• Arris Group, Inc. v. TQ Delta, LLCNo claims unpatentable
  PTAB · Dec 13, 2017 · IPR2016-01160 · APJ Matthew R Clements · IPR · Final written decision

  Claims 1–20 were not held unpatentable because the asserted combination did not teach the construed synchronization signal.

  RulingsFinal written decision

  • Prior constructionPrior construction not adoptedOther

    “Owner that our construction in the Decision to Institute is overly broad to the extent it encompasses a synchronization frame. Petitioner relies heavily on column 5, lines 50 to 52 of the ’404 patent, but that disclosure does not unambiguously support Petitioner’s proposed construction. The paragraph, which we reproduce below for context, describes “normal (non-sleep mode) operation”: During normal (non-sleep mode) operation, a phase-lock loop (PLL) 62 receives from the FFT 56 a timing reference signal 62a (see FIG. 1A) via a line 62b. The timing reference signal 62a is transmitted from the transmitter with which the receiver 16 communicates (e.g., the CO transmitter). This signal is advantageously a pure tone of fixed frequency and phase which is synchronized with the Master Clock in the transmitter; its frequency defines the frame rate of the transceivers. Other forms of timing signal may, of course, be used, but use of a pure tone has the advantage of simplicity and reliability even when portions of the transceiver are powered down in accordance with the invention. The PLL 62 locks itself to this signal and drives clock 30 in synchronism with the Master Clock in the driving transmitter. This also synchronizes frame counter 34 of the CPE transceiver to the corresponding frame counter of the CO transceiver. Control of the receiver section is provided by the controller 32. Ex. 1001, 5:37–53 (emphasis added to 5:50–52). Rather than read “this” as referring to timing reference signal 62a, as Petitioner contends, we read “this” as referring to what is disclosed in the preceding sentence—i.e., driving clock 30 in synchronism with the Master Clock in the driving transmitter. The synchronism of clock 30 with the Master Clock in the driving transmitter is what “synchronizes frame counter 34 of the CPE transceiver to the corresponding frame counter of the CO transceiver.” Ex. 1001, 5:50–52.” slip op. at 7

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

    “Having considered the arguments and evidence, we are not persuaded that this term requires an express construction. Patent Owner’s proposed construction merely replaces “full power mode operation” with “transmission and/or reception of data during normal operation.” The parties, however, do not dispute the meaning of “full power mode operation.” As a result, an express construction of this term is not necessary in order to resolve the parties’ dispute.” slip op. at 10

  • Skill levelOther

    “We determine that no express finding on a specific corresponding level of technical education and experience is necessary. Here, the level of ordinary skill in the art is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 11

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

    “We agree with Patent Owner. The contentions in the Petition are based upon Petitioner’s proposed construction of “synchronization signal” as encompassing a synchronization frame—i.e., “allowing for frame synchronization.” See, e.g., Pet. 24, 37–38. We have not adopted that construction, however, for the reasons discussed above. Because our construction of “synchronization signal” excludes a synchronization frame, we are not persuaded that the argument and evidence in the Petition shows that the combination of Bowie, Vanzieleghem, and ANSI T1.413 teaches transmitting/receiving, in full power mode, a “synchronization signal.” Moreover, we agree with Patent Owner that Petitioner’s reliance, in the Reply, upon the teachings of a pilot tone in Vanzieleghem and ANSI T1.413 constitutes a change in theory and, therefore, is beyond the scope of a proper reply. Notwithstanding the mention of “a pilot tone” in paragraph 58 of Dr. McNally’s declaration, the Petition itself unambiguously identifies the synchronization frame, not a pilot tone, as the recited “synchronization symbol.” See, e.g., Pet. 37–38 (citing Bowie’s and ANSI T1.413’s teachings of synchronization frame). We, therefore, do not address whether the pilot tone taught in Vanzieleghem and in ANSI T1.413 teaches the recited “synchronization signal.” As a result, Petitioner has not shown, by a preponderance of the evidence, that claims 1–20 would have been obvious over Bowie, Vanzieleghem, and ANSI T1.413.” slip op. at 15

  Patent outcomesUS 8,611,404 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,611,404
• Varian Medical Systems, Inc. v. William Beaumont HospitalNo claims unpatentable
  PTAB · May 4, 2017 · IPR2016-00166 · APJ Michael W Kim · IPR · Final written decision

  Petitioner did not prove claims 43–46, 48–55, 57, 59–66, and 68 unpatentable; strong evidence of industry praise and long-felt need, with commercial success and copying, outweighed the obviousness case.

  RulingsFinal written decision

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

    “We begin first with the claim language, and note that “three dimensional information” appears facially to be co-extensive with any information relevant to three dimensions. We discern that “length, width, and depth” are just such information. We have considered Patent Owner’s above-cited portions of the ’502 Patent, but are unpersuaded that those portions narrow “three dimensional information” with sufficient “reasonable clarity, deliberateness, and precision” such that one of ordinary skill would have understood “three dimensional information” as co-extensive with Patent Owner’s proffered construction. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). For example, column 2, lines 42–48 and 51–55 certainly disclose that “volume” is desirable, but does not provide any equivalence between “three dimensional information” and “volume.” Indeed, column 2, lines 54–55 disclose “provide information regarding the location of soft-tissue target volumes,” indicating that “information” is a subset of “volume.”” slip op. at 8

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Dr. Balter, Petitioner’s expert, proffers that a hypothetical person of ordinary skill in the art, with respect to and at the time of the’502 patent, would have the following qualifications: “a medical physicist with a Ph.D. (or similar advanced degree) in physics, medical physics, or a related field, and two or more years of experience in radiation oncology physics and image processing/computer programming related to radiation oncology applications.” Ex. 1302 ¶ 14. Dr. Hashemi, Patent Owner’s expert, essentially agrees, with the only major differences to the above being that an M.S. is acceptable in lieu of a Ph.D, and that three years of experience is preferred. Ex. 2080 ¶ 17. Nominally, we accept Petitioner’s proffered level of ordinary skill in the art based on Dr. Balter’s more complete explanation. We note, however, that neither party has explained substantively any significance that the difference in the proffered levels of ordinary skill in the art would have in the obviousness analysis. See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966); Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“[T]he level of skill in the art is a prism or lens through which a judge, jury, or the Board views the prior art and the claimed invention.”); Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991) (“The importance of resolving the level of ordinary skill in the art lies in the necessity of maintaining objectivity in the obviousness inquiry.”). To that end, we note that the prior art itself often reflects an appropriate skill level. See Okajima, 261 F.3d at 1355.” slip op. at 10

