• Hytera Communications Co. Ltd. v. Motorola Solutions, Inc.No claims unpatentable
  PTAB · May 13, 2019 · IPR2017-02183 · APJ Trevor M Jefferson · IPR · Final written decision

  Claims 7 and 8 were not shown unpatentable under any of the three § 103 grounds because the cited combinations did not teach transmitting on a non-assigned timeslot.

  RulingsFinal written decision

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

    “and the specification to determine whether they expressly or implicitly require a specific order. See Altiris, 318 F.3d at 1369–70. Here, we agree with Patent Owner that the language shows that the results of a step are used in the next step; that is, “step 7[b] ‘preparing to transmit a particular payload type in a timeslot’ [comes before] step 7[c] ‘determining whether the timeslot is a current desired timeslot for the TDMA system,’ because the transmitting device looks at the ‘the timeslot’ identified in the ‘preparing’ step to ‘determin[e]’ whether that timeslot is ‘a current desired timeslot.’” PO Sur-Reply 3–4 (quoting Ex. 1001, cl. 7).” slip op. at 13

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

    “We agree with Patent Owner that the ordered steps 7[c] to 7[e] require transmitting on an alternate timeslot, that is, a timeslot that is not an assigned timeslot. PO Resp. 7–9. The plain language of claim 7 states that the preparing step of limitation 7[b] is for “a timeslot,” indicating that it is broader than the assigned timeslot of the TDMA system. In limitation 7[c], the claim expressly requires a determination of whether the timeslot in the preparing step is the “current desired timeslot” (assigned timeslot) and selecting (limitation 7[d]) the appropriate synch pattern. The “selecting” step of claim 7[d] requires: “if the timeslot is the current desired timeslot, select[] a synchronization pattern selected from the first set of synchronization patterns . . . otherwise select[] a synchronization pattern selected from the second set of synchronization patterns . . . .” The synchronization pattern that is selected in limitation 7[d] is then used during transmission in limitation 7[e]. Thus, although the claims and specification do not explicitly refer to an alternate timeslot, the claim requires transmitting on the timeslot that is not the current desired timeslot (assigned timeslot). See PO Resp. 19–20; Ex. 2008 ¶ 89.” slip op. at 23

  • Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia with nexusDecided for patent owner

    “arguments are directed to products produced by Petitioner, rather than by Patent Owner, products that were found in an Initial Determination (“ID”) of the International Trade Commission (“ITC”) to infringe challenged claims 7 and 8 of the ’991 patent. Ex. 2009, 192–202. In addition, the Administrative Law Judge in that ID found that Petitioner intentionally copied Patent Owner’s patented technology. Id. at 226–228. That finding was based, in part, upon an adverse inference drawn from the repeated invocation of the Fifth Amendment when former employees of Patent Owner were questioned about allegations that they downloaded confidential documents of Patent Owner shortly before becoming employed by Petitioner. Id. at 241–242 (citing LiButti v. United States, 107 F.3d 110, 123–24 (2d Cir. 1997)). In addition to Patent Owner’s detailed discussion of how Petitioner’s products embody all limitations of the challenged claims, these specific administrative findings support Patent Owner’s position that there is sufficient nexus between its evidence and the challenged claims. PO Resp. 57–62; Institut Pasteur & Universite Pierre et Marie Curie v. Focarino, 738 F.3d 1337, 1347 (Fed. Cir. 2013).” slip op. at 27

  • ExcludeMotion to exclude, deniedDenied

    “We are not persuaded by this argument. Petitioner’s arguments go to the weight that should accorded to the ID, not to its admissibility. See Liquid Dynamics Corp. v. Vaughan Co., 449 F.3d 1209, 1221 (Fed. Cir. 2006) (“Vaughan’s challenge goes to the weight of the evidence rather than the admissibility of Lueptow’s testimony and analysis.”). As Patent Owner responds, the ITC “determined not to review the portions of the ID’s findings regarding the ’991 patent.” Paper 43, 4. And we agree with Patent Owner that Petitioner’s argument that the Final Determination is subject to approval by the President lacks merit because the President did not act on the Final Determination within the period specified by 19 U.S.C. § 1337(j)(2). Id. at 4–5. The ID recounts evidence that has been considered and evaluated by an objective and disinterested judge, and articulates findings that are relevant to whether there is a sufficient nexus between the challenged claims and Patent Owner’s evidence regarding Petitioner’s products. The ID is also relevant to the issue of copying by Petitioner. Although Petitioner asserts that the ID is prejudicial or confusing, it provides insufficient argument to support those assertions. With respect to Exhibits 2010, 2012–2019, and 2021, Petitioner contends that these exhibits are Hytera advertising and marketing documents, which do not supply sales numbers or third-party praise to prove commercial success. Paper 40, 3–4. Again, this argument relates to the weight to be accorded to that evidence, not to its admissibility. As we note above, we agree with Petitioner that these factors impact the appropriate weight to be accorded to the evidence, and we have accounted for that impact. Finally, we deny Petitioner’s request that Exhibit 2020 should be excluded under Fed. R. Evid. 401 and 402 because Patent Owner’s demonstrative slides in Exhibit 2020 rely on Exhibits 2010, 2012–2019, and 2021. As the Board reminded the parties in its Order granting oral argument, “[d]emonstrative exhibits are not evidence.” Paper 44, 3. Exhibit 2020 is merely a demonstrative and is not evidence.” slip op. at 32

  Patent outcomesUS 8,279,991 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,279,991
• Delphi Technologies, LLC v. Microchip Technology Inc.Rehearing denied
  PTAB · Dec 11, 2018 · IPR2017-00864 · APJ Daniel N Fishman · IPR · Rehearing

