- Google LLC v. Jenam Tech, LLCAll claims unpatentablePTAB · Sep 16, 2022 · IPR2021-00630 · APJ Jason M Repko · IPR · Final written decision
Claim 28 is unpatentable as obvious over Wookey and Berg; Petitioner’s motion regarding estoppel is dismissed.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“We disagree with Patent Owner because we see little support for its construction in the claim language or the patent’s written description. Notably, the claim does not use the language “directly,” which is part of Patent Owner’s construction. See id. Instead, the claim recites the transitional phrase “comprising,” which does not preclude additional unrecited steps, such as releasing a resource allocated to the connection. See Pet. Reply. 13–14 (citing Ex. 1001, 20:11–21; Ex. 1031, 23:63–67).” slip op. at 7
- Skill levelSkill level petitioner adoptedDecided for petitioner
“have had an undergraduate degree in electrical engineering, computer engineering, computer science or a related field along with at least two years of work experience in the field of networking.” Pet. 4 (citing Ex. 1002 ¶¶ 16–18). Petitioner further argues that “[m]ore education can supplement practical experience and vice versa.” Id. Patent Owner does not contest Petitioner’s description. PO Resp. 3. We find that a person having ordinary skill in the art would have an undergraduate degree in electrical engineering, computer engineering, computer science or a related field along with two years of work experience in the field of networking. We have deleted Petitioner’s use of the qualifier “at least” to eliminate vagueness about the amount of practical experience. The qualifier expands the range indefinitely without an upper bound and thus precludes a meaningful indication of the level of ordinary skill in the art.” slip op. at 11
- PTAB / AIA Trials › Constitutional / APA (Arthrex, Oil States, due process)Denied
“Petitioner responds that the Federal Circuit, in Mobility Workx, LLC v. Unified Pats., LLC, 15 F.4th 1146, 1157 (Fed. Cir. 2021), “‘declined to find that the IPR process violates Due Process on [the] basis’ [Patent Owner] advocates (Response, 31). Thus, precedent precludes [Patent Owner’s] argument.” Pet. Reply 24. Patent Owner concedes that the basis for its constitutional arguments is the dissent in Mobility Workx, which was rejected by the majority. Tr. 41:18–42:13. Thus, we find Patent Owner’s arguments unpersuasive. See Mobility Workx, 15 F.4th at 1150–57; see also In re Palo Alto Networks, Inc., 2022 WL 3364382, *6 (Fed. Cir. Aug. 16, 2022) (“We conclude that the delegation of authority as to whether to institute IPR and PGR proceedings to the Board and the Director’s policy refusing to accept party requests for Director rehearing of decisions not to institute do not violate the Appointments Clause.”).” slip op. at 12
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
Patent outcomesUS 10,075,565 unpatentableClaim construction§ 103 obviousnessPatents in suitUS 10,075,565 - Google LLC v. Jenam Tech, LLCAll claims unpatentablePTAB · Sep 16, 2022 · IPR2021-00627 · APJ Scott B Howard · IPR · Final written decision
Claims 1, 4, 8, and 9 are unpatentable as obvious over Wookey and Eggert; claims 4, 8, and 9 also rely on Abdolbaghian.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner argues that a person having ordinary skill in the art “would have an undergraduate degree in electrical engineering, computer engineering, computer science or a related field along with at least two years of work experience in the field of networking.” Pet. 5 (citing Ex. 1002 ¶¶ 16–18). Petitioner further argues that “[m]ore education can supplement practical experience and vice versa.” Id. (citing Ex. 1002 ¶¶ 16–18). Patent Owner “does not contest Petitioner’s description of a POSITA [person having ordinary skill in the art].” PO Resp. 8. Accordingly, we find that a person having ordinary skill in the art would have an undergraduate degree in electrical engineering, computer engineering, computer science or a related field along with two years of work experience in the field of networking. We have deleted Petitioner’s use of the qualifier “at least” to eliminate vagueness as to the amount of practical experience. The qualifier expands the range indefinitely without an upper bound and thus precludes a meaningful indication of the level of ordinary skill in the art.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“As explained below, we agree with Petitioner that the asserted prior art teaches “communicated” under Patent Owner’s proposed construction, so we apply that construction with one clarification. Patent Owner’s proposed construction refers to “the apparatus,” but, as Petitioner correctly notes, “claim 1 does not mention any ‘apparatus,’” rendering Patent Owner’s proposed construction unclear. See Pet. Reply 25 n.16. Patent Owner’s Sur-reply does not address the “ITP” construction at all and, thus, does not clarify what “the apparatus” is. See PO Sur-reply 23 (“Jenam respectfully disagrees with Petitioner, and relies exclusively on the arguments submitted in its [Patent Owner Response] in this regard.”). Claim 1 recites, in relevant part, “to code that, in response to being used by the client node, cause the client node to: . . .identify metadata in the idle time period parameter field for an idle time period, during which, no packet is communicated in a TCP- variant connection to keep the TCP-variant connection active.” Ex. 1001, 24:18–29. Thus, the ITP pertains to operations at the “client node,” so we understand Patent Owner’s reference to “the apparatus” to mean the “client node.” Therefore, we apply Patent Owner’s construction of “communicated” with that qualification such that it means “sent or received by the client node,” and we need not resolve any disputes between the parties over the scope of this term. See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’ . . . .” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 9
- PTAB / AIA Trials › Constitutional / APA (Arthrex, Oil States, due process)Decided for petitioner
