- SK Hynix Inc. / SK Hynix America Inc. et al. v. Netlist, Inc.All claims unpatentablePTAB · Jul 5, 2018 · IPR2017-00692 · APJ Matthew R Clements · IPR · Final written decision
Claims 1–15 are unpatentable: claims 1–14 as anticipated by Best and obvious over Best, and claim 15 as obvious over Best, Mills, and Bonella.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for petitioner
“construction “requires two layers of IC packages, in which a first IC package (the Board’s ‘carrier’) contains one or more second IC packages (the Board’s memory chips).” PO Resp. 39. Petitioner counters that “[t]he Board’s construction does no such thing.” Pet. Reply 18–19. We agree with Petitioner. Patent Owner’s argument is predicated upon the erroneous assertion that “[e]ach memory chip in the Board’s ‘carrier’ requires a different IC package (i.e., a second IC package) that encloses at least one memory die.” PO Resp. 39. Each memory chip does not require its own integrated circuit package. On the contrary, it may be, as Best discloses, a die enclosed with another die in a single IC package. Having considered the arguments and evidence, we maintain our construction of “memory module” to mean “a carrier that contains one or more memory chips,” where “carrier” encompasses an integrated circuit package.” slip op. at 14
- Skill levelSkill level board ownOther
“Otherwise, 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 15
- Expert testimonyPetitioner expert creditedDecided for petitioner
“We have reviewed the arguments provided by Patent Owner and determine such arguments are insufficient to have Mr. Maltiel’s declaration excluded in its entirety. Rather, it is within our discretion to assign the appropriate weight to be accorded evidence. See 37 C.F.R. § 42.65(a); see also, e.g., Yorkey v. Diab, 601 F.3d 1279, 1284 (Fed. Cir. 2010) (holding the Board has discretion to give more weight to one item of evidence over another “unless no reasonable trier of fact could have done so”); In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) (“[T]he Board is entitled to weigh the declarations and conclude that the lack of factual corroboration warrants discounting the opinions expressed in the declarations.”); and Velander v. Garner, 348 F.3d 1359, 1371 (Fed. Cir. 2003) (“In giving more weight to prior publications than to subsequent conclusory statements by experts, the Board acted well within [its] discretion.”). Based on the record before us, we are not persuaded that we should give the entirety of Mr. Maltiel’s declaration no weight.” slip op. at 16
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“8–14. Pet. 30–37, 44–49. Notwithstanding Patent Owner’s arguments, which we have considered and which we address below, we are persuaded by Petitioner’s showing, which we adopt as our own findings and conclusions, that claims 1–14 are unpatentable under 35 U.S.C. § 102 as anticipated by Best.” slip op. at 24
Patent outcomesUS 8,874,831 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,874,831 - SK Hynix Inc. / SK Hynix America Inc. et al. v. Netlist, Inc.All claims unpatentablePTAB · Jul 5, 2018 · IPR2017-00561 · APJ Bryan F Moore · IPR · Final written decision
Claims 2–7 were held unpatentable as obvious over Averbuj and Tsern; trial as to claim 1 was terminated based on collateral estoppel.
RulingsFinal written decision- PTAB / AIA Trials › §315(e) estoppelEstoppel appliesDecided for petitioner
“Patent Owner asserts that “collateral estoppel does not apply to the application of the claim 1 limitations in assessing dependent claims 2–7.” Id. at 2. Patent Owner further asserts “[a] party seeking to apply collateral estoppel based on a prior action must show that (1) the identical issue was actually litigated; (2) the issue was actually decided in a final decision on the merits; (3) the issue was necessary to the final decision; and (4) the party being estopped was adequately represented in the prior action [i.e. “the United Access test”].” Id. at 2 (citing United Access Techs., LLC v. CenturyTel Broadband Services LLC, 778 F.3d 1327, 1331 (Fed. Cir. 2015)). We agree that this is the proper test to use to assess the applicability of collateral estoppel. Nevertheless, we note United Access applies collateral estoppel in a different context and suggests that issue preclusion can be applied in an obvoisness challenge, even if the final decision on the original issue was considered under an anticipation challenge. In particular, in United Access it was noted that “[i]ssue preclusion [traditionally called “collateral estoppel”3] applies to issues litigated in prior disputes . . . [and, thus, i]t thus makes no difference that the earlier no-damages-due-to-competition ruling arose in a case under the Truth in Negotiation Act and that this dispute arises under the False Claims Act and the common law.” United Access, 778 F.3d. at 726. The “issue” of whether Averbuj teaches the limitations of claim 1 is identical to the issue in and has been litigated in the ‘970 IPR which found that Averbuj anticipates the limitations of claim 1.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“1475, 1480 (Fed. Cir. 1994). Only those terms that 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); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., 868 F.3d 1013, 1017 (Fed. Cir. 2017).” slip op. at 16
- Skill levelSkill level petitioner adoptedDecided for petitioner
“the ‘434 Patent would have been someone with “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.” Pet. 9 (citing Ex. 1003 ¶ 51). Patent Owner asserts through its declarant: [A Person of ordinary skill in the art at the time of the invention would have been] working on the design of memory devices, would have at least a Bachelor of Science degree in Electrical and/or Computer Engineering, and at least five years of industry experience designing memory devices and controllers. Alternatively, one of ordinary skill in the art would have a Master of Science degree in Electrical and/or Computer Engineering, and at least three years of industry experience designing memory devices and controllers. Also alternatively, one of ordinary skill in the art would have a Doctorate degree in Electrical and/or Computer Engineering, and have at least one year of industry experience designing memory devices and controllers. I agree with Petitioner’s expert that the memory industry requires a POSITA with industry experience. Ex. 2010 ¶¶ 32–33. 16 Neither party has argued that the difference between the parties’ articulated level of skill should change the analysis as to patentability. Therefore, we adopt Petitioner’s articulation of the level of skill, above, and acknowledge that, commensurate with that articulation of the level of skill, the level of ordinary skill in the art is also 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 16
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed
