- Tesla, Inc. v. Autonomous Devices, LLCSome claims unpatentablePTAB · Dec 12, 2024 · IPR2023-01054 · APJ Russell E Cass · IPR · Final written decision
Claims 4 and 11 are unpatentable over Grotmol and Hickman; claims 5 and 7 are not shown unpatentable. Substitute claims 21 and 24–26 are unpatentable; claims 22 and 23 are not reached.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art, 3 Patent Owner does not present objective evidence of nonobviousness in this proceeding. would have [had] at least: (1) a bachelor’s degree in electrical engineering, computer engineering, computer science, systems engineering, or equivalent course work with two to three years of work experience in computer vision, image/video processing, and/or machine learning; or (2) a master’s degree in electrical engineering, computer engineering, computer science, systems engineering, or equivalent course work with a focus in computer vision, image/video processing, and/or machine learning. Pet. 4 (citing Ex. 1002 ¶¶ 40–42). Patent Owner adopts Petitioner’s definition of a person of ordinary skill in the art. PO Resp. 6. Considering the subject matter of the ’974 patent, the background technical field, and the asserted prior art, we agree with Petitioner’s proposed qualifications for the person of ordinary skill in the art, except we decline to adopt “at least,” as that language is vague and open-ended. Otherwise, Petitioner’s proposed definition is consistent with the level of skill reflected in the specification of the ’974 patent and the asserted prior art references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Accordingly, except as noted above, we adopt Petitioner’s assessment” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“1. “connection” Claim 7 recites, in pertinent part, that “a first connection is generated” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMixed
“c) Conclusion—Claim 7 After consideration of the contentions and the evidence of record, we” slip op. at 52
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend granted in partGranted in part
“7 We recognize that our conclusion here differs from the preliminary determination made in our Preliminary Guidance. After considering the full trial record, including Patent Owner’s MTA Reply, Petitioner’s MTA Sur-reply, Patent Owner’s Sur-sur-reply, and the arguments made at the oral hearing, we find that Petitioner has satisfied its burden of showing that this claim limitation would have been obvious over the Grotmol-Hickman combination. When issuing our Preliminary Guidance, we emphasized that the views expressed therein were “preliminary,” “subject to change upon consideration of the complete record,” and “not binding on the Board when reaching a final written decision.” See Prelim. Guid. 3.” slip op. at 99
Patent outcomesUS 10,452,974 mixedClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,452,974 - Qualcomm Incorporated / Zyxel Communications Corporation v. Unm Rainforest InnovationsAll claims unpatentablePTAB · Aug 15, 2022 · IPR2021-00741 · APJ Kristen L Droesch · IPR · Final written decision
Claims 1–5 are unpatentable: claims 1, 2, 4, and 5 are anticipated by Yoon, and claim 3 is obvious over Yoon and Naka; substitute claims 6, 7, 9, and 10 are allowed, but claim 8 …
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITANo construction neededDecided for petitioner
“We decline to adopt Patent Owner’s construction adding “spanning multiple modulation symbols” to the claim limitation “ones of the plurality of coded bits” because it is improper to read an extraneous limitation into the claim from the specification. See E.I. du Pont de Nemours, 849 F.2d at 1433. An extraneous limitation is “a limitation read into a claim from the specification wholly apart from any need to interpret what the patentee meant by particular words or phrases in the claim.” Id. Patent Owner acknowledges that “the ’326 Patent discloses multiple variations of implementing a circular shift,” including inter-symbol circular shifts and intra-symbol circular shifts. See PO Sur-reply 6. Thus, we are not persuaded “spanning multiple modulation symbols” is necessary based on Patent Owner’s arguments and Dr. Vojcic’s testimony that the claimed circular shift is limited to the inter-symbol circular shift and excludes an intra-symbol shift. Patent Owner’s arguments rest on Dr. Vojcic’s unsupported testimony regarding “key aspects,” certain advantages of reordering significant and non-significant bits between consecutive transmissions, and “[a] key characteristic.” See, e.g., Ex. 2001 ¶¶ 48, 62. Dr. Vojcic cites column 7, lines 31 through 52 and reproduces Figures 4A and 4B of the ’326 Patent to support his testimony. See Ex. 2001 ¶¶ 48, 62. These cited disclosures of the ’326 Patent are silent regarding forward error correction decoding, coding diversity, and channel attenuation, and further are silent regarding any relationship to inter-symbol circular shifts alone compared to intra-symbol circular