- Ebay Inc. / Alibaba.Com Hong Kong Ltd. et al. v. Global Equity Management (SA) Pty. Ltd.All claims unpatentablePTAB · Apr 19, 2018 · IPR2016-01829 · APJ Kevin C Trock · IPR · Final written decision
Claims 1, 2, 6, and 7 are unpatentable as obvious over Hermann, the BootMagic User Guide, and the ACPI Specification.
RulingsFinal written decision- Skill levelSkill level board ownDecided for petitioner
“In assessing the probative value of an expert opinion, [the Board] must consider three factors: (1) the interest in the outcome of the case, (2) the presence or absence of factual support for the expert’s opinion, and (3) the strength of any opposing evidence.” EC Data Sys., Inc. v. J2 Global, Inc., No. 2014-008203, 2014 WL 7171966, at *4 (PTAB Dec. 15, 2014) (citing Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281 (Fed. Cir. 1985)); see also Ex Parte Magna Elecs., Inc., No. 2013-004164, 2014 WL 2360424, at *3 (PTAB May 28, 2014) (expert who “was employed by Patent owner when he provided the expert opinion . . . has a substantial interest in the outcome of the case”). Given Mr. Rafizadeh’s admitted personal and financial interest in the outcome of this case, we give his testimony less weight. We therefore find that a person of ordinary skill in the art relevant to the ’677 patent would have had a bachelor’s degree in computer science, computer engineering, or the equivalent, and between about two to four years’ experience in computer operating systems, programs and databases, and/or graphical user interfaces or virtualization. slip op. at 14
- Expert testimonyDecided for petitioner
“In assessing the probative value of an expert opinion, [the Board] must consider three factors: (1) the interest in the outcome of the case, (2) the presence or absence of factual support for the expert’s opinion, and (3) the strength of any opposing evidence.” EC Data Sys., Inc. v. J2 Global, Inc., No. 2014-008203, 2014 WL 7171966, at *4 (PTAB Dec. 15, 2014) (citing Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281 (Fed. Cir. 1985)); see also Ex Parte Magna Elecs., Inc., No. 2013-004164, 2014 WL 2360424, at *3 (PTAB May 28, 2014) (expert who “was employed by Patent owner when he provided the expert opinion . . . has a substantial interest in the outcome of the case”). Given Mr. Rafizadeh’s admitted personal and financial interest in the outcome of this case, we give his testimony less weight. slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Patent Owner’s arguments are not persuasive because nonobviousness cannot be established by attacking references individually where, as here, the ground of unpatentability is based upon the teachings of a combination of references. In re Keller, 642 F.2d 413, 426 (CCPA 1981). Rather, the test for obviousness is whether the combination of references, taken as a whole, would have suggested the patentee’s invention to a person of ordinary skill in the art. In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986).” slip op. at 31
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“attorney argument, Patent Owner provides no evidence that these commercial systems utilize the claimed invention. See id. at 44–47; Pet. Reply 20–22. Patent Owner, for example, does not map any of the limitations recited in claim 1 to any particular feature of these commercial systems. See id. Assuming, arguendo, that these services use the claimed invention, Patent Owner has not presented any evidence that the claimed invention contributes to the commercial success of these systems. Patent Owner argues that “the fast switching afforded by the [’]677 [p]atent has provided each of these companies with the ability to provide their customers with an incredible amount of data at the tip of their fingertips at amazing speeds.” Id. at 48. The quote from AWS’s website, however, indicates that its cloud service constitutes “a broad set of infrastructure services” and other items. Ex. 2025. The allegedly “fast switching afforded by the ’677 patent,” even if true, therefore, would be only one feature of a much larger system. Patent Owner does not show these services employed the same switching technique, and does not quantify any switching speeds. Even assuming, however, some switching mechanism is employed by these services, “[w]hen the thing that is commercially successful is not coextensive with the patented invention—for example, if the patented invention is only a component of a commercially successful machine or process—the patentee must show prima facie a legally sufficient relationship between that which is patented and that which is sold.” Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387, 1392 (Fed. Cir. 1988); see also Polaris Industries, Inc. v. Artic Cat, Inc., 882 F.3d 1056 (Fed. Cir. 2018) (citing Demaco, 851 F.2d at 1392, and stating “[p]ut another way, ‘objective evidence of non-obviousness must be commensurate in scope with the claims which the evidence is offered to support.’” (quoting In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983)).” slip op. at 43
Patent outcomesUS 7,356,677 unpatentable§ 103 obviousnesscites GrahamPatents in suitUS 7,356,677 - Ebay Inc. / Alibaba.Com Hong Kong Ltd. et al. v. Global Equity Management (SA) Pty. Ltd.All claims unpatentablePTAB · Apr 18, 2018 · IPR2016-01828 · APJ Kevin C Trock · IPR · Final written decision
Claims 1 and 2 are unpatentable as obvious over the Partition Magic 3.0 User Guide because it teaches or suggests all claim limitations, and the secondary considerations lack evidentiary support and nexus.