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner

    “the radiation therapy systems of Adler/Depp to include the CBCT/FPI system of Cho/Antonuk/Jaffray 1997, on pages 33–37 of the Petition which, for the reasons set forth below, we agree with and adopt. Patent Owner asserts that one of ordinary skill would not have modified the radiation therapy systems of Adler/Depp to include the CBCT/FPI system of Cho/Antonuk/Jaffray 1997, because both timing and dosage considerations teach away from the proposed combination. PO Resp. 29–36. We disagree. We begin with timing considerations. PO Resp. 29–34. Fundamentally, Patent Owner asserts that replacing the orthogonal 2-D images projections of Adler/Depp with the CBCT acquired images of Cho/Antonuk/Jaffray 1997 would represent “very poor methodology” because the CBCT system takes a significantly longer period of time to acquire and process images from a patient than the 2-D image system, e.g., 60 seconds to acquire the image, and 30–50 minutes to reconstruct the entire CT conebeam data set. PO Resp. 33–34. According to Patent Owner, such a delay is detrimental in the context of sending targeted radiation to a specific volume within the patient, because during that time, the patient from whom the images was acquired would most likely have shifted positions. PO Resp. 33–35. We are unpersuaded for several reasons. Primarily, we are unpersuaded because a fundamental assumption made by Patent Owner is that the patient must remain unrestrained. Patent Owner makes this assumption based on the assertion that “the primary goal of the Adler/Depp systems is to permit a patient to be relatively unrestrained during the radiotherapy procedure.” PO Resp. 31. We have reviewed Patent Owner’s supporting evidence, and are unpersuaded that the evidence supports Patent Owner’s assertion that “the primary goal of the Adler/Depp systems is to permit a patient to be relatively unrestrained during the radiotherapy procedure.” For example, Patent Owner cites to certain paragraphs of Dr. Hashemi’s Declaration, which in turn cite to certain portions of Depp. Ex. 2080 ¶¶ 107, 123, 126 (citing Ex. 1304, 11:66–12:23, Fig. 9). We have reviewed those portions of Depp, and find that while they do disclose that target location and treatment periods are on the order of seconds, they do not mention anything about “the primary goal of the Adler/Depp systems is to permit a patient to be relatively unrestrained during the radiotherapy procedure.”11 Accordingly, absent such an evidentiary foundation, we do not find credible Dr. Hashemi’s assertions concerning this matter. Even without explicit analysis by Patent Owner, we logically understand the connection between longer image acquisition and processing times, and the higher likelihood of interim patient movement. Absent the aforementioned “primary goal,” however, we are unclear as to why the converse of that goal would not be correct, i.e., that one of ordinary skill would have resolved the timing consideration by restraining the patient.” slip op. at 19

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner

    “the radiation therapy systems of Adler/Depp to include the CBCT/FPI system of Cho/Antonuk/Jaffray 1997, on pages 33–37 of the Petition which, for the reasons set forth below, we agree with and adopt. Patent Owner asserts that one of ordinary skill would not have modified the radiation therapy systems of Adler/Depp to include the CBCT/FPI system of Cho/Antonuk/Jaffray 1997, because both timing and dosage considerations teach away from the proposed combination. PO Resp. 29–36. We disagree. We begin with timing considerations. PO Resp. 29–34. Fundamentally, Patent Owner asserts that replacing the orthogonal 2-D images projections of Adler/Depp with the CBCT acquired images of Cho/Antonuk/Jaffray 1997 would represent “very poor methodology” because the CBCT system takes a significantly longer period of time to acquire and process images from a patient than the 2-D image system, e.g., 60 seconds to acquire the image, and 30–50 minutes to reconstruct the entire CT conebeam data set. PO Resp. 33–34. According to Patent Owner, such a delay is detrimental in the context of sending targeted radiation to a specific volume within the patient, because during that time, the patient from whom the images was acquired would most likely have shifted positions. PO Resp. 33–35. We are unpersuaded for several reasons. Primarily, we are unpersuaded because a fundamental assumption made by Patent Owner is that the patient must remain unrestrained. Patent Owner makes this assumption based on the assertion that “the primary goal of the Adler/Depp systems is to permit a patient to be relatively unrestrained during the radiotherapy procedure.” PO Resp. 31. We have reviewed Patent Owner’s supporting evidence, and are unpersuaded that the evidence supports Patent Owner’s assertion that “the primary goal of the Adler/Depp systems is to permit a patient to be relatively unrestrained during the radiotherapy procedure.” For example, Patent Owner cites to certain paragraphs of Dr. Hashemi’s Declaration, which in turn cite to certain portions of Depp. Ex. 2080 ¶¶ 107, 123, 126 (citing Ex. 1304, 11:66–12:23, Fig. 9). We have reviewed those portions of Depp, and find that while they do disclose that target location and treatment periods are on the order of seconds, they do not mention anything about “the primary goal of the Adler/Depp systems is to permit a patient to be relatively unrestrained during the radiotherapy procedure.”11 Accordingly, absent such an evidentiary foundation, we do not find credible Dr. Hashemi’s assertions concerning this matter. Even without explicit analysis by Patent Owner, we logically understand the connection between longer image acquisition and processing times, and the higher likelihood of interim patient movement. Absent the aforementioned “primary goal,” however, we are unclear as to why the converse of that goal would not be correct, i.e., that one of ordinary skill would have resolved the timing consideration by restraining the patient.” slip op. at 19

  Patent outcomesUS 6,842,502 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,842,502
• Varian Medical Systems, Inc. v. William Beaumont HospitalNo claims unpatentable
  PTAB · May 4, 2017 · IPR2016-00162 · APJ Michael W Kim · IPR · Final written decision

  Claims 1–14, 16–29, 33, and 35–38 were not held unpatentable because the strong evidence of industry praise and long-felt need, with other objective evidence, outweighed the obviousness showing.

  RulingsFinal written decision

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

    “its broadest reasonable construction in light of the specification of the patent in which it appears. 37 C.F.R. § 42.100(b); see also Cuozzo Speed Techs., LLC v. Lee, 136 S.Ct. 2131, 2142 (2016) (affirming that USPTO has statutory authority to construe claims according to 37 C.F.R. § 42.100(b)). Under the broadest reasonable construction standard, claim terms are generally given their ordinary and customary meaning, as would have been understood by one of ordinary skill in the art in the context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). For the purposes of this Decision, we determine that only the following claim terms need express interpretation. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”). 7 A.L. Boyer, Laser “cross-hair” sidelight, Med. Phys., 5:58-60 (1978) (Ex. 1108, “Boyer”).” slip op. at 6

