• Sony Interactive Entertainment LLC v. Intellectual Pixels LimitedSome claims unpatentable
  PTAB · Jan 11, 2022 · IPR2020-01248 · APJ Iftikhar Ahmed · IPR · Final written decision

  Claims 1–3 are unpatentable as obvious over Schmidt and Keslin; claim 4 was not shown unpatentable over the asserted grounds.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “understanding of a person of ordinary skill in the art at the time of the invention. Graham, 383 U.S. at 17. Petitioner contends that a person of ordinary skill in the art would have had “at least (1) an undergraduate degree in computer science, electrical engineering, or an equivalent subject, together with two years of post-graduate experience in computer graphics; or (2) a master’s degree in computer science, electrical engineering, or equivalent subject, together with one year of postgraduate experience in computer graphics.” Pet. 18 (citing Ex. 1002 ¶¶ 25–27). Patent Owner agrees with Petitioner but adds that “the experience in computer graphics would include experience with multimedia systems, particularly the delivery of video display information across a network.” PO Resp. 10–11 (citing Ex. 2016 ¶ 26). We determine that Petitioner’s proposed level of ordinary skill is consistent with the ’093 patent and the asserted prior art, and also agree with Patent Owner’s assertion regarding the relevant experience. 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). Accordingly, we determine that one of ordinary skill in the art at the time of the invention would have had at least (1) an undergraduate degree in computer science, electrical engineering, or an equivalent subject, together with two years of post-graduate experience in computer graphics; or (2) a master’s degree in computer science, electrical engineering, or equivalent subject, together with one year of postgraduate experience in computer” slip op. at 8

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

    “1. 3-dimensional graphics (and related terms) The parties inform us of certain terms that were construed in pending district court litigation. See Pet. 17 (citing Ex. 1013, 21); PO Resp. 12–13 (citing Ex. 1013, 12–13). We determine that it is not necessary to expressly construe any of these terms for purposes of our Decision.” slip op. at 9

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

    “unsupported in view of the plain language of claim 1 and the disclosure of the ’093 patent. Inst. Dec. 20–21. We noted that the claim recites “an application, running on a server, which generates 3-dimensional graphics accordingly.” Id. at 20. Rather than Patent Owner’s narrow reading of this limitation, requiring the server to generate 3-dimensional graphics independently from the claimed application, we determined that a more reasonable construction of this limitation is that the server in its entirety, including the application running on the server, generates the 3-dimensional graphics. Id. In other words, the phrase “which generates 3-dimensional graphics accordingly” cannot be read separately from the first two phrases of the limitation in the manner that Patent Owner proposes. Id. Patent Owner argues that our preliminary construction was improper because it “read[s] out the term ‘application’ by lumping together the ‘application’ and the ‘server,’” “effectively re-writ[ing] the limitation ‘sending user input control signals to an application, running on a server, which generates 3-dimensional graphics accordingly . . . .’ as ‘sending user input control signals to a server, which generates 3-dimensional graphics accordingly . . . .’” PO Resp. 54; see also PO Sur-reply 20. We disagree. Claim 1 plainly requires “sending user input control signals to an language, however, does not clearly distinguish between the two components for the purposes of generating the 3-dimensional graphics, and we therefore, gave the limitation its more reasonable interpretation in light of the specification, i.e., not limiting the claim to either the application or the server alone as generating the 3-dimensional graphics.7” slip op. at 20

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “statements about “removing all state and computation from the desktop” and characterization of the SLIM client was a “dumb frame buffer” client suggest that an ordinarily skilled artisan would have found implementing decompression on the SLIM client to be extremely computationally burdensome. Dr. Fuchs testifies that a person of ordinary skill in the art would not have understood “removing all state and computation from the desktop” to mean there can be no decompression on the client, but instead that Schmidt was “referring to the use of the server for application-level state and computation, allowing the user to move from one client to another without loss of application state.” Ex. 1035 ¶ 54 (citing Ex. 1004, 33). Dr. Fuchs quotes Schmidt stating that the servers maintain the true state at all times. Thus, the user is isolated from desktop failures and may move freely between terminals. In our implementation, users can simply present a smart identification card at any desktop, and the screen is returned to the exact state at which it was left. Ex. 1004, 33. Dr. Fuchs further testifies a person of ordinary skill in the art would not have understood Schmidt’s statements about removing state to mean that the client cannot perform any processing whatsoever because the client in Schmidt does perform processing, such as CSCS commands. the client for processing the SLIM commands), 33 (Figure 1 showing the client generates “[m]ouse/keyboard events & other input”), 35 (the “SLIM consoles” include a “100MHz microSPARC-IIep processor”)). We credit Dr. Fuchs’s testimony because it is consistent with our findings of Schmidt’s teachings. Aside from the CSCS command, Schmidt discloses other computational tasks that the SLIM client could handle. For example, Schmidt explains, in comparing its protocol to the X protocol, that if video is scaled to a higher resolution, the X server must perform the operation prior to sending the image to the X client, whereas the Sun Ray 1 console, i.e., Schmidt’s SLIM client, “can do it locally at substantial savings in bandwidth.” Ex. 1004, 45; see also id. at 35 (listing the hardware components of the Sun Ray 1 SLIM client). The record therefore fails to support that a person of ordinary skill in the art would have found the SLIM client to be as computationally underpowered as Patent Owner makes it out to be.” slip op. at 32

  Patent outcomesUS 8,667,093 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,667,093
• Apple Inc. v. Uniloc 2017 LLCSome claims unpatentable
  PTAB · Jan 15, 2021 · IPR2019-01337 · APJ Jennifer S Bisk · IPR · Final written decision

  Claims 1, 2, 4, 5, 7–10, 13–15, and 17 are unpatentable as obvious; claims 3, 6, 11, 12, and 16 were not shown unpatentable.

  RulingsFinal written decision

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

    “this case, we interpret claims in the same manner used in a civil action under 35 U.S.C. § 282(b) “including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” 37 C.F.R. § 42.100(b) (2019). Only terms that are in controversy need to be construed, and then only to the extent necessary to resolve the controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017).” slip op. at 7

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

    “We do not agree with Patent Owner that the quoted language of the ’999 patent requires a construction of the term “second link” that excludes any Bluetooth connection that reuses authentication information. Other than the one vaguely worded sentence in the ’999 patent, Patent Owner does not point to any supporting evidence for this interpretation. PO Resp. 25–26; Ex. 1001, 1:47–53). To the contrary, the evidence supports a finding that when two devices reestablish communication after being disconnected, the subsequent Bluetooth link is considered a different link. See Reply 18 (citing Ex. 1004, 151 (“Consequently, once a semi-permanent link key is defined, it may be used in the authentication of several subsequent connections between the Bluetooth units sharing it.”). This understanding is consistent with the ’999 patent, which refers to “initial Bluetooth link[s]” and “subsequent Bluetooth link[s]” (Ex. 1001, 1:49–50, 1:58, 4:40), and discloses that multiple links can be made between two Bluetooth compatible devices (id. at 1:17–20), without any clarification that such links are considered the same if authentication information is reused. Accordingly, we find that claim 13 requires two different links, one of which occurs later in time than the other, but that those links are not required to be of different types. And we do not agree with Patent Owner’s narrow reading, based on one sentence in the ’999 patent, that Bluetooth links that reuse authentication codes are considered the same link.” slip op. at 11

