• Apple, Inc. / LG Electronics, Inc. et al. v. Gesture Technology Partners, LLCSome claims unpatentable
  PTAB · Nov 30, 2022 · IPR2022-00359 · APJ Brent M Dougal · IPR · Final written decision

  Claims 1–10, 12, and 14–31 are unpatentable as obvious; claims 11 and 13 were not shown unpatentable because Numazaki does not teach or suggest their transmission and cellular-phone limitations.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We apply these principles to the Petition’s challenges. 2. Level of Ordinary Skill in the Art Petitioner asserts that “[a] person having ordinary skill in the art (‘PHOSITA’) at the time of the ’431 Patent would have had at least a bachelor’s degree in electrical engineering or equivalent with at least one year of experience in the field of human computer interaction” and that “[a]dditional education or experience might substitute for the above requirements.” Pet. 3 (citing Ex. 1008 ¶¶ 30–32). Patent Owner does not dispute Petitioner’s level of ordinary skill in the art. PO Resp. 6. We are persuaded, on the present record, that Petitioner’s declarant’s statement is consistent with the problems and solutions in the ’431 patent and prior art of record. We adopt this definition for the purposes of this Decision.” slip op. at 7

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

    “Patent Owner argues that the preambles should be limiting because they recite essential structure or steps and are “necessary to give life, meaning, and vitality” to the claims. PO Resp. 6 (quoting Acceleration Bay, LLC v. Activision Blizzard, Inc., 908 F.3d 765, 770 (Fed. Cir. 2018)). Specifically, Patent Owner asserts that each claim includes one or more limitations that refer back to the preamble’s “handheld computing device” or “handheld computer apparatus” for antecedent basis. Id. at 6–7. Patent Owner further argues that the ’431 patent discloses different embodiments, with some embodiments being in the form of a computer and some embodiments being in the form of a handheld device. Id. at 7 (citing Ex. 1001, 12:59–13:7, Fig. 10A). Patent Owner contends that the claims are directed to the latter embodiments related to a handheld device and, therefore, “the preamble is necessary to give life, meaning, and vitality to claims 1, 7, and 14, consistent with the embodiments that the inventor chose to claim.” Id. We agree that the preambles of claims 1, 7, and 14 are limiting. This is primarily because the body of each claim includes “said device” or “said apparatus” which refers back to the preamble and is understood with reference thereto. For example, the last clause of claim 7 states: “means for controlling a function of said apparatus using said information.” Ex. 1001, 26:4–5 (emphasis added). “Said apparatus” derives antecedent basis from the “[h]andheld computer apparatus” recited in the preamble. Moreover, the “means for controlling a function of said apparatus” is understood because of this reference to the handheld computer apparatus. The limitations of claims 1 and 14 are similar and so this logic applies equally to these claims as well. Thus, we agree that the preamble recites essential structure and is “necessary to give life, meaning, and vitality” to claims 1, 7, and 14.” slip op. at 8

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyDecided for petitioner

    “b) Camera Means Petitioner asserts that, though claim 7 recites “camera means,” it is not a means-plus-function limitation under §112 ¶ 6. Pet. 6. Petitioner argues that “a PHOSITA would have considered ‘camera means associated with said housing’ to have a sufficiently definite meaning as the name for structure.” Id. (citing Ex. 1008 ¶ 36). Petitioner further argues that “all optical sensors obtain images by capturing light, so the claimed function is simply describing the general process that all optical sensors employ to obtain images of objects.” Id. (citing Ex. 1008 ¶ 36). “Patent Owner agrees” with Petitioner’s construction PO. Resp. 7. We accept Petitioner’s construction as consistent with the current record.” slip op. at 9

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Decided for petitioner

    “c) Computer Means Petitioner contends that claim 7’s limitation of “computer means within said housing for analyzing said image to determine information concerning a position or movement of said object” is a means-plus-function limitation under §112 ¶ 6. Pet. 7. Petitioner argues that the limitation’s function is analyzing an image “to determine positioning or movement of an object.” Id. Petitioner argues that the corresponding structure “includes a computer/processor programmed (1) to identify either natural or artificial features on an object as described . . . or (2) to track the movement using one of the disclosed methods.” Id. at 9; see id. at 8–9 (discussing the disclosure of the ’431 patent) (citing Ex. 1001, 3:38–47, 3:57–62, 4:9–14, 5:2–23, 6:64–7:13, 8:40–59, 11:16–35). Petitioner also argues that “objects” should be construed to mean “both separate objects held/controlled by the user and also part of the user’s body, such as a user’s finger or hand.” Id. at 8; see id. at 7–8 (citing Ex. 1001, 3:39–41, 3:48–50, claims 7–8). “Patent Owner does not contest” Petitioner’s construction. PO Resp. 6. We accept Petitioner’s construction as consistent with the current record.10 d) Means for Controlling a Function Petitioner argues that claim 7’s limitation of “means for controlling a function of said apparatus using said information” is a means-plus-function” slip op. at 10

  Patent outcomesUS 7,933,431 mixed
  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 7,933,431
• Apple, Inc., LG Electronics, Inc., LG Electronics U.S.A., Inc., And Google LLC v. Gesture Technology Partners, LLCSome claims unpatentable
  PTAB · Nov 30, 2022 · IPR2022-00091 · APJ Brent M Dougal · IPR · Final written decision