“Patent Owner concedes that its constitutional arguments are premised on the dissent in Mobility Workx and those arguments were rejected by the majority. Tr. 41:18–42:13. Accordingly, we find Patent Owner’s arguments unpersuasive. See Mobility Workx, 15 F.4th at 1150–57; see also In re Palo Alto Networks, Inc., 2022 WL 3364382, *6 (Fed. Cir. Aug. 16, 2022) (“We conclude that the delegation of authority as to whether to institute IPR and PGR proceedings to the Board and the Director’s policy refusing to accept party requests for Director rehearing of decisions not to institute do not violate the Appointments Clause.”).” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Specifically, Petitioner argues that “Eggert and Wookey disclose features in a similar technological field.” Pet. 33 (citing Ex. 1002 ¶ 158). According to Petitioner, both references “are directed to establishing reliable connections between two nodes, where the nodes may be mobile nodes that experience an unintentional disconnection, so a POSITA would have had reason to consider Eggert when contemplating and implementing Wookey’s teachings.” Id. at 34 (citing Ex. 1002 ¶¶ 159–161). Petitioner further argues that Wookey teaches “establish[ing] a connection between client machine 10 and remote machine 30ʹ using a protocol that can be different from the one used to connect client machine 10 and remote machine 30.” Pet. 35 (citing Ex. 1002 ¶¶ 162–163). Petitioner also argues that a person having ordinary skill in the art would have been “motivated by Wookey’s disclosures and suggestions to consider protocols that would provide these desired features for the connection with remote machine 30ʹ, including the features associated with the TCP-variant connection described by Eggert” and, as a result, “would have been motivated to incorporate a protocol like Eggert’s TCP-variant protocol in the use of the ‘code’ by client machine 10 for establishing a connection with remote machine 30ʹ.” Id. (citing Ex. 1002 ¶¶ 162–163). Petitioner further argues that “configuring Wookey to utilize a TCP- variant protocol based on Eggert’s teachings would have been both a predictable and straightforward implementation.” Pet. 36 (citing Ex. 1002 ¶ 165; Ex. 1005 ¶ 216; KSR, 550 U.S. at 416); see also id. at 37–38 (discussing use of known technologies to achieve a foreseeable result). Based on the undisputed evidence and reasons set forth in the Petition, including the Lin Declaration, which are not addressed by Patent Owner (see PO Resp.), we find that a person having ordinary skill in the art would have combined the teachings of Wookey and Eggert in the manner described in the Petition and would have had a reasonable expectation of success.” slip op. at 40
Patent outcomesUS 10,375,215 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,375,215 - BMW Of North America, LLC / Mercedes-Benz USA, LLC v. Stragent, LLCAll claims unpatentablePTAB · Jul 12, 2022 · IPR2021-00417 · APJ Daniel J Galligan · IPR · Final written decision
Claims 1–30 are unpatentable as obvious under §103 over the combinations of Miesterfeld, Wong, Grattan, and the additional references listed for each ground.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“In the Institution Decision, we adopted Petitioner’s assessment except for the phrase “at least,” which expands the ranges of education and experience indefinitely without an upper bound. Inst. Dec. 8–9.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“request the access right to the common resource, a section of the non-volatile or volatile memory, from the operating system (1001). This is called explicit resource management.” Ex. 1001, 7:53–57, quoted in PO Resp. 15. Patent Owner quotes this passage but omits the next sentence, which states that, “[i]f the resource is available, the process gets the resource.” Ex. 1001, 7:58; see PO Resp. 15. Figure 10 shows an arrow from block 1001 captioned “Request BB Resource” to a circle and then an arrow from the circle to decision block 1002 captioned “BB Resource Available ?.” Based on the Specification’s description, we conclude that the phrase “issue a storage request” at least encompasses checking to see if the storage resource is available. This is consistent with Patent Owner’s dictionary definition that a request is the act of asking for something. See PO Resp. 15. The Specification explains that, when the request is made, “[i]f the resource is available, the process gets the resource.” Ex. 1001, 7:58. Thus, according to the Specification, the act of checking availability of the resource is the issuance of the request. To the extent there is a grant of permission to store information, as suggested by Patent Owner (PO Resp. 15–16), such permission is granted if there is availability. Ex. 1001, 7:58. Based on the foregoing, we conclude that the phrase “issue a storage request” encompasses checking to see if the storage resource is available.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“As explained below in § II.D.4, Petitioner has demonstrated unpatentability of claims 2, 13, and 24 under either parties’ proposed construction. Therefore, we need not resolve this claim construction dispute. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). 3. Remaining Terms Based on the record developed during trial, we need not construe expressly any other claim terms to decide the issues of patentability before us. D. Obviousness over Miesterfeld, Wong, Grattan, Wense, and Nikklason” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“limited to the disclosure of one reference, but this effectively eviscerates the legal framework of combining the teachings of references for obviousness. Miesterfeld’s disclosure of an allegedly simple system does not foreclose its use in an obviousness combination with a reference having more sophisticated teachings. Nor does a reference have to identify in itself an area in need of improvement for that reference to be used in an obviousness combination. Rather, “there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” KSR, 550 U.S. at 418 (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).” slip op. at 18
