- Asustek Computer, Inc. / Asus Computer International v. Avago Technologies General IP (Singapore) Pte. LtdRehearing grantedPTAB · Mar 8, 2017 · IPR2016-00647 · APJ Glenn J Perry · IPR · Rehearing
Granted petitioner’s request for reconsideration and added institution of the §102 Cioffi challenge to claims 8, 11, 12, 14, 15, 18, and 19.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“III. CONCLUSIONS For the foregoing reasons, we are persuaded that our Decision to Institute overlooked or misapprehended the matters discussed in this Decision, and that the information presented in the Petition establishes that there is a reasonable likelihood that Petitioner would prevail with respect to its challenge as to the patentability of claims 8, 11, 12, 14, 15, 18, and 19 as being anticipated by Cioffi. The Board has not made a final determination on the patentability of any challenged claims or the construction of any claim terms. Our final decision will be based on the record as fully developed during trial.” slip op. at 5
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Upon review on rehearing, we are persuaded the Petition demonstrates sufficiently for purposes of institution that data and synchronization signals are multiplexed and encoded by MUX & ENCODER 43 in Cioffi’s Figure 3. Multiplexed sub-symbols are passed to modulator 45, which incorporates an inverse fast Fourier transform (IFFT). Based on this understanding of Cioffi, the detailed reading of claims 8, 11, 12, 14, 15, 18, and 19 on Cioffi at Petition pages 35–53, supported by the Lyon Declaration (Ex. 1003), presents a reasonable likelihood of Petitioner prevailing as to this challenge. We, therefore, modify our Decision on Institution to include this challenge.” slip op. at 4
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“Upon review on rehearing, we are persuaded the Petition demonstrates sufficiently for purposes of institution that data and synchronization signals are multiplexed and encoded by MUX & ENCODER 43 in Cioffi’s Figure 3. Multiplexed sub-symbols are passed to modulator 45, which incorporates an inverse fast Fourier transform (IFFT). Based on this understanding of Cioffi, the detailed reading of claims 8, 11, 12, 14, 15, 18, and 19 on Cioffi at Petition pages 35–53, supported by the Lyon Declaration (Ex. 1003), presents a reasonable likelihood of Petitioner prevailing as to this challenge. We, therefore, modify our Decision on Institution to include this challenge.” slip op. at 4
§ 102 anticipationPatents in suitUS 6,430,148 - Gordon * Howard Associates, Inc. v. Lunareye, Inc.All claims unpatentablePTAB · Feb 2, 2016 · IPR2014-01213 · APJ J John Lee · IPR · Final written decision
Claims 1–24 are unpatentable under § 103 based on the instituted combinations of Mohan, Oncore, Roach, and Lewis.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“accompanying description requiring that GPS Receiver 48 and Controller 36 be physically distinct components. Even if there was such a requirement, however, “a particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment.” Superguide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004). LunarEye’s reliance on other figures and descriptions of embodiments in the specification is unpersuasive for the same reason. See PO Resp. 20–21 & n.48; see also Ex. 2031 ¶¶ 14–15 (LunarEye’s proffered expert relying on descriptions of embodiments for opinion that data selecting device is external to GPS receiver). Merely describing a narrower embodiment does not constitute the clear disclaimer required to apply the limitation at issue to the claim. See In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004). In addition, LunarEye also contends the claim language itself indicates the recited GPS receiver (or location-signal generating device) and data selector are physically distinct components. PO Resp. 22. LunarEye asserts claims 1 and 2 recite that the GPS receiver produces “GPS data” first, and that the data selector operates on that output of the GPS receiver to produce “selected GPS data.” Id. at 22–23. According to LunarEye, this claim language requires that the GPS receiver and data selector be “distinct,” i.e., physically separate. See id. at 20–22. The claim language, however, does not support LunarEye’s position. Although claims 1 and 2 recite the GPS receiver and data selector separately and recite distinct functions for each, nothing in those claims indicates these structures must be physically separated or precludes one being housed physically within the other, particularly under their broadest reasonable interpretation. LunarEye does not present any compelling evidence indicating otherwise.” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“to combine Mohan, Oncore, and Roach. Pet. 12–16. For example, GH argues that both Mohan and Oncore are directed to GPS receiver technology, and that combining them would have involved a simple substitution that would achieve predictable results. Id. at 12. GH also contends that one of ordinary skill in the art would have been motivated by Oncore’s discussion of the advantages of its GPS receiver technology, and that applying that technology in combination with Mohan would have amounted to nothing more than the use of a prior art element for its established function to obtain its stated benefits. Id. at 12–13 (citing Ex. 1007, 1.1). Likewise, GH asserts that combining Roach with Mohan would have involved a simple substitution with predictable results, which would have amounted to the use of Roach’s prior art cellular communications system for its established function to achieve its known benefits. Id. at 13–15 (citing Ex. 1008, 9:6– 30). In addition to the prior art references, GH also relies on the Declaration of Dr. Janky, whose testimony supports GH’s contentions. Ex. 1010 ¶¶ 96– 102. We have considered Dr. Janky’s testimony, including his underlying analysis and reasoning, and find it credible. Based on all of the evidence presented, including Dr. Janky’s testimony, GH has articulated sufficient reasoning with rational underpinning to support the conclusion that one of ordinary skill would have had reason to combine the teachings of Mohan, Oncore, and Roach in the manner advanced by GH. See KSR, 550 U.S. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).” slip op. at 25
