- Apple Inc. / Fitbit, Inc. v. Valencell, Inc.Some claims unpatentablePTAB · Aug 6, 2018 · IPR2017-00319 · APJ James B Arpin · IPR · Final written decision
Claims 1–2 and 6–13 are unpatentable as obvious; claims 3–5 were not shown unpatentable over the asserted grounds.
RulingsFinal written decision- BurdenFwd mixedMixed
“demonstrated by a preponderance of the evidence that claims 1, 2, and 6–13 of the ’941 patent are unpatentable based on the challenges asserted in the Petition, but that Petitioner fails demonstrated by a preponderance of the evidence that claims 3–5 of the ’941 patent are unpatentable based on the challenges asserted in the Petition. In particular, we determine that:” slip op. at 77
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther
“1. “physiological information” (Claims 1–13) Petitioner argues that the Specification of the ’941 patent provides an” slip op. at 10
- ExcludeOther
“Although Patent Owner filed objections to evidence submitted with the Petition (Paper 14) and Petitioner filed objections to evidence submitted with Patent Owner’s Preliminary Response (Paper 12) and to evidence submitted with the Patent Owner Response (Paper 23), neither party filed a Motion to Exclude. Consequently, these objections are deemed waived. 37 C.F.R. § 42.64(c) (“A motion to exclude evidence must be filed to preserve any objection.”). Petitioner also filed a list of alleged” slip op. at 3
- PTAB / AIA Trials › Constitutional / APA (Arthrex, Oil States, due process)Decided for petitioner
“IV. PROCEDURAL ISSUES Patent Owner objects to the use of inter partes reviews as unconstitutional based, at least, upon the reasons presented in the petition for certiorari that was granted in Oil States Energy Services, LLC v. Greene’s Energy Group, LLC. PO Resp. 38; see Reply 21. On April 24, 2018, the U.S. Supreme Court upheld the constitutionality of inter partes review; thus, Patent Owner’s arguments are moot. Oil States Energy Servcs. LLC v. Greene’s Energy Grp., LLC, 138 S.Ct. 1365, 1370 (2018).” slip op. at 78
Patent outcomesUS 8,923,941 mixedClaim constructioncites KSR · GrahamPatents in suitUS 8,923,941 - Qualcomm Incorporated v. Bandspeed, Inc.Some claims unpatentablePTAB · Aug 23, 2017 · IPR2016-00623 · APJ James B Arpin · IPR · Final written decision
Claims 1–5, 8–12, 14–20, 23–27, and 29–31 are unpatentable under the asserted § 103 grounds; claims 13 and 28 were not shown unpatentable.
RulingsFinal written decision- Expert testimonyOther
“of a “clear” channel is “a channel that is not already in use by a non-frequency hopping communications system” and that the broadest reasonable interpretation of an “occupied” channel is “a channel that already is in use by a non-frequency hopping communications system.”” slip op. at 21
- Skill levelSkill level petitioner adoptedOther
“would have a B.S. degree in Electrical and/or Computer Engineering, or an equivalent field, as well as at least 3-5 years of academic or industry experience in the wireless communications field.” E.g., 620 Pet. 11 (citing 620 Ex. 1002 ¶¶ 10–13); see 620 Ex. 1002 ¶ 14. Patent Owner and Patent Owner’s declarant, Dr. Melendez,7 adopt this assessment for purposes of this proceeding. PO Resp. 5–6; Ex. 2001 ¶ 29. We note that both Petitioner’s declarant and Patent Owner’s declarant exceed this assessment (Ex. 1002 ¶¶ 3–8; Ex. 2001 ¶¶ 10–16) and are competent to testify regarding the lower assessment of a person of ordinary skill in the art, and, for purposes of this Final Written Decision and to the extent necessary, we adopt this assessment of a person of ordinary skill in the relevant art. slip op. at 14