Patent outcomesUS 10,248,477 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,248,477 - PTAB · May 23, 2022 · IPR2022-00308 · APJ Kristina M Kalan · IPR · Institution
The Board instituted inter partes review of claims 1, 4–12, 22, 25–33, 39–43, 46–54, and 56–63 on all asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Concerns about the degree of overlap may be mitigated where a petitioner agrees not to pursue in the parallel district court litigation the grounds advanced in the petition. Sand Revolution, IPR2019-01393, Paper 24 at 11–12, 12 n.5. A petitioner stipulating not to pursue “any ground raised or that could have been reasonably raised” weighs strongly in favor of not exercising discretionary denial. Sotera Wireless, Inc. v. Masimo (precedential as to § II.A) (“Sotera”)). Petitioner’s stipulation is not quite as broad as a Sotera-style stipulation, but it is more comprehensive than the stipulation in Sand Revolution. Specifically, whereas the petitioner in Sand Revolution agreed not to assert “the same grounds in the district court litigation” as asserted in the petition (Sand Revolution, IPR2019-01393, Paper 24 at 12), Petitioner here agrees that, if inter partes review is instituted, it will not assert in the district court litigation “any ground involving the prior art relied upon in the grounds of invalidity” in the Petition. Pet. 17. This stipulation mitigates to a large extent the concerns of inefficiency and the possibility of conflicting decisions with respect to the district court litigation. Thus, for all of the foregoing reasons, we determine that the fourth Fintiv factor weighs against discretionary denial of institution.” slip op. at 12
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have reviewed Petitioner’s contentions with respect to all challenged claims in all grounds asserted and determine that the Petition provides the requisite showing, at this stage of the proceeding, that the subject matter of these claims would have been obvious over the asserted references. Other than the arguments addressed above, Patent Owner does not offer, at this stage, any arguments addressing Petitioner’s substantive showing. On this record, therefore, Petitioner demonstrates a reasonable likelihood of prevailing on its arguments that the challenged claims would have been obvious over the Grounds 1–6 combinations of prior art. III. CONCLUSION For the reasons set forth above, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing with respect to at least one challenged claim of the ’489 patent, and we institute inter partes review on all challenged claims and on all grounds presented.” slip op. at 28
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“9. Analysis As to Patent Owner’s first argument, the language of the claims requires a “flexible contact” that is “flexibly biased”; the language of the claims does not require a “flexible material,” as Patent Owner appears to argue. Patent Owner does not present argument or any case law that any element that may be present in the specification must be read into claims where it is not recited. Additionally, without a formal claim construction proposal other than a suggestion that we give every term its plain and ordinary meaning (Pet. 14; Prelim. Resp. 11), we do not give any express construction to the claim terms “flexible contact” or “flexibly biased.” To meet the “flexible contact” and “flexibly biased” limitations, Petitioner points to Vista’s contact terminals 300 and 301, which provide spring-loaded electrical contact with AC power blades. Pet. 22–23. Petitioner’s declarant Dr. Elenius supports Petitioner’s contentions that Vista discloses a “flexible contact” that is “flexibly biased.” Id. at 22–26 (citing Ex. 1004 ¶¶ 88–94). To the extent that Patent Owner argues that Vista’s contacts are not “flexible,” Patent Owner presents only attorney argument on this issue. Prelim. Resp. 15–16. Patent Owner and Petitioner are encouraged to develop the claim construction of “flexible contacts” or “flexibly biased” at trial, if needed.” slip op. at 26
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that a person of ordinary skill in the art would have either (i) a Master of Science in Electrical Engineering, Mechanical Engineering or a related field, or (ii) a Bachelor of Science in Electrical Engineering, Mechanical Engineering or a related field as well as at least two years of experience in the design and/or packaging of power electronics. Additional education could compensate for less practical experience and vice versa. Pet. 14 (citing Ex. 1004 ¶¶ 36–38). only, Patent Owner does not dispute the Petition’s definition of level of ordinary skill.” Prelim. Resp. 11. Accordingly, for the purposes of this Decision, we adopt Petitioner’s proposal regarding the level of one of ordinary skill in the art with the exception of the open-ended phrase “at least,” which expands the range of experience indefinitely without an upper bound. The level of ordinary skill in the art is also reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 8
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 7,978,489 - PTAB · May 5, 2022 · IPR2022-00063 · APJ Bryan F Moore · IPR · Institution
The Board instituted IPR on claims 1–34 and all asserted grounds after finding a reasonable likelihood that Samsung would prevail on obviousness over Ellsberry and Jeddeloh.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“another patent asserted in the Related Case was filed within a week of the Preliminary Response. Id. We decline to attempt to predict how the District Court would proceed should a stay be requested by either of the parties. Accordingly, we find that this factor neither favors nor weighs against discretionary denial of inter partes review. C. Factor 2 — Proximity of Court’s Trial Date Patent Owner admits that “[t]he district of Delaware has not yet set a trial date.” Id. Accordingly, this factor weighs against exercising our discretion to deny inter partes review.” slip op. at 8