shifts or a combination of intra-symbol circular shifts and inter-symbol circular shifts. Accordingly, Patent Owner does not present a sufficient underlying factual basis to support Dr. Vojcic’s testimony that: (1) a person of ordinary skill in the art “would [] understand that reordering of significant and non-significant bits between consecutive transmissions would provide channel coding, i.e., forward error correction coding, diversity in that bits/symbols that experienced bad channel conditions in one transmission due to reordering in consecutive transmission, may experience good channel conditions in the subsequent transmission/retransmission,” (Ex. 2001 ¶ 48); and (2) “[a] key characteristic of this invention is the ability to take advantage of varying channel attenuation by different modulation symbols,” (Ex. 2001 ¶ 62). We give little weight to Dr. Vojcic’s aforementioned testimony. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). We also do not credit Patent Owner’s unsupported attorney arguments that: (1) advantages of the ’326 Patent cannot be realized by intra-symbol shifts (see PO Resp. 19 (citing Ex. 2001 ¶ 62), 21 (citing Ex. 2001 ¶ 62), 23 (citing Ex. 2001 ¶ 62); PO Sur-reply 2 (citing Ex. 2001 ¶ 62)); (2) the claimed circular shift of one of the plurality of coded bits cannot be realized within only a single symbol (see PO Resp. 19, 21; PO Sur-reply 2); (3) “the implicit but necessary requirement that the plurality of coded bits span multiple modulation symbols is clearly obvious to a [person of ordinary skill in the art] in all aspects of the invention” (PO Sur-reply 4 (citing Ex. 2001 ¶ 62)); and (4) “a person of skill in the art would understand that the invention cannot be implemented within a single symbol, i.e., the plurality of coded bits necessarily spans multiple symbols” (PO Sur-reply 7 (citing Ex. 2001 ¶ 62)). Argument of counsel cannot take the place of objective evidence. See Gemtron Corp. v. Saint-Gobain Corp., 572 F.3d 1371, 1380 (Fed. Cir. 2009) (unsworn attorney argument is not evidence).” slip op. at 14
- Skill levelSkill level patent owner adoptedDecided for patent owner
“B. Level of Ordinary Skill in the Art Petitioner asserts: As of 2008, a person of ordinary skill in the art (“POSA”) in the field of the ’326 patent would have had a Bachelor’s degree in Electrical Engineering, Computer Engineering, or a related field, and around two years of experience in the design or development of wireless communication systems, or the equivalent. Pet. 26 (citing Ex. 1002 ¶¶ 55–57). Patent Owner offers a slightly different description, as follows: At the relevant time, a person of ordinary skill in the art in the technical field of the ’326 patent would have had at least a master’s degree in Computer Engineering or Electrical Engineering, or equivalent work experience, along with at least 1 year of experience related specifically to wireless communications, including error correction control and modulation. PO Resp. 14 (citing Ex. 2001 ¶ 17). We adopt Patent Owner’s definition of a person of ordinary skill in the art because it is consistent with the level of skill reflected by the ’326 Patent Specification and the asserted prior art, but our conclusions would be the same under Petitioner’s definition.” slip op. at 19
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“We do not agree with Patent Owner’s arguments because the arguments are not commensurate in scope with the claim limitations. Contrary to Patent Owner’s arguments, claims 1 and 4 do not recite or require performing a circular shift for each and every retransmission, as suggested by Patent Owner. Claims 1 and 4 recite “performing a circular shift,” which may mean performing one or more circular shifts. See KCJ Corp. v. Kinetic Concepts, Inc., 223 F.3d 1351, 1356 (Fed. Cir. 2000). (“[A]n indefinite article ‘a’ or ‘an’ in patent parlance carries the meaning of ‘one or more’ in open-ended claims containing the transitional phrase ‘comprising.’”). Thus, to meet the limitations of the claim, Yoon need only disclose performing one circular shift, with a variable length related to a modulation order and a number of transmissions. We also do not agree with Patent Owner’s arguments that Yoon does not disclose performing a circular shift on the basis that Yoon discloses a predetermined rearrangement pattern. Claims 1 and 4 do not preclude the use of a “predetermined arrangement pattern” for “performing a circular shift.” Patent Owner’s arguments also overlook Yoon’s explicit disclosures, relied on by Petitioner (see Pet. 30–45) of performing a “2-bit right rotation” for a first retransmission, and a “4-bit right rotation” for a second retransmission for the 64QAM scheme (modulation order 6) of Figure 10, and performing a “1-bit right rotation” for a first retransmission, and a “2-bit right rotation” for a second retransmission 8PSK scheme (modulation order 3) of Figure 11. See Ex. 1010 ¶¶ 104–105, 111–113, Figs. 10–11. Notwithstanding Petitioner’s assertions addressing Yoon’s disclosures of a 1-bit-circular shift within each of the H and L parts of a modulation symbol and compound circular shifts, Yoon’s aforementioned explicit disclosures pertaining to Figures 10 and 11 disclose “performing a circular shift, with variable length related to a modulation order and a number of transmissions, on ones of the plurality of coded bits,” in accordance with the full scope of the claim limitations.” slip op. at 37
