- PTAB · Jan 5, 2017 · IPR2016-01367 · APJ Michael J Fitzpatrick · IPR · Institution
The Board denied institution because Wollesen did not disclose the claimed interlayer insulating film, and Jeng did not cure that deficiency.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a). Upon consideration of the Petition and Preliminary Response, and for the reasons explained below, we determine that the information presented does not show a reasonable likelihood that Petitioner would prevail with respect to any claim challenged in the Petition. See 35 U.S.C. § 314(a); 37 C.F.R § 42.108. The Petition is denied.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“We are in general agreement with Patent Owner’s proposed construction. However, our construction adds the word “other” and is as follows: an insulating film located between but not within other layers. Our construction is supported sufficiently by the intrinsic evidence alone. The ’980 patent uses the terms “interlayer” and “buried” to refer to two distinct configurations of insulating films. The term “interlayer insulating film” is described with something (namely, a metal wire layer) formed on top of it. E.g., Ex. 1001, Abstract (“A plurality of metal wires are formed on an underlying interlayer insulating film.”), 13:39–41 (“As is shown in FIG. 10, on an underlying interlayer insulating film 11 is formed a metal wire layer including a plurality of metal wires 12.”); see also id. at Fig. 1 4 The ’980 patent identifies several priority applications, having a range of filing dates from September 10, 1996 through November 19, 2007. Ex. 1001, [22], [64], [60], [30]; see also id. at 1:10–20 (identifying the U.S. priority applications). The ’811 patent was filed within this range—on December 20, 2000. Ex. 2003, [22]. In its Preliminary Response, Patent Owner does not argue for entitlement to any particular priority date. On this record, we find the ’811 patent’s disclosure probative of what a person of ordinary skill in the art would have understood “intralayer” to mean in the context of semiconductors. (illustrating the same). In contrast, the term “buried insulating film” is described with something (namely, metal wires) buried within it. E.g., id., Abstract (“Areas among the metal wires are filled with a buried insulating film.”), 13:39–48 (“The metal wires 12 are buried in the insulating film 13.”), Fig. 1 (ref. 11, 13); see also id. at Fig. 1 (illustrating the same); dependent claims 19 and 36 (reciting “wherein said first dielectric film is buried, among said areas among said metal wires, at least in an area having a minimum pitch between said metal wires.”). Patent Owner’s extrinsic evidence, discussed above, also supports our construction.” slip op. at 9
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“An “interlayer insulating film” within the meaning of claims 18 and 35 is an insulating film located between but not within other layers. As Patent Owner correctly points out, in Wollesen, dielectric layer 9 is located, at least partially, within the same layer as conductive layer 8. See Prelim. Resp. 24 (“dielectric layer 9 would be considered an ‘intralayer’ dielectric, not an ‘interlayer’ insulating film”). Put another way, conductive layer 8 is buried within dielectric layer 9 in a manner similar to that of the ’980 patent’s metal wires 12 buried within buried insulating film 13. See Ex. 1001, 13:39–48, Fig. 1. Accordingly, dielectric layer 9 is not an interlayer insulating film within the meaning of claims 18 and 35.5 5 The Wollesen embodiment that Petitioner asserts as anticipatory also includes “[i]nterlayer dielectric layer 6.” Ex. 1006, 1:57. Petitioner does not argue, however, that it meets the “interlayer insulating film” limitation of claims 18 and 35. Indeed, so arguing would have compromised Petitioner’s arguments with respect to other limitations of claims 18 and 35. Petitioner has not shown how any of the challenged claims, all of which recite or incorporate “an interlayer insulating film,” is anticipated by Wollesen.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable
“C. Obviousness over Wollesen and Jeng Petitioner’s obviousness challenge relies additionally on Jeng but not in a manner that would cure the deficiency of Wollesen identified above. More specifically, Petitioner relies additionally on Jeng to meet a different limitation of claims 18 and 35, namely “a surface protecting film including a first dielectric film with a small dielectric constant for filling at least a part of areas among said metal wires in said metal wire layer,” and no other limitations. Pet. 52–57. Accordingly, Petitioner has not shown how any of the challenged claims would have been obvious over Wollesen and Jeng.” slip op. at 13
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips - Valeo North America, Inc. / Valeo S.A. et al. v. Magna Electronics Inc.All claims unpatentablePTAB · Dec 22, 2016 · IPR2015-01414 · APJ Justin T Arbes · IPR · Final written decision
Claims 1, 3–12, 14, 15, 17, 19–52, 54–67, 69–79, and 81–86 are unpatentable under § 103(a) over the 17 combinations listed in the order.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“The fact that other parts of the claims recite locations of the image capture devices and the overlap zones does not mean that anything more should be read into the “without duplication of objects” clause, which appears clear on its face. Further, the claims do not say anything about parallax or require that the problem of parallax be solved for the synthesized image. Indeed, parallax is not the same as the duplication of objects. See Ex. 1066 ¶ 11 (“Duplication . . . is different from parallax. For example, when each of the cameras have a common center of projection, there will be little or no parallax, but given their overlapping fields of view, the cameras may nonetheless capture the same objects multiple times resulting in duplication.” (citation omitted)). Thus, we are not persuaded that reading in any language pertaining to parallax effects would be appropriate based on the language of the claims.” slip op. at 13