  Claims 1–10, 12, and 14–31 are unpatentable as obvious; claims 11 and 13 were not shown unpatentable because Numazaki did not teach or suggest their cellular phone or transceiver limitations.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We apply these principles to the Petition’s challenges. 2. Level of Ordinary Skill in the Art Petitioner asserts that “[a] person having ordinary skill in the art (‘PHOSITA’) at the time of the ’431 Patent would have had at least a bachelor’s degree in electrical engineering or equivalent with at least one year of experience in the field of human computer interaction” and that “[a]dditional education or experience might substitute for the above requirements.” Pet. 3 (citing Ex. 1008 ¶¶ 30–32). Patent Owner does not dispute Petitioner’s level of ordinary skill in the art. PO Resp. 6. We are persuaded, on the present record, that Petitioner’s declarant’s statement is consistent with the problems and solutions in the ’431 patent and prior art of record. We adopt this definition for the purposes of this Decision.” slip op. at 7

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

    “Patent Owner argues that the preambles should be limiting because they recite essential structure or steps and are “necessary to give life, meaning, and vitality” to the claims. PO Resp. 6 (quoting Acceleration Bay, LLC v. Activision Blizzard, Inc., 908 F.3d 765, 770 (Fed. Cir. 2018)). Specifically, Patent Owner asserts that each claim includes one or more limitations that refer back to the preamble’s “handheld computing device” or “handheld computer apparatus” for antecedent basis. Id. at 6–7. Patent Owner further argues that the ’431 patent discloses different embodiments, with some embodiments being in the form of a computer and some embodiments being in the form of a handheld device. Id. at 7 (citing Ex. 1001, 12:59–13:7, Fig. 10A). Patent Owner contends that the claims are directed to the latter embodiments related to a handheld device and, therefore, “the preamble is necessary to give life, meaning, and vitality to claims 1, 7, and 14, consistent with the embodiments that the inventor chose to claim.” Id. We agree that the preambles of claims 1, 7, and 14 are limiting. This is primarily because the body of each claim includes “said device” or “said apparatus” which refers back to the preamble and is understood with reference thereto. For example, the last clause of claim 7 states: “means for controlling a function of said apparatus using said information.” Ex. 1001, 26:4–5 (emphasis added). “Said apparatus” derives antecedent basis from the “[h]andheld computer apparatus” recited in the preamble. Moreover, the “means for controlling a function of said apparatus” is understood because of this reference to the handheld computer apparatus. The limitations of claims 1 and 14 are similar and so this logic applies equally to these claims as well. Thus, we agree that the preamble recites essential structure and is “necessary to give life, meaning, and vitality” to claims 1, 7, and 14.” slip op. at 8

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)Term construed petitioner construction§112(f) does not applyDecided for petitioner

    “b) Camera Means Petitioner asserts that, though claim 7 recites “camera means,” it is not a means-plus-function limitation under §112 ¶ 6. Pet. 6. Petitioner argues that “a PHOSITA would have considered ‘camera means associated with said housing’ to have a sufficiently definite meaning as the name for structure.” Id. (citing Ex. 1008 ¶ 36). Petitioner further argues that “all optical sensors obtain images by capturing light, so the claimed function is simply describing the general process that all optical sensors employ to obtain images of objects.” Id. (citing Ex. 1008 ¶ 36). “Patent Owner agrees” with Petitioner’s construction PO. Resp. 7. We accept Petitioner’s construction as consistent with the current record.” slip op. at 9

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Term construed petitioner construction§112(f) appliesDecided for petitioner

    “c) Computer Means Petitioner contends that claim 7’s limitation of “computer means within said housing for analyzing said image to determine information concerning a position or movement of said object” is a means-plus-function limitation under §112 ¶ 6. Pet. 7. Petitioner argues that the limitation’s function is analyzing an image “to determine positioning or movement of an object.” Id. Petitioner argues that the corresponding structure “includes a computer/processor programmed (1) to identify either natural or artificial features on an object as described . . . or (2) to track the movement using one of the disclosed methods.” Id. at 9; see id. at 8–9 (discussing the disclosure of the ’431 patent) (citing Ex. 1001, 3:38–47, 3:57–62, 4:9–14, 5:2–23, 6:64–7:13, 8:40–59, 11:16–35). Petitioner also argues that “objects” should be construed to mean “both separate objects held/controlled by the user and also part of the user’s body, such as a user’s finger or hand.” Id. at 8; see id. at 7–8 (citing Ex. 1001, 3:39–41, 3:48–50, claims 7–8). “Patent Owner does not contest” Petitioner’s construction. PO Resp. 6. We accept Petitioner’s construction as consistent with the current record.10 d) Means for Controlling a Function Petitioner argues that claim 7’s limitation of “means for controlling a function of said apparatus using said information” is a means-plus-function” slip op. at 10

  Patent outcomesUS 7,933,431 mixed
  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 7,933,431
• Apple, Inc. / LG Electronics, Inc. et al. v. Gesture Technology Partners, LLCSome claims unpatentable
  PTAB · Nov 30, 2022 · IPR2021-00920 · APJ Brent M Dougal · IPR · Final written decision

