- Apple Inc. v. Uniloc 2017 LLCSome claims unpatentablePTAB · 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 mixedClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,136,999 - PTAB · Oct 13, 2020 · PGR2019-00045 · APJ Christopher C Kennedy · PGR · Final written decision
The Board cancelled claims 13, 18, and 19, but denied substitute claims 23–25 because their percentage-and-range limitations introduced new matter.
RulingsFinal written decision- ScopeMotion to amend, grantedGranted
“3. Scope of Proposed Substitute Claims A motion to amend “may not enlarge the scope of the claims of the patent.” 35 U.S.C. § 326(d)(3); 37 C.F.R. § 42.221(a)(2)(ii). Although Patent Owner does not appear to separately address this requirement in the Revised Motion to Amend, see generally Revised MTA, we have reviewed the proposed substitute claims and determine that they do not enlarge the scope of the claims of the patent because they add limitations that render each proposed substitute claim narrower than original challenged claim 13.2 Petitioner does not contend otherwise. See generally Opp. On this record, we determine that the Revised Motion to Amend satisfies this requirement.” slip op. at 9
- 112 supportMotion to amend, deniedDenied
“description support for numerical ranges identified by the parties is General Hospital Corp. v. Sienna Biopharmaceuticals, Inc., 888 F.3d 1368, 1372 (Fed. Cir. 2018).4 In that case, the Federal Circuit explained: The disclosure of a broad range of values does not by itself provide written description support for a particular value within that range. Instead, where a specification discloses a broad range of values and a value within that range is claimed, the disclosure must allow one skilled in the art to immediately discern the limitation at issue in the claims. Id. (emphasis added); cf. Atofina v. Great Lakes Chem. Corp., 441 F.3d 991, 1000 (Fed. Cir. 2006) (“[T]he disclosure of a range is no more a disclosure of the end points of the range than it is of each of the intermediate points.”). The Federal Circuit has also stated that, “[i]n the absence of blazemarks” that point to a particular species or sub-genus, “simply describing a large genus of compounds is not sufficient to satisfy the written description requirement.” Fujikawa v. Wattanasin, 93 F.3d 1559, 1571 (Fed. Cir. 1996). We find those cases to be instructive because we discern no guidance in the original disclosure that points to the percentage+range limitation of proposed substitute claim 23. Nor do we find anything in the original disclosure that would “allow one skilled in the art to immediately discern” 4 Despite the fact that Sienna was cited in (1) Petitioner’s opposition to Patent Owner’s original Motion to Amend, Paper 24 at 11; (2) the Preliminary Guidance issued by the Board, PG at 8; and (3) Petitioner’s opposition to Patent Owner’s Revised Motion to Amend, Opp. at 12, Patent Owner fails to cite or discuss Sienna, see generally Revised MTA; Reply. the percentage+range limitation. See Sienna, 888 F.3d at 1372. Patent Owner has not persuasively identified any portion of the original disclosure that attributes any significance to any mesh sieve number range other than 3–35, and Patent Owner has not persuasively identified any portion of the original disclosure that attributes any significance to having a particular proportion of particles (e.g., 61 wt%) falling within some narrower mesh sieve number range. See Ex. 1021 (Coffield Decl.) ¶¶ 23–24.” slip op. at 14
- Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateDecided for petitioner
“description support for numerical ranges identified by the parties is General Hospital Corp. v. Sienna Biopharmaceuticals, Inc., 888 F.3d 1368, 1372 (Fed. Cir. 2018).4 In that case, the Federal Circuit explained: The disclosure of a broad range of values does not by itself provide written description support for a particular value within that range. Instead, where a specification discloses a broad range of values and a value within that range is claimed, the disclosure must allow one skilled in the art to immediately discern the limitation at issue in the claims. Id. (emphasis added); cf. Atofina v. Great Lakes Chem. Corp., 441 F.3d 991, 1000 (Fed. Cir. 2006) (“[T]he disclosure of a range is no more a disclosure of the end points of the range than it is of each of the intermediate points.”). The Federal Circuit has also stated that, “[i]n the absence of blazemarks” that point to a particular species or sub-genus, “simply describing a large genus of compounds is not sufficient to satisfy the written description requirement.” Fujikawa v. Wattanasin, 93 F.3d 1559, 1571 (Fed. Cir. 1996). We find those cases to be instructive because we discern no guidance in the original disclosure that points to the percentage+range limitation of proposed substitute claim 23. Nor do we find anything in the original disclosure that would “allow one skilled in the art to immediately discern” 4 Despite the fact that Sienna was cited in (1) Petitioner’s opposition to Patent Owner’s original Motion to Amend, Paper 24 at 11; (2) the Preliminary Guidance issued by the Board, PG at 8; and (3) Petitioner’s opposition to Patent Owner’s Revised Motion to Amend, Opp. at 12, Patent Owner fails to cite or discuss Sienna, see generally Revised MTA; Reply. the percentage+range limitation. See Sienna, 888 F.3d at 1372. Patent Owner has not persuasively identified any portion of the original disclosure that attributes any significance to any mesh sieve number range other than 3–35, and Patent Owner has not persuasively identified any portion of the original disclosure that attributes any significance to having a particular proportion of particles (e.g., 61 wt%) falling within some narrower mesh sieve number range. See Ex. 1021 (Coffield Decl.) ¶¶ 23–24.” slip op. at 14
§ 112 disclosurePatents in suitUS 10,071,852
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.