent, the replacement antenna produces a plurality of separate beams, each defining a new sub-sector with only a small overlapping area between them and which together provide substantially identical coverage to the sector supported by the original antenna, to upgrade the single sector to a plurality of sub-sectors without significantly affecting neighboring sites. Id. at 4:51–57. The replacement antenna introduces asymmetry into the generated beam pattern. Id. at 4:58–60. The introduction of asymmetrical beams by the replacement antenna allows close approximation of the coverage area of the conventional sector antenna being replaced. Id. at 5:61–64. For purposes of this Decision, we adopt Petitioner’s proposed construction of “a plurality of sub-sector coverage areas extending therefrom, at least one of which is asymmetrical,” as a plurality of replacement sub-sector beams, at least one of which has an asymmetrical shape, where asymmetry includes deliberate or inherent asymmetry as the broadest reasonable construction consistent with the specification.” slip op. at 8

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “49 (Fed. Cir. 2005). There, the district court invalidated claims of the patent in suit on summary judgment based on the measured dimensions of a prior art patent figure. Id. at 1148. The Federal Circuit reversed, warning “that arguments based on drawings not explicitly made to scale in issued patents are unavailing.” Id. at 1149. Petitioner here does not identify any portion of Yea disclosing that Figures 4 and 8 are drawn accurately enough to determine an asymmetrical nature of the radiation patterns. Petitioner also fails to cite to any disclosure in Yea that identifies or describes an asymmetrical nature of the radiation patterns. Furthermore, Petitioner also has not explained why the shapes shown in the linear scale drawings of Figure 4 would show similar shapes when converted to a logarithmic scale. Additionally, Petitioner does not explain why the carrier to interference ratio shown in Figure 8 can be used to accurately measure antenna radiation beam patterns. We find Petitioner does not sufficiently establish that the plots shown in Figures 4 and 8 of Yea can be used to determine whether the antenna radiation beam pattern is asymmetrical. On the record before us, we determine the Petition and supporting evidence does not adequately establish a reasonable likelihood that Petitioner would prevail in showing that Yea anticipates independent claims 1, 13, and 20. b. Dependent Claims 2, 6, 7, 9, 11, 12, 14, 15, 18, 19, 21, 22, 24, and 27 Petitioner argues that Yea anticipates dependent claims 2, 6, 7, 9, 11, 12, 14, 15, 18, 19, 21, 22, 24, and 27. Pet. 47–53. In so arguing, Petitioner relies on Yea as disclosing the claimed asymmetrical coverage area. Id. Because we are not persuaded that Yea discloses this limitation, we are not persuaded that Petitioner establishes a reasonable likelihood of prevailing in showing that Yea anticipates dependent claims 2, 6, 7, 9, 11, 12, 14, 15, 18, 19, 21, 22, 24, and 27.” slip op. at 14

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

    “as well as testimony of both Mr. Collins and Mr. Cosgrove. Under Rule 37 C.F.R. § 42.108, any genuine issues of material fact created by the testimonial evidence should be viewed in light most favorable to the petitioner solely for purposes of deciding whether to institute an inter partes review. Even reviewing the testimony of Mr. Collins in the light most favorable to Petitioner, we determine Petitioner has established only that asymmetrical beams may be used in a planar array antenna, but not that a person of ordinary skill in the art would have understood steered beams of a planar array antenna are necessarily asymmetrical. Mr. Collins cites to Litva (Ex. 1009) and Wästberg (Ex. 1018) in stating that prior art steered beams of a planar array antenna can be asymmetrical beams. Ex. 1024 ¶ 179. We credit Patent Owner’s arguments and the testimony of Mr. Cosgrove to determine Petitioner does not sufficiently establish the likelihood that a person of ordinary skill in the art would have understood that steered beams of a planar array antenna are necessarily asymmetrical. Further, Petitioner fails to set forth a sufficient rationale for why a person of ordinary skill in the art would use the asymmetrical beams of the prior art with the disclosure of Yea. Pet. 39–40. On the record before us, we determine the Petition and supporting evidence does not adequately establish a reasonable likelihood that using asymmetrical beams in Yea would have been obvious. We therefore conclude that the information presented does not show a reasonable likelihood that Petitioner would prevail in showing the subject matter of claims 1, 2, 6, 7, 9, 11–15, 18–22, 24, and 27 would have been obvious over Yea, Metawave Website, Litva, and Wästberg.” slip op. at 22

  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 8,311,582

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.