RulingsFinal written decision- Prior constructionPrior construction adoptedDecided for petitioner
“Reply 6. At oral argument, Petitioner’s counsel and Patent Owner’s counsel both agreed that the district court’s construction in the Lead Case with respect to the claim term “virtual cabinet” was acceptable. Tr. 18: 18–20; 25: 6–8, 17–20; 28: 10–13; 31: 8–15; 39: 1–5; 40: 5–8; 41: 13–17. The district court construed the term “virtual cabinet” as follows: “‘virtual cabinet,’ ‘cabinet record,’ and ‘virtual cabinet record’ each means ‘virtual storage device, capable of containing, typically through the use of virtual table of content pointers, all (or partitions of) shared (or non-shared) operating systems, application software (both OS dependent and No-OS embedded), databases and memory.’” Ex. 1010, 32–33. The district court’s construction of “virtual cabinet” is derived from the ’400 patent’s definition of the term “cabinet.” See e.g. Ex. 1001, 2:47–52; 5:24–29. The ’400 patent equates the terms “cabinet,” “Cabinet Record,” and “Virtual Cabinet.” Id. at 2:46–47; 5:22–24. Because the district court’s construction of “virtual cabinet” is reasonable and is based upon the express definition of “cabinet” found in the ’400 patent, we accept and adopt the district court’s construction.” Our analysis does not require the express construction of any additional claim terms.” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner
“preamble of claim 1 should be considered limiting.” PO Resp. 21. We note that this is the opposite position Patent Owner took in the Lead Case, where Patent Owner argued that the preamble is not limiting. See Ex. 1010, 20–21. In the Lead Case, the district court found that the preamble of claim 1 was not limiting. Id. at 25. We agree with the district court. As the district court pointed out, “[t]he preamble simply states the intended use of the” graphical user interface—i.e., “for displaying means for allocating a computer device’s resources to multiple operating system environments, partitioned on individual virtual cabinets, on said computer device.” Id. Moreover, the district court noted “[t]here is nothing in the prosecution history that establishes that the preamble was used to overcome a prior art rejection” and, “[t]o the contrary, the patentee expressly distinguishes the prior art using limitations found in the body of the claim, not using the preamble.” Id. Even if the preamble were limiting, however, we would still not be persuaded by Patent Owner’s argument that the graphical user interface taught by Figure 3.7 of the 3.0 User Guide “is limited to partitioning hard disk space, and fails to allocate any other computer resources such as memory” (PO Resp. 22) because those arguments are not commensurate with the scope of the preamble, which does not recite allocating all of a computer device’s resources or allocating memory specifically. On the contrary, the preamble is satisfied if any of a computer device’s resources are allocated to multiple operating system environments.” slip op. at 14
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner argues that Patent Owner’s proposed level of skill is unreasonably high. Pet. Reply 11–12. Petitioner argues that Mr. Rafizadeh, a named inventor on the ’400 patent, would not qualify as a POSITA under Patent Owner’s proposed standard, because Mr. Rafizadeh did not start working on virtualization until 1997, and would not have had four years of experience in virtualization as of the filing date of the ’400 patent application. Id. (citing Ex. 1026, 22:4–6; Ex. 2007 ¶¶ 21–22). Moreover, Petitioner argues, the other individuals Mr. Rafizadeh believed to be POSITAs at the time of the invention—such as Parviz Moayyad, Peter Druschell, and Jeff Barnes—all had been working on virtualization for only two years as of 1999, and thus would not have qualified as POSITAs under Patent Owner’s proposed level of skill. Id. at 12 (citing Ex. 1026, 54:11–20, 56:2–10). Petitioner also notes that Patent Owner’s Declarant, Dr. Rosenberg, proposed a definition of a POSITA that did not require four years of experience in virtualization. Id. (citing Ex. 2002 ¶ 33). We agree with Petitioner that Patent Owner’s proposed level of skill is unreasonably high. The educational background and experience of those working in the field, including the inventor, are factors considered, among others, in determining the appropriate level of ordinary skill. Daiichi Sankyo Co., Ltd. v. Apotex, Inc., 501 F.3d 1254, 1257 (Fed. Cir. 2007). Here, however, Patent Owner proposes years of experience in computer virtualization beyond that held by the inventor and other acknowledged skilled artisans working in the field at the time of the claimed invention. Accordingly, we decline to adopt Patent Owner’s proposed years of experience in virtualization and find that a POSITA would be a person with a bachelor’s degree in computer science, computer engineering, or the equivalent, having between two to four years of experience in computer operating systems, programs and databases, and/or graphical user interfaces or virtualization.” slip op. at 7