  Claims 1–10, 12, and 14–31 are unpatentable as obvious; claims 11 and 13 were not shown unpatentable because Numazaki does not teach or suggest their limitations.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “(‘PHOSITA’) at the time of the ’431 Patent would have had at least a bachelor’s degree in electrical engineering or equivalent with at least one year of experience in the field of human computer interaction” and that “[a]dditional education or experience might substitute for the above requirements.” Pet. 3 (citing Ex. 1008 ¶¶ 30–32). Patent Owner does not dispute Petitioner’s level of ordinary skill in the art. PO Resp. 6. We are persuaded, on the present record, that Petitioner’s declarant’s statement is consistent with the problems and solutions in the ’431 patent and prior art of record. We adopt this definition for the purposes of this Decision.” slip op. at 7

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

    “they recite essential structure or steps and are “necessary to give life, meaning, and vitality” to the claims. PO Resp. 6 (quoting Acceleration Bay, LLC v. Activision Blizzard, Inc., 908 F.3d 765, 770 (Fed. Cir. 2018)). Specifically, Patent Owner asserts that each claim includes one or more limitations that refer back to the preamble’s “handheld computing device” or “handheld computer apparatus” for antecedent basis. Id. at 6–7. Patent Owner further argues that the ’431 patent discloses different embodiments, with some embodiments being in the form of a computer and some embodiments being in the form of a handheld device. Id. at 7 (citing Ex. 1001, 12:59–13:7, Fig. 10A). Patent Owner contends that the claims are directed to the latter embodiments related to a handheld device and, therefore, “the preamble is necessary to give life, meaning, and vitality to claims 1, 7, and 14, consistent with the embodiments that the inventor chose to claim.” Id. We agree that the preambles of claims 1, 7, and 14 are limiting. This is primarily because the body of each claim includes “said device” or “said apparatus” which refers back to the preamble and is understood with reference thereto. For example, the last clause of claim 7 states: “means for controlling a function of said apparatus using said information.” Ex. 1001, 26:4–5 (emphasis added). “Said apparatus” derives antecedent basis from the “[h]andheld computer apparatus” recited in the preamble. Moreover, the “means for controlling a function of said apparatus” is understood because of this reference to the handheld computer apparatus. The limitations of claims 1 and 14 are similar and so this logic applies equally to these claims as well. Thus, we agree that the preamble recites essential structure and is “necessary to give life, meaning, and vitality” to claims 1, 7, and 14.” slip op. at 8

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyDecided for petitioner

    “b) Camera Means Petitioner asserts that, though claim 7 recites “camera means,” it is not a means-plus-function limitation under §112 ¶ 6. Pet. 6. Petitioner argues that “a PHOSITA would have considered ‘camera means associated with said housing’ to have a sufficiently definite meaning as the name for structure.” Id. (citing Ex. 1008 ¶ 36). Petitioner further argues that “all optical sensors obtain images by capturing light, so the claimed function is simply describing the general process that all optical sensors employ to obtain images of objects.” Id. (citing Ex. 1008 ¶ 36). “Patent Owner agrees” with Petitioner’s construction PO. Resp. 7. We accept Petitioner’s construction as consistent with the current record.” slip op. at 9

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Decided for petitioner

    “c) Computer Means Petitioner contends that claim 7’s limitation of “computer means within said housing for analyzing said image to determine information concerning a position or movement of said object” is a means-plus-function limitation under §112 ¶ 6. Pet. 7. Petitioner argues that the limitation’s function is analyzing an image “to determine positioning or movement of an object.” Id. Petitioner argues that the corresponding structure “includes a computer/processor programmed (1) to identify either natural or artificial features on an object as described . . . or (2) to track the movement using one of the disclosed methods.” Id. at 9; see id. at 8–9 (discussing the disclosure of the ’431 patent) (citing Ex. 1001, 3:38–47, 3:57–62, 4:9–14, 5:2–23, 6:64–7:13, 8:40–59, 11:16–35). Petitioner also argues that “objects” should be construed to mean “both separate objects held/controlled by the user and also part of the user’s body, such as a user’s finger or hand.” Id. at 8; see id. at 7–8 (citing Ex. 1001, 3:39–41, 3:48–50, claims 7–8). “Patent Owner does not contest” Petitioner’s construction. PO Resp. 6. We accept Petitioner’s construction as consistent with the current record.10 d) Means for Controlling a Function Petitioner argues that claim 7’s limitation of “means for controlling a function of said apparatus using said information” is a means-plus-function 10 In related IPR2021-00917 the petitioner there offered a slightly different construction. See IPR2021-00917, Paper 31, 11–12. The parties do not address the slight differences and we determine that the outcome here is not construction dependent. limitation under §112 ¶ 6. Pet. 10. According to Petitioner, the limitation’s function is “controlling a function of the apparatus using information about the object’s location or movement.” Id. Petitioner argues that the corresponding structure “is a processor programmed to perform the specific algorithms that accomplish this function” which “includes at least [the] Fig. 9 disclosure.” Id. at 10–11. “Patent Owner does not contest” Petitioner’s construction. PO Resp. 6. However, as discussed above, we determine that “said apparatus” refers to the handheld computer apparatus in the preamble. Thus, we accept Petitioner’s construction with the added requirement that the general purpose computer be a handheld computer apparatus. e) Means for Transmitting Information Petitioner asserts that claim 11’s limitation of “means for transmitting information” is a means-plus-function limitation under §112 ¶ 6. Pet. 11. Petitioner argues that the ’431 patent teaches the structure for performing the limitation’s function of “transmitting information” is a “wireless cellular transceiver” and thus the corresponding structure required by the claim “includes at least a wireless cellular transceiver.” Id. at 11–12 (citing Ex. 1001, 12:59–13:3). “Patent Owner does not contest” Petitioner’s construction. PO Resp. 6. We accept Petitioner’s construction as consistent with the current record.11” slip op. at 10