“Pet. 41. In other words, Petitioner asserts that because a BIST unit can be incorporated into a chip mounted on a PCB and because memory module 12 is part of the BIST unit, memory unit 12 is mounted on a PCB. We disagree. Unlike claim 1, which simply requires the memory unit is “on” the PCB, claim 2 requires that the memory module be a “physically separate component” and “mounted” on the PCB. Petitioner has not shown sufficient support for its broad reading that a module which is a circuit embedded in a larger circuit included in a chip may be considered a physically separate component mounted on a PCB. Claims 3–7 depend from claim 2, and the Petition fails to provide additional prior art disclosures that cure the deficiency with respect to claim 2; that is, disclosure of separate components 22 mounted on a printed circuit board in Averbuj. Pet. 41–48. Thus, Petitioner has failed to establish, by a preponderance of the evidence, its assertion that claims 2–7 are anticipated by Averbuj.” slip op. at 22
Patent outcomesUS 8,001,434 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,001,434 - SK Hynix Inc. / SK Hynix America Inc. et al. v. Netlist, Inc.All claims unpatentablePTAB · Jul 5, 2018 · IPR2017-00577 · APJ Bryan F Moore · IPR · Final written decision
Claims 1–3, 7, 8, and 10–12 are unpatentable as obvious over Halbert and Amidi; the other asserted grounds did not establish unpatentability.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Neither party has argued that the difference between the parties’ articulated level of skill should change the analysis as to patentability. Therefore, we adopt Petitioner’s articulation of the level of skill and acknowledge that the level of ordinary skill in the art is also reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. 10 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 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“C. Claim Construction Analysis We determine that it is not necessary to provide an express interpretation of any term of the claims.” slip op. at 11
- BurdenNot shown unpatentable
“written to or read from simultaneously. Pet. 37–41. In particular, Petitioner asserts that Halbert’s directing of data, during a write operation, from the system memory data bus to registers 126 and 128 in successive clock cycles means that data being received by the memory devices corresponding to registers 126 and 128, respectively (e.g., ranks 140 and 142, respectively), occurs in successive clock cycles. Thus, according to Petitioner, “those memory devices associated with register 126 (i.e. Rank 140) receive data transmission from the system memory controller in the first clock cycle, but not in the second clock cycle . . . [and] those memory devices associated with register 128 (i.e., Rank 142) receive data transmissions from the system memory controller in the second clock cycle, but not in the first clock cycle.” Id. at 38. Therefore, according to Petitioner, Halbert does not, and cannot, write to the memory devices in ranks 140 and 142 simultaneously, because the memory devices in ranks 140 and 142 do not receive data concurrently. Id. In its Preliminary Response, Patent Owner asserts8 while data is sequentially latched onto registers 126 and 128, that data is then concurrently, not sequentially, written to memory device array 140/142—such operation is illustrated in Fig. 4, 8 Patent Owner chose not to request additional briefing to address this ground and arguments in the Preliminary Response are generally waived (Paper 8, 2–3), however, we acknowledge these arguments due to the unusual circumstance created by the Supreme Court’s decision in SAS. 15 above. Thus, all of Halbert’s memory devices are selected or enabled concurrently such that Halbert can write to all of its memory devices simultaneously. This is not, and is exactly counter to, the Petitioner’s assertions that the memory devices in ranks 140 and 142 receive—and thus, store—data sequentially. Prelim. Resp. 27–28. We agree. Petitioner has not explained how latching data to registers 126 and 128 is data transmission between a memory controller and a memory module when registers 126 and 128 are outside of the memory module. Moreover, Petitioner’s arguments and evidence with respect to claims 2, 3, 7, 8, and 10–12 do not cure this deficiency.” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“Based on Petitioner’s citations to specific prior art disclosures and supporting evidence, we are persuaded that Petitioner sets forth sufficient articulated reasoning with rational underpinning to support the legal conclusion that it would have been obvious to modify the teachings of Halbert with Amidi’s teachings to include rank select functionality. Pet. 64– 66. For example, Petitioner asserts: 19 To employ this chip select functionality of Amidi in the system of Halbert would have been only the arrangement old elements with each performing the same function it had been known to perform and yielding no more than one would expect from such an arrangement, i.e., the predictable result of operating each rank at desired times, and well within the level of ordinary skill to achieve. EX1003 ¶¶175-176. Moreover, a person of ordinary skill in the art would have been motivated to use the chip select functionality of Amidi in the system of Halbert to permit the use of lower density, and therefore cheaper and more readily available, memory in the system of Halbert, while using the existing address and data signal lines of Halbert. EX1019, ¶[0008]; see also id., ¶¶ [0002- 0012]; EX1003 ¶177. A skilled artisan would also have been motivated to include such prior art chip selection signals in Halbert in order to follow the traditional design of memory ranks including the use of traditional memory devices and the traditional address signals, as Halbert explains. EX1005, 3:55-57; EX1003 ¶178. Furthermore, Halbert suggests such a use by disclosing that “[m]any other variations on the illustrated embodiments are possible. For instance, . . . [t]he illustrated examples also show two ranks of memory, but other numbers of ranks are also possible.” EX1005, 9:20-26. Skilled artisans at the time would have understood that, in case the number of ranks is increased, chip/bank select signals would need to be used to activate some but not all of the ranks. See, e.g., EX1019 at FIGS. 5, 6A-6B (showing logic circuitry to generate chip select signals for” slip op. at 19
Patent outcomesUS 8,516,185 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,516,185 - Ebay Inc. / Alibaba.Com Hong Kong Ltd. et al. v. Global Equity Management (SA) Pty. Ltd.All claims unpatentablePTAB · Apr 18, 2018 · IPR2016-01828 · APJ Kevin C Trock · IPR · Final written decision
Claims 1 and 2 are unpatentable as obvious over the Partition Magic 3.0 User Guide because it teaches or suggests all claim limitations, and the secondary considerations lack evidentiary support and nexus.