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

    “dimensional information” appears facially to be co-extensive with any information relevant to three dimensions. We discern that “length, width, and depth” are just such information. We have considered Patent Owner’s above-cited portions of the ’502 Patent, but are unpersuaded that those portions narrow “three dimensional information” with sufficient “reasonable 8 In evaluating the assertions set forth in the Declaration of James Balter, Ph.D., in Support of Petitioner’s Reply (Ex. 1500), we considered Patent Owner’s Motion for Observations on the Cross-Examination of Dr. James Balter (Paper 48) and Petitioner’s Response to Patent Owner’s Motion for Observations on Cross-Examination (Paper 56). 9 In the Decision on Institution, we preliminarily agreed with Petitioner’s proposed construction of “three dimensional information.” Dec. 7–8. clarity, deliberateness, and precision” such that one of ordinary skill would have understood “three dimensional information” as co-extensive with Patent Owner’s proffered construction. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). For example, column 2, lines 42–48 and 51–55 certainly disclose that “volume” is desirable, but does not provide any equivalence between “three dimensional information” and “volume.” Indeed, column 2, lines 54–55 disclose “provide information regarding the location of soft-tissue target volumes,” indicating that “information” is a subset of “volume.” In another example, column 3, lines 40–43, mentions “three-dimensional (3- D) images,” which we agree would appear to require “volumetric” data; however, the claim limitation at issue is the broader term “three dimensional information.” In a further example, column 9, line 62, through column 10, line 5, clearly refers to “volumetric data,” but does not indicate its relation to “three dimensional information.” In yet another example, column 16, lines 43–45 and 58–62, do not recite “three dimensional information,” instead disclosing “3-D structure” and “3-D nature” in relation generally to “volumetric data,” but, again, not in a manner sufficient to indicate a particular relationship. Finally, in regard to assertions set forth in the Declaration of Dr. Hashemi, we discern some merit in his assertion that when reading the claim limitation “three dimensional information” in conjunction with another claim limitation “cone-beam computed tomography,” “a CBCT image is a volumetric image that provides the location, shape, and spatial orientation of the target volume in all directions, not just its length, width, and depth.” Ex. 2080 ¶ 85. The claim limitation at issue, however, reads “an image of said object, wherein said image contains at least three dimensional information of said object based on one rotation of said x-ray source around said object” (emphasis added). Accordingly, the claim limitation does not preclude an image having more information than “information concerning three dimensions of an object (such as length, width, and depth),” such as “a volumetric image of an object generated by reconstructing 2-D projection images.” Under Patent Owner’s construction, however, the image would be required to have such information. We are unpersuaded that such information is required under a proper construction of “three dimensional information” for the reasons set forth supra. We construe “three dimensional information” as “information concerning three dimensions of an object (such as length, width, and depth).”” slip op. at 7

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

    “In the Institution Decision, we preliminary determined that “we are not persuaded that the term ‘computer’ fails to recite sufficiently definite structure. As a result, we decline to construe this limitation as a means-plusfunction limitation in accordance with § 112 ¶ 6.” Dec. 10. In its Response, Patent Owner agreed with the Board’s preliminary determination. PO Resp. 11. Petitioner did not address this construction in its Reply. See generally Pet. Reply 1–4. After considering our preliminary determination anew, in light a complete trial record, we remain unpersuaded that the term “computer” fails to recite sufficiently definite structure. Accordingly, we decline to construe this limitation as a means-plus-function limitation in accordance with § 112 ¶ 6.” slip op. at 10

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Dr. Balter, Petitioner’s expert, proffers that a hypothetical person of ordinary skill in the art, with respect to and at the time of the’502 patent, would have the following qualifications: “a medical physicist with a Ph.D. (or similar advanced degree) in physics, medical physics, or a related field, and two or more years of experience in radiation oncology physics and image processing/computer programming related to radiation oncology applications.” Ex. 1102 ¶ 13. Dr. Hashemi, Patent Owner’s expert, essentially agrees, with the only major differences to the above being that an M.S. is acceptable in lieu of a Ph.D, and that three years of experience is preferred. Ex. 2080 ¶ 17. Nominally, we accept Petitioner’s proffered level of ordinary skill in the art based on Dr. Balter’s more complete explanation. We note, however, that neither party has explained substantively any significance that the difference in the proffered levels of ordinary skill in the art would have in the obviousness analysis. See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966); Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“[T]he level of skill in the art is a prism or lens through which a judge, jury, or the Board views the prior art and the claimed invention.”); Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991) (“The importance of resolving the level of ordinary skill in the art lies in the necessity of maintaining objectivity in the obviousness inquiry.”). To that end, we note that the prior art itself often reflects an appropriate skill level. See Okajima, 261 F.3d at 1355.” slip op. at 10

  Patent outcomesUS 6,842,502 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,842,502
• Varian Medical Systems, Inc. v. William Beaumont HospitalNo claims unpatentable
  PTAB · May 4, 2017 · IPR2016-00170 · APJ Kalyan K Deshpande · IPR · Final written decision

  Claims 1–13 and 20–31 were not held unpatentable because the strong evidence of industry praise and long-felt need, with supporting evidence of commercial success and copying, outweighed the obviousness showing.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Dr. Balter, Petitioner’s expert, proffers that a hypothetical person of ordinary skill in the art, with respect to and at the time of the’765 Patent, would have the following qualifications: “a medical physicist with a Ph.D. (or similar advanced degree) in physics, medical physics, or a related field, and two or more years of experience in radiation oncology physics and image processing/computer programming related to radiation oncology applications.” Ex. 1102 ¶ 13. Dr. Hashemi, Patent Owner’s expert, essentially agrees, with the only major differences to the above being that an M.S. is acceptable in lieu of a Ph.D., and that three years of experience is preferred. Ex. 2080 ¶ 17. Nominally, we accept Petitioner’s proffered level of ordinary skill in the art based on Dr. Balter more complete explanation. We note, however, that neither party has explained substantively any significance that the difference in the proffered levels of ordinary skill in the art would have in the obviousness analysis. See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966); Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“[T]he level of skill in the art is a prism or lens through which a judge, jury, or the Board views the prior art and the claimed invention.”); Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991) (“The importance of resolving the level of ordinary skill in the art lies in the necessity of maintaining objectivity in the obviousness inquiry.”). To that end, we note that the prior art itself often reflects an appropriate skill level. See Okajima, 261 F.3d at 1355.” slip op. at 12

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

    “In our Decision on Institution, we were not persuaded that the terms “computer” (claim 1), “controller” (claim 7), “structure” (claim 20), and “support table” (claim 26) fail to recite sufficiently definite structure, and, therefore, we declined to construe these terms as means-plus-function limitations in accordance with 35 U.S.C. § 112 ¶ 6. Dec. 10‒12. Neither Patent Owner nor Petitioner provide any more argument or evidence to disturb our interpretation of these terms. See PO Resp. 12. Accordingly, we do not construe these terms as means-plus-function limitations under 35 U.S.C. § 112 ¶ 6. See SAS Institute, Inc. v. ComplementSoft, LLC., 825 F.3d 1341, 1351 (Fed. Cir. 2016) (The Board may not change a claim interpretation from the institution decision where neither party anticipated that “already-interpreted terms were actually moving targets.”).” slip op. at 6

