- Digital Ally, Inc. v. Utility Associates, Inc.Some claims unpatentablePTAB · Jul 27, 2015 · IPR2014-00725 · APJ Robert J Weinschenk · IPR · Final written decision
Claims 1–7, 9, 10, and 12–25 are unpatentable; claim 11 was not shown unpatentable because the petitioner did not explain why the Monroe ’320 multiplexer would perform compression.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner’s proposed level of ordinary skill in the art is consistent with the types of problems encountered in the art and the prior art solutions to those problems. See In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). The ’556 patent explains that: The VCR is a technical device nearing the end of its lifecycle; therefore, no serious advancements are on the drawing board that address the numerous technical issues incumbent to videotape recording. On the other hand, digital capture and storage is at the beginning of its technological curve, with rapid development of new devices. The only available means to ensure sufficient quality and control of video recording, access, and storage is an increase in the number of well-trained persons with those responsibilities. Ex. 1001, col. 1, ll. 29–37 (emphasis added). In other words, the ’556 patent focuses on transitioning surveillance systems from outdated VCR technology to the rapidly developing technology of digital capture and storage. Id. This is also reflected in the claims of the ’556 patent, which recite “capturing,” “integrating,” and “storing” information. See, e.g., id. at col. 8, ll. 44–49. Petitioner’s proposed level of ordinary skill in the art, thus, appropriately includes an education in electrical engineering or computer science and experience in signal processing, or other related disciplines. Ex. 1003 ¶ 39.” slip op. at 4
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“Petitioner submits evidence showing that the ordinary and customary meaning of the term “vehicle” is any means of carrying or transporting something and, thus, includes an aircraft. Pet. 19–20; Ex. 1007, 4. This definition is consistent with the Specification of the ’556 patent, which indicates that the disclosed surveillance system has “airline applications.” Ex. 1001, col. 2, ll. 15–19. Patent Owner, on the other hand, identifies portions of the Specification and prosecution history that describe a land-based, first-responder vehicle as an example of a vehicle. PO Resp. 17–18; Ex. 1001, col. 2, ll. 39–44 (“The embodiment disclosed herein is used in a police car,” but “the present invention is not limited to this example.”) (emphasis added); Ex. 1002, 59 (“The present invention is used for emergency response vehicles, such as police cars, ambulances, and the like.”) (emphasis added). But the Specification shows that the term “vehicle” is broader. Namely, the ’556 patent states that the disclosed surveillance system is “for use in public and commercial vehicles” and “can be deployed on police, fire, and rescue vehicles and is adaptable for use on transportation and industry vehicles, as well as having rail and airline applications.” Ex. 1001, col. 1, ll. 7–10, col. 2, ll. 15–19. Therefore, we decline to limit the term “vehicle” to particular examples in the Specification or prosecution history. See Aria Diagnostics, Inc. v. Sequenom, Inc., 726 F.3d 1296, 1301 (Fed. Cir. 2013).” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“The parties agree that the term “integrating” refers to “combining.” Pet. 21; PO Resp. 37. This is consistent with the Specification of the ’556 patent, which states: “The captured data from the sixteen inputs . . . are . . . combined with the video and audio information . . . to create aggregated documentation that is sent to a storage unit 270 in one data stream.” Ex. 1001, col. 4, ll. 28–34 (emphasis added). The parties also agree that the term “integrating” does not include superimposing, mixing, laying over, or layering. Pet. 21–22; PO Resp. 36–37; Ex. 1003 ¶ 49; Tr. 9:1–9. This is consistent with statements made by the patentee during prosecution of the application that issued as the ’556 patent. Ex. 1002, 129–30.” slip op. at 10
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“unpatentable under 35 U.S.C. § 102(e) as anticipated by Monroe ’320. Pet. 12. A claim is anticipated if each limitation of the claim is disclosed in a single prior art reference arranged as in the claim. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008). Petitioner provides detailed explanations and evidence showing how Monroe ’320 discloses each claim limitation as arranged in the claims. Pet. 30–38, 42–43, 45–51, 53–55. We have considered the parties’ arguments and supporting evidence, and we determine that Petitioner has shown by a preponderance of the evidence that claims 1–4, 9, 13–18, and 20–25 are unpatentable as anticipated by Monroe ’320. We address below Patent Owner’s arguments. 1. Monroe ’320 Monroe ’320 discloses a surveillance system for aircraft, ships, and land vehicles. Ex. 1004, col. 1, ll. 27–34, col. 1, ll. 60–65. The surveillance system in Monroe ’320 includes video cameras, microphones, and sensors for capturing video, audio, and data information, respectively. Id. at col. 22, ll. 4–10, col. 22, ll. 40–44, col. 22, ll. 48–51, Fig. 15. Monroe ’320 discloses a digital multiplexer network that combines the video, audio, and data into a combined, comprehensive output signal. Id. at col. 22, ll. 57–64, col. 23, ll. 15–17, Fig. 15. Monroe ’320 discloses storing the combined, comprehensive output signal on a recorder in the vehicle and transmitting the combined, comprehensive output signal to a ground station. Id. at col. 23, ll. 10–12, col. 23, ll. 17–22.” slip op. at 13
Patent outcomesUS 6,831,556 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,831,556 - Eizo Corporation v. Barco N.V.No claims unpatentablePTAB · Jul 14, 2015 · IPR2014-00358 · APJ Kalyan K Deshpande · IPR · Final written decision
Claims 101–104 were not shown unpatentable as obvious over Greene and Kamada because the combination did not teach a tolerance level that varies among display pixels.
