- Everstar Merchandise Co., Ltd. v. Willis Electric Co., Ltd.Rehearing deniedPTAB · Jun 30, 2020 · IPR2019-01484 · APJ Jeffrey W Abraham · IPR · Rehearing
The Board denied rehearing and maintained its denial of institution for claims 1–30, finding no abuse of discretion in its claim-construction analysis or treatment of factual disputes.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW The party challenging a decision in a request for rehearing bears the burden of showing the decision should be modified. 37 C.F.R. § 42.71(d) (2019). A request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed.” 37 C.F.R. § 42.71(d). When rehearing a decision on a petition, the decision will be reviewed for an abuse of discretion. 37 C.F.R. § 42.71(c).” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“strands 102a–c as “extend[ing] axially through the center portion of wire 10[0].” Ex. 1001, 14:59–60. Our construction of “disposed at a central portion,” which requires strands to be positioned in the wire so as to occupy at least the center of the wire, is consistent with both the description of strands 102a–c as extending through the center portion of the wire in the ’097 patent specification and the depiction of strands 102a–c in the center of wire 100 in Figure 5. Petitioner appears to argue that because reinforcing strands 102a–c occupy a space that is larger than “simply the central axis of the wire,” any strands disposed inside the wire (i.e., within the outer insulating layer of the wire) are also “disposed at a central portion of the wire.” Req. Reh’g 5. Nothing in Figure 5 or the ’097 patent’s description of Figure 5, however, supports a construction of “disposed at a central portion” that means simply “disposed inside the wire.” To the contrary, Petitioner’s argument is undermined by the fact that the ’097 patent expressly refers to the reinforcing strands 102a–c as extending through the central portion, but does not use the same language to characterize the position of conducting strands 104.” slip op. at 4
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“construction of “plurality of reinforcing strands” contradicts the ’097 patent specification. Req. Reh’g 10–12. In our Decision, however, we never expressly construed this term. Instead, we noted that the ’097 patent addresses the possibility that yarn, which itself comprises multiple strands, can be used to form a single reinforcing strand. Dec. 34–35. We did not, as Petitioner contends, determine that “twisted strands must only be one reinforcing strand.” Req. Reh’g 10–11. To the contrary, as Petitioner itself points out, we expressly noted that the ’097 patent distinguishes between embodiments having a single reinforcing strand and those having multiple reinforcing strands. Req. Reh’g 10; Dec. 35. In view of this, we are not persuaded by Petitioner’s argument that we adopted a claim construction of “plurality of reinforcing strands” that contradicts the ’097 patent’s specification, which in turn “led to a clearly erroneous Institution Decision with respect to claims 16–22.” Req. Reh’g 12.” slip op. at 7
- Strike new argumentNew argument disregardedDecided for patent owner
“We first note that Petitioner presents new evidence for the first time in the Request for Rehearing. Pursuant to 37 C.F.R. § 42.104(b)(3), a petition must set forth how the challenged claims are to be construed. In this proceeding, the Petition contains one paragraph addressing claim construction. Pet. 7. In the paragraph, Petitioner states a claim should be “accorded its ‘ordinary and customary meaning . . . as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent’” and, in a single sentence within that paragraph, indicates that “no terms require a specific construction.” Pet. 7. Petitioner thus had the opportunity to present its claim construction arguments and supporting evidence in its Petition, and chose not to do so. By way of contrast, in the Request for Rehearing, Petitioner allocates seven pages to the construction of the term “disposed at a central portion.” Req. Reh’g. 2–8. Petitioner is attempting to use the Request for Rehearing as an opportunity to reply to our Decision and present new arguments and evidence on claim construction. A request for rehearing, however, is not an opportunity merely to disagree with the Board’s assessment of the arguments or weighing of the evidence, or for Petitioner to present new arguments or evidence.” slip op. at 3
Claim constructionPatents in suitUS 9,671,097 - Everstar Merchandise Co. Ltd. v. Willis Electric Co. Ltd.Institution deniedPTAB · Feb 13, 2020 · PGR2019-00055 · APJ Stacey G White · PGR · Institution
The Board denied institution because Petitioner did not show that claims 1–10 were more likely than not unpatentable under any asserted obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review under 35 U.S.C. § 324 and 37 C.F.R. § 42.4(a). We may not institute a post-grant review unless “the information presented in the petition . . . , if such information is not rebutted, would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” 35 U.S.C. § 324(a).” slip op. at 2
- Skill levelSkill level patent owner adoptedDecided for patent owner
“the invention “would have had at least a Bachelor of Science degree (or equivalent) in Electrical Engineering, or a comparable field, and at least five years of experience in the fields of design of electrical wiring and/or decorative lighting.” Pet. 9 (citing Ex. 1009 ¶ 21). Patent Owner argues that Petitioner’s proposed definition recites an unnecessarily high level of skill. Prelim. Resp. 21. Patent Owner contends that the appropriate level of ordinary skill “would have been (1) a technician with at least two years of experience in the design of electrical wiring and/or decorative lighting, or (2) a person with at least a bachelor’s degree in mechanical engineering, electrical engineering, or an equivalent field, and a basic familiarity with circuits used in decorative lighting.” Id. (citing Ex. 2001 ¶¶ 14–15). At this stage in the proceeding, we determine that the current record supports Patent Owner’s description of an ordinarily skilled artisan. For purposes of this Decision, therefore, we adopt Patent Owner’s description of an ordinarily skilled artisan.7 We also note that the applied prior art reflects the appropriate level of skill at the time of the claimed invention. See Okajima, 261 F.3d at 1355.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Neither party offers any proposed constructions for any claim terms. Pet. 8–9; Prelim. Resp. 20. Specifically, Petitioner indicates, “no terms require a specific construction, as they would be readily understandable to a [person of ordinary skill in the art].” Pet. 9 (citing Ex 1009 ¶ 22). Patent Owner also indicates, for purpose of its Preliminary Response, that no claim construction is necessary at this stage, but reserves the right to propose constructions should trial be instituted. Prelim. Resp. 20. On this record and for purposes of this decision, we determine that no claim term requires express construction. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 10
