- Intel Corporation v. Pact XPP Schweiz AGAll claims unpatentablePTAB · Sep 8, 2021 · IPR2020-00540 · APJ Christopher L Ogden · IPR · Final written decision
Claims 1–6, 9, 24, 26, 27, 29, 30, 32, 42, 44, 73, and 74 are unpatentable as obvious under § 103.
RulingsFinal written decision- Expert testimonyPetitioner expert creditedDecided for petitioner
“At least with respect to the portions of Dr. Mazumder’s declaration that supports Intel’s arguments on which we rely for our decision, and any cross-examination relevant to that testimony, we disagree that Dr. Mazumder was improperly recalcitrant, or demonstrated a lack of knowledge of the subject matter to the extent that it would discredit him as a credible expert witness. Given the circumstances, we also do not fault Dr. Mazumder for refreshing his recollection during cross-examination. Thus, we do not agree with PACT that we should, as a general proposition, disregard or give less credit to Dr. Mazumder’s testimony for these reasons.” slip op. at 11
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Intel argues that a person of ordinary skill in the art “would have had at least an M.S. degree in electrical engineering, and at least three years of experience with multiprocessor systems design.” Pet. 14 (citing Ex. 1001 ¶ 72). Dr. Mazumder testifies that this level of skill “was the typical level of experience of persons working with multiprocessor systems, including the design of processor, cache, memory, and bus architectures, at the time of the alleged invention.” Ex. 1001 ¶ 72. Dr. Wolfe does not disagree, and in his declaration he applies Dr. Mazumder’s proposed articulation of the level of ordinary skill. See Ex. 2026 ¶ 40. For this decision, we adopt Dr. Mazumder’s uncontested declaratory testimony, which we find consistent with the level of technical expertise assumed by the ’807 patent disclosure and the asserted prior art references.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Neither Intel nor PACT argues that any claim terms need an explicit construction. See Pet. 5 (“Intel does not believe any terms need to be construed to resolve the prior art issues presented in this Petition.”). However, according to Intel, in the co-pending litigation the parties “stipulated that the preambles are not limiting” for all independent claims challenged in the Petition. Id. (citing Ex. 1014). PACT does not challenge this statement, and whether the preambles are limiting does not appear to be material to Intel’s contentions in the Petition. Absent a controversy, we do not need to explicitly construe any terms for our decision. See 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))). To the extent that our decision involves interpreting claim language, we discuss that language below in our analysis of the claim limitations.” slip op. at 13
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“(quoting Medtronic, Inc. v. Barry, 891 F.3d 1368, 1380 (Fed. Cir. 2018)). Indicia on the face of the reference, such as a copyright date or ISBN number, “are considered as part of the totality of evidence.” Id. at 17–18 (citing Nobel Biocare Servs. AG v. Instradent USA, Inc., 903 F.3d 1365, 1377 (Fed. Cir. 2018)). Based on the evidence as a whole, Intel has shown persuasively that the IEEE published the Barroso article in 2000 as part of a physical volume accessible to researchers in the field. In addition to having a copyright notice dated 2000, Barroso is part of a non-consecutively paginated article, bearing the ISBN number “1-58113-232-8.” Ex. 1005, 282. The document also provides instructions for copying and republication, and specifies a copying fee of $5.00. See id. We also find it credible that Mr. Grenier would be familiar with the publication practices of the IEEE in 2000, and the IEEE’s practices with respect to maintaining publication metadata for articles such as Barroso. Although we would reach this conclusion without the new evidence that Intel submitted with its Reply, this new evidence also supports our finding. We find credible the librarian testimony that copies of Barroso were publicly available in two university libraries before the earliest priority date of the ’087 patent. See Exs. 1053, 1054. We also find credible the testimony of Dr. Colwell that Barroso was well-known in the field, and that it is standard practice to submit a physical, bound copy of proceedings at the ISCA conference. Ex. 1055 ¶ 10. So the evidence suggests that about 230 people would have received a bound copy of Barroso at that time. See id. ¶ 9. Dr. Annavaram’s testimony, as a witness appearing on behalf of PACT in another case, corroborates this, although according to him, attendees to the ISCA conferences might have received an electronic copy rather than a bound copy. See Ex. 1051, 165:6–166:5. Thus, we find that Barroso was a printed publication at the time of the claimed invention.” slip op. at 21
Patent outcomesUS 9,037,807 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,037,807 - Intel Corporation v. Pact XPP Schweiz AGAll claims unpatentablePTAB · Sep 7, 2021 · IPR2020-00542 · APJ Sally C Medley · IPR · Final written decision
Claims 1–5, 8, 9, and 12–18 are unpatentable as obvious over the applied Song-based grounds; the Board did not reach the remaining grounds.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). Petitioner relies on the declaration testimony of Dr. Paul Franzon, who testifies that a person having ordinary skill in the art “would have been a person having at least a Master’s degree in Electrical Engineering, Computer Engineering or Computer Science with three years of industry experience in coupled processors, multi-level caches, and caches.” Pet. 14 (citing Ex. 1001 ¶ 39). Patent Owner’s declarant adopts Petitioner’s definition of a person having ordinary skill in the art. Ex. 2051 ¶¶ 16–17.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther