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“Our construction of “virtual cabinet” requires only that a virtual cabinet is capable of containing operating systems, application software, databases and memory, and that this is accomplished typically by using content pointers. See also Ex. 1001, 2:47–52. The 3.0 User Guide teaches that “partitions will be like file cabinet drawers in which you can separate your operating systems, applications, and data files” (Pet. 29–30, quoting Ex. 1005, 3), and that “you should create primary partitions to install operating systems” (Pet. 29, quoting Ex. 1005, 38), allowing users “to make the currently selected partition the active partition” (id., quoting Ex. 1005, 79). The 3.0 User Guide also teaches that “[a] primary partition may contain any operating system (OS) as well as data files, such as applications and user files.” Pet. Reply 16 (quoting Ex. 1005, 126). Thus, we are persuaded that the primary partitions illustrated in Figure 3.7 and taught by the 3.0 User Guide are “capable of containing . . . operating systems, application software . . ., databases, and memory,” as required by our construction, thereby teaching the recited “cabinet selection button bar graphically representing at least one virtual cabinet.”” slip op. at 19
Patent outcomesUS 6,690,400 unpatentableClaim construction§ 103 obviousnessPatents in suitUS 6,690,400 - Cisco Systems, Inc. / Arris Group, Inc. v. TQ Delta, LLCRehearing deniedPTAB · Mar 28, 2018 · IPR2016-01007 · APJ Trevor M Jefferson · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, finding no overlooked or misapprehended matter in its claim construction, obviousness analysis, or handling of reply evidence and argument.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). The party must identify specifically all matters we misapprehended or overlooked, and the place where each matter was addressed previously in a motion, an opposition, or a reply. Id. With this in mind, we address the arguments presented by Patent Owner.” slip op. at 2
- Strike new argumentNew argument consideredDecided for petitioner
“on evidence and argument that Patent Owner objected to as being improper new reply arguments. Req, Reh’g 9–10. Patent Owner does not identify any specific evidence cited in the Final Written Decision that rely on improper new reply arguments from Petitioner. Patent Owner argues that we abused our discretion by authorizing it to” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Patent Owner’s issue is based on a sentence in the claim construction analysis of “during Showtime” in the Final Written Decision that states, “[w]e are not persuaded by Patent Owner’s negative construction, which excludes initialization from normal communication.” The “not” in that sentence is a mistake. In an Errata mailed concurrently herewith, we correct that sentence in the Final Written Decision to read “[w]e are persuaded by Patent Owner’s negative construction, which excludes initialization from normal communication.” The construction in the Final Written Decision is consistent with our discussion that notes that “[t]he parties agree that ‘during Showtime’ is a term of art that encompasses normal communication, which follows the completion of initialization and handshaking, for known DSL standards and protocols.” Dec. 8 (citing PO Resp. 6–7; Reply 10; Kiaei Decl. ¶ 43). Our Final Written Decision also noted that “[t]here is also no dispute that ‘during Showtime’ is intended to distinguish initialization and training.” Dec. 9 (citing PO Resp. 7–8; Reply 9; Tr. 21:19–23:11).” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“Patent Owner also argues that we overlooked its argument, in its Preliminary Response, that it would not have been obvious to combine Milbrandt with ANSI T1.413. Req. Reh’g 6–7. We addressed this argument in our Final Written Decision and found it unpersuasive.2 Dec. 32–34. Contrary to Patent Owner’s arguments (Req. Reh’g 6–7), we addressed Patent Owner’s arguments and did not rely on impermissible evidence. Our Final Written Decision noted that Patent Owner’s argument did not comport with the express text of ANSI T1.413 and credited the Petitioner’s argument and evidence in support of the combination. Dec. 33–34 (citing Ex. 1011, 9:31–34; Ex. 1100 ¶ 38; Ex. 1009 ¶¶ 86–87; Ex. 1011, 9:31–34).” slip op. at 5
Claim construction§ 103 obviousnessPatents in suitUS 8,432,956 - Hamamatsu Corporation v. Sionyx, LLCSome claims unpatentablePTAB · Mar 28, 2018 · IPR2016-01910 · APJ Monica S Ullagaddi · IPR · Final written decision