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

    “We begin first with the claim language, and note that “three- dimensional information” appears facially to be co-extensive with any information relevant to three-dimensions. We discern that “length, width, 6 In evaluating the assertions set forth in the Declaration of James Balter Ph.D. in Support of Petitioner’ Reply (Ex. 1500), we considered Patent Owner’s Motion for Observations on the Cross-Examination of Dr. James Balter (Paper 48) and Petitioner’s Response to Patent Owner’s Motion for Observations on Cross-Examination (Paper 56). 7 In the Decision on Institution, we preliminarily agreed with Petitioner’s proposed construction of “three-dimensional information.” Dec. 9–10. and depth” are just such information. We have considered Patent Owner’s above-cited portions of the ’765 patent, but are unpersuaded that those portions narrow “three-dimensional information” with sufficient “reasonable clarity, deliberateness, and precision” such that one of ordinary skill would have understood “three-dimensional information” as co-extensive with Patent Owner’s proffered construction. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). For example, column 2, lines 44‒56 certainly disclose that “volume” is desirable, but does not provide any equivalence between “threedimensional information” and “volume.” Indeed, column 2, lines 55–56 disclose “provide information regarding the location of soft-tissue target volumes,” indicating that “information” is a subset of “volume.” In another example, column 3, lines 41–56, mentions “three-dimensional (3-D) images,” which we agree would appear to require “volumetric data;” however, the claim limitation at issue is the broader term “three-dimensional information.” In a further example, column 9, line 54‒64, clearly refers to “volumetric data,” but does not indicate its relation to “three-dimensional information.” In yet another example, column 16, lines 23–25 and 38–42, do not recite “three-dimensional information,” instead disclosing “3-D structure” and “3-D nature” in relation generally to “volumetric data,” but, again, not in a manner sufficient to indicate a particular relationship. Finally, in regards to assertions set forth in the Declaration of Dr. Hashemi, we discern some merit in his assertion that when reading the claim limitation “three-dimensional information” in conjunction with another claim limitation “cone-beam computed tomography,” “a CBCT image is a volumetric image that provides the location, shape, and spatial orientation of the target volume in all directions, not just its length, width, and depth.” Ex. 2080 ¶ 85. Furthermore, the claim limitation does not preclude an image having more information than “three-dimensional information concerning said object” (such as length, width, and depth), “based on a plurality of two-dimensional projection images.” Under Patent Owner’s construction, however, the image would be required to have such information. We are unpersuaded that such information is required under a proper construction of “three-dimensional information” for the reasons set forth supra. We construe “three-dimensional information” as “information” slip op. at 8

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner

    “We are unpersuaded for several reasons. Primarily, we are unpersuaded because a fundamental assumption made by Patent Owner is that the patient must remain unrestrained. Patent Owner makes this assumption based on the assertion that “the primary goal of the Adler/Depp systems is to permit a patient to be relatively unrestrained during the radiotherapy procedure.” PO Resp. 33. We have reviewed Patent Owner’s supporting evidence, and are unpersuaded that the evidence supports Patent Owner’s assertion that “the primary goal of the Adler/Depp systems is to permit a patient to be relatively unrestrained during the radiotherapy procedure.” For example, Patent Owner cites to certain paragraphs of Dr. Hashemi’s Declaration, which in turn cite to certain portions of Depp. Ex. 2080 ¶¶ 117, 133, 136 (citing Ex. 1104, 11:66–12:23, Fig. 9). We have reviewed those portions of Depp, and find that while they do disclose that target location and treatment periods are on the order of seconds, they do not mention anything about “the primary goal of the Adler/Depp systems is to permit a patient to be relatively unrestrained during the radiotherapy procedure.”11 Accordingly, absent such an evidentiary foundation, we do not find credible Dr. Hashemi’s assertions concerning this matter. Even without explicit analysis by Patent Owner, we logically understand the connection between longer image acquisition and processing times, and the higher likelihood of interim patient movement. Absent the aforementioned “primary goal,” however, we are unclear as to why the converse of that goal would not be correct, i.e., that one of ordinary skill would have resolved the timing consideration by restraining the patient. Indeed, in opposition, Petitioner asserts, and we agree, that “POSA would understand that in the majority of radiotherapy treatment settings, patients are in fact restrained to some degree.” Pet. Reply 7‒8 (citing Ex. 1500 ¶¶ 33–35; Ex. 2080 ¶¶ 54–55; Ex. 1502, 142:23–143:19). In particular, we are persuaded by the consistency of Dr. Balter’s and Dr. Hashemi’s testimony that molds were used in 2000 to minimize unwanted patient motion during treatment. Ex. 1500 ¶ 35; Ex. 2080 ¶ 55.” slip op. at 23

  Patent outcomesUS 7,471,765 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,471,765
• Varian Medical Systems, Inc. v. William Beaumont HospitalNo claims unpatentable
  PTAB · May 4, 2017 · IPR2016-00169 · APJ Kalyan K Deshpande · IPR · Final written decision

  Claims 1–13 and 20–31 were not held unpatentable under § 103 because the petitioner did not establish that Jaffray 1999 SPIE and Jaffray 1999 JRO were prior art.

  RulingsFinal written decision

  • Disclosure Requirements (§112) › Written description (Ariad)Entitled to earlier dateDecided for patent owner

    “Having considered the arguments and evidence, we agree with Patent Owner that the ’590 Application provides sufficient written description support for “wherein said receiving said x-rays by said flat panel imager is performed substantially at a time of occurrence of said controlling said path of said beam of radiation through said object.” As an initial matter, we understand that Petitioner acknowledges that the ’590 Application supports the limitation “substantially at a time,” and arguments raised towards this limitation were originally presented as arguments towards indefiniteness.” slip op. at 19

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedNot shown unpatentable

    “1. Principles of Law Petitioner has the burden of persuasion to prove unpatentability by a preponderance of the evidence. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1379 (Fed. Cir. 2015). Petitioner also has the initial burden of production to show that a reference is prior art to certain claims under a relevant section of 35 U.S.C. § 102. Id. Once Petitioner has met that initial burden, the burden of production shifts to Patent Owner to argue or produce evidence that the asserted reference is not prior art to certain claims, for example, because those claims are entitled to the benefit of priority of an earlier-filed application. Id. at 1380. Once Patent Owner has met that burden of production, the burden is on Petitioner to show that the claims at issue are not entitled to the benefit of priority of the earlier filed application. Id.” slip op. at 14

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityReference not prior artNot shown unpatentable

