• American Well Corporation v. Teladoc Health, Inc.Institution denied
  PTAB · Nov 15, 2021 · IPR2021-00871 · APJ Patrick R Scanlon · IPR · Institution

  The Board denied institution on all challenged claims because the Petition did not show a reasonable likelihood of proving the Wang-I and Johnson combinations rendered the claims obvious.

  RulingsInstitution decision

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

    “review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2020). To institute an inter partes review, we must determine that the information presented in the Petition shows “a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons set forth below, we determine that the information presented in the Petition does not establish a reasonable likelihood that Petitioner will prevail with respect to at least one challenged claim. Accordingly, we do not institute an inter partes review of the ’000 patent.” slip op. at 2

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached

    “Id. (citing Ex. 1003 ¶ 62) (emphasis added). It is not clear, however, whether Petitioner actually asserts that Wang-I discloses a server containing the database recited in claim 1. But, to the extent Petitioner is taking this position, Petitioner fails to explain adequately how arbitrator 250 (even assuming for the sake of argument that arbitrator 250 is a server) contains a database defining a first subset of robots as associated with a first customer ID and a second subset of robots as associated with a second customer ID. Furthermore, we agree with Patent Owner that “Wang-I is completely silent regarding the defining of subsets of the robots, or associating such subsets with a customer ID.” See Prelim. Resp. 27 (citing Ex. 1004 ¶ 23; Ex. 2001 ¶ 69).” slip op. at 13

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “Dr. Rozenblit’s testimony cited by Petitioner merely repeats the Petition’s assertions and does not offer objective evidence or analysis to support the assertion. See Ex. 1003 ¶¶ 62–67. For this reason, we do not credit the testimony of Dr. Rozenblit on this point. 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.”); see also Nobel Biocare Services AG v. Instradent USA, Inc., 903 F.3d 1365, 1382 (Fed. Cir. 2018) (explaining that the Board can reject arguments based on expert testimony that lacks specificity or detail).” slip op. at 15

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that a person having ordinary skill in the art would have had at least a Bachelor’s of Science Degree (or equivalent) in an academic area emphasizing electrical engineering, computer engineering, computer science, biomedical engineering, or a related technical field, and at least 2-3 years of experience in the field of robotics, telepresence systems, or both (e.g., familiarity with wireless communication technology, biomedical robotic systems, etc.). Pet. 8 (citing Ex. 1003 ¶¶ 24–25). Patent Owner agrees with Petitioner’s definition for the purposes of this proceeding. Prelim. Resp. 15. Based on our review of the record before us, we find that Petitioner’s stated level of ordinary skill in the art is reasonable because it is consistent with the evidence of record, including the asserted prior art. Accordingly, for the purposes of this Decision, we adopt Petitioner’s definition.” slip op. at 7

  § 103 obviousnesscites Graham
  Patents in suitUS 10,059,000
• American Well Corporation v. Teladoc Health, Inc.Institution denied
  PTAB · Nov 3, 2021 · IPR2021-00933 · APJ John P Pinkerton · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that any challenged claim was unpatentable over the four asserted grounds.

  RulingsInstitution decision

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

    “We are authorized to institute an inter partes review where a petition demonstrates a reasonable likelihood that the petitioner would prevail with respect to at least one challenged patent claim. 35 U.S.C. § 314(a). We are never compelled, however, to institute a review. Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016). We may exercise our discretion to deny review, for example, where a petition fails to identify “with particularity” the challenges or evidence supporting them. Id. at 1363; 35 U.S.C. § 312(a)(3). “Even when a petitioner demonstrates a reasonable likelihood” of prevailing with respect to at least one patent claim, institution of review “remains discretionary.” Adaptics Limited v. Perfect Co., IPR2018-01596, Paper 20 at 17 (PTAB Mar. 6, 2019) (informative). For the reasons explained below, we do not institute an inter partes” slip op. at 2

  • BurdenDecided for patent owner

    “c) Analysis We agree with Patent Owner that Petitioner has not sufficiently shown that Wang438 discloses limitation 1.1. Initially, we agree with Patent Owner that Wang438 does not disclose that monitoring device 50 displays any patient information. Id. at 23–24 (citing Ex. 2001 ¶ 59). Although Petitioner relies on paragraph 21 of Wang438, we agree with Patent Owner that paragraph 21 makes clear that the purpose of medical monitoring device 50, which may be a stethoscope, pulse oximeter, or EKG monitor, is to “take medical data from a patient.” Id. at 23 (citing Ex. 1005 ¶ 21). In other words, as Patent Owner states, “monitoring device 50 is a device that monitors data, not a ‘monitor’ that displays the data.” Id. (citing Ex. 1005 ¶ 21; Ex. 2001 ¶ 59) (emphasis omitted). Paragraph 21 does not disclose that monitoring device 50 displays any patient information. Instead, as Patent Owner argues, paragraph 21 of Wang438 discloses that monitoring device 50 may contain wireless transmitter 52 (as shown in Figure 1) that transmits the patient data to robot 12, which can then transmit the data to remote station 16. Id. at 23–24 (citing Ex. 1005 ¶ 21). We also agree with Patent Owner that Petitioner’s secondary references external to Wang438 cannot support an anticipation challenge based on Wang438. In that regard, Petitioner cites to five secondary references: Nellcor N-200 pulse oximeter operator’s manual (Ex. 1011, 16); GE-MAC 1200 ECG monitor operator’s manual (Ex. 1012, 9, 27); Phillips- PageWriter ECG monitor instructions for use (Ex. 1013, 14, 45–47); GE CARESCAPE V100 vital signs monitor brochure (Ex. 1017, 5); and, GE CARESCAPE V100 vital signs monitor operator’s manual (Ex. 1018, 13). See Pet. 23–28. None of these references were identified in the grounds set forth in the Petition. See Pet. 2–3. For the reasons stated below, we determine we cannot consider these secondary references because doing so would violate the requirement of Section 312(a)(3) for an inter partes review petition to identify “with particularity . . . the grounds on which the challenge to each claim is based, and the evidence that supports the grounds for the challenge to each claim.” See 35 U.S.C. § 312(a)(3). We also determine we cannot consider these secondary references because ground 1 challenges claim 1 for anticipation under 35 U.S.C. § 102 based on Wang438, which requires Petitioner to show that the single reference Wang438 discloses, either expressly or inherently, the limitations of claim 1. See Schreiber, 128 F.3d at 1477. Permitting Petitioner to argue Wang438 together with the secondary references would, as Patent Owner argues, convert the basis for ground 1 from anticipation to obviousness under 35 U.S.C. § 103(a). See Prelim. Resp. 25. Thus, we also determine we cannot consider Petitioner’s secondary references because doing so would be contrary to the requirement for the petition to identify “with particularity . . . the grounds on which the challenge to each claim is based” (35 U.S.C. § 312(a)(3)) and the Board’s rule requiring a petition for inter partes review to identify the statutory grounds on which the challenge to the claim is based (37 C.F.R. § 42.104(b)).” slip op. at 16