“Claim 1 recites “an algorithm list buffer.” Ex. 1003, 169:9. Both parties agree that the plain meaning of an “algorithm list buffer” is a buffer that stores a list of algorithms. PO Resp. 14; Pet. Reply 4. We disagree with Patent Owner that an “algorithm list buffer” must be in the form of an interlinked list that points to tables that include instructions and data for the algorithm. PO Resp. 11–13 (citing Ex. 1003, code (57), 10:36–40, 19:22– 56, 19:32–59, Fig. 2). Claim 1 does not recite a list that points to tables that include instructions and data for the algorithm, and we decline the invitation to limit claim 1 to unclaimed features. See Ventana Med. Sys., Inc. v. BioGenex Labs., Inc., 473 F.3d 1173, 1181 (Fed. Cir. 2006) (“[E]ach claim does not necessarily cover every feature disclosed in the specification [and] it is improper to limit the claim to other, unclaimed features.”). Moreover, and importantly, claim 1 additionally recites that an algorithm “comprises a set of instructions for joint execution.” Ex. 1003, 169:2–4 (emphasis added). Patent Owner overlooks this lexicographic 13 Petitioner alternatively argues that to the extent the claimed “algorithm list buffer” requires “stor[ing] algorithm pointers” as Patent Owner alleges, Song’s fetch unit contains control flow instructions like “Jump to Subroutine” that a POSITA would have understood to point to a new subroutine to be executed. Id. at 5–6. For purposes of this Decision, we need not and do not consider this argument, because we determine that “algorithm list buffer” does not require “storing algorithm pointers.” definition of “algorithm” in presenting its arguments. Taking into account the additional claim limitation that an algorithm “comprises a set of instructions for joint execution,” and the parties’ agreement that an “algorithm list buffer” is a buffer that stores a list of algorithms, claim 1’s “algorithm list buffer” is a buffer that stores a list comprising sets of instructions for joint execution. Claim 1 does not, however, impose any particular organization on how sets of instructions may appear, or be organized, within such a list, or require that the sets have any particular structure at all, apart from appearing in the list and being “for joint execution.”” slip op. at 25
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“(citing Ex. 1013, 1:62–66; Ex. 1001 ¶¶ 99–100), 46–47 (citing Ex. 1013, 4:32–66, 5:42–6:20, Fig. 2; Ex. 1001 ¶ 103). Petitioner directs attention to Arimilli’s description that a multi-level cache allows the lower level cache (L2) to act as “an intermediary between memory 16 and the on-board caches, and can store a much larger amount of information (instructions and data) than the on-board caches can, but at a longer access penalty.” Id. at 45 (quoting Ex. 1013, 1:63–66). Petitioner further contends that the multi-level cache allows the L1 cache to be rapidly accessed for a small amount of data, and the L2 cache to be accessed for a larger amount of data but at a slower pace. Id. (citing Ex. 1001 ¶ 100). Petitioner argues, and we agree, that to the extent Song does not teach a “multi-level cache,” “[a]dding a second level of cache to Song’s system, like that disclosed in Arimilli, will allow it to ‘store a much larger amount of information’ (Ex. 1013, 1:62–66) than Song’s cache subsystem, and improve efficiency of data transfer by avoiding long memory access.” Pet. 45 (citing Ex. 1001 ¶ 100). Petitioner further argues that a POSITA would have been motivated to “include Arimilli’s cache slices within Song’s caches.” Id. at 46–47. Petitioner argues, and we agree, that read-write operations are improved when the cache is divided into a plurality of slices by allowing “more efficient read and write operations if parallelized into slices rather than serially with the entire cache.” Id. at 47 (citing Ex. 1013, 4:43–66; Ex. 1001 ¶ 103). Petitioner further argues, and we agree, that Arimilli’s sliced cache presents itself as a single cache, confirming that a POSITA would easily integrate Arimilli’s cache slices into Song with a reasonable expectation of success. Id. (citing Ex. 1013, 5:42–6:20, Fig. 2; Ex. 1001 ¶ 103).” slip op. at 45
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“Franzon’s testimony that the prior art discloses an “algorithm list buffer,” because “his declaration simply parrots the Petition and he was purposefully evasive and nonresponsive throughout his deposition.” PO Resp. 23–27; Sur-reply 12. We have reviewed the arguments provided by Patent Owner and determine such arguments are insufficient for us to give little weight to Dr. Franzon’s declaration. Rather, it is within our discretion to assign the appropriate weight to be accorded evidence. See 37 C.F.R. § 42.65(a); see also, e.g., Yorkey v. Diab, 601 F.3d 1279, 1284 (Fed. Cir. 2010) (holding the Board has discretion to give more weight to one item of evidence over another “unless no reasonable trier of fact could have done so”); In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) (“[T]he Board is entitled to weigh the declarations and conclude that the lack of factual corroboration warrants discounting the opinions expressed in the declarations.”); and Velander v. Garner, 348 F.3d 1359, 1371 (Fed. Cir. 2003) (“In giving more weight to prior publications than to subsequent conclusory statements by experts, the Board acted well within [its] discretion.”). Based on the record before us, we are not persuaded that we should give Dr. Franzon’s testimony little weight. For example, Patent Owner faults Dr. Franzon for merely “track[ing]” the Petition and failing to provide any independent analysis of the term “algorithm list buffer.” PO Resp. 23. First, we do not find that Dr. Franzon merely copied the Petition, rather, it is most likely that Petitioner incorporated his testimony into the Petition. Pet. Reply 9. Moreover, Patent Owner first raised the meaning of “algorithm list buffer” in connection with its Patent Owner Response, which came after Dr. Franzon’s initial declaration. PO Resp. 14–17. Accordingly, it is not unusual that Dr. Franzon did not analyze the term “algorithm list buffer” in his original declaration, as he all along applied the plain meaning of the term. Ex. 2053, 37:13–24. Lastly, we do not find that the few parts of Dr. Franzon’s cross-examination testimony that Patent Owner points to justifies us concluding that Dr. Franzon was so evasive in answering questions that we should not consider his testimony altogether.” slip op. at 28
Patent outcomesUS 9,170,812 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,170,812 - Intel Corporation v. Pact XPP Schweiz AGAll claims unpatentablePTAB · Aug 31, 2021 · IPR2020-00541 · APJ Sally C Medley · IPR · Final written decision
Claims 1–6 are unpatentable as obvious over Nicol and Kling; the Board did not decide the withdrawn grounds.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedOther
“may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). Petitioner relies on the declaration testimony of Dr. Carl Sechen, who testifies that a person having ordinary skill in the art “would have been a person with at least a Master’s degree in Electrical or Computer Engineering (or equivalent), and three years of experience with processor design.” Pet. 10 (citing Ex. 1001 ¶¶ 83–85). Patent Owner adopts Petitioner’s definition of a person having ordinary skill in the art. PO Resp. 19. We accept the assessment offered by Petitioner and adopted by Patent Owner as it is consistent with the ’605 patent and the asserted prior art. We further note that the prior art of record in the instant proceeding reflects the appropriate level of ordinary skill in the art. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (holding the Board may omit specific” slip op. at 8
- Prior constructionPrior construction adoptedDecided for petitioner
“Subsequent to the Decision to Institute, the District Court determined that the phrase “each of the plurality of data processing units . . . adapted for sequentially processing data” means “[s]equential data processors that pass results to one or more additional data processing units to perform additional computations.” Ex. 2026, 17, 19. The parties appear to agree with that construction. PO Resp. 8–9; Pet. Reply 8, 27. Petitioner’s showing in the Petition is consistent with the District Court’s construction, because the construction is similar to Patent Owner’s proffered construction and neither party indicates that there is a substantive difference between Patent Owner’s proffered construction and the District Court’s construction for purposes of deciding the issues in this proceeding. Pet. 30–32; PO Resp. 8–9; Pet. Reply 8, 27. Accordingly, for purposes of this Decision, we adopt the District Court’s claim construction for “each of the plurality of data processing units . . . adapted for sequentially processing data.”” slip op. at 18
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“Patent Owner’s arguments focus too narrowly on the individual embodiments shown and described in Nicol Figures 2 and 4, and do not adequately address Petitioner’s showings, which rely on Nicol as a whole. Pet. 25–29, 35–38, 40. For example, the Petition relies on an annotated Figure 4 to show and label different PEs (PE1 and PE2) for purposes of showing the claimed “a first processor” and “a second processor.” Pet. 36, 40. Notably, Petitioner does not rely on the passages related to Figure 4 that Patent Owner points to in arguing that Petitioner improperly mixes and matches embodiments, e.g., Exhibit 1009, 5:60–61, 5:67–6:2. Pet. 35–41. Furthermore, the Petition makes clear that Figure 3, which Petitioner primarily relies on to show setting of the clock frequency for the annotated Figure 4 system illustrates how the claim limitations are met. Id. Patent Owner’s incompatibility arguments are based on glossing over the teachings of Figure 3 altogether, while rigidly focusing only on certain descriptions of Figures 2 and 4. PO Resp. 17–19, 28–30. Indeed, Dr. Mangione-Smith’s testimony regarding the incompatibility of Nicol’s Figure 2 and Figure 4 embodiments does not mention Nicol Figure 3 at all. Ex. 2024 ¶¶ 37, 48–51. With this in mind, we address Patent Owner’s incompatibility arguments.” slip op. at 25
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“motivated and found it obvious to combine the teachings of Nicol and Kling. Pet. 23–25, 42–45. For example, Petitioner contends, and we agree, that a POSITA would have been motivated to combine Kling’s over-temperature protection to Nicol’s multiprocessor system because it was known that overtemperature protection was critical for high-performance multiprocessor systems. Id. at 24, 42 (citing Ex. 1001 ¶ 127; Ex. 1009, 2:18–22, 3:9–20; Ex. 1010, 1:38–46; Ex. 1001 ¶¶ 127, 129, 182). Petitioner further contends, and we agree, that a POSITA would have been motivated to use temperature measurements to improve voltage scaling (taught in Nicol) and for over-temperature protection (taught in Kling). Id. at 42–43 (citing Ex. 1001 ¶ 186). Patent Owner first argues that “[m]ere benefit without any showing of actual motivation is plainly insufficient to suggest a POSITA would combine these reference[s].” PO Resp. 54–55 (citing Ex. 2024 ¶ 82). We are not persuaded by this conclusory argument, because “[i]f a person of ordinary skill in the art can implement a predictable variation, and would see the benefit of doing so, § 103 likely bars its patentability.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 401 (2007). In any event, Petitioner explains that a POSITA would have been motivated to combine Kling’s over-temperature protection to Nicol’s multiprocessor system because it was known that over-temperature protection was critical for high-performance multiprocessor systems. Pet. 24, 42 (citing Ex. 1001 ¶ 127; Ex. 1009, 2:18– 22, 3:9–20; Ex. 1010, 1:38–46; Ex. 1001 ¶¶ 127, 129, 182). We find, and it is not disputed, that over-temperature protection was critical for high-performance multiprocessor systems. Ex. 1010, 1:42–47 (explaining that if thermal monitoring is not included “the processor may destroy itself by its own heat”). Nicol describes that temperature tracking would be desirable in its power management system (see, e.g., Ex. 1009, 4:11–13 (explaining that “the operating system can reduce the supply voltage even further by tracking temperature and process variations”). Nicol, however, does not specifically provide details, and we give substantial weight to Dr. Sechen’s testimony that a POSITA would have been motivated to consult Kling and implement Kling’s over-temperature protection, which was known to be “critical for high-performance systems.” Ex. 1001 ¶ 127.” slip op. at 41
Patent outcomesUS 9,075,605 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,075,605 - Amazon.Com, Inc. / Amazon.Com LLC et al. v. VB Assets, LLCInstitution deniedPTAB · Feb 24, 2021 · IPR2020-01388 · APJ Sean P O’Hanlon · IPR · Institution
