• Apple Inc. / Fitbit, Inc. v. Valencell, Inc.Some claims unpatentable
  PTAB · 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 mixed
  Claim constructioncites KSR · Graham
  Patents in suitUS 8,923,941
• Dell Inc. / Riverbed Technology, Inc. et al. v. Realtime Data LLCNo claims unpatentable
  PTAB · Oct 31, 2017 · IPR2017-00364 · APJ Jason J Chung · IPR · Final written decision

  Petitioner failed to prove claims 1, 2, 4–6, 9, 11, 21, 22, 24, and 25 unpatentable because it did not establish a reasonable expectation of success combining the cited references.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner confirms that Petitioner’s statements regarding the level of ordinary skill in the art are partially consistent with Patent Owner’s view, but, nonetheless, Patent Owner contends that an ordinarily skilled artisan would be the “ultimate generalist.” Ex. 2017 ¶¶ 16–17 (citing Ex. 2015, 84:13–20). We do not observe a meaningful differences between the parties’ assessments of a person of ordinary skill in the art. We further note that either assessment appears consistent with the level of ordinary skill in the art at the time of the invention as reflected in the prior art in the instant proceeding. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Moreover, Dr. Creusere appears to satisfy either assessment. Our analysis in this Decision is supported by either assessment, but, for purposes of this Decision, we adopt Petitioner’s assessment.” slip op. at 7

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

    “The parties do not argue a claim construction for any terms. See generally PO Resp.; Reply. In the Decision to Institute, we did not construe any terms. Dec. 4–5. We determine that no terms require express construction for purposes of this Decision. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (only those claim terms or phrases that are in controversy need to be construed, and only to the extent necessary to resolve the controversy).” slip op. at 8

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner

    “the art would have a reasonable expectation of success (Ex. 1002 ¶¶ 131– 132), on this record, we cannot reconcile paragraphs 131–132 of his declaration when faced with the plethora of his own testimony on cross-examination to the contrary, such as his acknowledgement of “unlimited” permutations that were “impossible” to address. E.g., Ex. 2015, 81:21– 83:24, 84:13–24, 143:20–144:3. Stated differently, in his initial position, Dr. Creusere testifies a person having ordinary skill in the art would have a reasonable expectation of success (Ex. 1002 ¶¶ 131–132), while his later testimony vacillates to a stance that makes it difficult to demonstrate a reasonable expectation of success–– i.e., the existence of “unlimited” permutations that were “impossible” to address. Ex. 2015, 81:21–83:24, 84:13–24, 143:20–144:3. We find this testimony contradictory. In summary, neither the Petition, Dr. Creusere’s declaration, nor his deposition testimony provide any indication as to how a person having ordinary skill in the art would select among the countless permutations or further narrow the set of choices. Petitioner’s modeling, simulation, and testing theory fails to satisfy sufficiently its “reasonable expectation of success” theory evidentiary burden pursuant to the Federal Circuit’s decision in In re Kubin, 561 F.3d 1351, 1359 (Fed. Cir. 2009) (it is “improper” to argue an obviousness theory on the basis that “it would have been ‘obvious to try’ . . . to vary all parameters or try each of numerous possible choices until one possibly arrived at a successful result.”). Leo Pharm. Prod., Ltd. v. Rea, 726 F.3d 1346, 1357 (Fed. Cir. 2013) (“obviousness law in general recognizes an important distinction between combining known options into ‘a finite number of identified, predictable solutions,’ and ‘merely throwing metaphorical darts at a board’ in hopes of arriving at a successful result.”). Furthermore, the Federal Circuit explained in Kubin, the Board should not use hindsight based on allegations that require that the person having ordinary skill in the art to randomly pick from a board filled with combinational prior art possibilities. Kubin, 561 F.3d at 1359. To paraphrase, Petitioner is attempting to bypass its evidentiary burden of having to proffer particular evidence of a specific combination, which would teach the “faster than” limitation recited in claims 1, 21, and 25 by instead repeating that “modeling, simulation, and testing” leads to a reasonable expectation of success (Pet. 28); whereas, in this proceeding, the number of permutations and variables are “unlimited” and “impossible” to address, as acknowledged by Dr. Creusere (Ex. 2015, 81:21–83:24, 84:13– 24, 143:20–144:3). That is, Petitioner’s attempt at crafting a theory of obviousness using non-specific teachings from Franaszek and Osterlund that allegedly demonstrate a reasonable expectation of success; this attempt, however, falls significantly short of the Federal Circuit’s requirements. Another obstacle to our reliance on Dr. Creusere’s vacillating opinions is Patent Owner’s declarant, Dr. Kenneth A. Zeger, Ph.D. Dr. Zeger opines in his declaration that Franaszek illustrates complex choices a person having ordinary skill in the art would face in considering whether and how to modify Franaszek in light of Osterlund on this record. Ex. 2017 ¶¶ 152–169. In particular, Dr. Zeger opines that Franaszek’s approach requires numerous steps that each create delays before compression occurs, which are illustrated in Dr. Zeger’s figure below. Id.” slip op. at 18