    “Having considered the parties arguments and evidence regarding, we are not persuaded that Petitioner has met its burden of persuasion by showing sufficiently that the portions of Jaffray 1999 SPIE and Jaffray 1999 JRO on which it relies are the work “others.” Unlike in Katz, where the 10 Both the burden of production and the burden of persuasion. 11 At oral argument, counsel for Petitioner indicated that, in his view, it does not matter who has the burden of production. Tr. 20:9, 20:16–17. question was “the sufficiency of applicant’s showing to establish that the subject disclosure was his original work, and his alone” (687 F.2d at 455), the question before us is the sufficiency of Petitioner’s showing to establish that the subject disclosure was the work of the non-inventor coauthors of Jaffray 1999 SPIE and Jaffray 1999 JRO. See Dynamic Drinkware, 800 F.3d at 1378 (“In an inter partes review, the burden of persuasion is on the petitioner to prove ‘unpatentability by a preponderance of the evidence,’ 35 U.S.C. § 316(e), and that burden never shifts to the patentee.”); In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1373 (Fed. Cir. 2016) (“In the context of the present case, however, the notion of burden-shifting is inapposite because the patentee’s position is that the patent challenger failed to meet its burden of proving obviousness.”); see also Duncan Parking Techs., Inc. v. IPS Group Inc., Case IPR2016-00067, slip op. at 8–13 (PTAB Mar. 27, 2017) (Paper 29). Patent Owner presents testimony of Dr. Jaffray and Mr. Drake that the subject matter relied upon by Petitioner was not the work of the non-inventor coauthors, and after considering all relevant arguments and evidence, we are unpersuaded by Petitioner’s assertions that this testimony is unreliable. Dr. Jaffray testifies, for example, that “[t]he JRO article and the SPIE article disclose work done at the direction of me and Dr. Wong in support of the joint research conducted by the two of us.” Ex. 2077 ¶ 2. Dr. Jaffray further testifies that “with the exception of Dr. Siewerdsen coming up with the pre-reconstruction image processing for the SPIE article, the [non-inventor] co-authors did not come up with the ideas for the systems described in those articles.” Id. ¶ 6. Dr. Jaffray describes the contributions of the co-authors as follows:” slip op. at 23

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “1999 JRO, Adler, and Depp renders obvious claims 1–13 and 20‒31. Pet. 28–59. Petitioner relies solely upon Jaffray 1999 SPIE and Jaffray 1999 JRO for several limitations of independent claims 1, 7, 20 and 26. For example, claim 1 recites “a cone-beam computed tomography system comprising: an x-ray source that moves about said object and emits toward said object from multiple positions around said object x-ray beams in a cone-beam form” and “a flat-panel imager positioned to receive x-rays after at least a portion of said x-ray beams pass through said object, said imager providing an image that contains three-dimensional information concerning said object based on a plurality of two-dimensional projection images.” Petitioner relies solely on Jaffray 1999 SPIE and Jaffray 1999 JRO to meet these claim limitations. See Pet. 36‒38 (citing Ex. 1005, 17, 25; Ex. 1006, 9; Ex. 1002 ¶¶ 82‒84). Independent claims 7, 20, and 26 recite substantially similar limitations that Petitioner again solely relies on Jaffray 1999 SPIE and Jaffray 1999 JRO as disclosing these limitations. As discussed above, however, we not persuaded that Jaffray 1999 SPIE and Jaffray 1999 JRO are prior art to claims 1–13 and 20‒31. Moreover, Petitioner does not contend that Adler or Depp teach these limitations. As a result, we are not persuaded that Petitioner has met its burden of showing, by a preponderance of the evidence, that claims 1–13 and 20–31 are obvious over a combination of Jaffray 1999 SPIE, Jaffray 1999 JRO, Adler, and Depp.” slip op. at 32

  Patent outcomesUS 7,471,765 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites KSR · Graham
  Patents in suitUS 7,471,765
• DISH Network L.L.C. v. TQ Beta, LLCNo claims unpatentable
  PTAB · Jan 30, 2017 · IPR2015-01791 · APJ John F Horvath · IPR · Final written decision

  The Board entered adverse judgment against claims 11, 14, and 15; petitioner did not show claim 13 unpatentable under any of the three instituted grounds.

  RulingsFinal written decision

  • Adverse judgmentAdverse judgmentGranted

    “The Board’s rules permit a party to “request judgment against itself at any time during a proceeding.” 37 C.F.R § 42.73(b). The Board construes a party’s “[a]bandonment of the contest,” as a request for adverse judgment. 37 C.F.R § 42.73(b)(3). Accordingly, we construe Patent Owner’s lack of response to Petitioner’s various challenges to claims 11, 14, and 15, Patent Owner’s offer to cancel claims 11, 14, and 15, and Patent Owner’s admission that it was “not contesting those claims,” to be an “abandonment of the contest,” and a request for adverse judgment. See PO Resp. 2 n.2; see also Tr. 24:12–18. The request for entry of adverse judgment on claims 11, 14, and 15 is granted, concurrently with entry of adverse judgment on these same claims in DISH Network L.L.C. et al. v. TQ Beta, LLC, Case IPR2015-01756 (PTAB) (Paper 31).” slip op. at 6

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

    “B. Claim Construction The Board interprets claims of an unexpired patent using the broadest reasonable construction in light of the specification of the patent in which they appear. See 37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC v. Lee, 136 S.Ct. 2131, 2142–46 (2016). Consistent with the rule of broadest reasonable interpretation, claim terms are generally given their ordinary and customary meaning, as would be understood by one of ordinary skill in the art in the context of the entire disclosure. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Only those terms which are in controversy need to be construed and only to the extent necessary to resolve the controversy. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). Petitioner asks us to construe the terms “delay between first time frame and second time frame,” “first geographic location,” and “second geographic location.” Pet. 12–14. Petitioner does not propose any constructions for these terms, but asks they be construed in the manner implied by Patent Owner’s infringement contentions in the District Court litigation. Id. In our Decision to Institute, we declined to expressly construe these claim terms, finding their meaning was readily understood by persons of ordinary skill in the art. Dec. Inst. 6. Neither Petitioner nor Patent Owner contests that decision. See PO Resp. 12–13; Pet. Reply passim. Based on the record developed during this proceeding, we find no need to expressly construe these claim terms.” slip op. at 5

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

    “Although we agree with Petitioner that the ’456 patent discloses “encoding the received signal” using a lossy encoding algorithm, using a lossy encoding algorithm to encode a signal does not identify the signal to which the encoding algorithm is applied. Claim 13 requires encoding the received television signal—using a lossy or lossless encoding algorithm— and Patent Owner persuasively argues that Monteiro’s Primary Servers 20, by compressing an extracted audio stream only, are not encoding the received television signal, which has both audio and video components. See PO. Resp. 16–17; Ex. 2003, 2180 (defining a “television signal” as “the visual and aural signals that are broadcast together in order to produce the picture and sound components of a television program.”) (emphasis added).” slip op. at 11