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

    “We find, based on the record, that a person of ordinary skill in the art would have understood using Bluetooth’s authentication mechanism in place of Varadharajan’s described “challenge/response routine,” to be a feasible option. This is based on both the intrinsic evidence and extrinsic evidence, which support such a finding, and a lack of evidence in the record to the contrary.7 See Ex. 1003, 4:62–67 (“Each time the portable computer 50 is in local or direct communication with the desk top computer 48 . . . the identity of the portable computer 50 is authenticated by the desk top computer 48 by a suitable test such as a challenge/response routine as outlined below.”); Ex. 1004, 99, 108, 149–154, 169–178, 1043, 1045–1047, 1053; Ex. 1006 ¶¶ 96–123; Ex. 1013 ¶¶ 14–22. We are not persuaded by Patent Owner’s argument that BT Core teaches away from a very long, frequently changed, security key. See PO Resp. 19–20. Nothing in Varadharajan or BT Core may be said to discourage a person of ordinary skill from using the Bluetooth authentication mechanism for the authentication over Varadharajan’s direct link. See In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). To the contrary, the facts suggest that a person of ordinary skill would have understood Varadharajan to encourage the use of any known, robust, authentication scheme (see Ex. 1003, 4:62–67), and the record shows that a person of ordinary skill would have understood Bluetooth’s authentication mechanism to be such a scheme (see Ex. 1001, 1:11–59, 5:38–41; Ex. 1004, 151–152, 157; Ex. 1006 ¶¶ 100–109; Ex. 1013 ¶¶ 17– 21). Finally, we find Petitioner has sufficiently shown that a person of ordinary skill in the art would have had reason to attempt to use Bluetooth’s authentication mechanism over Varadharajan’s direct link because it was a well-known method of implementing robust short-range communication and doing so would have required only the simple substitution of Bluetooth for infrared, in a similar manner, to achieve predictable results. Pet. 32–36; Reply 8–14; Ex. 1006 ¶¶ 96–123; see KSR v. Teleflex, 550 U.S. 398, 417 (2007).” slip op. at 26

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

    “would have understood using Bluetooth’s authentication mechanism in place of Varadharajan’s described “challenge/response routine,” to be a feasible option. This is based on both the intrinsic evidence and extrinsic evidence, which support such a finding, and a lack of evidence in the record to the contrary.7 See Ex. 1003, 4:62–67 (“Each time the portable computer 50 is in local or direct communication with the desk top computer 48 . . . the identity of the portable computer 50 is authenticated by the desk top computer 48 by a suitable test such as a challenge/response routine as outlined below.”); Ex. 1004, 99, 108, 149–154, 169–178, 1043, 1045–1047, 1053; Ex. 1006 ¶¶ 96–123; Ex. 1013 ¶¶ 14–22. We are not persuaded by Patent Owner’s argument that BT Core teaches away from a very long, frequently changed, security key. See PO Resp. 19–20. Nothing in Varadharajan or BT Core may be said to discourage a person of ordinary skill from using the Bluetooth authentication mechanism for the authentication over Varadharajan’s direct link. See In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). To the contrary, the facts suggest that a person of ordinary skill would have understood Varadharajan to encourage the use of any known, robust, authentication scheme (see Ex. 1003, 4:62–67), and the record shows that a person of ordinary skill would have understood Bluetooth’s authentication mechanism to be such a scheme (see Ex. 1001, 1:11–59, 5:38–41; Ex. 1004, 151–152, 157; Ex. 1006 ¶¶ 100–109; Ex. 1013 ¶¶ 17– 21).” slip op. at 26

  Patent outcomesUS 7,136,999 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,136,999
• Facebook, Inc. / Whatsapp Inc. et al. v. Uniloc 2017 LLCSome claims unpatentable
  PTAB · Jan 16, 2019 · IPR2017-01667 · APJ Charles J Boudreau · IPR · Final written decision

  Claims 3, 6–8, 10–35, 38, and 39 are unpatentable; claims 4 and 5 were not shown unpatentable.

  RulingsFinal written decision

  • ExcludeOther

    “Response in each case. IPR2017-01667, Paper 17 (“1667 PO Resp.”); IPR2017-01668, Paper 16 (“1668 PO Resp.”). Petitioner4 then filed Replies. IPR2017-01667, Paper 24 (“1667 Reply”); IPR2017-01668, Paper 22 (“1668 Reply”). Patent Owner also filed a Motion to Exclude as Paper 21 in each case (“Mot. Excl.”), and Petitioner filed an Opposition as Paper 24 in each case (“Opp’n”). We held a consolidated oral argument in both proceedings, as well as in related proceeding IPR2017-01428, on August 30, 2018. A transcript of the oral hearing (“Tr.”) has been entered into the record of IPR2017-01667 as Paper 31 and into the record of IPR2017-01668 as Paper 29.” slip op. at 3

  • PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted

    “01668, Paper 6 (“1668 Prelim. Resp.”). We instituted inter partes review pursuant to 35 U.S.C. § 314 as to all challenged claims. IPR2017-01667, Paper 8 (“1667 Dec. on Inst.”); IPR2017-01668, Paper 8 (“1668 Dec. on Inst.”). During the pendency of the proceedings, Huawei Device Co., Ltd. and LG Electronics, Inc. filed a petition and motion for joinder requesting to join IPR2017-01667, which we granted. IPR2017-01667, Paper 12. Similarly, Apple Inc. filed petitions and motions for joinder requesting to join IPR2017-01667 and IPR2017-01668, which we also granted. IPR2017- 01667, Paper 29; IPR2017-01668, Paper 27.” slip op. at 3