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

    “Put another way, we do not find that Petitioner demonstrates a “reasonable expectation of success” when Dr. Creusere acknowledges that a person having ordinary skill in the art did not specify whether to discard or keep Franaszek’s sampling approach, or would use only Franaszek’s teachings of compression algorithms, or incorporate other such algorithms, or what data type or data types an intended system teaches would be created to compress, or what specific goals and objectives the person having ordinary skill in the art would have had reason to achieve. Compare id. at 75:18–76:19, 126:20–127:1, 76:24–78:6, 94:4–12, 96:4–98:14 with Ex. 1002 ¶¶ 121–134; Ex. 2017 ¶¶ 165–167. Instead, Petitioner simply asserts, in a conclusory manner, that “[b]ecause the relevant art is predictable and compression algorithms and transmission times may be modeled, simulated, and easily tested, a person of ordinary skill in the art would have had a reasonable expectation of success in combining these various teachings found in the prior art to arrive at the claimed invention” (emphasis added). Pet. 28 (citing Ex. 1002 ¶¶ 131–132). Notably, Dr. Creusere acknowledges that the number of possible permutations faced by a person having ordinary skill in the art would have been “unlimited” and that it was “impossible” for him to address “all the permutations of those possibilities.” Id. at 81:21–83:24, 84:13–24, 143:20– 144:3. Although Dr. Creusere opines that a person having ordinary skill in the art would have a reasonable expectation of success (Ex. 1002 ¶¶ 131– 132), on this record, we cannot reconcile paragraphs 131–132 of his declaration when faced with the plethora of his own testimony on cross-examination to the contrary, such as his acknowledgement of “unlimited” permutations that were “impossible” to address. E.g., Ex. 2015, 81:21– 83:24, 84:13–24, 143:20–144:3. Stated differently, in his initial position, Dr. Creusere testifies a person having ordinary skill in the art would have a reasonable expectation of success (Ex. 1002 ¶¶ 131–132), while his later testimony vacillates to a stance that makes it difficult to demonstrate a reasonable expectation of success–– i.e., the existence of “unlimited” permutations that were “impossible” to address. Ex. 2015, 81:21–83:24, 84:13–24, 143:20–144:3. We find this testimony contradictory. In summary, neither the Petition, Dr. Creusere’s declaration, nor his deposition testimony provide any indication as to how a person having ordinary skill in the art would select among the countless permutations or further narrow the set of choices. Petitioner’s modeling, simulation, and testing theory fails to satisfy sufficiently its “reasonable expectation of success” theory evidentiary burden pursuant to the Federal Circuit’s decision in In re Kubin, 561 F.3d 1351, 1359 (Fed. Cir. 2009) (it is “improper” to argue an obviousness theory on the basis that “it would have been ‘obvious to try’ . . . to vary all parameters or try each of numerous possible choices until one possibly arrived at a successful result.”). Leo Pharm. Prod., Ltd. v. Rea, 726 F.3d 1346, 1357 (Fed. Cir. 2013) (“obviousness law in general recognizes an important distinction between combining known options into ‘a finite” slip op. at 17

  Patent outcomesUS 9,116,908 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,116,908
• Qualcomm Incorporated v. Bandspeed, Inc.Some claims unpatentable
  PTAB · 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 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,873,500
• Blue Coat Systems, Inc. v. Finjan, Inc.Rehearing granted
  PTAB · Jul 18, 2017 · IPR2016-01444 · APJ Patrick M Boucher · IPR · Rehearing

  Granted Blue Coat’s rehearing request and instituted review of claims 1, 4–6, 9, 12–14, 17, 24, 35, and 37; the petition showed a reasonable likelihood of prevailing on the asserted § 103 grounds.

  RulingsRehearing decision

  • RehearingRehearing, grantedGranted

    “reexamination proceeding. Of particular relevance, the reexamination concluded with a Reexamination Certificate issued on November 28, 2016, including a claim for the benefit of the November 8, 1996 filing date of U.S. Provisional Appl. No. 60/030,639 (“the ’639 provisional application”). Ex. 3006 at [60]. In denying the Petition, the Prior Decision noted that “Petitioner has taken no steps to explain or respond to the effect of these developments on its argument.” Dec. 7. This remains true. Nevertheless, we agree with Petitioner that our Prior Decision gave insufficient consideration to the Petition’s assertion that “U.S. Patent No. 7,613,926 [(“the ’926 patent”), i.e., an intermediate patent in the priority chain of the ’086 patent] fails to claim priority to the ’639 provisional application and instead the earliest priority document cited in the ’926 patent is [the ’194 patent].” Pet. 5 (citing Ex. 1012, col. 1, ll. 8–32); see Req. Reh’g 4–5, 6 n.4, 7–9. For a claim of a patent to be entitled to the effective filing date of an earlier filed application, each application in the priority chain must refer to the earlier filed application. Encyclopaedia Britannica, Inc. v. Alpine Elecs. of Am., Inc., 609 F.3d 1345, 1350–52 (Fed. Cir. 2010). Accordingly, we grant Petitioner’s Rehearing Request and proceed to the merits of the Petition.” slip op. at 8