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Neither party explains in detail why their proposed level of ordinary skill in the art should be adopted. After reviewing the evidence, including the cited prior art, however, we are persuaded that Petitioner’s definition is substantially correct. The ’724 patent describes “rearview vision systems which provide the vehicle operator with scenic information in the direction rearward of the vehicle” using “image capture devices, such as CMOS [(complementary metal-oxide semiconductor)] imaging arrays and the like.” Ex. 1001, col. 1, ll. 22–27. “Camera-based rearview vision systems” had been proposed at the time, but had not “obtained commercial acceptance” and suffered from various problems according to the ’724 patent. Id. at col. 1, l. 60–col. 2, l. 55. The ’724 patent further acknowledges that various aspects of the disclosed systems, such as, for example, CMOS and charge-coupled device (CCD) imaging arrays, optical correction systems, various types of image filtering, backlit liquid-crystal displays (LCDs), and systems for measuring the distance of an object behind the vehicle, were known at the time. See, e.g., id. at col. 11, ll. 60–64, col. 12, ll. 33–37, col. 13, ll. 26–41, col. 17, ll. 48–62, col. 20, ll. 42–53, col. 22, ll. 3–19, 44–55. Drs. Wolberg and Wilhelm further testify as to the development and state of the art by the time of the ’724 patent, which we find helpful in assessing what background knowledge would have been available to a person of ordinary skill in the art. See, e.g., Ex. 1020 ¶¶ 27–39; Ex. 1022 ¶¶ 20–27. As a whole, the evidence indicates a higher level of ordinary skill than what Patent Owner proposes, and suggests, for example, that an ordinarily skilled artisan would have had at least some understanding of ways in which images from multiple cameras could be combined. See, e.g., Ex. 1020 ¶¶ 28–38; Ex. 1003, 3, 6; Ex. 1005, 3–6. Accordingly, based on our review of the ’724 patent, the types of problems and solutions described in the ’724 patent and cited prior art, and the testimony of the parties’ declarants, we conclude that a person of ordinary skill in the art would have had a bachelor’s or master’s degree in engineering, computer science, or physics (or equivalent work experience), with some familiarity with how cameras may be used in vehicles and a working understanding of combining image data from multiple cameras and microprocessor-driven controls for displays, actuators, and elementary decision making. We apply this level of ordinary skill in the art for purposes of this Decision.” slip op. at 20
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportDecided for petitioner
“Patent Owner’s arguments are not persuasive for three reasons. First, as explained above, to establish an earlier constructive reduction to practice, Patent Owner must show that the ’527 application provides sufficient written description support for the challenged claims. Patent Owner states that “each limitation of [the set of claims listed above] is supported in the ’935 patent disclosure,” but includes no substantive arguments in its Response explaining why. See id. Rather, Patent Owner cites 46 paragraphs of Dr. Etienne-Cummings’s declaration and a “Constructive Reduction to Practice Chart” spanning 43 pages. Id. (citing Ex. 2001; Ex. 2004 ¶¶ 54–99). Any arguments contained in these materials cannot be incorporated by reference into the Response. See 37 C.F.R. § 42.6(a)(3) (“Arguments must not be incorporated by reference from one document into another document.”).12 Consequently, we do not consider information presented in the declaration or claim chart but not discussed sufficiently in the Response. Second, even if Dr. Etienne-Cummings’s analysis and the claim chart are considered, they are not sufficient. The claim chart provides only block 12 See also Paper 8, 3 (“The patent owner is cautioned that any arguments for patentability not raised in the response will be deemed waived.”); Apple, Inc. v. Ameranth, Inc., Case CBM2014-00013, 8 (PTAB Mar. 20, 2015) (Paper 37) (“Arguments that are not developed and presented in the Patent Owner Response, itself, are not entitled to consideration.”), reversed-in-part on other grounds, No. 2015-1703, -- F.3d --, 2016 WL 6958650 (Fed. Cir. Nov. 29, 2016); Cisco Sys., Inc. v. C-Cation Techs., LLC, Case IPR2014-00454, 7–10 (PTAB Aug. 29, 2014) (Paper 12) (informative) (noting that “[o]ne purpose of the prohibition against incorporation by reference is to eliminate abuses” of the page limits established for the parties’ substantive papers, and that citing “large portions of another document, without sufficient explanation of those portions, amounts to incorporation by reference”). quotes and figures from the ’935 patent,13 but does not explain in any detail why they provide support for the various limitations of the challenged claims. See Ex. 2001. Likewise, the majority of Dr. Etienne-Cummings’s declaration merely states that “the features of [the respective claim] are disclosed” at the block-quoted portions of the ’935 patent, without explanation. See, e.g., Ex. 2004 ¶¶ 56–61, 64, 65, 67–74, 76–99. Third, we agree with Petitioner that the ’935 patent does not provide sufficient written description support for the independent claims of the ’724 patent (claims 1, 49, 65, and 78), each of which recites that the “synthesized image is displayed by a single display screen of a reconfigurable display device that is viewable by a driver of the equipped vehicle when normally operating the equipped vehicle.” See Reply 13–15. As explained above, we interpret “reconfigurable display” to mean a display in which a portion of the display upon which the driver views the synthesized image is used as a high-information content display to selectively display various types of auxiliary information. See supra Section II.A.4. Patent Owner cites various excerpts from the ’935 patent describing display 20, but these portions do not call the display device “reconfigurable” or disclose that it is used to selectively display information. See, e.g., Ex. 2001, 5–6 (citing Ex. 2002, col. 3, l. 61–col. 4, l. 5, col. 5, ll. 48–50, col. 6, ll. 5–12, 22–39); Ex. 2004 ¶ 56. Indeed, the ’724 patent Specification 13 It is unclear why Patent Owner attempts to map the disclosure of the ’935 patent, rather than the ’527 application, to the challenged claims. The ’935 patent issued on September 23, 1997 (after Yamamoto published), from the ’527 application filed on May 22, 1995 (before Yamamoto published). Patent Owner does not provide a copy of the ’527 application in the record to show that the written description is the same as that of the issued ’935 patent.” slip op. at 26
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“many ways in which a reference may be disseminated to the interested public, ‘public accessibility’ has been called the touchstone in determining whether a reference constitutes a ‘printed publication’ bar under 35 U.S.C. § 102(b).” Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1348 (Fed. Cir. 2016) (citation omitted). “A reference will be considered publicly accessible if it was ‘disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it.’” Id. (citation omitted). We first summarize the evidence presented regarding Wang’s alleged public accessibility. Wang is a publication of the Institute of Electrical and Electronics Engineers (IEEE) and has a copyright notation of “TH0367-3/91/0000/0100$01.00 © 1991 IEEE” on the first page. See Ex. 1009, 1. Petitioner contends that the document was published “on May 27–31, 1991,” citing the testimony of Dr. Wolberg. Pet. 7. Dr. Wolberg testifies that “[a]s a person who regularly reviews scholarly articles, including IEEE publications such as the Wang article, and as someone who regularly attends conferences such as the IEEE conference in which the Wang paper was presented,” he believes that Wang was published in May 1991. Ex. 1020 ¶ 84. Dr. Wolberg also discusses two publications (Exhibits 1040 and 1042) that cite Wang prior to the effective filing date of the ’724 patent (May 22, 1996), “which further indicates to [Dr. Wolberg] that Wang was publicly accessible.” Id.; see Ex. 1040, 12 (cited reference 16); Ex. 1042, 3 (cited reference 4). Finally, he cites the University of Edinburgh website, which “states that the authors of the Wang article began work on CMOS imaging sensors as early as 1986, and began publishing articles reporting the results of their work that led to the incorporation of a CMOS chip in a video camera in 1989.” Ex. 1020 ¶ 84 (citing Ex. 1044). Petitioner presents additional evidence with its Reply that allegedly confirms Wang’s public accessibility prior to May 22, 1996. Reply 11–12. First, Petitioner submits a declaration from Gerard P. Grenier, the Senior Director of Publishing Technologies for the IEEE.17 Ex. 1055. Mr. Grenier states that Wang “was published and presented as part of [the] Euro [A]SIC ’91 [conference] which occurred May 27–31, 1991.” Id. ¶ 9. According to Mr. Grenier, “[t]he Article was published by IEEE as part of the conference proceedings on the date of the conference. Copies of the conference proceedings were made available to attendees of the conference.” Id. ¶ 6. Mr. Grenier also testifies that “IEEE maintains records of the dates on which articles were first made available for public download,” “[t]hese records are maintained as part of the ordinary course of business of the IEEE [and] are updated regularly as articles are published,” and he has “personal knowledge of the records.” Id. ¶ 7. Second, Petitioner submits a copy of Wang, with a “EURO ASIC ’91” cover page and table of contents, “[s]helved” at the Linda Hall Library in Kansas City, Missouri in 1991. Ex. 1046. Third, Petitioner submits a certified copy of Wang from the Library of Congress, with the same cover page and table of contents and a date stamp of June 5, 1992. Ex. 1060. Fourth, Petitioner notes that the U.S. Court of Appeals for the Federal Circuit affirmed a Board decision finding similar claims with a priority date of February 26, 1993, unpatentable based in part on Wang in 17 Petitioner submitted a substantially similar version of the declaration, dated approximately one month earlier, with its Petition, but did not discuss the declaration in the Petition. Compare Ex. 1039, with Ex. 1055. Our analysis applies equally to both versions of the declaration. In re Magna Elecs., Inc., 611 F. App’x 969, 973 (Fed. Cir. 2015) (unpublished) (Ex. 1045). Reply 11. Patent Owner disputes the sufficiency of Petitioner’s evidence of” slip op. at 43
Patent outcomesUS 8,643,724 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSRPatents in suitUS 8,643,724 - Fitbit, Inc. v. Bodymedia, Inc.Institution deniedPTAB · Sep 8, 2016 · IPR2016-00707 · APJ Trevor M Jefferson · IPR · Institution
The Board denied institution because Fitbit did not show a reasonable likelihood that claims 1–29 would have been obvious over Mault 470 and Mault 089, which were not shown to be prior art.
RulingsInstitution decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“Petitioner asserts that the broadest reasonable construction of “contextual data of the individual” as recited in the claim limitation 1(b)(i) is “data relating to an individual’s activity state environment, surrounding, or location.” Pet. 17. Petitioner asserts that this construction was applied in the related ITC proceeding. Id. (citing Ex. 1015, 17–22, 33). Patent Owner does not contest this proposed construction. For purposes of this Decision, we adopt Petitioner’s proposed construction for “contextual data of the individual.”” slip op. at 6
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateNot shown unpatentable
“of the claimed subject matter without explaining what the parent application conveys to those skilled in the art. See Pet. 9–10 (discussing whether June 2000 applications contain “equivalent description” of claim 1 limitations); Ex. 1003 ¶ 32 (addressing whether “equivalent description” exits in the parent applications). Contrary to Petitioner’s application of the “equivalent description,” the test for sufficiency of support in a parent application is not “the presence or absence of literal support in the [parent application] for the claim language,” In re Kaslow, 707 F.2d 1366, 1375 (Fed. Cir. 1983), but instead is whether the disclosure of the application relied upon reasonably conveys to the artisan that the inventor had possession at that time of the later claimed subject matter, Vas-Cath Inc., 935 F.2d at 1563–64; see Yorkey v. Diab, 605 F.3d 1297, 1303 (Fed. Cir. 2010) (quoting In re Kaslow, 707 F.2d at 1375). In the present case, Petitioner relies on conclusory statements that [t]he June 2000 applications do not contain an equivalent description of a processing unit configured to provide feedback for an individual’s weight-loss goal by performing each of the steps recited in subparts b.(i)–(v) of claim 1 in sufficient detail such that one of skill in the art can clearly conclude the applicant invented the claimed invention.” slip op. at 12
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference not prior artNot shown unpatentable
“Based on the foregoing, we find that Petitioner has not shown that Mault 470 and Mault 089 are prior art, and, thus, there is not a reasonable likelihood that Petitioner would prevail in showing that claims 1–29 would have been obvious under 35 U.S.C. § 103 over Mault 470 and Mault 089.” slip op. at 15
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)
“Mault 470 and Mault 089 are prior art, and, thus, there is not a reasonable likelihood that Petitioner would prevail in showing that claims 1–29 would have been obvious under 35 U.S.C. § 103 over Mault 470 and Mault 089. III. CONCLUSION For the foregoing reasons, we determine that the Petition fails to establish a reasonable likelihood of prevailing on the asserted ground that claims 1–29 would have been unpatentable as obvious under 35 U.S.C. § 103 over Mault 470 and Mault 089.” slip op. at 15
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurePatents in suitUS 8,398,546 - Sony Computer Entertainment America LLC / Microsoft Corporation Inc. v. Adc Technology Inc.All claims unpatentablePTAB · Jul 1, 2016 · CBM2015-00026 · APJ Michael P Tierney · CBM · Final written decision
Claims 8–14 are unpatentable under §103 as obvious over the instituted prior-art combinations.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“D. Level of Ordinary Skill in the Art Petitioner’s declarant, Mr. Garry E. Kitchen, testifies that, based on his experience in the commercial software art, a person of ordinary skill in the art at the time of the invention would have had a Bachelor of Science degree in electrical engineering, computer engineering, computer science or a related engineering discipline or equivalent experience or education. Declaration of Garry Kitchen, Ex. 1011 ¶ 33. Patent Owner does not dispute this recitation of the level of ordinary skill in the art. We adopt the level of ordinary skill in the art identified by Mr. Kitchen as it is consistent with the prior art of record. See also 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 8