  The Board denied Patent Owner’s rehearing request, leaving claims 1, 3–5, 7–9, 11–15, and 18–21 unpatentable because their scope did not require the buffer to store the specified information.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “party challenging the decision,” and, “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed” in the record. 37 C.F.R. § 42.71(d). III. DISCUSSION Patent Owner’s Request does not identify any arguments that we “misapprehended or overlooked” let alone “specifically identify” all such matters. Thus, Patent Owner’s Request fails to comply with our rules. Despite this failure of Patent Owner’s Request, we address the substance of Patent Owner’s argument as follows.” slip op. at 2

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

    “misapprehended any argument. Furthermore, we are unpersuaded that our Decision was in error regarding independent claims 1, 3, 7, 18, and 23 because these claims have a different scope than claims 17, 22, and 24. As Patent Owner correctly noted, our construction of “dedicated USB connection” is “a USB connection that may include some shared physical communication path and includes a buffer for maintaining dedicated address, configuration and response information for the connection.” Dec. 33. Thus, a dedicated USB connection must include a buffer that is capable of storing/maintaining “dedicated address, configuration and response information” regardless of whether such data is actually stored/maintained therein.” slip op. at 3

  Claim construction
  Patents in suitUS 7,523,243
• Semiconductor Components Industries, LLC (D/B/A On Semiconductor) v. Power Integrations, Inc.Rehearing denied
  PTAB · Dec 21, 2017 · IPR2016-00995 · APJ Daniel N Fishman · IPR · Rehearing

  The Board denied Patent Owner’s rehearing request, leaving claims 26 and 27 unpatentable as anticipated by MC33362.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “review the decision for an “abuse of discretion.” 37 C.F.R. § 42.71(c). “The burden of showing a decision should be modified lies with the party challenging the decision,” and “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed” in the record. 37 C.F.R. § 42.71(d). A request for rehearing is not an opportunity to present new arguments. See id. An abuse of discretion may arise if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000).” slip op. at 2

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

    “arguments. Our claim construction made clear in interpreting “multi-function circuit” that we agree with Patent Owner that the circuit is separate and distinct from the recited “control circuit” in the sense that the claim recites two distinct elements. Dec. 18. However, our interpretation further determined that although we agree “that the multi-function circuit and the control circuit are separate and distinct components in the claims, the claim language does not require that the functions performed by the two distinct circuits must be similarly separate and distinct.” Id. at 22. We further observed that, contrary to Patent Owner’s assertions, the Specification of the ’908 patent mentions certain functions of the multi-function circuit that are clearly tightly coupled to the “core regulation” function of the recited “control circuit.” Id. at 24–25 (e.g., shutting down the power supply in response to detecting over-voltage or under-voltage conditions). Thus, our Decision is consistent with our interpretation of “multi-function circuit” and expressly disagrees with Patent Owner’s arguments that the functions of the two circuits must also be separate and distinct.” slip op. at 3

  Claim construction
  Patents in suitUS 6,538,908
• Amazon.Com, Inc. / Amazon.Com, LLC et al. v. Zitovault, LLCNo claims unpatentable
  PTAB · Apr 11, 2017 · IPR2016-01025 · APJ Daniel N Fishman · IPR · Final written decision

  Petitioner did not prove claims 1, 3, 5–8, and 10 unpatentable because the cited references did not adequately account for the claims’ session limitations.

  RulingsFinal written decision

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

    “We are persuaded that our preliminary interpretation of “session” in our Decision on Institution is, at least in some respect, overly broad. Independent claims 1, 6, 7, and 10 each refer to “sessions” in plural, and independent claim 7 refers to “simultaneous” sessions. Thus, the term “session” must be understood, at least, in such a manner as to allow multiple sessions to be distinguished from one another. Although independent claim 5 does not recite “sessions” in plural, the same term should be construed consistently across all claims. Accordingly, we conclude that there must be sufficient delineation within a proper construction of “session” that separates a “session” between one client and one server and a different “session” when one of the client and server are replaced, and that separates multiple sessions from each other even between the same pair of client and server. During Oral Hearing there were extensive discussions regarding proper construction of “session.” See Tr. 7:9–22:18, 43:11–65:15, 74:21–76:13. At Oral Hearing, counsel for Petitioner agreed that “session” should be understood as communications having a recognizable beginning and a recognizable end. Id. at 10:13–16 (“Of course a session has a beginning and an end. I think that is axiomatic in a session. I think that is how Dr. Rubin defined it in his declaration”); see also id. at 12:21–13:5, Ex. 1005 ¶ 41. Patent Owner also agreed that if the construction of session is made to include a recognizable beginning and a recognizable end, that would be a proper construction for the term:” slip op. at 12

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

    “We agree with Patent Owner that Petitioner has failed to identify what constitutes a “session” in Feinberg in accordance with a proper construction of “session.” That proper construction of “session” is set forth above and has been agreed to by the parties. Tr. 10:13–16, 53:13–54:10. We state it again here: “a set of transmitters and receivers, and the data streams that flow between them wherein each data stream flowing between the transmitters and receivers has a recognizable beginning of the data stream transmission and a recognizable end of the data stream transmission.” Petitioner identifies Feinberg’s disclosure of forwarding (shunting) received requests from the primary server to secondary servers (for purposes of load balancing) teaches the recited “communication between the main server and agent server enlists additional agent servers to support incremental secure sessions in response to maintaining performance at a desired level.” Pet. 21–23 (emphasis added). The analysis is excessively generic for the claim recitation of “incremental secure sessions.” It is uncertain what Petitioner regards as a session in Feinberg much less how it begins and how it ends. It is unexplained by Petitioner whether a request in Feinberg begins a session, or something else in Feinberg begins a session. We decline to speculate in that regard. It is Petitioner who bears the burden of proof, and who must account for all the limitations in a claim. In that regard, we note further that it is insufficient for Petitioner to present only dots that may be connected in some unspecified manner to yield the claimed invention. Instead, Petitioner must make a sufficient connection through the dots to demonstrate a full accounting of the claimed invention.” slip op. at 22