  Patent outcomesUS 7,933,431 mixed
  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 7,933,431
• Apple, Inc. / LG Electronics, Inc. et al. v. Gesture Technology Partners, LLCSome claims unpatentable
  PTAB · Nov 28, 2022 · IPR2022-00360 · APJ Brent M Dougal · IPR · Final written decision

  Claims 1–6, 8–16, 18–26, and 28–30 are unpatentable as obvious; claims 7, 17, and 27 were not shown unpatentable because Numazaki teaches away from using ring or other targets.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “2. Level of Ordinary Skill in the Art Petitioner asserts that “[a] person having ordinary skill in the art (‘PHOSITA’) at the time of the ’079 Patent would have had at least a bachelor’s degree in electrical engineering or equivalent with at least one year of experience in the field of human computer interaction” and that “[a]dditional education or experience might substitute for the above requirements.” Pet. 4 (citing Ex. 1010 ¶¶ 29–31). Patent Owner does not dispute Petitioner’s level of ordinary skill in the art. PO Resp. 6. We are persuaded that Petitioner’s declarant’s statement is consistent with the problems and solutions in the ’079 patent and prior art of record. We adopt this definition for the purposes of this Final Decision.” slip op. at 6

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner

    “the light source is used is not a sufficient reason for us to read a limitation into the claims from the Specification. If the specification “reveal[s] a special definition given to a claim term by the patentee that differs from the meaning it would otherwise possess[,] . . . the inventor’s lexicography governs.” Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005) (en banc) (citing CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002)); see also Reply 19. However, this is not the case here. Patent Owner does not identify anywhere in the Specification where “light source” or “plurality of light emitting diodes” are defined as “the light source illuminates the gesture by having two or more (i.e., a plurality) LEDs of the light source emit light at the same time.” For these reasons we decline to adopt Patent Owner’s claim construction. We determine that the added limitation in claims 3, 15, and 23 should be read according to its plain and ordinary meaning. In other words, “the light source includes a plurality of light emitting diodes,” simply means exactly what it says “the light source includes a plurality of light emitting diodes.”” slip op. at 8

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away foundNot shown unpatentableMixed

    “A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant. The degree of teaching away will of course depend on the particular facts; in general, a reference will teach away if it suggests that the line of development flowing from the reference’s disclosure is unlikely to be productive of the result sought by the applicant. In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).” slip op. at 21

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

    “Petitioner argues that Numazaki ’863 teaches using a plurality of light emitting diodes to illuminate a hand gesture and to control a computer based on the gesture. Pet. 37. Petitioner also identifies a number of reasons to modify Numazaki’s light source to use Numazaki’s ’863’s plurality of light emitting diodes as the light sources are used for similar purposes. Id. at 38– 39. Patent Owner does not contest Petitioner’s positions in the Petition, other than to argue that the combination does not teach the claim limitation under Patent Owner’s construction. PO Resp. 20–22. Patent Owner further admits that Numazaki ’863 teaches a plurality of light emitting diodes used to illuminate an object. Id. at 21 (citing Ex. 1005, 16:36–57, Fig. 4). As we previously rejected Patent Owner’s attempt to read limitations from the Specification into the claims, Patent Owner’s arguments here do not apply to the requirements of the claims. We have reviewed Petitioner’s assertions with respect to these claims and the supporting evidence, and determine that Petitioner has established by a preponderance of the evidence that claims 3, 15, and 23 are unpatentable.” slip op. at 24

  Patent outcomesUS 8,553,079 mixed
  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 8,553,079
• Apple, Inc. / LG Electronics, Inc. et al. v. Gesture Technology Partners, LLCSome claims unpatentable
  PTAB · Nov 28, 2022 · IPR2022-00090 · APJ Brent M Dougal · IPR · Final written decision

  Claims 1–6, 8–16, 18–26, and 28–30 are unpatentable as obvious; claims 7, 17, and 27 were not shown unpatentable because Numazaki teaches away from using targets.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner

    “The mere fact that the Specification provides an example as to how the light source is used is not a sufficient reason for us to read a limitation into the claims from the Specification. If the specification “reveal[s] a special definition given to a claim term by the patentee that differs from the meaning it would otherwise possess[,] . . . the inventor’s lexicography governs.” Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005) (en banc) (citing CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002)); see also Reply 19. However, this is not the case here. Patent Owner does not identify anywhere in the Specification where “light source” or “plurality of light emitting diodes” are defined as “the light source illuminates the gesture by having two or more (i.e., a plurality) LEDs of the light source emit light at the same time.” For these reasons we decline to adopt Patent Owner’s claim construction. We determine that the added limitation in claims 3, 15, and 23 should be read according to its plain and ordinary meaning. In other words, “the light source includes a plurality of light emitting diodes,” simply means exactly what it says “the light source includes a plurality of light emitting diodes.”” slip op. at 8