Claims 1, 2, 4–11, 13–18, 21, and 23–25 were held unpatentable; claims 12 and 26 were not, based on the stated anticipation and obviousness grounds.
RulingsFinal written decision- BurdenMixed
“In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). This burden never shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (citing Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1326–27 (Fed. Cir. 2008)) (discussing the burden of proof in inter partes review). Furthermore, Petitioner cannot satisfy its burden of proving obviousness by employing “mere conclusory statements.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016). Thus, to prevail in an inter partes review, Petitioner must explain how the prior art anticipates the challenged claims and how the proposed combinations of prior art would have rendered the challenged claims unpatentable. We analyze the challenges presented in the Petition in accordance with the above-stated principles. slip op. at 16
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner’s declarant, Dr. Souri, testifies that a person of ordinary skill in the art relevant to the ’591 patent “would hold a bachelor’s degree in physics, electrical engineering, or a related discipline, and have at least one year of experience working in the field of semiconductor processing or optoelectronic device design.” Ex. 1010 ¶ 32; Pet. 8. Patent Owner applies Petitioner’s proposed level of ordinary skill in the art for purposes of this proceeding. PO Resp. 7 n.2. Based on our review of the ’591 patent, the types of problems and solutions described in the ’591 patent and cited prior art, the testimony of Petitioner’s and Patent Owner’s declarants, and the arguments and evidence adduced at trial, we agree with and apply Petitioner’s definition of a person of ordinary skill in the art at the time of the claimed invention. See Inst. Dec. 14–15.” slip op. at 17
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“that it would not affect incident light.7 We agree with Petitioner that Nakashiba’s “contact surface S1 is exposed to air, which has a refractive index of about 1, and is formed on a silicon substrate, which has an index of refraction between 3.5-6.5, depending on the wavelength of light,” and “[t]hus, there will be an interaction (reflection and/or refraction) with [incident] light at the contact surface S1.” Reply 6 (citing Ex. 1014 ¶¶ 30, 31); see id. at 7. We credit the testimony of Dr. Souri, who testifies as to differences in the refractive indices of air, silicon, and a finger, and that, when there is a change in refractive index between materials, there is an interaction with light. See Ex. 2012, 119:22–121:16. Dr. Souri further testifies that [W]hen light is incident upon a boundary between materials of different refractive index, both refraction and reflection occur, as is depicted in the diagram above. The fraction of incident light that is refracted, and the fraction which is reflected, may be calculated by Fresnel’s equations, using the angles of incidence and refraction given by Snell’s law. . . . [A] person of ordinary skill in the art would understand that these reflection and refraction effects constitute an interaction with electromagnetic radiation; and, consequently, said person would understand that the roughened surface S1 of Nakashiba satisfies the requirements of the term “interact” as used in the claims of the ’591 patent.” slip op. at 23
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“a textured region interacting with electromagnetic radiation in a manner that results in an enhanced response and/or filtering of the radiation, the embodiments do not require the textured region to provide this enhanced response and/or filtering and further, do not define the term “interaction” as an enhanced response or filtering. See Liebel-Flarsheim, 358 F.3d at 908 (“[T]he specification does not describe the invention as limited to embodiments having pressure jackets, and none of the other reasons that have been invoked for giving claims a narrow reading are present.”). The claim language “interact with” is plainly broader than Patent Owner’s proffered construction, and the “position” limitations can be read to encompass features not described in the written description. See Liebel-Flarsheim, 358 F.3d at 908 (“The fact that a patent asserts that an invention achieves several objectives does not require that each of the claims be construed as limited to structures that are capable of achieving all of the objectives.”)” slip op. at 9
Patent outcomesUS 8,680,591 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,680,591 - Cisco Systems, Inc. v. TQ Delta, LLCAll claims unpatentablePTAB · Mar 12, 2018 · IPR2016-01760 · APJ Trevor M Jefferson · IPR · Final written decision
Claims 1, 2, 4, 11, 12, 14, 16, and 18 are unpatentable as obvious over Bowie and Yamano; Patent Owner’s motion to exclude is denied.