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

    “In an inter partes review, Petitioner bears the burden of proof. See 35 U.S.C. § 316(e). Thus, Petitioner must “demonstrate both that a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation of success in doing so.” Intelligent Bio–Sys., Inc. v. Illumina Cambridge, Ltd., 821 F.3d 1359, 1367-68 (Fed. Cir. 2016) (internal quotations omitted). Petitioner argues one reason to combine Monteiro and Compton is because both references are directed “to giving a user greater control of the time and place for reproduction of audio or visual information as desired by a user.” Pet. 55 (emphasis added). The fact that two references are directed to solving the same problem is an indication that the references are analogous art that can be combined. See In re Clay, 966 F.2d 656, 658 (Fed. Cir. 1992). It is not, however, a reason, in itself, explaining why a person skilled in the art would have combined certain specific teachings of the references in a certain way. Even if it might have been obvious, given Monteiro’s teaching to provide audio and/or video communication services, to modify Monteiro’s processing of received television signals to encode and transmit the received signal’s audio and video components as taught by Compton, Petitioner did not make that argument and did not present the evidence in a manner supporting that theory. The Board does not “raise, address, and decide unpatentability theories never presented by the petitioner.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1381 (Fed. Cir. 2016). Instead, the Board’s decision is based “on arguments that were advanced by a party, and to which the opposing party was given a chance to respond.” Id. Moreover, Petitioner’s assertion that Monteiro is directed to giving users greater control of the time and place for reproduction of audio/video information is not supported by the evidence. In Monteiro, it is the distributor of audio/video information that chooses the distribution time, not Monteiro’s user. For example, Monteiro discloses real-time information can be delivered to any number of users because “the same information is being sent at approximately the same time to everyone who is enabled to receive the information.” Ex. 1016, 2:11–16 (emphasis added). Monteiro further discloses that users can “choose[] to tune in or tune out a particular [distribution] channel, but do[] not choose the time at which the channel distributes its information.” Id. at 2:20–22 (emphasis added). Thus, Monteiro does not allow the user to choose the time for video reproduction, and Petitioner fails to articulate a reason why a skilled artisan would have been motivated to modify Monteiro to include the elements of Compton that would have allowed the user to choose the time for video reproduction.” slip op. at 15

  Patent outcomesUS 7,203,456 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 7,203,456
• Ericsson Inc. / Telefonaktiebolaget LM Ericsson v. Intellectual Ventures I LLCNo claims unpatentable
  PTAB · Dec 7, 2016 · IPR2015-01367 · APJ Matthew R Clements · IPR · Final written decision

  Claims 1–3, 6–9, and 12–14 were not shown unpatentable because Reed and Mahany did not teach interleaving S-blocks to form packet blocks, and Webb did not cure that deficiency.

  RulingsFinal written decision

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

    “The ’831 patent equates “encoding” with interleaving several times. The ’831 patent discloses, for example, that “[p]ackets are encoded into packet blocks by first interleaving the packets together in a register. The interleaved packet block is then transmitted to the receiver. Because the packets are interleaved, a single burst error is dispersed over multiple packets.” Ex. 1001, 2:34–35 (emphasis added). In the detailed description of transmitter 20, an outgoing message is “transferred to a register 96/98,” which “interleaves a message into a large packet block size.” Id. at 4:10–13 (emphasis added). Figure 9 of the ’831 patent, which “is a schematic diagram of a transmitter register used for encoding packets into a variable sized packet block” (id. at 3:18–20) (emphasis added), discloses the use of interleaving as the block coding technique (id. at 6:24–25 (“FIG. 9 shows a diagram for a block coding technique (interleaving) according to the invention . . . .”)). See also id. at Figs. 10, 11, 6:49–65. Also, the ’831 patent describes the point of novelty as “varying the number of bytes in each packet interleaved together according to receiver speed.” Id. at 6:66–7:2 (emphasis added); see also id. at 7:5–30. We, therefore, agree that the proper construction of “encoding packets into packet blocks” is “forming blocks by interleaving packets together.”1” slip op. at 8

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

    “’831 patent as performing the recited function to be the CPU performing one of the algorithms identified by Petitioner. Inst. Dec. 8–9. Patent Owner argues that the function is “performed by ‘memory/CPU,’ and not just the CPU alone.” PO Resp. 16–17 (citing Ex. 1001, Figs. 16–18, 8:16–31). The ’831 patent discloses that “[a] memory and CPU 108 determines the appropriate packet block size for the current car travel speed from signal 70.” Ex. 1001, 7:67–8:2 (emphasis added). “The packet block size is determined by reading prestored packet block size values in memory 108.” Id. at 8:3–4 (emphasis added). According to the ’831 patent, “the travel speed received from signal 70 is used as an address to read the memory location containing the appropriate packet block size value.” Id. at 8:5–8 (emphasis added). “The message from receiver/register 102 and the packet block size value determined in memory/CPU 108 are both input to a register 106.” Id. at 8:10–12 (emphasis added). We are persuaded, therefore, that the structure disclosed in the ’831 patent as performing the recited function is not only the CPU, but also the memory, performing one of the algorithms identified by Petitioner.” slip op. at 10

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “subsequent to institution, that “encoding packets into packet blocks” means “forming blocks by interleaving packets together,” a construction which we have adopted. Accordingly, we revisit whether the combination of Reed and Mahany teaches “encoding packets into packet blocks,” as recited in independent claim 1, and “an encoder for combining and varying the number of packets transmitted in each of the packet blocks,” as recited in independent claim 9.” slip op. at 13

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

    “Nevertheless, even assuming that Reed uses “blocks of data” to include S-blocks, we find that Reed’s teaching of “interleaving two or more blocks of data within each packet of data” (Ex. 1006, 2:63–68) is ambiguous and should not be read so broadly when Reed is considered as a whole. Petitioner would like us to interpret the sentence to mean interleaving the data from a first block of data (i.e., S-block) in a packet with data from a second block of data (i.e., S-block) in the packet—i.e., “interleaving two or more blocks of data [with each other] within each packet of data.” However, an equally plausible interpretation is that it means “interleaving [the data within each of] two or more blocks of data within each packet of data.” In other words, interleaving the data within a packet’s first block of data (i.e., R-blocks interleaved in a first S-block) and, separately, interleaving the data within the packet’s second block of data (i.e., R-blocks interleaved in the second S-block). In the latter interpretation, no data from the first block of data (i.e., S-block) are interleaved with data from the second block of data (i.e., S-block). We find that only this latter interpretation is supported by Reed’s disclosure. For example, in Figure 4, Reed discloses interleaving the data within S-blocks in a packet of data, but not interleaving the data between S-blocks. Ex. 1006, 3:20–22, Fig. 4. Reed further discloses employing an “interleaving scheme . . . over each S-block (690 bits), FIG. 4.” Id. at 4:39–41 (emphasis added). Reed similarly claims “concatenating two or more blocks of data and interleaving the bits of the data in each block.” Id., claim 6 (emphasis added). We find no similar support for Petitioner’s interpretation of Reed. Given the lack of support for Petitioner’s interpretation in the rest of the disclosure in Reed, we are not persuaded that a person of ordinary skill in the art, reading this ambiguous sentence in the Summary of Invention of Reed, would have understood it to be teaching interleaving one of Reed’s S-blocks with another of Reed’s S-blocks.” slip op. at 17

  Patent outcomesUS 5,602,831 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 5,602,831
• Presidio Components, Inc. v. Avx CorporationNo claims unpatentable
  PTAB · Dec 1, 2016 · IPR2015-01332 · APJ Matthew R Clements · IPR · Final written decision

  Claims 1–5 and 7–12 were not shown unpatentable because the evidence did not establish a sufficient reason to modify Galvagni’s capacitor.