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“gauge of Sylvania’s net lights. Prelim. Resp. 24. Petitioner provides Exhibit 1007, which is a series of photographs of the Sylvania net lights, its packaging, and its inserts from the box. See Ex. 1007; see also Ex. 1010 ¶ 7 (describing Ex. 1007 as “a collection of photographs”). Petitioner also submitted Exhibit 1010, which is a declaration from William Shelleman describing the purchase of Sylvania. See Ex. 1010. Finally, Dr. Fantone’s declaration includes a description of Sylvania. Ex. 1009 ¶ 28. We have reviewed Petitioner’s evidence and we agree with Patent Owner that Petitioner has not established the wire gauge of Sylvania’s net lights because none of these documents purport to indicate the gauge of the wires in Sylvania. Thus, the question is whether the recited wire gauge teaches the asserted combination.” slip op. at 16
Claim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 10,119,664 - Hulu, LLC v. Sound View Innovations, LLCAll claims unpatentablePTAB · Sep 9, 2019 · IPR2018-00864 · APJ Debra K Stephens · IPR · Final written decision
Claims 3, 5, and 9 are unpatentable under § 103 because the Board found the asserted prior-art combinations taught the limitations required by its claim construction.
RulingsFinal written decision- Skill levelSkill level board ownDecided for patent owner
“Petitioner asserts that a person of ordinary skill in the art at the time of the invention “would have [had] at least a Bachelor of Science degree in Electrical Engineering, Computer Science, or an equivalent field, as well as at least 2-3 years of academic or industry experience in the field of content delivery networks or comparable industry experience(s)” (Pet. 13 (citing Ex. 1002 ¶ 32)). Patent Owner does not dispute Petitioner’s assertion regarding the education or experience of an ordinarily skilled artisan at the time of the invention (see generally PO Resp.). We note that the assessment appears consistent with the level of ordinary skill in the art at the time of the invention as reflected in the prior art in the instant proceeding (see Okajima, 261 F. 3d at 1355). Based on our review of the ’074 Patent, the types of problems and solutions described in the ’074 Patent and cited prior art, and the testimony of Drs. Houh and Jones (Ex. 1002 ¶ 32; Ex. 2018 ¶¶ 19–20), we determine a skilled artisan would have possessed a Bachelor of Science degree in Computer Science, Computer Engineering, Electrical Engineering, or an equivalent field, and two to three years of work experience with content delivery networks or applications or comparable education or work experience in the field.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for petitioner
“be understood by one of ordinary skill in the art in the context of the entire disclosure (In re Translogic Tech., Inc., 504 F.3d 149, 1257 (Fed. Cir. 2007)). An inventor may rebut that presumption by providing a definition of the term in the specification with reasonable clarity, deliberateness, and precision (In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994)). In the absence of such a definition, limitations are not to be read from the specification into the claims (In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993)). a) “helper server” The ’074 patent describes “helper server” in the following terms: “Helper Server (HS): a HS, also referred to as a helper, is one of a plurality of servers in the network that provide certain value-added services” (Ex. 1001, 4:11–13). Accordingly, we adopt this interpretation.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“1. Claim Terms Claim terms are given their ordinary and customary meaning as would be understood by one of ordinary skill in the art in the context of the entire disclosure (In re Translogic Tech., Inc., 504 F.3d 149, 1257 (Fed. Cir. 2007)). An inventor may rebut that presumption by providing a definition of the term in the specification with reasonable clarity, deliberateness, and precision (In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994)). In the absence of such a definition, limitations are not to be read from the specification into the claims (In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993)). a) “helper server” The ’074 patent describes “helper server” in the following terms: “Helper Server (HS): a HS, also referred to as a helper, is one of a plurality of servers in the network that provide certain value-added services” (Ex. 1001, 4:11–13). Accordingly, we adopt this interpretation. b) Other terms Based on the trial record, we determine that no additional terms require explicit construction (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 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“independent claims 3 and 9 were mutually exclusive (Dec. to Inst. 8–9). We stated: As a matter of law, therefore, we determine with respect to claims 3 and 9, only one of the conditional limitations needs to be satisfied in the prior art to render the claim anticipated or obvious (see Ex Parte Schulhauser (Appeal No. 2013-007847 (PTAB Apr. 28, 2016) (precedential), at 8–10 (holding that conditional steps in process claims need not be carried out when conditions precedent to those steps are not satisfied to be within the broadest reasonable interpretation of the claim))” slip op. at 11
Patent outcomesUS 9,462,074 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,462,074 - Unified Patents Inc. v. Sound View Innovations, LLCAll claims unpatentablePTAB · Sep 9, 2019 · IPR2018-00599 · APJ Debra K Stephens · IPR · Final written decision
Claims 3 and 9 are unpatentable under § 103 because the cited combinations teach the claimed limitations that the Board found limiting.