RulingsFinal written decision- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“We are not persuaded by Patent Owner’s arguments which are grounded in the ADSL standard applicable to Bowie. Patent Owner has not provided persuasive evidence or argument that the xDSL improvements in Yamano would alter the ADSL compliance of Bowie to discourage the combination of Bowie and Yamano. PO Resp. 37–39 (citing Ex. 2005 ¶¶ 23, 24, 26, 124–132). Instead, we credit the testimony of Petitioner’s declarant, who testifies that “a POSITA would understand Yamano’s burst mode to be compatible with the ANSI standard because low power mode operation is just an additional function that the standard permits.” Ex. 1012 33 ¶ 23. Thus, we disagree with Patent Owner that Bowie and Yamano are incompatible.” slip op. at 33
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Petitioner’s Declarant Testimony Patent Owner argues that we should ignore Petitioner’s declarant testimony because it is contradictory, and lacks credibility and objective support. PO Resp. 56–59. Specifically, Patent Owner argues that [Petitioner’s declarant,] Dr. Kiaei’s testimony is not reliable or credible, and the Board should give it no weight in evaluating Petitioner’s arguments. See 37 C.F.R. § 42.65(a); Icon Health, 849 F.3d at 1041 (the Board is entitled to “weigh the declarations and conclude that the lack of factual corroboration warrants discounting the opinions expressed”) (quoting In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004)); Rohm & Haas, 127 F.3d at 1092 (noting that “[n]othing in the rules [of evidence] or in our jurisprudence requires the fact finder to credit the unsupported assertions of an expert witness”); In re Nuvasive, 842 F.3d at 1379-1380 (noting that an agency’s factual determination should be based on “such relevant evidence as a reasonable mind might accept as adequate to support a conclusion”).” slip op. at 25
- ExcludeMotion to exclude, deniedDenied
“A motion to exclude is not a vehicle to argue that a reply contains new arguments. See Vibrant Media, Inc. v. General Electric Co., IPR2013- 00170, slip op. at 31 (PTAB June 26, 2014) (Paper 56). We agree with Petitioner, that a motion to exclude is available to parties to explain why certain evidence is inadmissible, and is not the proper place to raise arguments regarding the scope of a reply. Trial Practice Guide, 77 Fed. Reg. 48756, 48767 (Aug. 14, 2012); Liberty Mutual Insurance Co. v. Progressive Casualty Insurance Co., Case No. CBM2012-00002, slip op. at 62 (PTAB Jan. 23, 2014) (Paper 66) (stating that a motion to exclude “is not a mechanism to argue that a reply contains new arguments or relies on evidence necessary to make out a prima facie case”). We also agree with Petitioner that Patent Owner has not carried its burden to show that the identified paragraphs of Exhibit 1012 and Exhibit 1016 are not admissible under the Fed. R. Evid. 402 and 403. Rule 401 of the Federal Rules of Evidence states that evidence is relevant if “it has any tendency to make a fact more or less probable than it would be without the evidence.” Fed. R. Evid. 401. We find that Petitioner has met the threshold to establish that the evidence Patent Owner seeks to exclude is relevant. See OddzOn Prods., Inc. v. Just Toys, Inc., 122 F.3d 1396, 1407 (Fed. Cir. 1997); Laird Techs., Inc. v. GrafTech Int’l Holdings, Inc., IPR2014-00025, slip op. at 44 (PTAB Mar. 25, 2015).” slip op. at 42
- Strike new argumentNew argument consideredDecided for petitioner
“Having reviewed Patent Owner’s listing of statements and evidence in connection with Petitioner’s Reply it deemed to be beyond the proper scope of a reply, and Petitioner’s response, we do not agree with Patent Owner that portions of Petitioner’s Reply are beyond the scope of a proper reply. The mere fact that a petitioner submits rebuttal testimony that relies on new evidence not previously identified in the petition does not suffice to establish its impropriety. Indeed, the very nature of a reply is to rebut the Patent Owner’s response. 