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner agrees with Petitioner’s definition of a person of ordinary skill in the art. Prelim. Resp. 11 (citing Ex. 2001 ¶ 36). Based on our review of the limited record, we determine that Petitioner’s definition is consistent with the technology and skill reflected in the prior art of record and the specification of the ’185 patent. Thus, for purposes of this decision, we apply Petitioner’s definition of the level of ordinary skill in the art.” slip op. at 11

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

    “Petitioner does not propose a specific construction for any claim term in this proceeding. Pet. 3. Instead, Petitioner asserts that “[a]ll [claim] terms should be given their ordinary and customary meaning,” and “Petitioner also reserves the right to identify terms for construction as may become necessary in the related District Court case.” Id. Patent Owner agrees with Petitioner that no formal claim constructions are necessary at this point. Prelim. Resp. 11. We determine that we need not expressly construe any claim terms to resolve the parties’ disputes on the current record. See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 11

  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,761,185
• Askeladden LLC v. Leigh M. RothschildAll claims unpatentable
  PTAB · Nov 19, 2020 · IPR2019-00856 · APJ Mitchell G Weatherly · IPR · Final written decision

  Original claims 3–10, 12, 13, and 20 were canceled; the Board denied the motion to amend because the proposed substitute claims were unpatentable as obvious.

  RulingsFinal written decision

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

    “The claim language itself implies that the financial services provider decides which biometric information is required during the transaction stage because the Decision Limitation is added to element 1F, which is the first step in the transaction stage recited in elements 1F–H. “[I]n assessing definiteness, claims are to be read in light of the patent’s specification and prosecution history.” Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 908 (2014). Patent Owner identifies support for the Decision Limitation in the Specification that favors interpreting the Decision Limitation as occurring during the transaction stage (i.e., during elements 1E–H). Mot. 14–15 (citing Ex. 1001, 9:9–14). The cited portion of the Specification states: “In another embodiment, the financial service provider may have the system set up such that the server 114 queries through the point-of-sale terminal 102 and informs the merchant which biometric identification data is/are required for the desired transaction.” Ex. 1001, 9:9–14 (emphasis added). The plain language of the claim is consistent with our interpretation because it specifies that the biometric data uploaded in element 1E is used to validate and execute “a purchase transaction,” in element 1H (describing the operation of the claimed system during the transaction stage). Based on our review of the Specification and claim language, we conclude that the Decision Limitation is sufficiently definite under 35 U.S.C. § 112, ¶ 2. Based on that review, we also interpret the Decision Limitation to require that the financial services provider informs, through the server, which type(s) of user biometric identification data must be received at the terminal (e.g., a point-of-sale terminal) to validate the transaction. E. WHETHER THE MOTION MEETS THE REQUIREMENTS OF 35 U.S.C. § 316(d) AND 37 C.F.R. § 42.121” slip op. at 15

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

    “expressly discloses the Decision Limitation. Opp. 19–20. However, Petitioner contends that Ortiz discloses this concept by describing a system in which the user of a point-of-sale terminal is prompted to input at least one biometric attribute that is randomly selected from a database of previously provided (during enrollment) biometric data. Id. at 20 (citing Ex. 1026 ¶¶ 85–87, 90, 91, Figs. 5 (steps 106, 108) 6 (steps 140, 142); Ex. 1027 ¶¶ 38, 39). The security of Ortiz’s systems and methods is enhanced by enabling the system to randomly challenge the user of a point-of-sale terminal at the time of the transaction because an imposter could not know in advance which biometric attribute would be required by the financial service provider to authorize the transaction. Id. (citing Ex. 1026 ¶¶ 23, 87, 96, 97, 141, Figs. 5, 6; Ex. 1027 ¶¶ 40, 41). Petitioner relies on Dr. Alexander’s testimony to support its contention that an ordinarily skilled artisan “recognized the need to verify user authenticity, such as, e.g., at least in the first instance when enrolling initial biometric(s), to prevent imposters from accessing Karthik’s system and uploading his own fraudulent biometric data.” Pet. 26; see also id. at 27 (citing Ex. 1002 ¶¶ 139–141; Ex. 1004, 2:31–36, 3:33–38). Petitioner reasons that an ordinarily skilled artisan would have been motivated to utilize Robinson’s suggestion to use third party biometric data to verify a user with Karthik’s validation procedure because it “would provide additional security against identity theft.” Id. at 27 (citing Ex. 1002 ¶¶ 139–141). Dr. Alexander opines that an ordinarily skilled artisan would have reasonably expected to be able to incorporate Robinson’s use of third party biometric data into Karthik’s user enrollment protocol. Ex. 1002 ¶ 143. Based on Dr. Alexander’s testimony, Petitioner argues that an ordinarily skilled artisan would have found it obvious to modify the systems and methods suggested by the combined teachings of Karthik and Robinson to incorporate Ortiz’s ability for the financial services provider to decide the type of biometric information required for a transaction (i.e., the Decision Limitation). Doing so would “deter attempts to impersonate the legitimate user of a financial services card during the transaction stage.” Opp. 21 (citing Ex. 1027 ¶¶ 41, 42). Dr. Alexander also opines that an ordinarily skilled artisan would have expected to succeed in incorporating Ortiz’s system and method into the combined Karthik/Robinson system and method because doing so “would have only required a financial services provider to implement a program that allows a server to randomly select one or more of the plurality of biometrics enrolled in Karthik’s database, and communicate that selection to, e.g., a point-of-sale terminal for a user to input” and that the “combined methods, systems, and servers [would] work for their intended purpose.” Id. at 21–22 (citing Ex. 1026 ¶ 27; Ex. 1027 ¶ 43). Patent Owner has not provided any countervailing argument or evidence in response to Petitioner’s Opposition. Based on our review of Petitioner’s argument and evidence of record, which we adopt as our own (see In re NuVasive, 841 F.3d 966, 974 (Fed. Cir. 2016)), we determine that Petitioner has demonstrated by a preponderance of evidence that the combined teachings of Karthik, Robinson, and Ortiz render substitute independent claim 1 unpatentable as obvious.” slip op. at 24