RulingsFinal written decision- Skill levelSkill level board ownDecided for petitioner
“Petitioner asserts that a person of ordinary skill in the art at the time of the invention would have had a bachelor’s degree in computer science, computer engineering, electrical engineering, or a related subject, and two or three years of work experience with network-based applications and/or multimedia applications. A lack of experience can be remedied with additional education (e.g., a Master’s degree), and likewise, a lack of education can be remedied with additional work experience (e.g., 6-7 years) (Pet. 7–8 (citing Ex. 1005 ¶ 38)). Patent Owner does not dispute the educational level or experiential aspects of Petitioner’s definition in its Response (see generally PO Resp.; Ex. 2002 ¶¶ 19–20). We note that the assessment appears consistent with the level of ordinary skill in the art at the time of the invention as reflected in the prior art in the instant proceeding (see Okajima, 261 F.3d at 1355). Based on our review of the ’074 Patent, the types of problems and solutions described in the ’074 Patent and cited prior art, and the testimony of Drs. Reddy and Jones (Ex. 1005 ¶ 38; Ex. 2002 ¶¶ 19–20), we determine a skilled artisan would have possessed a Bachelor of Science degree in Computer Science, Computer Engineering, Electrical Engineering, or an equivalent field, and two or three years of work experience with content delivery networks or applications or comparable education or work experience in the field.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther
“a. “helper server” The ’074 patent describes “helper server” in the following terms: “Helper Server (HS): a HS, also referred to as a helper, is one of a plurality of servers in the network that provide certain value-added services” (Ex. 1001, 4:11–13). Accordingly, we adopt this interpretation.” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“We agree with Petitioner that neither claim 3 nor claim 9 recites where the “receiving” step takes place and, in particular, neither claim recites “receiving said SM object” at the plurality of or one of the helper servers. [C]laim terms cannot be narrowed by reference to the written description or prosecution history unless the language of the claims invites reference to those sources. See, e.g., McCarty v. Lehigh Val. R.R., 160 U.S. 110, 116, 16 S. Ct. 240, (1895) (“[I]f we once begin to include elements not mentioned in the claim in order to limit such claim ..., we should never know where to stop.”); Renishaw [PLC v. Marposs Societa per Azioni], 158 F.3d 1243, 1249 [(Fed. Cir. 1998)]. In other words, there must be a textual reference in the actual language of the claim with which to associate a proffered claim construction (Johnson Worldwide Assocs., Inc. v. Zebco Corp., 175 F.3d 985, 989–90 (Fed. Cir. 1999)). Here, we do not find a textual reference in “receiving said SM object.” We determine that the inventors did not introduce their own lexicographic definition, i.e., defining the term “receiving said SM object” or “receiving.” Furthermore, we are not persuaded “the term or terms chosen by the patentee[s] so deprive the claim of clarity that there is no means by which the scope of the claim may be ascertained from the language used” (see id. at 990 (citations omitted)). Nor do the preambles of claim 3 and 9, respectively, provide any textual reference that “receiving said SM object” should be interpreted as “receiving said SM object at a helper server.” Thus, “[i]n this case, the [disputed term] has a clear and well-defined meaning. This term is not so amorphous that one of skill in the art can only reconcile the claim language with the inventor’s disclosure by recourse to the specification” (Comark Commc’ns, Inc. v. Harris Corp., 156 F.3d 1182, 1187 (Fed. Cir. 1998)).” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner
“We disagree with Patent Owner’s assessment of the preambles of claims 3 and 9. The preamble of claim 3 recites: A method for storing a streaming media (SM) object in a network having a content server which hosts SM objects for distribution over said network through a plurality of helper servers (HSs) to a plurality of clients, said SM object being comprised of a plurality of successive time-ordered chunks, wherein a chunk is further comprised of a discrete number of segments, each segment allocated to a respective disk block of said plurality of HSs, and the preamble of claim 9 recites: A method for managing storage of a streaming media (SM) object in a network having a content server which hosts SM objects for distribution over said network through a plurality of servers to a plurality of clients (Ex. 1001, Claims). Neither of the preambles recites that storage depends on the availability of disk space. Patent Owner additionally points to Reactive Surfaces Ltd., LLP v. Toyota Motor Corp., IPR2016-01914, Paper 64 at 11–14 (PTAB Mar. 1, 2018) (PO Resp. 10). Claim 1 of Reactive Surfaces recites:” slip op. at 20