RulingsFinal written decision- PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner
“[a]n inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party of interest, or privy of the petitioner is served with a complaint alleging infringement of the patent (emphasis added). Here, Patent Owner served upon Petitioner a complaint alleging infringement of the ʼ849 patent. See Ex. 2002. Patent Owner acknowledges that this original complaint does not allege infringement of the ʼ707 patent. Tr. 35:22–23. The reissuance of the ʼ849 patent as the ʼ707 patent did not continue the ʼ849 patent, but rather resulted in the surrender of the ʼ849 patent and the issuance of a new patent, the ʼ707 patent. Patent Owner served Petitioner with an amended complaint alleging infringement of the ʼ707 patent on January 17, 2013. See Ex. 2004. The Board accorded the instant Petition a filing date of January 17, 2014. See Paper 3. Patent Owner acknowledges that the claims challenged in the Petition were not in the original ʼ849 patent. Tr. 36:18–20. Accordingly, Section 315(b) is not applicable here because the Petition was not filed more than one year after Petitioner was served with the amended complaint first alleging infringement of the ʼ707 patent.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“to pixel non-uniformity. Ex. 2005, 2:55–3:2. Neither Petitioner nor Patent Owner sets forth a construction for “tolerance level.” See Tr. 7:22–8:2, 11:18–21, 24:10–12; Pet. 10. The ʼ707 patent does not provide a specific definition for “tolerance level,” but discloses that in measuring a color shift “small deviations in color go unnoticed. This means that there is a certain tolerance on differences in luminosity relationships of sub-pixel elements which still provide an apparently uniform display.” Ex. 1001, 12:65–13:1. The ordinary and customary definition for “tolerance” is “[l]eeway for variation from a standard” and “[t]he permissible deviation from a specified value of a structural dimension, often expressed as a percent,”4 and the ordinary and customary definition for “level” is “[r]elative position or rank on a scale.”5 Accordingly, we determine that the ordinary and customary meaning of “tolerance level” is a permissible deviation or variation from a position on a scale. This meaning of “tolerance level” is consistent with its usage in the ʼ707 patent specification. See Ex. 1001, 12:65–13:1. Accordingly, based on its ordinary and customary meaning and its usage in the ʼ707 patent specification and claims, we construe “tolerance level” to 4 See tolerance, THE AMERICAN HERITAGE DICTIONARY OF THE ENGLISH LANGUAGE (2011) (available at http://search.credoreference.com/content/entry/hmdictenglang/tolerance/0). 5 See level, THE AMERICAN HERITAGE DICTIONARY OF THE ENGLISH LANGUAGE (2011) (available at http://search.credoreference.com/content/entry/hmdictenglang/level/0). mean the permissible amount of deviation in luminosity that still provides an apparently uniform display. II.” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“independent claim 101, except for the limitation “wherein the tolerance level varies among pixels of the display.” Pet. 38–42. Petitioner argues that Kamada teaches that a constant correction value is applied to a rectangular region, and the correction value gradually decreases in the surrounding region until it becomes zero. Pet. 40 (citing Ex. 1004 ¶ 45). Petitioner further argues that both Greene and Kamada are directed to suppressing nonuniformity or unevenness of light-output in pixel displays and that a person with ordinary skill in the art would have had reason to combine the teachings of Greene and Kamada in order to reduce the size of correction data that needs to be stored, an advantage taught by Kamada. Pet. 40–41 (citing Ex. 1004 ¶ 47).” slip op. at 12
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“We are persuaded by Patent Owner that Kamada fails to teach that “the tolerance level varies among pixels of the display.” As discussed above, we construe the term “tolerance level” to mean the permissible amount of deviation in luminosity that still provides an apparently uniform display. See supra Section I.E.1. As argued by Petitioner, Kamada teaches the application of a constant correction value in a specified region and the decrease of the constant correction value in the region surrounding the specified region. See Pet. 40 (citing Ex. 1004 ¶ 45). The correction value corresponds to an amount of shift by which a gray level is changed. Ex. 1004 ¶ 45. That is, the correction value defines the amount of gray level shift applied to each pixel. See Tr. 12:17–24. Therefore, the correction value and “tolerance level” are independent values, and, accordingly, we are not persuaded that Kamada’s teaching of a correction value meets the limitation “the tolerance level varies among pixels of the display.” Petitioner acknowledges that the constant correction value and tolerance levels are not the same values. Tr. 12:10–16. Petitioner, however, contends that the correction value and tolerance level are related, such that, for example, the lower the tolerance, the more correction that will be applied. Id. Petitioner also argues that “reducing the correction for pixels located in the surrounding region at the edge of the display implicitly recognizes that the threshold or tolerance level for pixels depends on the position of the pixel in the display.” Pet. 40. We are not persuaded that this can be inferred from Kamada. As discussed above, Kamada teaches the application of a constant correction value to pixels, and Kamada is silent as to the application of the correction value based on a “tolerance level.” See Ex. 1004 ¶ 45. Although Kamada teaches the application of the constant correction value based on the location of the pixel, Kamada applies the same correction value regardless of the luminosity of the pixel. Ex. 1004 ¶ 45; see Tr. 12:17–24. As such, Kamada’s constant correction value is applied regardless of any “tolerance value,” and, therefore, we do not infer that an increase or decrease in the correction value would be based on a “tolerance value.”” slip op. at 13
Patent outcomesUS RE43,707 not shown unpatentableClaim construction§ 103 obviousnesscites Graham - LG Electronics, Inc. v. Advanced Micro Devices, Inc.Institution deniedPTAB · Jul 10, 2015 · IPR2015-00329 · APJ James B Arpin · IPR · Institution
The Board denied institution on all asserted grounds because LG did not show a reasonable likelihood of proving claims 1, 10, 13, 22, 24, or 25 unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“For the reasons set forth below, we determine that, on this record, Petitioner fails to demonstrate a reasonable likelihood of prevailing in showing the unpatentability of any of the challenged claims. Accordingly, we deny institution of inter partes review as to claims 1, 10, 13, 22, 24, and 25 of the ’715 patent.” slip op. at 4
- Skill levelSkill level petitioner adoptedDecided for petitioner