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“Petitioner asserts that it would have been obvious to one of ordinary skill in the art to incorporate Naka’s techniques of generating a reordered index sequence of coded bits and allocating coded bits based on the reordered index sequence because a person of ordinary skill in the art would have understood that it was one of a finite number of ways that Yoon’s interleaver could have generated a reordered sequence of coded bits, such as directly or by using an index sequence. See Pet. 66 (citing Ex. 1010 ¶¶ 60–61; Ex. 1002 ¶ 177); id. at 68 (quoting KSR, 550 U.S. at 421; citing Ex. 1002 ¶ 175). According to Petitioner, “[u]sing a standard data structure such as [an] array . . . or lookup table to implement the reordered index sequence would have been ‘within a [person of ordinary skill in the art]’s technical grasp,’ and a [person of ordinary skill in the art] would thus have had a good reason to pursue this option.” Id. at 66–67 (citing Ex. 1015 ¶¶ 8, 10, 16, 18; Ex. 1002 ¶ 177; KSR, 550 U.S. at 421). Petitioner further contends that a person of ordinary skill in the art would have had a reasonable expectation of success in making the combination because Naka’s interleaver functioned like Yoon’s interleaver and bit rearranger. See id. at 68–69 (citing Ex. 1010 ¶¶ 60–61; Ex. 1015 ¶¶ 17–26, 55–58, Fig. 2; Ex. 1002 ¶¶ 180–181). Patent Owner does not challenge Petitioner’s assertions addressing the combined teachings of Yoon and Naka. See PO Resp. 44; PO Sur-reply 17. Based on Petitioner’s citations to Yoon, Naka, and Dr. Roy’s supporting testimony (Ex. 1002), we are persuaded Petitioner has set forth sufficient articulated reasoning with rational underpinning to support the conclusion that it would have been obvious to one of ordinary skill in the art to incorporate Naka’s techniques with Yoon’s method. See Pet. 66–67 (citing Ex. 1015 ¶¶ 8, 10, 16, 18; Ex. 1002 ¶ 177; KSR, 550 U.S. at 421).” slip op. at 43
Patent outcomesUS 8,565,326 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,565,326 - Qualcomm Incorporated / Zyxel Communications Corporation v. Unm Rainforest InnovationsAll claims unpatentablePTAB · Aug 15, 2022 · IPR2021-00582 · APJ Kristen L Droesch · IPR · Final written decision
Claims 1–5 are unpatentable: claims 1, 2, 4, and 5 as anticipated by Yoon, and claim 3 as obvious over Yoon and Naka; amendment is granted for claims 6, 7, 9, and 10 and denied …
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionNo construction neededDecided for petitioner
“We decline to adopt Patent Owner’s construction adding “spanning multiple modulation symbols” to the claim limitation “ones of the plurality of coded bits” because it is improper to read an extraneous limitation into the claim from the specification. See E.I. du Pont de Nemours, 849 F.2d at 1433. An extraneous limitation is “a limitation read into a claim from the specification wholly apart from any need to interpret what the patentee meant by particular words or phrases in the claim.” Id. Patent Owner acknowledges that “the ’326 Patent discloses multiple variations of implementing a circular shift,” including inter-symbol circular shifts and intra-symbol circular shifts. See PO Sur-reply 6. Thus, we are not persuaded “spanning multiple modulation symbols” is necessary based on Patent Owner’s arguments and Dr. Vojcic’s testimony that the claimed circular shift is limited to the inter-symbol circular shift and excludes an intra-symbol shift. Patent Owner’s arguments rest on Dr. Vojcic’s unsupported testimony regarding “key aspects,” certain advantages of reordering significant and non-significant bits between consecutive transmissions, and “[a] key characteristic.” See, e.g., Ex. 2001 ¶¶ 48, 62. Dr. Vojcic cites column 7, lines 31 through 52 and reproduces Figures 4A and 4B of the ’326 Patent to support his testimony. See Ex. 2001 ¶¶ 48, 62. These cited disclosures of the ’326 Patent are silent regarding forward error correction decoding, coding diversity, and channel attenuation, and further are silent regarding any relationship to inter-symbol circular shifts alone compared to intra-symbol circular shifts or a combination of intra-symbol circular shifts and inter-symbol circular shifts. Accordingly, Patent Owner does not present a sufficient underlying factual basis to support Dr. Vojcic’s testimony that: (1) a person of ordinary skill in the art “would [] understand that reordering of significant and non-significant bits between consecutive transmissions would provide channel coding, i.e., forward error correction coding, diversity in that bits/symbols that experienced bad channel conditions in one transmission due to reordering in consecutive transmission, may experience good channel conditions in the subsequent transmission/retransmission,” (Ex. 2001 ¶ 48); and (2) “[a] key characteristic of this invention is the ability to take advantage of varying channel attenuation by different modulation symbols,” (Ex. 2001 ¶ 62). We give little weight to Dr. Vojcic’s aforementioned testimony. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). We also do not credit Patent Owner’s unsupported attorney arguments that: (1) advantages of the ’326 Patent cannot be realized by intra-symbol shifts (see PO Resp. 19 (citing Ex. 2001 ¶ 62), 21 (citing Ex. 2001 ¶ 62), 23 (citing Ex. 2001 ¶ 62); PO Sur-reply 2 (citing Ex. 2001 ¶ 62)); (2) the claimed circular shift of one of the plurality of coded bits cannot be realized within only a single symbol (see PO Resp. 19, 21; PO Sur-reply 2); (3) “the implicit but necessary requirement that the plurality of coded bits span multiple modulation symbols is clearly obvious to a [person of ordinary skill in the art] in all aspects of the invention” (PO Sur-reply 4 (citing Ex. 2001 ¶ 62)); and (4) “a person of skill in the art would understand that the invention cannot be implemented within a single symbol, i.e., the plurality of coded bits necessarily spans multiple symbols” (PO Sur-reply 7 (citing Ex. 2001 ¶ 62)). Argument of counsel cannot take the place of objective evidence. See Gemtron Corp. v. Saint-Gobain Corp., 572 F.3d 1371, 1380 (Fed. Cir. 2009) (unsworn attorney argument is not evidence).” slip op. at 14
- Skill levelSkill level patent owner adoptedDecided for patent owner
“B. Level of Ordinary Skill in the Art Petitioner asserts: As of 2008, a person of ordinary skill in the art (“POSA”) in the field of the ’326 patent would have had a Bachelor’s degree in Electrical Engineering, Computer Engineering, or a related field, and around two years of experience in the design or development of wireless communication systems, or the equivalent. Pet. 26 (citing Ex. 1002 ¶¶ 55–57). Patent Owner offers a slightly different description, as follows: At the relevant time, a person of ordinary skill in the art in the technical field of the ’326 patent would have had at least a master’s degree in Computer Engineering or Electrical Engineering, or equivalent work experience, along with at least 1 year of experience related specifically to wireless communications, including error correction control and modulation. PO Resp. 14 (citing Ex. 2001 ¶ 17). We adopt Patent Owner’s definition of a person of ordinary skill in the art because it is consistent with the level of skill reflected by the ’326 Patent Specification and the asserted prior art, but our conclusions would be the same under Petitioner’s definition.” slip op. at 19
- Expert testimonyPatent owner expert discountedDecided for petitioner
“at 1433. An extraneous limitation is “a limitation read into a claim from the specification wholly apart from any need to interpret what the patentee meant by particular words or phrases in the claim.” Id. Patent Owner acknowledges that “the ’326 Patent discloses multiple variations of implementing a circular shift,” including inter-symbol circular shifts and intra-symbol circular shifts. See PO Sur-reply 6. Thus, we are not persuaded “spanning multiple modulation symbols” is necessary based on Patent Owner’s arguments and Dr. Vojcic’s testimony that the claimed circular shift is limited to the inter-symbol circular shift and excludes an intra-symbol shift. Patent Owner’s arguments rest on Dr. Vojcic’s unsupported testimony regarding “key aspects,” certain advantages of reordering significant and non-significant bits between consecutive transmissions, and “[a] key characteristic.” See, e.g., Ex. 2001 ¶¶ 48, 62. Dr. Vojcic cites column 7, lines 31 through 52 and reproduces Figures 4A and 4B of the ’326 Patent to support his testimony. See Ex. 2001 ¶¶ 48, 62. These cited disclosures of the ’326 Patent are silent regarding forward error correction decoding, coding diversity, and channel attenuation, and further are silent regarding any relationship to inter-symbol circular shifts alone compared to intra-symbol circular shifts or a combination of intra-symbol circular shifts and inter-symbol circular shifts. Accordingly, Patent Owner does not present a sufficient underlying factual basis to support Dr. Vojcic’s testimony that: (1) a person of ordinary skill in the art “would [] understand that reordering of significant and non-significant bits between consecutive transmissions would provide channel coding, i.e., forward error correction coding, diversity in that bits/symbols that experienced bad channel conditions in one transmission due to reordering in consecutive transmission, may experience good channel conditions in the subsequent transmission/retransmission,” (Ex. 2001 ¶ 48); and (2) “[a] key characteristic of this invention is the ability to take advantage of varying channel attenuation by different modulation symbols,” (Ex. 2001 ¶ 62). We give little weight to Dr. Vojcic’s aforementioned testimony. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). We also do not credit Patent Owner’s unsupported attorney arguments that: (1) advantages of the ’326 Patent cannot be realized by intra-symbol shifts (see PO Resp. 19 (citing Ex. 2001 ¶ 62), 21 (citing Ex. 2001 ¶ 62), 23 (citing Ex. 2001 ¶ 62); PO Sur-reply 2 (citing Ex. 2001 ¶ 62)); (2) the claimed circular shift of one of the plurality of coded bits cannot be realized within only a single symbol (see PO Resp. 19, 21; PO Sur-reply 2); (3) “the implicit but necessary requirement that the plurality of coded bits span multiple modulation symbols is clearly obvious to a [person of ordinary skill in the art] in all aspects of the invention” (PO Sur-reply 4 (citing Ex. 2001 ¶ 62)); and (4) “a person of skill in the art would understand that the invention cannot be implemented within a single symbol, i.e., the plurality of coded bits necessarily spans multiple symbols” (PO Sur-reply 7 (citing Ex. 2001 ¶ 62)). Argument of counsel cannot take the place of objective evidence. See Gemtron Corp. v. Saint-Gobain Corp., 572 F.3d 1371, 1380 (Fed. Cir. 2009) (unsworn attorney argument is not evidence).” slip op. at 15
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“We do not agree with Patent Owner’s arguments because the arguments are not commensurate in scope with the claim limitations. Contrary to Patent Owner’s arguments, claims 1 and 4 do not recite or require performing a circular shift for each and every retransmission, as suggested by Patent Owner. Claims 1 and 4 recite “performing a circular shift,” which may mean performing one or more circular shifts. See KCJ Corp. v. Kinetic Concepts, Inc., 223 F.3d 1351, 1356 (Fed. Cir. 2000). (“[A]n indefinite article ‘a’ or ‘an’ in patent parlance carries the meaning of ‘one or more’ in open-ended claims containing the transitional phrase ‘comprising.’”). Thus, to meet the limitations of the claim, Yoon need only disclose performing one circular shift, with a variable length related to a modulation order and a number of transmissions. We also do not agree with Patent Owner’s arguments that Yoon does not disclose performing a circular shift on the basis that Yoon discloses a predetermined rearrangement pattern. Claims 1 and 4 do not preclude the use of a “predetermined arrangement pattern” for “performing a circular shift.” Patent Owner’s arguments also overlook Yoon’s explicit disclosures, relied on by Petitioner (see Pet. 30–45) of performing a “2-bit right rotation” for a first retransmission, and a “4-bit right rotation” for a second retransmission for the 64QAM scheme (modulation order 6) of Figure 10, and performing a “1-bit right rotation” for a first retransmission, and a “2-bit right rotation” for a second retransmission 8PSK scheme (modulation order 3) of Figure 11. See Ex. 1010 ¶¶ 104–105, 111–113, Figs. 10–11. Notwithstanding Petitioner’s assertions addressing Yoon’s disclosures of a 1-bit-circular shift within each of the H and L parts of a modulation symbol and compound circular shifts, Yoon’s aforementioned explicit disclosures pertaining to Figures 10 and 11 disclose “performing a circular shift, with variable length related to a modulation order and a number of transmissions, on ones of the plurality of coded bits,” in accordance with the full scope of the claim limitations. In addition, Patent Owner’s following arguments are misplaced: (1) Petitioner uses hindsight reconstruction of Yoon’s disclosures that do not sufficiently disclose the invention of the ’326 Patent to a person of ordinary skill in the art (see PO Resp. 39–40; PO Sur-reply 12–15), and (2) the claimed subject matter would not have been obvious (PO Sur-reply 12, 15). Obviousness and hindsight are not the relevant inquiries to the patentability challenge based on anticipation by Yoon. “[A] claim is anticipated ‘if each and every limitation is found either expressly or inherently in a single prior art reference.’” King Pharm., 616 F.3d at 1274 Based on the entire record, we determine Petitioner shows by a preponderance of the evidence that Yoon discloses “performing a circular shift, with variable length related to a modulation order and a number of transmissions, on ones of the plurality of coded bits.” See Pet. 36–45.” slip op. at 37
Patent outcomesUS 8,565,326 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,565,326 - Qualcomm Incorporated / Zyxel Communications Corporation v. Unm Rainforest InnovationsAll claims unpatentablePTAB · Jul 15, 2022 · IPR2021-00739 · APJ Kristen L Droesch · IPR · Final written decision
Claims 1, 2, and 11–13 are unpatentable over Hui; the motion to amend with substitute claims 29, 30, and 39–41 is denied because those claims are unpatentable over Hui alone and Hui with Maltsev.