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

    “1. Instant Voice Message Independent challenged claims 3, 27, and 38 recite the term “instant voice message.” In particular, claim 3 recites a messaging system that “receives an instant voice message” from one of a plurality of instant voice the Patent Trial and Appeal Board,” 83 Fed. Reg. 51,340 (Oct. 11, 2018) (to be codified at 37 C.F.R. pt. 42). message client systems, “wherein the instant voice message includes an object field including a digitized audio file.” Claims 27 and 38 recite a client platform system for “generating an instant voice message and a messaging system for transmitting the instant voice message.” Claim 27 further requires an “instant voice messaging application” that “includes a document handler system for attaching one or more files to the instant voice message.” Certain of the challenged dependent claims recite additional limitations concerning, for example, additional fields included in the instant voice message (claims 4–8), storage, deletion, or retrieval of instant voice messages (claims 10, 14, 17, 28, 31), the generation of the instant voice messages (claims 13, 18, 32), encryption/decryption of instant voice messages (claims 19, 33), compression/decompression of instant voice messages (claims 20, 34), effects indicating receipt of instant voice messages (claims 23, 35), and display of instant voice messages (claim 30). Our Institution Decision in IPR2017-01667 noted Patent Owner’s arguments regarding the “instant voice message” centered on the scope of the term. 1667 Dec. on Inst. 18, 22–23. Patent Owner had argued an implied construction in which “instant voice message” encompasses only the voice message. Id. at 19, 23. The parties were invited to brief the claim construction during trial. Id. at 19–20, 23. In its Response in IPR2017-01667, Patent Owner proposed that an “instant voice message” is “an audio file recording voice data.” 1667 PO Resp. 11–13, 15. In particular, Patent Owner relied on the specification’s use of “i.e.” to indicate lexicography in equating the “instant voice message”” slip op. at 12

  Patent outcomesUS 8,724,622 mixed
  Claim constructioncites KSR · Graham
  Patents in suitUS 8,724,622
• Apple Inc. / Facebook, Inc. et al. v. Uniloc Luxembourg S.A.Some claims unpatentable
  PTAB · May 23, 2018 · IPR2017-00222 · APJ Miriam L Quinn · IPR · Final written decision

  Claims 1 and 2 are unpatentable over Vuori and Vuori with Malik; claims 3–8 were not shown unpatentable under any asserted ground.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner’s proffered level of ordinary skill in the art focuses too generally on experience in “communications technology.” The enunciation of such experience is too generic to be useful in determining the level of ordinary skill in the art under any of the GPAC factors. For instance, experience with “communications technology” is untethered to addressing problems and solutions in facilitating short messaging services, such as in Vuori, or to whether active workers in the appropriate field would manifest such a general experience in “communications technology.” Vuori, for instance, focuses on facilitating short messaging service in the context of a wireless telecommunication network. See Ex. 1005 ¶¶ 57. Therefore, we cannot ignore that the field of work would be more narrow than generally “communications technology.” We find that Petitioner’s assessment is proper and consistent with the level of ordinary skill in the art at the time of the invention as reflected in the prior art in the instant proceeding. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). For example, Vuori (Ex. 1005) and Malik (Ex. 1019) address instant messaging systems in the context of telecommunication and computer networks, such as a Global System for Mobile Communications (“GSM”), General Packet Radio Service (“GPRS”), Universal Mobile Telecommunication Systems (“UMTS”), and the Internet. Ex. 1005 ¶¶ 3539, Figs. 3, 6; Ex. 1019 ¶¶ 4, 7; see also Ex. 1021, 1:2544 (addressing audio conferences across networks using the Internet Protocol and VoIP). Thus, it is evident from the prior art that Petitioner’s assessment is appropriate because, in addition to a certain degree, a person of ordinary skill in the art would have experience in communications systems, particularly in messaging systems, data networks including VoIP and mobile telephony, or comparable industry experience. Consequently, we adopt Petitioner’s assessment of the level of ordinary skill in the art.” slip op. at 19

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “(citing Ex. 1005 ¶¶ 35, 43, 47; Ex. 1003 ¶¶ 125126; Reply 511; Ex. 1028 ¶¶ 1625). In particular, we note that the Petition relies on the Forys Declaration to explain that Vuori’s presence information is distributed to other users connected to the network. Pet. 14 (Ex. 1003 ¶ 125). The Easttom Declaration, in contrast, explains that SVM watcher 256 is not a user-facing “client” and “thus does not render obvious the claimed ‘transmitting’ step.” Ex. 2001 ¶ 29. Dr. Forys agreed during cross-examination that SVM watcher 256 (which receives the presence information from the presence service) is not a user device. Ex. 2002, 67:270:22 (line of questioning regarding whether SVM watcher 256 is a user agent). However, in his supplemental declaration, submitted after his deposition, Dr. Forys further explained that SVM watcher 256, although not a user device or user agent, is “user-facing” because there is “coupling” between the SVM watcher and the user agent. Ex. 1028 ¶¶ 16, 20. According to Dr. Forys, the presence status must be distributed to a user agent because Vuori teaches that the status markers of the presence information are “interpretable by programs or by persons and can consist of single or multiple values as spelled out in the IETF model of RFC 2778.” Id. ¶ 21 (referring to Ex. 1005 ¶ 47 (emphasis added)). That is, we understand Dr. Forys’s testimony as explaining that the presence information, although distributed to SVM watcher 256, eventually is also transmitted to SVM watcher UA (“user agent”) 278, because the user/principal must be able to interpret the status of his/her buddy list members. Moreover, Dr. Forys relies on RFC 2778, as described in Vuori (Ex. 1005 ¶ 47), which supports his testimony by stating that the “buddy list” application makes it possible for a user to see the presence of others, resulting in the “buddy list” as the combination of the presence user agent and watcher user agent. Ex. 1028 ¶ 21; Ex. 1005 ¶ 47; Ex. 1025 § 2.7 (providing examples of the disclosed model in a buddy list application). On balance, weighing the expert testimony proffered by the parties, we credit Dr. Forys’s testimony as being more consistent with and supported by Vuori’s teachings. For instance, we agree with Dr. Forys that the user agent is coupled to other system services. See Ex. 1028 ¶ 16 (relying on Ex. 1005 ¶ 46 (“A user agent is purely coupling between a principal and some core entity of the system (SVM inbox 274, SVM sender 272, SVM presentity 254, SVM watcher 256).”)). Vuori teaches that implementation of a user agent will combine at least some of the different kinds of user agents. Ex. 1005 ¶ 46. Thus, we agree, as argued by Petitioner, that a user agent with presence information capability interacts with the presence service via SVM watcher 256 to fetch some presence information and be notified of changes of status marker information from members of the buddy list. Considering Vuori’s explanation of status marker information being interpretable by a principal, we agree with Dr. Forys’s testimony that the user agent will receive the presence information that contains these status markers. Thus, if the user agent receives the presence information via its coupling with SVM watcher 256, we find that presence information 290, distributed on the line 252, (i.e., the “list”) has been shown to be transmitted to the user agent (i.e., the “client”).” slip op. at 35

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

    “We resolve this close issue by noting that a claim construction that excludes the “single entry” from the claim scope is preferable, because otherwise, the word “each” would be meaningless in instances where the list contained only one entry.3 See Merck & Co. v. Teva Pharm. USA, Inc., 395 F.3d 1364, 1372 (Fed. Cir. 2005) (“A claim construction that gives meaning to all the terms of the claim is preferred over one that does not do so.”); see also Bicon, Inc. v. Straumann Co., 441 F.3d 945, 950–51 (Fed. Cir. 2006) 3 If the “sub-set of the nodes” were a single node, then the word “each” in the phrase “each of the nodes in the sub-set corresponding to the client” would also be superfluous in the circumstances where there was a single node. The term “each” still has meaning in the circumstances where there is more than one. (refusing to construe claim terms in a way that made other claim limitations meaningless). Accordingly, guided by case law governing claim construction, we adopt a construction of the term “list,” as used in claim 1, that requires more than one node in the “sub-set” corresponding to the client.” slip op. at 15