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

    “a formally defined safety policy” and allows checking “with certainty, that the proof is valid and hence the foreign code is safe to execute.” Ex. 1004, 107. Thus, Petitioner argues that one of ordinary skill in the art would reasonably understand Necula to teach that its proof-carrying code adds to the foreign code, consistent with the construction of “append” that we apply herein, and Petitioner articulates sufficient reasoning with rational underpinning to apply that teaching to Swimmer’s representation of DSP data. See Pet. 46–49. This is not an instance, for example, in which Petitioner relies on a characterization of the problem provided by the patent to derive its reasoning. Cf., e.g., Mintz v. Dietz & Watson, Inc., 679 F.3d 1372 (Fed. Cir. 2012). Indeed, Patent Owner’s contention that “the storage of the DSP in a database is one of the key features that distinguishes the ‘086 Patent over the prior art” dilutes the strength of its argument. The contrary positions of the parties’ declarants in their testimonial evidence creates a genuine issue of material fact, which we resolve in the light most favorable to Petitioner for purposes of this Decision. 37 C.F.R. § 42.108(c). Accordingly, we conclude that Petitioner has made a sufficient showing also with respect to these elements, and that Petitioner demonstrates a reasonable likelihood of prevailing on its challenge of claims 1 and 9. See infra Section II.E.10 (discussing limits in our weighing of Patent Owner’s Secondary Considerations evidence in this Preliminary Proceeding).” slip op. at 21

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

    “be considered under 35 U.S.C. § 312 because Petitioner has failed to name all real parties in interest, as required by the statute.” Prelim. Resp. 9. The parties agree that, on June 12, 2016, Symantec Corporation (“Symantec”) announced that it was acquiring Petitioner. Pet. 13; Prelim. Resp. 9. The Petition discloses that “[t]he transaction is expected to close in the third quarter of 2016,” and that “[a]s of the filing date of this petition the transaction has not been executed.” Pet. 13. The Petition further represents that “Symantec has not controlled or had the ability to control the filing of this petition, whether through funding or strategy.” Id. As noted above, Petitioner expressly identified Symantec as a real party in interest before any decision on institution of an inter partes review was made. Paper 8, 2. Patent Owner contends that “Symantec had control over the filing of the Petition during the period between the announcement of the acquisition and the closing of the acquisition,” which it asserts occurred on August 1, 2016. Prelim. Resp. 9. Patent Owner also contends that it “understands from the underlying litigation that ‘Blue Coat Systems, Inc.’ no longer exists 1 A petition to accept an unintentionally delayed claim of priority for the ’926 patent, claiming the benefit of U.S. Patent Appl. No. 08/790,097 which was filed January 29, 1997, was dismissed by the Office on June 13, 2017. Exs. 1027, 3007. A renewed petition was filed on June 16, 2017. Ex. 3008. At this time, the Office has not ruled on the renewed petition, and that pending petition accordingly does not affect our determination of the challenged claims’ effective filing date for purposes of this Decision. as an entity, or at least goes by ‘Blue Coat Systems LLC’ for at least the last two months.” Id. at 10. We have reviewed the evidence provided by Patent Owner and find it insufficient to support Patent Owner’s allegation that Petitioner has failed to comply with 35 U.S.C. § 312(a) or 37 C.F.R. § 42.8(a)(3). That evidence is, at best, suggestive regarding an issue that is not jurisdictional. Lumentum Holdings, Inc. v. Capella Photonics, Inc., Case IPR2015-00739, slip op. (PTAB Mar. 4, 2016) (Paper 38) (precedential).” slip op. at 9

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

    “1. “Downloadable” Every challenged independent claim recites a “Downloadable,” and Petitioner contends that “[t]he broadest reasonable interpretation of the term ‘downloadable’ includes ‘an executable application program, which is downloaded from a source computer and run on a destination computer.’” Pet. 15. Petitioner’s proposed construction parallels a statement made in the Specification of the ’194 patent. Ex. 1012, col. 1, ll. 44–47. Patent Owner “does not dispute” this proposed construction, which we adopt for purposes of this Decision. Prelim. Resp. 5. 2. “database” Challenged independent claim 42 recites “a database of Downloadable security profiles.” Petitioner contends that “[t]he broadest reasonable interpretation of the term ‘database’ includes ‘a collection of interrelated data organized according to a database schema to serve one or more applications.’” Pet. 15. Patent Owner also “does not dispute” this proposed construction, but argues that “the practical import of Petitioner’s proposed construction for the term ‘database,’ is that log files, such as Swimmer’s audit trail, do not fall within the scope of the claims.” Prelim. Resp. 5–6. That is, Patent Owner contends that “logging functionality is distinct from storing in a database, which allows DSP to be efficiently retrieved from the database,” as compared with the “record-keeping” functionality of an “event log.” Id. at 7. Patent Owner’s argument was considered by the panel in IPR2015- 01892, which concluded that, “[t]o the extent that construction would exclude a log file consisting of an ‘unstructured collection of data on a computer,’ . . . [an] unstructured log file would not be a database,” but the construction does not “necessarily exclude[] all log files from being databases.” 1892 Dec. 16 (emphasis in original). We agree with the reasoning expressed in the Final Written Decision of IPR2015-01892. Id. at 12–17. For purposes of this Decision, we adopt Petitioner’s proposed construction.” slip op. at 10

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips
  Patents in suitUS 8,079,086
• Alarm.Com Inc. v. Vivint, Inc.Some claims unpatentable
  PTAB · 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 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,462,654
• HTC Corporation / HTC America, Inc. v. Parthenon Unified Memory Architecture LLCAll claims unpatentable
  PTAB · Jan 4, 2017 · IPR2015-01501 · APJ James B Arpin · IPR · Final written decision

  Claims 1–4 are unpatentable under § 103 as obvious over Bowes and MPEG, with Stearns for claim 3 and Shanley for claim 4.