RulingsFinal written decision- Prior constructionPrior construction adoptedDecided for petitioner
“Reply 6. At oral argument, Petitioner’s counsel and Patent Owner’s counsel both agreed that the district court’s construction in the Lead Case with respect to the claim term “virtual cabinet” was acceptable. Tr. 18: 18–20; 25: 6–8, 17–20; 28: 10–13; 31: 8–15; 39: 1–5; 40: 5–8; 41: 13–17. The district court construed the term “virtual cabinet” as follows: “‘virtual cabinet,’ ‘cabinet record,’ and ‘virtual cabinet record’ each means ‘virtual storage device, capable of containing, typically through the use of virtual table of content pointers, all (or partitions of) shared (or non-shared) operating systems, application software (both OS dependent and No-OS embedded), databases and memory.’” Ex. 1010, 32–33. The district court’s construction of “virtual cabinet” is derived from the ’400 patent’s definition of the term “cabinet.” See e.g. Ex. 1001, 2:47–52; 5:24–29. The ’400 patent equates the terms “cabinet,” “Cabinet Record,” and “Virtual Cabinet.” Id. at 2:46–47; 5:22–24. Because the district court’s construction of “virtual cabinet” is reasonable and is based upon the express definition of “cabinet” found in the ’400 patent, we accept and adopt the district court’s construction.” Our analysis does not require the express construction of any additional claim terms.” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner
“preamble of claim 1 should be considered limiting.” PO Resp. 21. We note that this is the opposite position Patent Owner took in the Lead Case, where Patent Owner argued that the preamble is not limiting. See Ex. 1010, 20–21. In the Lead Case, the district court found that the preamble of claim 1 was not limiting. Id. at 25. We agree with the district court. As the district court pointed out, “[t]he preamble simply states the intended use of the” graphical user interface—i.e., “for displaying means for allocating a computer device’s resources to multiple operating system environments, partitioned on individual virtual cabinets, on said computer device.” Id. Moreover, the district court noted “[t]here is nothing in the prosecution history that establishes that the preamble was used to overcome a prior art rejection” and, “[t]o the contrary, the patentee expressly distinguishes the prior art using limitations found in the body of the claim, not using the preamble.” Id. Even if the preamble were limiting, however, we would still not be persuaded by Patent Owner’s argument that the graphical user interface taught by Figure 3.7 of the 3.0 User Guide “is limited to partitioning hard disk space, and fails to allocate any other computer resources such as memory” (PO Resp. 22) because those arguments are not commensurate with the scope of the preamble, which does not recite allocating all of a computer device’s resources or allocating memory specifically. On the contrary, the preamble is satisfied if any of a computer device’s resources are allocated to multiple operating system environments.” slip op. at 14
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner argues that Patent Owner’s proposed level of skill is unreasonably high. Pet. Reply 11–12. Petitioner argues that Mr. Rafizadeh, a named inventor on the ’400 patent, would not qualify as a POSITA under Patent Owner’s proposed standard, because Mr. Rafizadeh did not start working on virtualization until 1997, and would not have had four years of experience in virtualization as of the filing date of the ’400 patent application. Id. (citing Ex. 1026, 22:4–6; Ex. 2007 ¶¶ 21–22). Moreover, Petitioner argues, the other individuals Mr. Rafizadeh believed to be POSITAs at the time of the invention—such as Parviz Moayyad, Peter Druschell, and Jeff Barnes—all had been working on virtualization for only two years as of 1999, and thus would not have qualified as POSITAs under Patent Owner’s proposed level of skill. Id. at 12 (citing Ex. 1026, 54:11–20, 56:2–10). Petitioner also notes that Patent Owner’s Declarant, Dr. Rosenberg, proposed a definition of a POSITA that did not require four years of experience in virtualization. Id. (citing Ex. 2002 ¶ 33). We agree with Petitioner that Patent Owner’s proposed level of skill is unreasonably high. The educational background and experience of those working in the field, including the inventor, are factors considered, among others, in determining the appropriate level of ordinary skill. Daiichi Sankyo Co., Ltd. v. Apotex, Inc., 501 F.3d 1254, 1257 (Fed. Cir. 2007). Here, however, Patent Owner proposes years of experience in computer virtualization beyond that held by the inventor and other acknowledged skilled artisans working in the field at the time of the claimed invention. Accordingly, we decline to adopt Patent Owner’s proposed years of experience in virtualization and find that a POSITA would be a person with a bachelor’s degree in computer science, computer engineering, or the equivalent, having between two to four years of experience in computer operating systems, programs and databases, and/or graphical user interfaces or virtualization.” slip op. at 7