“35 U.S.C. § 103(a) if the differences between the claimed subject matter and the prior art are “such that the subject matter[,] as a whole[,] would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations, including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of skill in the art;2 and (4) objective evidence of nonobviousness, i.e., secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). On this record and for the reasons set forth below, we are persuaded that Petitioner fails to demonstrate a reasonable likelihood of prevailing in the challenges to claims 1, 10, 13, 22, 24, and 25 of the ’715 patent.” slip op. at 9
- Expert testimonyPetitioner expert discountedDecided for patent owner
“Nevertheless, Petitioner offers no evidence of the nature of this date. See id. The date itself only contains the notation “Revision: 2.0,” which may suggest that the document was “revised” on March 24, 1998, but is not evidence that it was published on that date. See Prelim. Resp. 15. The testimony of Dr. Bagherzadeh, Petitioner’s declarant, that EIFUFAL501 was available as of the filing date of the Petition (Ex. 1003 ¶ 49) and his unsupported opinion that EIFUFAL501 “was more than likely published on or about March 24, 1998” (id.) is insufficient to demonstrate a reasonable likelihood that EIFUFAL501 was published before June 1, 1998. See Prelim. Resp. 15–16. Consequently, on this record and for purposes of this decision, we are not persuaded that Petitioner has demonstrated a reasonable likelihood that EIFUFAL501 is a printed publication.” slip op. at 13
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedPrinted publication not establishedMixed
“When determining the threshold issue of whether a document is a printed publication for purposes of a decision on institution, a copyright notice has been accepted a prima facie evidence of publication.4 See Ford Motor Co. v. Cruise Control Techs. LLC, Case IPR2014-00291, slip op. at 7–8 (PTAB June 29, 2015) (Paper 44) (citing FLIR Sys., Inc. v. Leak Surveys, Inc., Case IPR2014-00411, slip op. at 18–19 (PTAB Sept. 5, 2014) (Paper 9)). Although citation in an IDS alone is insufficient to demonstrate that a document is a printed publication, Petitioner does not rely here on the IDS citation alone. See Microsoft Corp. v. Biscotti Inc., Case IPR2014- 01457, slip op. at 25–28 (PTAB Mar. 19, 2015) (Paper 9). Although we are not bound by the determinations noted above, at this stage of the proceeding, we are persuaded that the presence of a copyright notice, together with the listing of the reference in an IDS, may be taken as some evidence of public accessibility as of a particular date. Moreover, Patent Owner’s evidence of the corporations’ alliance does not show, beyond mere speculation, that 3Com Corporation obtained a copy of the USBN9602 from National Semiconductor Corporation prior to its publication. Here, we weigh the evidence presented by both parties to determine whether it is reasonably likely that USBN9602 is a printed publication. Consequently, on this record and for purposes of the decision, we are persuaded that Petitioner has 3 This patent application issued as Patent No. US 6,000,042 (Ex. 2002). 4 “[A] notice of copyright . . . may be placed on publicly distributed copies from which the work can be visually perceived . . . .” 17 U.S.C. § 401(a) (emphasis added). provided sufficient evidence to demonstrate a reasonable likelihood that USBN9602 is a printed publication.” slip op. at 12
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,266,715 - Johnson Controls, Inc. v. Wildcat Licensing Wi, LLCAll claims unpatentablePTAB · Jun 22, 2015 · IPR2014-00304 · APJ Susan L C Mitchell · IPR · Final written decision
Claims 24 and 25 are unpatentable under § 103(a): claim 24 over Gass and Sabatini; claim 25 over Gass, Admitted Prior Art, Sabatini, Shingo I, Shingo II, Majic, Peters, and Groendyke.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“We agree with Petitioner that the broadest reasonable interpretation of “fastening location” is not limited to a single opening, but may encompass a position or site where fastening occurs when assigned its ordinary meaning. See Ex. 1041, 3. Having to make such a distinction between a single opening or a fastening site with more than one opening is negated, however, by the open transitional phrase, “comprising,” in claim 24. Additional fastening operations between the first and second fastening operations are not excluded from the scope of claim 24, as long as the predetermined sequence between the first and second locations is maintained. See CIAS, Inc. v. Alliance Gaming Corp., 504 F.3d 1356, 1360 (Fed. Cir. 2007) (“In the patent claim context, the term ‘comprising’ is well understood to mean ‘including but not limited to.’”); Ex. 1001, 16:4–7 (contemplating a “plurality” of fastening locations, but “at least” first and second fastening locations).” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“Petitioner correctly argues that Patent Owner’s proposed construction incorporates constructions that we do not adopt, and asserts that we should give this limitation its broadest reasonable interpretation according to its plain and ordinary meaning. We agree, and do not construe expressly this limitation.” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“a vehicle seat, and states that “the fixtures are robust enough to prevent assembly errors from happening.” Ex. 1013, 55. Sabatini also teaches using such fixtures that are “ergonomically designed to help avoid carpal tunnel syndrome and back problems that traditionally plague assembly operators.” Id. Based on these teachings, Petitioner argues that it would have been obvious to combine the fixture of Sabatini with the system of Gass. Pet. 32. Petitioner supports this conclusion with testimony of Mr. Osentoski, who states that using the fixture of Sabatini “would have provided a desired result commonly used in the assembly field by 2000–2001, that is properly holding an article so that assembly operations can be performed. As Sabatini indicates, using such fixtures ensured proper alignment of parts during assembly, and thereby prevented assembly errors.” Ex. 1002 ¶ 48. Thus, we are persuaded that Petitioner provides articulated reasoning, which is supported by rational underpinnings, for combining the teachings of Gass and Sabatini to achieve the claimed invention. See KSR, 550 U.S. at 416 (“[W]hen a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result” to render the claim nonobvious.).” slip op. at 27
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for patent owner
“9 Patent Owner asserts Petitioner’s commercial success from allegedly using the methods recited in claims 24–25 of the ’573 patent establishes secondary considerations against a determination of obviousness. PO Resp. 59–60. Patent Owner, however, cites to no evidence (or admission by Petitioner) that Petitioner uses (e.g., infringes) the recited methods in the challenged claims and offers mere attorney argument concerning secondary considerations, including the existence of any “nexus” between Petitioner’s activities and the recited methods. Id. at 60. Such argument, unsupported by sufficient evidence, is unpersuasive. In re Schulze, 346 F.2d 600, 602 (CCPA 1965).” slip op. at 19