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“Given the facts above, because Averbuj was not presented in combination with the other references asserted here and is only used in two of the four grounds, the combination of references asserted in the Petition do not qualify as art that was “previously presented” to the Office. Thus, we find that the combination of references asserted in the Petition, were not previously presented to the Office. Additionally, Patent Owner does not assert or explain sufficiently that Ellsberry, Jeddeloh, and/or Lee are cumulative of any reference cited during prosecution of the ’523 patent. Prelim. Resp. 41–43. On this record, we are not persuaded that Ellsberry, Jeddeloh, and Lee are cumulative of any reference cited during prosecution of the ’523 patent. Accordingly, the first condition of the first part of the Advanced Bionics framework is not satisfied, and we need not consider whether Petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Conclusion After evaluating the Becton, Dickinson factors within the Advanced” slip op. at 13
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Bachelor’s degree in electrical engineering, computer engineering, or in a related field and at least one year of work experience relating to memory systems, and would be familiar with the design of memory devices, memory modules, and BIST.” Pet. 6. Patent Owner does not dispute Petitioner’s characterization or offer its own. Accordingly, for purposes of this decision, we adopt Petitioner’s characterization of the level of ordinary skill, which we determine is consistent with the ’523 patent written description and the asserted prior art. slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner offers constructions of several terms which are not disputed by Patent Owner. Pet. 13–15. Nevertheless, we determine that it is not necessary to provide an express interpretation of any of the terms of the claims at this juncture. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”).” slip op. at 15
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,217,523 - Analog Devices, Inc. v. Xilinx, Inc. And Xilinx Asia Pacific Pte. Ltd.Some claims unpatentablePTAB · May 3, 2022 · IPR2020-01624 · APJ Daniel J Galligan · IPR · Final written decision
Claims 1–16 and 18 are unpatentable as obvious over Gauthier, Groen, and Shumarayev, with Huang for certain dependent claims; claim 17 was not shown unpatentable.
RulingsFinal written decision- Skill levelSkill level board ownOther
“speed links, or equivalent academic experience.” Pet. 5 (citing Ex. 1003 ¶¶ 18–20). At institution, we applied Petitioner’s assessment of the level of skill in the art, with the exception of the open-ended phrase “at least,” which expands the range of experience indefinitely without an upper bound. Inst. Dec. 8. During the trial, Patent Owner stated that it does not object to this level of ordinary skill. PO Resp. 7. Based on the parties’ agreement on this issue, we maintain our determination from the Institution Decision and apply that level of ordinary skill in the analysis below.” slip op. at 5
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“The parties dispute the scope of “independent.” Petitioner argues that using separate current setting signals for separate devices describes the “independent” aspect of these claims. Pet. 31–35; see also Pet. Reply 3–9 (setting forth claim construction arguments). Patent Owner argues that the ’132 patent does not set forth a special definition for “independent” and, therefore, that the plain meaning applies—“not determined or influenced by someone or something else.” PO Resp. 9–10 (citing Ex. 2005). Thus, Patent Owner argues that “independent of” means “not determined or influenced by.” PO Resp. 8–17; PO Sur-reply 2–7. As discussed below, we conclude that Petitioner has proven obviousness of the subject matter in claims 1–16 and 18 under Patent Owner’s proposed construction, and the deficiencies in Petitioner’s contentions for claim 17 are not related to the definition of “independent.” Thus, we need not resolve this claim construction dispute to issue a final written decision on all claims. See, e.g., Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms ... that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 6
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)No construction neededNot reached
“At institution, we preliminarily agreed with Petitioner that these phrases are means-plus-function. Inst. Dec. 13–15. Patent Owner argues that these phrases are not means-plus-function limitations and that “[e]ach claimed ‘current selection module’ is simply a circuit or collection of circuit[r]y that selects current, with additional structural limitations provided by the surrounding claim language.” PO Resp. 17–21. Patent Owner, however, also states that “[t]he Board need not construe the ‘current selection module’ terms because analysis of the prior art does not turn on claim construction.” PO Resp. 18. Patent Owner states it “is not disputing that the prior art discloses ‘current selection modules,’ per se, regardless of which claim construction the Board adopts”; rather, Patent Owner contends “that the current selection modules in the prior art fail to satisfy other claim requirements.” PO Resp. 18. Because there is no dispute between the parties the resolution of which turns on whether the “current selection module” phrases of claims 1 and 12 invoke § 112 ¶ 6, we need not resolve this issue to decide the patentability challenges before us. See Realtime Data, 912 F.3d at 1368.” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“for the combination and that “Petitioner cites no disclosure from any of the references or background materials suggesting that the cited current supplies were known, interchangeable alternatives.” PO Resp. 60–61. We disagree. As discussed above, Shumarayev discloses separate and independent programmable current supplies for the main driver and the pre-emphasis driver. Ex. 1007, 6:10–17, 6:24–27, Fig. 6. This is an alternative to Groen’s disclosure of separately controlled current select modules (DACs 400 and 402) where DAC 402’s input reference current is the current that is output from DAC 400. Ex. 1004, 5:4–8, Fig. 4. Patent Owner also argues that making a control circuit programmable is more complex than making a non-programmable circuit because “a designer would need to add means to store what is programmed, thus involving more than simple PMOS and NMOS transistors” and requiring additional fabrication steps. PO Resp. 62–63 (citing Ex. 2001 ¶ 70). Both Groen and Shumarayev, however, disclose programmable current sources for pre-emphasis and drive circuitry. Groen’s DAC 400 produces a reference current based on a 5-bit code, and Groen’s DAC 402 produces an emphasis current based on a 3-bit code. Ex. 1004, 4:51–58, Fig. 4. Shumarayev’s driver 44a includes programmable current supplies 56a and 56b, and pre-emphasis driver 44b includes current supplies 58a and 58b that produce an “amount of current that . . . may be controlled by programming how Petitioner’s reliance on Shumarayev’s teachings of separate and independent current sources for main and pre-emphasis drivers introduces any complexity due to the need to make the current sources programmable. Patent Owner also points to Shumarayev’s statement that “there may be consequences of providing too much programmable circuitry” (Ex. 1007, 8:3–4) as suggesting that a person of ordinary skill in the art would not have had a reasonable expectation of success in combining Shumarayev’s teachings with Groen and Gauthier. PO Resp. 64 (quoting Ex. 1007, 8:3–4). According to Patent Owner, Shumarayev’s statement “suggests that the inventors of the ’132 patent, who were able to build successful circuits with independently programmable primary and pre-emphasis current levels, had to overcome various design challenges.” PO Resp. 64 (citing Ex. 2001 ¶ 72). We disagree with Patent Owner’s arguments. Groen discloses programmability to address “a need in the art for a driver circuit that can select from numerous possible data communication operating modes.” Ex. 1004, 1:32–38. The whole purpose of Groen is to accommodate different driver modes by controlling the drive and emphasis currents. Ex. 1004, 3:50–59 (Table 1), 4:1–13 (Table 2), 5:55–67. Shumarayev, similarly, teaches programmable circuitry to accommodate different “I/O standards such as LVPECL, LVDS, PCML, etc.” Ex. 1007, 6:20–23, 7:57–67. Shumarayev then teaches a simplifying alternative, namely, “replac[ing] some or all of the programmable circuitry in I/O circuits 16 with hardwired circuitry.” Ex. 1007, 8:4–7. Thus, we hardly see why a person of ordinary skill in the art would be discouraged from the combination by the alleged complexities of programmability when both Groen and Shumarayev are expressly directed to such programmability.” slip op. at 32
Patent outcomesUS 6,975,132 mixedClaim construction§ 103 obviousnesscites KSRPatents in suitUS 6,975,132 - Maxlite, Inc. v. Jiaxing Super Lighting Electric Appliance Co., Ltd.All claims unpatentablePTAB · Apr 29, 2022 · IPR2020-00208 · APJ Bryan F Moore · IPR · Final written decision
Claims 1, 7, and 12–18 are unpatentable as anticipated by Duan under § 102(a)(1).
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“a B.S. degree in electrical engineering, or an equivalent field, as well as at least 2-4 years of academic or industry experience in lighting design, including knowledge of LEDs and related technology for driving LEDs. A person of ordinary skill in the art with a higher level of education may have fewer years of academic or industry experience, or vice versa. Pet. 22 (citing Ex. 1002 ¶ 10). Patent Owner does not contest Petitioner’s articulation of the level of skill in the art. PO Resp. 4–5. We regard Petitioner’s definition as consistent with the prior art before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill). Thus, we adopt Petitioner’s proposal.” slip op. at 5
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner
“embodiments that operate with a low frequency driving signal in a double-ended configuration, Patent Owner did not recite “low frequency” or “double-ended” in its claims and instead chose the broader term “first driving mode.” See In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004) (“We have cautioned against reading limitations into a claim from the preferred embodiment described in the specification, even if it is the only embodiment described, absent clear disclaimer in the specification.”). The fact that a limitation in the specification may define over the prior art does not justify importing that limitation into the claims unless a term is expressly defined such that the patentee becomes his own lexicographer or there is an express disavowal of claim scope. See GE Lighting Sols., LLC v. AgiLight, Inc., 750 F.3d 1304, 1308–09 (Fed. Cir. 2014). There is no evidence of an express disavowal here. As to lexicography, we disagree with Patent Owner’s contention that the Specification defines the phrase “first driving mode.” Patent Owner relies on the mere fact that the specification describes an embodiment with a first driving mode that has a low frequency driving signal and is in a “double-ended” configuration, but this is not sufficient to define the term. The specification does not require that a low frequency driving signal must necessarily be used. In fact the specification, although not entirely clear, suggests that the driving signal may be from a high frequency ballast. Ex. 1001, 51:8–14. Thus, the fact that the patent here discloses a low frequency driving signal does not mean that all the claims are directed to such a driving signal. See E-Pass Tech., Inc. v. 3Com Corp., 343 F.3d 1364, 1368–69 (Fed. Cir. 2003). Indeed, dependent claim 15 recites “the first driving mode is performed when the external driving signal is a relatively low frequency or voltage signal,” while the independent claims were directed to a more general driving signal. The doctrine of claim differentiation suggests that the independent claims here should not include explicit limitations of a dependent claim. See Phillips, 415 F.3d at 1315 (“[T]he presence of a dependent claim that adds a particular limitation gives rise to a presumption that the limitation in question is not present in the independent claim.”); Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 910 (Fed. Cir. 2004).” slip op. at 7