Patent outcomesUS 9,462,074 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,462,074 - RPX Corporation / Huawei Enterprise USA, Inc. et al. v. Parity Networks, LLCAll claims unpatentablePTAB · Apr 9, 2019 · IPR2018-00100 · APJ Bryan F Moore · IPR · Final written decision
Claims 1–19 are unpatentable: claims 1–4, 6–9, 11–16, and 18–19 as obvious over Wilford; claims 5, 10, and 17 as obvious over Wilford and Ayres.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts a person of ordinary skill in the art of the subject matter of the ’378 patent would have had “(a) a bachelor’s degree in computer science or electrical engineering, and four or more years of experience with networks and networking devices, or (b) a master’s degree in computer science or electrical engineering, and two or more years of experience with networks and networking devices.” Pet. 10 (citing Ex. 1105 ¶¶ 30–34). Patent Owner does not offer a proposed level of skill in its Patent Owner Response and does not address Petitioner’s assertions regarding the education or experience of an ordinarily skilled artisan at the time of the invention. See generally PO Resp. We adopt Petitioner’s articulation of the level of skill and acknowledge that the level of ordinary skill in the art is also reflected by the prior art of record. See Okajima, 261 F.3d at 1355; GPAC Inc., 57 F.3d at 1579 (Fed. Cir. 1995); Oelrich, 579 F.2d at 91.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“All challenged claims require a “hardware queue.” Petitioner argues “under BRI, the term ‘hardware queue’ should be interpreted to include hardware that is configurable by software to form a queue.” Pet. 42 (citing Ex. 1105 ¶ 210). Petitioner also suggests that an alternative definition of the term could “require special-purpose hardware circuitry to control at least some portion of the queue.” Id. at 44. Patent Owner does not define explicitly “hardware queue.” Nevertheless, Patent Owner’s declarant asserts “[t]he plain and ordinary meaning of a hardware queue, is well known,” i.e., that “such a queue would be designed by a circuit designer and formed to function as a queue as part of the manufacturing process of an electronic circuit,” and that it differs from a software queue “formed by software operating on general purpose or multi-purpose hardware.” Ex. 2001 ¶ 34. Additionally, Patent Owner’s argument in the Patent Owner Response suggests “hardware queue” means that the queue cannot be a “software queue” and “must be implemented in hardware.” PO Resp. 7, 9–12 (stating “Petitioners do not assert that the queue must be implemented in hardware”).” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“Petitioner demonstrates reasons supported by a rational underpinning for combining Wilford and Ayres, including at least that the combination uses known methods to obtain predictable results. Pet. 61–66. For example, Petitioner provides evidence and argument that: A [person of ordinary skill in the art at the time of the invention] would have understood that monitoring CPU utilization as taught in Ayres is a conventional technique for monitoring CPU load in relation to the CPU’s capacity, and that known technology could be employed in Wilford to monitor utilization of the linecard’s CPU (as Ayres does) and provide that information to the added dynamic packet flow rate control module. (Lavian, ¶259 (discussing Ayres and citing Ex. 1112 at 4:67, 9:62-65, 10:18- 20, and 10:26)). Pet. 66. We agree with and adopt Petitioner’s contentions in the Petition as to claims 5, 10, and 17.” slip op. at 36
- Strike new argumentNew argument consideredDenied
“because it contains allegedly new arguments. Paper 24. Specifically, Petitioner states Patent Owner argued for the first time “a hardware queue” requires some unspecified “structure” “define[d]” by hardware “such as shift registers.” Paper 42, 2 (citing Sur-Reply at 2–3). Petitioner also asserts that Patent Owner, for the first time in “[t]he Sur-Reply[,] offers unsupported attorney arguments about alleged differences between the ‘hardware queues’ in Exs. 1110 and 1111 and Wilford’s queues based on alleged differences between SRAM and DRAM.” Paper 42, 3 (citing Sur-Reply at 2–3). Petitioner asserts Patent Owner’s arguments could have been made in the Patent Owner Response and thus are waived. Paper 8, 3 (arguments not in POR “will be deemed waived”); Update to the Trial Practice Guide (83 Fed. Reg. 38,989 (Aug. 13, 2018) (notifying the public of the updated “Trial Practice Guide” and its accessibility through the USPTO website: https://go.usa.gov/xU7GP)) at 15 (a “sur-reply that raises a new issue or belatedly presents evidence may not be considered”; a sur-reply may “respond” to arguments “raised” in the reply but “respond … does not mean embark in a new direction with a new approach as compared to positions taken in a prior filing.”). Petitioner’s motion is denied. Patent Owner’s reference to “shift registers” is in response to arguments in the Reply regarding the definition of hardware queue. Additionally, Patent Owner’s reference to Exhibits 1110 and 1111 are in response to Petitioner’s reference to those exhibits for the first time in its Reply.” slip op. at 37