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)Not reached
“Petitioner provides specific constructions for each of the interference means appearing in the dependent claims. Pet. 22–24. Patent Owner disagrees that the dependent claims recitation of interference means requires “additional functional limitations piled on top of the disclosed structure.” PO Resp. 7. Specifically, Patent Owner contends that there is only one construction of interference means, namely that which Petitioner provided with respect to the interference means of claim 8. Petitioner disagrees with Patent Owner and contends that the four dependent claims themselves recite specific functions and must further limit the claim from which they depend. Reply 7. We determine that it is unnecessary to determine whether Patent Owner or Petitioner is correct as to the specific construction of the interference means recited in claims 11, 12, 13, and 14 as the claims are unpatentable under either construction. See Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Program, Data and Combination of Program and Data Claim 8 contains the recitation “the program, the data, and a combination of the program and data together.” Petitioner contends that the term should mean “the program and/or the data.” Pet. 28; Reply 9. Petitioner, however, contends that Patent Owner was silent as to the meaning of the term during ex parte reexamination. Pet. 29. Patent Owner generally contends that the claim recitation is definite and requires operations to be performed either on “a program, or on data, or on a combination of the program and data.” PO Resp. 8. We adopt Patent Owner’s construction (operations are performed either on “a program, or on data, or on a combination of the program and data”) as it is consistent with the plain and ordinary meaning of the term and appears to be substantially the same as Petitioner’s construction. Reply, 9–10, Ex. 1011, ¶ 54.” slip op. at 11
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“The obviousness-type double patenting rejection does not demonstrate that the earlier filed ’995 patent described the invention, with all its claimed limitations. First, the rejection was based on obviousness, not anticipation. See Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997). (“One shows that one is ‘in possession’ of the invention by describing the invention, with all its claimed limitations, not that which makes it obvious.”). Second, the Examiner’s identification of “common subject matter” consists merely of that which appears in the preamble of challenged claim 8. Although the Examiner stated that there was no apparent reason why the present claims were not presented in the earlier application, Mr. Kitchen presents credible testimony that the clock means limitation “for keeping a predetermined time period after said executing means starts execution of the program or data processing,” did not appear in the earlier filed applications and written description support for it was added in the continuation-in-part ’784 application via new Figure 12. Ex. 1011 ¶¶ 46–47 and 49; compare Ex. 1001, Figures 1–14, with Ex. 1014, Figures 1–11. Based on the evidence of record, we credit Mr. Kitchen’s testimony as it is consistent with the evidence of record and hold that Petitioner has established that claims 8–14 are limited to the July 2, 1998, filing date of the ’784 application, which resulted in the issuance of the ’520 patent.” slip op. at 15
Patent outcomesUS 6,193,520 unpatentableClaim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 6,193,520 - Enovate Medical, LLC v. Intermetro Industries CorporationAll claims unpatentablePTAB · May 11, 2016 · IPR2015-00300 · APJ Jennifer S Bisk · IPR · Final written decision
Claims 27, 28, 88, 101, and 108 are unpatentable as obvious over Dell, Sweere, and Allan, with Planar additionally applied to claim 108.
RulingsFinal written decision- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“77 Fed. Reg. 48,756, 48,759 (Aug. 14, 2012) (internal citations omitted). Generally, “the ‘real party-in-interest’ [on the petitioner side] is the party that desires review of the patent. Thus, the ‘real party-in-interest’ may be the petitioner itself, and/or it may be the party or parties at whose behest the petition has been filed.” Id.” slip op. at 8
- ExcludeMotion to exclude, grantedGranted
“IV. MOTIONS TO EXCLUDE Petitioner filed a Motion to Exclude Exhibits 2003–2006. Paper 33. Each of Exhibits 2003–2005 is a license agreement, and Exhibit 2006 is a Declaration by Robert A. Sobie. All of this evidence was submitted by Patent Owner as objective evidence of secondary considerations. Because we do not rely on any of that evidence in a manner adverse to Petitioner, we dismiss the Motion as moot. Patent Owner filed a Motion to Exclude Exhibit 1007, which is a declaration by T.E. Schlesinger, Ph.D., which Petitioner filed with its Reply. Paper 35. Because we do not rely on Exhibit 1007 in any manner, we dismiss the Motion as moot.” slip op. at 28
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Other
“entity. It was filed without our authorization because it was filed with Patent Owner’s Opposition to Petitioner’s Motion to Exclude despite that Exhibit 202316 is not responsive to the Motion to Exclude. Paper 42 (“Opp. to Pet. Mot. to Excl.”). In fact, Patent Owner’s Opposition requests that we enter into the record “new Exhibit 2023, which was finalized subsequent to Patent Owner’s Response.” Opp. to Pet. Mot. to Excl. 1. A request for relief should not be made in an opposition brief. It should be made in a motion. 37 C.F.R. § 42.20(a) (“Relief, other than a petition requesting the institution of a trial, must be requested in the form of a motion.”). Further, a motion (and, thus, a request for relief) may be filed only if authorization has been obtained. 37 C.F.R. § 42.20(b) (“A motion will not be entered without Board authorization. Authorization may be provided in an order of general applicability or during the proceeding.”). Consequently, Exhibit 2023 shall be expunged because it was filed without our authorization. See 37 C.F.R. § 42.7.” slip op. at 29
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“No limitation requires an express construction for purposes of the patentability challenge at issue here. See Pet. 6–7 (offering only one proposed construction, which was not material to the patentability challenge);8 PO Resp. 11 (“Patent Owner agrees that the claim terms involved in the [instituted Grounds] do not require construction for purposes of resolving this [inter partes review (IPR)].”).” slip op. at 7
Patent outcomesUS 6,721,178 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,721,178 - Enovate Medical, LLC v. Intermetro Industries CorporationAll claims unpatentablePTAB · May 11, 2016 · IPR2015-00301 · APJ Michael J Fitzpatrick · IPR · Final written decision
Claims 1 and 2 are unpatentable as obvious over Dell and Sweere because their combined teachings render the claimed workstation obvious.