  RulingsFinal written decision

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

    “Pet. vi–vii. Patent Owner filed a Preliminary Response (Paper 7). On January 6, 2016, we issued an Institution Decision (Paper 12, “Inst. Dec.”), instituting inter partes review on the following grounds: References Basis Claim(s) challenged Bowes and MPEG 35 U.S.C. § 103(a) 1 and 2 Bowes, MPEG, and Stearns 35 U.S.C. § 103(a) 3 Bowes, MPEG, and Shanley 35 U.S.C. § 103(a) 4” slip op. at 3

  • RehearingRehearing, deniedDenied

    “After institution, Petitioner filed a Request for Rehearing (Paper 14), which we denied (Paper 17), seeking reconsideration of our denial of institution of review with respect to claims 7–10 and 12. Patent Owner then filed a Patent Owner Response to the Petition (Paper 21, “PO Resp.”), and Petitioner replied (Paper 32, “Reply”). A hearing for the instant proceeding and related Cases IPR2015-01500 and IPR2015-01502 was held on September 19, 2016. A transcript (Paper 52, “Tr.”) of that hearing is included in the record.” slip op. at 3

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

    “Neither Petitioner nor Patent Owner offers other constructions of any claim term in the challenged claims. See Pet. 8–11. Only terms which are in controversy in this proceeding need to be construed, and then only to the extent necessary to resolve the controversy. 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 Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). For purposes of this Final Written Decision, no claim terms require express construction.” slip op. at 9

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “3 Petitioner proposes an assessment for a person of ordinary skill in the art. Pet. 11 (citing Ex. 1030 ¶¶ 78–81); see Ex. 2009 ¶ 24. Patent Owner’s declarant, Dr. Thornton, proposes an alternative assessment for a person of ordinary skill in the art. Ex. 2009 ¶ 25. Nevertheless, Dr. Thornton testifies that “my analysis and conclusions would remain unchanged” regardless of which assessment is applied. Id. ¶ 26; see Tr. 40:8–42:11, 76:20–77:9. To the extent necessary and for purposes of this Final Written Decision, we adopt Petitioner’s assessment, which each party’s declarant meets or exceeds. See Ex. 1030 ¶¶ 2–6; Ex. 2009 ¶¶ 5–11. 4 Patent Owner does not contend in the Patent Owner Response that such secondary considerations are present. See Paper 13, 6 (“Patent Owner is cautioned that any arguments for patentability not raised in the response will be deemed waived.”). 5 There is no requirement to enumerate each Graham factor and to include findings specifically in terms of the factors as long as “the required factual determinations were actually made and it is clear that they were considered while applying the proper legal standard of obviousness.” Specialty Composites v. Cabot Corp., 845 F.2d 981, 990 (Fed. Cir. 1988).” slip op. at 10

  Patent outcomesUS 7,777,753 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,777,753
• Micron Technology, Inc. v. Innovative Memory Systems, Inc.Rehearing granted
  PTAB · Jul 1, 2016 · IPR2016-00326 · APJ Kevin W Cherry · IPR · Rehearing

  On rehearing, the Board instituted IPR on claims 1, 2, and 13 based on anticipation by Anderl and obviousness over Anderl or Anderl and Hendry.

  RulingsRehearing decision

  • RehearingRehearing, grantedGranted

    “On June 17, 2016, Patent Owner filed a Request for Rehearing (Paper 13, “Request” or “Reh’g Req.”) of our Decision to Institute (Paper 10, “Decision”) an inter partes review in this case. We have reviewed Patent Owner’s Request, and we agree that we overlooked the matters identified in the Request. See Reh’g Req. 2–4. Thus, for the reasons stated in the Request, we grant Patent Owner’s Request for Rehearing. On rehearing, we withdraw our previous Decision and reconsider our Decision in light of the full record, as Patent Owner requests. Id. at 4. Pursuant to this reconsideration, we issue the instant Amended Decision to Institute.” slip op. at 2

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

    “determine that the information presented shows there is a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of claims 1, 2, and 13 (“the challenged claims”) of the ’537 patent.” slip op. at 2

  • BurdenOther

    “limitation, we are persuaded that Petitioner has shown adequately that Anderl discloses “said appended information featuring said at least one associated type of permission for accessing the stored data,” as recited in claim 1. Patent Owner focuses narrowly on the value of the data included in protection bytes 43 to 45 of Anderl. See Prelim. Resp. 13–15. Yet the claim does not focus only on the data alone, but instead recites “appended information.” As the Petition explains, Anderl discloses that the information is appended based on location in file as the value at the particular location. See Pet. 23–24. In particular, Anderl discloses that each file includes prefix section 41 that is located in the first record of each file and contains file identification number 42 and protection bytes 43, 44, and 45. Ex. 1005, 6:57–60. Anderl states that “[t]he protection bytes 43 through 45 specify the file permissions.” Id. at 6:65–66 (emphasis added). As Anderl discloses,” slip op. at 20

