• Wavemarket Inc. D/B/A Location Labs v. Locationet Systems Ltd.All claims unpatentable
  PTAB · May 7, 2015 · IPR2014-00199 · APJ Kristen L Droesch · IPR · Final written decision

  Claim 18 is unpatentable under §102(e) as anticipated by Elliot because Elliot’s accessible graphical maps and web server meet the disputed map database and map engine limitations.

  RulingsFinal written decision

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

    “We are not persuaded by Patent Owner’s argument that its proposed construction of “map database” is consistent with the ’970 Patent Specification. PO Resp. 11 (citing Ex. 1001, col. 2, ll. 46–48, col. 4, ll. 15– 22, col. 5, ll. 45–50). Patent Owner’s proposed construction is narrower than the ’970 Patent’s broad disclosure of a map database as collection of maps that can be accessed. In addition, Dr. Mandayam’s opinion is not supported fully by the provided dictionary definitions for database. 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 give more weight to the intrinsic evidence than we give to Patent Owner’s extrinsic evidence, as the ’970 Patent Specification serves as the best guide regarding the construction of “map database.” Accordingly, the broadest reasonable construction in light of the ’970 Patent Specification for “map database” is an organized collection of map data that can be accessed.” slip op. at 8

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “Based upon our review of the arguments and supporting evidence presented by each of the parties, we are persuaded that Petitioner has demonstrated by a preponderance of the evidence that Elliot’s database 30, which includes graphical maps that can be accessed by web server 34, describes the “map database” recited in claim 18 and constitutes an organized collection of map data that can be accessed.” slip op. at 16

  • ExcludeMotion to exclude, grantedDecided for petitioner

    “C. Petitioner’s Motion to Exclude Evidence Petitioner moves to exclude certain portions of Dr. Mandayam’s Declaration (Ex. 2016), and Exhibits 2017 through 2019 in their entirety. Paper 42. We do not rely on the aforementioned Exhibits in reaching our Decision. Accordingly, we dismiss Petitioner’s Motion to Exclude Evidence as moot.” slip op. at 18

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “Patent Owner does not direct us to binding authority sufficient to support its argument that in order for expert testimony to be admissible, the expert must be a person of ordinary skill in the art. We agree that “there is no requirement imposed by the FRE that an expert’s qualifications perfectly match the field of the patent at issue.” Pet. Opp. 6 (citing SEB S.A. v. Montgomery Ward & Co., 594 F.3d 1360, 1373 (Fed. Cir. 2010)); see also Mytee Prods., Inc. v. Harris Research, Inc., 439 F. App’x 882, 886–87 (Fed. Cir. 2011) (non-precedential) (upholding district court’s admission of testimony of an expert who “had experience relevant to the field of the invention,” despite admission that he was not a person of ordinary skill in the art). We also are persuaded by Petitioner’s arguments that Dr. Rosenberg’s experience is adequate to establish his technical expertise. Pet. Opp. 7 (citing Ex. 1020 ¶¶ 5, 6, 8; Ex. 1020, 23). In particular, and germane to the ’970 Patent, we note Dr. Rosenberg has over four years of experience serving as the founder and CEO of a technology company WhereWuz which focuses on location tracking applications for GPS enabled smartphones. See Pet. Opp. 7; Ex. 1020 ¶ 8.” slip op. at 19

  Patent outcomesUS 6,771,970 unpatentable
  Claim construction§ 102 anticipationcites Phillips
  Patents in suitUS 6,771,970
• QSC Audio Products, LLC v. Crest Audio, Inc.Some claims unpatentable
  PTAB · May 1, 2015 · IPR2014-00131 · APJ Bryan F Moore · IPR · Final written decision

  Claims 1–15, 18, 19, 21, and 24–26 are unpatentable under § 103; claims 20 and 23 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for patent owner

    “We determine the obviousness issues guided by the evidence of the level of ordinary skill in the art presented by the references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). From the Porambo reference, which Patent Owner does not contest is in the field of endeavor of the invention in question, we understand that the level of ordinary skill in the art, at a minimum, pertains to audio amplifiers and the incorporation of DSPs in audio amplifiers. See Ex. 1006, Abstract (describing the features of the audio amplifiers and DSPs at issue in Porambo).” slip op. at 6

  • Expert testimonyPetitioner expert creditedDecided for patent owner

    “As to his audio amplifier experience, Dr. Ellis completed a Master of Science degree in Electrical Engineering with numerous years of experience as a research assistant researching audio signal processing, sound synthesis and analysis. Ex. 1004, 1. Dr. Ellis stated during his deposition that, although he is an expert in digital signal processing (IPR2014-00129, Ex. 2002, 154:15–16), he has experience in the design of amplifiers from his undergraduate education. Id. at 124:7–20. Dr. Ellis designed and tested microphone amplifiers as a post-doctoral student at the Computer Science Institute at Berkeley, id. at 111:13–113:4, and currently is designing amplifiers that can drive speakers with the goal of incorporating these into his professional work. Id. at 120:4–121:12. We also note, as discussed above, the field of the ’544 Patent invention is related to audio amplifiers generally and the incorporation of DSPs. We find that although Dr. Ellis is less experienced than Mr. Cordell in the area of amplifier design, he is qualified sufficiently to testify about audio amplifiers as they relate to DSPs. Patent Owner also argues that Dr. Ellis must himself be a person of ordinary skill in the art. PO Resp. 15–16. Patent Owner’s arguments are unpersuasive, because, to testify as an expert under FRE 702, a person need not be a person of ordinary skill in the art, but rather “qualified in the pertinent art.” Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1363–64 (Fed. Cir. 2008); see SEB S.A. v. Montgomery Ward & Co., 594 F.3d 1360, 1372–73 (Fed. Cir. 2010); Mytee Prods., Inc. v. Harris Research, Inc., 439 Fed. App’x 882, 886–87 (Fed. Cir. 2011) (non-precedential) (upholding admission of the testimony of an expert who “had experience relevant to the field of the invention,” despite admission that he was not a person of ordinary skill in the art). As noted above, Dr. Ellis is qualified in the pertinent art. Finally, Patent Owner argues that Dr. Ellis spent an unreasonably short amount of time reviewing this case before providing his opinion, i.e., only ten hours. PO Resp. 17–18. We find that the amount of time Dr. Ellis chose to spend with the case likely is based on his experience with the subject matter and the difficulty of the subject matter. Thus, we are not persuaded by Patent Owner’s argument that the time spent on the proffered opinion affects the weight we give his opinions.” slip op. at 6