Institution was denied for claims 1–23 because the Petition did not show a reasonable likelihood of prevailing on any asserted obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“Institution of an inter partes review is authorized by statute only when “the information presented in the petition . . . and any response . . . shows that there is 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) (2018). We have authority, acting on the designation of the Director, to determine whether to institute an inter partes review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). For the reasons set forth below, upon considering the parties’ briefs and evidence of record, we conclude that the information presented in the Petition fails to establish a reasonable likelihood that Petitioner will prevail in showing the unpatentability of any of the challenged claims. Accordingly, we decline to institute an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person having ordinary skill in the art at the time of the invention (“POSITA”) “would have at least a Bachelor-level degree in computer science, computer engineering, electrical engineering, or a related field in computing technology, and two years of experience with automatic speech recognition and natural language understanding, or equivalent education, research experience, or knowledge.” Pet. 4 (citing Ex. 1002 ¶¶ 26–29). Patent Owner does not contest Petitioner’s definition or proffer an alternate definition. See generally Prelim. Resp. The level of ordinary skill in the art often is evidenced by the references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). The level of ordinary skill proposed by Petitioner appears to be consistent with that of the references, and we apply Petitioner’s proposed level of ordinary skill for purposes of this Decision.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Only those terms that are in controversy need be construed, and 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) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“Patent Owner also argues that the Petition does not set forth adequate rationale for modifying Cohen to include Yonebayashi’s alleged recognition of pronouns because Cohen’s system presents a “yes-no question” to the user and the “yes” answer is enough for Cohen’s system to reserve a rental car. Prelim. Resp. 18–19. We agree. Petitioner relies on Cohen’s disclosure of presenting to the user questions the answers to which are one word. Pet. 22 (citing Ex. 1012, 19:1–10, 19:24–31), 25 (citing Ex. 1012, 19:8–13, 19:24–34). In each of these examples cited by Petitioner, the user responds by saying “yes.” Ex. 1012, 19:11, 19:32. Petitioner does not explain persuasively why it would be obvious to change this one-word response to include additional words, including pronouns, or why this modification would be of any benefit. Furthermore, even if a user’s utterance were to include the other words as suggested by Petitioner, Petitioner does not explain persuasively why it would be obvious to modify Cohen’s system to look to those additional words instead of the uttered “yes” to which Cohen’s system already responds and which remains in Petitioner’s modified utterances. See Pet. 27 (suggesting that the user respond by saying “Yes, I need that” or “Yes, reserve it” (emphases omitted)).” slip op. at 20
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,269,097 - Amazon.Com, Inc. / Amazon.Com LLC et al. v. VB Assets, LLCInstitution deniedPTAB · Feb 4, 2021 · IPR2020-01381 · APJ Robert L Kinder · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood that Cohen, Hao, and Kennewick-II, with or without Partovi, taught required limitations of the challenged claims.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Petitioner bears the burden of persuasion to prove unpatentability, by a preponderance of the evidence, of the claims challenged in the Petition. 35 U.S.C. § 316(e). This burden never shifts to Patent Owner. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). The Board may authorize an inter partes review if we determine that the information presented in the Petition and Patent Owner’s Preliminary Response shows that there is a reasonable likelihood that Petitioner will prevail with respect to at least one of the claims challenged in the Petition. 35 U.S.C. § 314(a). A patent claim is unpatentable under 35 U.S.C. § 103 if the differences between the claimed subject matter and the prior art are such that the subject matter, as a whole, would have been obvious at the time the invention was made to a person having ordinary skill in the art to which the subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of skill in the art; and (4) when in evidence, any objective evidence of non-obviousness.1 Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).” slip op. at 7
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person having ordinary skill in the art at the time of the invention (“POSITA”) “would have at least a Bachelor-level degree in computer science, computer engineering, electrical engineering, or a related field in computing technology, and two years of experience with automatic speech recognition and natural language understanding, or equivalent education, research experience, or knowledge.” Pet. 4. Patent Owner does not contest Petitioner’s definition or proffer an alternate definition. See generally Prelim. Resp. The level of ordinary skill in the art can be evidenced by the references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). The level of ordinary skill proposed by Petitioner appears to be consistent with that of the references, and we apply Petitioner’s proposed level of ordinary skill for purposes of this Decision.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Only those terms that are in controversy need be construed, and only to the extent necessary to resolve the controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Petitioner does not identify any claim term that requires construction. Pet. 7–8. Likewise, Patent Owner does not identify any specific term requiring construction to reach a resolution. Prelim. Resp. 3. For purposes of this Decision, and based on the record before us, we determine that no express construction of any term is necessary.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundReasonable expectation not foundNot shown unpatentable