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner

    “not persuaded that “type of permission” is limited to only the type of action that can be performed, e.g., reading or writing, with respect to the data. Instead, the Specification repeatedly refers to the “types of permissions” as “for determining access to the stored data, such that if an attempt is made to access particular data which does not have a suitable permission type, access is denied.” See, e.g., Ex. 1001, Abstract (“The device, method and system enable various types of permissions to be set for determining access to the stored data, such that if an attempt is made to access particular data which does not have a suitable permission type, access is denied.”); 2:32–36 (“The present invention enables various types of permissions to be set for determining access to the stored data, such that if an attempt is made to access particular data which does not have a suitable permission type, access is denied.”); 3:4:26–30 (same). Given this broader usage in the Specification, for purposes of this decision, the “type of permission” is for determining access to the stored data, such that if an attempt is made to access particular data that does not have a suitable permission type, access is denied. The access, if not denied, may include reading from or writing to the stored data. As for “featuring,” we are not persuaded that “featuring,” as used in claim 1 of the ’537 patent is synonymous with “represent,” as Patent Owner contends. A relevant meaning of “featuring” is “to be an important part or aspect of something.” See Ex. 3001. This meaning only requires that the thing that is featured be an important part or aspect, not that it correspond to or represent the thing. Patent Owner does not point us to any disclaimer or definition that would limit this meaning. See Prelim. Resp. 13–15. Instead, the Specification appears to use the related term “feature” in this ordinary sense. See, e.g., Ex. 1001, 4:54–56 (“As another option, the device may feature a single chip with a microprocessor and firmware for operating the data access features ….”); 5:25– 27 (“A system 10 features a CPU 12 for executing instructions….”); 8:15–19 (“For example, an access control code could be implemented with a combination of different types of data, each of which could again feature a separately selected and assigned data access permission, which optionally and preferably is different for each portion of the data.”). Moreover, the portion of Specification cited by Patent Owner (Prelim. Resp. 12–13 (citing Ex. 1001, 6:34–61)) makes clear that it only refers to a preferred embodiment and the permissions do not need to be stored as a “code,” i.e., specific information or data representing the permission. See id. at 6:35–36 (“According to preferred embodiments…”), 6:43–47 (“If such a permission is to be stored in an abbreviated code, the code for this particular type of permission could be given as ‘R/W/WP’, for example. Such a code could optionally be stored in the non-volatile 16, for example.” (emphases added)). Such optional language is not sufficient to limit the claimed “appended information” to only something that “represents” the permission, such as a code. See Prolitec Inc. v. Scentair Techs., Inc., 807 F.3d 1353, 1358 (Fed. Cir. 2015) (“[T]he use of ‘may’ signifies that the inventors did not intend to limit [the claim]. . . .”); Ancora Techs., Inc. v. Apple, Inc., 744 F.3d 732, 735 (Fed. Cir. 2014) (noting that non-limiting examples are not sufficient to redefine a term).” slip op. at 8

  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 6,324,537
• Symantec Corp. v. Finjan, Inc.Rehearing denied
  PTAB · May 23, 2016 · IPR2015-01892 · APJ Charles J Boudreau · IPR · Rehearing

  The Board denied Finjan’s rehearing request and left in place institution on the §103(a) ground over Swimmer for claims 1, 2, 5, 6, 10, 11, 14, and 15.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion occurs when a “decision [i]s based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus. Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988). “The burden of showing a decision should be modified lies with the party challenging the decision.” 37 C.F.R. § 42.71(d); Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). A request for rehearing is not an opportunity merely to disagree with the panel’s assessment of the arguments or weighing of the evidence, or to present new arguments or evidence. It is not an abuse of discretion to have performed an analysis or reached a conclusion with which Patent Owner disagrees, and mere disagreement with our analysis or conclusion is not a proper basis for rehearing.” slip op. at 3

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

    “in view of Patent Owner’s Preliminary Response (Paper 7, “Prelim. Resp.”), that Petitioner had demonstrated in its Petition a reasonable likelihood of prevailing in showing the unpatentability of each of the challenged claims under 35 U.S.C. § 103(a) over Swimmer. Paper 9 (“Dec. on Inst.”), 12–23. Accordingly, we instituted an inter partes review on that ground. Id. at 34. We also concluded, however, that Petitioner had not established a reasonable likelihood that it would prevail on any of the other grounds asserted, and we declined to institute an inter partes review on any other ground. Id. at 23– 34.” slip op. at 3