  RulingsFinal written decision

  • Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner

    “Harperizing, or “corner rounding,” is typical. It merely describes one exemplary capacitor manufacturing process in which “the surfaces are cleaned of adhering lead contaminations and the edges and corners are eroded, i.e., rounded off, so that after the scrubbing the inside electrodes . . . are made substantially flush to the end faces of the monolithic ceramic body.” Florian, 10:16–22. On the other hand, Patent Owner’s expert, Dr. Shanfield, testifies that “Galvagni does not Harperize or corner round its components,” and that “a person of ordinary skill in the art would have avoided Harperization not least because it would have added processing time to an already labor-intensive process of Galvagni that could lead to longer cycle time, as well as dimensional variability that could lead to lower yield.”) Shanfield Decl. ¶¶ 71–72; see also id. at ¶ 73 (not Harperizing to contain or reduce manufacturing cost). On this record, we credit the testimony of Dr. Shanfield. We are not persuaded that a person of ordinary skill in the art would have understood that it was “typical” to Harperize the ends 18 of capacitor 16 taught in Galvagni prior to the vapor deposition of layer 21 illustrated in Figure 4 of Galvagni.” slip op. at 10

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

    “In our Decision on Institution, we construed the phrase “negligibly over the top surface” (independent claims 1 and 12) to mean “a small amount of material is formed on the top surface.” Dec. to Inst. 7–9. Neither party disputes our determination or proposes additional terms for construction. Based on the record developed during this proceeding, we maintain this construction.” slip op. at 6

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

    “On this issue, we agree with Patent Owner. Galvagni’s teachings of in-circuit testing of individual components are limited to using the ends, not the tops, of those components. Ex. 1002, 3:7–10, 6:24–30. Petitioner’s argument that testing probes of 0.05 mm were commercially available is not persuasive because Petitioner makes a comparison only to the dimensions taught in the ’547 patent without providing sufficient evidence that any negligible termination resulting from Harperization of Galvagni’s capacitor would also have been 0.05 mm. Even if it were, any negligible termination on a top surface of Galvagni’s capacitor would be very small relative to the end surface of Galvagni’s capacitor, and, therefore, would not “make it easier to access the capacitor for in-circuit test” (Pet. 17). Finally, even assuming Petitioner is right that a person of ordinary skill in the art would have been motivated to “test the individual components in a manner that minimizes wasted PCB (printed circuit board) space” (Pet. 15), Petitioner has not presented persuasive evidence that such a person would have valued that factor more highly than the other considerations identified by Dr. Shanfield—i.e., (1) the efficiency of testing groups of components rather than individual components, or (2) using pads on the PCB to reduce the risk of damage to components. After weighing the arguments and evidence, including the testimony of both parties’ experts, we are not persuaded that a person of ordinary skill in the art would have been motivated by the purported advantages for in-circuit testing to modify Galvagni’s capacitor 16 to include terminations extending negligibly over a top surface.” slip op. at 13

  • ExcludeNot reached

    “We decline to assess the merits of Patent Owner’s Motion to Exclude. As discussed above, even considering the identified evidence, we have concluded that Petitioner has not demonstrated, by a preponderance of the evidence, that the challenged claims are unpatentable. Accordingly, Patent Owner’s Motion to Exclude is dismissed as moot.” slip op. at 20

  Patent outcomesUS 6,144,547 not shown unpatentable
  Claim construction§ 103 obviousness
  Patents in suitUS 6,144,547
• Corelogic, Inc. v. Boundary Solutions, Inc.No claims unpatentable
  PTAB · May 19, 2016 · IPR2015-00219 · APJ Lynne E Pettigrew · IPR · Final written decision

  Claims 12–15 and 17–21 were not shown unpatentable because Oosterom did not disclose searching the database using a jurisdictional identifier.

  RulingsFinal written decision

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

    “In the Institution Decision, we construed “jurisdictional identifier” to mean “a number or other name, code, or description that identifies a jurisdiction.” Dec. 6. We based our construction on the only appearance of “jurisdictional identifier” in the written description of the ’352 patent, which states: FIG. 3 illustrates a USA County Boundary Map (USACM). This is a public domain boundary file of each and every of the 3140 counties within the United States. Each of these polygons is geocoded with its county name and FIPS number, a numerical jurisdictional identifier, as illustrated in the figure. Ex. 1001, 8:48–53 (emphasis added).3 BSI does not challenge our construction of “jurisdictional identifier” in its Patent Owner Response, see PO Resp. 6, nor does CoreLogic challenge the construction in its Reply, see Reply 10. For this Final Written Decision, after considering the complete record, we maintain our construction of “jurisdictional identifier” as “a number or other name, code, or description that identifies a jurisdiction.”” slip op. at 5

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

    “Having reviewed the arguments and evidence, we are not persuaded CoreLogic has demonstrated that Oosterom discloses searching the parcel map database “using a jurisdictional identifier” as recited in claim 12. Among the attributes in Oosterom’s parcel and boundary tables identified by CoreLogic in its analysis, only the municipality codes (i.e., “municip” in the parcel table and “L_municip” and “R_municip” in the boundary table) qualify as “jurisdictional identifiers.” See Ex. 1010, 513–14 (Tables 1, 2). The “object_id” of an object, e.g., a parcel or a boundary, is a nationwide unique identifier, but there is no indication in Oosterom that the object_id of a parcel or boundary identifies a jurisdiction. See id. at 512; see also id. at 513–14 (showing object_id attribute in parcel and boundary tables). As for the “ogroup” attribute in the parcel and boundary tables, Oosterom states only that it “indicates to which group the record belongs.” Id. at 519. Nothing in Oosterom describes the ogroup as identifying a jurisdiction. Although the municipality code attributes in the parcel and boundary tables identify jurisdiction, CoreLogic does not cite any portion of Oosterom that illustrates the use of municipality codes in searching the database for selected parcels as required by claim 12. See Pet. 45. Dr. Goodchild opines that the “municipality code . . . would allow us to search [the] parcel table by that jurisdiction and to identify all the parcels in that jurisdiction.” Ex. 2010, 19:22–24. He further testifies that in his analysis, he “was concerned with the specific kind of query identified in the claim, which is much narrower than Oosterom’s discussion [and] much more specific than the broad range of queries discussed by Oosterom.” Id. at 21:14–25. Ultimately, he states that the “question [he] analyzed is whether [Oosterom’s] database is capable of supporting the type of query identified in the claim.” Id. at 22:14–16 (emphasis added). Dr. Goodchild’s testimony that municipality codes could be used in searching Oosterom’s database, however, is insufficient to establish for anticipation purposes that Oosterom discloses the step of searching a multi-jurisdictional digital parcel map database for a selected parcel boundary polygon “using a jurisdictional identifier.”” slip op. at 10