Patent outcomesUS 6,738,378 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,738,378 - Unified Patents Inc. v. Sound View Innovations, LLCAll claims unpatentablePTAB · Apr 9, 2019 · IPR2018-00096 · APJ Daniel J Galligan · IPR · Final written decision
Claims 1–3 and 8–10 are unpatentable under § 103 over Bernstein alone and over Bernstein combined with Rubin.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Thus, Dr. Jones does not disagree with Petitioner and Dr. Franzon’s assessment but, rather, offers additional exceptions and qualifications, which 4 Dr. Phillip Gibbons is Petitioner Hulu’s declarant in IPR2018-00017, and Dr. Franzon and Dr. Gibbons offer the same assessment as to the level of ordinary skill in the art, as noted by Dr. Jones. See Ex. 2012 ¶ 20. we address in our analysis below. Because there is general agreement among the parties that Petitioner and Dr. Franzon’s assessment of the level of ordinary skill is correct, we adopt Petitioner’s statement of the level of ordinary skill in the art with the exception of the language “at least,” which introduces ambiguity. Thus, we determine that a person of ordinary skill in the art would have had a bachelor’s degree in electrical engineering or computer science (or equivalent degree or experience) with two years of experience in the design and/or development of database and record management systems.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Patent Owner’s interpretation of “measurable characteristic” is refuted by the specification of the ’371 patent, which states that aging controller 120 determines a current value of L in response to one or more measurable main memory characteristics, step 200, such as a current utilization or capacity of main memory, a trend analysis of a utilization or capacity of main memory over a time period (t), or any other applied mathematics-or statistics-based analysis, including a comparison of any of the same with a threshold, ceiling/floor, limit, set point or the like. Ex. 1001, 6:46–53 (emphases added). According to the ’371 patent, therefore, a comparison of a memory’s current utilization or capacity to a threshold is within the scope of a “measurable main memory characteristic[].” Thus, Patent Owner’s attempt to distinguish “logical events” and “qualitative assessments” from measurable characteristics of memory is contrary to the specification. We determine that the phrase “measurable characteristic of said memory” does not require further construction.5” slip op. at 10
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“titled Concurrency Control and Recovery in Database Systems. Petitioner asserts that “Bernstein qualifies as prior art to the claims of the ’371 patent under 35 U.S.C. § 102(b) (pre-AIA).” Pet. 9. Petitioner introduces 6 Patent Owner has not presented evidence of secondary considerations as to any of the challenged claims. additional evidence that the Bernstein textbook was published more than one year before the August 19, 1997, filing date of the ’371 patent. See Exs. 1006 (Bernstein textbook excerpts, including title page and date stamp (April 27, 1987) from Library of Congress), 1007 (Bernstein textbook excerpts, including stamp from the University of Michigan Libraries and date annotation (1987)), 1015 (declaration testimony of Dr. Sylvia Hall-Ellis that Bernstein was publicly available no later than March 3, 1986), 1018 (Machine Readable Cataloging (“MARC”) record for Bernstein). During the trial, Patent Owner did not contest the status of Bernstein as a prior art printed publication under 35 U.S.C. § 102(b). Based on the evidence of record, we determine Bernstein is a prior art printed publication under 35 U.S.C. § 102(b).” slip op. at 12
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“g. Conclusion as to claims 1 and 8 In summary, we find Bernstein teaches all of the limitations of claims 1 and 8, and we also find the combination of Bernstein and Rubin teaches all of the limitations of claims 1 and 8. In addition, we find that a person of ordinary skill in the art would have had a reasonable expectation of success in arriving at the invention recited in claims 1 and 8 based on Bernstein alone and based on the combined teachings of Bernstein and Rubin. We also find that a person of ordinary skill in the art would have been motivated to combine the teachings of Bernstein and Rubin. Having considered the full record developed during trial, we conclude Petitioner has shown, by a preponderance of the evidence, that the subject matter of claims 1 and 8 would have been obvious under 35 U.S.C. § 103(a) based on Bernstein alone and based on the combined teachings of Bernstein and Rubin.” slip op. at 36
Patent outcomesUS 6,125,371 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 6,125,371 - Hulu, LLC v. Sound View Innovations, LLCAll claims unpatentablePTAB · Apr 9, 2019 · IPR2018-00366 · APJ Daniel J Galligan · IPR · Final written decision
Claims 1–3 and 8–10 are unpatentable as obvious over Bernstein alone and over Bernstein combined with Blake.