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

    “signal processing function programs and program data for defining function parameters.” Ex. 1001, 6:43–45. Thus, the Specification suggests that both the functions and parameters are transmitted to the DSP. Additionally, the Federal Circuit, when faced with similar claim language, determined that the phrase “at least one” followed by a list of categories separated by “and” rather than “or” suggests a conjunctive list in which each one of the members of the list is necessary to satisfy the claim. SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 885–86 (Fed. Cir. 2004) (“A common treatise on grammar teaches that ‘an article of a preposition applying to all the members of the series must either be used only before the first term or else be repeated before each term.’” (quoting William Strunk, Jr. & E.B. White, The Elements of Style 27 (4th ed. 2000)). SuperGuide points out that each term in the list embraces a different category, each of which must take on a chosen value: “Every disclosed embodiment teaches that the user must choose a value for each designated category.” Id. at 887. That is the case here where functions have associated parameters. For the above reasons, consistent with the plain English meaning and the Specification, we construe “at least one of a signal processing function and a signal processing function parameter” to require that both a signal processing function and a signal processing parameter must be present in the prior art to meet that claim limitation.” slip op. at 8

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner

    “Patent Owner does not assert that a removable connection itself is incompatible with Sudo. Rather Patent Owner asserts that the specific connections used by Krokstad are incompatible with Sudo. See PO Resp. 36. Patent Owner misses the point. The obviousness inquiry does not ask “whether the references could be physically combined but whether the claimed inventions are rendered obvious by the teachings of the prior art as a whole.” In re Etter, 756 F.2d 852, 859 (Fed. Cir. 1985) (en banc); see also In re Keller, 642 F.2d 413, 425 (CCPA 1981) (“The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; . . . . Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art.”) The Supreme Court has made clear that we apply “an expansive and flexible approach” to the question of obviousness. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415 (2007). Often, it will be necessary for a court to look to interrelated teachings of multiple patents; the effects of demands known to the design community or present in the marketplace; and the background knowledge possessed by a person having ordinary skill in the art, all in order to determine whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue. Id. at 418. As the Supreme Court recognized, in many cases a person of ordinary skill “will be able to fit the teachings of multiple patents together like pieces of a puzzle,” recognizing that a person of ordinary skill “is also a person of ordinary creativity, not an automaton.” KSR, 550 U.S. at 420–21. Both parties’ declarants agree that Sudo’s high-speed connection could be implemented using a PCI bus, which is a removable connection. Ex. 2002, 178:10–17; Ex. 1012, 93:1–94:19. Thus, given the motivation to create a removable connection, such as the one disclosed in Krokstad, we are persuaded that implementation of that connection in Sudo would not render it unsuitable for its intended purpose. Thus, for the reasons stated above, Petitioner has shown by a” slip op. at 14

  Patent outcomesUS 5,652,544 mixed
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 5,652,544
• QSC Audio Products, LLC v. Crest Audio, Inc.No claims unpatentable
  PTAB · Apr 29, 2015 · IPR2014-00129 · APJ Glenn J Perry · IPR · Final written decision

  Claims 5 and 13 were not shown unpatentable under § 103 because the petitioner did not establish a reason to modify the prior art to calculate impedance or power from detected current and voltage.

  RulingsFinal written decision

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

    “meaning of the patent law. The touchstone of whether a particular document is a publication under the patent law is whether it was available to those of ordinary skill in the art to which it pertains.” slip op. at 12

  • ExcludeMotion to exclude, deniedDenied

    “Patent Owner’s arguments conflate two separate issues — (1) whether Gittleman is authentic, and (2) whether it constitutes a publication under the patent law. Gittleman includes the AES logo. The cover page further identifies a specific address for AES for the purpose of obtaining additional preprints, and states that reproduction of the article is prohibited without permission from the Audio Engineering Society Journal. Ex. 1009. There is no dispute that this document is a preprint of a paper intended for presentation at their respective AES conventions. Therefore, having considered and weighed the distinctive characteristics of the article and the circumstances surrounding its retrieval from the AES E-Library, we find that Gittleman is what it appears to be — a paper categorized by the Audio Engineering Society as a “preprint.” Petitioner has met its authentication burden under Fed. R. Evid. 901 and 902. Whether the self-authenticated “preprint” qualifies as a “publication” under the patent law is a separate matter.” slip op. at 8

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “had the following education and experience: Master of Science degree in Electrical Engineering and at least some practical experience with the design and testing of electronic amplifiers. Ex. 1003 ¶ 15. Patent Owner’s declarant agrees generally with the above assertion, asserting that a person of ordinary skill in the art would have had one year of experience with the design and testing of electronic amplifiers. Ex. 2001 ¶ 27. The disagreement appears to be that the Petitioner asserts that a person of ordinary skill would be aware of amplifier designs useful at frequencies ranging from audio frequencies to radio frequencies (RF) (Ex. 1003 ¶ 16), while Patent Owner asserts that a person of ordinary skill would not have practical experience with amplifier designs useful at frequencies ranging from audio frequencies to radio frequencies (RF) (Ex. 2001 ¶¶ 28–30). We credit Petitioner’s declarant, and agree that a person of ordinary skill would be at least aware of amplifier designs useful at radio frequencies (RF) based at least on that person’s educational background. Ex. 1003 ¶ 16. We determine the obviousness issues guided by the evidence of the level of ordinary skill in the art presented by the references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). From the Porambo reference, which Patent Owner does not contest is in the field of endeavor of the invention in question, we understand that the level of ordinary skill in the art, at a minimum, pertains to audio amplifiers and the incorporation of DSPs in audio amplifiers. See Ex. 1005, Abstract (describing the features of the audio amplifiers and DSPs at issue in Porambo).” slip op. at 13