“Based on the record before us, Petitioner has not persuasively established a rational basis for this combination, nor does Petitioner show a reasonable expectation of success. Petitioner’s underlying premise is that Kennewick-II could “enhance how context is determined” in Cohen and Hao, but as explained above, Cohen and Hao do not disclose any determination of context based on the words “Yes” and “need.” Dr. Smyth testifies that “Hao and Cohen could implement Kennewick’s scoring algorithm to determine the most likely context of the user’s utterance where a word may have multiple possible interpretations.” Ex. 1002 ¶ 112. This logic fails for similar reasons. As noted, the relied-on portion of Hao is not even a spoken utterance. Further, we are not persuaded that the words “Yes” and “need” could have multiple interpretations such that applying Kennewick’s scoring algorithm to Cohen and/or Hao makes sense. We are not persuaded that a person of ordinary skill in the art would have found it obvious to incorporate Kennewick-II to “enhance how context is determined,” as there is nothing to enhance. We agree with Patent Owner that Petitioner never suggests that Cohen and Hao be modified to include context determination in the first instance. See Prelim. Resp. 22. Similarly, Petitioner does not explain persuasively how Kennewick’s scoring algorithm would improve the alleged context determinations based on the single words “Yes” and “need.” Id. Petitioner does not persuade us that Cohen or Hao’s ability to recognize “Yes” and “need” and act upon those words requires context determination. Petitioner has not shown how Kennewick-II would improve the interaction.” slip op. at 22
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,626,703 - Eis GmbH v. Novoluto GmbHRehearing grantedPTAB · Sep 25, 2020 · IPR2020-00007 · APJ Susan L C Mitchell · IPR · Rehearing
Granted EIS GMBH’s rehearing request and instituted IPR of claims 1–3, 5, 7, 8, 11, 14, 15, 17–21, and 23–26 on all asserted grounds.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“We find that Dr. Prisco’s testimony is a reasonable interpretation of how Taylor works if the bellows are bidirectional, and the bellows are expanded and contracted when the suction cup is sealingly engaged. Figure 3 of Taylor shown above appears to support Dr. Prisco’s testimony that the bellows may be expanded or contracted from the initial position shown in Figure 3 and does not appear to show any valve or second opening in the bellows to provide unidirectional flow as Dr. Jensen, Patent Owner’s declarant, asserts. Also, as Petitioner asserts, Taylor indicates that a squeeze ball may be substituted for the bellows expressly indicating a device with a bidirectional flow. Although Patent Owner raises valid arguments concerning a common definition of bellows indicating unidirectional flow and provides testimony from Dr. Jensen reasonably supporting such a position, these dueling positions create a genuine issue of material fact that we weigh in favor of Petitioner on institution. See 37 C.F.R. 42.108(c).” slip op. at 18
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“We conclude from a review of Fang and Taylor that they are not substantially the same art nor is Petitioner making substantially the same argument as was presented the Office during prosecution of the ’061 Patent based on Fang. We find that the way in which Fang and Taylor work appear to be materially different. Fang appears to apply only suction to the skin whereas Taylor, with the sealingly connected suction cup, appears to apply a cyclical vacuum that Dr. Prisco testifies meets the claim limitations requiring generation of a pattern of negative and positive pressures, modulated with respect to a reference pressure. Ex. 1002 ¶¶ 62–64, 75. Thus Taylor appears to teach the claim element Patent Owner argued during prosecution was missing from Fang. Also, in applying factors (b) and (d) of Becton, Dickinson, because of such differences noted above, we find that Taylor is not cumulative of Fang, which was considered and applied by the Office during prosecution of the ’061 Patent. 4. Conclusion Thus, we find that Taylor and Fang are not substantially the same art, nor were substantially the same arguments based on these references presented in the Petition and during prosecution of the ’061 Patent, respectively. As discussed above, because Petitioner primarily relies on Taylor in all four grounds for teaching the modulation of positive and negative pressures with respect to a reference pressure as required by all of the challenged claims, we also find that, overall, the same or substantially the same art was not previously presented to the Office nor were the same or substantially the same arguments previously presented to the Office. Therefore, we do not need to reach the application of the remaining Becton, Dickenson factors relating to whether the Petitioner has demonstrated a material error by the Office. Thus, we decline to exercise our discretion under § 325(d) to deny institution of an inter partes review here.” slip op. at 12
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“how Taylor works if the bellows are bidirectional, and the bellows are expanded and contracted when the suction cup is sealingly engaged. Figure 3 of Taylor shown above appears to support Dr. Prisco’s testimony that the bellows may be expanded or contracted from the initial position shown in Figure 3 and does not appear to show any valve or second opening in the bellows to provide unidirectional flow as Dr. Jensen, Patent Owner’s declarant, asserts. Also, as Petitioner asserts, Taylor indicates that a squeeze ball may be substituted for the bellows expressly indicating a device with a bidirectional flow. Although Patent Owner raises valid arguments concerning a common definition of bellows indicating unidirectional flow and provides testimony from Dr. Jensen reasonably supporting such a position, these dueling positions create a genuine issue of material fact that we weigh in favor of Petitioner on institution. See 37 C.F.R. 42.108(c).” slip op. at 18
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“We find that Dr. Prisco’s testimony is a reasonable interpretation of how Taylor works if the bellows are bidirectional, and the bellows are expanded and contracted when the suction cup is sealingly engaged. Figure 3 of Taylor shown above appears to support Dr. Prisco’s testimony that the bellows may be expanded or contracted from the initial position shown in Figure 3 and does not appear to show any valve or second opening in the bellows to provide unidirectional flow as Dr. Jensen, Patent Owner’s declarant, asserts. Also, as Petitioner asserts, Taylor indicates that a squeeze ball may be substituted for the bellows expressly indicating a device with a bidirectional flow. Although Patent Owner raises valid arguments concerning a common definition of bellows indicating unidirectional flow and provides testimony from Dr. Jensen reasonably supporting such a position, these dueling positions create a genuine issue of material fact that we weigh in favor of Petitioner on institution. See 37 C.F.R. 42.108(c).” slip op. at 18