RulingsFinal written decision- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDenied
“(“Galderma”), but Galderma’s facts bear a significant distinction. In Galderma, the non-identified party that was held to be a real party-in-interest was a parent corporation (Nestle Skin Health S.A.) that ultimately owned both named petitioners (Galderma S.A. and Q-Med AB). One of the named petitioners (Q-Med AB) manufactured devices that were accused of infringement in a related lawsuit, but another entity, which was also ultimately owned by the non-identified Nestle Skin Health S.A., distributed the accused devices. Galderma at 8. Furthermore, the Galderma panel found that the business entities involved “do not maintain well-defined corporate boundaries, and are so intertwined that it is difficult to determine where one ends and another begins.” Id. at 9 (internal quotation marks omitted). We have not made that finding here, nor is there sufficient evidence to support such a finding. It is Petitioner alone who stands accused of infringement in the related lawsuit. Riverside has not been named in that lawsuit. Paper 7, 2. Nor has Patent Owner shown that Riverside has a legal, and not merely financial, interest in this inter partes review. As noted in the Guide, “the ‘real party-in-interest’ [on the petitioner side] is the party that desires review of the patent.” Guide, 77 Fed. Reg. at 48,759. Under the facts before us, it is Petitioner who, having been sued for infringement of the ’220 patent, desires review of the patent. Patent Owner’s Motion to Dismiss and Terminate is denied.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“No limitation requires an express construction for purposes of the patentability challenge at issue here. See Pet. 4–5 (offering only one proposed construction, which was not material to the patentability challenge);5 PO Resp. 9 (“Patent Owner agrees that the claim terms involved in the Ground do not require construction for purposes of resolving this [inter partes review (IPR)].”).” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“These stated reasons to combine the relied-upon prior art teachings of Dell and Sweere, and in the manner asserted, are sufficient. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (requiring “an apparent reason to combine the known elements in the fashion claimed by the patent at issue”). Further, nothing unpredictable results from such a combination. See id. at 416 (“The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.”). Patent Owner argues that there was no reason in the art, other than impermissible hindsight, to locate a computer terminal in Dell’s compartment 100 instead of on the top surface 22 in order to free up work space. PO Resp. 27–28. Patent Owner further argues that it was the inventors of the ’220 patent who “recognized” the need for an unobstructed work surface. Id. at 28. We disagree. Dell explicitly teaches that the work surface may omit the computer so that other equipment may be carried on it. Ex. 1003, 2:43–47 (“These openings can include grommets 32 which can be used to route wires or locking equipment in which to lock a lap/top computer (40 shown in phantom) or other equipment that may be carried on top of the work surface.”). Furthermore, each of Dell’s seven claims requires a work surface, but none of its claims requires a computer (or any other equipment) on the work surface. Id. at 4:32–65. Thus, Dell teaches a top of a work surface that may be free of a computer. Further, Sweere teaches placing a computer separate from its display screen and out of the way. See Ex. 1004, Fig. 29 (illustrating CPU mounting bracket 1218 separate from display screen 216). Petitioner’s obviousness rationale does not rely on hindsight.” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation foundDecided for petitioner
“Patent Owner argues that there was no reason in the art, other than impermissible hindsight, to locate a computer terminal in Dell’s compartment 100 instead of on the top surface 22 in order to free up work space. PO Resp. 27–28. Patent Owner further argues that it was the inventors of the ’220 patent who “recognized” the need for an unobstructed work surface. Id. at 28. We disagree. Dell explicitly teaches that the work surface may omit the computer so that other equipment may be carried on it. Ex. 1003, 2:43–47 (“These openings can include grommets 32 which can be used to route wires or locking equipment in which to lock a lap/top computer (40 shown in phantom) or other equipment that may be carried on top of the work surface.”). Furthermore, each of Dell’s seven claims requires a work surface, but none of its claims requires a computer (or any other equipment) on the work surface. Id. at 4:32–65. Thus, Dell teaches a top of a work surface that may be free of a computer. Further, Sweere teaches placing a computer separate from its display screen and out of the way. See Ex. 1004, Fig. 29 (illustrating CPU mounting bracket 1218 separate from display screen 216). Petitioner’s obviousness rationale does not rely on hindsight.” slip op. at 17
Patent outcomesUS 6,493,220 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,493,220 - Asustek Computer Inc. / Asus Computer International v. Exotablet, Ltd.All claims unpatentablePTAB · Apr 18, 2016 · IPR2015-00046 · APJ Brian J Mcnamara · IPR · Final written decision
Claims 1–4, 6–7, 14, and 19 are unpatentable: claims 1–3, 6, and 19 are anticipated, and the challenged claims are obvious over the listed grounds.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“Most important to our construction, however, is that the relevant language of claim 7 requires only that the display screen is concealed. More specifically, claim 7 does not recite that the display screen is concealed to prevent operation of any particular function, nor does claim 7 recite that the mobile phone keypad or any functional buttons on the face of the mobile phone be concealed by the input/output device. The relevant language of claim 7 requires only that the input/output device receive the mobile phone in such a manner that the mobile phone display screen is concealed. As the claim explicitly recites that the mobile phone display screen is concealed by the input/output device, we do not read into claim 7 a limitation requiring that any other part or functionality be concealed by the input/output device. For purposes of this Decision, we interpret “concealed” to mean hidden from view from all perspectives. See Tr. 6:16–9:18, 32:23–33:14.