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“Our construction of “virtual cabinet” requires only that a virtual cabinet is capable of containing operating systems, application software, databases and memory, and that this is accomplished typically by using content pointers. See also Ex. 1001, 2:47–52. The 3.0 User Guide teaches that “partitions will be like file cabinet drawers in which you can separate your operating systems, applications, and data files” (Pet. 29–30, quoting Ex. 1005, 3), and that “you should create primary partitions to install operating systems” (Pet. 29, quoting Ex. 1005, 38), allowing users “to make the currently selected partition the active partition” (id., quoting Ex. 1005, 79). The 3.0 User Guide also teaches that “[a] primary partition may contain any operating system (OS) as well as data files, such as applications and user files.” Pet. Reply 16 (quoting Ex. 1005, 126). Thus, we are persuaded that the primary partitions illustrated in Figure 3.7 and taught by the 3.0 User Guide are “capable of containing . . . operating systems, application software . . ., databases, and memory,” as required by our construction, thereby teaching the recited “cabinet selection button bar graphically representing at least one virtual cabinet.”” slip op. at 19
Patent outcomesUS 6,690,400 unpatentableClaim construction§ 103 obviousnessPatents in suitUS 6,690,400 - DISH Network, LLC v. TQ Delta, LLCAll claims unpatentablePTAB · Feb 10, 2018 · IPR2016-01469 · APJ Trevor M Jefferson · IPR · Final written decision
Claims 1, 2, 11, and 12 are unpatentable over Bowie, Morelli, and ANSI T1.413; claims 4, 14, 16, and 18 are unpatentable over Bowie and Morelli.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“Having considered the parties’ arguments and evidence, we do not agree with Patent Owner’s proposed construction that “maintaining synchronization” requires timing synchronization by correcting errors or differences between timing references. The claims of the ’268 patent do not recite “synchronization signal” or “synchronization frame” but refer only to “maintaining synchronization” during low power mode without specification as to the method of synchronization. See, e.g., Ex. 1001, 10:6–17 (claims 1 and 2). Indeed, claims 2 and 12 do not recite any particular synchronization signal or synchronization frame as a limitation.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“In light of the arguments and evidence presented, we are not persuaded that this term requires an express construction. Patent Owner’s proposed construction does not add necessary clarity to the claims, as it 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.” Accordingly, an express construction is not necessary to resolve the disputes between the parties.” slip op. at 13
- 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 14
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“Petitioner notes, Morelli expressly discusses the receiver receiving while the transmitter is in low power mode. Reply 8–9; Ex. 1005, Fig. 6A (block 102), 15:46–52; 16:29–34). Thus, Morelli does not disclose mere boilerplate language that is not specific or nonenabling, but specifically discloses a transmitter 12 and receiver 16 in Figures 6A–9 where the receiver remains on while the transmitter is off. Reply 7–8. We are not persuaded by Patent Owner’s argument regarding Morelli’s Received Signal Strength Indicator (RSSI). PO Resp. 31–32, 33–34 (discussing RSSI). We do not agree with Patent Owner that Morelli’s teaching regarding using RSSI to determine whether to enter or exit a low power (“sleep”) (Ex. 1005, Abstract) could indicate that the receiver in Morelli is performing the RSSI function to determine when data is “available to be received,” but not actually using the receiver to receive data during the transceiver’s low power mode. Id. Such speculation is belied by the express teachings of Morelli. As Petitioner argues, Morelli states that “it is equally possible to have either the transmitter 12 or receiver 16 be designed to enter a sleep mode as described herein while the other is always in an active mode” (Ex. 1005, 21:51–54). Pet. 23, 40–41. We are also persuaded by Petitioner’s argument and evidence that Morelli is enabling, as it discloses in Figures 6A–9 and accompanying embodiments that the data received by the receiver is provided to MAC 30 to determine if the received packet requires a response necessary to switch the transmitter from sleep to active mode. Reply 9; Ex. 1005, Figs. 1 (control signal on line 38), 6A (block 102), 15:46–52, 15:59–62, 16:29–34; see also Pet. 40–41 (citing Ex. 1005, 1:45–50, 6:43–51, 8:16–20, 8:46–59, Fig. 2, 8:60–9:57, Fig. 3, 14:6–64, 19:7–10, 21:51–54). As Petitioner argues, in the case when Morelli determines that a response is not required, the receiver in Morelli is on and actively receiving data to make the determination based on the data received, while the transmitter is off or sleeping. Reply 8–9; Ex. 1005, Fig. 5A, 15:46–52; see also Pet. 40–41. We also note that Petitioner has provided testimony that a person of ordinary skill in the art would have been able to configure a circuit in accordance with the operation of Morelli and Bowie combined. Ex. 1002 ¶¶ 152–153; Pet. 41; Reply 8–9. Accordingly, we determine that Morelli provides sufficient detailed disclosure teaching of a receiver in full power mode and the transmitter in low power mode as required in the challenged claims.” slip op. at 22
Patent outcomesUS 9,094,268 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,094,268 - Cisco Systems, Inc. / DISH Network, LLC et al. v. TQ Delta, LLCAll claims unpatentablePTAB · Oct 26, 2017 · IPR2017-00420 · APJ Sally C Medley · IPR · Final written decision
Claims 1–6 are unpatentable as obvious over Milbrandt, Hwang, Chang, and ANSI T1.413 under § 103(a).