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “As to his audio amplifier experience, Dr. Ellis completed a Master of Science degree in Electrical Engineering with numerous years of experience as a research assistant researching audio signal processing, sound synthesis and analysis. Ex. 1004, 1. Dr. Ellis stated during his deposition that, although he is an expert in digital signal processing (Ex. 2002, 154:15–16), he has experience in the design of amplifiers from his undergraduate education. Id. at 124:7–20. Dr. Ellis designed and tested microphone amplifiers as a post-doctoral student at the Computer Science Institute at Berkeley, id. at 111:13–113:4, and is currently designing amplifiers that can drive speakers with the goal of incorporating these into his professional work. Id. at 120:4–121:12. We also note, as discussed above, the field of the ’542 patent invention is related to audio amplifiers generally and the incorporation of DSPs. We find that although Dr. Ellis is less qualified than Mr. Cordell in the area of amplifier design, he is qualified sufficiently to testify about audio amplifiers as they relate to DSPs. As to his alleged bias, Patent Owner points to Dr. Ellis’s testimony that “DSP revolution” has occurred, where DSP solutions were preferred over analog solutions. PO Resp. 20–23. We do not agree with Patent Owner that this indicates that he is biased toward believing that “any DSP application that replaces an analog application is obvious.” See PO Resp. 23. As to his alleged use of the wrong standard for obviousness, Patent Owner argues that Dr. Ellis did not evaluate the prior art from the perspective of a person having ordinary skill in the art at the time of invention because apparently he did not use the words “at the time of invention” when discussing the standard in his declaration. PO Resp. 23–24. We are not persuaded by this argument. Patent Owner also argues that Dr. Ellis must himself be a person of ordinary skill in the art. PO Resp. 24. Patent Owner’s arguments are unpersuasive because, to testify as an expert under FRE 702, a person need not be a person of ordinary skill in the art, but rather “qualified in the pertinent art.” Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1363–64 (Fed. Cir. 2008); see SEB S.A. v. Montgomery Ward & Co., Inc., 594 F.3d 1360, 1372–73 (Fed. Cir. 2010); Mytee Prods., Inc. v. Harris Research, Inc., 439 F. App’x 882, 886–87 (Fed. Cir. 2011) (non-precedential) (upholding admission of the testimony of an expert who “had experience relevant to the field of the invention,” despite admission that he was not a person of ordinary skill in the art). As noted above, Dr. Ellis is qualified in the pertinent art.” slip op. at 15

  Patent outcomesUS 5,652,542 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR
  Patents in suitUS 5,652,542
• Regions Financial Corporation / Advance America, Cash Advance Centers, Inc. et al. v. Retirement Capital Access Management Company LLCAll claims unpatentable
  PTAB · Mar 23, 2015 · CBM2014-00012 · APJ Trenton A Ward · CBM · Final written decision

  Claims 1, 13, 14, 18, 30, and 31 are unpatentable under § 101 because they claim the abstract idea of advancing funds based on future retirement payments without meaningful additional limitations.

  RulingsFinal written decision

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Term construed patent owner constructionDecided for patent owner

    “To construe means-plus-function language in a claim, one “must look to the specification and interpret that language in light of the corresponding structure, material, or acts described therein, and equivalents thereof, to the extent that the specification provides such disclosure.” In re Donaldson Co., 16 F.3d 1189, 1193 (Fed. Cir. 1994) (en banc). More particularly, to construe properly the limitations in claims 13 and 30 reciting “means for causing said . . . payments . . . to be deposited into said account,” the limitations “shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.” 35 U.S.C. § 112, ¶ 6.5 As noted by Patent Owner (PO Resp. 34–35), the corresponding structure within the specification supporting the means-plus-function limitation is described as follows: “[b]enefits source 12 of system 10 5 Section 4(c) of the AIA re-designated 35 U.S.C. § 112, ¶ 6, as 35 U.S.C. § 112(f). Because the ’582 patent has a filing date before September 16, 2012 (effective date), we will refer to the pre-AIA version of § 112. disburses retirement payments directly to an individual direct deposit account 14 in a designated depository 16. Preferably, this is accomplished utilizing the well-known technique of electronic funds transfer.” PO Resp. 34–35 (quoting Ex. 1003, col. 5, ll. 18–22). Accordingly, we construe “means for causing . . . to be deposited into said account,” recited in claims 13 and 30, to require “disbursing directly to said account utilizing an electronic funds transfer.”” slip op. at 8

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Plain and ordinary meaningDecided for petitioner

    “For method claims 1 and 18, however, we are not persuaded by Patent Owner’s argument that the term “deposited” should similarly be interpreted to mean “deposited via direct deposit.” PO Resp. 35–39. More particularly, claims 1 and 18 do not contain means-plus-function limitations, like claims 13 and 30, that must be construed according to the corresponding structure within the specification. Furthermore, Patent Owner fails to point to any support in the specification of the ’582 patent that would require the construction of the term “deposited” to mean a direct deposit or electronic funds transfer. If an inventor acts as his or her own lexicographer, the definition must be set forth in the specification “with reasonable clarity, deliberateness, and precision.” Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1249 (Fed. Cir. 1998) (citations omitted). The specification of the ’582 patent does not set forth expressly a definition of “deposited.” In fact, as noted above, the ’582 patent states that deposits are “[p]referably” conducted with the “well-known technique of electronic funds transfer.” The specification does not limit the term “deposited” to this implementation. Ex. 1003, col. 5, ll. 20–22 (emphasis added). Even in cases where the specification describes only a single embodiment, the claims are not necessarily limited to that embodiment. Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012) (It is not enough that the only embodiment, or all of the embodiments, contain a particular limitation to limit a claim to that particular limitation.). Here, the specification itself indicates that electronic deposits are preferable, but not required. Therefore, we do not adopt Patent Owner’s proposed construction of “deposited” recited in claims 1 and 18 as limited to “deposited via direct deposit.”” slip op. at 9

  • BurdenDecided for petitioner

    “We agree with Petitioner and determine that it has made a sufficient showing to support its §101 challenge. Neither the claims nor the specification of the ʼ582 patent describes particularly complex technological implementations or modifications of these technologies requiring the explanation of an expert. 35 U.S.C. § 6(a). In fact, the ’582 patent itself states that it describes implementing electronic funds transfer and direct deposit by “utiliz[ing] existing computer capabilities” and “utilizing the well-known technique of electronic funds transfer.” Ex. 1003, col. 5, l. 2; col. 5, ll. 21–22 (emphasis added). Furthermore, the “without encumbering” limitation discussed above expresses an easily understood concept and recites no specific technological mechanism for achieving its result.” slip op. at 21

  • Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionUnpatentable

    “In accordance with the Supreme Court’s “framework for distinguishing patents that claim . . . abstract ideas from those that claim patent-eligible applications of those concepts,” we must first “determine whether the claims at issue are directed to one of those patent-ineligible concepts.” Alice, 134 S.Ct. at 2355. In Alice, the Supreme Court determined that the claims at issue were “drawn to the concept of intermediated settlement,” i.e., the use of a third party to mitigate settlement risk. Id. Furthermore, the Supreme Court determined that “[l]ike the risk hedging in Bilski [v. Kappos, 561 U.S. 593 (2010)], the concept of intermediated settlement is ‘a fundamental economic practice long prevalent in our system of commerce.’” Alice, 134 S.Ct. at 2356 (citations omitted). With respect to the first step of the “Mayo framework,” the Supreme Court concluded in Alice that “there is no meaningful distinction between the concept of risk hedging in Bilski and the concept of intermediated settlement” in Alice and that “[b]oth are squarely within the realm of ‘abstract ideas’ as we have used that term.” Alice, 134 S.Ct. at 2357. Here, Petitioner argues that Patent Owner’s claims are directed to the abstract concept of advancing funds based on future retirement payments. Reply 4. Patent Owner does not dispute this. In the related case, CBM2013-00014, Patent Owner’s counsel stated at the oral hearing that Patent Owner is “happy to accept what they claim is the abstract concept” with respect to the challenged claims of the ’582 patent. CBM2013-00014, Paper 32 (Oral Hearing Transcript), 40; see CBM2013-00014 Final Decision, 13. Similar to the concept of intermediated settlement in Alice and the concept of risk hedging in Bilski, we find that the concept of advancing funds based on future retirement payments is an economic practice long prevalent in our system of commerce and squarely within the realm of abstract ideas.” slip op. at 14

  Patent outcomesUS 6,625,582 unpatentable
  Claim construction§ 101 eligibilitycites Alice · Mayo · Bilski · Phillips · Graham
  Patents in suitUS 6,625,582
• Toshiba Corporation v. Optical Devices, LLCInstitution denied
  PTAB · Mar 10, 2015 · IPR2014-01440 · APJ Glenn J Perry · IPR · Institution

  The Board denied institution on claims 48–53 because Toshiba had not shown a reasonable likelihood that Bailey anticipates them.

  RulingsInstitution decision

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

    “inter partes review may not be instituted “unless . . . 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).” slip op. at 2

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

    “by Ando. See supra Sec. I.A. “A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). On this record and for the reasons set forth below, we are persuaded that Petitioner demonstrates a reasonable likelihood of prevailing in the challenges to claims 48–53 of the ’913 patent.” slip op. at 11

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “the claim terms “retroreflected” and “retroreflection,” we agree with Patent Owner. Contrary to Petitioner’s assertions, Bailey does not describe Figure 3 as exhibiting retroreflected radiant energy or retroreflection. Nor does Bailey explain that object 12 is at the focal point of lens 57, or that the reflection of an incident ray is in a manner such that the reflected ray is parallel to the incident ray for any angle of incidence. Further, Petitioner has not identified in Bailey a description that its Figure 2 embodiment generates a collimated beam of light. See Prelim. Resp. 32. Moreover, although we recognize the apparent expertise of Dr. Hesselink (see Ex. 1008 ¶¶ 2–4), we note that his testimony regarding retroreflection relies only upon assumptions made with respect to Bailey’s Figure 3 (see id. ¶ 33). As Patent Owner correctly notes, it is insufficient to rely on a schematic diagram alone to define precise proportions of elements shown in such a diagram. Id. ¶¶ 32–33 (citing Hockerson-Halberstadt, Inc. v. Avia Group Int’l, 222 F.3d 951, 956 (Fed. Cir. 2000)). For these reasons, we determine that Petitioner has not established that radiant energy is retroreflected in Bailey.” slip op. at 15

  • Prior constructionPrior construction adoptedDecided for petitioner

    “(“the 302 panel”) construed this term. Ex. 1006, 8. The parties agree that the term “focal plane” should be construed here, as it was construed by the 302 panel, to mean “a plane through the focus perpendicular to the axis of an optical element.” Pet. 13; Prelim. Resp. 10. We are persuaded that, for purposes of this decision, the 302 panel’s construction is the broadest reasonable construction consistent with the ordinary and customary meaning of the term and with the Specification of the ’913 patent and adopt it.” slip op. at 7

  Claim construction§ 102 anticipation
• K-40 Electronics, LLC v. Escort, Inc.Some claims unpatentable
  PTAB · Sep 29, 2014 · IPR2013-00240 · APJ Trenton A Ward · IPR · Final written decision

  Claims 1–6, 11–12, 15–18, 22–33, 41–72, and 74–85 are unpatentable; claims 36–38 were not shown unpatentable, because the prior art did not establish their continuous-signal location tracking limitation.

  RulingsFinal written decision

  • BurdenDecided for petitioner

    “In order to establish an actual reduction to practice, [a party] must establish three things: ‘(1) construct[ion of] an embodiment or perform[ance of] a process that met all the [claim] limitations [ ]; [ ](2) . . . determin[ation] that the invention would work for its intended purpose,’” and “(3) the existence of sufficient evidence to corroborate inventor testimony regarding these events.” Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1169 (Fed. Cir. 2006) (quoting Cooper v. Goldfarb, 154 F.3d 1321, 1327, 1330 (Fed. Cir. 1998)). “A ‘rule of reason’ analysis is applied to determine whether the inventor’s prior conception testimony has been corroborated.” Price v. Symsek, 988 F.2d 1187, 1195 (Fed. Cir. 1993). slip op. at 11

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference is prior artDecided for petitioner