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“We determine that Patent Owner has not shown sufficiently that the Chinese priority patent applications it relies on—the ’636 Chinese Application and the ’586 Application—provide written description support for the limitation of “a mode determination circuit, configured to generate a first determined result signal based on the external driving signal” and “a mode switching circuit, coupled to the filter circuit and the driving circuit, configured to determine whether to perform a first driving mode or a second driving mode based on the first determined result signal,” recited in claim 1. PO Resp. 31–34, 60–67. Specifically, Patent Owner relies on structures in the ’636 Chinese Application and the ’586 Application that are not sufficiently similar to structures in the ’826 patent i.e., DR Circuit 140, excluding diodes D5 and D6, as shown in Figs. 24i-j and 29b. Id. at 27 (citing Ex. 2001, 23–24, 29, and 33, Fig. 24i–j and 29b).” slip op. at 11
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference is prior artDecided for petitioner
“For the reasons above, Patent Owner has not established that claim 1 of the ’826 patent is entitled to the effective filing date of the ’636 Chinese Application (i.e., June 10, 2015) or the ’586 Application (i.e., March 26, 2015). Because the remaining asserted claims are dependent claims, Patent Owner has also not established that claims 7 and 12–18 of the ’826 patent are entitled to the effective filing date of the ’636 Chinese Application or the ’586 Application. The application that led to the ’826 patent was filed on March 25, 2016. The ’826 patent claims it is a continuation-in-part of application No. 15/055,630 (“the ’630 Application”), filed on February 28, 2016. So, even if the challenged claims were entitled to the earlier February 28, 2016 filing date, Duan issued on July 1, 2015, and is, thus, prior art to the challenged claims of the ’826 patent under 35 U.S.C. § 102(a)(1).” slip op. at 18
Patent outcomesUS 9,807,826 unpatentableClaim construction§ 102 anticipation§ 112 disclosurecites PhillipsPatents in suitUS 9,807,826 - Facebook, Inc. v. USC IP Partnership, L.P.All claims unpatentablePTAB · Apr 27, 2022 · IPR2021-00034 · APJ Russell E Cass · IPR · Final written decision
Claims 5–10 are unpatentable as obvious: claims 5, 6, 8, and 10 over Gregov, Hartman, Linden, Holzner, and Dai; claims 7 and 9 over those references and Nickerson.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“In our Institution Decision, we preliminarily defined the terms “intent,” “intent candidate,” “inferred intent,” “declared intent,” and “current intent,” based on the ’300 patent specification, as follows: Intent—a unique purpose or usage of the website. Intent Candidates—a ranked list of Intents for the current page. Inferred Intent—one or more of the highest ranked Intent Candidates for the current page. The intent tool passively applies the Inferred Intent to each page by default. Declared Intent—an Intent that has been confirmed by the visitor as the purpose for the page visit. Current Intent—the current user-specified or programmatically inferred Intent for the page visit. The Inferred Intent (top rated) is applied as the Current Intent until the user sets a Declared Intent. Inst. Dec. 18–19 (citing Ex. 1001, 4:25–36). During the hearing, the parties stated that they did not have any issues with these constructions. Tr. 19:17– 20:4 (Petitioner), 29:13–21 (Patent Owner). Accordingly, we adhere to the constructions of these terms preliminarily adopted in our Institution Decision. The parties do not provide express constructions for any other claim terms. Pet. 6–7; PO Resp. 6; Tr. 20:2–4. We determine that it is not necessary to provide an express interpretation of any other claim terms for purposes of in this Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”).” slip op. at 8
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art at the time of the alleged invention “would have possessed at least a bachelor’s degree in software engineering, computer science, computer engineering, or electrical engineering, with at least two years of experience in web-based software application development (or equivalent degree or experience).” Pet. 4–5 (citing Ex. 1002 ¶ 12). In our Institution Decision, we preliminarily adopted Petitioner’s assessment of the level of skill in the art, with the exception of the open-ended language “at least,” finding that this level of skill is consistent with the ’300 patent and the asserted prior art of record. Inst. Dec. 20. Following our Institution Decision, Patent Owner did not dispute this level of ordinary skill. PO Resp. 6. Based on the full trial record, we adhere to the level of ordinary skill preliminarily adopted in our Institution Decision.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“found it obvious based on Hartman and Linden for the items in Gregov’s Figure 6 to correspond to item detail webpages. Hartman teaches that a visitor can request an item detail webpage that provides further information about an item available on the merchant website. Ex. 1004, 4:22–31 (describing “the display of a Web page describing an item that may be ordered” that “was sent from the server system to the client system when the purchaser requested to review detailed information about the item”), Fig. 1A. Linden teaches that each item on the merchant website may have its own item “detail page” that a visitor can access by clicking a link to the page from a search results page. Ex. 1005, 6:41–55 (a “detail page” for a product can be accessed by “select[ing] a link associated with that product (e.g., from a browser node page or search results page)”); Ex. 1002 ¶¶ 109– 110. We also agree with Petitioner and Dr. Chatterjee that one of ordinary skill would have been motivated to add hyperlinks to Figure 6 (even if they were not already present), as taught by Hartman and Linden, to allow “the visitor to conveniently obtain more information about an item on the recommendation page by clicking the displayed hyperlink.” Pet. 24; Ex. 1002 ¶ 113. We disagree with Patent Owner’s argument that one of ordinary