RulingsFinal written decision- Skill levelSkill level board ownOther
“Patent Owner’s expert, Dr. Douglas Chrissan, opines that a person of ordinary skill in the art would have had (1) a bachelor’s degree in electrical engineering, and (2) at least three years of experience working with multicarrier communication systems. Ex. 2001 ¶ 34. 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 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“frequency domain received idle channel noise information,” “array,” and “transceiver.” Pet. 8–9. In our Decision to Institute, we interpreted these terms. Dec. 5–8. Neither party has indicated that our interpretations were improper and we do not perceive any reason or evidence that now compels any deviation from our initial interpretations. See, PO Resp. 6 (“Patent Owner does not contest the Board’s express claim constructions.”); Pet. Reply 8 n.2. Accordingly, the following constructions apply to this Decision: Claim Term Construction frequency domain received idle information about the background channel noise information noise present in each of a plurality of frequency subchannels when the subchannels are not in use array an ordered collection of multiple data items of the same type transceiver a device, such as a modem, with a transmitter and receiver slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“ordinary skill would have recognized that Chang measures frequency domain received idle channel noise information (background noise).10 Pet. 31‒32; Ex. 1009, 60‒61. Petitioner concludes that it would have been obvious for Milbrandt to measure and evaluate background channel noise, for the purpose of assessing system interactions from different sources of noises and to address any problems. Pet. 32; Ex. 1009, 35‒37. Notwithstanding Patent Owner’s arguments with respect to the combined teachings of Milbrandt and Chang, which we address below, we are persuaded by Petitioner’s showing, and agree that it would have been obvious to combine Chang with the teachings of Milbrandt for the purpose of assessing interactions from other sources. The record evidence supports the conclusion of obviousness, because combining Chang’s teaching of assessing idle channel noise to Milbrandt’s system would have provided a person of ordinary skill in the art additional information, such as assessing interactions from other sources, enabling a person of ordinary skill in the art to have taken remedial measures to address system interactions. Pet. 16 (citing Ex. 1009, 35‒36).” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“A reference does not teach away if it merely expresses a general preference for an alternative invention but does not “criticize, discredit, or otherwise discourage” investigation into the invention claimed. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (emphasis added). Our reviewing court has recently held that “[e]vidence concerning whether the prior art teaches away from a given invention must relate to and be commensurate in scope with the ultimate claims at issue.” Idemitsu Kosan Co. v. SFC Co., 2016-2721, 2017 WL 4078964 *4 (September 15, 2017) (citing MeadWestVaco Corp. v. Rexam Beauty and Closures, Inc., 731 F.3d 1258, 1264‒1265 (Fed. Cir. 2013); In re Kahn, 441 F.3d 977, 990 (Fed. Cir. 2006); In re Zhang, 654 F. App’x 488, 490 (Fed. Cir. 2016) (“While a prior art reference may indicate that a particular combination is undesirable for its own purposes, the reference can nevertheless teach that combination if it remains suitable for the claimed invention.”) (emphasis added). The claims do not foreclose a “truck roll.” For instance, claim 1 recites a transceiver capable of transmitting test information over a communication channel. Claim 1 further recites that the transceiver comprise a “transmitter portion capable of transmitting a message” where “the message comprises one or more data variables that represent the test information” and that at least one data variable “comprises an array representing frequency domain received idle channel noise information.” Thus, claim 1 is directed to a transceiver and the type of message the transceiver is capable of transmitting. There is nothing in claim 1 that specifies how the transceiver message originates or how the test information is measured. While we agree with Patent Owner that the Specification of the ’430 patent describes that dispatching a technician to a remote site to perform testing, e.g., a “truck roll,” is time consuming and expensive (PO Resp. 12 (citing Ex. 1001, 1:21‒23)), we find that there are described embodiments of the invention that include a truck roll. Ex. 1001, 6:31‒38 (“If the CRC checker 210 does not determine a correct CRC at the maximum power level and the diagnostic link mode [cannot] be initiated then other methods for determining diagnostic information are utilized, such as dispatching a technician to the remote site, or the like.”) and 3:12‒14 (“[t]he systems and methods of this invention can enter the diagnostic link mode manually, for example, at the direction of a technician or a user after completing a portion of initialization.”). For these reasons, the claimed invention does not preclude a truck roll. In any event, as discussed above, the claims are not directed to how test information is obtained or measured. Accordingly, even if Patent Owner is correct that Milbrandt discourages a truck roll for its own purposes, we find the combined teachings of Milbrandt and Chang are relevant because the combination remains suitable for the claimed invention.” slip op. at 20
Patent outcomesUS 7,835,430 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,835,430 - Cisco Systems, Inc. / DISH Network, LLC et al. v. TQ Delta, LLCAll claims unpatentablePTAB · Oct 26, 2017 · IPR2017-00251 · APJ Sally C Medley · IPR · Final written decision
Claims 1–6 are unpatentable as obvious over Milbrandt, Hwang, Chang, and ANSI T1.413.