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

    “that the system supports “incremental secure sessions.” The Petition relies on Feinberg for disclosing such sessions, presenting the same arguments as those it presents for claim 6. See Pet. 33–34. Patent Owner argues Feinberg fails to disclose sessions for the same reasons as those that Patent Owner presented with respect to claim 6. See PO Resp. 36–37. Petitioner’s Reply asserts essentially the same arguments for claim 1 as it does for claim 6 regarding “incremental secure sessions.” Pet. Reply 17. Petitioner does not rely on Bhaskaran to alleviate the above-identified deficiency in the analysis of Feinberg with respect to claim 6. The standard for obviousness under 35 U.S.C. § 103(a) is what would have been taught or suggested to the ordinarily skilled artisan with based on the references. The key to supporting any prima facie conclusion of obviousness under 35 U.S.C. § 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious and, the Court has noted that, the analysis supporting an obviousness assertion should be made explicit. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)). A “legal determinations of obviousness, as with such determinations generally, should be based on evidence rather than on mere speculation or conjecture.” Alza Corp. v. Mylan Labs., Inc., 464 F.3d 1286, 1290 (Fed. Cir. 2006). As discussed supra, Petitioner failed to account adequately for the recited “sessions.” Therefore, Petitioner has failed to establish by a preponderance of the evidence that independent claims 1, 6, and 10 would have been obvious over Feinberg and Bhaskaran and, for the same reasons, has failed to establish claim 3, dependent from claim 1, would have been obvious over Feinberg and Bhaskaran.” slip op. at 24

  • ExcludeMotion to exclude, deniedDenied

    “Initially, we note Patent Owner’s Motion to Exclude fails to identify the portions of Dr. Rubin’s Declaration that allegedly fail to be based upon sufficient facts or data, that allegedly are the product of unreliable principles and methods, or that allegedly fail to reliably apply sound principles and methods to the facts of the case. There is no requirement for an exact or perfect match between the expert’s experience and the field of the patent. SEB S.A. v. Montgomery Ward & Co., Inc., 594 F.3d 1360, 1372–73 (Fed. Cir. 2010). Thus, Patent Owner fails to meet its burden with respect to this Motion to Exclude. See 37 C.F.R. § 42.20(c). Furthermore, regarding the objections under FRE 702, we note that under 37 C.F.R. § 42.65(a), “[e]xpert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.” Consequently, this objection more properly goes to the weight to be given Dr. Rubin’s testimony, and not to its admissibility. In any event, Patent Owner’s argument, that Petitioner did not explain the evidentiary weight or standard that was applied by Dr. Rubin, is misplaced. We note that Dr. Rubin is an expert witness, not a fact finder or a tribunal making fact findings. Dr. Rubin need only provide his opinion and, preferably, also provide the underlying reasoning, inclusive of data and facts, in support of his opinion. For the above reasons, Patent Owner’s Motion to Exclude is denied.” slip op. at 27

  Patent outcomesUS 6,484,257 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR
  Patents in suitUS 6,484,257
• Amazon.Com, Inc. / Amazon.Com, LLC et al. v. Zitovault, LLCNo claims unpatentable
  PTAB · Apr 11, 2017 · IPR2016-00021 · APJ Daniel N Fishman · IPR · Final written decision

  Petitioner did not prove claims 1, 3, 5–8, and 10 unpatentable: the asserted grounds did not adequately identify sessions with recognizable beginnings and ends.

  RulingsFinal written decision

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

    “We are persuaded that our preliminary interpretation of “session” in our Decision on Institution is, at least in some respect, overly broad. Independent claims 1, 6, 7, and 10 each refer to “sessions” in plural, and independent claim 7 refers to “simultaneous” sessions. Thus, the term “session” must be understood, at least, in such a manner as to allow multiple sessions to be distinguished from one another. Although independent claim 5 does not recite “sessions” in plural, the same term should be construed consistently across all claims. Accordingly, we conclude that there must be sufficient delineation within a proper construction of “session” that separates a “session” between one client and one server and a different “session” when one of the client and server are replaced, and that separates multiple sessions from each other even between the same pair of client and server. During Oral Hearing there were extensive discussions regarding proper construction of “session.” See Tr. 7:9–22:18, 43:11–65:15, 74:21–76:13. At Oral Hearing, counsel for Petitioner agreed that “session” should be understood as communications having a recognizable beginning and a recognizable end. Id. at 10:13–16 (“Of course a session has a beginning and an end. I think that is axiomatic in a session. I think that is how Dr. Rubin defined it in his declaration”); see also id. at 12:21–13:5, Ex. 1005 ¶ 41. Patent Owner also agreed that if the construction of session is made to include a recognizable beginning and a recognizable end, that would be a proper construction for the term:” slip op. at 12