skill would not have been motivated to combine Hartman and Linden with Gregov because they are not directed to predicting a navigation destination for a visitor based on intent. PO Resp. 14–16. Petitioner relies on Gregov for determining recommended items based on indicated intent and merely relies on Hartman and Linden to show that it was known to link an item to a web page providing more detail on that item. Therefore, Patent Owner’s argument does not address the motivation to make the combination argued by Petitioner. Pet. 23–25. We also fail to see anything in Gregov that precludes the recommendation engine from taking actions of multiple users into account in identifying items to recommend to a user, and therefore we disagree with Patent Owner’s argument that Linden teaches away from Gregov by taking into account the actions of a community of users. Indeed, as discussed by Petitioner, Gregov incorporates by reference the recommendation engine of earlier U.S. Patent No. 6,266,649 (“the ’649 patent”) (application 09/157,198), which discloses making “personalized recommendations of items based on the collective interests of a community of users,” such as purposes, ratings, and items added to or removed from user shopping carts. Ex. 1003, 2:59–61; Ex. 1027, 2:33–37; Pet. Reply 9.” slip op. at 31
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“We disagree with Patent Owner’s argument that one of ordinary skill would not have been motivated to combine Hartman and Linden with Gregov because they are not directed to predicting a navigation destination for a visitor based on intent. PO Resp. 14–16. Petitioner relies on Gregov for determining recommended items based on indicated intent and merely relies on Hartman and Linden to show that it was known to link an item to a web page providing more detail on that item. Therefore, Patent Owner’s argument does not address the motivation to make the combination argued by Petitioner. Pet. 23–25. We also fail to see anything in Gregov that precludes the recommendation engine from taking actions of multiple users into account in identifying items to recommend to a user, and therefore we disagree with Patent Owner’s argument that Linden teaches away from Gregov by taking into account the actions of a community of users. Indeed, as discussed by Petitioner, Gregov incorporates by reference the recommendation engine of earlier U.S. Patent No. 6,266,649 (“the ’649 patent”) (application 09/157,198), which discloses making “personalized recommendations of items based on the collective interests of a community of users,” such as purposes, ratings, and items added to or removed from user shopping carts. Ex. 1003, 2:59–61; Ex. 1027, 2:33–37; Pet. Reply 9.” slip op. at 32
Patent outcomesUS 8,645,300 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,645,300 - Analog Devices, Inc. v. Xilinx, Inc. And Xilinx Asia Pacific Pte. Ltd.All claims unpatentablePTAB · Apr 20, 2022 · IPR2020-01606 · APJ Daniel J Galligan · IPR · Final written decision
Claims 1–4, 6–18, and 20–22 and proposed substitute claims 23–38 are unpatentable; substitute claim 39 is not shown unpatentable and is allowed by the motion to amend.
RulingsFinal written decision- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“regular practice at the time to publish preliminary data sheets on our website, as set forth above with respect to the September 2000 Data Sheets. By contrast, data sheets marked ‘Advanced’ were kept for internal use.” Ex. 1023 ¶ 21; see also Ex. 1023 ¶ 15 (“It was Lucent’s regular practice to publish data sheets on its website, including preliminary data sheets, within a month of the date that appears on the data sheet. I was responsible for ensuring that the September 2000 Data Sheet was published to the website.”). Mr. Britton’s testimony, discussed above, shows that ORT8850 was a “preliminary” data sheet published on Lucent’s customer-facing web pages and that customers expected this document to be available. See Valve, 8 F.4th at 1374 (“We have previously held that where a publication’s purpose is ‘dialogue with the intended audience,’ that purpose indicates public accessibility.”). Accordingly, for the reasons discussed above, we deny Patent Owner’s motion to exclude Exhibit 1008 and Exhibit E and paragraph 15 (identifying Exhibit E) of the Britton declaration as hearsay or for lack of authentication.” slip op. at 16
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningNo construction neededOther
“For the foregoing reasons, we do not agree with Patent Owner’s” slip op. at 25
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“3. Claim 1 Independent claim 1, which is directed to “[a] high-speed receiver,” includes substantially the same subject matter as claim 15 and recites two additional limitations: “a receiver analog front-end biased in accordance with the common mode reference, wherein the receiver analog front-end is 16 Because we find that HFAN describes the “receiver termination network” recited in the preamble of claim 15, we need not decide whether the preamble is limiting. See PO Resp. 26 (arguing that the preamble of claim 15 is limiting). amplified high-speed data” and “a data recovery module operably coupled to recover data from the amplified high-speed data.” Petitioner explains how HFAN describes this subject matter. Pet. 36– 44. Petitioner argues that HFAN discloses “a receiver used in ‘high-speed communication systems,’” thereby describing the “high-speed receiver” of the preamble. Pet. 36–37 (quoting Ex. 1005, 1). For the “receiver analog front-end,” Petitioner argues that the LVPECL (low-voltage PECL) receiver receives and amplifies high-speed data. Pet. 41–42 (citing Ex. 1005, 8, Figs. 11, 16(a); Ex. 1003 ¶ 85). For the “data recovery module,” Petitioner argues that HFAN discloses using a MAX3675 chip as an LVPECL receiver, and Petitioner relies on the disclosure of a D flip-flop in DS_MAX3675 (which describes the MAX3675 chip) to show the “data recovery module.” Pet. 42–44 (citing Ex. 1005, 2, 10; Ex. 1003 ¶¶ 87–88; Ex. 1018, Fig. 1). Petitioner argues that reliance on DS_MAX3675 is appropriate in the anticipation analysis to show the details of the LVPECL receiver disclosed in HFAN. Pet. 42–43 (citing In re Baxter Travenol Labs., 952 F.2d 388 (Fed. Cir. 1991)). Other than its argument that the “receiver termination network” must be “on-chip,” which we address in the preceding section, Patent Owner does not set forth any additional arguments against Petitioner’s contentions that HFAN anticipated claim 1. We are persuaded by Petitioner’s contentions for claim 1, including its reliance on DS_MAX3675. Anticipation is established when “one skilled in the art would reasonably understand or infer from the prior art reference’s teaching that every claim [limitation] was disclosed in that single reference.” Akamai Techs., Inc. v. Cable & Wireless Internet Servs., Inc., 344 F.3d 1186, 1192–93 (Fed. Cir. 2003) (alteration in original) (quoting Dayco” slip op. at 35