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialPatents in suitUS 9,849,061 - Parrot S.A. / Parrot Drones S.A.S. et al. v. Qfo Labs, Inc.Rehearing deniedPTAB · Aug 11, 2020 · IPR2018-01690 · APJ Hyun J Jung · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving claims 13–17 unpatentable and the motion to amend granted for claims 1–10 but denied for substitute claims 21–23.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. ANALYSIS The party challenging a decision in a request for rehearing bears the burden of showing the decision should be modified as set forth in 37 C.F.R. § 42.71(d), which provides in relevant part: A party dissatisfied with a decision may file a single request for rehearing without prior authorization from the Board. The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. See also Req. Reh’g. 4 (quoting, in part, 37 C.F.R. § 42.71(d)). With this in mind, we address Patent Owner’s arguments below.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“Owner’s Motion to Amend in its Rehearing Request. Compare Mot. 11–12, with Req. Reh’g. 7. We considered these arguments in our Decision, and Patent Owner’s arguments express disagreement with our interpretation of “orientation control scheme” but do not show how an argument was overlooked or misapprehended. See Final Dec. 74, 84–86. Patent Owner supplements its prior arguments with contentions that we construed “position” as a verb, not a noun. See Req. Reh’g. 6. Patent Owner does not identify where these additional contentions were previously presented, as required under 37 C.F.R. § 42.71(d). Thus, Patent Owner has failed to show that we misapprehended or overlooked these arguments. See id. Even if the additional contentions had been previously presented, our Decision considered Patent Owner’s proposed interpretation of “orientation control scheme.” See Final Dec. 85 (“Even under Patent Owner’s proposed interpretation of ‘orientation control scheme’ (Mot. 11–12), Petitioner persuades us that Louvel and Nagamitsu teach the final recitation of proposed substitute claim 21.”). Patent Owner’s arguments do not show how an argument was overlooked or misapprehended. In any event, we remain convinced that “Patent Owner’s proposed interpretations are not the broadest reasonable interpretation in view of the Specification of the ’292 patent because the Specification does not use these terms or describe state vectors.” See Final Dec. 74.” slip op. at 4
- Expert testimonyPetitioner expert creditedDecided for petitioner
- PTAB / AIA Trials › Constitutional / APA (Arthrex, Oil States, due process)Decided for petitioner
“We decline to consider Patent Owner’s constitutional challenge because the issue has been addressed by the Federal Circuit in Arthrex, 941 F.3d at 1328 (expressly limiting its holding “to those cases where final written decisions were issued (prior to Arthrex)”). See also Caterpillar Paving Prod. Inc. v. Wirtgen Am., Inc., 957 F.3d 1342, 1342–1343 (May 6, 2020) (“The court in Arthrex considered and rejected that argument, expressly limiting its holding ‘to those cases where final written decisions were issued.’”) (quoting 941 F.3d at 1340). Our Decision was entered February 20, 2020, after the Federal Circuit issued its October 2019 decision in Arthrex (see 941 F.3d at 1320).” slip op. at 10
Claim constructionPatents in suitUS 9,904,292 - PTAB · Jun 16, 2020 · IPR2019-01393 · APJ Ryan H Flax · IPR · Rehearing
Granted Sand Revolution II, LLC’s rehearing request and instituted IPR of claims 1, 2, 4, 6–14, and 16–20 on two obviousness grounds.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“As noted in Fintiv, we consider six factors when taking “a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review.” Fintiv, Paper 11 at 6. For the reasons discussed above, the Fintiv factors weigh against invoking our discretion to deny institution. Considering the Fintiv factors as part of a holistic analysis, we are not persuaded that the interests of the efficiency and integrity of the system would be best served by invoking our authority under 35 U.S.C. § 314(a) to deny institution of a potentially meritorious Petition. For the reasons discussed above, we modify our initial decision denying institution. On rehearing, after considering the factors outlined in the precedential order in Fintiv, we decline to deny institution under § 314(a). Accordingly, we grant Petitioner’s Request for Rehearing. We consider the merits of the Petition with respect to the threshold for institution below.” slip op. at 14
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“demonstrating a reasonable likelihood that it would prevail in showing that claims of the ’740 patent are unpatentable. At this preliminary stage of the proceeding and on the record before us, Petitioner’s case is strong on most challenged claims. Fintiv, Paper 11 at 14–15 (“[I]f the merits of a ground raised in the petition seem particularly strong on the preliminary record, this fact has favored institution.”). Although we recognize the record can change during trial, as discussed in detail below, Petitioner has made a sufficiently persuasive showing, on the record presently before us, that the prior art references cited in the Petition teach or suggest all limitations of most challenged claims. We determine, on this preliminary record, that Petitioner has set forth a reasonably strong case for the obviousness of most challenged claims. Thus, this factor weighs in favor of not exercising discretion to deny institution under 35 U.S.C. § 314(a).” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“system” would have been readily understandable to the skilled artisan on its face, and the combination of these words into the recited phrase does not introduce any different meaning or ambiguity. The fact that the mobile storage module comprises the “integrated actuating system,” as well as the inclusion of the word “integrated” in this disputed term, each supports that such a system is a part of the module; in other words, it is built into the module as proposed by Petitioner. Because the fact that the actuating system is built into the mobile storage module is evident from the claim language itself, defining the claim term expressly to include this concept is unnecessary, as it would be redundant of the term’s plain meaning as understood by the skilled artisan. Nothing in the intrinsic record, or other evidence submitted by Petitioner, is inconsistent with this conclusion. Furthermore, regarding the proposed self-deployment concept, we also conclude it is unnecessary to add this concept to define the claim term in view of the plain meaning of “integrated actuating system.” Per the plain language of the claim term, the system that actuates the mobile storage module, i.e., moves it between a lowered and raised position, is integrated into the mobile storage module. The mobile storage module’s integrated components move, or actuate, the mobile storage module, per the plain meaning of the claim language. Thus, the system that is expressly recited as being a part of the module (integrated), actuates the module; the module actuates itself. Therefore, adding “self-deploying” to specially define the term “integrated actuating system” is unnecessary. Nothing in the intrinsic record is inconsistent with this conclusion. See Ex. 1002, 83–91 (arguing the characteristic of “self-deploying” invokes the inclusion of “an integrated actuating system,” but not the converse). Because Petitioner’s proposed construction of “integrated actuating system” would add unnecessary and undesirable redundancy to the claims, we determine that it is unnecessary to expressly construe this claim term at this stage of the proceedings.” slip op. at 32
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“V. CONCLUSION Petitioner demonstrates a reasonable likelihood of prevailing at trial in demonstrating that claims 1, 2, 4, 6–10, 12–14, and 16–20 of the ’740 patent would have been obvious over the prior art combinations set forth in Grounds 1 and 2. Our decision at this stage derives from our review of the preliminary record before us. This decision does not reflect a final determination on the patentability of the claims. ORDER Accordingly, it is hereby: ORDERED that, Petitioner’s Request for Reconsideration is granted; FURTHER ORDERED that, pursuant to 35 U.S.C. § 314, an inter partes review of claims 1, 2, 4, 6–14, and 16–20 of the ’740 patent, in accordance with Grounds 1 and 2 in the Petition, is hereby instituted; and” slip op. at 56
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSRPatents in suitUS 8,944,740 - Blackberry Corp. v. Facebook, Inc.Rehearing deniedPTAB · Apr 17, 2020 · IPR2019-01593 · APJ Miriam L Quinn · IPR · Rehearing
The Board denied rehearing and left in place its discretionary denial of the petition, finding no misapprehension or oversight in its assessment of the claim 23 challenges.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“According to 37 C.F.R. § 42.71(d), “[t]he burden of showing a decision should be modified lies with the party challenging the decision,” and the “request must specifically identify all matters the party believes the Board misapprehended or overlooked.” The burden here, therefore, lies with Petitioner to show we misapprehended or overlooked the matters it requests” slip op. at 2
- Other 314aInstitution denied discretionary otherDenied
“Partes Review. Paper 7 (“Dec.”). We exercised our discretion under 35 U.S.C. § 314(a) and denied the Petition based on our determination that Petitioner has only demonstrated a reasonable likelihood of prevailing as to three claim challenges (out of 17).1 Dec. 39−40. Petitioner filed a Request for Rehearing challenging several aspects of our Decision. Paper 8 (Req. Reh’g). In particular, Petitioner challenges our determination of the scope of “Global Positioning System data” (hereinafter “GPS Data”) a term recited in independent claim 23. Req. Reh’g 3−6. Petitioner further challenges our determination concerning the term “range of acceptable values,” recited in claim 23. Id. at 10−12. Thus, Petitioner argues, based on the correct interpretation of “GPS data” and “range of acceptable values,” we should have instituted trial because it demonstrated a reasonable likelihood of prevailing as to four or five out of eight challenged claims.2 Req. Reh’g 13.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“types of information that are GPS data, such as idle time. The portions of the Specification that Petitioner now cites, however, do not show that the GPS data is not, at a minimum, location information. As we stated in our Decision, other types of data may be transmitted from the remote unit to the central location, but the GPS data does refer to location information. Dec. 9. Moreover, Petitioner points out that the Specification discusses vehicle speed, idle time, movement, and actual windshield time as examples of calculated values, arguably from GPS location and time information. Req. Reh’g 3. But the Specification actually refers to these values to determine exceptions to be logged and noted (Ex. 1001, 4:41−49, 4:65−67, 6:1−3), which proves only that the system may use non-GPS data, in combination with GPS data, to determine exceptions. We acknowledge that claim 23’s recitation of GPS data could seem, at first blush, to potentially encompass every comparison that the Specification explains. Claim 23, however, must be interpreted in a manner that accounts for the recited two-part structure. In the first part, the claim recites a first comparison that involves the GPS data; and in the second part, the claim recites the second comparison that does not mention GPS data. Our analysis of the term GPS data in our Decision did not assume that the two comparisons involved the same data, e.g., GPS data. This is where Petitioner disagrees with our assessment, because it urges us to construe GPS data as including values and information recited in the second comparison, i.e., the idle time or recited “stationary time.” Petitioner’s position cannot be correct because the claim does not require that the “stationary time” also be GPS data. Further, the comparison that claim 23 recites with respect to GPS data does not mention exceptions at all, so it does not follow that all the Specification’s descriptions of exceptions encompass GPS data. The second comparison recited in claim 23 (comparing the stationary time to a predetermined stationary time), in contrast, is expressly performed for the purpose of noting an exception. Claim 23 (“if the length of time that the remote unit remains in a stationary position is greater than the predetermined stationary time, the system notes an exception.”). Thus, Petitioner, even in arguing for the first time its claim construction position, has not shown that derived data must also be GPS data according to the plain reading of the claim language. Consequently, having reviewed Petitioner’s arguments, we are not persuaded that GPS data means data that is derived from and representative of GPS coordinates and time stamps, as argued for the first time in the Request for Rehearing.3” slip op. at 4