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“Id. Thus, Petitioner argues that, because multiple tests must be applied to determine the continued presence of interference regardless of the source, limiting “occupied” to NFH communications systems is overly narrow. Nevertheless, the words chosen by the patentee to describe its invention have significance. In re Morris, 127 F.3d 1048, 1056 (Fed. Cir. 1997) (“It is the applicants’ burden to precisely define the invention, not the PTO’s.”). As noted above, “occupied” is only used in the Specification with respect to NFH communications systems, and neither claims 4 and 19 nor their base claims nor the intervening claims specify a single or multiple tests. Therefore, we find Petitioner’s arguments, which attempt to incorporate the teachings of “bad” and “good” channels from elsewhere in the Specification into the interpretation of these claim limitations, unpersuasive. See Intervet America, Inc. v. Kee-Vet Laboratories, Inc., 887 F.2d 1050, 1053 (Fed. Cir. 1989) (“[I]nterpreting what is meant by a word in a claim ‘is not to be confused with adding an extraneous limitation appearing in the specification, which is improper.’”); In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993).” slip op. at 17
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“4. Other Claim Terms For purposes of this Decision, we discern no other claim terms that require express interpretation. Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (explaining that “claim terms need only be construed ‘to the extent necessary to resolve the controversy’” (quoting to allow us to construe the terms “occupied” and “clear,” we relied less on Dr. Ding’s testimony regarding how a person of ordinary skill in the art would understand these terms. See Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005) (en banc) (“[T]he specification ‘is always highly relevant to the claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of a disputed term.’”). Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)); see PO Resp. 7.” slip op. at 21
Patent outcomesUS 8,873,500 mixedClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,873,500 - Qualcomm IncorporatedSome claims unpatentablePTAB · Aug 23, 2017 · IPR2016-00620 · APJ James B Arpin · IPR · Final written decision
Claims 1–5, 8–12, 14–20, 23–27, and 29–31 are unpatentable under the asserted § 103 grounds; claims 13 and 28 were not shown unpatentable.
RulingsFinal written decision- Skill levelSkill level board ownDecided for petitioner
“F. Assessment of Person of Ordinary Skill in the Art Petitioner argues that a person of ordinary skill in the relevant art “would have a B.S. degree in Electrical and/or Computer Engineering, or an equivalent field, as well as at least 3-5 years of academic or industry experience in the wireless communications field.” E.g., 620 Pet. 11 (citing 620 Ex. 1002 ¶¶ 10–13); see 620 Ex. 1002 ¶ 14. Patent Owner and Patent Owner’s declarant, Dr. Melendez,7 adopt this assessment for purposes of this proceeding. PO Resp. 5–6; Ex. 2001 ¶ 29. We note that both Petitioner’s declarant and Patent Owner’s declarant exceed this assessment (Ex. 1002 ¶¶ 3–8; Ex. 2001 ¶¶ 10–16) and are competent to testify regarding the lower assessment of a person of ordinary skill in the art, and, for purposes of this Final Written Decision and to the extent necessary, we adopt this assessment of a person of ordinary skill in the relevant art.” slip op. at 14
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“1. “hopping sequence” (Claims 1, 14, 16, and 29 and others) In the institution decisions, we determined that, in light of the Specification of the ’500 patent, the broadest reasonable interpretation of the phrase “hopping sequence” is “the order in which the communications network hops among the set of frequencies.” E.g., 620 Dec. on Inst. 10–11 (citing 620 Pet. 11–12). Patent Owner does not contest this construction. PO Resp. 6–7. For the reasons set forth in the Decision on Institution in Case IPR2016-00620, we remain persuaded that Petitioner’s proposed construction is the broadest reasonable interpretation of the phrase “hopping sequence.”” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“Petitioner also provides a persuasive rationale for combining the teachings of Dabak and Kockmann. Id. at 39–40. Petitioner asserts that they are both references directed to the same problem, namely, “to communication performance improvements through adapted frequency hopping to avoid channels disturbed by interference.” Id. at 40 (citing Dabak, Abstract; Kockmann, 2:49–3:20; 620 Ex. 1002 ¶ 113). In addition, according to Petitioner, a person of ordinary skill in the art would have had reason to modify the teachings of Dabak regarding the MSD technique in view of the teachings of Kockmann “to utilize multiple channels to communicate with the slave device over the subset of communication channels according to an adapted hopping sequence” in order to accomplish the shared goals of these references. Id. at 40 (citing 620 Ex. 1002 ¶ 113); see In re Ethicon, Inc., 844 F.3d 1344, 1351 (Fed. Cir. 2017) (“The normal desire of artisans to improve upon what is already generally known can provide the motivation to optimize variables such as the percentage of a known polymer for use in a known device.”). According to Petitioner, the combination of these teachings “is a simple use of known teachings to yield predictable results.” Id. (citing KSR, 550 U.S. at 416 (“The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.”)). Based on our review of Petitioner’s arguments and evidence, we find that Petitioner demonstrates that combined teachings of Dabak and Kockmann teach or suggest all of the limitations of independent claims 1 and 16 and find that a person of ordinary skill in the art would have had reason to combine the teachings of Dabak and Kockmann to achieve the methods of claim 1 and the devices of claim 16. See 620 Pet. 17–20, 33–35, 38–40, 48–49. We conclude that Petitioner has shown by a preponderance of the evidence that independent claim 1 would have been obvious over the combined teachings of Dabak and Kockmann. Moreover, because Petitioner’s arguments for the obviousness of independent claim 16 over Dabak and Kockmann rely on the arguments and evidence presented with respect to independent claim 1, we also conclude that Petitioner has shown by a preponderance of the evidence that independent claim 16 would have been obvious over the combined teachings of Dabak and Kockmann, as well as on its related challenges to dependent claims 2, 3, 5, 8, 9, 12, 14, 15, 17, 18, 20, 23, 24, 27, and 29–31. See 620 Pet. 25–26, 40 (claim 2; citing Dabak, 7:57–60, 8:1–2, Fig. 1; 620 Ex. 1002 ¶ 51, 52), 26–27, 40 (claim 3; citing Dabak, 2:39–40, 3:1–5, 3:50–54, 3:60–62; 620 Ex. 1002 ¶¶ 54, 55), 27–28, 42 (claim 5; citing Dabak, 7:57–67; 620 Ex. 1002 ¶ 57), 28, 44 (claim 8; citing Dabak, 2:58–59; 620 Ex. 1002 ¶ 59), 44–47 (claim 9; citing Kockmann, 7:44–47, 8:39–48; 620 Ex. 1002 ¶¶ 136, 137), 31, 47 (claim 12; citing Dabak, Fig. 3B; 620 Ex. 1002 ¶ 65), 31–32, 47 (claim 14; citing 620 Ex. 1002 ¶¶ 69–75, 152), 32–33, 48 (claim 15; citing Dabak, 3:1–5, 7:57–” slip op. at 31
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“Patent Owner contends, however, that the combined teachings of Dabak and Kockmann fail to teach or suggest all of the limitations of claim 4. In particular, Patent Owner contends that, “[a]s described in Kockmann, ‘disturbed’ does not in fact mean ‘occupied,’ but rather it only means that ‘[a] disturbed carrier frequency is thus a carrier frequency onto which a signal is modulated that exceeds a specific threshold.’” PO Resp. 14 (citing Kockmann, 6:43–49). Patent Owner contends that determining whether a channel is “occupied” “requires analysis beyond the measurements called for by Kockmann (i.e.[,] determining more than just the mere presence of a modulated signal ‘that exceeds a specific threshold,’ but rather whether its source was FH or NFH).” Id. at 15; see 620 Ex. 2001 ¶¶ 33–37. Initially, Petitioner again states that Kockmann discloses that “[d]isturbance thereby means that either a disturbance in the actual sense or an occupancy by some other transmitter is present.” Kockmann, 6:41–43 (emphasis added). Patent Owner contends, however, “that a channel ‘occupied’ by an NFH system and a channel ‘disturbed’ by another transmitter are somehow different because an occupancy determination requires additional ‘analysis.’” Reply 10. Nevertheless, we agree with Petitioner that Patent Owner does not show where the claims recite one type of analysis or prohibit another. Id. Thus, we find that the combined teachings of Dabak and Kockmann teach or suggest all of the limitations of claim 4. Petitioner’s arguments with respect to claim 4 apply equally to claim 19. Based on our review of the arguments and evidence, we conclude that Petitioner has established by a preponderance of the evidence that claims 4 and 19 would have been obvious over the combined teachings of Dabak and Kockmann.” slip op. at 34