Patent outcomesUS 6,763,573 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,763,573 - Johnson Controls, Inc. v. Wildcat Licensing Wi, LLCAll claims unpatentablePTAB · Jun 22, 2015 · IPR2014-00305 · APJ Susan L C Mitchell · IPR · Final written decision
Claims 22 and 24–28 are unpatentable as anticipated by Gass; claim 23 is unpatentable as obvious over Gass and Sabatini.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“Patent Owner asserts that Petitioner fundamentally misunderstands the invention of claims 22–28 of the ’831 patent in three respects regarding the interpretation of the claims. First, the “fastening locations,” to which the claims refer, are single openings into which a single fastener is inserted by an operator; second, the recited “predetermined” sequence requires the sequence to be set prior to the operator beginning work on the workpiece; and, third, the claims require an operator to be alerted to whether a predetermined sequence has been followed or whether a parameter has been applied correctly. PO Resp. 1. We disagree with Patent Owner’s interpretation of the claim terms at issue. 1. “fastening location” – (Claim 22) Patent Owner asserts in the Patent Owner Response that “[a]t the heart of the parties’ dispute is the question of whether a ‘fastening location’ is a single opening or a group of openings.” PO Resp. 14. Patent Owner construes “fastening location” as “a single opening into which a single fastener is inserted by an operator.” Id. (quoting Ex. 2009 ¶¶ 39, 59–60)). Patent Owner asserts that the claim language of claim 22 mandates this conclusion when reciting “manually fastening fasteners into the article of assembly using a fastening tool at the first and second fastening locations according to a predetermined fastening sequence.” Id. (quoting Ex. 1001, 12:19–22). Patent Owner also points to the Specification and drawings of the ’831 patent that it asserts shows only single fasteners inserted into single openings. PO Resp. 15 (defining fastening locations as 52a–c). Petitioner asserts that such a definition improperly imports an example from the Specification into the claims. Petitioner states that “Fig. 1’s embodiment may have ‘openings,’ but nothing in the Specification or claims confines fastening locations to ‘single openings’ or even to ‘openings’ (e.g., a fastening location could be a bolt, with no opening, projecting from the article).” Reply 4. We agree with Petitioner that the broadest reasonable interpretation of” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Petitioner proposes a claim construction for “disabling the fastening tool when not at a fastening location,” as recited in claim 25. Pet. 19. We do not need to construe this claim limitation to determine whether Petitioner has shown by a preponderance of the evidence that claim 25 is unpatentable. Therefore, we do not construe expressly this limitation here, but give this limitation its broadest reasonable interpretation according to its plain and ordinary meaning.” slip op. at 19
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“For instance, Gass teaches that its system is always able to keep track of whether the process tool has been guided to the correct process site and in the correct sequence and can determine the absolute location of the bolting sites in X, Y, Z coordinates. See Ex. 1012 ¶¶ 15, 73–76, 79; Ex. 1042 ¶ 5. Gass also teaches that an enabling means can enable process tool 7 at programmed process site 4”, only when the recognizing means, i.e., the image processing means, has implemented a predefined number of process operations in the region of previous process sites 4, 4’ to ensure that no process site is missed. Ex. 1012 ¶ 87. We agree with Petitioner that any “bolting site” in process site 4 has a different, distinct location as compared to any bolting site in another process site 4’, which bolting sites would meet the first and second fastening locations limitation, even under Patent Owner’s construction. See Reply 7– 8. We also are persuaded that the figures in Gass show single openings in process sites 4, 4’, and 4”, as in the ’831 patent, and would meet Patent Owner’s interpretation of fastening locations. See Ex. 1012, Figs. 6, 8a, 8b, and 10. Petitioner asserts that Gass also teaches “electronically comparing the sensed position of the fastening tool with a predetermined sequence of fastening among the first and second fastening locations.” Reply 10–14. Petitioner relies on the express teaching of Gass requiring a correct sequence among process sites, and the statement that the tool is only enabled at 4” after the tool has already implemented a predefined number of process operations in process sites 4, and 4’. Id. at 12 (citing Ex. 1012 ¶¶ 15, 87; Ex. 1042 ¶¶ 10–18). We agree with Petitioner that “it is evident that Gass’ ‘counter’ simply serves as a memory indicating that a previous site 4,4’ has been completed properly, from which the controller can ensure that a predetermined sequence (i.e. site 4” only after completion of 4, 4’) is being followed.” Id. Patent Owner’s assertion that Gass teaches a user selected initiation” slip op. at 24
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“Sabatini teaches assembling automobile seats on an assembly line. Ex. 1013, 54–55. Sabatini also teaches an output indicating to an operator whether operations have been performed correctly. See id. at 55 (“Operators use torque-sensing guns with visual indicators. If fasteners are not run to the correct torque setting, a light above the line comes on and the line shuts down until an operator corrects the problem.”). Relying on testimony from its declarant, Petitioner concludes that “[o]ne of ordinary skill in the art would have recognized that applying the method of Gass to vehicle seats would have yielded the predictable and improved result of facilitating the assembly of a vehicle seat and lowering defects by allowing the sequence of fasteners to be controlled when assembling the vehicle seat.” Pet. 37 (citing Ex. 1002 ¶ 49).” slip op. at 30
Patent outcomesUS 7,062,831 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,062,831 - LG Electronics, Inc. v. Advanced Micro Devices, Inc.Institution deniedPTAB · Jun 17, 2015 · IPR2015-00323 · APJ Rama G Elluru · IPR · Institution
The Board denied institution because LG did not show a reasonable likelihood of proving claims 9, 10, and 13–17 unpatentable over the asserted references.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Under 35 U.S.C. § 314(a), an inter partes review may be instituted only if “the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” See 37 C.F.R. § 42.108(c). For the reasons given below, on this record we find that LG has not established a reasonable likelihood of prevailing with respect to at least one challenged claim of the ’332 patent. Accordingly, we deny the Petition and decline to institute an inter partes review of the ’332 patent.” slip op. at 2