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

    “During the preliminary stage of the proceeding, Petitioner proposed a claim construction for the term “intercom mode.” Pet. 6. Patent Owner argued that construction of this term was unnecessary, and we agreed with Patent Owner. See Prelim. Resp. 18; Dec. 7. Neither party proposed explicit construction of any other term. It became clear, however, that the scope of the word “list” was at issue, when Patent Owner argued that the “list of the recorded connectivity status” must include the connectivity status of more than one node. Prelim. Resp. 2728. In our Decision on Institution, we disagreed with Patent Owner’s contention regarding the scope of the word “list,” and noted that the Specification seemed to contradict Patent Owner’s position on claim scope. Dec. 1718 (citing Ex. 1001, 7:6164). We invited the parties to provide, during trial, claim construction analysis concerning this dispute.” slip op. at 8

  Patent outcomesUS 8,243,723 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,243,723
• Apple Inc. / HTC Corporation et al. v. Memory Integrity, LLCSome claims unpatentable
  PTAB · Jun 21, 2016 · IPR2015-00163 · APJ Jennifer S Bisk · IPR · Final written decision

  Claims 4–6 and 19–24 are unpatentable over Koster and Koster with Smith, respectively; claims 11 and 12 were not shown unpatentable, and the motion to amend was denied.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for petitioner

    “ANALYSIS A. Level of Ordinary Skill in the Art We begin our analysis by addressing the level of ordinary skill in the art. Dr. Horst and Dr. Oklobdzija agree that a person of ordinary skill in the art would have had at least a “bachelor’s degree in electrical engineering, computer engineering, or computer science” and “two years of experience in the design of multiprocessor systems.” Ex. 1014 ¶ 8; Ex. 2016 ¶ 8. We adopt this proposal as the level of ordinary skill in the art, based on the testimony of the parties’ experts as well as our review of the ’121 patent and the prior art involved in this proceeding.” slip op. at 8

  • Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageTerm construed board ownDisclaimer not foundDecided for petitioner

    “evidence in Patent Owner’s Response, we remain unpersuaded that the ’121 patent supports limiting the broadest reasonable construction of “states” solely to cache coherence protocol states. A claim term will be interpreted more narrowly than its ordinary and customary meaning only under two circumstances: (1) the “patentee sets out a definition and acts as [its] own lexicographer,” or (2) the “patentee disavows the full scope of a claim term either in the specification or during prosecution.” Aventis Pharma S.A. v. Hospira, Inc., 675 F.3d 1324, 1330 (Fed. Cir. 2012). To disavow claim scope, the specification or prosecution history must “make[] clear that the invention does not include a particular feature” and the feature is then “deemed to be outside the reach of the claims of the patent, even though the language of the claims, read without reference to the specification” or prosecution history, “might be considered broad enough to encompass the feature in question.” SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1341 (Fed. Cir. 2001); see Aventis, 675 F.3d at 1330. To disavow claim scope, the patentee may “include[e] in the specification expressions of manifest exclusion or restriction, representing a clear disavowal of claim scope.” Aventis, 675 F.3d at 1330 (internal quotations omitted). In this context, it is not sufficient “that the only embodiments, or all of the embodiments, contain a particular limitation.” Id.” slip op. at 11

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

    “The heart of the dispute regarding this limitation, however, lies in whether the disclosure of microprocessors as devices in a system necessarily discloses that those microprocessors are “programmed.” Because the ’121 patent does not illuminate this issue, but instead the parties rely on expert testimony and other extrinsic evidence to support their respective positions, we consider this issue to more properly fall within the category of unpatentability as opposed to claim construction. See Pet. 34–36; PO Resp. 12–19, 25–29; Reply 5–8. Thus, we do not further construe the term “programmed” other than to note that the ’121 patent uses the term in the ordinary and customary manner. See Ex. 1001, 7:49–52, 27:64–28:24, 29:1–3; Ex. 2012, 359; Ex. 2013, 590–91; Ex. 2014, 931.” slip op. at 24

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed

    “reasonable likelihood of prevailing on this proposed ground of unpatentability. Inst. Dec. 19–24. We have reviewed Petitioner’s anticipation arguments and supporting evidence, including Koster’s disclosure, the detailed arguments appearing on pages 31–38 of the Petition, and the testimony of Dr. Horst. Despite the counter-arguments in Patent Owner’s Response, and the evidence cited therein, which we also have considered, Petitioner has shown, by a preponderance of the evidence, that each of claims 4–6 is unpatentable under 35 U.S.C. § 102 as anticipated by Koster. Petitioner, however, has not shown, by a preponderance of the evidence that Koster anticipates claims 11 and 12.” slip op. at 27

  Patent outcomesUS 7,296,121 mixed
  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips
  Patents in suitUS 7,296,121
• Apple Inc. / HTC Corporation et al. v. Memory Integrity, LLCSome claims unpatentable
  PTAB · Jun 21, 2016 · IPR2015-01353 · APJ Jennifer S Bisk · IPR · Final written decision

  Claims 4–6 are unpatentable as anticipated by Koster, claims 19–24 are unpatentable as obvious over Koster and Smith, and claims 11–12 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level board ownOther

    “ANALYSIS A. Level of Ordinary Skill in the Art We begin our analysis by addressing the level of ordinary skill in the art. Dr. Horst and Dr. Oklobdzija agree that a person of ordinary skill in the art would have had at least a “bachelor’s degree in electrical engineering, computer engineering, or computer science” and “two years of experience in the design of multiprocessor systems.” Ex. 1014 ¶ 8; Ex. 2016 ¶ 8. We adopt this proposal as the level of ordinary skill in the art, based on the testimony of the parties’ experts as well as our review of the ’121 patent and the prior art involved in this proceeding.” slip op. at 8

  • Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageTerm construed petitioner constructionDecided for petitioner