  • BurdenDecided for petitioner

    “function number, arg ( ... [)],ret ( ... )>”)). “In other words, the audit system and/or emulator generates audit records for the Downloadables (i.e., Downloadable security profile data) that identifies and lists functions (i.e., operations) that the Downloadables attempt to invoke,” and “[s]ignificantly, these operations identified by Swimmer’s audit system are the very same types of operations referred to by the applications related to the ‘494 patent as examples of ‘suspicious operations.’” Pet. 17–18. We understand Swimmer’s “activity data,” which, as cited by Petitioner, are each contained within an audit record, to be “Downloadable security profile data,” in the parlance of claims 1 and 10 of the ’494 patent. Moreover, as Petitioner also contends, “Swimmer further discloses that these audit records are stored in a database.” Id. at 19 (emphasis added) (cited by Dec. on Inst. 17). Based on Petitioner’s arguments regarding the recited database limitations of claims 1 and 10, we understand Petitioner to equate the aggregate collection of Swimmer’s activity data/audit records, each recorded according to a structured schema, with the recited “database.” Id. at 13, 19–20 (citing Ex. 1005, 9, Fig. 3); see also Ex. 1005, 7 (disclosing “audit system . . . securely collects system activity data” (emphasis added)).5 Consequently, we do not understand Petitioner to have taken the position that “both ‘security profile data’ and ‘database’ should be redundantly the same” or to have “conflat[ed] the ‘security profile data’ itself with the ‘database’ that stores the ‘security profile data,’” as Patent Owner suggests. Req. Reh’g 5. 5 In the Institution Decision, we state that “[a]s explained by Swimmer, the audit record includes records collected by Swimmer’s VIDES system, organized with a specific ‘canonical format’ to serve the ASAX tool.” Dec. on Inst. 23. We are persuaded on this record that Swimmer’s collection of audit records, so organized, is a database.” slip op. at 6

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for petitioner

    “Swimmer, the activity data/audit records generated by the VIDES system are organized with a specific “canonical format” to serve the ASAX tool. Ex. 1005, 9–10. We are persuaded on this record that the collection of activity data, so organized, constitutes a database as that term is construed both in the Institution Decision and in the Sophos case as “a collection of interrelated data organized according to a database schema to serve one or more applications.” Dec. on Inst. 11; Case IPR2015-01022, slip op. at 10 (Paper 7). Although Petitioner argued for a different interpretation of “database” in its Petition (Pet. 10–12), we remain persuaded that the arguments and evidence cited in the Petition sufficiently demonstrate that Swimmer teaches a database according to the interpretation adopted by us (see id. at 19–20 (citing Ex. 1005, 1, 2, 9, Fig. 3; Ex. 1018 ¶¶ 108–110)). Moreover, we are satisfied, on the present record, that there is no meaningful distinction between “database schema,” as recited in our interpretation of “database” (Dec. on Inst. 11), and the “structured schema” or “particular schema” referred to in the Petition to describe Swimmer’s canonical format (Pet. 13, 19).” slip op. at 8

  Claim construction§ 103 obviousnesscites Graham
  Patents in suitUS 8,677,494
• Toshiba Corporation v. Optical Devices, LLCNo claims unpatentable
  PTAB · Mar 9, 2016 · IPR2014-01445 · APJ Erica A Franklin · IPR · Final written decision

  Claims 1–10 were not shown unpatentable: Baird did not disclose the required FES and TES determination, and the ST Datasheet was not established as prior art.

  RulingsFinal written decision

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

    “Ex. 1001, 13:50–61. From this disclosure, we recognize that the Specification suggests that a DSP operates faster than a microprocessor and, in some embodiments, real time digital servo algorithms can be executed on a DSP. Id. at 53–55. The Specification, however, does not expressly define the term “digital signal processor.” We note the competing views of Dr. de Callafon, on behalf of Patent Owner, and Dr. Zech, on behalf of Petitioner. We also note issues regarding the testimony of each declarant. For example, in some respects, Dr. de Callafon bases his proposed construction of a DSP on features that he asserts one of ordinary skill in the art would have understood that “most DSP processors have,” as opposed to features that all DSP processors require. Ex. 2008 ¶ 21(a). Dr. Zech’s deposition testimony describing the design of a DSP, also relied upon by Patent Owner, is unreliable because Dr. Zech testified that he had “no expertise” as to design elements distinguishing a DSP from a general processor. See, e.g., Ex. 2001, 35:12–13, 44:12–14. As we seek to give the term “DSP” its ordinary and customary meaning, as would be understood by one of ordinary skill in the art at the time of the invention, we take into account the Microsoft and IBM dictionary definitions submitted by Patent Owner. We note that each of those dictionaries define a DSP as being designed for “high speed” manipulation of data/digital signals. Ex. 2002; Ex. 2003. Patent Owner, however, has not directed our attention to evidence establishing what “high speed” encompasses. We note also that only one of the submitted dictionary definitions additionally characterizes such digital signal manipulation as “real-time.” Id. at 2003. The Specification, however, discloses that only some embodiments can execute real time digital servo algorithms on a DSP. We determine that Patent Owner has not established persuasively that the broadest reasonable interpretation of a DSP requires “high speed” processing achieving this “real time” feature. Indeed, Patent Owner’s “basic” construction for a DSP does not include a requirement for “real time” processing. See PO Resp. 20 (providing a minimal definition for a DSP). Thus, we are persuaded that that the broadest reasonable intepretation of the term “digital signal processor,” consistent with the Specification, is “an integrated circuit structured and arranged for manipulation of digital signals in accordance with programmed commands, and in a manner that operates faster than a microprocessor.” Patent Owner’s proposal to characterize further an integrated circuit as “specialized” is not well taken. Indeed, we find that proposed modification to be superfluous in that our construction describes that the integrated circuit is structured and arranged to achieve a specific function, i.e., manipulation of digital signals and operating faster than a microprocessor. 2.” slip op. at 8