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“Dischler. “A reference anticipates a claim if it discloses the claimed invention ‘such that a skilled artisan could take its teachings in combination with his own knowledge of the particular art and be in possession of the invention.’” In re Graves, 69 F.3d 1147, 1152 (Fed. Cir. 1995) (citation omitted). To establish anticipation, each and every element in a claim, arranged as recited in the claim, must be found in a single prior art reference. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008). A prior art reference “include[ing] multiple, distinct teachings that the artisan might somehow combine to achieve the claimed invention,” is insufficient to show prior invention. Id. at 1371(citation omitted). In Net MoneyIN, although a prior art reference described two protocols, which when taken together, disclose “all five links arranged or combined in the same way as claimed,” the Federal Circuit determined that the reference did not anticipate the claim. Net MoneyIN, 545 F.3d at 1371 (“The district court was also wrong to combine parts of the separate protocols shown in the iKP reference in concluding that claim 23 was anticipated.”). Rather, the Federal Circuit stated that, in order to find anticipation, all five links would have to be described in one single example/protocol. See Id.” slip op. at 9
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Lee. Pet. 38–43. Claim 13 depends from claim 10, which depends from claim 9. Except for the additional limitation of claim 13, LG’s analysis of claim 13 as having been obvious over Lee relies on its anticipation claim chart for claim 10 (Pet. 41), and LG’s anticipation analysis of claim 10 refers to its anticipation claim chart for claim 9 (id. 34). For the same reasons discussed above as to why LG has not persuaded us sufficiently that Lee anticipates claim 9, LG has not persuaded us that claim 13 is obvious over Lee. LG’s analysis of claim 17 as having been obvious over Lee, and specifically the limitation reciting “the processor having a plurality of groups of performance states associated with each of a plurality of temperature ranges,” refers to its anticipation of claim 9. Pet. 42. For the same reasons discussed above as to why LG has not persuaded us sufficiently that Lee anticipates claim 9, LG has not persuaded us that claim 17 is obvious over Lee. Accordingly, we determine that LG has not established a reasonable likelihood of prevailing in showing that claims 13 and 17 are obvious over Lee. D.” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“inter partes review, a claim in an unexpired patent is given its broadest reasonable construction in light of the specification of the patent in which it appears. 37 C.F.R. § 42.100(b); see also In re Cuozzo Speed Techs., LLC, 778 F.3d 1271, 1278–82 (Fed. Cir. 2015) (“Congress implicitly adopted the broadest reasonable interpretation standard in enacting the AIA,” and “the standard was properly” slip op. at 5
Claim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 6,889,332 - PTAB · Jun 15, 2015 · CBM2015-00047 · APJ James B Arpin · CBM · Institution
The Board denied institution on all challenged claims under § 325(d), finding the petition relied on the same references and substantially the same arguments presented in an earlier petition.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“As noted above, according to 35 U.S.C. § 325(d), we may reject the present Petition because “the same or substantially the same prior art or arguments previously were presented to the Office” in the earlier Petition. (Emphasis added.) Here, Petitioner acknowledges that the same references are applied in the earlier and the present Petitions. Pet. 2 n.1; see Prelim. Resp. 3. On that basis alone, we may exercise our discretion and decline to institute covered business method patent review. Nevertheless, we also are persuaded that Petitioner asserts the same or substantially the same arguments in the present Petition that were asserted in the earlier Petition. First, although the Petitioner asserts that Peapod anticipates the challenged claims in the present Petition (Pet. 7), Petitioner asserted that each of Viescas, Filepp, and Peapod “individually may render the claims unpatentable” in the earlier Petition. CBM2014-00082, Paper 5, 18. Moreover, as we noted in the Decision on Institution in CBM2014- 00082, Petitioner argued in the earlier Petition that “each of the references— Viescas, Filepp, and Peapod—teaches or suggests all of the limitations of each of independent claims 1 ([CBM2014-00082, Paper 5,] 25–30) and 22 (id. at 42–51).” CBM2014-00082, Paper 10, 17–18. Second, with the exception of claims 16 and 42, Petitioner’s ground for challenging 1–3, 8– 12, 14, 15, 17, 18, 22, 24, 26–28, 30–32, 34, 41, and 44 in the present Petition is based on the same combination of references used to challenge those claims in the earlier Petition. Compare Pet. 42–78 with CBM2014- 00082, Paper 5, 20–75. In the present Petition, however, Petitioner allegedly “presents different legal arguments than those that were previously submitted and addresses the reasons relied on by the Board for not instituting CBM review [in CBM2014-00082].” Pet. 2 n.1. We are not persuaded by Petitioner’s unsupported contention, however, that the present Petition presents “different legal arguments.” Instead, for the reasons set forth above, in the present Petition, Petitioner simply recasts the facts in the context of the same legal arguments. See Prelim. Resp. 6–8.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Not reached
“we interpret any claim terms of the challenged claims according to the Phillips standard. Nevertheless, only terms that are in controversy need to be construed, and then only to the extent necessary to resolve the 3 We also note that Patent Owner has charged Petitioner with infringing one or more claims of the ’110 patent. Pet. 79. Petitioner certifies that it is not barred or estopped from challenging the claims on the grounds identified in its Petition. Id. at 2 (citing 37 C.F.R. § 42.302(b)). Patent Owner does not contest Petitioner’s certification. controversy. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). Here, because we reject the Petition without reaching the merits of Petitioner’s grounds for unpatentability regarding the challenged claims, it is not necessary for us to construe any term of the challenged claims.4” slip op. at 5
Claim constructionDiscretionary denialcites PhillipsPatents in suitUS 5,664,110 - Olympus America Inc. / Olympus Medical Systems Corporation v. Perfect Surgical Techniques, Inc.All claims unpatentablePTAB · Jun 8, 2015 · IPR2014-00241 · APJ James B Arpin · IPR · Final written decision
Claims 17–23, 26, 29, and 30 are unpatentable as obvious over US’717 and US’546, alone or with US’779, US’047, or WO’882.