37 C.F.R. § 42.23(b). For example, Patent Owner identifies evidence and argument addressed in Petitioner’s Reply to claim construction issues first raised in Patent Owner’s Response. See, e.g., Paper 23 (items 1 and 2); Paper 28 (citing PO Resp. 19–24 as supporting Petitioner’s response to items 1 and 2). Finding that Petitioner’s response to Patent Owner’s claim construction identification is an improper new 43 argument would deprive Petitioner of the ability to address Patent Owner’s claim construction evidence and argument introduced after Institution. Having fully considered Patent Owner’s list of alleged new arguments in Petitioner’s Reply and Petitioner’s identification of the portions in Patent Owner’s Response that prompted Petitioner’s Reply, we do not find that Petitioner introduced improper new argument and evidence that is beyond the scope of a proper reply. Our Order in this proceeding states that “the panel is capable of determining whether new argument/evidence is outside the proper scope of a reply when writing the final written decision.” Paper 22, 3. In this case, we do not agree with Patent Owner that the portions of Petitioner’s Reply and evidence identified in Paper 23 are beyond the scope of a proper reply. Petitioner’s reply argument and evidence are sufficiently responsive to Patent Owner’s argument and evidence introduced in Patent Owner’s response.” slip op. at 43
Patent outcomesUS 9,094,268 unpatentable§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,094,268 - DISH Network, LLC v. TQ Delta, LLCAll claims unpatentablePTAB · Feb 10, 2018 · IPR2016-01469 · APJ Trevor M Jefferson · IPR · Final written decision
Claims 1, 2, 11, and 12 are unpatentable over Bowie, Morelli, and ANSI T1.413; claims 4, 14, 16, and 18 are unpatentable over Bowie and Morelli.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“Having considered the parties’ arguments and evidence, we do not agree with Patent Owner’s proposed construction that “maintaining synchronization” requires timing synchronization by correcting errors or differences between timing references. The claims of the ’268 patent do not recite “synchronization signal” or “synchronization frame” but refer only to “maintaining synchronization” during low power mode without specification as to the method of synchronization. See, e.g., Ex. 1001, 10:6–17 (claims 1 and 2). Indeed, claims 2 and 12 do not recite any particular synchronization signal or synchronization frame as a limitation.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“In light of the arguments and evidence presented, we are not persuaded that this term requires an express construction. Patent Owner’s proposed construction does not add necessary clarity to the claims, as it merely replaces “full power mode operation” with “transmission and/or reception of data during normal operation.” The parties, however, do not dispute the meaning of “full power mode operation.” Accordingly, an express construction is not necessary to resolve the disputes between the parties.” slip op. at 13
- Skill levelOther
“We determine that no express finding on a specific corresponding level of technical education and experience is necessary. Here, the level of ordinary skill in the art is reflected by the prior art of record. 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).” slip op. at 14
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“Petitioner notes, Morelli expressly discusses the receiver receiving while the transmitter is in low power mode. Reply 8–9; Ex. 1005, Fig. 6A (block 102), 15:46–52; 16:29–34). Thus, Morelli does not disclose mere boilerplate language that is not specific or nonenabling, but specifically discloses a transmitter 12 and receiver 16 in Figures 6A–9 where the receiver remains on while the transmitter is off. Reply 7–8. We are not persuaded by Patent Owner’s argument regarding Morelli’s Received Signal Strength Indicator (RSSI). PO Resp. 31–32, 33–34 (discussing RSSI). We do not agree with Patent Owner that Morelli’s teaching regarding using RSSI to determine whether to enter or exit a low power (“sleep”) (Ex. 1005, Abstract) could indicate that the receiver in Morelli is performing the RSSI function to determine when data is “available to be received,” but not actually using the receiver to receive data during the transceiver’s low power mode. Id. Such speculation is belied