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

    “We agree with Patent Owner that Petitioner has failed to identify what constitutes a “session” in Feinberg in accordance with a proper construction of “session.” That proper construction of “session” is set forth above and has been agreed to by the parties. Tr. 10:13–16, 53:13–54:10. We state it again here: “a set of transmitters and receivers, and the data streams that flow between them wherein each data stream flowing between the transmitters and receivers has a recognizable beginning of the data stream transmission and a recognizable end of the data stream transmission.” Petitioner identifies Feinberg’s disclosure of forwarding (shunting) received requests from the primary server to secondary servers (for purposes of load balancing) teaches the recited “communication between the main server and agent server enlists additional agent servers to support incremental secure sessions in response to maintaining performance at a desired level.” Pet. 21–23 (emphasis added). The analysis is excessively generic for the claim recitation of “incremental secure sessions.” It is uncertain what Petitioner regards as a session in Feinberg much less how it begins and how it ends. It is unexplained by Petitioner whether a request in Feinberg begins a session, or something else in Feinberg begins a session. We decline to speculate in that regard. It is Petitioner who bears the burden of proof, and who must account for all the limitations in a claim. In that regard, we note further that it is insufficient for Petitioner to present only dots that may be connected in some unspecified manner to yield the claimed invention. Instead, Petitioner must make a sufficient connection through the dots to demonstrate a full accounting of the claimed invention. Petitioner had ample notice of the possibility of a narrower interpretation of “session.” See PO Resp. 7–11, 23–24. Indeed, Petitioner responded to that possibility by referring to its own expert’s testimony that the beginning and end of a session may be signified in a variety of forms. Pet. Reply 2. See Genzyme Therapeutic Prod. Ltd. P’ship v. Biomarin Pharm. Inc., 825 F.3d 1360, 1367 (Fed. Cir. 2016) (“The critical question for compliance with the APA and due process is whether [the parties] received ‘adequate notice of the issues that would be considered, and ultimately resolved, at [the] hearing’”) (internal citation omitted). Nevertheless, Petitioner’s Reply still does not specifically identify a “session” within Feinberg that accounts for what constitutes a session in Feinberg, including when it begins and ends. Claim 10 recites, in pertinent part, “sharing spare CPU cycles of the computer network for encrypting and decrypting communication to provide N simultaneous secure session[s] among said network of computers.” Petitioner’s analysis with respect to the recitation of “N simultaneous secure session[s]” is deficient for the same reasons we discussed above with respect to the recitation of “incremental secure sessions” in claim 6. For the above reasons, we are not persuaded Petitioner has established, by a preponderance of the evidence, that claims 6 and 10 are anticipated by Feinberg.” slip op. at 22

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

    “that the system supports “incremental secure sessions.” The Petition relies on Feinberg for disclosing such sessions, presenting the same arguments as those it presents for claim 6. See Pet. 33–34. Patent Owner argues Feinberg fails to disclose sessions for the same reasons as those that Patent Owner presented with respect to claim 6. See PO Resp. 36–37. Petitioner’s Reply asserts essentially the same arguments for claim 1 as it does for claim 6 regarding “incremental secure sessions.” Pet. Reply 17. Petitioner does not rely on Bhaskaran to alleviate the above-identified deficiency in the analysis of Feinberg with respect to claim 6. The standard for obviousness under 35 U.S.C. § 103(a) is what would have been taught or suggested to the ordinarily skilled artisan with based on the references. The key to supporting any prima facie conclusion of obviousness under 35 U.S.C. § 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious and, the Court has noted that, the analysis supporting an obviousness assertion should be made explicit. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)). A “legal determinations of obviousness, as with such determinations generally, should be based on evidence rather than on mere speculation or conjecture.” Alza Corp. v. Mylan Labs., Inc., 464 F.3d 1286, 1290 (Fed. Cir. 2006). As discussed supra, Petitioner failed to account adequately for the recited “sessions.” Therefore, Petitioner has failed to establish by a preponderance of the evidence that independent claims 1, 6, and 10 would have been obvious over Feinberg and Bhaskaran and, for the same reasons, has failed to establish claim 3, dependent from claim 1, would have been obvious over Feinberg and Bhaskaran.” slip op. at 24

  • ExcludeMotion to exclude, deniedDenied

    “Initially, we note Patent Owner’s Motion to Exclude fails to identify the portions of Dr. Rubin’s Declaration that allegedly fail to be based upon sufficient facts or data, that allegedly are the product of unreliable principles and methods, or that allegedly fail to reliably apply sound principles and methods to the facts of the case. There is no requirement for an exact or perfect match between the expert’s experience and the field of the patent. SEB S.A. v. Montgomery Ward & Co., Inc., 594 F.3d 1360, 1372–73 (Fed. Cir. 2010). Thus, Patent Owner fails to meet its burden with respect to this Motion to Exclude. See 37 C.F.R. § 42.20(c). Furthermore, regarding the objections under FRE 702, we note that under 37 C.F.R. § 42.65(a), “[e]xpert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.” Consequently, this objection more properly goes to the weight to be given Dr. Rubin’s testimony, and not to its admissibility. In any event, Patent Owner’s argument, that Petitioner did not explain the evidentiary weight or standard that was applied by Dr. Rubin, is misplaced. We note that Dr. Rubin is an expert witness, not a fact finder or a tribunal making fact findings. Dr. Rubin need only provide his opinion and, preferably, also provide the underlying reasoning, inclusive of data and facts, in support of his opinion. For the above reasons, Patent Owner’s Motion to Exclude is denied.” slip op. at 27

  Patent outcomesUS 6,484,257 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR
  Patents in suitUS 6,484,257
• The Boeing Company v. Seymour LevineAll claims unpatentable
  PTAB · Dec 20, 2016 · IPR2015-01341 · APJ Trenton A Ward · IPR · Final written decision

  Claims 4, 5, 8, 9, 10, 14, and 16 are unpatentable as obvious under § 103 over the combinations listed in the decision.