    “For the reasons discussed below, however, despite the arguments and evidence in Patent Owner’s Response, we remain unpersuaded that the ’121 patent supports limiting the broadest reasonable construction of “states” solely to cache coherence protocol states. A claim term will be interpreted more narrowly than its ordinary and customary meaning only under two circumstances: (1) the “patentee sets out a definition and acts as [its] own lexicographer,” or (2) the “patentee disavows the full scope of a claim term either in the specification or during prosecution.” Aventis Pharma S.A. v. Hospira, Inc., 675 F.3d 1324, 1330 (Fed. Cir. 2012). To disavow claim scope, the specification or prosecution history must “make[] clear that the invention does not include a particular feature” and the feature is then “deemed to be outside the reach of the claims of the patent, even though the language of the claims, read without reference to the specification” or prosecution history, “might be considered broad enough to encompass the feature in question.” SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1341 (Fed. Cir. 2001); see Aventis, 675 F.3d at 1330. To disavow claim scope, the patentee may “include[e] in the specification expressions of manifest exclusion or restriction, representing a clear disavowal of claim scope.” Aventis, 675 F.3d at 1330 (internal quotations omitted). In this context, it is not sufficient “that the only embodiments, or all of the embodiments, contain a particular limitation.” Id.” slip op. at 11

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

    “The heart of the dispute regarding this limitation, however, lies in whether the disclosure of microprocessors as devices in a system necessarily discloses that those microprocessors are “programmed.” Because the ’121 patent does not illuminate this issue, but instead the parties rely on expert testimony and other extrinsic evidence to support their respective positions, we consider this issue to more properly fall within the category of unpatentability as opposed to claim construction. See Pet. 34–36; PO Resp. 12–19, 25–29; Reply 5–8. Thus, we do not further construe the term “programmed” other than to note that the ’121 patent uses the term in the ordinary and customary manner. See Ex. 1001, 7:49–52, 27:64–28:24, 29:1–3; Ex. 2012, 359; Ex. 2013, 590–91; Ex. 2014, 931.” slip op. at 24

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “Petitioner fails to proffer evidence sufficient to rebut Patent Owner’s evidence that Koster’s disclosure of a microprocessor does not necessarily disclose that the microprocessor is programmed. Dr. Horst, in his original declaration, asserts that “a requesting microprocessor must be programmed to complete a memory transaction after receiving a first number of responses to a first data request.” Ex. 1014 ¶¶ D-17–D-18. This assertion, however, is conclusory, and does not sufficiently explain why the microprocessor must be programmed or exclude possibilities other than programming. See id.; PO Resp. 27. In particular, Dr. Horst’s original declaration testimony provides no discussion or explanation as to whether a microprocessor composed solely of hardwired logic would necessarily be programmed and whether the functionality described in Koster could not be implemented using hardwired logic. See Ex. 1014 ¶¶ D-17–D-18; PO Resp. 27.” slip op. at 34

  Patent outcomesUS 7,296,121 mixed
  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips
  Patents in suitUS 7,296,121
• Commerce Bancshares, Inc. / Compass Bank et al. v. Intellectual Ventures II LLCSome claims unpatentable
  PTAB · Oct 21, 2015 · IPR2014-00801 · APJ Jennifer S Bisk · IPR · Final written decision

  Claims 26, 28, and 30–32 are unpatentable as anticipated by Aucsmith; claim 33 was not shown unpatentable.

  RulingsFinal written decision

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

    “National Bank of Omaha, filed a Petition (Paper 1, “Pet.”) requesting an inter partes review of claims 1–33 of U.S. Patent No. 6,715,084 B2 (Ex. 1001, “the ’084 patent”). On December 1, 2014, we instituted a review (Paper 7, “Decision to Institute” or “Dec.”) based upon Petitioner’s assertion that claims 26, 28, and 30–33 are unpatentable, under 35 U.S.C. § 102(b), as anticipated by Aucsmith.1 Dec. 18. Petitioner provides a Declaration from Dr. George Kesidis (Ex. 1003), and Patent Owner provides a Declaration from Dr. David Goldschlag (Ex. 2011). This is a Final Written Decision under 35 U.S.C. § 318(a). Based on the record presented, we are persuaded that Petitioner has shown by a preponderance of the evidence that claims 26, 28, and 30–32 are unpatentable. We are not persuaded that Petitioner has shown by a preponderance of the evidence that claim 33 is unpatentable.” slip op. at 2

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

    “1. “anomaly” In the Decision to Institute, we construed the term “anomaly” as “a departure from the usual or expected; an abnormality or irregularity.” Dec. 7–8. Specifically, we agreed with Patent Owner’s assertion that this is the plain meaning of the term and is consistent with the specification of the ’084 patent. Id. at 7. For example, the ’084 patent states that “[a]nomaly detection systems look for statistically anomalous behavior . . . [s]tatistical scenarios can be implemented for user, dataset, and program usage to detect ‘exceptional’ use of the system.” Id. at 8 (citing Ex. 1001, 3:54–57). Neither party contests this construction. We discern no reason to deviate from this construction of “anomaly.”” slip op. at 6

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed

    “evidence that Aucsmith discloses the detecting limitation as required. First, we are persuaded that the indirect detecting method of Aucsmith satisfies the detecting limitation. Aucsmith discloses that “server 104 can also use the possible security problems reported by all of the agents 106(1)–106(N) to help detect intrusion patterns, new intrusion techniques, and other security problems.” Ex. 1004 ¶ 13. As discussed, although we agree that server 104, using this method, is analyzing reports of “possible security problems” created by distributed agents, we are persuaded that this is within the scope of the claim because the reports include data entering the network. For example, Aucsmith discloses that “server 104 receives notice of the anomaly and can examine the anomaly,” and “[i]n individually examining the anomaly [reported by agent 106], the server 104, may, for example, search for particular information in the anomaly such as a network address previously noted as a security problem . . . .” Ex. 1004 ¶¶ 43, 45; see also id. ¶ 44 (“[S]erver 104 may examine the anomaly in conjunction with other information accessible by the server 104, e.g., information included in the collection of security data 118, information sent to the server 104 from other sources, information accessible to the server 104 through the network 108 and/or the corporate server 116, and other similar types of information.”). We are persuaded that Aucsmith discloses server 104 analyzing data entering the network, although this data may also have been analyzed previously by the distributed agents.” slip op. at 16

  • Expert testimonyPatent owner expert creditedDecided for patent owner

    “We agree with Patent Owner that Petitioner does not provide sufficient evidence that Aucsmith discloses “adjusting anomaly detection sensitivity and alarm thresholds” sufficient to show anticipation. Dr. Kesidis’s testimony just repeats the language from Aucsmith quoted above and concludes that “Aucsmith discloses each and every limitation of claim 33.” Ex. 1003 ¶¶ 178–81. Dr. Kesidis, however, does not explain why a person of ordinary skill would understand “modifying security procedures” to disclose “adjusts anomaly detection sensitivity and alarm thresholds.” Id. Dr. Goldschlag, on the other hand, states that “[o]ne of ordinary skill in the art would not have understood this term to disclose adjusting either anomaly detection sensitivity or alarm thresholds.” Ex. 2011 ¶ 62 (emphasis added). Thus, we are not persuaded that Petitioner has shown by a preponderance of the evidence that claim 33 is anticipated by Aucsmith.” slip op. at 22