RulingsFinal written decision- Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Decided for petitioner
“col. 7, ll. 1–20), we determined that the algorithm is depicted in Figure 3 (see Pet. 23). Dec. on Inst. 12. In particular, we determined that the algorithm carries out four functions: (1) it determines (by measuring or calculating) the voltage, current, power and impedance levels (Ex. 1101 at Col. 7:1–3; Col. 7:6–7), (2) it shuts off power when the determined power level exceeds a predetermined level (Ex. 1101 at Col. 7:3–5), (3) it shuts off power when the calculated impedance level exceeds a predetermined impedance level (Ex. 1101 at Col. 7:9– 12) and (4) it increases power from an initial level at a predetermined rate with the predetermined rate and initial level being selected to avoid the formation of a vapor layer (Ex. 1101 at Col. 7:13–17).” slip op. at 9
- Skill levelSkill level patent owner adoptedOther
“Patent Owner contends that a person of ordinary skill in the art possesses a Bachelor’s Degree in either Physics, Electrical Engineering, or Mechanical Engineering and two to three years’ experience working in the field of electrosurgery. A person of ordinary skill in the art would be familiar with electrode designs and heating biological tissue through the application of various forms of electromagnetic energy, including RF energy. PO Resp. 12–13 (citing Ex. 2002 ¶¶ 13–17). For purposes of the Decision on Institution, we determined that the prior art adequately reflects a level of ordinary” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“A reference may teach away from its modification (1) when a person of ordinary skill would be discouraged from deviating from the path set out in the reference; (2) when a person of ordinary skill would be led in a direction divergent from the path that was taken by the patentee; or (3) when the modification would render the resulting apparatus or method inoperable or unsuitable for the intended purpose of the modified reference. See In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). Here, Patent Owner contends that Petitioner’s proposed modification of US’717 would render its apparatus inoperable or unsuitable for its intended purpose. PO Resp. 18–19; see Plas-Pak Indus., Inc. v. Sulzer Mixpac AG, 600 Fed. Appx. 755, 758 (Fed. Cir. 2015) (“[C]ombinations that change the ‘basic principles under which the [prior art] was designed to operate,’ In re Ratti, . . . 270 F.2d 810, 813 ([CCPA] 1959), or that render the prior art ‘inoperable for its intended purpose,’ In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984), may fail to support a conclusion of obviousness.”).” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“Petitioner argues that US’717 provides a sufficient reason to combine its teachings with those of US’546. Pet. Reply 10–11. In particular, Petitioner argues that US’717 teaches increasing power from an initial power level to a power level that is a fraction of a previously determined, maximum power level. Pet. 39 (citing Ex. 1105, col. 3, ll. 39–44); Pet. Reply 12; see Ex. 1105, col. 3, ll. 44–51; Ex. 2005, 162:23–164:17, 44:11–46:6, 59:2–13, 96:13–98:3. Petitioner argues that US’717 also teaches that the power delivery can be under the control of a controller to increase power delivered to bipolar forceps automatically from an initial level at a predetermined rate. Pet. 39–40; Pet. Reply 12–14; see Pet. Reply 5 n.4 (citing Ex. 1105, col. 5, ll. 5–31; col. 10, ll. 45–59). Petitioner acknowledges that US’717 does not teach a specific program for increasing power (Pet. 40–41; Pet. Reply 11–12), but asserts that US’546 teaches such a program for increasing power at a predetermined rate from an initial level (see Pet. 34–37, 41 n.12; Ex. 1104, col. 14, l. 43–col. 15, l. 64; col. 18, ll. 3–8, 18–38; Figs. 12 and 15A). “[I]f a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.” KSR, 550 U.S. at 417 (citation omitted); see Pet. 38, 41 n.12. In view of the foregoing analysis, a preponderance of the evidence supports Petitioner’s arguments. See also Ex. 1113, 41–43 (discussing the teachings of US’717 and US’546); Ex. 2005, 103:1–106:21 (discussing the teachings of US’546). Thus, we are persuaded that the teachings of US’717 and US’546 provide sufficient reason for their combination, as argued by Petitioner.” slip op. at 18
Patent outcomesUS 6,682,527 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,682,527 - Olympus America Inc. / Olympus Medical Systems Corporation v. Perfect Surgical Techniques, Inc.All claims unpatentablePTAB · Jun 8, 2015 · IPR2014-00233 · APJ James B Arpin · IPR · Final written decision
Claims 1, 4–6, 8, 9, 11, 12, 38, 41–44, 46, 47, and 49 are unpatentable over JP’551; claims 1, 4–6, 8, 9, 11, 12, 43, 44, 46, and 47 also over JP’551 and FR’149.
RulingsFinal written decision- BurdenDecided for petitioner
“2. Translation of JP’551 Pursuant to 37 C.F.R. § 42.63(b), “[w]hen a party relies on a document or is required to produce a document in a language other than English, a translation of the document into English and an affidavit attesting to the accuracy of the translation must be filed with the document.” In support of its challenges to the claims of the ’384 patent, Petitioner filed a Japanese language copy of JP’551; an English language translation of JP’551, and a certification, signed by the translator, attesting to the accuracy of the English language translation of JP’551 and stating that JP’551 was “published on February 10, 1998.”5 Ex. 1013.” slip op. at 12
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportDecided for petitioner
“unpatentable, which includes the burden of establishing that any reference upon which it relies constitutes prior art under 35 U.S.C. § 102. 35 U.S.C. § 316(e); see Mahurkar v. C.R. Bard, Inc., 79 F.3d 1572, 1576 (Fed. Cir. 1996) (holding that the challenger “bore the burden of persuasion . . . on all issues relating to the status of [the asserted reference] as prior art”). However, because Petitioner offered into evidence JP’551, which was published before the ’384 patent’s filing date, Patent Owner bears a burden of producing evidence supporting a date of invention before JP’551’s publication date. Mahurkar, 79 F.3d at 1576–77. An inventor may antedate a reference if the inventor was the first to conceive of a patentable invention, and then connects the conception of the invention with its constructive reduction to practice by reasonable diligence on the inventor’s part, such that conception and diligence are substantially one continuous act. Id. at 1577. 