Patent outcomesUS 8,873,500 mixedClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,873,500 - Alarm.Com Inc. v. Vivint, Inc.Some claims unpatentablePTAB · May 10, 2017 · IPR2016-00161 · APJ Charles J Boudreau · IPR · Final written decision
Claims 9, 10, 14, and 27 are unpatentable as obvious; claims 17, 18, 22, 25, 26, and 28 were not shown unpatentable because the cited combination did not teach the claimed normal status message.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedOther
“patent “would have had at least a bachelor’s degree in computer science, electrical engineering, or computer engineering (or equivalent experience) and at least two years of experience in supervisory and control systems.” Pet. 8. Alarm.com’s declarant, Mr. Zatarain, assumes this skill level assessment in his declaration and opines that he was a person of ordinary skill, under this assessment, at the time of the invention. Ex. 1107 ¶ 11. Vivint does not dispute Alarm.com’s assessment in its Response, but we note that Vivint’s declarant, Mr. Denning, opines that a person of ordinary skill in the art of the ’654 patent would have had “at least a bachelor’s degree in electrical engineering or computer science and at least four years of experience in remote monitoring and control systems,” with the possibility of less experience being compensated for by more education. Ex. 2010 ¶ 15. We do not discern a material difference between the assessments advanced by the declarants, nor does either party premise its arguments exclusively on its assessment of the level of skill in the art. Moreover, each party’s declarant appears to meet or exceed both parties’ assessments (see Ex. 1107 ¶¶ 2–4, Attachment A; Ex. 2011), and either assessment of the level of skill in the art is consistent with the ’654 patent and the asserted prior art. We adopt Mr. Zatarain’s assessment and apply it to our obviousness evaluation below, but note that our conclusions would be the same under Mr. Denning’s assessment.” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“skill in the art would have had sufficient reason to combine the teachings of Levac with Shetty and Garton, we note that the Supreme Court has held that an obviousness evaluation “cannot be confined by a formalistic conception of the words teaching, suggestion, and motivation, or by overemphasis on the importance of published articles and the explicit content of issued patents.” KSR, 550 U.S. at 419. Instead, the relevant inquiry is whether Alarm.com has set forth “some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), cited with approval in KSR, 550 U.S. at 418. When describing examples of what may constitute a sufficient rationale to combine, the Supreme Court elaborated that, “if 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. After considering the record in its entirety, we are persuaded that Alarm.com’s rationale for combining the teachings of Shetty, Levac, and Garton suffices as articulated reasoning with rational underpinnings to support the legal conclusion of obviousness. When, as here, a technique has been used to improve one device (i.e., Levac’s messaging system creates an .msa file that may incorporate a particular message and a list of destination parameters, such as a recipient site location, required for transmitting a message to a particular destination), and one of ordinary skill in the art would have recognized that it would improve similar devices in the same way (i.e., using the aforementioned disclosure in Levac to improve Shetty’s system), using the technique is obvious unless its actual application is beyond the skill level of an ordinarily skilled artisan. See KSR, 550 U.S. at 417; Pet. 31–33; Ex. 1107 ¶¶ 125–128; see also In re Ethicon, Inc., 844 F.3d 1344, 1351 (Fed. Cir. 2017) (Our reviewing court has recognized “[t]he normal desire of artisans to improve upon what is already generally known.”). Apart from generally asserting that neither Alarm.com nor Mr. Zatarain provides the “what,” “how,” and “why” for the asserted combination of Shetty and Levac (see PO Resp. 51–52), Vivint does not present credible evidence that combining the teachings of these references in the manner proposed by Alarm.com would have been uniquely challenging or otherwise beyond the skill level of an ordinarily skilled artisan.” slip op. at 49