RulingsFinal written decision- Skill levelSkill level board ownOther
“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 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for petitioner
“frequency domain received idle channel noise information,” “array,” and “transceiver.” Pet. 8–9. In our Decision to Institute, we interpreted these terms. Dec. 5–8. Neither party has indicated that our interpretations were improper and we do not perceive any reason or evidence that now compels any deviation from our initial interpretations. See, PO Resp. 6 (“Patent Owner does not contest the Board’s express claim constructions.”); Pet. Reply 8 n.2. Accordingly, the following constructions apply to this Decision: slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“A reference does not teach away if it merely expresses a general preference for an alternative invention but does not “criticize, discredit, or otherwise discourage” investigation into the invention claimed. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (emphasis added). Our reviewing court has recently held that “[e]vidence concerning whether the prior art teaches away from a given invention must relate to and be commensurate in scope with the ultimate claims at issue.” Idemitsu Kosan Co. v. SFC Co., 2016-2721, 2017 WL 4078964 *4 (September 15, 2017) (citing MeadWestVaco Corp. v. Rexam Beauty and Closures, Inc., 731 F.3d 1258, 1264‒1265 (Fed. Cir. 2013); In re Kahn, 441 F.3d 977, 990 (Fed. Cir. 2006); In re Zhang, 654 F. App’x 488, 490 (Fed. Cir. 2016) (“While a prior art reference may indicate that a particular combination is undesirable for its own purposes, the reference can nevertheless teach that combination if it remains suitable for the claimed invention.”) (emphasis added).” slip op. at 20
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“A reference does not teach away if it merely expresses a general preference for an alternative invention but does not “criticize, discredit, or otherwise discourage” investigation into the invention claimed. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (emphasis added). Our reviewing court has recently held that “[e]vidence concerning whether the prior art teaches away from a given invention must relate to and be commensurate in scope with the ultimate claims at issue.” Idemitsu Kosan Co. v. SFC Co., 2016-2721, 2017 WL 4078964 *4 (September 15, 2017) (citing MeadWestVaco Corp. v. Rexam Beauty and Closures, Inc., 731 F.3d 1258, 1264‒1265 (Fed. Cir. 2013); In re Kahn, 441 F.3d 977, 990 (Fed. Cir. 2006); In re Zhang, 654 F. App’x 488, 490 (Fed. Cir. 2016) (“While a prior art reference may indicate that a particular combination is undesirable for its own purposes, the reference can nevertheless teach that combination if it remains suitable for the claimed invention.”) (emphasis added). The claims do not foreclose a “truck roll.” For instance, claim 1 recites a transceiver capable of transmitting test information over a communication channel. Claim 1 further recites that the transceiver comprise a “transmitter portion capable of transmitting a message” where “the message comprises one or more data variables that represent the test information” and that at least one data variable “comprises an array representing frequency domain received idle channel noise information.” Thus, claim 1 is directed to a transceiver and the type of message the transceiver is capable of transmitting. There is nothing in claim 1 that specifies how the transceiver message originates or how the test information is measured. While we agree with Patent Owner that the Specification of the ’430 patent describes that dispatching a technician to a remote site to perform testing, e.g., a “truck roll,” is time consuming and expensive (PO Resp. 12 (citing Ex. 1001, 1:21‒23)), we find that there are described embodiments of the invention that include a truck roll. Ex. 1001, 6:31‒38 (“If the CRC checker 210 does not determine a correct CRC at the maximum power level and the diagnostic link mode [cannot] be initiated then other methods for determining diagnostic information are utilized, such as dispatching a technician to the remote site, or the like.”) and 3:12‒14 (“[t]he systems and methods of this invention can enter the diagnostic link mode manually, for example, at the direction of a technician or a user after completing a portion of initialization.”). For these reasons, the claimed invention does not preclude a truck roll. In any event, as discussed above, the claims are not directed to how test information is obtained or measured. Accordingly, even if Patent Owner is correct that Milbrandt discourages a truck roll for its own purposes, we find the combined teachings of Milbrandt and Chang are relevant because the combination remains suitable for the claimed invention.” slip op. at 20
Patent outcomesUS 7,835,430 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,835,430 - Cisco Systems, Inc. / DISH Network, LLC et al. v. TQ Delta, LLCAll claims unpatentablePTAB · Oct 26, 2017 · IPR2016-01006 · APJ Sally C Medley · IPR · Final written decision
Claims 1–6 are unpatentable as obvious over Milbrandt, Hwang, Chang, and ANSI T1.413 under § 103(a).
RulingsFinal written decision- Skill levelOther
“B. Level of Ordinary skill in the Art Citing its declarant, Dr. Sayfe Kiaei, Petitioner contends that a person having ordinary skill in the art at the time of the invention would have had (1) a Master’s degree in Electrical and/or Computer Engineering, or equivalent training, and (2) approximately five years of experience working in digital telecommunications. Pet. 10–11; Ex. 1009 ¶ 36. Petitioner also contends that “[l]ack of work experience can be remedied by additional education, and vice versa.” Id. at 11. Patent Owner’s expert, Dr. Douglas Chrissan, opines that a person of ordinary skill in the art would have had (1) a bachelor’s degree in electrical engineering, and (2) at least three years of experience working with multicarrier communication systems. Ex. 2001 ¶ 34. 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 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“reasonable construction in light of the specification of the patent in which they appear. See 37 C.F.R. § 42.100(b); Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,766. Under the broadest reasonable construction standard, claim terms are 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 Translogic, 504 F.3d at 1257. Petitioner proposes constructions for the following claim terms: “frequency domain received idle channel noise information,” “array,” and “transceiver.” Pet. 8–9. In our Decision to Institute, we interpreted these terms. Dec. 5–8. Neither party has indicated that our interpretations were improper and we do not perceive any reason or evidence that now compels any deviation from our initial interpretations. See, PO Resp. 6 (“Patent Owner does not contest the Board’s express claim constructions.”); Pet. Reply 8 n.2. Accordingly, the following constructions apply to this Decision:” slip op. at 7