RulingsFinal written decision- Expert testimonyPetitioner expert creditedDecided for petitioner
“We disagree that this testimony undermines Dr. Gibbons’s opinions because Petitioner and Dr. Gibbons rely on Bernstein’s MVTO disclosures, not Bernstein’s other multiversion techniques, to show obviousness of the claims, a point made by Patent Owner in its Response. PO Resp. 4 (“That a practical garbage collection algorithm for Bernstein’s MVTO was not commonly known as of the Patent’s invention date is also highlighted by the fact that, in contrast to Bernstein’s lack of disclosure with respect to its discussion of MVTO, Bernstein does indeed disclose practical garbage collection algorithms for both of the other multi-version concurrency control methods that it discusses—however, the Petition does not suggest that either of these other methods renders the claimed inventions obvious.”). Furthermore, the examining attorney’s question about “whether a designer or a POSITA in 1997 would choose Bernstein’s third mixed method of multiversion concurrency control as opposed to the multiversion timestamp ordered or vice-versa” (Ex. 2017, 28:12–18) is irrelevant to the issues in this case. Dr. Gibbons testified that he “latched on to the multiversion timestamp ordering as an example of a concurrency control algorithm that teaches the claims.” Ex. 2017, 28:2–5; see KSR, 550 U.S. at 419 (“What matters is the objective reach of the claim. If the claim extends to what is obvious, it is invalid under § 103.”). That Bernstein discloses other techniques in addition to MVTO does not diminish the teachings of MVTO relied upon by Petitioner and Dr. Gibbons. Therefore, we do not agree with Patent Owner that Dr. Gibbons’s testimony should be given no weight. Rather, we have weighed the evidence before us in arriving at our conclusions, as laid out in our analysis above.” slip op. at 40
- Skill levelSkill level petitioner adoptedOther
“Thus, Dr. Jones does not disagree with Petitioner and Dr. Gibbons’s assessment but, rather, offers additional exceptions and qualifications, which we address in our analysis below. Because there is general agreement among the parties that Petitioner and Dr. Gibbons’s assessment of the level of ordinary skill is correct, we adopt Petitioner’s statement of the level of ordinary skill in the art with the exception of the language “at least,” which introduces ambiguity. Thus, we determine that a person of ordinary skill in the art would have had a bachelor’s degree in electrical engineering or computer science (or equivalent degree or experience) with two years of experience in the design and/or development of database and record management systems.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Patent Owner’s interpretation of “measurable characteristic” is refuted by the specification of the ’371 patent, which states that aging controller 120 determines a current value of L in response to one or more measurable main memory characteristics, step 200, such as a current utilization or capacity of main memory, a trend analysis of a utilization or capacity of main memory over a time period (t), or any other applied mathematics-or statistics-based analysis, including a comparison of any of the same with a threshold, ceiling/floor, limit, set point or the like. Ex. 1201, 6:46–53 (emphases added). According to the ’371 patent, therefore, a comparison of a memory’s current utilization or capacity to a threshold is within the scope of a “measurable main memory characteristic[].” Thus, Patent Owner’s attempt to distinguish “logical events” and “qualitative assessments” from measurable characteristics of memory is contrary to the specification. We determine that the phrase “measurable characteristic of said memory” does not require further construction.4” slip op. at 10
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“§ 102(b) (pre-AIA) because it was published on March 1, 1995, more than one year before the earliest patent application filing date on the face of the ’371 patent.” Pet. 18. In its Preliminary Response, Patent Owner argued Petitioner failed to show Blake was publicly accessible before the August 19, 1997, filing date of the ’371 patent. Prelim. Resp. 57–59. With its Reply, Petitioner submits the Declaration of James L. Mullins, Ph.D. Ex. 1227. Dr. Mullins testifies that Blake “was publicly available and accessible no later than the end of the November 1996.” Ex. 1227 ¶ 36. During the trial, Patent Owner did not contest the status of Blake as a prior art printed publication under 35 U.S.C. § 102. November 1996 is not more than one year prior to the August 19, 1997, filing date of the ’371 patent and, thus, would not qualify Blake as a prior art printed publication under 35 U.S.C. § 102(b), as asserted by Petitioner in the Petition. Nevertheless, based on Dr. Mullins’s testimony in rebuttal to Patent Owner’s argument, we determine Blake is prior art printed publication under 35 U.S.C. § 102(a).” slip op. at 14
Patent outcomesUS 6,125,371 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 6,125,371 - Hulu, LLC v. Sound View Innovations, LLCAll claims unpatentablePTAB · Apr 9, 2019 · IPR2018-00017 · APJ Daniel J Galligan · IPR · Final written decision
Claims 8–10 are unpatentable under § 103(a) over Bernstein alone and over Bernstein combined with Rubin.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“I generally agree with the level of ordinary skill described by Gibbons, except that at the time of the invention, a person of ordinary skill in the art would not have been able to devise algorithms or conduct original design or development of new database systems. Rather, a person of ordinary skill would have been able to implement database management software, such as multi-version concurrency control, based on algorithms and designs already provided to them. As will be discussed in more detail in connection with particular arguments, designing software such as multi-version concurrency control contains theoretical aspects (such as proof of correctness) and inventive aspects (such as practical garbage collection) that were beyond the abilities of the person of ordinary skill. Ex. 2012 ¶ 21. Thus, Dr. Jones does not disagree with Petitioner and Dr. Gibbons’s assessment but, rather, offers additional exceptions and qualifications, which we address in our analysis below. Because there is general agreement among the parties that Petitioner and Dr. Gibbons’s assessment of the level of ordinary skill is correct, we adopt Petitioner’s statement of the level of ordinary skill in the art with the exception of the language “at least,” which introduces ambiguity. Thus, we determine that a person of ordinary skill in the art would have had a bachelor’s degree in electrical engineering or computer science (or equivalent degree or experience) with two years of experience in the design and/or development of database and record management systems.