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “understanding of a person of ordinary skill in the art at the time of the invention. Graham, 383 U.S. at 17. Based on testimony by Peter Alexander, Ph.D., Petitioner contends that an ordinarily skilled artisan as of June 11, 2008, would have either: “(i) a Bachelor-of-Science degree in electrical engineering, computer science, or computer engineering, or equivalent, and at least two years of additional experience in database and networking technology, computer security and/or authentication using biometric data, or (ii) a post-graduate degree in electrical engineering, computer science, or computer engineering, or equivalent.” Pet. 15 (citing Ex. 1002 ¶¶ 14–17). Patent Owner does not contest Petitioner’s position relating to the level of ordinary skill. See generally Mot. We find Petitioner’s description of the ordinary level of skill in the art at the time of the invention to be consistent with the level of skill reflected in the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Accordingly, we adopt and apply the level of ordinary skill proffered by the Petitioner in this proceeding. D. WHETHER THE “DECISION LIMITATION” IS INDEFINITE” slip op. at 12

  • PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, deniedDenied

    “Petitioner argues that if Patent Owner were to argue that the Decision Limitation can be met by the financial services provider deciding which biometric information is required for a transaction during the enrollment or transaction stages, then the claims would be unpatentable for lack of written description support in the Specification. Opp. 8. Petitioner concedes that the portion of the Specification relied upon by Patent Owner for support describes making the decision about what biometric information is needed during the transaction stage. Id. at 9. As explained in Part II.D above, we have narrowly interpreted the Decision Limitation to encompass only such decisions. Accordingly, Petitioner does not persuade us that the Specification fails to provide the required written description for the Decision Limitation as we have interpreted it. Additionally, we conclude that Patent Owner has established that the Specification meets the written description requirement for the Decision Limitation. F. PROPOSED SUBSTITUTE CLAIMS 3–10, 12, AND 13: OBVIOUSNESS IN VIEW OF KARTHIK, ROBSINSON, ORTIZ, AND ONE OF LYON, CARTMELL, OR” slip op. at 18

  Patent outcomesUS 8,799,088 unpatentable
  Claim construction§ 103 obviousnesscites Graham
  Patents in suitUS 8,799,088
• Askeladden LLC v. Leigh M. RothschildAll claims unpatentable
  PTAB · Nov 19, 2020 · IPR2019-00855 · APJ Mitchell G Weatherly · IPR · Final written decision

  The Board canceled original claims 1, 2, 11, 14–19, and 21 and denied the motion to amend because the proposed substitute claims were obvious over Karthik, Robinson, and Ortiz.

  RulingsFinal written decision

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

    “The claim language itself implies that the financial services provider decides which biometric information is required during the enrollment stage because the Decision Limitation is added to element 17A, which is the first step in the enrollment stage recited in elements 17A–D. However, “in assessing definiteness, claims are to be read in light of the patent’s specification and prosecution history.” Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 908 (2014). Patent Owner identifies support for the Decision Limitation in the Specification that favors interpreting the Decision Limitation as occurring during the transaction stage (i.e., during elements 17E–G). Mot. 14–15 (citing Ex. 1001, 9:9–14). The cited portion of the Specification states: “In another embodiment, the financial service provider may have the system set up such that the server 114 queries through the point-of-sale terminal 102 and informs the merchant which biometric identification data is/are required for the desired transaction.” Ex. 1001, 9:9–14 (emphasis added). The plain language of the claim is consistent with our interpretation because it specifies that the biometric data is the data “required for the transaction,” which refers to the “transaction” recited in element 17G (describing the operation of the claimed system during a transaction stage). Based on our review of the Specification and claim language, we conclude that the Decision Limitation is sufficiently definite under 35 U.S.C. § 112, ¶ 2. Based on that review, we also interpret the Decision Limitation to require that the financial services provider informs, through the server, which type(s) of user biometric identification data must be received at the terminal (e.g., a point-of-sale terminal) to validate the transaction. E. WHETHER THE MOTION MEETS THE REQUIREMENTS OF 35 U.S.C. § 316(d) AND 37 C.F.R. § 42.121” slip op. at 14

  • Disclosure Requirements (§112) › Definiteness (Nautilus)DefiniteDecided for patent owner

    “The claim language itself implies that the financial services provider decides which biometric information is required during the enrollment stage because the Decision Limitation is added to element 17A, which is the first step in the enrollment stage recited in elements 17A–D. However, “in assessing definiteness, claims are to be read in light of the patent’s specification and prosecution history.” Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 908 (2014). Patent Owner identifies support for the Decision Limitation in the Specification that favors interpreting the Decision Limitation as occurring during the transaction stage (i.e., during elements 17E–G). Mot. 14–15 (citing Ex. 1001, 9:9–14). The cited portion of the Specification states: “In another embodiment, the financial service provider may have the system set up such that the server 114 queries through the point-of-sale terminal 102 and informs the merchant which biometric identification data is/are required for the desired transaction.” Ex. 1001, 9:9–14 (emphasis added). The plain language of the claim is consistent with our interpretation because it specifies that the biometric data is the data “required for the transaction,” which refers to the “transaction” recited in element 17G (describing the operation of the claimed system during a transaction stage). Based on our review of the Specification and claim language, we conclude that the Decision Limitation is sufficiently definite under 35 U.S.C. § 112, ¶ 2. Based on that review, we also interpret the Decision Limitation to require that the financial services provider informs, through the server, which type(s) of user biometric identification data must be received at the terminal (e.g., a point-of-sale terminal) to validate the transaction. E. WHETHER THE MOTION MEETS THE REQUIREMENTS OF 35 U.S.C. § 316(d) AND 37 C.F.R. § 42.121” slip op. at 14

  • PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, deniedDenied

    “Petitioner argues that if Patent Owner were to argue that the Decision Limitation can be met by the financial services provider deciding which biometric information is required for a transaction during the enrollment or transaction stages, then the claims would be unpatentable for lack of written description support in the Specification. Opp. 8. Petitioner concedes that the portion of the Specification relied upon by Patent Owner for support describes making the decision about what biometric information is needed during the transaction stage. Id. at 9. As explained in Part II.D above, we have narrowly interpreted the Decision Limitation to encompass only such decisions. Accordingly, Petitioner does not persuade us that the Specification fails to provide the required written description for the 7 Normally, a Patent Owner must identify material in the originally filed application leading to issuance of the patent at issue that supports the proposed amendment. Lectrosonics, Paper 15 at 7. Failing to cite the original disclosure is a basis for denying a motion to amend. Id. However, because Patent Owner appears pro se, we reviewed the original disclosure ourselves to verify that the portion of the Specification cited is identically found in that disclosure. Compare Ex. 1016 ¶ 42, with Ex. 1001, 9:9–14. Accordingly, in this case, we find that Patent Owner’s citation to the Specification functionally refers to material in the original disclosure. Decision Limitation as we have interpreted it. Additionally, we conclude that Patent Owner has established that the Specification meets the written description requirement for the Decision Limitation. F. PROPOSED SUBSTITUTE CLAIMS 1, 2, 11, 14–19, AND 21:” slip op. at 17

  • ScopeDecided for patent owner

    “3. Whether the Amendments Enlarge the Scope of the Claims An amendment may not enlarge the scope of the claims of the patent. 35 U.S.C. § 316(d)(3); 37 C.F.R. § 42.121(a)(2)(ii). We determine that Patent Owner’s addition of the Decision Limitation narrows the scope of every challenged claim and thus satisfies the prohibition against enlarging the scope of any claim.” slip op. at 16

  Patent outcomesUS 8,799,088 unpatentable
  Claim construction§ 103 obviousness§ 112 disclosurecites Graham · Nautilus
  Patents in suitUS 8,799,088
• Apple Inc. v. Optis Wireless Technology, LLCInstitution denied
  PTAB · Sep 15, 2020 · IPR2020-00466 · APJ Barbara A Parvis · IPR · Institution

  The Board denied institution of review of claims 1–10 under § 314(a), finding that the Fintiv factors favored denial after the parallel district court trial.

  RulingsInstitution decision

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

    “instituting an inter partes review would be an inefficient use of Board resources. As discussed above, the trial in the parallel proceeding recently concluded more than one year before we would reach a final decision in this proceeding if we instituted an inter partes review. Moreover, the district court and the parties expended considerable effort in preparing for and conducting the trial. These considerations strongly favor the exercise of discretionary denial, other considerations favor denial, and no considerations weigh against the exercise of discretionary denial in this case. On balance, after a holistic consideration of the relevant facts and the particular circumstances of this case, we conclude that efficiency and integrity of the system are best served by denying institution. Thus, we exercise our discretion under § 314(a) to deny institution of inter partes review.” slip op. at 15

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied

    “instituting an inter partes review would be an inefficient use of Board resources. As discussed above, the trial in the parallel proceeding recently concluded more than one year before we would reach a final decision in this proceeding if we instituted an inter partes review. Moreover, the district court and the parties expended considerable effort in preparing for and conducting the trial. These considerations strongly favor the exercise of discretionary denial, other considerations favor denial, and no considerations weigh against the exercise of discretionary denial in this case. On balance, after a holistic consideration of the relevant facts and the particular circumstances of this case, we conclude that efficiency and integrity of the system are best served by denying institution. Thus, we exercise our discretion under § 314(a) to deny institution of inter partes review.” slip op. at 15

  Discretionary denial
  Patents in suitUS 8,411,557
• Werner Co. v. Louisville Ladder, Inc.All claims unpatentable
  PTAB · Aug 24, 2020 · IPR2019-00336 · APJ Richard H Marschall · IPR · Final written decision

  Claims 8–16 are unpatentable as obvious over the Louisville Catalog, Plotner, and Werner Brochure; claims 19 and 20 are unpatentable as obvious over those references and Modern Plastics Handbook.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “The parties’ proposals do not differ in any respect that would suggest our determination on this issue would impact any of our findings in this case. At oral argument, the parties agreed that no issue in this case turns on the differences in the parties’ respective proposals. See Tr. 31:18–24 (Patent Owner’s counsel stating that “we do not believe that that slight difference between Petitioner and Patent Owner would be dispositive of any issue in the case”), 55:25–56:9 (Petitioner’s counsel stating that “all parties and experts agree that there’s no material difference in the proposed level of ordinary skill in the art”). The parties’ respective proposals differ in the number of years of experience required in the ladder design field; Petitioner proposes 5–7 years of experience, while Patent Owner proposes 3–5 years. Pet. 7; PO Resp. 6. Based on the full record before us, because the asserted references describe problems and solutions of ladder design that are relatively straightforward and presumably understandable with only a few years of industry experience, we apply Patent Owner’s proposal to our analysis because it requires fewer years of that experience.” slip op. at 9