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“comprises one or more data variables that represent the test information.” For this limitation, Petitioner contends that Milbrandt describes “subscriber line information 28,” that includes power spectrum density per sub-frequency, attenuation information per sub-frequency, and noise information per sub-frequency. Pet. 27 (citing Ex. 1011, 11:31‒43). Petitioner contends, with supporting evidence, and we agree, that it would have been obvious to a person having ordinary skill in the art that the values representing the test information are “one or more data variables.” Pet. 27‒28 (citing Ex. 1009, 51‒53; Ex. 1011, 11:45‒53).” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“A reference does not teach away if it merely expresses a general preference for an alternative invention but does not “criticize, discredit, or otherwise discourage” investigation into the invention claimed. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (emphasis added). Our reviewing court has recently held that “[e]vidence concerning whether the prior art teaches away from a given invention must relate to and be commensurate in scope with the ultimate claims at issue.” Idemitsu Kosan Co. v. SFC Co., 2016-2721, 2017 WL 4078964 *4 (September 15, 2017) (citing MeadWestVaco Corp. v. Rexam Beauty and Closures, Inc., 731 F.3d 1258, 1264‒1265 (Fed. Cir. 2013); In re Kahn, 441 F.3d 977, 990 (Fed. Cir. 2006); In re Zhang, 654 F. App’x 488, 490 (Fed. Cir. 2016) (“While a prior art reference may indicate that a particular combination is undesirable for its own purposes, the reference can nevertheless teach that combination if it remains suitable for the claimed invention.”) (emphasis added).” slip op. at 20
Patent outcomesUS 7,835,430 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,835,430 - Cisco Systems, Inc. / DISH Network, LLC et al. v. TQ Delta, LLCAll claims unpatentablePTAB · Oct 26, 2017 · IPR2017-00255 · APJ Sally C Medley · IPR · Final written decision
Claims 1–30 are unpatentable under § 103 over the combinations of Shively and Stopler with the additional references identified for each ground.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Based on the record before us, we agree with Patent Owner’s proposed construction as far as meaning “adjusting the phases of a plurality of carriers in a single multicarrier symbol.” PO Resp. 14. Patent Owner, however, provides no persuasive reasoning for also adding to that construction “by pseudo-randomly varying amounts.” Id. Rather, Patent Owner merely contends that (1) in a corresponding district court matter, the court construed the phrase to mean “adjusting the phase characteristics of the carrier signals by pseudo-randomly varying amounts;” (2) during prosecution of a child application to the ’158 patent, the applicant explained that a “scrambler” operates by pseudo-randomly selecting bits to invert; and (3) there was no fundamental disagreement between parties that scrambling involves adjusting the phase characteristic of a carrier signal by pseudo-randomly varying amounts. PO Resp. 16–17. Patent Owner’s explanation for why we should add “by pseudo-randomly varying amounts” to its proposed construction is conclusory. Id. at 17. We interpret claims using the broadest reasonable construction in light of the specification of the involved patent. That standard is not the same as the standard used in district court. Patent Owner, however, provides no explanation for why we should apply the district court construction, which is not necessarily the same as used before us, here. Moreover, Patent Owner does not explain why statements made during prosecution of a child application for the term “scrambler” is relevant to how we should interpret the disputed phrase that does not even contain the term “scrambler” in it. Id. at 16. In summary, Patent Owner’s arguments are conclusory. For all of the above reasons, and for purposes of this decision, we determine that “scrambling the phase characteristics of the carrier signals” means “adjusting the phases of a plurality of carriers in a single multicarrier symbol.”” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“We need not determine the exact probability of clipping in Shively’s proposed system because, even assuming Patent Owner’s analysis is accurate, it does not rebut Petitioner’s reason to combine. Petitioner does not allege that Shively’s proposed system causes clipping, or that a person of ordinary skill in the art would have been motivated to reduce PAR only if it caused clipping. Instead, Petitioner alleges that Shively’s proposed system would have an “increased” or “high” PAR:” slip op. at 30
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation foundDecided for petitioner
“First, the portions cited in the ’158 patent in the Petition and in Dr. Tellado’s declaration come from the “BACKGROUND OF THE INVENTION” section of the patent. That portion of the ’158 patent uses words such as “conventional” indicating that what is described in the “BACKGROUND OF THE INVENTION” section is information that was known at the time of the invention, not just by the inventors, but persons of ordinary skill in the art. Patent Owner does not contend otherwise. In addition, Dr. Tellado testified that a person having ordinary skill in the art would have recognized that the purpose of Stopler’s phase scrambler to randomize data symbols would be to reduce PAR of transmitted signals and that the person would have been familiar with the problems created by a high PAR, including PAR due to phase-aligned carriers. Ex. 1009 ¶¶ 60, 66. Moreover, Patent Owner’s own declarant recognized that PAR was a known problem at the time of the invention. Ex. 2003 ¶ 23 (“Conventional multicarrier systems, therefore, were designed to accommodate PAR.”). The ANSI T1.413-1995 standard also confirms that PAR was known at the time of the invention by describing that “[a] DMT time-domain signal has a high peak-to-average ratio (its amplitude distribution is almost Gaussian), and large values may be clipped by the digital-to-analog converter.” Ex. 1018, 36 (Section 6.5 “Tone ordering”). Based on the record evidence, we find that a person having ordinary skill in the art would have known about the problem of high PAR due to phase-aligned carriers.” slip op. at 32
- ExcludeMotion to exclude, deniedDenied
“portions of 1026 and 2013. PO Mot. Exc. Exhibit 1022 is styled “Robert T. Short, ‘Physical Layer,’ in WIMEDIA UWB (2008).” Pet. Reply 5. Patent Owner argues that we should exclude Exhibit 1022 as irrelevant. PO Mot. Exc. 2–4. Exhibit 1022 was not cited or discussed in any way in Petitioner’s Reply. Moreover, we did not rely on Exhibits 1022 in rendering our decision. We did not and need not consider Exhibit 1022. We have determined that Petitioner has demonstrated, by a preponderance of the evidence, that the challenged claims are unpatentable, without considering the specific objected to evidence.” slip op. at 42
Patent outcomesUS 8,718,158 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,718,158 - Cisco Systems, Inc. / DISH Network, LLC et al. v. TQ Delta, LLCAll claims unpatentablePTAB · Oct 26, 2017 · IPR2017-00417 · APJ Sally C Medley · IPR · Final written decision