    “Here, the only evidence of the successful reduction to practice of the claimed invention for its intended purpose prior to January 27, 1998 is the testimony of the inventor, Mr. Orr. “It has long been the case that an inventor’s allegations of earlier invention alone are insufficient—an alleged date of invention must be corroborated.” In re NTP, Inc., 654 F.3d at 1291 (citing Medichem, 437 F.3d at 1170; Woodland Trust v. Flowertree Nursery, Inc., 148 F.3d 1368, 1371 (Fed. Cir. 1998)). We conclude that the record is lacking sufficient evidence corroborating Mr. Orr’s testimony, which alone is insufficient. In view of the foregoing, we determine that Patent Owner has failed to prove by a preponderance of the evidence its claim of reduction to practice of the claims 1–6, 15–16, 22–29, 33, 41–52, 54–66, 68–72, 75, 77–83, and 85 of the ’905 patent prior to January 27, 1998. Therefore, Hoffberg and Fleming, III are prior art to the ’905 patent.” slip op. at 17

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

    “forth in the challenged claims of related U.S. Patent No. 7,999,721 at issue in IPR2013–00203. For the same reasons set forth in the ’203 Decision at pages 6–8, we are not persuaded by Patent Owner’s argument that “correlates to a police signal” should be construed to mean an undefined determination made by comparing a received signal to the attributes of actual police signals. Accordingly, we construe “provide an alert if a received electromagnetic signal correlates to a police signal” as “provide an alert if a received electromagnetic signal correlates to one or more characteristics of a police signal.” 2. “position determining circuit” Claim 1 recites “a position determining circuit generating a location signal.” Ex. 1001, col. 25, l. 50 (emphasis added). Independent claims 43 and 68 provide similar recitations regarding a “position determining circuit.” Patent Owner proposes that “position determining circuit” should be construed to mean “a device for receiving information related to geographic locations.” PO Resp. 22. Patent Owner made similar arguments with respect to the “position determining circuit” set forth in the challenged claims of related U.S. Patent No. 7,999,721 at issue in IPR2013–00203. For the same reasons set forth in the ’203 Decision at pages 6–8, we determine that the “position determining circuit” must be involved in determining the position of the device, rather than merely receiving information related to geographic locations of the device, as proposed by Patent Owner. Accordingly, we construe “position determining circuit” as “a circuit for determining a position of a device.”” slip op. at 7

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed

    “We are not persuaded by Patent Owner’s arguments because they are not commensurate with the scope of the claims. As discussed above, we construe the phrase “provide an alert if a received electromagnetic signal correlates to a police signal” as “provide an alert if a received electromagnetic signal correlates to one or more characteristics of a police signal.” The ’905 patent Specification describes that this correlation may be implemented based on “any of the techniques” described in the many patents incorporated by reference in the Specification. Ex. 1001, col. 8, ll. 50–56. Therefore, the correlate limitation recited in the independent claims can involve many prior art techniques, such as those disclosed in Hoffberg. For example, Petitioner argues that Hoffberg discloses the use of a “commercially available radar detector.” Pet. Reply 15 (citing Ex. 1002, col. 33, ll. 9–15). More particularly, Hoffberg discloses “an event sensor is provided, such as a police radar and laser speed detection system (e.g., “radar detector”)” to detect signals and determine whether they correlate to a law enforcement signal. Ex. 1002, col. 33, ll. 9–15. We determine, therefore, that Hoffberg discloses the claimed correlating limitation. Based on the evidence presented, we conclude that Petitioner has established by a preponderance of evidence that Hoffberg discloses all limitations of independent claims 1, 43, 54, 68, and 81. Patent Owner does not address dependent claims 2–4, 15, 17–18, 22–24, 28–29, 31–33, 41–42, 44–48, 53, 55–57, 59–60, 64–65, 67, 69–72, 76–80, and 82–84 with separate, specific arguments against the anticipation challenge based on Hoffberg. See PO Resp. 28–38. As to dependent claims 2–4, 15, 17–18, 22–24, 28–29, 31–33, 41–42, 44–48, 53, 55–57, 59–60, 64–65, 67, 69–72, 76–80, and 82–84, Petitioner provides sufficient evidence to show that Hoffberg discloses the additional recited limitations in those claims. Pet. 20–26, 28–32, 34–48. For example, Petitioner argues that the claim 15 limitation that the information associated with geographic locations includes information identifying rejectable signals at a geographic location is met by Hoffberg’s disclosure that “further information is also stored, such as a time of the event, its character or nature, and other quantitative or qualitative aspects.” Pet. 21 (quoting Ex. 1002, col. 18, l. 64–col. 19, l. 4 (emphasis omitted)). In a further example, Petitioner argues that the claim 28 requirement that the police warning receiver include “storage for vehicle history information identifying vehicle activities including geographic locations” is met by Hoffberg’s disclosure that the “memory stores information describing the event as well as the location of the event.” Pet. 29 (quoting Ex. 1002, col. 22, ll. 18–29 (emphasis omitted)).” slip op. at 20

  Patent outcomesUS 6,670,905 mixed
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 6,670,905
• K-40 Electronics, LLC v. Escort, Inc.All claims unpatentable
  PTAB · Aug 27, 2014 · IPR2013-00203 · APJ Trenton A Ward · IPR · Final written decision

  Claims 1–10 are unpatentable: claims 1–10 are anticipated by Hoffberg, claims 2–8 and 10 by Fleming, III, and claims 2–10 are obvious over Fleming, III and Hoffberg.

  RulingsFinal written decision

  • BurdenDecided for petitioner

    “In order to establish an actual reduction to practice, [a party] must establish three things: ‘(1) construct[ion of] an embodiment or perform[ance of] a process that met all the [claim] limitations [ ]; [ ](2) . . . determin[ation] that the invention would work for its intended purpose,’” and “(3) the existence of sufficient evidence to corroborate inventor testimony regarding these events.” Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1169 (Fed. Cir. 2006) (quoting Cooper v. Goldfarb, 154 F.3d 1321, 1327, 1330 (Fed. Cir. 1998)). “A ‘rule of reason’ analysis is applied to determine whether the inventor’s prior conception testimony has been corroborated.” Price v. Symsek, 988 F.2d 1187, 1195 (Fed. Cir. 1993). slip op. at 11