  RulingsFinal written decision

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

    “The definition of “advice” is “information or notice given.” Ex. 3001 (Webster’s Third New International Dictionary 32 (1971), 3.). Thus, the plain and ordinary meaning of “maintenance advice” is consistent with the aforementioned evidence, in that “maintenance advice” can include maintenance information, but does not require “recommended maintenance actions.” Patent Owner argues that this dictionary definition cited by the Board includes an alternative definition of “advice” as a “recommendation regarding a decision or course of conduct.” PO Resp. 33 (citing Ex. 3001, 3). Patent Owner further argues that this alternative definition of “advice” is most consistent with specification. PO Resp. 33. Patent Owner fails, however, to cite to any portions of the specification to support this argument (see id.) and fails to explain why we should not be guided by the more general statements in the specification, such as the description in the specification that a “preferred maintenance advisory” can be based “on an expert system for fault isolation,” which is in no way “recommended maintenance actions.” Ex. 1001, 3:36–37. We are not persuaded by Patent Owner’s argument that “maintenance advice” must include recommended maintenance actions. Accordingly, we adopt the portion of the proposed definitions on which the parties agree and determine that the term “maintenance advice” means “problem-specific maintenance information.” See also Dec. 7–8.” slip op. at 9

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “skill in the art relevant to the ’618 patent would have a “B.S. degree in electrical, systems, or computer engineering, or an FAA Mechanic Certificate with an airframe rating in accordance with 14 CFR part 65.71 and 65.85.” Ex. 1002 ¶ 15. According to Patent Owner’s Declarant, Mr. Grabowsky, a person of ordinary skill in the art relevant to the ’618 patent would have “at least a B.S. degree in electrical, systems, or computer engineering, or an FAA Mechanic Certificate with an airframe rating in accordance with 14 CFR part 65.71 and 65.85; as well as either an M.S. or equivalent work experience, such as 3-5 years of experience in avionics.” Ex. 2011 ¶ 8. Thus, both declarants generally agree on the level of skill, although Mr. Grabowsky suggests experience is required in addition to the B.S. degree or the FAA Mechanic Certificate. See id. Based on our review of the ’618 patent, the types of problems and solutions described in the ’618 patent and cited prior art, and the testimony of Petitioner’s Declarant and Patent Owner’s Declarant, we adopt Petitioner’s definition of a person of ordinary skill in the art at the time of the claimed invention. We are not persuaded that the additional experience of an M.S. or equivalent work experience, such as 3-5 years of experience in avionics, is required, as suggested by Mr. Grabowsky, as we are unclear as to why the claimed subject matter is beyond the abilities of someone who otherwise meets applicable federal regulatory standards. Based on the stated qualifications of Dr. Helfrick (Ex. 1002 ¶¶ 5–9) and the stated qualifications of Mr. Grabowsky (Ex. 2011 ¶¶ 6–7), Petitioner’s Declarant and Patent Owner’s Declarant both meet the requirements of this definition. We note that the applied prior art also reflects the appropriate level of skill at the time of the claimed invention. See Okajima, 261 F.3d at 1355.” slip op. at 12

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

    “and ARINC 624-1 because ARINC 624-1 is a standard directed to the very types of on-board systems discussed in Ward.”)). Additionally, Petitioner contends that ARINC publishes standards for the aviation industry, developed by committees that include aircraft manufacturers, avionics manufacturers, and airlines, and that the ACARS transmitter disclosed in Ward is based on, and, thus, would follow, an ARINC standard. Pet. 30 (citing Ex. 1002 ¶¶ 23, 75). Also, Petitioner contends that both Ward and ARINC 624-1 discuss utilizing (1) onboard maintenance systems including ACMS to collect aircraft performance data and (2) an ACARS transmitter to transmit such data to a ground station. Pet. 30. Petitioner adds that ARINC 624-1 provides an explicit motivation to utilize Ward’s ground based maintenance analysis software in implementing its maintenance system, because ARINC 624-1 states that “if known in advance of an airplane’s arrival at a terminal, selected information held in the OMS central maintenance computer’s memory could be useful to line maintenance personnel in planning timely corrective action.” Pet. 30–31 (quoting Ex. 1014 § 2.2.4). We agree, for the reasons stated by Petitioner, that, given the similarity and overlap in disclosures, and applicability of the ARINC standard to the ACARS transmitter of Ward, a person of skill in the art would have been motivated to improve the system in Ward with the teachings in ARINC 624-1. In view of the foregoing, we determine Petitioner has presented and sufficiently established an “articulated reasoning with some rational underpinning to support the legal conclusion of obviousness” with respect to claim 4 for this ground, and we adopt its contentions as our own. KSR, 550 U.S. at 418 (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).” slip op. at 21

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

    “on an aircraft having a flight data recorder.” Pet. Reply 15.10 Furthermore, Petitioner identifies that claims 8–10 all require “aircraft position data directed to said flight data recorder.” Id. Petitioner argues that Mr. Levine’s October 9, 1996 Invention Disclosure is insufficient, because it does not reflect the conception of the invention that Patent Owner ultimately claimed, which requires two data recorders—one onboard the aircraft and a second, remote recorder on the ground. Id. We do not agree with Petitioner’s argument that claims 4 and 8–10 require a flight data recorder on the ground, as claim 4 merely recites a “central station” “configured to receive and analyze said digital aircraft performance.” We do agree, however, with Petitioner’s argument that the express language of independent claim 4 requires “an aircraft having a flight data recorder.” Furthermore, claim 4 requires that the “digital aircraft performance data,” which the “central station” is configured to receive and analyze, is “data directed to the flight data recorder.” Thus, the invention recited in independent claim 4, and its dependent claims, must include a flight data recorder onboard the aircraft and, separately, a central station configured to receive and analyze data directed to the onboard flight data recorder. 10 The recitation “[a]n aircraft maintenance system for use on an aircraft having a flight data recorder” appears in the preamble of claim 4. “In general, a preamble limits the invention if it recites essential structure or steps, or if it is ‘necessary to give life, meaning, and vitality’ to the claim.” Catalina Marketing Int’l., Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (quoting Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999)). Here, the body of claim 4 refers to “the flight data recorder” as an active limitation in the claim. Therefore, we determine that the preamble is limiting for claim 4.” slip op. at 31

  Patent outcomesUS RE39,618 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
• Sandisk Corp. v. Netlist, Inc.All claims unpatentable
  PTAB · Sep 28, 2016 · IPR2015-01021 · APJ Bryan F Moore · IPR · Final written decision

  Claims 1, 16, 17, 24, 30, and 31 are unpatentable as obvious over Takeda, JEDEC, and Connolly.