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

    “Patent Owner proposes constructions for additional claim phrases without providing any discussion or reference to the Specification in support of those proposed constructions. PO Resp. 12–13. Based on our analysis, we determine that no express claim construction is necessary for any remaining claim term. Thus, we are not persuaded to adopt those proposed constructions.” slip op. at 10

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner asserts that one of ordinary skill in the art at the time of the filing of the ’729 patent as having: (1) a Bachelor’s of Science Degree in Electrical Engineering, Mechanical Engineering, Physics or a related field and at least two years of additional experience in control system technology, optical disk servo technology, magnetic disk servo technology, or related technologies, either in industry or research[,] or (2) at least a Master’s of Science Degree in Electrical Engineering, Mechanical Engineering, Physics or a related field with coursework in control system technology, optical disk servo technology, magnetic disk servo technology, or related technologies. Pet. 36–37 (citing Ex. 1006 ¶¶ 65–66) (emphases added). Patent Owner asserts that one of ordinary skill in the art would have “a Bachelor of Science in Mechanical or Electrical Engineering and at least two years of experience in control systems technology.” PO Resp. 5 (citing Ex. 2008 ¶¶ 9–11) (emphasis added). Based on our consideration of the record, we find that the evidence as a whole supports Petitioner’s broader description of the level of ordinary skill in the art. Accordingly, we adopt Petitioner’s statement of the ordinary skill in the art.” slip op. at 11

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

    “Having considered the arguments and evidence, we are not persuaded that Petitioner has established by a preponderance of the evidence that Baird inherently discloses a DSP configured to determine a FES and a TES from digital signals received by the SCP. In particular, Petitioner’s primary contention with respect to inherency is that one of ordinary skill in the art would understand that Baird must determine a FES and TES in order for the SCP to operate focus and tracking control loops. Pet. Reply 14 (citing Ex. 1006 ¶ 82). However, neither Petitioner, nor Petitioner’s declarant, Dr. Zech, provides any explanation why that is true. When asked for an explanation during his deposition, Dr. Zech responded in a manner that relied upon a probability that Baird’s SCP determines FES and TES. For example, the following is an excerpt from Dr. Zech’s deposition: Q Can you explain to me why it is your opinion that it is inherent that a servo control processor in Baird determines a focus error signal and a tracking error signal? A Well, because the way he designed it, it does. And I can’t imagine why somebody, an engineer at Cirrus Logic, would swim against the current and 0 come up with something entirely new. The chip 1 surely would not sell. I know that from pretty broad experience in sales and marketing. Once you tell me optical disk drive -- I’ve explained to you the statistics of it -- 99 percent plus are probably using continuous composite servoing. When you use continuous composite servoing, you need to have a tracking error and a focus error signal. So it’s not much of a leap for me to conclude that that’s what’s going on here. Ex. 2001, 151:3–20 (emphases added). Dr. Zech’s deposition testimony describes what functions and systems optical disk drives “are probably using” and that “it’s not much of a leap” for him to conclude what is occuring in Baird with respect to whether error signals are determined Id.; see MEHL/Biophile Int’l. Corp., 192 F.3d at 1365 (inherency is not established by probabilities or possibilities). Moreover, both in his declaration and at the deposition, Dr. Zech bases his opinion regarding that issue on assumptions unsupported by evidence. See Office Patent Trial Practice Guide 77 Fed. Reg. 48,756, 48,763 (Aug. 14, 2012) (“Affidavits expressing an opinion of an expert must disclose the underlying facts or data upon which the opinion is based. . . . Opinions expressed without disclosing the underlying facts or data may be given little to no weight.”) (citations omitted). Thus, we do not afford Dr. Zech’s opinions persuasive weight.” slip op. at 20

  Patent outcomesUS 7,839,729 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 7,839,729
• Toshiba Corporation v. Optical Devices, LLCNo claims unpatentable
  PTAB · Mar 9, 2016 · IPR2014-01447 · APJ James B Arpin · IPR · Final written decision

  Claims 1–39 were not shown unpatentable: Baird did not necessarily disclose determining FES and TES, and the ST Datasheet was not established as publicly accessible prior art.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “that Petitioner has established by a preponderance of the evidence that Baird inherently discloses a DSP configured to determine a FES and a TES from digital signals received by the SCP. In particular, Petitioner’s primary contention with respect to inherency is that one of ordinary skill in the art would have understood that Baird must determine a FES and TES in order for the SCP to operate focus and tracking control loops. Pet. Reply 14 (citing Ex. 1006 ¶ 77). However, neither Petitioner nor Petitioner’s declarant, Dr. Zech, provides any explanation why that is so. When asked for an explanation during his deposition, Dr. Zech responded in a manner that relied upon a probability that Baird’s SCP determines FES and TES. In particular, the following is an excerpt from Dr. Zech’s deposition: Q Can you explain to me why it is your opinion that it is inherent that a servo control processor in Baird determines a focus error signal and a tracking error signal? A Well, because the way he designed it, it does. And I can’t imagine why somebody, an engineer at Cirrus Logic, would swim against the current and 0 come up with something entirely new. The chip 1 surely would not sell. I know that from pretty broad experience in sales and marketing. Once you tell me optical disk drive -- I’ve explained to you the statistics of it -- 99 percent plus are probably using continuous composite servoing. When you use continuous composite servoing, you need to have a tracking error and a focus error signal. So it’s not much of a leap for me to conclude that that’s what’s going on here. Ex. 2001, 151:3–20 (emphases added); see Tr. 100:13–101:2. Dr. Zech’s deposition testimony describes what functions and systems optical disk drives “are probably using” and that “it’s not much of a leap” for him to conclude what is occuring in Baird with respect to whether error signals are determined Ex. 2001, 151:15–18; see MEHL/Biophile Int’l. Corp. v. Milgraum, 192 F.3d 1362, 1365 (Fed. Cir. 1999) (inherency is not to be established by probabilities or possibilities). Moreover, both in his declaration and at the deposition, Dr. Zech bases his opinion regarding that issue on assumptions unsupported by evidence. See Office Patent Trial Practice Guide 77 Fed. Reg. 48, 756, 48,763 (Aug. 14, 2012) (“Affidavits expressing an opinion of an expert must disclose the underlying facts or data upon which the opinion is based. . . . Opinions expressed without disclosing the underlying facts or data may be given little to no weight.”) (citing Fed. R. Evid. 705; 37 C.F.R. § 42.65; Rohm & Haas Co. v. Brotech Corp., 127 F.3d 1089, 1092 (Fed. Cir. 1997)). Thus, we do not credit Dr. Zech’s unsupported opinions with persuasive weight.” slip op. at 29