  Patent outcomesUS 6,715,084 mixed
  Claim construction§ 102 anticipation
  Patents in suitUS 6,715,084
• JDS Uniphase Corporation v. Fiber, LLCSome claims unpatentable
  PTAB · Dec 5, 2014 · IPR2013-00318 · APJ Jacqueline Wright Bonilla · IPR · Final written decision

  Claims 1, 53–66, 69, and 71–74 are unpatentable; claims 67, 68, and 70 are not shown unpatentable. The contingent motion to amend is denied.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner

    “As discussed on our Decision to Institute (Dec. 7–8), we conclude that Patent Owner’s proposed definition of “optical beam” imports improperly a limitation into the claims. The claims themselves do not recite “communications.” Likewise, the ’917 patent Specification does not indicate that “optical beam” is limited to a communications beam, such that it would exclude a YAG laser beam, for example. As noted by Patent Owner, the Specification states that the “invention relates generally to optical switching and more particularly to non-electrical switching of laser communication signals.” Ex. 1001, 1:12–14. In other words, the Specification indicates that communication signals may be a preferred embodiment of the recited “optical beam,” but the claim phrase is not limited to that particular embodiment. See also Ex. 1011, 95:23–96:4 (testimony of Patent Owner’s witness, Dr. David A. Smith, stating that the Specification describes a system that “could switch [a] non-communication beam”); Reply 4. Patent Owner’s proposed dictionary meanings of the terms “transmit,” as relevant to “transmitting” in the claims, as well as “receptor,” do not persuade us otherwise. For example, a dictionary definition of the term “transmit” indicates that it means, more generally, to “send or forward, as to a recipient or destination” or “convey,” even if “[t]o communicate” is another alternative definition. Ex. 2018, 6. Patent Owner does not persuade us that switches for YAG lasers, for example, do not “send or forward” a laser beam. In fact, Patent Owner’s own proposed definition of “transmit” is not limited to sending or forwarding information used in the field of communications, where communications, according to Patent Owner, excludes YAG laser beams. Likewise, as Patent Owner acknowledges (PO Resp. 8–9), the term “optical receptor” is not limited to an element that receives electronic signals, and the Specification, which does not mention the term “receptor” except in the claims, likewise does not limit this term as such. See also Dec. 7 (discussing “optical receptor”); see also infra. Moreover, use of the phrases “optical signal” and “light signal” in a similar context as “optical beam” in the Specification does not mean that “optical beam” is limited to “a light beam consisting of communications information.” PO Resp. 12–13. Similarly, even assuming the Examiner relied exclusively on prior art relating to communications during prosecution of the ’917 patent, that fact would not dictate how we apply our claim construction standard, i.e., the broadest reasonable interpretation in light of the Specification.” slip op. at 9

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

    “2. Other Claim Terms Construed in the Decision to Institute In our Decision to Institute, we construed other terms in the challenged claims—namely, “control,” “optical receptors,” and “data gathering and transmission element,” as recited in independent claims 1 and 53, as well as “adjacent,” as recited in dependent claims 54 and 55. Dec. 8–10. Patent Owner does not propose alternative claim constructions for those claim phrases in its Patent Owner Response, nor did Petitioner challenge our constructions in its Reply. We discern no reason to alter our claim constructions for this Final Written Decision. For convenience, our claim constructions are reproduced in the table below. Claim(s) Claim Phrase Claim Construction 1 and 53 “control” “an element that controls and adjusts one or more beam directing devices (e.g., mirrors), which in turn control transmission of an optical beam from a source and/or mirror(s) to an optical receptor” 1 and 53 “optical receptor” “an element that receives an optical beam after it has been directed by a beam directing device (e.g., mirror),” such as “another optic fiber (cable 7) or optical switch (optical switch 5), as depicted in Figure 1 of the ’917 patent”” slip op. at 10

  • Obviousness (§103) › Analogous artAnalogous artDecided for petitioner

    “Patent Owner further contends, however, that Hurst and Young are not analogous art. Patent Owner contends that, unlike Young, “Hurst does not involve optical switching in the fiber optic communications field,” but instead “relates to the use of micro-machined elements in optical data storage systems.” Id. at 48 (citing Ex. 1005, Abstract). Citing Dr. Smith’s Declaration in support, Patent Owner contends that the Hurst embodiments differ in a number of ways from the fiber optic communications switch described in Young. Id. at 48–50 (citing Ex. 2017, 70–74). For instance, Patent Owner contends that Hurst uses “very short-length polarization-maintaining fibers coupled to mechanical read-write arms,” and involves wavelengths that are “visible or near ultraviolet,” necessitating “alignment requirements of the polarization” to maintain visible or near ultraviolet optics. Id. at 49. Patent Owner contends, citing Dr. Smith’s testimony, that communication switches, such as those disclosed in Young, “require a specific optical system architecture” that “impacts mirror size and overall switch size,” and that the “details of solving that particular optical problem are substantially different than solving the short-wavelength optics challenges of Hurst.” Id. at 49 (citing Ex. 2017, 72–73). Thus, according to Patent Owner, Hurst’s use of polarization-maintaining fibers and shorter wavelengths “change substantially the optical design and the components, such as optical coatings.” Id. at 51. Patent Owner contends that Hurst does not teach “(1) [] a communications-grade fiber switch; (2) how to monitor intensity of the transmitted signal; or (3) how to close a fine alignment loop.” Id. Thus, according to Patent Owner, an ordinary artisan would not have known how to add the feedback element (differential detector) of Hurst to the Young switch system and get it to work, i.e., the teachings “leave[] the combination lacking enablement.” Id. We are not persuaded that Young and Hurst are non-analogous art because, as Petitioner points out, both references describe optical switching and are directed to coupling laser light to receptors with rotational reflective elements. Pet. 21. Patent Owner’s contentions still are relevant, however, to the issue of whether one of ordinary skill in the art would have had reason to combine the elements disclosed in Young and Hurst when making an optical switch.” slip op. at 34

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

    “In this regard, Petitioner argues that a person having ordinary skill in the art would have had reason to provide “the feedback” of Hurst with Young’s optical switching system “for the benefit of ensuring that the reflective mirror is properly controlled.” Id.. Petitioner also argues that “the addition of feedback as taught by Hurst into Young would be a use of a known technique to improve a similar device in the same way.” Id. According to Petitioner, “[o]ne of ordinary skill in the art would have realized that Young provided a base device, and Hurst provided a comparable device, and that adding the feedback of Hurst to Young would have been predictable.” Id. Petitioner cites no evidence, such as a declaration from an expert witness, in support of those contentions, however, especially in relation to the differential detector (data gathering and transmission element) in Hurst. Id. Moreover, Petitioner does not explain sufficiently how, or show why, one would have added that element of Hurst to the optical switch of Young, or one would have been using a “known technique to improve a similar device in the same way,” or that “adding the feedback of Hurst to Young would have been predictable.” By contrast, as discussed above, Patent Owner explains, citing evidence in support, i.e., Dr. Smith’s Declaration, that one reading the two references would have understood that the two disclosed systems differed enough, such that it would not have been straightforward or “predictable” to combine elements. We conclude that Petitioner does not address adequately in its Petition, nor respond sufficiently in its Reply to Patent Owner’s Response, contentions raised by Patent Owner in this regard, or in cited testimony by Dr. Smith. At most, Petitioner contends in its Reply that independent claims 1 and 53 of the ’917 patent do not recite elements identified by Patent Owner as deficient in Hurst, and that Patent Owner’s “attempts to read limitations from the specification into the claims is improper.” Reply 14. We are not persuaded that Petitioner shows by a preponderance of the evidence that an ordinary artisan would have included “at least one data gathering and transmission element,” as recited in challenged independent claims 1 and 53, in the optical switch disclosed in Young based on the teachings in Hurst or Young. For the reasons given above, and in light of the record before us, Petitioner” slip op. at 35