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“The question before us is whether one of ordinary skill would have been motivated to flip the mobile phone in Barvesten to conceal the display screen in a device that provides wireless communications. Barvesten discloses the advantages to enhancing the display screen, which is a feature recited in claim 7. Petitioner’s arguments that one of ordinary skill would have been motivated to protect the display screen from damage and that flipping the phone in the Barvesten cradle would have provided this advantage are persuasive. Reply 10–11. As discussed above, the parties agree that, if flipped in the cradle, the mobile phone in Barvesten could be used to make a voice call by removing the phone from the cradle. Thus, the evidence is that, even if modified as suggested by Petitioner, Barvesten would have remained operable for its intended functions. Indeed, making a voice call with the mobile phone removed from the cradle is described in the ’919 Patent. Thus, we find that one of ordinary skill would have been motivated to modify Barvesten and that, as modified, Barvesten would have continued to be operative for its intended purpose, i.e. to provide wireless communications and an enhanced user interface. On this basis, we conclude that, under this theory, Petitioner has demonstrated that the limitations of claim 7 are taught or suggested by Barvesten, and that a person of ordinary skill in the art would have had reason to modify the teachings of Barvesten to achieve the device recited in claim 1.” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundMotivation foundDecided for petitioner
“Kumar’s acknowledgement of Motorola’s clipOn Organizer as an attachment to its StarTAC cellular telephone serves to distinguish Kumar’s integrated combination as an improvement, rather than as a teaching away from Kahn. Kahn discloses a CDO for a flip phone, stating that what is needed is a solution that “combines telephony with personal information management in a single integrated hand-held unit” (Ex. 1003, col. 1, l. 66–col. 2, l. 1) and that the CDO: is preferably implemented as an add-on component[,] which can be easily attached and detached from a phone by a customer and, once in place, can dramatically enhance the phone functionality, converting the phone into a “smart phone.” Id. at col. 2, ll. 17–21. With respect to a bar phone, Kumar discloses that: the present invention relates to systems that detachably mate a plurality of portable processor based devices to provide their combined functionality in an integrated structure. Ex. 1005, 1:20–22. Contrary to Patent Owner’s contentions, these disclosures from Kahn and” slip op. at 25
- Obviousness (§103) › Objective indicia / secondary considerations › CopyingDecided for petitioner
“consideration of copying. PO Resp. 49–51. The sole support Patent Owner cites for copying is a District Court’s finding that Patent Owner was likely to succeed on the merits of its claim that Petitioner infringed claim 1 and the purported admission by Petitioner’s expert that Petitioner’s PadFone™ product meets the elements of claim 7. Id. at 50 (citing Ex. 2002, Deposition Transcript of Dr. William Alberth (Alberth Tr.”) 18:14–19:15, Ex. 2001). However, as Petitioner notes, the cited subject matter from the District Court is silent on claim 7 and the question of infringement is entirely different from that of copying. Reply 23–24; see Wyers v. Master Lock Co., 616 F.3d 1231, 1246 (Fed. Cir. 2010) (“Not every competing product that arguably falls within the scope of a patent is evidence of copying; otherwise, ‘every infringement suit would automatically confirm the nonobviousness of the patent.’. . . [C]opying requires evidence of efforts to replicate a specific product.”)(internal citation omitted). Patent Owner cites to the following testimony of Dr. Sirovica referring to the implications of the District Court’s finding: I am informed and believe that the Court’s ruling and Mr. Alberth’s testimony evidences that Patentee ExoTablet’s device is a copy of Petitioner’s invention as claimed in ‘919 claim 7. I further understand that evidence of copying further demonstrates that claim 7 of the [’]919 patent is not unpatentable for obviousness. Sirovica Decl. ¶ 76. Dr. Sirovica does not provide the basis of his “understand[ing]” or say who informed him concerning the District Court’s finding. However, it is clear from Dr. Sirovica’s statement that he did not reach this conclusion himself. Patent Owner has offered no evidence to substantiate its argument of copying as an objective indicia of non-obviousness. Petitioner also notes that Patent Owner omitted from its discussion of the District Court’s order a finding that Petitioner’s obviousness case presented a substantial question of invalidity. Id. at 24. In fact, notwithstanding the District Court’s finding that Patent Owner was likely to succeed on the merits of its claim that the accused device meets the limitations of claim 1, the court denied Patent Owner’s motion for a preliminary injunction, finding that Petitioner “has raised a substantial question of invalidity.” Ex. 2004, 19. In consideration of the above, we conclude that there are no objective indicia that would support a finding of non-obviousness of claim 7.” slip op. at 27
Patent outcomesUS 7,477,919 unpatentableClaim construction§ 103 obviousnessPatents in suitUS 7,477,919 - Apple Inc. v. Aylus Networks, Inc.All claims unpatentablePTAB · Mar 31, 2016 · IPR2014-01565 · APJ Michael J Fitzpatrick · IPR · Final written decision
Claims 1, 3, 5–20, 22, and 24–33 are unpatentable as obvious over UPnP Design.
RulingsFinal written decision- BurdenUnpatentable
“in its claim charts to support its assertion that claims 1, 3, 5–20, 22, and 24–33 would have been obvious over UPnP Design. Pet. 13–31. UPnP Design provides express teachings of how to extend the UPnP architecture over the Internet from one UPnP network to another. Ex. 1008, 185; Ex. 1016, 1. Thus, we agree with Petitioner’s conclusion of obviousness, stated as follows: [I]t would have been obvious to one of skill in the art to modify the disclosures of UPnP Design . . . in order to extend the accessibility and operability of UPnP networks beyond a local network or single sub-network and/or have multiple UPnP networks communicate with each other, especially because a goal of UPnP was to have UPnP devices automatically and universally interact with each other, as discussed by UPnP Design itself. Pet. 16 (emphasis added).” slip op. at 13
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“that claims 1, 3, 5–20, 22, and 24–33 would have been obvious in view of UPnP Design. See Inst. Dec. 19–20 (setting forth ground for trial); 35 U.S.C. § 316(e) (burden of persuasion applies). In assessing obviousness, “the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved.” Graham v. John Deere Co., 383 U.S. 1, 17 (1966).5” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“With respect to the first issue, Petitioner construes “negotiate media content delivery with at least one of the MS and the MR” as “coordinate transport of media content from the MS to the MR,” which is one of two ways Patent Owner proposed that it be construed in the related lawsuit. Pet. 10; Ex. 1007, 22. And, the court ultimately did so construe it in the related lawsuit. Paper 9, 10. With respect to second issue, the parties agree that “cooperate with CP logic to negotiate media content delivery between the MS and the MR,” means “work with the CP logic to coordinate transport of media content from the MS to the MR.” Pet. 10; PO Resp. 28–29. These proposed constructions are reasonable and we adopt them. In sum, we apply our constructions from our Institution Decision and the following additional constructions. Term Construction negotiate media content coordinate transport of media content from delivery with at least one the MS to the MR of the MS and the MR work with the CP logic to coordinate cooperate with CP logic transport of media content from the MS to to negotiate media content delivery between the MR the MS and the MR” slip op. at 9