RulingsFinal written decision- ExcludeMotion to exclude, deniedGranted in part
“A motion to exclude evidence must be filed to preserve a prior objection to evidence and must identify the objections in the record. 37 C.F.R. § 42.64(c). An objection to evidence submitted prior to the institution of the trial, including evidence submitted with a petition to institute inter partes review, must be filed within ten business days of the institution of the trial. 37 C.F.R. § 42.64(b)(1). Once a trial is instituted, any objection must be filed within five business days of the service of evidence to which the objection is directed. Id. The objection must identify 9 Patent Owner quotes Paper 26 which was expunged and replaced with Paper 36. See Ex. 3001. 10 Paper 30 was expunged and replaced with Paper 37. the grounds for the objection with sufficient particularity to allow for correction in the form of supplemental evidence. Id. An objection to deposition evidence “must be made during the deposition.” 37 C.F.R. § 42.64(a).” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“compressed.” Patent Owner’s argument is belied by Dr. Vojcic’s testimony that “quantization may also result in a reduction of data bits.” Ex. 2001 ¶ 74; PO Resp. 14. We agree with Petitioner that the ’204 Patent Specification does not limit compression to compression performed only in ways other than quantizing. We, however, do not agree with Petitioner that the disclosure of column 4, lines 11 through 19 indicates that “‘only quantization’—specifically, ‘quantiz[ing] information regarding time delays and phases of the selected channel taps’—is referred to as ‘compress[ing] the estimated CSI.’” Pet. Reply 10. The ’204 Patent Specification’s disclosure that the mobile station may further compress the estimated CSI indicates that the preceding disclosure that the mobile station may quantize information regarding time delays and phases of the selected channel taps means that the mobile station also compresses, to some extent, the same information regarding time delays and phases. Accordingly, column 4, lines 11–19 of the ’204 Patent Specification discloses that quantizing the information regarding the time delays and phases of channel taps results in some compression of the same information regarding time delays and phases, and further discloses compressing the magnitude component of the estimated CSI by generating a plurality of parameters to represent information regarding magnitudes of the channel taps and thereafter quantizing those parameters. Patent Owner also disagrees with our preliminary finding that “the” slip op. at 24
- Skill levelSkill level patent owner adoptedDecided for patent owner
“B. Level of Ordinary Skill in the Art Petitioner asserts: As of 2008, a person of ordinary skill in the art (“POSA”) in the field of the ’204 patent would have had a Bachelor’s degree in electrical engineering, computer engineering, or a related field, and around two years of experience in the design or development of wireless communication systems, or the equivalent plus knowledge of [multiple-input, multiple-output (“MIMO”)] and [orthogonal frequency-division multiplexing (“OFDM”)]. Pet. 19 (citing Ex. 1002 ¶ 19). Patent Owner offers a slightly different description as follows: At the relevant time, a person of ordinary skill in the art in the technical field of the ’204 patent would have had at least a Bachelor’s Degree in electrical engineering, computer engineering, or a related field, and approximately one year of experience in the design or development of wireless communications systems or the equivalent, including knowledge of MIMO and OFDM. Id. (citing Ex. 2001 ¶ 31). We adopt Patent Owner’s definition of a person of ordinary skill in the art because it is consistent with the level of skill reflected by the ’204 Patent Specification and the asserted prior art, but our conclusions would be the same under Petitioner’s definition.” slip op. at 32
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Furthermore, Patent Owner’s arguments challenging the credibility of Dr. Roy go to the weight that should be given to Dr. Roy’s Declaration testimony, not the admissibility of the Declaration. In our patentability analysis that follows, we account for the evidence that Dr. Roy’s Declaration is substantially the same as Dr. Akl’s Declaration, the supporting evidence cited therein, as well as Dr. Roy’s deposition testimony in determining the appropriate weight to give Dr. Roy’s testimony when weighing the record evidence.” slip op. at 14
Patent outcomesUS 8,249,204 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,249,204 - Polygroup Limited Mco v. Willis Electric Co., Ltd.Some claims unpatentablePTAB · Oct 8, 2020 · IPR2016-01612 · APJ Jeremy M Plenzler · IPR · Remand
On remand, claims 1, 3, 4, 6, 8, and 9 of the ’186 patent were held unpatentable; other remanded challenged claims were not, and substitute claims 29 and 30 were allowed.