7 In view of Petitioner’s erroneous reference to February 2, 1998, as JP’551’s publication date (see supra 12 n.5), Patent Owner proposes to show conception prior to February 2, 1998, and reasonable diligence from February 1, 1998, until May 1, 1998. PO Resp. 12. We do not analyze Patent Owner’s arguments based on Petitioner’s admitted typographical error. However, an inventor’s testimony, standing alone, is insufficient to carry the inventor’s burden of production with respect to conception and diligence, as some form of corroboration is required. Id.; Price v. Symsek, 988 F.2d 1187, 1194 (Fed. Cir. 1993). A rule of reason applies to determine whether the inventor’s testimony has been corroborated. Price, 988 F.2d at 1194. During the period in which reasonable diligence must be shown, there must be continuous exercise of reasonable diligence. In re McIntosh, 230 F.2d 615, 619 (CCPA 1956); see also Burns v. Curtis, 172 F.2d 588, 591 (CCPA 1949) (referring to “reasonably continuous activity”). The party alleging diligence must account for the entire critical period. Griffith v. Kanamaru, 816 F.2d 624, 626 (Fed. Cir. 1987); Gould v. Schawlow, 363 F.2d 908, 919 (CCPA 1966). Even a short period of unexplained inactivity may be sufficient to defeat a claim of diligence. Morway v. Bondi, 203 F.2d 742, 749 (CCPA 1953); Ireland v. Smith, 97 F.2d 95, 99–100 (CCPA 1938). In In re Mulder, 716 F.2d 1542, 1542–46 (Fed. Cir. 1983), for example, the Federal Circuit affirmed a determination of lack of reasonable diligence, where evidence of record demonstrating any diligence was absent for a two-day critical period. A party alleging diligence also must provide corroboration with evidence that is specific both as to facts and dates. Gould, 363 F.2d at 920; Kendall v. Searles, 173 F.2d 986, 993 (CCPA 1949). The rule of reason does not dispense with the need for corroboration of diligence that is specific as to dates and facts. Gould, 363 F.2d at 920; Kendall, 173 F.2d at 993; see also Coleman v. Dines, 754 F.2d 353, 360 (Fed. Cir. 1985) (“The rule of reason . . . does not dispense with the requirement for some evidence of independent corroboration.”). Consequently, in order to antedate JP’551, Patent Owner must show conception prior to the publication date of JP’551 and continuous and corroborated diligence from prior to JP’551’s publication date, i.e., February 10, 1998, until the date of constructive reduction to practice of the ’384 patent, i.e., May 1, 1998.” slip op. at 15
- Skill levelSkill level patent owner adoptedDecided for patent owner
“Patent Owner contends that a person of ordinary skill in the art possesses: a Bachelor’s Degree in either Physics, Electrical Engineering, or Mechanical Engineering and two to three years’ experience working in the field of electrosurgery. A person of ordinary skill in the art would be familiar with electrode designs and heating biological tissue through the application of various forms of electromagnetic energy, including RF energy. PO Resp. 33 (citing Ex. 2014 ¶¶ 14–17). For purposes of the Decision on Institution, we determined that the prior art adequately reflects a level of ordinary skill in the art. Dec. on Inst. 20 (citing Litton Indust. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163–64 (Fed. Cir. 1985)). Petitioner’s declarant meets or exceeds the qualifications set forth in Patent Owner’s definition of a person of ordinary skill in the art. See Ex. 1018 ¶ 7; Ex. 2022, 42:18–24. Further, Mr. Odell, as a person of equal or greater skill in the art, may testify as to what a person of 9 Patent Owner does not contend in the Patent Owner Response that secondary considerations are present, which would render the challenged claims patentable over JP’551, alone or in combination with FR’149. ordinary skill in the art would know or understand. See Ex. 2022, 41:12–42:11. Therefore, to the extent that it is necessary, for purposes of this Decision, we adopt Patent Owner’s definition of a person of ordinary skill in the art.” slip op. at 23
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“Contrary to Petitioner’s suggestion, we remain unpersuaded that the phrase “to permit the release of steam during use” may be ignored in construing this limitation. Pet. 18. Even if the phrase “to permit the release of steam during use” describes a function of the perforations, functional language may not be ignored in construing the claims. Id. A patent applicant is free to recite features of an apparatus either structurally or functionally. See In re Swinehart, 439 F.2d 210, 212 (CCPA 1971). A relevant definition of “steam” is “[w]ater vapor or water in its gaseous state.” MCGRAW-HILL DICTIONARY OF SCIENTIFIC AND TECHNICAL TERMS, 1817. Because claim 38 recites that “at least one of the jaws is perforated to permit the release of steam during use,” we understand that claim 38 requires only a single perforation or passage formed through either jaw. Thus, the at least one perforation or passage must pass through the jaw, such that the steam may be released from the tissue between the jaws. Patent Owner contends that the term “perforations” does not include “passages,” and that we erred in construing a “perforated” jaw to include at least one jaw having “one or more perforations or passages formed therethrough.” PO Resp. 19–20. Although Patent Owner contends that the Specification distinguishes perforations from passages, Patent Owner does not suggest how each term is to be understood, such that a person of ordinary skill in the art would distinguish between them. Id.; see Tr. 45:14–16 (perforations as “small holes”). A “passage” is “an opening or entrance into, through, or out of something.” RANDOM HOUSE WEBSTER’S COLLEGE DICTIONARY, 964 (Random House ed. 1999) (Ex. 3003). Consequently, we conclude that Patent Owner does not explain adequately why a perforation excludes a passage. Within the context of the Specification of the ’384 patent and in view of ordinary and customary meanings of the relevant words, as evidenced by the cited definitions, we interpret a perforation formed through a jaw and a passage formed through a jaw as alternative expressions of the same concept. Therefore, we maintain that this limitation is construed properly to mean “at least one jaw has one or more perforations or passages formed therethrough, so that steam generated between that jaw and tissue is released through the one or more perforations or passages.” Because the parties agree with our constructions for the remaining claim terms construed in the Decision on Institution, to the extent necessary, we adopt these constructions for the Final Written Decision. Tr. 12:19–13:8; 45:24–46:8. Because no other claim terms are in controversy, no other claim terms need to be construed.” slip op. at 10
Patent outcomesUS 6,030,384 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,030,384 - LG Electronics, Inc. v. Ati Technologies UlcInstitution deniedPTAB · May 27, 2015 · IPR2015-00322 · APJ Rama G Elluru · IPR · Institution
The Board denied institution because LG did not show a reasonable likelihood that claims 17, 20, 21, or 24 were anticipated or obvious over Chor, Cherrick, or Ohyama.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Under 35 U.S.C. § 314(a), an inter partes review may be instituted only if “the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” See 37 C.F.R. § 42.108(c). For the reasons given below, on this record we find that LG has not established a reasonable likelihood of prevailing with respect to at least one challenged claim of the ’879 patent. Accordingly, we deny the Petition and decline to institute an inter partes review of the ’879 patent.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed patent owner constructionDecided for patent owner