- Expert testimonyOther
“Petitioner notes that “Device Relay serves data at least by ‘mirror[ing] all other devices from one network on to the other’ and is accessible ‘over the Internet’ and ‘over the WAN.’” Pet. 17 (first quoting Ex. 1008, 185; and then quoting Ex. 1017, 3). Petitioner further notes “that using Device Relay (CP logic of a serving node), ‘[c]ontrol points on the other network can interact with mirrored devices’ because ‘events and action invocations are forwarded to the source relay using SOAP.’”6 Id. (first quoting Ex. 1016, 1; and then quoting Ex. 1017, 3). Petitioner argues that the Device Relay controls UPnP devices on a remote local area network on behalf of a local area network control point and, therefore, constitutes control point (CP) logic. Id. at 18 (citing Ex. 1012 (Mayer-Patel Decl.) ¶ 57). Dr. Mayer-Patel relies on UPnP’s teaching that “[a]ny entity that invokes the services of a UPnP device is a control point.” Ex. 1022 ¶ 57 (quoting Ex. 1008, 19). Dr. Mayer-Patel further notes that “[e]ach mirrored device actually handles the action invocations and subscription requests on the remote network.” Id. ¶ 57 (quoting Ex. 1016, 1).” slip op. at 14
Patent outcomesUS RE44,412 unpatentableClaim construction§ 103 obviousnesscites Graham - EMC Corporation v. Acqis LLCNo claims unpatentablePTAB · Mar 8, 2016 · IPR2014-01462 · APJ Robert J Weinschenk · IPR · Final written decision
Claims 54 and 56–61 were not shown unpatentable because the evidence did not establish that the cited references rendered the claimed PCI transaction communication obvious.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“construction in the Decision on Institution. The evidence indicates that the term “Peripheral Component Interconnect (PCI) bus transaction” refers to a particular industry standard, not just any communication with an interconnected peripheral component. Industry literature and dictionaries use the proper noun “Peripheral Component Interconnect” and the abbreviation “PCI” to refer to a particular industry specification for a local bus. See, e.g., Ex. 2001, 1; Ex. 2002, 6–7; Ex. 2003, 7–8. The challenged claims recite “Peripheral Component Interconnect” as a proper noun and abbreviate it as “PCI,” indicating that the challenged claims use those terms consistent with the understood industry meaning. Ex. 1001, col. 43, ll. 48–49, col. 44, l. 6; see Azure Networks, LLC v. CSR PLC, 771 F.3d 1336, 1348 (Fed. Cir. 2014). The written description similarly uses the abbreviation “PCI” to refer to a particular industry standard, and uses the common noun “peripheral bus” to refer to a generic peripheral bus. Compare Ex. 1001, col. 5, ll. 31–33 (“The present invention . . . interface[s] two PCI or PCI-like buses”), with id. at col. 10, ll. 53–55 (“Additionally, the peripheral controller is coupled to a clock control logic, a configuration signal, and a peripheral bus.”) (emphasis added).” slip op. at 6
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“obvious over Horst and LVDS Owner’s Manual; claims 56 and 59 would have been obvious over Horst, LVDS Owner’s Manual, and Pocrass; and claim 58 would have been obvious over Horst, LVDS Owner’s Manual, and Deters. Pet. 58–59. A claim is unpatentable as obvious under 35 U.S.C. § 103(a) if the differences between the claimed subject matter and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which the subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations, including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of ordinary skill in the art; and (4) any objective indicia of non-obviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). We have considered the parties’ arguments and supporting evidence, and we determine that Petitioner has not shown by a preponderance of the evidence that claims 54 and 56–61 would have been obvious over the cited references.” slip op. at 7
- ExcludeMotion to exclude, deniedMixed
“Owner argues that paragraphs 10–24 and 31–37 of Exhibit 1031 should be excluded as irrelevant and prejudicial because Petitioner relies on those paragraphs to support improper arguments in the Reply. PO Mot. 8. Petitioner argues in the Reply that the TNet transaction in Horst includes PCI address bits, and that claim 54 only requires communicating two bits of a PCI bus transaction. PO Mot. 1. Patent Owner contends that both arguments exceed the scope of a proper reply, as set forth in 37 C.F.R. § 42.23(b), and that the portions of Exhibit 1031 that Petitioner relies upon to support those arguments should be excluded as irrelevant and prejudicial. PO Mot. 2–4, 6, 7. Patent Owner’s argument is not persuasive. Patent Owner argues in the Response that the TNet transaction in Horst does not include PCI address bits. PO Resp. 27–29. As such, Petitioner’s argument in the Reply that the TNet transaction includes PCI address bits is responsive to an argument raised in the Response. See 37 C.F.R. § 42.23(b) (generally permitting a reply to respond to arguments raised in a response). Patent Owner also argues in the Response that claim 54 requires communicating a 32-bit PCI address. PO Resp. 8–11. As such, Petitioner’s argument in the Reply that claim 54 only requires communicating two bits of a PCI bus transaction is responsive to an argument raised in the Response. Because we are not persuaded that the identified arguments in the Reply are improper, the premise of Patent Owner’s Motion to Exclude Exhibit 1031 fails. Therefore, Patent Owner’s Motion to Exclude paragraphs 10–24 and 31–37 of Exhibit 1031 is denied.” slip op. at 16
Patent outcomesUS 8,041,873 not shown unpatentableClaim construction§ 103 obviousnesscites GrahamPatents in suitUS 8,041,873 - EMC Corporation v. Acqis LLCNo claims unpatentablePTAB · Mar 8, 2016 · IPR2014-01469 · APJ Robert J Weinschenk · IPR · Final written decision