- BurdenDecided for patent owner
“construction issue. Patent Owner explicitly addressed the construction of the term, a fact we acknowledged in our Decision. Dec. 8 (citing Prelim. Resp. 29−30). Petitioner did not address the scope of the term explicitly or implicitly. And it was not apparent from any of the now-cited portions of the Petition that Petitioner contended a scope of the term to include data that is derived from and representative of GPS coordinates and time stamps. Petitioner’s argument attempts to characterize its omission of a contention regarding claim construction as an oversight on our part. The argument is not persuasive as it is Petitioner’s burden to show in the Petition its contentions regarding how the challenged claim is to be construed and how, so construed, the claim is rendered obvious by the asserted references. See 37 C.F.R. § 42.104(b)(3)−(4). Therefore, we could not have either overlooked Petitioner’s position on claim construction, since none was provided, or misapprehended a position of claim scope not made explicit.” slip op. at 3
Claim constructionDiscretionary denialPatents in suitUS 6,356,841 - In-Depth Geophysical, Inc. / In-Depth Compressive Seismic, Inc. v. Conocophillips CompanyRehearing deniedPTAB · Mar 30, 2020 · IPR2019-00849 · APJ Scott A Daniels · IPR · Rehearing
The Board denied rehearing and left institution denied for claims 1–6 because Petitioner did not show Li was a printed publication.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“On request for rehearing, the burden of showing a decision on whether to institute trial should be modified lies with the party challenging the decision. 37 C.F.R. § 42.71(d). “When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” 37 C.F.R. § 42.71(c). “The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” 37 C.F.R. § 42.71(d). For reasons discussed below, we decline to modify the Decision. Thus, Petitioner’s Request is denied.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“It is Petitioner’s burden to demonstrate at the institution stage a reasonable likelihood that a reference is a printed publication by a preponderance of the evidence. See Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (“In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.”). Petitioner presented no additional evidence supporting its contentions, for example from someone familiar with the publication of Li or the referenced web pages, or even an explanation by Petitioner or a declarant that provided a countervailing argument to the SEG process and procedure for publication outlined by Dr. Aminzadeh in his Declaration. Instead, Petitioner simply points to purported “publication dates,” with no substantive explanation or fact witness corroboration. Req. Reh’g (citing Ex. 1020, Ex. 1021, Ex. 1026, Ex. 1030).” slip op. at 10
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“It is Petitioner’s burden to demonstrate at the institution stage a reasonable likelihood that a reference is a printed publication by a preponderance of the evidence. See Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (“In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.”). Petitioner presented no additional evidence supporting its contentions, for example from someone familiar with the publication of Li or the referenced web pages, or even an explanation by Petitioner or a declarant that provided a countervailing argument to the SEG process and procedure for publication outlined by Dr. Aminzadeh in his Declaration. Instead, Petitioner simply points to purported “publication dates,” with no substantive explanation or fact witness corroboration. Req. Reh’g (citing Ex. 1020, Ex. 1021, Ex. 1026, Ex. 1030). Although documents indicating a publication date of 1 September 2012 may have relevance, absent additional evidence explaining the origin and meaning of that date as to public accessibility, on the record before us, the date alone fails to show a reasonable likelihood that Li was disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it. This is especially true in the face of Dr. Aminzadeh’s unrebutted testimony as to SEG’s regular practices surrounding the acceptance and dissemination of SEG conference papers. While his testimony may not speak directly to a date of public accessibility for Li itself, it is relevant, uncontroverted, and probative of accessibility to SEG papers in general, given the bare “1 September 2012” date relied on by Petitioner.” slip op. at 10
- Expert testimonyPatent owner expert creditedDecided for patent owner
“We agree with Petitioner to the extent that Dr. Aminzadeh did not attest to personal knowledge of the Li paper. Dr. Aminzadeh however provided a credible explanation of the process for authoring and presenting papers at the SEG (Society of Exploration Geophysicists) conference. Dr. Aminzadeh is a member and co-author of SEG papers, as well as a former President of SEG. Ex. 2007 ¶ 3. In our Decision, we explained that [w]e give weight to Dr. Aminzadeh’s testimony because it articulates a reasonable and unrebutted explanation for the September 2012 date listed by Researchgate exhibit. Dr. Aminzadeh’s testimony also persuasively explains how and why the dissemination and first public availability of Li would have most likely not occurred prior to the SEG 2012 Annual Meeting from November 4-9, 2012. Dec. 12. We also stated in our Decision that dissemination “of Li would have most likely not occurred prior to the SEG 2012 Annual Meeting” (id.) because, for one reason, Dr. Aminzadeh’s unrebutted testimony is that “[a]uthors submit papers to the SEG several months before the SEG conference. The papers are kept confidential by the SEG at that time.” Ex. 2007 ¶ 4. Although Dr. Aminzadeh does not testify specifically to knowledge of the Li reference, Petitioner has not explained persuasively why this indicates that Dr. Aminzadeh’s testimony as to the SEG confidentiality practices and paper dissemination, as set forth in his Declaration, is inaccurate or misleading.” slip op. at 5
§ 102 anticipationPatents in suitUS 9,632,193
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.