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

    “We are not persuaded by Patent Owner’s argument that “correlates to a law enforcement signal” should be construed to mean an undefined determination made by comparing a received signal to the attributes of actual police signals. As Patent Owner stated in the Specification, there are numerous techniques known in the prior art for comparing a received signal to known characteristics of law enforcement signals. See Ex. 1001, col. 8, ll. 45-52. Furthermore, as noted by the Petitioner, Patent Owner’s expert, Dr. Grindon, stated that standard examples of correlating a received signal to a law enforcement signal include adjusting city/highway signal detection thresholds and making sure a signal is present through several sweeps. Pet. Reply 12 (citing Ex. 1019, 36:15-37:4; 37:5-18). Therefore, as generally set forth in the disclosures of standard correlation techniques incorporated into the ’721 patent by reference, correlating a received signal must be interpreted broadly as analyzing one or more characteristics of a received signal in comparison with the known characteristics of law enforcement signals. Accordingly, in light of the Specification and in the context of the claims, we construe “providing a warning if a received signal correlates to a law enforcement signal” as “providing a warning if a received signal correlates to one or more characteristics of a law enforcement signal.”” slip op. at 7

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportReference is prior artDecided for petitioner

    “Patent Owner fails to provide any objective evidence to corroborate Mr. Orr’s testimony that he reduced to practice the GPS lockout concept and associated position determining circuit prior to January 27, 1998 other than the tst4600k.bas file (Ex. 2086), which he concedes does not incorporate the position determining circuit. See Ex. 2073, ¶¶ 79-95. For example, Mr. Orr states in his Declaration that he “used the laptop and the spacebar in the laboratory in Stage 1 to illustrate the GPS lockout concept to other CMI employees,” but failed to cite any evidence to corroborate this testimony. Id. ¶ 80. Furthermore, Mr. Orr states in his Declaration that “my prototype had a position determining circuit” and an alert section that would “alter and/or not provide the alert if the location signal correlated to a location of a rejectable signal.” Id. ¶ 92. Patent Owner fails, however, to cite to any evidence to corroborate this testimony by Mr. Orr. See id. ¶¶ 80, 92. Mr. Orr was questioned at the oral hearing as to whether there was any evidence in the record of the successful test results or observations of the GPS lockout feature that Mr. Orr alleged to have reduced to practice in his Declaration. Tr. 39:15–41:5. During the hearing, Mr. Orr testified that he was not aware of any documents submitted in the record by Patent Owner providing such test results or observations. See id. In addition to a failure to provide sufficient objective evidence supporting the actual reduction to practice by the 1996 prototype of the position determining circuit and the associated GPS lockout concept, Patent Owner fails to provide sufficient corroborating testimony by others that witnessed Mr. Orr’s prototype successfully implementing the GPS lockout concept. Specifically, Patent Owner submitted testimony from four declarants, fellow employees of Mr. Orr at CMI: (1) Beth Andrews (Ex. 2053), (2) Gregory Blair (Ex. 2054), (3) Jim Brandon (Ex. 2055), and (4) Daniel Kindel (Ex. 2056). Ms. Andrews and Mr. Blair testified only that in 1996, the GPS lockout concept was a desired feature for a future radar detector product by CMI. See Ex. 2053 ¶¶ 3-4; Ex. 2054 ¶¶ 3-5. Neither Ms. Andrews nor Mr. Blair testified, however, that they witnessed or even were aware of an actual reduction to practice of a prototype demonstrating the GPS lockout concept. See Ex. 2053 ¶¶ 3-4; Ex. 2054 ¶¶ 3-5. Mr. Kindel testified that in 1996, Mr. Orr was conducting research into the benefits and feasibility of adding GPS to a radar detector, but Mr. Kindel failed to state that he witnessed an actual reduction to practice of such a prototype. See Ex. 2056 ¶ 3-6. Finally, Mr. Brandon testified that during his time at CMI, he was aware that Mr. Orr was working on a GPS enabled radar detector prototype prior to 1998 and the “purpose of this prototype was to mark the locations of false radar signals.” Ex. 2055 ¶ 2-3. Mr. Brandon fails, however, to state that he witnessed or even was aware of an actual reduction to practice of such a prototype. See id. Here, the only evidence of the successful reduction to practice of the position determining circuit and the associated GPS lockout concept of the claimed invention for its intended purpose prior to January 27, 1998 is the testimony of the inventor, Mr. Orr. “It has long been the case that an inventor’s allegations of earlier invention alone are insufficient—an alleged date of invention must be corroborated.” In re NTP, Inc., 654 F.3d at 1291 (citing Medichem, 437 F.3d at 1170; Woodland Trust v. Flowertree Nursery, Inc., 148 F.3d 1368, 1371 (Fed. Cir. 1998)). We conclude that the record is lacking sufficient evidence corroborating Mr. Orr’s testimony, which alone is insufficient. In view of the foregoing, we determine that Patent Owner has failed to prove by a preponderance of the evidence its claim of reduction to practice of the challenged claims prior to January 27, 1998. Therefore, Hoffberg and Fleming, III are prior art to the ’721 patent.” slip op. at 15

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “Hoffberg.2 Pet. 19-38. “A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987).” slip op. at 17

  Patent outcomesUS 7,999,721 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 7,999,721
• U.S. Bancorp v. Retirement Capital Access Management CompanyAll claims unpatentable
  PTAB · Aug 22, 2014 · CBM2013-00014 · APJ Trenton A Ward · CBM · Final written decision

  Claims 1, 13, 14, 18, 30, and 31 are unpatentable under § 101 because they claim an abstract economic concept without meaningful additional limitations.

  RulingsFinal written decision

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Decided for patent owner

    “To construe means-plus-function language in a claim, one “must look to the specification and interpret that language in light of the corresponding structure, material, or acts described therein, and equivalents thereof, to the extent that the specification provides such disclosure.” In re Donaldson Co., Inc., 16 F.3d 1189, 1193 (Fed. Cir. 1994) (en banc). More particularly, to construe properly the limitations in claims 13 and 30 reciting a “means for causing said future retirement payments . . . to be deposited into said account,” the limitations “shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.” 35 U.S.C. § 112, ¶ 6.3 As noted by Patent Owner (PO Resp. 29), the corresponding structure within the specification supporting the means-plus-function limitation states the following: “[b]enefits source 12 of system 10 disburses retirement payments directly to an individual direct deposit account 14 in a designated depository 16. Preferably, this is accomplished utilizing the well-known technique of electronic funds transfer.” Ex. 1003, col. 5, ll. 18–22. Accordingly, we construe “means for causing . . . to be deposited into said account,” recited in claims 13 and 30, to mean “disbursing directly to said account utilizing an electronic funds transfer.”” slip op. at 7

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Plain and ordinary meaningDecided for petitioner