Claims 24 and 31–33 were not shown unpatentable because Petitioner failed to prove obviousness over either asserted reference combination, including failure to establish Bogaerts as prior art.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Interconnect (PCI) bus transaction” to mean “a data signal communication with an interconnected peripheral component.” Pet. 13. Patent Owner agrees with the construction in the Decision on Institution that the claim term “Peripheral Component Interconnect (PCI) bus transaction” means “Peripheral Component Interconnect (PCI) industry standard bus transaction.” PO Resp. 21–22. We see no reason now to deviate from the construction in the Decision on Institution. The evidence indicates that the term “Peripheral Component Interconnect (PCI) bus transaction” refers to a particular industry standard, not just any communication with an interconnected peripheral component. Industry literature and dictionaries use the proper noun “Peripheral Component Interconnect” and the abbreviation “PCI” to refer to a particular industry specification for a local bus. See, e.g., Ex. 2001, 1; Ex. 2002, 6–7; Ex. 2003, 7–8. The challenged claims recite “Peripheral Component Interconnect” as a proper noun and abbreviate it as “PCI,” indicating that the challenged claims use those terms consistent with the understood industry meaning. Ex. 1001, col. 27, ll. 24–25, col. 28, ll. 35–36; see Azure Networks, LLC v. CSR PLC, 771 F.3d 1336, 1348 (Fed. Cir. 2014). The written description similarly uses the abbreviation “PCI” to refer to a particular industry standard, and uses the common noun “peripheral bus” to refer to a generic peripheral bus. Compare Ex. 1001, col. 19, ll. 31–33 (“the present invention may interface two PCI or PCI-like buses”), with id. at col. 7, ll. 4–6 (“Additionally, the host controller is coupled to a clock control logic, a configuration signal, and a peripheral bus.”) (emphasis added). Petitioner and Petitioner’s declarant, Mr. Bruce Young, acknowledge that the term “Peripheral Component Interconnect (PCI)” refers to an industry standard. Ex. 1003 ¶ 58; Ex. 2006, 1, 3; Ex. 2031, 16:8–12. The evidence Petitioner identifies in support of its proposed construction is the claim construction order issued in ACQIS LLC v. Appro International, Inc., No. 6:09-cv-00148 (E.D. Tex. Feb. 3, 2011). Pet. 12–13 (citing Ex. 1013). In that case, though, the parties did not appear to dispute that the term “Peripheral Component Interconnect (PCI)” refers to an industry standard. See Ex. 1013, 7 (“The parties’ primary dispute is whether the term is limited to the conventional, parallel PCI Local Bus, and, therefore excludes PCI Express bus architecture and bus transaction protocol.”). Moreover, the district court subsequently reconsidered its construction and clarified that the term “PCI bus transaction” refers to a PCI industry standard bus transaction. Ex. 1030, 8–10. Therefore, we construe the claim term “Peripheral Component Interconnect (PCI) bus transaction” to mean “Peripheral Component Interconnect (PCI) industry standard bus transaction,” and we construe the claim term “PCI bus transaction” to mean “PCI industry standard bus transaction.”” slip op. at 6
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Horst outputs address and data bits of a PCI bus transaction in serial form over the TNet links. Pet. 31–34. Petitioner’s argument is not persuasive. The TNet processor interface in Horst translates a CPU transaction into a TNet transaction. Ex. 1009, 5 (“The interface to the destination CPU or I/O device provides mapping and validation hardware translating this virtual TNet address to the appropriate physical memory address.”), Figs. 5, 7; Ex. 2021 ¶ 94 (“The TNet Processor Interface generates TNet transactions from CPU front-side bus transactions.”). The TNet processor interface then encodes the TNet transaction using an 8B/9B encoder so that it can be output over the 9-bit serial TNet links. Ex. 1003 ¶¶ 48, 146; Ex. 1009, 3, Figs. 3, 4 (showing “8B/9B encoder”), Table 1; Ex. 2021 ¶ 105. Petitioner does not identify persuasive evidence indicating that either the CPU transaction or the TNet transaction is a PCI industry standard bus transaction. Pet. 31–34 (citing Ex. 1009, 3–8, Figs. 2, 3, 5, 7–9, Table 1; Ex. 1003 ¶¶ 159[24C(i)], 159[24C(iv)], 159[24C(v)], 159[31B(i)], 159[31B(iii)]); Ex. 2021 ¶ 129. Thus, the evidence identified in the Petition does not indicate that the information output by the TNet processor interface over the TNet links includes address and data bits of a PCI industry standard bus transaction in serial form. Petitioner points out that, after a TNet transaction is communicated over the TNet links, a TNet bus interface in the console may use information in the TNet transaction to create a PCI industry standard bus transaction if a particular I/O device is connected to a PCI bus. Pet. 31–32 (citing Ex. 1009, 7, Fig. 8). But claims 24 and 31 require more than just communicating information over serial channels that subsequently might be used in the console to create a PCI industry standard bus transaction. Claims 24 and 31, when read in light of the specification, require that the information actually communicated over the serial channels includes address and data bits of a PCI industry standard bus transaction in serial form. Ex. 1001, col. 20, ll. 60–65, col. 21, ll. 15–21, col. 27, ll. 34–38, col. 28, ll. 34–39; Ex. 2022, 15:12–16:2, 22:11–16. As discussed above, the evidence identified in the Petition does not indicate that the information output by the TNet processor interface over the TNet links includes address and data bits of a PCI industry standard bus transaction in serial form.” slip op. at 11
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedDecided for patent owner
“The evidence identified by Patent Owner indicates that the date “2 October 1996” on Bogaerts is when it was submitted to the CERN/LHCC committee. Ex. 2021 ¶¶ 170, 171, 173; Ex. 2026, 12. Although it is possible that Bogaerts was available in the CERN Library at or around the same time, Petitioner has not shown that by a preponderance of the evidence. For example, Petitioner does not cite persuasive evidence indicating that the “Submitted by 2 Oct 1996” entry in the CERN Document Server record means that Bogaerts was available in the CERN Library on that date. Tr. 23:1–12, 25:5–25; Pet. Reply 21–25. In addition, Petitioner acknowledges that the CERN Document Server record itself was not created until December 18, 2014. Tr. 25:5–25; Ex. 2011, 439. Therefore, Petitioner has not shown sufficiently that Bogaerts is a prior art printed publication based on its availability in the CERN Library.” slip op. at 17
- ExcludeMotion to exclude, deniedDenied
“should be excluded for lack of authentication under Fed. R. Evid. 901. PO Mot. 2–6. Federal Rule of Evidence 901 requires that the proponent produce evidence sufficient to support a finding that an item is what the proponent claims it is. Here, Patent Owner does not dispute that Exhibit 1011 is what Petitioner claims it is, namely a reference entitled “RD24 Status Report: Application of the Scalable Coherent Interface to Data Acquisition at LHC.” Id. What Patent Owner disputes is whether Petitioner has shown by a preponderance of the evidence that Bogaerts is prior art with respect to the ’814 patent. Id. Patent Owner attempts to characterize this dispute as a question of authentication, arguing that Petitioner has not produced “evidence that [Exhibit 1011] is a true and correct copy of a publication that was publicly available as of the date asserted by Petitioner.” Id. at 3. But this is a question of sufficiency of proof, not admissibility. Therefore, Patent Owner’s Motion to Exclude Exhibit 1011 is denied.” slip op. at 20
Patent outcomesUS RE42,814 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
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.