  • ExcludeOther

    “C. CoreLogic’s Motion to Exclude Evidence CoreLogic moves to exclude the redirect testimony of BSI’s expert, Mr. William Huxhold, on the ground that it was provided in response to leading questions. Mot. Excl. 1 (citing Ex. 1034, 150:6–153:8). The redirect testimony relates to a portion of Mr. Huxhold’s cross-examination testimony. Id. at 1–2 (citing Ex. 1034, 72:5–22). Because we do not rely on Mr. Huxhold’s testimony, CoreLogic’s motion is dismissed as moot.” slip op. at 12

  Patent outcomesUS 8,065,352 not shown unpatentable
  Claim construction§ 102 anticipation
  Patents in suitUS 8,065,352
• Smart Modular Technologies Inc. v. Netlist, Inc.No claims unpatentable
  PTAB · Mar 9, 2016 · IPR2014-01374 · APJ Linda M Gaudette · IPR · Final written decision

  Claims 1, 2, 4–6, 9–11, 14–17, and 20 were not shown unpatentable under § 102(b) over Averbuj because its BIST controller did not generate the claimed address signals.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedPetitioner expert creditedDecided for petitioner

    “Sechen believes a person of ordinary skill in the art would have additional experience, education, or a combination of the two, beyond that proposed by Dr. Bagherzadeh. Both experts have been employed as professors since the mid 1980s. Dr. Bagherzadeh also has some experience working with engineers in the industry by virtue of his employment with AT&T Bell Labs from 1980–1984 (Ex. 1009 ¶ 6; id. Appx. A). Both experts were awarded bachelors and masters degrees in electrical engineering. Dr. Bagherzadeh was awarded a doctorate in computer engineering, while Dr. Sechen was awarded a doctorate in electrical engineering. Based on a comparison of Dr. Bagherzadeh’s and Dr. Sechen’s declarations (Exs. 1009, 2019), we find Dr. Bagherzadeh has a broader range of educational and work experience, and, therefore, accord greater weight to his opinion as to the level of ordinary skill in the art. Dr. Bagherzadeh’s opinion is consistent with our finding as to the level of ordinary skill in the art in our Final Written Decision in IPR-971. We, therefore, adopt our finding in IPR-971 as to the level of ordinary skill in the art: [A] person of ordinary skill in the art at the time of the ’501 patent would have a Bachelor’s degree in electrical engineering, computer engineering, or in a related field and at least one year of work experience relating to memory systems, and would be familiar with the design of memory devices, memory modules, and BIST.” slip op. at 10

  • Expert testimonyPetitioner expert discountedMixed

    “We are not persuaded by Dr. Bagherzadeh’s testimony because it is devoid of specific facts and analysis as to what led him to conclude that a person of ordinary skill in the art would interpret the claim term “generate” in the manner Petitioner proposes. See id. Dr. Bagherzadeh does not explain how the IEEE definition supports an interpretation of generate as “cause or initiate transmission,” terms that do not appear in the IEEE definition. See id. Nor does Dr. Bagherzadeh identify other extrinsic evidence which he believes to be consistent with an interpretation of “generate” as meaning “cause or initiate transmission.” See id. Likewise, Dr. Bagherzadeh has not explained why he believes the ’501 patent “describe[s] generating as initiating or transmitting” (Ex. 1009 ¶ 28), as these terms do not appear in the cited portions of the ’501 patent. See Ex. 1008, 6:8–10, 11:4–11:6, 6:19–22.1 Accordingly, Dr. Bagherzadeh’s testimony does not persuade us to accept Petitioner’s interpretation of “generate” as meaning “cause.”” slip op. at 15

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

    “We are not persuaded by Dr. Bagherzadeh’s testimony because it is devoid of specific facts and analysis as to what led him to conclude that a person of ordinary skill in the art would interpret the claim term “generate” in the manner Petitioner proposes. See id. Dr. Bagherzadeh does not explain how the IEEE definition supports an interpretation of generate as “cause or initiate transmission,” terms that do not appear in the IEEE definition. See id. Nor does Dr. Bagherzadeh identify other extrinsic evidence which he believes to be consistent with an interpretation of “generate” as meaning “cause or initiate transmission.” See id. Likewise, Dr. Bagherzadeh has not explained why he believes the ’501 patent “describe[s] generating as initiating or transmitting” (Ex. 1009 ¶ 28), as these terms do not appear in the cited portions of the ’501 patent. See Ex. 1008, 6:8–10, 11:4–11:6, 6:19–22.1 Accordingly, Dr. Bagherzadeh’s testimony does not persuade us to accept Petitioner’s interpretation of “generate” as meaning “cause.”” slip op. at 15

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

    “arranged” or “prepared.” Reply 9–10. Responsive to this Board panel’s questioning during the oral hearing, however, Petitioner agreed that “designed to, adapted to, or arranged to” was an acceptable definition for the claim term “configured to.” See Tr. 22:7–17. Patent Owner contends the phrase “configured to generate” should be construed as “programmed to generate.” PO Resp. 9. Patent Owner does not propose a separate construction for the term “configured.” See generally id. at 9–17. In support of its proposed construction, Patent Owner relies on language in the ’501 patent and the testimony of its expert, Dr. Sechen. See id. Dr. Sechen testifies as to the meaning of “configured to generate,” but does not provide a separate discussion of the meaning of “configured to” outside the context of “configured to generate.” See Ex. 2019 ¶¶ 42–57. As explained in our Final Decision in IPR-971, the term “configured to” is used in the ’501 patent in conjunction with numerous terms, such as “provide” and “selectively input,” and there is a presumption that the term “configured to” should carry the same meaning in each instance. See IPR- 971 FWD, 18–19. The evidence relied on by Patent Owner in support of its proposed construction of the term “configured to” in the present inter partes review does not differ materially from the evidence relied upon by Patent Owner in IPR-971. Compare PO Resp. 9–17 with IPR-971, Paper 19, 14– 19. Accordingly, we determine the broadest reasonable construction of “configured to” is “designed to, adapted to, or arranged to” for the reasons stated above and in our Final Written Decision in IPR-971. We adopt and incorporate by reference our analysis and construction of the term “configured to” in our Final Written Decision in IPR-971 (IPR-971 FWD, 18–22). slip op. at 18

  Patent outcomesUS 8,359,501 not shown unpatentable
  Claim construction§ 102 anticipation
  Patents in suitUS 8,359,501

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.