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“are unpersuasive. LunarEye argues that the asserted prior art references teach away from the combinations advanced by GH. PO Resp. 45–57. Specifically, LunarEye contends Mohan states that a device constructed according to its teachings should conform to certain size constraints to achieve adequate miniaturization. Id. at 48–52. The GPS device described in Oncore14 are too large and are, thus, incompatible with Mohan, according to LunarEye. Id. This argument is unpersuasive, however, because none of the claims of the ’035 patent require miniaturization, nor do they include any limitations restricting the size of the claimed apparatus or any recited component device. LunarEye does not identify any portion of Mohan that criticizes, discredits, or otherwise discourages combining Mohan and Oncore in the manner advanced by GH. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Merely describing the benefits of a miniaturized GPS device does not teach away from non-miniaturized devices. See id.; In re Gurley, 27 F.3d 551, 554 (Fed. Cir. 1994). Moreover, “[t]he test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference.” Keller, 642 14 LunarEye does not argue that the GPS device of Lewis, or the communications devices of Roach, are incompatible with Mohan’s purported size restrictions. F.2d at 425. Thus, whether the Oncore GPS receiver is too large to be incorporated physically into the Mohan GPS device is inapposite, because the challenged claims do not recite any limitations on size.” slip op. at 27
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“MOTION TO SEAL GH moves to seal Exhibit 1028. Mot. Seal. 2. As this is the Final Written Decision, we consider GH’s Motion to Seal as a motion to expunge Exhibit 1028 from the record pursuant to 37 C.F.R. § 42.56. Exhibit 1028 was not relied on for this Decision. Consequently, GH’s motion is granted, and Exhibit 1028 will be expunged. ORDER Accordingly, it is: ORDERED that claims 1–24 of U.S. Patent No. 6,484,035 B2 are held unpatentable under 35 U.S.C. § 103; and FURTHER ORDERED that Exhibit 1028 is expunged from the record.” slip op. at 29
Patent outcomesUS 6,484,035 unpatentableClaim construction§ 103 obviousnessPatents in suitUS 6,484,035 - Opower Inc. v. Cleantech Business Solutions, LLCAdverse judgmentPTAB · Nov 25, 2015 · CBM2014-00155 · APJ Karl D Easthom · CBM · Adverse judgment
The Board entered adverse judgment against Patent Owner on claims 1–16 after Patent Owner disclaimed all claims in the trial.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“proceeding. 37 C.F.R. § 42.73(b). Actions construed as a request for entry of adverse judgment include “[c]ancellation or disclaimer of a claim such that the party has no remaining claim in the trial.” 37 C.F.R. § 42.73(b)(2). Here, Patent Owner has disclaimed, under 37 C.F.R. § 1.321, claims 1–16, all claims involved in this trial. Paper 28. The statutory disclaimer constitutes a request for entry of adverse judgment.1 III. CONCLUSION Entry of judgment against Patent Owner with respect to claims 1–16 of the ’245 patent is appropriate.” slip op. at 2
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Denied
“1 During a telephone conference on November 17, 2015, which included counsel for both parties and the panel, counsel for Petitioner stated he did not object to the request for adverse judgment, but requested that the panel issue with this judgment findings of fact and legal determinations arising from papers of record. Petitioner expressed a concern over a potential for duplicated efforts in ongoing reissue proceedings involving the ’245 patent. We exercise our discretion and decline the request to supplement the record. See 37 C.F.R. § 42.73(d) (3) (i) (precluding Patent Owner from obtaining claims that are not “patentably distinct from a finally refused or canceled claim”).” slip op. at 3
NonePatents in suitUS 8,489,245 - Gordon * Howard Associates, Inc. v. Lunareye, Inc.All claims unpatentablePTAB · Sep 28, 2015 · IPR2014-00712 · APJ J John Lee · IPR · Final written decision
Claim 3 is unpatentable under § 103 over Mohan and Oncore because their combination teaches or suggests each limitation and a person of ordinary skill would have had reason to combine them.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer not foundDecided for petitioner
“argument. LunarEye relies on the specification’s descriptions of certain embodiments. For example, Figure 2 of the ’035 patent is a block diagram depicting certain features of an embodiment of the claimed invention, including Global Positioning Satellite System Receiver 48 (“GPS Receiver 48”) and Controller 36. Ex. 1002, Fig. 2, 5:49–6:8. As an initial matter, LunarEye does not identify anything in Figure 2 or its accompanying description requiring that GPS Receiver 48 and Controller 36 be physically distinct components. Even if there was such a requirement, however, “a particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment.” Superguide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir.” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther
“reorders the selected location data” in either the Petition or the Preliminary Response, we construed the term due to its significance in the analysis of GH’s asserted grounds of unpatentability. Inst. Dec. 9. Specifically, we construed the term preliminarily in the Decision on Institution as “arranges the selected location data into the desired order for transmission.” Id. This construction was based on the ’035 patent specification, which describes the reordering function: An example of the data selector function is illustrated in FIGS. 6 and 7. The Motorola® GT Plus OncoreTM GPS family of chips produces an digital output signal 86 containing bits representing the latitude, longitude, height, velocity, and heading of the apparatus 12 and the current time, as shown in FIG. 6. . . . Preferably, only the bits representing latitude, longitude, velocity and heading 88 are included in the data to transmit signal 56, as shown in FIG. 7. . . . Further, it may be desirable to change the order that the various portions of the information are transmitted. For example, it may be desirable to send the heading portion first. The data selector selects the data to be transmitted and arranges it into the desired order. Ex. 1002, 7:4–20 (emphasis added). We concluded, “the specification explains that reordering the selected location data encompasses arranging the data received from the location-signal generating device (e.g., a GPS device) into the order desired for transmission.” Inst. Dec. 9. The ordinary meaning of the term “reorders”—as contrasted with “orders”—indicates a change in order. The specification supports this understanding of the term, stating that “it may be desirable to change the order that the various portions of the information are transmitted.” Ex. 1002, 7:15–17 (emphasis added). Therefore, based on the parties’ arguments and evidence developed since the Decision on Institution, we now determine the broadest reasonable interpretation of “reorders the selected location data” is “changes the order of the selected location data into the desired order for transmission.”7 slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“initial order of the location data received by the GPS receiver. Id.; Tr. 50:23–53:2. LunarEye argues that when Oncore discusses generating multiple different NMEA messages, each message is constructed separately from the original, unordered data; thus, the data is ordered for each output message in the first instance, rather than reordered. PO Resp. 28–29; Tr. 53:3–18. In an obviousness analysis, however, we consider not only the express disclosures of the asserted prior art references, but also the “inferences and creative steps that a person of ordinary skill in the art would employ.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Here, the record indicates that a person of ordinary skill would have had at least a bachelor’s degree in electrical or computer engineering and familiarity with GPS and communications technology, such as that gained from five years of professional experience in the design and implementation of GPS technology. See Ex. 1010 ¶¶ 38–41 (Dr. Janky’s testimony on level of ordinary skill); Ex. 2024 ¶¶ 8–9 (LunarEye’s proffered expert, Joseph McAlexander, adopting Dr. Janky’s testimony regarding level of ordinary skill). Considering the level of ordinary skill and the evidence of record, we find that Oncore would have taught or suggested to an ordinary artisan a device that changes the order of selected location data from one order (e.g., an NMEA message) to another order (e.g., a different NMEA message).” slip op. at 16
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“claimed location-signal generating device and its related limitations. Id. at 25–26 (citing Ex. 1006, 2:7–12, 3:5–15, Fig. 1). According to GH, the communications transmitter/receiver of Mohan teaches the claimed telemetry transmitter, and the disclosed power management system teaches the claimed enable controller and its related limitations. Id. at 26–30 (citing Ex. 1006, 3:2–15, 4:43–5:49, Figs. 1, 3). LunarEye does not dispute that Mohan teaches these aspects of claim 3 of the ’035 patent. The record supports GH’s contentions regarding Mohan.” slip op. at 14
Patent outcomesUS 6,484,035 unpatentableClaim construction§ 103 obviousnesscites KSRPatents in suitUS 6,484,035 - PTAB · Sep 10, 2014 · IPR2014-00336 · APJ Scott E Kamholz · IPR · Order
The Board granted the parties’ joint motion and terminated IPR2014-00336 as to all parties; it did not decide patentability.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“The parties filed a joint motion to terminate the instant proceeding (Paper 13 (“Mot.”)), and a true copy of their written settlement agreement (Ex. 1005) made in connection with the termination, in accordance with 35 U.S.C. § 317 and 37 C.F.R. § 42.74(b). The parties also jointly requested that their settlement agreement be treated as business confidential information under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c). Mot. 2-3. For the reasons provided below, the joint motion to terminate is granted. The joint request that the settlement agreement be treated as business confidential information is also granted.” slip op. at 2