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation foundDecided for petitioner
“Mintz to support its argument that Alarm.com must look to the problem solved by the ’654 patent in its obviousness evaluation, we do not agree. In KSR, the Supreme Court made clear that it is error to “hold[] that courts and [petitioners] should look only to the problem the patentee was trying to solve.” KSR, 550 U.S. at 420. The Supreme Court explained that [t]he question is not whether the combination was obvious to the patentee but whether the combination was obvious to a person with ordinary skill in the art. Under the correct analysis, any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed. Id. Here, as we explain above, Alarm.com provides sufficient reasoning as to why one of ordinary skill in the art would have understood that Shetty allows a user to remotely access user profile database 106 via user interface 110 to configure profiles stored therein. See Pet. 21–23; Pet. Reply 14–16. Alarm.com’s reasoning in this regard is directed specifically to the subject matter at issue in independent claims 9 and 27, and Alarm.com provides sufficient evidence in the record to support its reasoning. As a result, instead of presenting reasoning that is based on impermissible hindsight reconstruction, as asserted by Vivint, Alarm.com has articulated sufficient reasoning as to why one of ordinary skill in the art would have had reason to extend Shetty’s teaching of user access to user profile database 106 via user interface 110 to provide for remote configuration of the profiles stored therein.” slip op. at 42
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“Alarm.com’s explanations and supporting evidence as to how the combination of Shetty and Garton teaches or suggests the remaining limitations recited in independent claims 9 and 27, nor does Vivint address the reasons provided by Alarm.com as to how or why a person of ordinary skill in the art would have combined the teachings of Shetty and Garton. See generally PO Resp. 14–42. We have reviewed Alarm.com’s explanations and supporting evidence in this regard, and we are persuaded that the combination of Shetty and Garton teaches or suggests each such limitation (see Pet. 17–23, 29–31, 33–37, 40–41, and evidence cited therein), as well as that Alarm.com’s rationale for combining the teachings of Shetty and Garton suffices as articulated reasoning with rational underpinnings to support the legal conclusion of obviousness (id. at 31–33; Ex. 1007 ¶ 128). (4) Conclusion We conclude that Alarm.com has demonstrated by a preponderance of the evidence that the subject matter of independent claims 9 and 27 would have been obvious over the combined teachings of Shetty.” slip op. at 45
Patent outcomesUS 6,462,654 mixedClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,462,654 - Alarm.Com Inc. v. Vivint, Inc.Some claims unpatentablePTAB · May 2, 2017 · IPR2016-00173 · APJ Michael R Zecher · IPR · Final written decision
Claims 1, 2, 4–6, 10, 13, and 15–17 were held unpatentable under § 103; the remaining challenged claims were not shown unpatentable.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“the knowledge level of a person of ordinary skill in the art. Alarm.com’s declarant, Mr. Zatarain, testifies that a person of ordinary skill in the art as of January 1999 would be an individual who possesses (1) at least a bachelor’s degree in computer science, electrical engineering, computer engineering, or equivalent coursework; and (2) at least two years of experience in remote monitoring and control systems. Ex. 1106 ¶ 11; Pet. 7 (stating the same). Vivint’s declarant, Mr. Denning, testifies that a person of ordinary skill in the art as of January 1999 would be an individual who possesses (1) at least a bachelor’s degree in