  RulingsFinal written decision

  • Prior constructionPrior construction adoptedDecided for patent owner

    “1. “Rank” In the Decision to Institute, we construed the term “rank” as “a block or area that is created using some or all of the memory chips on a memory module.” Dec. to Inst. 8–9. In their papers, neither party challenged our constructions of these claim terms. Thus, for the term “rank,” we see no reason to alter the construction of this claim term as set forth in the Decision to Institute as recited above, and we incorporate our previous analysis for purposes of this decision.” slip op. at 8

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner

    “2. All Other Claim Terms We determine that no explicit construction is necessary for any other terms in the challenged claims. B.” slip op. at 8

  • Skill levelSkill level board ownOther

    “would understand basic memory and data communication concepts, with a bachelor’s degree in any of electrical engineering, computer engineering, computer science, or related field. Course work for one of ordinary skill in the art would have included a course on computer organization, principles of digital design, or computer architecture. One of ordinary skill in the art would also have around one year of experience related to computer memory systems. For example, such experience may include experience in DRAM memory technology and related industry standards such as JEDEC standards for DRAM memories and memory modules. Ex. 1002 ¶ 53. Patent Owner’s Declarant, Carl Sechen, Ph.D. (“Dr. Sechen”), testifies that one of ordinary skill in the art at the time of the ’536 Patent would have had an undergraduate degree in electrical engineering or computer engineering, at least two years of professional experience in the design of memory systems, familiarity with the latest JEDEC standard specifications for memory devices and modules, and familiarity with the latest DRAM (dynamic random access memory) memory devices widely available in the market. Ex. 2001 ¶ 14. Dr. Sechen further testifies that a person of ordinary skill in the art would have design proficiency in memory modules comprising DDR memory technology, such as memory modules with JEDEC standard DDR SDRAM (synchronous DRAM) devices. Id. ¶ 15. Based on our review of the ’536 Patent and the types of problems and solutions described in the ’536 Patent and cited prior art, we conclude a person of ordinary skill in the art at the time of the ’536 Patent would have a Bachelor’s degree in electrical engineering, computer engineering, computer science, or related field, and at least one year of work experience, including familiarity with computer memory systems and related industry standards such as JEDEC standards for DRAM memories and memory modules. We further note that the applied prior art reflects the appropriate level of skill at the time of the claimed invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). D.” slip op. at 10

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “To testify as an expert under Federal Rule of Evidence 702, a person need not be a person of ordinary skill in the art, but rather must be “qualified in the pertinent art.” Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1363–64 (Fed. Cir. 2008); see SEB S.A. v. Montgomery Ward & Co., 594 F.3d 1360, 1372–73 (Fed. Cir. 2010) (upholding a district court’s ruling to allow an expert to provide testimony at trial because the expert “had sufficient relevant technical expertise” and the expert’s “knowledge, skill, experience, training [and] education . . . [wa]s likely to assist the trier of fact to understand the evidence”); Mytee Prods., Inc. v. Harris Research, Inc., 439 F. App’x 882, 886–87 (Fed. Cir. 2011) (non-precedential) (upholding admission of the testimony of an expert who “had experience relevant to the field of the invention,” despite admission that he was not a person of ordinary skill in the art). As noted above, Dr. Jagannathan has designed and implemented hardware virtual memory caches, and researched theoretical performance measures of various cache coherency protocols, and has experience in the design of memory systems. We find that Dr. Jagannathan is qualified sufficiently to testify about memory systems and memory modules. E.” slip op. at 12

  Patent outcomesUS 8,081,536 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,081,536
• Sandisk Corp. v. Netlist, Inc.Some claims unpatentable
  PTAB · Sep 28, 2016 · IPR2015-01020 · APJ Peter P Chen · IPR · Final written decision

  Claims 17, 22, 24, 26, and 33 are unpatentable as obvious over Takeda, JEDEC, and Connolly; claims 15, 16, 31, and 32 were not shown unpatentable over Takeda and JEDEC.

  RulingsFinal written decision

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

    “We are unpersuaded by Patent Owner’s position. First, the claim language does not recite any physical or structural connection, rather, only “electrically coupling.” Pet. Reply 3, 8–9. In addition, the specification of the ’150 patent does not define explicitly the term “selectively electrically coupling.” Therefore, as in IPR2014-00882 and IPR2014-01011, we refer to its ordinary and customary meaning, as would be understood by one of ordinary skill in the art in the context of the entire disclosure. Translogic Tech., 504 F.3d at 1257. A technical dictionary, the IEEE Dictionary,4 defines “electrical coupling” as “[e]lectrical charges in conductors of a disturbed circuit formed by electrical induction.” Ex. 3001. The IEEE Dictionary explains that “[s]ince the ratio of a conductor’s electrostatic charge to the potential difference between conductors (required to maintain that charge) is the general definition of capacitance, electrical coupling is also called capacitive coupling.” Id. The IEEE Dictionary defines” slip op. at 9

  • Skill levelSkill level board ownOther

    “Based on our review of the ’150 patent and the types of problems and solutions described in the ’150 patent and cited prior art, we conclude a person of ordinary skill in the art at the time of the ’150 patent would have a Bachelor’s degree in electrical engineering, computer engineering, computer science, or related field, and at least one year of work experience, including familiarity with computer memory systems and related industry standards such as JEDEC standards for DRAM memories and memory modules. We further note that the applied prior art reflects the appropriate level of skill at the time of the claimed invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). D. Declarant Testimony” slip op. at 13