Claims 1–30 are unpatentable under § 103 over the stated combinations of Shively and Stopler, with Gerszberg, Bremer, or Flammer as applicable.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary skill in the Art Citing its declarant, Dr. Jose Tellado, Petitioner contends that a person having ordinary skill in the art at the time of the invention would have had (1) a Master’s degree in Electrical and/or Computer Engineering, or equivalent training, and (2) approximately five years of experience working with multicarrier communications systems. Pet. 10–11; Ex. 1009 ¶ 18. Petitioner also contends that “[l]ack of work experience can be remedied by additional education, and vice versa.” Pet. 11. Patent Owner’s expert, Dr. Robert Short indicated that for purposes of the proceeding he adopts Dr. Tellado’s definition of a person of ordinary skill in the art. Ex. 2003 ¶ 16. For purposes of this Decision, we adopt Petitioner’s proposed definition, and further find that 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 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionNo construction neededOther
“C. Claim Interpretation 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); see also Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,766. Under the broadest reasonable construction standard, claim terms are 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. In re Translogic, 504 F.3d at 1257. Petitioner proposes constructions for the following claim terms: “multicarrier” and “transceiver.” Pet. 8–9. In our Decision to Institute, we interpreted the term “transceiver” to mean “a device, such as a modem, with a transmitter and receiver,” but determined that it was not necessary to interpret the term “multicarrier.” Dec. 6–7. Neither party has indicated that our determinations were improper and we do not perceive any reason or evidence that now compels any deviation from our initial determinations. PO Resp. 13–14; Pet. Reply 7–8. Accordingly, the construction of transceiver to mean “a device, such as a modem, with a transmitter and receiver” applies to this Decision. Dec. 7. For purposes of this decision, we find it necessary to construe “scrambling the phase characteristics of the carrier signals” found in claim 1.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Based on the record before us, we agree with Patent Owner’s proposed construction as far as meaning “adjusting the phases of a plurality of carriers in a single multicarrier symbol.” PO Resp. 14. Patent Owner, however, provides no persuasive reasoning for also adding to that construction “by pseudo-randomly varying amounts.” Id. Rather, Patent Owner merely contends that (1) in a corresponding district court matter, the court construed the phrase to mean “adjusting the phase characteristics of the carrier signals by pseudo-randomly varying amounts;” (2) during prosecution of a child application to the ’158 patent, the applicant explained that a “scrambler” operates by pseudo-randomly selecting bits to invert; and (3) there was no fundamental disagreement between parties that scrambling involves adjusting the phase characteristic of a carrier signal by pseudo-randomly varying amounts. PO Resp. 16–17. Patent Owner’s explanation for why we should add “by pseudo-randomly varying amounts” to its proposed construction is conclusory. Id. at 17. We interpret claims using the broadest reasonable construction in light of the specification of the involved patent. That standard is not the same as the standard used in district court. Patent Owner, however, provides no explanation for why we should apply the district court construction, which is not necessarily the same as used before us, here. Moreover, Patent Owner does not explain why statements made during prosecution of a child application for the term “scrambler” is relevant to how we should interpret the disputed phrase that does not even contain the term “scrambler” in it. Id. at 16. In summary, Patent Owner’s arguments are conclusory. For all of the above reasons, and for purposes of this decision, we determine that “scrambling the phase characteristics of the carrier signals” means “adjusting the phases of a plurality of carriers in a single multicarrier symbol.”” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“proposed system because, even assuming Patent Owner’s analysis is accurate, it does not rebut Petitioner’s reason to combine. Petitioner does not allege that Shively’s proposed system causes clipping, or that a person of ordinary skill in the art would have been motivated to reduce PAR only if it caused clipping. Instead, Petitioner alleges that Shively’s proposed system would have an “increased” or “high” PAR: A POSITA would have recognized that by transmitting redundant data on multiple carriers, Shively’s transmitter would suffer from an increased peak-to-average power ratio. [Ex. 1009, p. 27.] This increase is due to the fact that the overall transmitted signal in a multicarrier system is essentially the sum of its multiple subcarriers. Id. When N subcarrier signals with the same phase are added together, they have a peak power which is N times greater than their individual maximum powers. Id. Since Shively’s subcarriers use quadrature amplitude modulation (QAM) . . . transmitting the same bits on two different subcarriers causes those subcarriers to have the same phase and amplitude. Id., pp. 27–28. By transmitting the same bits on multiple subcarriers, Shively creates a situation where those multiple subcarriers will be phase-aligned. Having phase-aligned subcarriers causes a high peak-to-average power ratio (PAR), since all of the subcarriers add up coherently at the same time. Id., p. 28. Pet. 14–15 (emphases added). Patent Owner criticizes Petitioner’s declarant for not providing “calculations or data that illustrate to what degree there is an ‘increase’ in PAR with Shively’s transmitter” (PO Resp. 48), but we are not persuaded that such calculations and data are necessary. Petitioner’s reason to combine does not depend on the PAR increase exceeding some specific numeric threshold. There is no dispute that transmitting the same data on multiple carriers increases PAR (Pet. Reply 10 (citing PO Resp. 6–7; Ex. 2003 (Short Decl.) ¶ 22)) or that Shively’s technique, specifically, will increase PAR (PO Resp. 28 (“Shively’s ‘spreading’ technique will contribute a small uptick in clipping probability.”). There also is no dispute that equipment designed to handle a higher PAR can be larger, more expensive, and more power hungry than equipment designed to handle a lower PAR. Pet. Reply 36 (citing Ex. 2003 ¶ 26; Ex. 1027 45:21–46:19). Patent Owner’s declarant, Dr. Short, testified that, given such issues, system designers or engineers would be interested in using techniques that could reduce PAR. Ex. 1027, 46:23–47:3. This is consistent with the reason to combine given in the Petition and supports Petitioner’s position that “numerous problems” other than clipping “would have motivated a [person of ordinary skill in the art] to look for ways to reduce the PAR of Shively’s technique.” Pet. Reply 36. In light of the foregoing, we are persuaded that a person of ordinary” slip op. at 30
Patent outcomesUS 8,718,158 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,718,158
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.