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

    “we disagree with Petitioner’s argument that all bonds, including fasteners, necessarily include a portion of the shell and tread as the claim requires. Pet. 12. Instead, the requirement that the bond include a portion of the shell and a portion of the tread suggests something more than a third structure such as a fastener as the bonding structure. In other words, when a fastener joins a tread to a shell, neither the tread nor the shell aids in holding the two together; the fastener performs that “bonding” function. Further, independent claim 14 already requires a “bond,” and claim 16, which depends from claim 14, “further” requires a “mechanical fastener” in addition to the bond, without describing it as a species of bond. Ex. 1001, 18:40–41. Reading the “bond” of claim 14 to encompass the “mechanical fastener” of claim 16 would conflict with claim 16’s treatment of the mechanical fastener requirement as separate from the bond limitation. As Patent Owner notes, claim 16 does not state that the bond further comprises a fastener; it states that the cover further comprises a fastener. See PO Sur-reply 5. This claim structure at least suggests that “bond” in claim 14 does not encompass fasteners. Further, the use of the “comprising” transition language merely allows for the addition of unclaimed fasteners to the independent claims without falling outside the scope of the claims. That well known aspect of the “comprising” language does not mandate a broader reading of “bond” to include fasteners. Second, we agree with Patent Owner that the Specification distinguishes between the claimed bonds and the use of mechanical fasteners. PO Resp. 9–10. First, in the Background, the Specification stresses the need for a bond that goes beyond the prior art use of mechanical fasteners. See Ex. 1001, 2:19–27. Later, in the Detailed Description, the Specification describes the use of mechanical fasteners as “in addition” to the physical or chemical bonds, and as a further safety feature should the bond fail. See id. at 10:35–45; 14:3–14. The most natural reading of these passages supports Patent Owner’s position that fasteners are distinct from, and could optionally be used in addition to, bonds, not that fasteners are a type of bond.” slip op. at 13

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

    “for “entirely open face” is too narrow. The crux of Patent Owner’s construction is that “the lowermost interior surface and corners of the ladder rail are sufficiently exposed both for inspection during use and proper fitting of the shell.” PO Resp. 13. The language of claim 8 does not support this construction. Claim 8 defines how much of the ladder rail must be exposed, and merely states that “a portion of the ladder rail” must be exposed when the shell and rail are engaged. Ex. 1001, 17:16–19; see also id. at 18:20–22 (claim 13 requiring “said shell defines an entirely open face so that a portion of the ladder rail is exposed”). The claim language does not state that any particular “portion” of the rail, much less “the lowermost interior surface and corners” of the rail, must be exposed. The absence of such specificity in the claim language counsels against reading in that limitation. In addition, the Specification does not suggest that the exposed “portion” of the rail referred to in claim 8 must include those portions identified in Patent Owner’s construction. Instead, the Specification refers broadly to the disadvantages of needing to remove protective boots to inspect the rail, and the need to expose enough of the rail to perform an inspection, without mentioning any specific portions that must be exposed. Ex. 1001, 1:66–2:5, 6:61–7:14. Patent Owner also acknowledges that the claims cover Figures 3 and 9, and Figure 3 shows structures occluding portions of the lowermost portion of the ladder rail, such as rail flange retainers and web engagement member 59. Patent Owner’s effort to construe the claim to cover a face that exposes specific portions of the ladder rail that are somewhat exposed in its own figures, while not allowing for any less exposure of the rail, demands much more precision than the claim language and Specification provide. The prosecution history also fails to provide that specificity, as at most it reveals that the applicants distinguished the claims over prior art that largely surrounded the ladder rail on four sides, exposing only small portions of the rail. See Ex. 1018, 250; Ex. 2004, Figs. 1, 2, 6. Based on the foregoing, we decline to adopt Patent Owner’s proposed construction. The parties further dispute whether the claimed “face” corresponds to the plane or missing side opposite exterior wall 42, above interior wall 44 (as Petitioner proposes), or includes any plane along base 50 within the interior of shell 32 (as Patent Owner proposes). See Pet. Reply 4– 5; PO Sur-reply 6–7. We need not resolve this issue because it appears that Patent Owner’s proposal is broader than, and would encompass, the “face” Petitioner identifies, and would therefore fail to aid Patent Owner in its efforts to distinguish over the prior art. Nevertheless, we agree with Petitioner that the more natural reading of “face,” in light of the Specification, refers to a single plane on the side opposite exterior wall 42 and above interior wall 44. See Ex. 1001, 6:61–7:10. This comports with the “entirely open” aspect of the claim language, as only the side opposite interior wall 42 and above interior wall 44 is shown as “entirely open” in Figures 3 and 9, while the inside of the shell contains structures that render that area not entirely open. See id. at Figs. 3, 9.” slip op. at 17

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

    “C. Challenges Under 35 U.S.C. § 102(a)/(b) Based on the Louisville Catalog and Under 35 U.S.C. § 103(a) Based on Plotner and the Louisville Catalog. Petitioner challenges claims 8–11 under 35 U.S.C. § 102(a)/(b) as anticipated by the Louisville Catalog and claims 8–16 under 35 U.S.C. § 103(a) as unpatentable over Plotner and the Louisville Catalog. Pet. 14– 48. Petitioner expressly conditions both of these challenges on our adoption of Petitioner’s proposed construction of the bond limitation that includes mechanical fasteners. Id. at 14, 21. For the reasons discussed above in our construction of the bond limitation, we reject Petitioner’s proposed construction and conclude that “bond” does not include mechanical fasteners. Accordingly, because we reject Petitioner’s stated premise for these challenges, we conclude that Petitioner has not proven by a preponderance of the evidence that claims 8–11 are anticipated by the Louisville Catalog or that claims 8–16 would have been obvious based on Plotner and the Louisville Catalog.” slip op. at 21

  Patent outcomesUS 7,000,731 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,000,731
• Foursquare Labs, Inc. v. Mimzi, LLCRehearing denied
  PTAB · May 19, 2020 · IPR2019-01287 · APJ J John Lee · IPR · Rehearing

  The Board denied Patent Owner’s rehearing request, leaving institution on claims 1–19 in place because the challenged prior-art and priority arguments did not show an abuse of discretion.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “DISCUSSION A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). The party must identify all matters it contends were misapprehended or overlooked by the Board. Id. The Board applies an abuse of discretion standard when reviewing a decision on a petition for rehearing. 37 C.F.R. § 42.71(c).” slip op. at 2