electrical engineering or computer science; and (2) at least four years of experience in remote monitoring and control systems. Ex. 2010 ¶ 15. We do not discern a material difference between the assessments advanced by the declarants, nor does either party premise its arguments exclusively on its assessment of the level of skill in the art. Moreover, each party’s declarant appears to meet or exceed both parties’ assessments (see Ex. 1106 ¶¶ 2–4, Attachment A; Ex. 2011), and either assessment of the level of skill in the art is consistent with the ’123 patent and the asserted prior art. We, therefore, adopt Mr. Zatarain’s assessment and apply it to our obviousness evaluation below, but note that our conclusions would be the same under Mr. Denning’s assessment.” slip op. at 22
- Expert testimonyPatent owner expert creditedDecided for patent owner
“In our claim construction section above, we construe the claim term “communication device identification codes” as including either a device ID or serial number of a device. See supra Section II.A.2. Shetty’s telephone numbers and email addresses are not consistent with this construction because they do not identify uniquely a specific device. See Ex. 1103, 2:18– 21, 3:18–20. We also credit Vivint’s declarant, Mr. Denning’s, testimony on this particular issue. See Ex. 2010 ¶¶ 127–130. In particular, Mr. Denning testifies that “[Shetty’s] system can dial a particular phone number, and it will reach whatever device is tied to that phone number at the moment. It is not device-specific.” Id. ¶ 129 (emphasis added). He also testifies that, “[s]imilarly, [Shetty’s] system could send an email, and the recipient would be able to retrieve that email from nearly any Internet-accessible computer device. Again, this is not device-specific.” Id. ¶ 130 (emphasis added). We, therefore, agree with both Vivint and Mr. Denning that Shetty does not teach or suggest the claimed “communication device identification codes.” See PO Resp. 36–37; Ex. 2010 ¶¶ 127–130.” slip op. at 48
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“patent, we discern no reason to modify the construction of the claim phrase “message profile containing outgoing message routing instructions” set forth in the Decision on Institution. As we explained in that Decision, we interpret the statement in the ’123 patent that “a list of who to contact via what means depending on which fault has occurred may be referred to as a ‘message profile’” (Ex. 1101, 2:34–36 (emphasis added)), at most, reflects that “a list of who to contact via what means depending on which fault has occurred” could be an example of a message profile, and does not necessarily require “a list of who to contact.” Dec. on Inst. 10. Although we acknowledge Vivint’s interpretation of the phrase “may be referred to as a ‘message profile’” as indicating that “message profile” simply is one of “many” names that could be given to “a list of who to contact via what means depending on which fault has occurred” (see PO Resp. 3, 31), we do not agree with Vivint that its proposed construction of “message profile” represents the broadest reasonable interpretation in light of the Specification of the ’123 patent. As we pointed out in the Decision on Institution, the ’123 patent includes embodiments, in which, for example, multiple messages are sent to multiple recipients via differing media for the same exception condition (Ex. 1101, 4:8–11), or the same person is contacted by different means (e.g., fax or personal communication service) at different times (id. at 6:17–18). Dec. on Inst. 10–11. Vivint’s proposed construction, requiring the message profile to specify “which communication device associated with which individuals” (PO Resp. 31), would exclude such embodiments. In view of the full record developed during trial, we remain unpersuaded by Vivint’s argument that the statement in the specification of the ’123 patent that “a list of who to contact via what means depending on which fault has occurred may be referred to as a ‘message profile’” (Ex. 1101, 2:34–36) provides the requisite “clarity, deliberateness, and precision” to indicate that the patentees intended