    “Unlike the means-plus function claims, we are not persuaded by Patent Owner’s argument that the term “deposited” in method claims 1 and 18 should similarly be interpreted to mean “deposited via direct deposit.” PO Resp. 30–33. Patent Owner fails to point to any support in the specification of the ’582 patent that would require the construction of the term “deposited” to mean a direct deposit or electronic funds transfer. If an inventor acts as his or her own lexicographer, the definition must be set forth in the specification with reasonable clarity, deliberateness, and precision. Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1249 (Fed. Cir. 1998). The specification of the ’582 patent does not set forth expressly a definition of “deposited.” In fact, as cited above, the ’582 patent states that deposits are “[p]referably” conducted with the “well-known technique of electronic funds transfer,” but the specification does not limit the term “deposited” to this implementation. Ex. 1003, col. 5, ll. 20–22 (emphasis added). Even in cases where the specification describes only a single embodiment, the claims are not necessarily limited to that embodiment. Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012) (It is not enough that the only embodiment, or all of the embodiments, contain a particular limitation to limit a claim to that particular limitation.). Here, the specification itself indicates that electronic deposits are preferable, but not required. Therefore, we do not adopt Patent Owner’s proposed construction of “deposited” recited in claims 1 and 18 as limited to “deposited via direct deposit.”” slip op. at 8

  • Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionUnpatentable

    “In accordance with the Supreme Court’s “framework for distinguishing patents that claim . . . abstract ideas from those that claim patent-eligible applications of those concepts,” we must first “determine whether the claims at issue are directed to one of those patent-ineligible concepts.” Alice Corp., 132 S.Ct. at 2355. In Alice Corp., the Supreme Court determined that the claims at issue were “drawn to the concept of intermediated settlement,” i.e., the use of a third party to mitigate settlement risk. Id. Furthermore, the Supreme Court determined that “[l]ike the risk hedging in Bilski [v. Kappos, 561 U.S. 593 (2010)], the concept of intermediated settlement is ‘a fundamental economic practice long prevalent in our system of commerce.’” Alice Corp., 132 S.Ct. at 2356 (citations omitted). With respect to the first step of the “Mayo framework,” the Supreme Court concluded in Alice Corp. that “there is no meaningful distinction between the concept of risk hedging in Bilski and the concept of intermediated settlement” in Alice Corp. and that “[b]oth are squarely within the realm of ‘abstract ideas’ as we have used that term.” Alice Corp., 132 S.Ct. at 2357. Here, Petitioner argues that Patent Owner’s claims are directed to the abstract concept of advancing funds based on future retirement payments. Reply 4. Patent Owner does not disagree. Tr. 40 (Patent Owner’s counsel stated at the oral hearing that Patent Owner is “happy to accept what [Petitioner] claim[s] is the abstract concept.”). Similar to the concept of intermediated settlement in Alice Corp. and the concept of risk hedging in Bilski, we find that the concept of advancing funds based on future retirement payments is an economic practice long prevalent in our system of commerce and squarely within the realm of abstract ideas.” slip op. at 12

  • Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptStep2 no inventive conceptUnpatentable

  Patent outcomesUS 6,625,582 unpatentable
  Claim construction§ 101 eligibilitycites Alice · Mayo · Bilski · Phillips · Graham
  Patents in suitUS 6,625,582
• Hewlett-Packard Company v. MCM Portfolio, LLCAll claims unpatentable
  PTAB · Aug 6, 2014 · IPR2013-00217 · APJ Jennifer S Bisk · IPR · Final written decision

  Claims 7, 11, 19, and 21 are unpatentable as obvious over Kobayashi and Kikuchi.

  RulingsFinal written decision

  • PTAB / AIA Trials › Constitutional / APA (Arthrex, Oil States, due process)Decided for petitioner

    “proceedings violate the Seventh Amendment. PO Resp. 2-13. The U.S. Court of Appeals for the Federal Circuit, however, has previously rejected this argument in the context of reexaminations. Patlex Corp. v. Mossinghoff, 758 F.2d 594, 603-05 (Fed. Cir. 1985) (holding that even when applied retroactively, the reexamination statute does not violate the jury trial guarantee of the Seventh Amendment); see also Joy Techs., Inc. v. Manbeck, 959 F.2d 226, 228-29 (Fed. Cir. 1992) (affirming the holding in Patlex), other grounds superseded by statute, 35 U.S.C. § 145, as recognized in In re Teles AG Informationstechnologien, 747 F.3d 1357 (Fed. Cir. 2014). Inter partes review proceedings continue the basic functions of the reexamination proceedings at issue in Patlex—authorizing the Office to reexamine the validity of an issued patent and to cancel any claims the Office concludes should not have been issued. Patent Owner does not identify any constitutionally-significant distinction between reexamination proceedings and inter partes review proceedings. Thus, for the reasons articulated in Patlex, we conclude that inter partes reviews, like reexaminations, comply with the Seventh Amendment.” slip op. at 4

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

    “the broadest reasonable construction in light of the ’549 patent specification. 37 C.F.R. § 42.100(b). For the purposes of the decision to institute we expressly construed the following terms: (1) “flash adapter” and “flash adapter section” as “a section of the controller chip that enables communication with the flash storage system” and (2) “bad block mapping” as a type of error correction. Decision 5-6. In the post-institution briefs, the parties do not dispute these constructions. See Paper 23 (“PO Resp.”); Paper 24 (“Reply”). For purposes of this decision, we continue to apply these constructions.” slip op. at 5

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

    “Kikuchi. Pet. 42-57 (citing Ex. 1008 (Declaration of Dr. Sanjay Banerjee) ¶¶ 102-122). In particular, HP asserts that Kobayashi discloses every limitation of the challenged claims except the details of error correction. Id. at 47-48. HP relies on Kikuchi as describing the recited error correction. Id. at 48-49. In addition, HP asserts that it would have been obvious to one of ordinary skill in the art at the time of the invention to combine the teachings of the two references, which both describe ATA controllers that work with flash-memory cards with, or without, on-card controllers, in order to “reliably retain stored data.” Pet. 50 (citing Ex. 1008 ¶ 121 (quoting Ex. 1007 (Kikuchi), 4:1-3)). We are persuaded that a preponderance of the evidence demonstrates that the combination of Kobayashi and Kikuchi discloses each of the limitations of the challenged claims, as presented in HP’s Petition. See Pet. 42-57; Ex. 1008 ¶¶ 102-122. We are also persuaded that a preponderance of the evidence demonstrates that a person of ordinary skill in the art would have combined the Kobayashi and Kikuchi references. See Pet. 50; Ex. 1008 ¶ 121.” slip op. at 9