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

    “As an initial matter, we first note that we determined in the Institution Decision that Petitioner had shown a reasonable likelihood of prevailing on its contention that all of the challenged claims are unpatentable as obvious over Ramer3 and Hayashi.4 Inst. Dec. 28–32. Patent Owner does not seek rehearing of that determination. Thus, even were we to agree with Patent Owner that Yoo is not prior art, we conclude that Patent Owner has not shown that the Institution Decision should be modified because we still would have instituted an inter partes review based on the Ramer/Hayashi ground. See 35 U.S.C. § 314(a) (prohibiting institution “unless the Director determines that . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition” (emphasis added)); cf. Chevron Oronite Co. v. Infineum USA L.P., IPR2018- 00923, Paper 9, 10–11 (PTAB Nov. 7, 2018) (informative) (exercising discretion to deny institution because a reasonable likelihood of prevailing was shown for only two dependent claims out of twenty challenged claims); Deeper, UAB v. Vexilar, Inc., IPR2018-01310, Paper 7, 42–43 (PTAB Jan. 3 Ramer, US 2007/0061302 A1, published Mar. 15, 2007 (Ex. 1004, “Ramer”). 4 Hayashi, US 2007/0255831 A1, filed Apr. 28, 2006, published Nov. 1, 2007 (Ex. 1005, “Hayashi”). 24, 2019) (informative) (exercising discretion to deny institution because a reasonable likelihood of prevailing was shown for only two claims out of twenty-three challenged claims).” slip op. at 4

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportOther

    “governing statute was 35 U.S.C. § 102(a)(2) (2013), as amended by the Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) (“AIA”). Inst. Dec. 13–19. On the record available at the time, we agreed with Petitioner that the ’981 Patent included claims with an effective filing date on or after March 16, 2013, the effective date of the AIA amendment to § 102. See id.; Reply 1–2; AIA § 3(n)(1). Specifically, we determined (preliminarily) that the challenged claims are not adequately supported by the written description of U.S. Patent Application No. 12/181,956 (“the ’956 Application”), and, thus, could not claim priority to the ’956 Application, the only application in the priority chain that was filed before the AIA’s relevant effective date. Inst. Dec. 17–19. Under post-AIA § 102(a)(2), a published patent application of another inventor (like Yoo) is prior art if it “was effectively filed before the effective filing date of the claimed invention.” Yoo was filed on May 6, 2008. Ex. 1003, code (22). Consequently, under post-AIA § 102(a)(2), Yoo would qualify as prior art because its filing date is before the effective filing date of the claimed invention.2 Ex. 1001, code (60). 2 We note that Yoo’s effective filing date precedes all of the possible effective filing dates listed on the face of the ’981 Patent, including the July 29, 2008 filing date of the ’956 Application. See Ex. 1001, code (60). As noted above and discussed further below, however, whether the claims are supported by the ’956 Application relates to the threshold issue of whether post-AIA § 102(a)(2) applies to Yoo.” slip op. at 3

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

    “As an initial matter, we first note that we determined in the Institution Decision that Petitioner had shown a reasonable likelihood of prevailing on its contention that all of the challenged claims are unpatentable as obvious over Ramer3 and Hayashi.4 Inst. Dec. 28–32. Patent Owner does not seek rehearing of that determination. Thus, even were we to agree with Patent Owner that Yoo is not prior art, we conclude that Patent Owner has not shown that the Institution Decision should be modified because we still would have instituted an inter partes review based on the Ramer/Hayashi ground. See 35 U.S.C. § 314(a) (prohibiting institution “unless the Director determines that . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition” (emphasis added)); cf. Chevron Oronite Co. v. Infineum USA L.P., IPR2018- 00923, Paper 9, 10–11 (PTAB Nov. 7, 2018) (informative) (exercising discretion to deny institution because a reasonable likelihood of prevailing was shown for only two dependent claims out of twenty challenged claims); Deeper, UAB v. Vexilar, Inc., IPR2018-01310, Paper 7, 42–43 (PTAB Jan. 3 Ramer, US 2007/0061302 A1, published Mar. 15, 2007 (Ex. 1004, “Ramer”). 4 Hayashi, US 2007/0255831 A1, filed Apr. 28, 2006, published Nov. 1, 2007 (Ex. 1005, “Hayashi”). 24, 2019) (informative) (exercising discretion to deny institution because a reasonable likelihood of prevailing was shown for only two claims out of twenty-three challenged claims).” slip op. at 4

  § 102 anticipation§ 103 obviousness
  Patents in suitUS 9,128,981
• Cisco Systems, Inc. v. Centripetal Networks, Inc.Some claims unpatentable
  PTAB · May 18, 2020 · IPR2018-01760 · APJ J John Lee · IPR · Final written decision

  Claims 1–7, 10–12, 14–21, 24, and 25 are unpatentable as obvious over Sourcefire; claims 8, 9, 13, 22, and 23 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “In its Response, Patent Owner does not dispute Petitioner’s definition of the level of skill in the art.3 Based on the complete trial record, we find 3 Dr. Orso testified to a slightly different description of the level of skill in the art (Ex. 2002 ¶ 36), but Patent Owner did not argue during trial that Dr. Orso’s description should be adopted instead of Petitioner’s description and waived any such argument as a result. See In re NuVasive, Inc., 842 Dr. Staniford’s testimony credible and persuasive (Ex. 1003 ¶¶ 21–24), and we adopt Petitioner’s definition as a result. B.” slip op. at 7

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

    “an unexpired patent are given their broadest reasonable construction in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b) (2018); see Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016). In the Decision on Institution, we preliminarily construed the term “network-threat indicator” as an “indicator that represents the identity of a resource associated with a network threat.” Inst. Dec. 8. During trial, neither party disputed this preliminary construction. See PO Resp. 25; Pet. Reply 7–8; Tr. 10:22–11:9. We do not discern any evidence in the full record after trial indicating that this construction is incorrect or should be modified. Moreover, the Specification supports this construction, indicating that “network addresses, ports, fully qualified domain names (FQDNs), uniform resource locators (URLs), uniform resource identifiers (URIs), or the like” are examples of “network-threat indicators.” Ex. 1001, 3:18–26. Thus, we apply this construction in this Decision.” slip op. at 8