  Patent outcomesUS 7,095,917 mixed
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 7,095,917
• Athena Automation Ltd. v. Husky Injection Molding Systems Ltd.Some claims unpatentable
  PTAB · Oct 23, 2014 · IPR2013-00290 · APJ Jennifer S Bisk · IPR · Final written decision

  Claims 1, 4–16, and 20–22 are unpatentable as anticipated by Arend; claims 2, 3, 17, and 19 were not shown unpatentable, and the motion to amend was denied.

  RulingsFinal written decision

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

    “We agree with Petitioner. We are not persuaded that the ’536 patent limits the required movement of the “rod that is movable” to axial movement of the entire rod. For its proposed construction, Patent Owner relies on figures and description from the ’536 patent that are explicitly described as exemplary embodiment or embodiments. PO Resp. 21 (citing Ex. 1001, Fig. 6C, 7B, 8B, 12:59–64); PO Resp. 26 (citing Ex. 1001, Fig. 7A, 10:26–30, 13:30–37). The ’536 patent, however, clearly identifies Figure 7A (and the rest of the figures), as well as the corresponding description, as exemplary embodiments of the invention, stating explicitly that “[r]eference herein to details of the illustrated embodiments is not intended to limit the scope of the claims.” Ex. 1001, 16:4–8; see also 7:20–25. The testimony of Patent Owner’s declarant, George Markus, is based on these same portions of the ’536 patent that describe exemplary embodiments. Ex. 2009 ¶¶ 34–38. Patent Owner does not, however, point us to any language of the ’536 patent that evidences a clear intention to limit the claims to an exemplary embodiment. Thus, we are not persuaded that the language in the specification pointed to by Patent Owner limits the scope of the term at issue here. See, e.g. Phillips, 415 F.3d at 1323 (“[A]lthough the specification often describes very specific embodiments of the invention, we have repeatedly warned against confining the claims to those embodiments.”); DSW v. Shoe Pavilion, 537 F.3d 1342, 1348 (Fed. Cir. 2008) (“[W]hen claim language is broader than the preferred embodiment, it is well-settled that claims are not to be confined to that embodiment.”).” slip op. at 17

  • Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageTerm construed petitioner constructionDisclaimer not foundDecided for petitioner

    “We agree with Petitioner that Patent Owner’s proposed modifications improperly limit the claim terms. See Reply 6–9. Petitioner asserts, and we agree, that while the patent discloses that it is preferable to engage the lock member teeth in a lower flex zone, it does not restrict the invention to that situation. Id. at 7. For example, Mr. Markus admits that there is some benefit of reduced wear even if only some, but not all, of the teeth of the lock members engage in the relatively lower flex zone. Id. (citing deposition testimony of Patent Owner’s expert, Mr. Markus, Ex. 1011, 219:14–22, 222:2–12; 224:7–11, 225:12–25). Thus, a broader interpretation of the term “relatively higher flex zone” is also consistent with the ’536 patent’s stated objection to reduce wear. Even more telling, the ’536 patent itself states, in its description of an exemplary embodiment, “the complementary lock member 512 is lockably engaged with the lock member 510 at a position that is proximate, at least in part, to the zone 514.” Ex. 1001, 14:11–16 (emphasis added). We, therefore, are not persuaded that the ’536 patent “specifically disavows” engagement outside the relatively higher flex zone, as asserted by Patent Owner. See PO Resp. 36–37. To the contrary, we are persuaded that the ’536 patent explicitly contemplates that the teeth may, at least in part, not engage within the relatively higher flex zone. We also agree with Petitioner that the claim language does not require comparison of adjacent flex zones. Id. (citing Ex. 1011, 227:10–24, 230:10–231:3). While the word adjacent is recited in the claims (e.g., “the relatively lower flex zone of the platen being a portion of the platen adjacent to the rod”) it refers to a flex zone being adjacent the rod, not another flex zone. See Ex. 1011, 227:10–24. Patent Owner’s reliance on Figure 8D as supporting the proposed restriction does not persuade us otherwise. As discussed above, Figure 8D describes an exemplary embodiment, and Patent Owner does not point to any language indicating that the claims should be limited to this embodiment. We also are not persuaded by Patent Owner’s unexplained and unsupported statement that “[o]nly by comparing zones that are adjacent, can such location of the engagement [in the lower flex zone] be accurately pinpointed.” PO Resp. 38 (citing Ex. 2009 ¶¶ 45–47).5” slip op. at 22

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

    “member is engagable with the lock member within a relatively lower flex zone of the platen” (“the engagement limitation”).6 In the Decision to Institute, we adopted a broadest reasonable construction of this term encompassing the situation in which the complementary lock member and the lock member are capable of interlocking or meshing at least in part within or proximate to a relatively lower flex zone of the platen. Dec. to Inst. 10–12. Neither party explicitly addresses the broadest reasonable determine which is the relatively high flex zone and which is the relatively low flex zone.”). The other cited paragraphs are not related to the statement they are cited to support. See id. ¶¶ 46–47. Nor could we find, upon review of the complete declaration, any other support for Patent Owner’s assertion. 6 Independent claims 1 and 12 recite this limitation as quoted. Independent claim 18 includes a similar limitation, “engaging a lock member associated with the rod with a complementary lock member associated with the platen at a position located proximate to a relatively lower flex zone of the platen.” construction of this claim term in their post-institution briefing. We conclude that no additional construction of the term is necessary.” slip op. at 24