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “To testify as an expert under Federal Rule of Evidence 702, a person need not be a person of ordinary skill in the art, but rather must be “qualified in the pertinent art.” Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1363–64 (Fed. Cir. 2008); see SEB S.A. v. Montgomery Ward & Co., 594 F.3d 1360, 1372–73 (Fed. Cir. 2010) (upholding a district court’s ruling to allow an expert to provide testimony at trial because the expert “had sufficient relevant technical expertise” and the expert’s “knowledge, skill, experience, training [and] education . . . [wa]s likely to assist the trier of fact to understand the evidence”); Mytee Prods., Inc. v. Harris Research, Inc., 439 F. App’x 882, 886–87 (Fed. Cir. 2011) (non-precedential) (upholding admission of the testimony of an expert who “had experience relevant to the field of the invention,” despite admission that he was not a person of ordinary skill in the art). As noted above, Dr. Jagannathan has designed and implemented hardware virtual memory caches, and researched theoretical performance measures of various cache coherency protocols, and has experience in the design of memory systems. We find that, although Dr. Jagannathan may be less experienced than Dr. Sechen in the area of memory module design, he is nonetheless qualified sufficiently to testify about memory systems and memory modules. E. Asserted Obviousness of Claims 15, 16, 31, and 32 in view of Takeda” slip op. at 14

  • ExcludeMotion to exclude, deniedDenied

    “We have reviewed the parties’ contentions on this issue, and exercise our discretion to determine that Petitioner’s Reply and the Jagannathan Supplemental Declaration will not be excluded. We find that, although they may be “inartfully” drafted, the first Jagannathan declaration and Petition sufficiently outlined Petitioner’s position on the function of the chip select signal, namely, that the chip select signal was not itself the logic signal enabling operation of bit-switches. We further find that Petitioner’s Reply and the Supplemental Jagannathan Declaration did not present an entirely new rationale of unpatentability based on Takeda, JEDEC, and Connolly. Cf. Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369–70 (Fed. Cir. 2016) (affirming Board’s exclusion of reply brief and declaration that changed unpatentability theory to “an entirely new rationale”). Moreover, there is no dispute that Patent Owner was aware of Petitioner’s position by no later than the Jagannathan deposition, which preceded Patent Owner’s Response by ten days. Patent Owner could have addressed Petitioner’s chip select signal contention, procedurally or substantively, in its Response, but chose to raise the issue only after Petitioner filed its Reply and Supplemental Jagannathan Declaration. Accordingly, Patent Owner had notice of Petitioner’s position and an opportunity to refute that position in its Response.” slip op. at 24

  Patent outcomesUS 7,881,150 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,881,150
• Mastercard International Inc. v. Leon StamblerAll claims unpatentable
  PTAB · Jul 6, 2016 · CBM2015-00044 · APJ Peter P Chen · CBM · Final written decision

  Claims 51 and 53 are unpatentable as anticipated by Davies; claims 51, 53, 55, and 56 are unpatentable as obvious over Davies and Meyer; claim 55 over Davies and Nechvatal; and claim 56 over Davies, …

  RulingsFinal written decision

  • Skill levelSkill level board ownOther

    “F. Level of Ordinary Skill in the Art Petitioner’s proposal for the level of ordinary skill in the art is “at least a bachelors degree in computer programming and two years’ experience as a programmer or developer in the field of computer science, with a working understanding of cryptographic operations for transforming original input into a coded output using a known algorithm.” Pet. 14–15. Patent Owner has proposed similarly, that one of ordinary skill in the art would possess “(1) undergraduate education in mathematics, physics, computer science, electrical engineering or similar technical subject; and (2) either postgraduate education in networking, cryptography, or other discipline encompassing information theory, or equivalent experience with applications involving communication of financial, military, medical or similarly sensitive data over secure and non-secure networks.” Prelim. Resp. 30–31. We determine that an express definition of the level of ordinary skill is not required. The level of ordinary skill in the art can be reflected in the cited prior art references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“[T]he absence of specific findings on the level of skill in the art does not give rise to reversible error ‘where the prior art itself reflects an appropriate level and a need for testimony is not shown.’”) (internal quotations omitted); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). Therefore, we find the level of ordinary skill in the art to be reflected in the cited references.” slip op. at 16

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

    “1. “variable authentication number (VAN)” In the Decision to Institute, we construed the term “variable authentication number” or “VAN” as “a variable number resulting from a coding operation that can be used in verifying the identity of a party or the integrity of information or both.” Dec. to Inst. 8. See also Case IPR2014-00694, slip op. at 8–9 (PTAB Oct. 31, 2014) (Paper 10). Patent Owner “does not challenge this construction.” PO Resp. 16–17. Patent Owner asserts additional construction of the term is necessary for CBM standing issues, but does not elaborate further. PO Resp. 1. Patent Owner also argues we incorrectly applied the broadest reasonable interpretation to the term in the Decision to Institute. PO Resp. 9. The Decision to Institute noted that our review of the claims of the expired ’302 patent is similar to that of a district court’s review, In re Rambus, Inc., 694 F.3d 42, 46 (Fed. Cir. 2012); Phillips v. AWH Corp., 415 F.3d 1303, 1327 (Fed. Cir. 2005), but inadvertently mentioned the broadest reasonable interpretation standard in construing this term. Dec. to Inst. 7–8. We reaffirm our agreement with Patent Owner that the Phillips framework is applied to the expired ’302 patent. Our construction of “VAN” is the same under either claim construction standard. We reject Patent Owner’s undeveloped argument regarding standing, and maintain the construction of VAN from the Decision to Institute, as the ordinary and customary meaning of the term: “a variable number resulting from a coding operation that can be used in verifying the identity of a party or the integrity of information or both.”” slip op. at 10