to act as their own lexicographer and disclaim the embodiments identified above. See Dec. on Inst. 10–11; In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004) (“We have cautioned against reading limitations into a claim from the preferred embodiment described in the specification, even if it is the only embodiment described, absent clear disclaimer in the specification.”); Paulsen, 30 F.3d at 1480 (an inventor may define specific terms used to describe invention, but must do so “with reasonable clarity, deliberateness, and precision” and, if done, must “‘set out his uncommon definition in some manner within the patent disclosure’ so as to give one of ordinary skill in the art notice of the change” in meaning). Accordingly, we again conclude that the broadest reasonable interpretation of “message profile containing outgoing message routing instructions” is a “data record including instructions specifying at least one communication device to which an outgoing message can be routed in response to an incoming exception message.” This construction is consistent with the ordinary and customary meaning of this claim phrase, as would be understood by one with ordinary skill in the art, in light of the claims and specification of the ’123 patent. See Ex. 1101, 2:34–36, 4:8–11, 6:17–18.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentableUnpatentable
“Shetty and Levac, we note that the Supreme Court has held that an obviousness evaluation “cannot be confined by a formalistic conception of the words teaching, suggestion, and motivation, or by overemphasis on the importance of published articles and the explicit content of issued patents.” KSR, 550 U.S. at 419. Instead, the relevant inquiry is whether Alarm.com has set forth “some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), cited with approval in KSR, 550 U.S. at 418. When describing examples of what may constitute a sufficient rationale to combine, the Supreme Court elaborated that, “if 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. When considering the record in its entirety, Alarm.com’s rationale for combining the teachings of Shetty and Levac suffices as articulated reasoning with rational underpinnings to support the legal conclusion of obviousness. When, as here, a technique has been used to improve one device (i.e., Levac’s messaging system creates an .msa file that may incorporate a particular message and a list of destination parameters, such as a recipient site location, required for transmitting a message to a particular destination), and one of ordinary skill in the art would have recognized that it would improve similar devices in the same way (i.e., using the aforementioned disclosure in Levac to improve Shetty’s system), using the technique is obvious unless its actual application is beyond the skill level of an ordinarily skilled artisan. See KSR, 550 U.S. at 417; Pet. 27–28; Ex. 1106 ¶¶ 96–98; see also In re Ethicon, Inc., 844 F.3d 1344, 1351 (Fed. Cir. 2017) (The Federal Circuit previously has recognized “[t]he normal desire of artisans to improve upon what is already generally known.”). Apart from generally asserting that neither Alarm.com nor Mr. Zatarain provide the “what,” “how,” and “why” for the asserted combination of Shetty and Levac (see PO Resp. 38–40), Vivint does not present credible evidence that combining the teachings of these references in the manner proposed by Alarm.com would have been uniquely challenging or otherwise beyond the skill level of an ordinarily skilled artisan. Based on the record developed during trial, we conclude that Alarm.com has demonstrated by a preponderance of the evidence that the subject matter of dependent claims 5 and 16 would have been obvious over Shetty and Levac.” slip op. at 53
Patent outcomesUS 6,535,123 mixedClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,535,123 - Ericsson Inc. / Telefonaktiebolaget LM Ericsson v. Intellectual Ventures I LLCSome claims unpatentablePTAB · Dec 9, 2015 · IPR2014-01149 · APJ William A Capp · IPR · Final written decision
Claims 18–22 and 43–44, 46–49 are unpatentable as obvious; claims 25–26, 55–59, and 62–63 were not shown unpatentable.