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Patent Owner’s interpretation of “measurable characteristic” is refuted by the specification of the ’371 patent, which states that aging controller 120 determines a current value of L in response to one or more measurable main memory characteristics, step 200, such as a current utilization or capacity of main memory, a trend analysis of a utilization or capacity of main memory over a time period (t), or any other applied mathematics- or statistics-based analysis, including a comparison of any of the same with a threshold, ceiling/floor, limit, set point or the like. Ex. 1101, 6:46–53 (emphases added). According to the ’371 patent, therefore, a comparison of a memory’s current utilization or capacity to a threshold is within the scope of a “measurable main memory characteristic[].” Thus, Patent Owner’s attempt to distinguish “logical events” and “qualitative assessments” from measurable characteristics of memory is contrary to the specification. We determine that the phrase “measurable characteristic of said memory” does not require further construction.4” slip op. at 10
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“titled Concurrency Control and Recovery in Database Systems. Petitioner asserts that “Bernstein qualifies as prior art to the claims of the ’371 patent under 35 U.S.C. § 102(b) (pre-AIA).” Pet. 7. Petitioner introduces additional evidence that the Bernstein textbook was published more than one year before the August 19, 1997, filing date of the ’371 patent. See Exs. 1106 (Bernstein textbook excerpts, including title page and date stamp (April 27, 1987) from Library of Congress), 1107 (Bernstein textbook excerpts, including stamp from the University of Michigan Libraries and date annotation (1987)). During the trial, Patent Owner did not contest the status of Bernstein as a prior art printed publication under 35 U.S.C. § 102(b). Based on the evidence of record, we determine Bernstein is a prior art printed publication under 35 U.S.C. § 102(b). 5 Patent Owner has not presented evidence of secondary considerations as to any of the challenged claims.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“We disagree with Patent Owner’s premise that Bernstein does not disclose a “garbage collection” scheme for MVTO. As we discuss above, according to Patent Owner, “[i]dentifying which versions can be deleted and recovering the space associated with them” is “a concept known as ‘garbage collection.’” PO Resp. 22 (citing Ex. 2013, 50:14–25; Ex. 2014, 88:20– 89:11). Bernstein discloses deleting the oldest versions when space has run out, i.e., “garbage collection” commensurate with the scope of claim 8. Ex. 1103, 154. We are persuaded Petitioner’s articulated reasons to combine the teachings of Bernstein and Rubin have a rational underpinning, and specifically, we find a person of ordinary skill in the art would have been motivated to combine Rubin’s monitoring of disk storage space with Bernstein to proactively alert Bernstein’s data manager of impending disk space shortages rather than waiting until the data manager “run[s] out of space for storing versions.” See Ex. 1102 ¶¶ 68–70. We agree with Dr. Gibbons that maintaining “a minimal level of space, in turn, would have avoided the need to suspend the database system to perform deletion of old versions.” Id. ¶ 70.” slip op. at 28
Patent outcomesUS 6,125,371 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 6,125,371 - Fitbit, Inc. / Wahoo Fitness LLC. v. Blackbird Tech, LLC D/B/A Blackbird Technologies, LLCSome claims unpatentablePTAB · Mar 12, 2019 · IPR2018-00275 · APJ Debra K Stephens · IPR · Final written decision
Claims 2 and 5 were not shown unpatentable over Amano; claim 6 was shown unpatentable as obvious over Kato and Amano.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Under district court-type claim construction, claim terms are given their ordinary and customary meaning, as would be understood by a person of ordinary skill in the art, at the time of the invention, in light of the language of the claims, the specification, and the prosecution history of 8 record (Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc); see also In re Rambus Inc., 694 F.3d 42, 46 (Fed. Cir. 2012) (“While claims are generally given their broadest possible scope during prosecution, the Board’s review of the claims of an expired patent is similar to that of a district court’s review.”) (internal citation omitted)). “In determining the meaning of the disputed claim limitation, we look principally to the intrinsic evidence of record, examining the claim language itself, the written description, and the prosecution history, if in evidence” (DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing Phillips, 415 F.3d at 1312–17)). There is a “heavy presumption,” however, “that a claim term carries its ordinary and customary meaning” (CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002) (citation omitted)). We determine that no claim terms require express construction (see Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (Only terms which are in controversy need to be construed, and only to the extent necessary to resolve the controversy)).” slip op. at 8
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that a person of ordinary skill in the art at the time of the invention would have been [1] a person with a bachelor’s degree in mechanical engineering, electrical engineering, computer science, or a similar field with at least two years of experience in motion tracking, motion analysis, inertial sensing, or signal analysis, or [2] a person with a master’s degree in mechanical engineering, electrical engineering, computer science, or a similar field with a specialization in motion tracking, motion analysis, inertial sensing, or signal analysis or “[a] person with less education but more relevant practical experience. . . .” (Pet. 26–27 (citing Ex. 1005 ¶ 45–47)). Patent Owner does not dispute the educational level or experiential aspects of Petitioner’s definition in its Response (see generally PO Resp.). We note that the assessment appears consistent with the level of ordinary skill in the art at the time of the invention as reflected in the prior art in the instant proceeding (see Okajima at 1355). Based on our review of 12 the ’212 Patent, the types of problems and solutions described in the ’212 Patent and cited prior art, and the testimony of Dr. Choudhury and Dr. Michael Caloyannides, we adopt and apply Petitioner’s description of a skilled artisan as possessing (1) a bachelor’s degree in mechanical engineering, electrical engineering, computer science, or a similar field with at least two years of experience in motion tracking, motion analysis, inertial sensing, or signal analysis, or (2) a master’s degree in mechanical engineering, electrical engineering, computer science, or a similar field with a specialization in motion tracking, motion analysis, inertial sensing, or signal analysis, is supported by the current record.” slip op. at 12