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

    “reference—in order to anticipate under 35 U.S.C. § 102—must not only disclose all elements of the claim within the four corners of the document, but must also disclose those elements arranged as in the claim.” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008) (internal quotation marks omitted). Accordingly, an anticipatory reference must show all of the limitations of the claims “arranged or combined in the same way as recited in the claims.” Id. at 1370; see Finisar Corp. v DirecTV Group, Inc., 523 F.3d 1323, 1334–37 (Fed. Cir. 2008); Ecolochem, Inc. v. Southern California Edison Co., 227 F.3d 1361 (Fed. Cir. 2000). Petitioner asserts that Choi’s teeth 38 correspond to the claimed lock member, teeth 48 correspond to the claimed complementary lock member, and tie bar 20 corresponds to the claimed rod. Pet. 36. In addition, according to Petitioner, Choi’s securing/clamping assembly 22 corresponds to the claimed clamp assembly. Id. Petitioner reasons that these elements of Choi are part of the machine disclosed in Glaesener because of the following sentence: “The tie-bar nuts can be secured to the rear wall 16 by any appropriate mechanism, such as the pineapple and toothed-ring mechanism described in [Choi].” Pet. 25, 36. Petitioner, however, does not explain how the relied upon elements of Choi’s device secure the tie-bar nuts of Glaesener to rear wall 16 of Glaesener’s platen. In fact, Petitioner does not direct us to any disclosure in Choi of tie-bar nuts or their equivalent. See Pet. 32–41. Moreover, there is no dispute that Choi does not use the term “pineapple and toothed-ring mechanism.” Tr. 16:7–10. And Petitioner does not provide persuasive evidence as to what part of Choi is included in the term “pineapple and toothed-ring mechanism.” See Tr. 16:7–12 (arguing for the first time that what “pineapple and tooth mechanism” in Glaesener refers to is Figure 3A in Choi with no reference to the record); Tr. 60:14–22 (explaining that Petitioner does not provide evidence of what the pineapple and toothed-ring mechanism is). Without such explanation and supporting evidence, we are not persuaded that Petitioner has met its burden to show that the various portions of Choi and Glaesener, on which it relies, are combined in the same way as recited in the challenged claims. See Lindemann Maschinenfabrik GMBH v. American Hoist & Derrick Co., 730 F.2d 1452, 1458 (Fed. Cir. 1984) (holding that although the prior art reference could be said to contain all of the elements of the claimed invention, it did not anticipate under 35 U.S.C. § 102 because it “disclose[d] an entirely different device, composed of parts distinct from those of the claimed invention, and operating in a different way to process different material differently.”). The Federal Circuit has expressly warned against treating patent “claims as mere catalogs of separate parts” without regard for the “part-to-part relationships set forth” therein. NetMoneyIN, 545 F.3d at 1370 (quoting Lindemann, 730 F.2d at 1459).” slip op. at 30

  Patent outcomesUS 7,670,536 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips
  Patents in suitUS 7,670,536
• SAS Institute, Inc. v. Complementsoft, LLCSome claims unpatentable
  PTAB · Aug 6, 2014 · IPR2013-00226 · APJ Jennifer S Bisk · IPR · Final written decision

  Claims 1, 3, and 5–10 are unpatentable as obvious; claim 4 was not shown unpatentable. The contingent motion to amend was denied.

  RulingsFinal written decision

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

    “We are persuaded by the testimony of Dr. Roussopoulos that a data manipulation language does not require direct access to data in a database. To the extent that Patent Owner argues that Java and C++ never actually retrieve or manipulate data in a database because the embedded functionality does not directly access the database, we credit Petitioner’s evidence, particularly Exhibit 1013, which supports Dr. Roussopoulos’s conclusion that embedded SQL accesses and manipulates data in a database. All of Patent Owner’s evidence to the contrary hinges on the testimony of Mr. Zatkovich, which we do not find persuasive. Mr. Zatkovich’s conclusion that access to a database from a data manipulation language must be direct is unsupported. Mr. Zatkovich simply asserts this to be the case, without providing credible support. See Ex. 2001 ¶ 47.” slip op. at 11

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “As between the conflicting evidence on this point, we credit Petitioner’s evidence, particularly Dr. Roussopoulos’s testimony, which is supported by objective evidence. All of Patent Owner’s evidence, to the contrary, hinges on the testimony of Mr. Zatkovich, which we do not find persuasive on this point. Mr. Zatkovich’s conclusion that a person of ordinary skill would not conclude that Figure 14 depicts program flows is unsupported. Mr. Zatkovich simply asserts this to be the case, without providing credible support. See Ex. 2001 ¶¶ 28-30.” slip op. at 28

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

    “reasonable likelihood of prevailing on this proposed ground of unpatentability. Dec. 15. In particular, we determined that Petitioner had a reasonable likelihood of prevailing on its assertions that the combination of Coad and the Oracle Primers disclosed every limitation of claim 1. Id. at 12- 14. We also found reasonable Petitioner’s asserted rationale that a person of ordinary skill would have combined the teachings of Coad and the Oracle Primers in order to enhance the utility of the programming environment to include data manipulation. Id. at 14-15 (citing Pet. 25); see Ex. 1015 ¶ 115. In its response brief, Patent Owner argues that the combination of Coad and the Oracle Primers fails to disclose the limitations “graphical representations of flows within the retrieved source code” where the source code is written in a “data manipulation language.” PO Resp. 34-42. Patent Owner does not address any other limitations of claim 1 or the rationale to combine the references. Id.” slip op. at 20

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

    “We are not persuaded by this argument. First, this argument is based on an interpretation of the term “graphical representations of flows” that we rejected above. As explained, the interpretation we adopt is a diagram that depicts a map of the progression (or path) through the source code. This interpretation is broad enough to include, but is not limited to, program and data flows. We also reject Patent Owner’s assertion that the graphical representation must show flow within source code steps that are actually performing data manipulation. Our interpretation of the term includes, but does not require, that the flows are shown within source code that is actually performing data manipulation. Petitioner relies on Figures 11-17 (depicting UML diagrams) of Coad as disclosing graphical representations of flows. Pet. 28-30. We agree with Petitioner that at least Figures 14 and 17 of Coad disclose graphical representations of flows as we have construed that term. See, e.g., Ex. 1015 ¶¶ 97-98; see also Ex. 1043, 88-89 (describing UML diagrams as showing flows). Patent Owner concedes that Figure 14 shows communications between objects, which “would at best only show program flow in a purely object[-]oriented language—between objects.” PO Resp. 32 (citing Ex. 2001 ¶ 36). Nonetheless, Patent Owner asserts that because object messages “cannot sensibly be asserted to constitute program or data flow,” Figure 14 does not show flow through source code. Id. at 31-32. Because our interpretation of the term is broad enough to encompass flows that are not program or data flows, we conclude that Figure 14 discloses graphical representations of flows. Similarly, Mr. Zatkovich agrees that Figure 17 shows a type of flow— “Figure 17 can depict a type of flow [], within an object, but only within state-based objects. So it’s a very specialized type of flow in a very limited circumstance.” Ex. 1044, 104:12-17. Because our interpretation of the term is broad enough to encompass flows that are not program or data flows, we conclude that Figure 17 discloses graphical representations of flows as well.” slip op. at 22

  Patent outcomesUS 7,110,936 mixed
  Claim construction§ 103 obviousness
  Patents in suitUS 7,110,936

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.