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “2. Level of Ordinary Skill in the Art Petitioner asserts that “[a] person having ordinary skill in the art (‘PHOSITA’) at the time of the ’079 Patent would have had at least a bachelor’s degree in electrical engineering or equivalent with at least one year of experience in the field of human computer interaction” and that “[a]dditional education or experience might substitute for the above requirements.” Pet. 4 (citing Ex. 1010 ¶¶ 29–31). Patent Owner does not dispute Petitioner’s level of ordinary skill in the art. PO Resp. 6. We are persuaded that Petitioner’s declarant’s statement is consistent with the problems and solutions in the ’079 patent and prior art of record. We adopt this definition for the purposes of this Final Decision.” slip op. at 6

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away foundNot shown unpatentableNot shown unpatentable

    “A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant. The degree of teaching away will of course depend on the particular facts; in general, a reference will teach away if it suggests that the line of development flowing from the reference’s disclosure is unlikely to be productive of the result sought by the applicant. In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).” slip op. at 21

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

    “Petitioner argues that Numazaki ’863 teaches using a plurality of light emitting diodes to illuminate a hand gesture and to control a computer based on the gesture. Pet. 37. Petitioner also identifies a number of reasons to modify Numazaki’s light source to use Numazaki’s ’863’s plurality of light emitting diodes as the light sources are used for similar purposes. Id. at 38– 39. Patent Owner does not contest Petitioner’s positions in the Petition, other than to argue that the combination does not teach the claim limitation under Patent Owner’s construction. PO Resp. 20–22. Patent Owner further admits that Numazaki ’863 teaches a plurality of light emitting diodes used to illuminate an object. Id. at 21 (citing Ex. 1005, 16:36–57, Fig. 4). As we previously rejected Patent Owner’s attempt to read limitations from the Specification into the claims, Patent Owner’s arguments here do not apply to the requirements of the claims. We have reviewed Petitioner’s assertions with respect to these claims and the supporting evidence, and determine that Petitioner has established by a preponderance of the evidence that claims 3, 15, and 23 are unpatentable.” slip op. at 24

  Patent outcomesUS 8,553,079 mixed
  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 8,553,079
• Apple, Inc. / LG Electronics, Inc. et al. v. Gesture Technology Partners, LLCSome claims unpatentable
  PTAB · Nov 28, 2022 · IPR2021-00922 · APJ Brent M Dougal · IPR · Final written decision

  Claims 1–6, 8–16, 18–26, and 28–30 are unpatentable as obvious; claims 7, 17, and 27 were not shown unpatentable because Numazaki teaches away from using ring or other targets.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “(‘PHOSITA’) at the time of the ’079 Patent would have had at least a bachelor’s degree in electrical engineering or equivalent with at least one year of experience in the field of human computer interaction” and that “[a]dditional education or experience might substitute for the above requirements.” Pet. 4 (citing Ex. 1010 ¶¶ 29–31). Patent Owner does not dispute Petitioner’s level of ordinary skill in the art. PO Resp. 6. We are persuaded that Petitioner’s declarant’s statement is consistent with the problems and solutions in the ’079 patent and prior art of record. We adopt this definition for the purposes of this Final Decision.” slip op. at 6

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner

    “Claim construction starts with an analysis of the claim language itself. Sjolund v. Musland, 847 F.2d 1573, 1582 (Fed. Cir. 1988) (“[T]he claims define the invention.”). Claim 1 includes “providing a light source adapted to direct illumination through a work volume above the light source,” a “camera being fixed relative to the light source,” and “determining . . . the gesture performed in the work volume and illuminated by the light source.” Ex. 1001, 13:3–9. Claim 3 adds that “the light source includes a plurality of light emitting diodes.” Id. at 13:12–13. Reading claims 1 and 3 it can be seen that Patent Owner’s construction is not apparent or implied from the claim language. Neither claim requires, for example, that the gesture be illuminated by 100% of the light source, or by at least two LEDs of the light source. Claim 1 merely states that the gesture be “illuminated by the light source.” The amount of illumination is not specified.” slip op. at 8

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away foundNot shown unpatentableNot shown unpatentable

    “A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant. The degree of teaching away will of course depend on the particular facts; in general, a reference will teach away if it suggests that the line of development flowing from the reference’s disclosure is unlikely to be productive of the result sought by the applicant. In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).” slip op. at 21