RulingsFinal written decision- ExcludeMotion to exclude, deniedDenied
“The complete exclusion of Dr. Cimini’s testimony is not warranted or necessary here. Intellectual Ventures argues that the instant dispute concerning Dr. Cimini’s testimony should not affect the admissibility of his opinion, but merely the weight the Board accords his opinion. Paper 49, 12. This is the path we choose to follow. By shielding Dr. Cimini from the Robertson CMS reference so that he did not address it in his declaration and was unprepared to testify about it at this deposition, Intellectual Ventures deprived itself of an opportunity to respond to Ericsson’s case. Accordingly, we DENY Ericsson’s motion to exclude 60–65, 79, 80, and 93 of Dr. Cimini’s declaration testimony (Ex. 2009), but discount the weight to be given such testimony in light of the foregoing discussion.” slip op. at 9
- Adverse judgmentDenied
“Under 37 C.F.R. § 42.73, a party may obtain termination of a proceeding by requesting entry of adverse judgment. However, we do not interpret Ericsson’s request as a request for entry of adverse judgment. To the contrary, we view Ericsson’s motion as an effort to prevent entry of an adverse judgment under circumstances where Ericsson reserves the right to challenge the patentability of claims 55–59, in this or another forum. Finally, Ericsson relies on our extraordinary and discretionary powers under 37 C.F.R. § 42.5(a) as a basis for grant of the relief sought. In denying Ericsson’s previous motion to correct the petition, we considered whether it was an appropriate exercise of our extraordinary powers to allow Ericsson to correct its petition. Paper 31, 14–15. We concluded that it was not. Id. Many of the same considerations that informed our decision to deny Ericsson’s motion to correct its petition also militate against a grant of relief in the instant situation.” slip op. at 20
- BurdenFwd mixedNot shown unpatentable
“Ericsson concedes that the mistake in its Petition with respect to claims 55–59 is a “fatal flaw” and, consequently, it wants to remove those claims from the proceeding. Tr. 74:3–8, a copy/paste error that originated in Mr. Lanning’s Declaration resulted in a deficient analysis of independent claims 55 and its dependent claims 56–59 . . . [a]t this point in the trial, both Patent Owner and Petitioner agree that the Petition is defective with respect to claim 55–59. Paper 52, 5–6. In view of the foregoing, we find that Ericsson has failed to carry its burden of proof with respect to the unpatentability of independent claim 55 and claims 56–59 that depend therefrom.” slip op. at 23
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“In our Decision to Institute, we construed “systematic convolutional encoder” on a preliminary basis, as an encoder that may output both encoded data and also original data (or its equivalent). In the Decision to Institute, we criticized Ericsson’s proposed construction because it focused on what it means for a coding system to be systematic to the exclusion of how the adjective “convolutional” also modifies the word “encoder.” DI 8–9. Similarly, we criticized Intellectual Ventures’s proposed construction because it focused on what it means for a coding system to be “convolutional,” to the exclusion of what it means to be “systematic.” Id. at 9. In the Decision to Institute, we admonished the parties to give 18 Claim 18 claims a “systematic recursive convolutional encoder.” Ex. 1001, 25:49. 19 Claim 43 is a method claim that claims “systematic convolutional encoded output elements.” Ex. 1001, 29:57. 20 Claim 55 is a method claim that claims “systematic convolutional encoded intermediate output elements.” Ex. 1001, 30:61–62. 21 Claim 62 is a method claim that claims “systematic convolutional encoded output elements.” Ex. 1001, 31:60–61. attention to our points of criticism in their respective Patent Owner’s Response and Petitioner’s Reply. Id. We instituted a trial on less than all challenged claims. DI. In particular, we did not institute a trial on claim 6. DI 14. In its Patent Owner’s Response, Intellectual Ventures indicated that the Board need not construe this term to resolve the instituted grounds. PO Resp. 13. In its Petitioner’s Reply, Ericsson simply states that it agrees with the Board’s claim construction in the Decision to Institute. Reply 6. The parties’ respective positions, as developed in Intellectual Ventures’s Patent Owner’s Response and Ericsson’s Reply do not rely on competing constructions of this term. Accordingly, we do not modify the construction of this term as set forth in our Decision to Institute. 2. “coded output elements” - “encoded output elements” (Claims 18, 19,” slip op. at 24
Patent outcomesUS 6,023,783 mixedClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 6,023,783 - 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
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.