NonePatents in suitUS 8,622,984 - PTAB · Aug 11, 2014 · IPR2014-00760 · APJ Glenn J Perry · IPR · Order
The Board granted the parties’ joint motions and terminated the proceedings as to all parties without issuing a final written decision.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“The parties have requested that these trial proceedings be terminated pursuant to a settlement. On August 6, 2014, the Board authorized2 the parties to file a Joint Motion to Terminate these proceedings along with a true copy of any and all settlement agreements between them related to the patent at issue. The parties filed in each case a Joint Motion to Terminate3 in accordance with 35 U.S.C. § 327(a) and 37 C.F.R. § 42.72. The parties also filed in each case a Joint Motion to Treat the Parties’ Settlement Agreement as Business Confidential4 pursuant to 35 U.S.C. § 317(b) and Rule 42.74. The settlement agreement5 purports to settle matters between the parties with respect to each of the patents at issue in this inter partes review. Each of the captioned inter partes reviews is in its preliminary stage. A decision on the respective Petitions6 has not yet been rendered. The parties have identified the following USPTO proceedings that are pending.” slip op. at 2
NonePatents in suitUS 8,048,032 - PTAB · Aug 11, 2014 · IPR2014-00763 · APJ Glenn J Perry · IPR · Order
The Board granted the parties’ joint motions and terminated the proceedings as to all parties under the settlement, without a final written decision.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“ORDER It is, therefore, ORDERED that the joint motions to terminate these proceedings are GRANTED and the proceedings are hereby terminated as to all parties including, Petitioners and Patent Owner; and FURTHER ORDERED that the parties’ joint requests that the settlement agreement, as filed in each case, be treated as business confidential information and kept separate from the file of the involved patent under the provisions of to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), are GRANTED.” slip op. at 4
NonePatents in suitUS 8,292,850 - PTAB · Aug 11, 2014 · IPR2014-00762 · APJ Glenn J Perry · IPR · Order
The Board granted the joint motions and terminated the proceedings as to all parties after settlement, without issuing a final written decision.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“The parties have requested that these trial proceedings be terminated pursuant to a settlement. On August 6, 2014, the Board authorized2 the parties to file a Joint Motion to Terminate these proceedings along with a true copy of any and all settlement agreements between them related to the patent at issue. The parties filed in each case a Joint Motion to Terminate3 in accordance with 35 U.S.C. § 327(a) and 37 C.F.R. § 42.72. The parties also filed in each case a Joint Motion to Treat the Parties’ Settlement Agreement as Business Confidential4 pursuant to 35 U.S.C. § 317(b) and Rule 42.74. The settlement agreement5 purports to settle matters between the parties with respect to each of the patents at issue in this inter partes review.” slip op. at 2
NonePatents in suitUS 8,292,850 - PTAB · Aug 11, 2014 · IPR2014-00759 · APJ Glenn J Perry · IPR · Order
The Board granted the parties’ joint motions and terminated the proceedings as to all parties after settlement, without a final written decision.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“The parties have requested that these trial proceedings be terminated pursuant to a settlement. On August 6, 2014, the Board authorized2 the parties to file a Joint Motion to Terminate these proceedings along with a true copy of any and all settlement agreements between them related to the patent at issue. The parties filed in each case a Joint Motion to Terminate3 in accordance with 35 U.S.C. § 327(a) and 37 C.F.R. § 42.72. The parties also filed in each case a Joint Motion to Treat the Parties’ Settlement Agreement as Business Confidential4 pursuant to 35 U.S.C. § 317(b) and Rule 42.74. The settlement agreement5 purports to settle matters between the parties with respect to each of the patents at issue in this inter partes review. Each of the captioned inter partes reviews is in its preliminary stage. A decision on the respective Petitions6 has not yet been rendered. The parties have identified the following USPTO proceedings that are pending.” slip op. at 2
NonePatents in suitUS 8,142,413 - PTAB · Aug 11, 2014 · IPR2014-00761 · APJ Glenn J Perry · IPR · Order
The Board granted the joint motions and terminated the proceedings as to all parties without a final written decision.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“The parties have requested that these trial proceedings be terminated pursuant to a settlement. On August 6, 2014, the Board authorized2 the parties to file a Joint Motion to Terminate these proceedings along with a true copy of any and all settlement agreements between them related to the patent at issue. The parties filed in each case a Joint Motion to Terminate3 in accordance with 35 U.S.C. § 327(a) and 37 C.F.R. § 42.72. The parties also filed in each case a Joint Motion to Treat the Parties’ Settlement Agreement as Business Confidential4 pursuant to 35 U.S.C. § 317(b) and Rule 42.74. The settlement agreement5 purports to settle matters between the parties with respect to each of the patents at issue in this inter partes review.” slip op. at 2
NonePatents in suitUS 8,048,032
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.