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

    “The testimony of Petitioner’s declarant cannot overcome the strong “disparagement” that Petitioner admits Numazaki makes against the use of rings or other added targets. This is not a case where Numazaki merely expresses a general preference for an alternative invention, rather Numazaki clearly criticizes, discredits, and discourages the use of rings and other targets. In Petitioner’s own words, “Numazaki[’s] . . . teaching[s] . . . can obviate the need for these targets.” Tr. 28. Neither Petitioner nor Petitioner’s declarant address why one of ordinary skill in the art would have modified Numazaki to use a ring, in view of Petitioner’s admission that “Numazaki[’s] . . . teaching[s] . . . can obviate the need for these targets.” Id. Petitioner also fails to explain how the teachings of Numazaki related to specialized rings supports it conclusion related to a “small [generic] ring,” similar to what people routinely wear. Pet. 23–24. Numazaki discusses rings in specialized colors, as well as “color markers,” and “light emitting elements.” Ex. 1004, 3:7–9, 26–31. Neither Petitioner nor Petitioner’s declarant explain the logical steps between Numazaki’s disclosure and a “small [generic] ring” similar to what people routinely wear, or why one of ordinary skill in the art would have considered them to be the same or similar. For these reasons, we determine that Petitioner has not shown that” slip op. at 22

  Patent outcomesUS 8,553,079 mixed
  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 8,553,079
• Solaredge Technologies Ltd. v. Sma Solar Technology AGRehearing granted
  PTAB · Oct 25, 2022 · IPR2020-00021 · APJ Scott B Howard · IPR · Rehearing

  On rehearing, the Board held claims 1–10 unpatentable as obvious: claims 1–3, 5, and 7 over AAPA and Frezzolini; claims 4, 6, and 8–10 over AAPA, Frezzolini, and Iwamura.

  RulingsRehearing decision

  • RehearingRehearing, grantedGranted

    “Updated Guidance. See Opp. Reh’g 4–8. Instead, Patent Owner argues that we correctly determined in the Final Written Decision that AAPA was the foundation or starting point of the ground. Id. However, the language that we relied upon from the Guidance Memo in the Final Written Decision has been deleted from the Updated Guidance. Compare Guidance Memo 6 (directing the PTAB to determine if the applicant admitted prior art is the foundation or starting point), with Updated Guidance (language omitted). Although we properly followed the Guidance Memo in the Final Written follow the clear and unambiguous requirements of the Updated Guidance. Moreover, Patent Owner does not direct us to any Federal Circuit case law that suggests using the foundation or starting point test of the Guidance Memo. See Opp. Reh’g 4–8. Although the Qualcomm panel was aware of the Guidance Memo (see 24 F.4th at 1373), the Federal Circuit neither discussed the test set out in the Guidance Memo, nor directed that the PTAB apply the foundation or starting point test. See 24 F.4th 1367.” slip op. at 22

  • Skill levelSkill level petitioner adoptedOther

    “Petitioner argues—supported by the testimony of Dr. Wood—that a person having ordinary skill in the art (“PHOSITA”) “would have had a bachelor’s degree in mechanical engineering, electrical engineering, or a similar discipline and at least two years of design experience with photovoltaic systems.” Pet. 20 (emphasis added) (citing Ex. 1011 ¶¶ 18– 22). In the Institution Decision, we adopted Petitioner’s description of a person having ordinary skill in the art, “except that we delete[d] the qualifier ‘at least’ to eliminate vagueness as to the amount of practical experience.” Inst. Dec. 15–16. Patent Owner does not address that determination. See PO Resp. Accordingly, for the reasons given in the Institution Decision, we adopt Petitioner’s proposed level of ordinary skill, except that we delete the qualifier “at least” to eliminate vagueness as to the amount of practical experience. See Inst. Dec. 16. Therefore, a person having ordinary skill in the art would have had a bachelor’s degree in mechanical engineering, electrical engineering, or a similar discipline and two years of design experience with photovoltaic systems.” slip op. at 10

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

    “Petitioner argues that all claim terms should be construed according to their ordinary and customary meaning at the time of the invention. Pet. 20. Patent Owner argues that two terms require explicit constructions: “the power line modem” and “the data signal coupler.” PO Resp. 20–22. Patent Owner’s proposed claim constructions limit the “power line modem” and the “data signal coupler” to DC power lines. PO Resp. 20–22. However, during the Oral Hearing, Patent Owner agreed that, consistent with the plain and ordinary meaning, the other limitations of the claims require that the components operate on DC power lines. Tr. 37:5–23. As discussed in more detail below, Petitioner’s combination of prior art references uses DC power lines. Accordingly, no express construction is needed to resolve any dispute in this proceeding. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 11

  • Strike new argumentNew argument disregardedDecided for petitioner

    “of the background knowledge possessed by a person of ordinary skill in the art.” Guidance Memo 6–7; Updated Guidance 4–5. Although Patent Owner had the opportunity to make such an argument in the Sur-reply when addressing the Guidance Memo (and by implication, the identical language of Updated Guidance), Patent Owner chose not to do so and, accordingly, forfeited the argument. See Paper 9, 7. Although Patent Owner raised the argument at the oral hearing,17 that is not enough to preserve the argument as no new arguments can by made during the Oral Hearing. See CTPG at 85– 86 (“During an oral hearing, a party . . . may only present arguments relied upon in the papers previously submitted.”); Dell, 818 F.3d at 1301 (“[T]he Board denied Acceleron its procedural rights by relying in its decision on a factual assertion introduced into the proceeding only at oral argument, after Acceleron could meaningfully respond.”). Just as a movant may not make a new argument in a request for rehearing, a party opposing such a request cannot raise new arguments that it did not make before. See Apple Inc. v. Taction Tech., Inc., IPR2022-00057, Paper 15 at 4 (“A request for rehearing is not an opportunity . . . to present new arguments.”) (Denying Request for Rehearing). Accordingly, because Patent Owner did not argue that the limitations taught by the AAPA were not known in the prior art in its Patent Owner Response or Sur-reply, that argument is forfeited and cannot be considered on rehearing.” slip op. at 24