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner

    “Based on the above facts and case law, we conclude that Sourcefire was publicly accessible. The evidence of record indicates that the Sourcefire 3D System was publicly marketed and sold, and that the Sourcefire reference was actually distributed to over 500 customers of the Sourcefire 3D System. Ex. 1005 ¶¶ 11, 19; Ex. 1042 ¶¶ 5–9. This vastly exceeds the distribution to six people in MIT and distribution of 80 copies in Garrett. Record evidence also supports Petitioner’s contention that the customers who received Sourcefire included entities interested in network security products, including persons of ordinary skill in the art. See Ex. 1042 ¶ 9; see also Ex. 1004, 1, 32–33 (identifying Sourcefire as a “User Guide” and indicating Sourcefire provides information for network administrators); Ex. 1005 ¶ 5 (indicating Sourcefire was drafted in consultation with, and reviewed by, engineers who designed the Sourcefire system). Moreover, similar to MIT and as discussed in Medtronic, the record indicates that the recipients of Sourcefire were not subject to confidentiality requirements restricting use or further distribution. See Ex. 1004, 2 (Sourcefire copyright page stating, “You may use . . . and otherwise copy and distribute [Sourcefire] solely for non-commercial use”).5 Although Patent Owner asserts that MIT and Klopfenstein are distinguishable because they involved “the free distribution of academic documents to conference and meeting attendees” (PO Sur-reply 7), case law indicates that distribution to commercial entities also may be sufficient. See Garrett, 422 F.2d at 878; Pet. Reply 3.6” slip op. at 15

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

    “Id. at 65. These largely conclusory arguments, however, fail to explain how refreshing an event view or event summary page, whether at a regular interval or otherwise, teaches generating different types of log entries at the same time for different portions of packets in the manner claimed. The cited testimony of Dr. Staniford does not provide any further illumination, instead repeating essentially the same conclusory statements made in the Petition. See Ex. 1003 ¶¶ 162, 173; 37 C.F.R. § 42.65(a). Petitioner’s Reply also fails to supply the necessary explanation or supporting evidence. Petitioner notes that “flow-log entries are generated from the packet-logs”—thus, flow-log entries must be generated after the corresponding packet-log entries and would reflect any changes made to those entries. Pet. Reply 19–21. Although true, these facts pertain only to a single portion of packets, i.e., that their packet-log entries are generated first, and that the related flow-log entries are generated afterward. The same is true even considering that this process can occur at a predetermined “refresh interval.” Petitioner does not identify any specific teaching or suggestion in Sourcefire that indicates how the generation of log entries for two different portions of packets would operate. Instead, Petitioner relies on a bare assertion—without any specific basis in Sourcefire—that “the processing of the packet-logs and the flow-logs are continually being updated or refreshed.” Without sufficient supporting evidence, that bare assertion and the conclusory testimony of Dr. Staniford are inadequate to meet Petitioner’s burden to prove the unpatentability of these claims by a preponderance of the evidence.” slip op. at 35

  Patent outcomesUS 9,413,722 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,413,722
• Unified Patents Inc. v. Velos Media, LLCNo claims unpatentable
  PTAB · May 12, 2020 · IPR2019-00194 · APJ Jason W Melvin · IPR · Final written decision

  Claims 1–3, 5, 13–15, and 17 were not shown unpatentable because the asserted grounds failed to establish the claimed scan passes or scan order.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “II. ANALYSIS A. LEVEL OF ORDINARY SKILL IN THE ART Petitioner asserts a person of ordinary skill in the art at the time of the application resulting in the ’449 patent “would have had at least the equivalent of a Bachelor’s degree in electrical engineering, computer engineering, or a related subject and two or more years of experience in the field of video coding.” Pet. 23–24. Patent Owner does not contest that definition of a skilled artisan or offer a different one. Petitioner’s definition is consistent with the descriptions in the ’449 patent and the asserted art, and we adopt it.” slip op. at 5

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

    “Although Petitioner proposes a construction for “information indicating levels of significant coefficients” (Pet. 27), we determined in the Institution Decision that there was no need to construe the phrase. Inst. 5. Absent any indication from the parties why such a construction would impact our analysis, we reach that same conclusion here. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).” slip op. at 6

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

    “the phrase “in a first scan pass” and shows the proper grammatical relationship. That limitation recites “coding information indicating levels . . . according to the scan order used for coding the information indicating significant coefficients in a second scan pass.” The phrase “in a second scan pass” serves not to frame the scan order—the scan order for coding level information must be the same as the scan order for coding significance information. Rather, “in a second scan pass” relates to the phrase “coding information”—no other understanding of “in a second scan pass” would make sense. For internal consistency, that same understanding must apply to the first limitation such that “in a first scan pass” frames the step of “coding information.” Thus, the claim language requires coding significance information in a first scan pass, and then coding level information in a second scan pass, where each scan pass uses the same scan order.” slip op. at 8

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

    “We find Cheon’s disclosure regarding a purported second scan is insufficient to carry Petitioner’s burden. The primary disclosure Petitioner relies on states only that “[l]evel information of an effective coefficient . . . is encoded after the significance map is encoded.” Ex. 1003 ¶ 175. That does not expressly state that a second scan is performed to encode the level information. Petitioner is left relying on a statement by its declarant that a person of skill would have understood to perform a second scan pass when encoding the level information. Pet. 61. But Petitioner’s declarant provides no explanation and instead simply makes the conclusion. Ex. 1002 ¶ 127. We do not afford significant weight to such a conclusory statement. 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 are left with the possibility that Cheon’s paragraph 175 discloses a second scan, but that does not persuade us that Cheon makes an adequate disclosure to teach a second scan. In this regard, we credit the testimony of Patent Owner’s declarant that skilled artisans would have understood Cheon’s paragraph 175 to teach a single scan pass. Ex. 2034 ¶¶ 158–159.” slip op. at 11