  • BurdenDecided for petitioner

    “We are persuaded that a preponderance of the evidence demonstrates that the combination of Kobayashi and Kikuchi discloses each of the limitations of the challenged claims, as presented in HP’s Petition. See Pet. 42-57; Ex. 1008 ¶¶ 102-122. We are also persuaded that a preponderance of the evidence demonstrates that a person of ordinary skill in the art would have combined the Kobayashi and Kikuchi references. See Pet. 50; Ex. 1008 ¶ 121.” slip op. at 9

  Patent outcomesUS 7,162,549 unpatentable
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 7,162,549
• Motorola Solutions, Inc. v. Mobile Scanning Technologies, LLCAll claims unpatentable
  PTAB · Apr 24, 2014 · IPR2013-00093 · APJ Brian J Mcnamara · IPR · Final written decision

  Claims 18–20 are unpatentable: claim 18 is anticipated by Ruppert and the PPT4100 Manual; claims 18–20 are obvious over both stated combinations.

  RulingsFinal written decision

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

    “It is noteworthy that neither Patent Owner nor Dr. Sidhu cites to any disclosure in the ’880 Patent specification supporting the importation of a synchronization function into the claims or to any support for Patent Owner’s proposed definition of synchronization. See, Ex. 1047, 175, 177. Claim 18 includes the term PDA in its preamble, but limits the claimed subject matter to a PDA comprising a single embedded PDA design incorporating specific physical elements. Claim 18 does not recite the functionality described by Patent Owner and Dr. Sidhu, nor does the ’880 Patent specification discuss such functionality as an element of PDA design.” slip op. at 6

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableInherency foundUnpatentable

    “In that decision, we determined that Ruppert discloses a personal scanning device that comprises a bar code scanner coupled to a specially programmed digital computer that can use the output of the bar code reader. Ex. 1019, col. 4, ll. 34-39. Ruppert’s personal scanner has a display screen 12 on a front face of the housing and a communications port 40 on the bottom, id., Fig. 1, as recited in element (a) of claim 18. Within the housing, Ruppert discloses in Figure 3 that barcode scanner 46 is connected to microprocessor 40, which also is connected to a serial or parallel bi-directional data communications interface and port 85. Id. at col. 8, ll. 21-28. We have construed the microcontroller recited in claim 18 to include a microprocessor. Ruppert discloses that the microprocessor is electrically coupled to the interface connector, as recited in element (b) of claim 18. As recited in element (c) of claim 18, Ruppert is configured to emit a light beam, including a laser light beam, through scan window 18 at the top end of the housing. Id. at col. 5, ll. 44-55, Fig. 1. We also have determined that Ruppert inherently discloses an analog-to-digital converter electrically coupled to a photo-detector, as recited in elements (d) and (e) of claim 18. Dec. to Institute 25.” slip op. at 10

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

    “recited in claim 19, which we discussed in our Decision to Institute at pages 31-33, is disclosed by Dvorkis. Id. Patent Owner argues that Petitioner has failed to establish that the references disclose the characteristics of a PDA, i.e., a personal assistance application and the ability to synchronize data with a host computer, or that the inclusion of a synchronization feature would have been obvious to one of ordinary skill in the art. Id. As we have discussed previously, claims 18, 19, and 20 are not limited to performing a synchronization function, nor does the ’880 Patent disclose such a feature, as Patent Owner argues distinguishes the claims over Ruppert and Dvorkis. PO Resp. 19-20. For this reason, we conclude that the preponderance of the evidence demonstrates that claims 18-20 would have been obvious over the combination of Ruppert and Dvorkis. We would reach the same conclusion, even under Patent Owner’s proposed construction of PDA.9 Ruppert discloses a personal scanning device, i.e., one used by a shopper, who, upon entering a store, downloads a price list from a store’s computer, Ex. 1019, col. 6, ll. 1-18; col. 8, ll. 21-35, scans items into the device while shopping, and checks out by transferring the scanned information to the store’s computer. Id. at col. 3, ll. 43, 47; Fig, 5; col. 9, ll. 54-61; col. 11, ll. 11-26. Even under Patent Owner’s construction, Ruppert discloses that it would have been obvious for a PDA with the claimed structure to run a personal application that synchronizes its data to a host computer. Thus, even applying Patent Owner’s construction to the claims, we conclude that the claims 18-20 would have been obvious over the combination of Ruppert and Dvorkis.” slip op. at 15

  • Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner

    “Mintz v. Dietz & Watson, Inc., 679 F.3d 1372, 1378 (Fed. Cir. 2012). Patent Owner argues that Petitioner’s Enterprise Mobility Division enjoyed net sales of nearly three billion USD in 2013 and, since its failed alliance with 3Com, Petitioner and the acquired Symbol Technologies company have generated an estimated 25 billion USD in sales. PO Resp. 22-23. Where the patent is said to cover a feature or component of a product, the patent owner has the burden of showing that the commercial success derives from the feature. Tokai Corp., v. Easton Enters., 632 F. 3d 1358, 1369 (Fed. Cir. 2011). Where that feature is found in the product of another, there must be proof that the feature falls within the claims. E.g., Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387, 1392 (infringer’s counsel stated at trial that the patent had been copied); Hughes Tool Co. v. Dresser Indus., Inc., 816 F.2d 1549, 1552 (Fed. Cir. 1987) (patented Oring seal copied by defendant). Patent Owner has provided as Exhibits 3016-3019 documentation concerning certain graphics calculators. However, Patent Owner has made no showing of any nexus between these graphics calculator products and Petitioner’s sales and, more importantly, no nexus between Petitioner’s sales, the graphics calculators, and the subject matter recited in the claims. Considering all the evidence, including the objective indicia cited by Patent Owner, we conclude that the preponderance of the evidence demonstrates that claims 18-20 would have been obvious.” slip op. at 17

  Patent outcomesUS 6,065,880 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 6,065,880

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.