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,922,048
• Kaijet Technology International Limited, Inc. v. Sanho CorporationAll claims unpatentable
  PTAB · Oct 25, 2022 · IPR2021-00886 · APJ Joni Y Chang · IPR · Final written decision

  Claims 1–6 and 13–17 are unpatentable over Kwon and Kuo, and over O’Shea, Kuo, and Chang; the O’Shea and Kuo ground alone fails for claim 1.

  RulingsFinal written decision

  • Skill levelOther

    “C. Level of Ordinary Skill in the Art In determining the level of ordinary skill in the art, various factors” slip op. at 18

  • Expert testimonyOther

    “1. Petitioner’s initial burden of production” slip op. at 24

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Other

    “For these reasons, we clarify that a main port module is a component” slip op. at 10

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

    “1. Petitioner’s initial burden of production” slip op. at 24

  Patent outcomesUS 10,572,429 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,572,429
• Nokia Of America Corporation v. TQ Delta, LLCInstituted
  PTAB · Sep 27, 2022 · IPR2022-00664 · APJ Lynne E Pettigrew · IPR · Institution

  Instituted IPR of claims 9–16 on both asserted obviousness grounds; the Mazzoni and VDSL1 combination presented a compelling challenge, and the second ground was also instituted.

  RulingsInstitution decision

  • PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner

    “A. 35 U.S.C. § 315(b) Patent Owner argues that we should deny the Petition under 35 U.S.C. § 315(b). Prelim. Resp. 23. Section 315(b) provides that an 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 in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.” Patent Owner served 2Wire, Inc. (“2Wire”) with a complaint alleging infringement of the ’882 patent in February 2014. Prelim. Resp. 11–12; Ex. 2001, 33–34; Ex. 2002. Petitioner filed the Petition in this case more than one year later on March 4, 2022. Pet. 83. Patent Owner contends that the Petition is barred under § 315(b) because 2Wire and its successor-in-interest CommScope Holding Company, Inc. (“CommScope”) are real parties in interest and privies of Petitioner.5 Prelim. Resp. 23–28; Sur-reply 2–7.” slip op. at 5

  • PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner

    “Patent Owner argues that Petitioner filed the Petition at the behest of 2Wire and CommScope. Prelim. Resp. 26. Specifically, Patent Owner contends that Petitioner and CommScope are “‘featured partner[s]’ in business” who agreed to a “joint strategy.” Id. at 27; Sur-reply 3–4. According to Patent Owner, Petitioner filed petitions challenging certain patents that 2Wire and CommScope are “unquestionably time barred from challenging,” even though Petitioner is not accused of infringing them. Prelim. Resp. 25–27; Sur-reply 2–3. And, in “exchange,” CommScope filed petitions challenging certain other patents that Petitioner is accused of infringing. Prelim. Resp. 26–27; Sur-reply 3. Patent Owner also contends that Petitioner and CommScope used the same declarants to support their respective petitions. Prelim. Resp. 27; Sur-reply 4. On this record, we are not persuaded that Petitioner filed the Petition at the behest of 2Wire and CommScope. The evidence of record indicates that Patent Owner sent claim charts to Petitioner alleging infringement of the ’882 patent based on compliance with Very High Speed Digital Subscriber Line (“VDSL”) standards. Reply 2; Ex. 1034, 38–39; Ex. 1035, 1–8; Ex. 1036, 1–8; Ex. 1037 ¶ 3. Thereafter, on August 13, 2021, Patent Owner filed a complaint in the Eastern District of Texas accusing Petitioner of infringing several patents, including the ’882 patent. Ex. 1026, 5; see Reply 2–3. Further, there is evidence that Patent Owner “continues to “take a license to its entire portfolio,” including the ’882 patent. Reply 3 (emphasis omitted); Ex. 1037 ¶ 3. Thus, at this stage of the proceeding, the evidence of record indicates that Petitioner filed the Petition for itself, not at the behest of 2Wire and CommScope.” slip op. at 6