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“2. Independent Claim 9 Independent claim 9 is directed to “[a] multi-gigabit transceiver” slip op. at 41
Patent outcomesUS 7,280,590 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,280,590 - Vudu, LLC v. Ideahub, Inc.All claims unpatentablePTAB · Apr 14, 2022 · IPR2020-01688 · APJ Monica S Ullagaddi · IPR · Final written decision
Claims 1, 3, 4, 6, 8, 11, 13, 15, 18, 19, 21, and 23 are unpatentable over DIS 23009-1; the revised contingent motion to amend is denied.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“A person of ordinary skill in the art (“POSA”) in the relevant field as of the earliest priority date would have had at least the equivalent of a Bachelor’s degree in electrical engineering, computer engineering, computer science, or a related subject and two or more years of experience in the field of media streaming over the Internet. Pet. 18–19 (citing Ex. 1003 ¶ 82). Patent Owner does not dispute Petitioner’s assertions regarding the level of ordinary skill in the art, nor 6 Patent Owner does not present objective evidence of nonobviousness. does it present its own definition. We adopt Petitioner’s definition as it is consistent with the specification of the ’830 patent and the cited references.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Petitioner proposes that we construe “adaptation set,” “SegmentBase,” and “SegmentTemplate.” Pet. 19–21. Patent Owner does not address claim construction in its briefing. We need not construe any claim term to resolve any issues before us, and therefore, do not expressly define any claim term in our Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (explaining that construction is needed only for terms that are in dispute, and only as necessary to resolve the controversy).” slip op. at 11
- Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateDenied
“not describe additional configuration information nor user characteristic information. Instead, it describes “an additional configuration to select a representation based on a user characteristics and terminal characteristics.” Ex. 2004 ¶ 232. It is unclear from Patent Owner’s argument whether Patent Owner intends for the claimed “user characteristic information” to include or refer to additional configuration information, accessibility features of a representation, or both. Reply Rev. Opp. 1 (citing Ex. 2004 ¶¶ 232, 234, 253). In any event, merely because paragraph 253 uses the term “[h]ereinafter” before it discloses “two simple attributes [] for the above-described purpose”––and not even in close proximity to the “user characteristics” and “additional configuration” in paragraph 232––is not sufficient to provide support for “the user characteristic information includ[ing] the usedWith attribute and the equivalentTo attribute,” as recited 8 Ex. 2005 is Application No. 16/168,933 (“the ’933 application”). in limitations [38.6], [40.6], and [46.6]. None of the cited portions (i.e., Ex. 2004 ¶¶ 232, 234, 253, 255–257, Table 13; Ex. 2005 ¶¶ 254–256, Table 13) indicates a sufficient connection or relationship, or the claimed inclusive relationship, between user characteristic information and the usedWith and equivalentTo attributes. Contra Reply Opp. Rev. MTA 1 (Patent Owner arguing that the cited disclosures “clearly show this relationship between the claimed attributes and user characteristic information”). For the foregoing reasons, we determine that claims 38, 40, and 46 do not find sufficient written description support in the ’644 application nor in the ’933 application, whether considered individually or collectively, and thus, these claims contain new matter.” slip op. at 35
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“rationale for combining DIS 23009-1 with M20060, Petitioner persuasively contends that: A POSA would have been motivated to add the additional “metadata” described in M20060 to the MPDs described in the DIS 23001-6 or DIS 23009-1 references in order to enable the client to choose the most suitable version of media content among alternative versions of media content. For example, M20060 describes that the additional metadata (e.g., the extended accessibility element and the usedWith, equivalentTo, bitDepth, minBitDepth, and maxBitDepth attributes) helps “both users and clients to select appropriate representations” by, for example, “1) supporting accessibility, 2) describing relationships of representations, and 3) describing media’s bit depth.” Moreover, a POSA would have had an expectation of success in modifying the MPDs in DIS 23001-6 or DIS 23009-1 to include the additional metadata described below because it simply would have been a matter of adding additional metadata to the MPD XML schemas described in DIS 23001-6 or DIS 23009-1. Id. (citing Ex. 1094 ¶ 33; Ex. 1097 § 1, 1). Dr. Bestavros persuasively explains that “M20060 expressly references the DIS 23001-6 reference and proposes specific modifications to the MPEG DASH metadata included in the MPD XML schema.” Ex. 1094 ¶ 34 (citing Ex. 1097 § 1, 1 (introduction of M20060); Ex. 1097, 7 (references cited by M20060)).” slip op. at 41
Patent outcomesUS 10,270,830 unpatentableClaim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 10,270,830
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.