RulingsRemand decision- RemandOther
“On appeal, the U.S. Court of Appeals for the Federal Circuit vacated our Original Decision in part and remanded the cases for further proceedings. Polygroup Ltd. MCO v. Willis Elec. Co., Ltd, 759 F. App’x 934 (Fed. Cir. 2019). After conferring with the parties, we permitted additional briefing to address the issues on remand from the Federal Circuit. Paper 196.” slip op. at 2
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“electrical connection in a single step (e.g., “‘when’ the mechanical connection is made, an electrical connection is also made”) as Patent Owner alleges. Rather, claim 1 requires “a first trunk electrical connector” and “a second trunk electrical connector” with “the second tree portion [being] electrically connectable to the first tree portion such that a portion of the first trunk electrical connector of the first trunk portion contacts a portion of the second trunk electrical connector of the second trunk portion.” Although the claim also requires that “the second tree portion is mechanically coupleable to the first tree portion about a central vertical axis,” the claim permits that mechanical connection to be independent of the electrical connection. Giving claim 1 its proper reading, there is no dispute that Miller teaches first and second trunk electrical connectors or that its tree portions are coupleable about a central vertical axis as outlined in the Petition. See Pet. I 45–48.” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“Petitioner contends that one skilled in the art would have modified Miller’s teachings based on those from Lessner. Pet. II 65–70. Petitioner reasons, for example, that “[i]t would have been obvious . . . to enhance the mechanical and electrical connections between the electrical contacts sets and wiring assemblies of Miller[] with the detachable electrical connectors of Lessner” for “ease and speed of assembly and disassembly.” Id. at 65–66 (citing Ex. 1006 ¶¶ 261–67). Petitioner further reasons that “the detachable connectors of Lessner provide a quick-connect engagement allowing the builder to easily and quickly attach the wires to the terminals on the trunk connector during assembly,” which “also allows for easy separation of the wires from the trunk connectors, as needed for repair or replacement of parts.” Id. at 66. Petitioner’s contentions as to why one skilled in the art would have modified Miller’s teachings are unpersuasive. As discussed above, Petitioner cited Miller’s plug and socket connectors as corresponding to the recited trunk connectors. Petitioner’s proposed modification in the Miller alone challenge adds an additional connection point in Miller’s plug and socket connectors, further complicating assembly, rather than providing greater “ease and speed of assembly and disassembly” as alleged. Petitioner’s additional reasoning that the proposed modification “also allows for easy separation of the wires from the trunk connectors, as needed for repair or replacement of parts” is equally unpersuasive. The only difference resulting from the modification is that the plug and socket connectors could be removed from their respective wiring assemblies. That is, it provides for removal of one connector by providing yet another connector, which fails to provide a benefit because Miller’s plug and socket connectors are loose, rather than fixed within the trunk portions like Patent Owner’s connectors. For at least these reasons, Petitioner has failed to establish unpatentability of claim 7 of the ’186 patent by a preponderance of the evidence.” slip op. at 19
- Obviousness (§103) › Objective indicia / secondary considerationsObjective indicia outweighedDecided for petitioner
“D. Secondary Considerations As explained in the Original Decision, Patent Owner provides evidence related to non-obviousness of the claims. Original Decision 43–60. Considering that evidence, as explained in the Original Decision, relative to the fact that Miller alone teaches each element of these claims in a single embodiment16, we determine that Patent Owner’s evidence does not outweigh Petitioner’s case of obviousness for claims 1, 3, 4, 6, 8, and 9. For the reasons set forth above, Petitioner has established by the preponderance of the evidence that claims 1, 3, 4, 6, 8, and 9 are unpatentable. Petitioner has failed to establish by the preponderance of the evidence that claim 7 is unpatentable.” slip op. at 21
Patent outcomesUS 8,454,187 mixedClaim construction§ 103 obviousnessPatents in suitUS 8,454,187 - Square, Inc. v. Unwired Planet LLCAll claims unpatentablePTAB · Nov 19, 2015 · IPR2014-01164 · APJ Barbara A Parvis · IPR · Final written decision