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownOther

    “As we seek to give the term “digital signal processor” its ordinary and customary meaning, as would be understood by one of ordinary skill in the art at the time of the invention, we take into account the Microsoft and IBM dictionary definitions submitted by Patent Owner. Ex. 2002, 145; Ex. 2003, 198. We note that each of those dictionaries define a DSP as being designed for “high speed” manipulation of data/digital signals. Id. Patent Owner, however, has not directed our attention to evidence establishing what “high speed” encompasses. See Tr. 98:12–23; see also id. at 95:10–96:3 (Petitioner’s argument that speed governed by function). We also note one of the submitted dictionary definitions characterizes “high speed,” such that digital signal manipulation as “real-time.” Ex. 2003, 198. Another dictionary definition simply includes “high speed.” Ex. 2002, 145. However, the Specification discloses that only some embodiments can execute real time digital servo algorithms on a DSP. See Ex. 1001, col. 13, ll. 38–42. We determine that Patent Owner has not established persuasively that the broadest reasonable interpretation of a DSP requires “high speed” processing achieving this “real time” feature. Indeed, Patent Owner’s “basic” construction for a DSP does not include a requirement for “real time” processing. See PO Resp. 16 (providing a minimal definition for a DSP). We are persuaded, however, that the broadest reasonable interpretation of the term “digital signal processor,” consistent with the Specification and the ordinary and customary meaning of the term as understood at the time of the invention by a person of ordinary skill in the art, is “an integrated circuit structured and arranged for manipulation of digital signals in accordance with programmed commands, and in a manner that operates faster than a microprocessor.” We do not adopt Patent Owner’s proposal to characterize further an integrated circuit as “specialized.” We determine that proposed modification is superfluous in that our construction describes that the integrated circuit is structured and arranged to achieve a specific function, i.e., manipulation of digital signals and operation faster than a microprocessor. B.” slip op. at 15

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureNot shown unpatentableInherency not foundNot shown unpatentable

    “To establish inherency, the extrinsic evidence must make clear that the missing descriptive matter is necessarily present in the thing described in the reference, and that it would be so recognized by persons of ordinary skill. Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient. PO Resp. 30–31 (quoting In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (emphasis added) (citations omitted)). Petitioner argues that, because Baird discloses that the servo control processor performs focus and tracking control loops (Ex. 1003, col. 5 l. 63–col. 6, l. 11), “it is necessarily the case that a focus error and tracking error signal are generated” in order to perform that function (Pet. 42–43). See Ex. 1006 ¶ 77; Tr. 20:21–23:5. According to Petitioner and, its declarant, Dr. Zech, one of ordinary skill in the art would” slip op. at 25

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedDecided for patent owner

    “qualify as a prior art printed publication under 35 U.S.C. § 102, the reference must be shown to have been “sufficiently accessible to the public interested in the art” prior to the earliest effective filing date. In re Cronyn, 890 F.2d 1158, 1160 (Fed. Cir. 1989). “Because there are many ways in which a reference may be disseminated to the interested public, ‘public accessibility’ has been called the touchstone in determining whether a reference constitutes a ‘printed publication’ bar under 35 U.S.C. § 102(b).” In re Hall, 781 F.2d 897, 898–99 (Fed. Cir. 1986). A reference will be considered publicly accessible if it was “disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it.” Kyocera Wireless Corp. v. Int’l Trade Comm’n, 545 F.3d 1340, 1350 (Fed. Cir. 2008). Whether a reference qualifies as a printed publication is a legal conclusion based on underlying factual determinations. In re Lister, 583 F.3d 1307, 1311 (Fed. Cir. 2009). Blue Calypso, LLC v. Groupon, Inc., Dkt. Nos. 2015-1391, 2015-1393, 2015- 1394, slip op. at 28–29 (Fed. Cir. Mar. 1, 2016).” slip op. at 38

  Patent outcomesUS 8,416,651 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,416,651

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.