  Patent outcomesUS 9,338,449 not shown unpatentable
  Claim construction§ 103 obviousness
  Patents in suitUS 9,338,449
• Apple Inc. / HTC Corporation et al. v. Invt Spe LLCAll claims unpatentable
  PTAB · Apr 8, 2020 · IPR2018-01476 · APJ J John Lee · IPR · Final written decision

  Claims 1–6 are unpatentable as obvious over Paulraj, Walton, and Huang; the Wallace and Walton ground does not establish the required simultaneity.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “had a bachelor’s degree in electrical engineering or an equivalent as well as three years of experience working with “multi-antenna wireless communication systems,” or one year of such experience with a master’s degree in electrical engineering focusing on communications systems. Pet. 7–8 (citing Ex. 1003 ¶ 41). Patent Owner does not dispute Petitioner’s 2 U.S. Patent No. 6,067,290, issued May 23, 2000 (Ex. 1005, “Paulraj”). 3 H. Huang et al., Achieving High Data Rates in CDMA Systems Using BLAST Techniques, in CONFERENCE RECORD, IEEE GLOBAL TELECOMMUNICATIONS CONFERENCE 2316 (1999) (Ex. 1006, “Huang”). 4 U.S. Patent No. 7,095,709 B2, issued Aug. 22, 2006 (Ex. 1008, “Walton”). 5 U.S. Patent Application Pub. No. 2002/0193146 A1, published Dec. 19, 2002 (Ex. 1009, “Wallace”). formulation of the level of skill in the art, and applies it for its arguments. PO Resp. 10. Based on the information presented in the Petition and Dr. Singer’s testimony, we agree with Petitioner’s formulation, which is supported by the record and consistent with the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). B.” slip op. at 5

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

    “limiting. See Pet. Reply 5; PO Sur-reply 7–8; Tr. 8:5–15. “In general, a preamble limits the invention if it recites essential structure or steps, or if it is ‘necessary to give life, meaning, and vitality’ to the claim.” Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (quoting Pitney Bowes, 182 F.3d at 1305). On the other hand, a preamble generally is not limiting “where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention.” Id. (quoting Rowe v. Dror, 112 F.3d 473, 478 (Fed. Cir. 1997)). For example, if “deletion of the preamble phrase does not affect the structure or steps of the claimed invention,” the preamble is not limiting. Id. at 809 (citing IMS Tech., Inc. v. Haas Automation, Inc., 206 F.3d 1422, 1434 (Fed. Cir. 2000)). Here, we are persuaded the preamble is limiting. Although the parties dispute whether spatial multiplexing and transmit diversity occur simultaneously, it is undisputed that spatial multiplexing is part of the claimed invention. See Pet. 2; PO Resp. 6; Tr. 6:13–26 (Petitioner indicating “we agree that the claims require transmit diversity and signal multiplexing”). The Specification supports this view. For example, the Specification states that “i[t] is an object of the present invention to improve reception performance of specific data on a receiving side while maintaining the transmission efficiency of a communication system.” Ex. 1001, 2:3–6 (emphasis added). The technique for improving transmission efficiency disclosed in the Specification is spatial multiplexing. See id. at 5:13–17 (describing “two transmission systems to transmit different items of data, [which] maintains high transmission efficiency”), Figs. 3, 4; see also id. at 1:42–47 (indicating “signals sent from a plurality of transmission antennas at the same timing and same frequency in substream units” help “realize a high-speed, high-volume communication”). Further, the only part of claim 1 that recites spatial multiplexing is the preamble. See Pet. Reply 3–6; PO Sur-reply 4; Ex. 1020, 21:22–22:18. Neither party indicates that any other claim language captures spatial multiplexing. Thus, if the preamble is not limiting, claim 1 would not incorporate spatial multiplexing at all, which is inconsistent with how the invention is described in the Specification. Consequently, we determine that the preamble of claim 1 recites “essential structure or steps” and, thus, is “necessary to give life, meaning, and vitality” to the claim. See Catalina Mktg., 289 F.3d at 808.” slip op. at 10

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

    “The final limitation of claim 1 (the “wherein” clause) recites “generat[ing] a replica data item by replicating a specific data item of the plurality of data items, and map[ping] the plurality of data items to the at least one of the plurality of antennas such that the specific data item and the replica data item are transmitted from different antennas at a same time.” It is undisputed that this limitation recites transmit diversity. Critically, as Patent Owner observes, this limitation recites “a specific data item of the plurality of data items” (emphasis added), i.e., the “specific data item” that is replicated for transmit diversity is part of the same “plurality of data items” recited in the preamble for spatial multiplexing. See PO Resp. 7 (“Therefore, the specific data item described in transmit diversity (TD) with the replica data item, is also involved in spatial multiplexing (SM) at the same time . . . with other data items of the plurality [of] data items . . . .”); PO Sur-reply 4 (asserting that the “same ‘plurality of data items’ are subject to spatial multiplexing in the preamble and transmit diversity in [the ‘wherein’ clause]”); Tr. 44:22–45:2. Consequently, in order for both the preamble limitations and the “wherein” clause limitations to be met, a plurality of data items, including the specific data item, must be transmitted via spatial multiplexing, i.e., using a plurality of antennas in parallel. In other words, both the specific data item and at least one other data item that is different (i.e., the recited “plurality”) must be transmitted at the same time. In addition, both the specific data item and its replica data item must also be transmitted at the same time, as recited in the “wherein” clause, for transmit diversity. Thus, at least three data items—the specific data item, its replica, and another different data item—must be transmitted at the same time to satisfy the claim because both spatial multiplexing (preamble) and transmit diversity (“wherein” clause) must occur. See PO Resp. 7; Pet. Reply 2–3; Ex. 1020, 12:17–21. As a result, the claim requires simultaneity.” slip op. at 13

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

    “Based on the complete trial record, we agree with Petitioner’s reasoning and evidence discussed above. Consequently, we find that a preponderance of the evidence indicates that the combination of Paulraj, Walton, and Huang teaches each limitation of claims 1 and 6, including the requirement of simultaneity. Patent Owner advances several arguments opposing Petitioner’s contentions, which we find unpersuasive for the reasons explained below.” slip op. at 23

  Patent outcomesUS 7,764,711 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,764,711

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.