Claims 1–17 are unpatentable: claims 1–7 and 11–17 as anticipated by DeLorme, and claims 7–10 or 1–6 and 11–16 as obvious over the stated combinations.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“its combinations of teachings of the applied references. See, e.g., PO Resp. 34–39. As the Federal Circuit has explained, While it is always preferable for the factfinder below to specify the level of skill it has found to apply to the invention at issue, the 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.” Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (finding that the Board was not required to set forth express findings as to level of skill in art and quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163–64 (Fed. Circ. 1985)). Here, we are persuaded that the prior art adequately reflects an appropriate level of skill. Additionally, Mr. Proctor proposes a definition for a person of ordinary skill in the art—a person with an engineering degree, either computer science or electrical engineering, and around two years of experience working in the wireless communications industry. Ex. 2003, 55:14–56:3. Patent Owner does not dispute Mr. Proctor’s proposed definition. Ex. 2002 ¶¶ 21–23. We agree that this definition is reasonable.” slip op. at 30
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“Regarding Dr. Chatterjee’s testimony, Dr. Chatterjee acknowledges that some amount of TRIPS functionality would be available via mobile devices. Ex. 2002 ¶ 48. Dr. Chatterjee, however, is vague with respect to his opinion of which functionalities would be too difficult to implement. See e.g., id. ¶¶ 48, 52, 53, 58. Dr. Chatterjee testifies regarding significant challenges, but does not tie these challenges persuasively to his opinion that DeLorme’s disclosure is inadequate. For example, Dr. Chatterjee testifies that “although distributed computing was known at the relevant time, distributed computing technologies at that time, e.g., the Common Object Request Broker Architecture (CORBA) and Microsoft’s Distributed Component Object Model (DCOM), were difficult to deploy.” Id. ¶¶ 50, 51 (citing Ex. 2014, 14; Ex. 2016, 10). Dr. Chatterjee, however, does not testify persuasively regarding (1) how CORBA and DCOM relate to the elements recited in claim 1 of the ’433 Patent, or (2) how the challenges with implementing CORBA and DCOM undermine the explicit disclosure in DeLorme of TRIPS using stored preferences to narrow search results.” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“combine DeLorme and Trask. PO Resp. 51. Petitioner, in reliance on the testimony of Mr. Proctor, asserts that a person of ordinary skill would have found it obvious to combine DeLorme’s system of taxi service providers and Trask, because Trask enhances DeLorme’s system to maximize available taxis and minimize delays by accounting for the location of the taxi. Pet. 56–57 (citing Ex. 1012 ¶¶ 181–184). In the Decision to Institute, we credited Mr. Proctor’s statements, as they are consistent with the teachings of DeLorme and Trask. Inst. Dec. 21. For example, Trask teaches tracking the present position of taxis (Ex. 1007, 2:25–30) and comparing the locations of vehicles with customer requests to determine the most appropriate vehicle to dispatch (id. at 2:31–42).” slip op. at 26
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightDecided for petitioner
“Patent Owner further asserts that Mr. Proctor’s deposition testimony establishes that he improperly relied on hindsight bias and his declaration is not sufficient to establish obviousness. PO Resp. 41–47. Mr. Proctor testified that a person of ordinary skill in the art would have combined Baker and Hall in various ways depending on their objectives. Ex. 2003, 161:10– 162:13. Patent Owner points to a question posed by its counsel asking “[a]nd this example that you just gave me—is how you would combine their teachings if your objective were to create something like the ’433 patent; is that right?” PO Resp. 43–44 (citing Ex. 164:4–12). We disagree that Mr. Proctor’s testimony in the affirmative to this question is an admission that he used hindsight bias, because Patent Owner’s contentions rely on incorrect characterizations of Mr. Proctor’s testimony. Patent Owner additionally alleges that Mr. Proctor belatedly identified the level of skill in the art (PO Resp. 47), which is not persuasive for the same reasons discussed with respect to DeLorme and Trask. We credit the testimony of Mr. Proctor regarding the combination of Baker and Hall as consistent with the teachings of these references.” slip op. at 35
Patent outcomesUS 7,376,433 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,376,433
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.