“arguing that the prior art reads upon the challenged claims, however, LG applies a construction of “in focus” as overlaying the background video. See e.g., Pet. 9. 29, 41; Ex. 1004 ¶ 107. ATI contends that the patentee acted as its own lexicographer in defining “in focus” to mean “actively being displayed and/or being worked upon.” Prelim. Resp. 25–26. We agree with ATI. The ’879 patent Specification supports ATI’s proposed construction. The Specification expressly defines “in focus.” Specifically, in describing the prior art, the Specification states that “[w]hen an attribute of the live video is to be changed, other applications that were in focus (i.e., actively being displayed and/or being worked upon) must go into a background mode (i.e., taken out of focus).” Ex. 1001, 1:41–44 (emphasis added). The Specification further explains that the “background video must be brought forward, or brought into focus.” Id. at 1:35– 36 (emphasis added). The Specification also explains that the video control icon and other icons are “in focus, i.e., overlaying the live background video [].” Id. at 2:24–25 (emphasis added). As ATI acknowledges, however, “[b]eing overlaid may be one aspect of being in focus, but it’s not the only aspect.” Prelim. Resp. 27. Accordingly, in light of the ’879 patent Specification, we construe “in focus” to mean “overlaying the live video and actively being displayed and/or being worked upon.”” slip op. at 5
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“Each of independent claims 17 and 21 requires that the processing unit provides a control panel while the live video remains in the background and an application, which was “in focus,” remains “in focus” when the video control icon has been selected. Referring to Figures 5 and 6 of Chor, LG argues that Chor discloses a control panel that appears while the current program remains in the background and the banner applications and recent channels applications remain “overlaid” on the background display. Pet. 9 (citing Ex. 1004, ¶¶ 80, 110–11). Figure 6 of Chor, as annotated by LG, from LG’s petition (Pet. 10), is reproduced below: Figure 6 discloses banner application 68 and recent channels application 72, which LG contends remain overlaying the background video, when “Tools” bar 74, which LG contends discloses the claimed “video control icon,” is selected. Pet. 9–10, 15; Ex. 1008 ¶¶ 108–109. LG argues that Chor’s expanded Tools bar 74 is the claimed “control panel.” Pet. 9; Ex. 1008, ¶ 109. As ATI argues (Prelim. Resp. 31–34), however, LG does not satisfactorily explain how the banner application 68 and recent channels application 72 remain “in focus,” specifically how they are “actively being displayed and/or being worked upon” when Tool bar 74 is selected. Indeed, as argued by ATI, Chor indicates that banner application 68 and recent channels application 72 are not activated when Tools bar 74 is selected. Chor discloses “[a] viewer-controllable focus [that] is movable along the channel bar to permit the viewer to select and actuate any of the icons . . . .” Ex. 1005, 2:4– 8. Chor’s focus 130 is illustrated in Figure 5 as a “frame that borders the selected icon.” Id. at 8:41–42. Chor explains that the viewer moves focus 130 along channel bar 64 using an input device and that once the focus is positioned on a selected icon, the icon is “activated” by, for example, clicking a mouse key. Id. at 8:57–67. In order to expand Tools bar 74, “the viewer activates [the] small region” occupied by the collapsed Tools bar 74. Id. at 9:41–46. Thus, as ATI argues, when Chor selects Tools bar 74 (i.e., the claimed “video control icon”), Chor’s focus 130 must navigate away from another icon to activate Tool bar 74. Prelim. Resp. 31; Ex. 1005, Figs. 5 & 6 (Tools bar 74 is in a collapsed state in Figure 5 and focus 130 is on an “E” “Recent Channels” icon, and, in Figure 6, focus 130 moves to an icon in the expanded Tools bar 74). In addition, independent claims 17 and 21 recite “provid[ing] control of background video” using a “video control icon [that] relates to live video that is being presented as a background.” LG argues that expanded Tools bar 74 (i.e., the claimed “control panel”) allows a viewer to “change attributes such as signing on to the entertainment system or turning the TV off.” Pet. 9–10; Ex. 1005, 9:46–64. This assertion does not explain satisfactorily how Tools bar 74 “relates to the live video that is being presented as a background.” See Prelim. Resp. 35–36. Rather, the changeable attributes referred to by LG relate to the entire entertainment system, not specifically to the live video. See Ex. 1005, 9:46–64. Indeed, the ’879 patent Specification provides the following as examples of the attributes of the live video that may be changed by the video control icon/control panel: The attributes may be volume adjust, mute, channel up, channel down, numerical channel display, and/or alpha-numeric channel display when the live video is being sourced by live television broadcast, satellite television, or cable television. If the live video is being sourced by a DVD player, or VCR, the attributes may be volume adjust, mute, pause, rewind, and/or fast forward. Ex. 1001, 3:34–42. Accordingly, we determine that LG has not established a reasonable likelihood of prevailing in showing that independent claims 17 and 21, and, for the same reasons, dependent claims 20 and 24, are anticipated by or rendered obvious over Chor.” slip op. at 6
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Each of independent claims 17 and 21 requires that the processing unit provides a control panel while the live video remains in the background and an application, which was “in focus,” remains “in focus” when the video control icon has been selected. Referring to Figures 5 and 6 of Chor, LG argues that Chor discloses a control panel that appears while the current program remains in the background and the banner applications and recent channels applications remain “overlaid” on the background display. Pet. 9 (citing Ex. 1004, ¶¶ 80, 110–11). Figure 6 of Chor, as annotated by LG, from LG’s petition (Pet. 10), is reproduced below: Figure 6 discloses banner application 68 and recent channels application 72, which LG contends remain overlaying the background video, when “Tools” bar 74, which LG contends discloses the claimed “video control icon,” is selected. Pet. 9–10, 15; Ex. 1008 ¶¶ 108–109. LG argues that Chor’s expanded Tools bar 74 is the claimed “control panel.” Pet. 9; Ex. 1008, ¶ 109. As ATI argues (Prelim. Resp. 31–34), however, LG does not satisfactorily explain how the banner application 68 and recent channels application 72 remain “in focus,” specifically how they are “actively being displayed and/or being worked upon” when Tool bar 74 is selected.” slip op. at 6
Claim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 6,784,879
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.