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“Petitioner does not identify any disclosure in Amano that describes calculating pitch based on any distance. That pitch has a length/time measurement does not change the lack of disclosure of Amano of any counting of steps in determining the distance traveled. Indeed, Amano’s FFT processing merely determines when a step has occurred through identification of peak frequency of the second order harmonic wave component, to determine pitch; however, the FFT processing does not count steps to be used in further calculation.” slip op. at 20
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation foundNot shown unpatentable
“We agree with Patent Owner that Amano does not disclose calculation of distance travelled, as recited in claims 2 and 5, as set forth above. Further, Petitioner has not persuaded us an ordinarily skilled artisan would have found it obvious to modify the FFT processing which identifies a peak frequency of a second harmonic to measure the pitch, to calculate a distance travelled as recited in claims 2 and 5 instead. Petitioner provides no additional discussion of this limitation in its Petition, instead relying on its anticipation arguments (Pet. 50–51). Thus, Petitioner has not articulated any reason why an ordinarily skilled artisan would have understood Amano to teach calculating a distance travelled.” slip op. at 25
Patent outcomesUS 6,434,212 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 6,434,212 - Fitbit, Inc. / Wahoo Fitness LLC. v. Blackbird Tech, LLC D/B/A Blackbird Technologies, LLCSome claims unpatentablePTAB · Mar 11, 2019 · IPR2017-02012 · APJ Debra K Stephens · IPR · Final written decision
Claims 2 and 5 were not shown unpatentable over Amano; claim 6 was shown unpatentable as obvious over Kato and Amano.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Under district court-type claim construction, claim terms are given their ordinary and customary meaning, as would be understood by a person of ordinary skill in the art, at the time of the invention, in light of the language of the claims, the specification, and the prosecution history of 8 record (Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc); see also In re Rambus Inc., 694 F.3d 42, 46 (Fed. Cir. 2012) (“While claims are generally given their broadest possible scope during prosecution, the Board’s review of the claims of an expired patent is similar to that of a district court’s review.”) (internal citation omitted)). “In determining the meaning of the disputed claim limitation, we look principally to the intrinsic evidence of record, examining the claim language itself, the written description, and the prosecution history, if in evidence” (DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing Phillips, 415 F.3d at 1312–17)). There is a “heavy presumption,” however, “that a claim term carries its ordinary and customary meaning” (CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002) (citation omitted)). We determine that no claim terms require express construction (see Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (Only terms which are in controversy need to be construed, and only to the extent necessary to resolve the controversy)).” slip op. at 8
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that a person of ordinary skill in the art at the time of the invention would have been [1] a person with a bachelor’s degree in mechanical engineering, electrical engineering, computer science, or a similar field with at least two years of experience in motion tracking, motion analysis, inertial sensing, or signal analysis, or [2] a person with a master’s degree in mechanical engineering, electrical engineering, computer science, or a similar field with a specialization in motion tracking, motion analysis, inertial sensing, or signal analysis or “[a] person with less education but more relevant practical experience. . . .” (Pet. 26–27 (citing Ex. 1005 ¶ 45–47)). Patent Owner does not dispute the educational level or experiential aspects of Petitioner’s definition in its Response (see generally PO Resp.). We note that the assessment appears consistent with the level of ordinary skill in the art at the time of the invention as reflected in the prior art in the instant proceeding (see Okajima at 1355). Based on our review of 12 the ’212 Patent, the types of problems and solutions described in the ’212 Patent and cited prior art, and the testimony of Dr. Choudhury and Dr. Michael Caloyannides, we adopt and apply Petitioner’s description of a skilled artisan as possessing (1) a bachelor’s degree in mechanical engineering, electrical engineering, computer science, or a similar field with at least two years of experience in motion tracking, motion analysis, inertial sensing, or signal analysis, or (2) a master’s degree in mechanical engineering, electrical engineering, computer science, or a similar field with a specialization in motion tracking, motion analysis, inertial sensing, or signal analysis, is supported by the current record.” slip op. at 12
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“Petitioner does not identify any disclosure in Amano that describes calculating pitch based on any distance. That pitch has a length/time measurement does not change the lack of disclosure of Amano of any counting of steps in determining the distance traveled. Indeed, Amano’s FFT processing merely determines when a step has occurred through identification of peak frequency of the second order harmonic wave component, to determine pitch; however, the FFT processing does not count steps to be used in further calculation.” slip op. at 20
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“We agree with Patent Owner that Amano does not disclose calculation of distance travelled, as recited in claims 2 and 5, as set forth above. Further, Petitioner has not persuaded us an ordinarily skilled artisan would have found it obvious to modify the FFT processing which identifies a peak frequency of a second harmonic to measure the pitch, to calculate a distance travelled as recited in claims 2 and 5 instead. Petitioner provides no additional discussion of this limitation in its Petition, instead relying on its anticipation arguments (Pet. 50–51). Thus, Petitioner has not articulated any reason why an ordinarily skilled artisan would have understood Amano to teach calculating a distance travelled.” slip op. at 25
Patent outcomesUS 6,434,212 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 6,434,212
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.