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

    “2. Sequence of method steps: receiving, generating In the Decision to Institute, we agreed with Patent Owner and construed the sequence of method steps in independent claim 51 to mean that at least a portion of the receiving step must precede the generating step. Dec. to Inst. 8. See also Case IPR2014-00694, slip op. at 11–14 (PTAB Oct. 31, 2014) (Paper 10). We maintain that construction as the ordinary and customary meaning of the sequence of the receiving and generating method steps.” slip op. at 11

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

    “intended use of an invention is generally not treated as limiting the scope of the claim. Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003). However, “a preamble limits the invention if it recites essential structure or steps, or if it is ‘necessary to give life, meaning, and vitality’ to the claim.” Catalina Mktg. Int'l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (citing Pitney Bowes Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999). “The effect preamble language should be given can be resolved only on review of the entirety of the patent to gain an understanding of what the inventors actually invented and intended to encompass by the claim.” Corning Glass Works v. Sumitomo Elec. U.S.A., Inc., 868 F.2d 1251, 1257 (Fed. Cir. 1989). When the limitations in the body of the claim rely upon or derive essential structure from the preamble elements, e.g., the preamble serves as an antecedent basis for limitations in the claim, then the preamble acts as a necessary component of the claimed invention and is limiting. See Eaton Corp. v. Rockwell Int’l Corp., 323 F.3d 1332, 1339 (Fed. Cir. 2003). In this case, the preamble of independent claim 51 recites “a credential being previously issued,” and the limitations of the claim include “determining whether the at least a portion of the received funds transfer information is authentic by using the VAN and the credential information.” Ex. 1001, 33:18–19, 33:29–31. Thus, the preamble’s recitation of “a credential” is an antecedent basis for the recited “the credential information” in the “determining” step, and we determine that the preamble limits the scope of the challenged independent claim 51 and dependent claims 53, 55, and 56.” slip op. at 11

  Patent outcomesUS 5,793,302 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 5,793,302
• Corelogic, Inc. v. Boundary Solutions, Inc.All claims unpatentable
  PTAB · May 19, 2016 · IPR2015-00222 · APJ Lynne E Pettigrew · IPR · Final written decision

  Claims 1–23 are unpatentable: claims 9, 10, and 12–22 as obvious over Harder and Du; claims 1–8, 11, and 23 as obvious over Harder, Du, and MacDonald.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for petitioner

    “We determine that an express definition of the level of ordinary skill is not required. The level of ordinary skill in the art can be reflected in the cited prior art references. See Okajima, 261 F.3d at 1355 (“[T]he absence of specific findings on the level of skill in the art does not give rise to reversible error where the prior art itself reflects an appropriate level and a need for testimony is not shown.” (internal quotations omitted)); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). In this case, we find the level of ordinary skill in the art to be reflected in the cited references.” slip op. at 14

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

    “We remain unpersuaded by BSI’s arguments. As we explained in the Institution Decision, although the ’352 patent describes assembling a national parcel-level map database from data provided by various sponsoring agencies, the claims themselves do not require assembling the multi-jurisdictional database using any specific method or obtaining the information in the database from any particular sources. Dec. 7 (citing Ex. 1001, 1:41–48, 4:8–11). Moreover, BSI’s reliance on the prosecution history of the ’957 patent does not support its position, as the claims at issue there did not recite a “multi-jurisdictional database.” See Ex. 2006, 132–37, 141, 193–200). For these reasons, we maintain our construction of “multi- jurisdictional database” as “a collection of data relating to two or more jurisdictions.”” slip op. at 8

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

    “success”9 in combining Harder and Du because Du would not be used to maintain data for jurisdictions with a large number of parcels, and the visibility of parcels would be diminished in a map with so many parcels. PO Resp. 38. We do not find this argument to be persuasive because, as CoreLogic notes, Du discloses that cells can correspond to different types of jurisdictions and that any geographic areas can be searched and displayed. See Reply 14 (citing Ex. 1018, Fig. 3, 3:21–32, 4:38–40, 6:31–38, 9:5–6, 9:16–44). BSI also argues that a county identified as a cell in Du would include a huge amount of parcel data, and data for the entire cell would be transmitted to a client computer in the system described in Du, thereby defeating a purpose of Du’s system—the speedy display of maps. PO Resp. 38–39. CoreLogic, however, relies on Du for teaching an index of 9 We understand BSI’s use of the phrase “reasonable likelihood of success” to be an argument that there would be no “reasonable expectation of success” in the combination of references, rather than a reference to the reasonable likelihood standard for instituting an inter partes review. jurisdictional identifiers used to search a portion of a multi-jurisdictional database, not the transmission of parcel data, and has shown sufficiently that a person of ordinary skill in the art would have combined Du’s teaching of an index with Harder’s system for retrieving and transmitting parcel boundary polygon map data. See Reply 15. We have reviewed the parties’ arguments and evidence on this issue, and we agree with and adopt CoreLogic’s reasoning for modifying Harder’s single-county example in view of Du to retrieve a jurisdictional identifier from an index and use it to search a portion of a multi-jurisdictional database for a selected parcel. In sum, we find that the combination of Harder and Du teaches or suggests the limitations of claim 9 and that CoreLogic has provided articulated reasoning supported by rational underpinnings for combining the references in the manner asserted. Therefore, we conclude CoreLogic has shown by a preponderance of the evidence that claim 9 would have been obvious over Harder and Du.” slip op. at 22

  • ExcludeMotion to exclude, deniedDenied

    “G. 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 the cited redirect testimony or the cited cross-examination testimony, CoreLogic’s motion is dismissed as moot.” slip op. at 40

  Patent outcomesUS 8,065,352 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,065,352

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.