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner

    “to deny institution in light of parallel district court litigation. Prelim. Resp. 28–39; Sur-reply 7–8. We consider several factors when determining whether to deny institution under § 314(a) based on a parallel district court proceeding. Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 5–6 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”). Nonetheless, “where the PTAB determines that the information presented at the institution stage presents a compelling unpatentability challenge, that determination alone demonstrates that the PTAB should not discretionarily deny institution under Fintiv.” USPTO Memorandum, Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation, 4–5 (June 21, 2022), available at https://www.uspto.gov/sites/default/files/ litigation_memo_20220621_.pdf. “Compelling, meritorious challenges are those in which the evidence, if unrebutted in trial, would plainly lead to a conclusion that one or more claims are unpatentable by a preponderance of the evidence.” Id. at 4. Based on the evidence of record, Petitioner’s assertion that claims 9–16 would have been obvious over Mazzoni and VDSL1 presents a compelling unpatentability challenge. At this stage of the proceeding, Patent Owner disputes that the Mazzoni and VDSL1 combination teaches a “shared memory” and “a message during initialization specifying a maximum number of bytes of memory that are available to be allocated to an interleaver.” Prelim. Resp. 43–45, 51–54. Patent Owner also disputes that it would have been obvious to combine the cited teachings of Mazzoni and VDSL1. Id. at 55–59. As discussed in detail below, the evidence of record plainly shows that the Mazzoni and VDSL1 combination teaches the disputed limitations and that it would have been obvious to combine the cited teachings of Mazzoni and VDSL1. See Section III.F. Because the information presented at the institution stage presents a compelling unpatentability challenge, we decline to exercise our discretion under § 314(a) to deny the Petition.” slip op. at 8

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

    “5. Summary For the foregoing reasons, Petitioner makes a sufficient showing that the combination of Mazzoni and VDSL1 teaches or suggests all the limitations of claims 9–16 and that a person of ordinary skill in the art would have combined the references in the manner asserted. Accordingly, we determine that the information presented shows a reasonable likelihood that Petitioner would prevail in establishing that claims 9–16 are unpatentable as obvious over the combined teachings of Mazzoni and VDSL1.” slip op. at 18

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 7,844,882
• Nokia Of America Corporation v. TQ Delta, LLCInstitution denied
  PTAB · Sep 7, 2022 · IPR2022-00640 · APJ Jennifer Meyer Chagnon · IPR · Institution

  The Board denied institution on all challenged claims because Petitioner did not show a reasonable likelihood that claims 17 or 18 were unpatentable under any asserted ground.

  RulingsInstitution decision

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

    “review under 35 U.S.C. § 314, which provides that an inter partes review may be instituted only upon a showing that “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Applying this standard, and upon consideration of the information presented in the parties’ briefing, as well as the evidence of record, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing in showing the unpatentability of at least one of the challenged claims. Accordingly, we do not institute an inter partes review.” slip op. at 2

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

    “Based on these disclosures, we agree with Patent Owner that the Specification of the ’881 patent clearly distinguishes between methods of compensating for differences in latency and methods of reducing differences in latency. We also agree that the claim is directed to the reducing differences embodiment. See Baran v. Med. Device Techs., Inc., 616 F.3d 1309, 1316 (Fed. Cir. 2010) (“It is not necessary that each claim read on every embodiment.”); see also SIMO Holdings Inc. v. Hong Kong uCloudlink Network Tech. Ltd., 983 F.3d 1367, 1379 (Fed. Cir. 2021) (“We have noted that ‘[i]t is often the case that different claims are directed to and cover different disclosed embodiments. The patentee chooses the language and accordingly the scope of his claims.’ Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1383 (Fed. Cir. 2008); see also Nobel Biocare Servs. AG v. Instradent USA, Inc., 903 F.3d 1365, 1381 (Fed. Cir. 2018) (same); PSN [Illinois, LLC v. Ivoclar Vivadent, Inc.], 525 F.3d [1159,] 1166” slip op. at 15

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

    “Gray teaches changing the rate at which packets are provided to the links based on the quality of the link. See Ex. 1007, code (57); see also id. at 6:53–59 (“A delay factor associated with each of the plurality of links is determined and communication packets are distributed among the plurality of links based upon the delay factor associated with each of the plurality of links. The communication packets may be distributed to the links by providing communication packets to a link of the plurality of links with the least delay.”). Rather than reducing the difference in latency between the links, Gray teaches compensating for the differences by sending more packets to higher quality links, and less packets to lower quality links. Section II.C.), we agree with Patent Owner that Petitioner has not shown sufficiently that Gray discloses “reducing a difference in latency between the bonded transceivers” as recited in claim 17. For this reason, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing on its assertion that claim 17, or claim 18 which depends therefrom, is anticipated by Gray.” slip op. at 27

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

    “Petitioner’s combination with Cooper, however, does not remedy the deficiencies discussed above with respect to the asserted ground based on Keller-Tuberg alone. See Section II.F. As noted above, Petitioner relies on Cooper’s teaching of a specific delay-reducing algorithm, but continues to rely on Keller-Tuberg for its alleged teaching of “equalizing the difference in latency between the bonded transceivers.” Pet. 53. As Patent Owner argues “dynamically balancing the receive queue lengths to compensate for difference in latency,” as in Petitioner’s combination of Keller-Tuberg and Cooper, “compensates for a difference in configuration latency without doing anything to the actual difference in latency much less ‘utilizing a transmission parameter to reduce a difference in latency.’” Prelim. Resp. 8 compensates for the differences in latency” (emphasis added)). Based on our construction of the “utilizing” term, discussed above (see Section II.C.), we agree with Patent Owner that Petitioner has not shown sufficiently that the combination of Keller-Tuberg and Cooper teaches “reducing a difference in latency between the bonded transceivers” as recited in claim 17. For these reasons, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing on its assertion that claim 17, or claim 18 which depends therefrom, would have been obvious in view of Keller- Tuberg and Cooper.” slip op. at 30

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 7,453,881

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.