by the express teachings of Morelli. As Petitioner argues, Morelli states that “it is equally possible to have either the transmitter 12 or receiver 16 be designed to enter a sleep mode as described herein while the other is always in an active mode” (Ex. 1005, 21:51–54). Pet. 23, 40–41. We are also persuaded by Petitioner’s argument and evidence that Morelli is enabling, as it discloses in Figures 6A–9 and accompanying embodiments that the data received by the receiver is provided to MAC 30 to determine if the received packet requires a response necessary to switch the transmitter from sleep to active mode. Reply 9; Ex. 1005, Figs. 1 (control signal on line 38), 6A (block 102), 15:46–52, 15:59–62, 16:29–34; see also Pet. 40–41 (citing Ex. 1005, 1:45–50, 6:43–51, 8:16–20, 8:46–59, Fig. 2, 8:60–9:57, Fig. 3, 14:6–64, 19:7–10, 21:51–54). As Petitioner argues, in the case when Morelli determines that a response is not required, the receiver in Morelli is on and actively receiving data to make the determination based on the data received, while the transmitter is off or sleeping. Reply 8–9; Ex. 1005, Fig. 5A, 15:46–52; see also Pet. 40–41. We also note that Petitioner has provided testimony that a person of ordinary skill in the art would have been able to configure a circuit in accordance with the operation of Morelli and Bowie combined. Ex. 1002 ¶¶ 152–153; Pet. 41; Reply 8–9. Accordingly, we determine that Morelli provides sufficient detailed disclosure teaching of a receiver in full power mode and the transmitter in low power mode as required in the challenged claims.” slip op. at 22
Patent outcomesUS 9,094,268 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,094,268 - Cisco Systems, Inc. / DISH Network, LLC et al. v. TQ Delta, LLCRehearing deniedPTAB · Feb 1, 2018 · IPR2016-01020 · APJ Matthew R Clements · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, finding no overlooked or misapprehended matter that would change its prior decision applying the prior art to the challenged claims.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). The party must identify specifically all matters we misapprehended or overlooked, and the place where each matter was addressed previously in a motion, an opposition, or a reply. Id. With this in mind, we address the arguments presented by Patent Owner.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“carrier phases.” Independent claims 13 and 20 similarly recite “scramble[s] a plurality of phases.” We adopted Patent Owner’s proposed construction in part by construing “scrambling . . . a plurality of carrier phases” to mean “adjusting the phases of a plurality of carriers in a single multicarrier symbol.” Dec. 6–9. We did not add to that construction “by pseudo-randomly varying amounts” because Patent Owner did not show why that additional language should be included for the broadest reasonable construction of the term “scrambling . . . a plurality of carrier phases.” Id. Patent Owner argues that our construction is overly broad because it encompasses adjusting the phases of every carrier in the single multicarrier symbol by the same amount. Req. Reh’g. 1–2. Such an adjustment, according to Patent Owner, would not reduce peak-to-average power ratio (“PAR”), which the parties and the panel all agree scrambling must do. Id. at 3–5. “The FWD misapprehends or overlooks that, under any proper construction, there must at a minimum be varying amounts by which the phases are adjusted within a single multicarrier symbol (i.e., from carrier-tocarrier) such that PAR is reduced.” Id. at 2.” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“technique “will increase PAR” (Dec. 27–28), but does not characterize Shively as having a “high” or “increased” PAR.4 Our Decision relies upon page 28 of Patent Owner’s Response (Paper 12), which concedes that “Shively’s ‘spreading’ technique will contribute a small uptick in clipping probability.” Patent Owner does not dispute, in its Request for Rehearing, Shively’s technique increases PAR. With respect to Patent Owner’s argument that “there is no PAR problem presented by Shively” (Req. Reh’g. 13) and “the only PAR problem in this case relates to clipping” (id. at 14), we considered that argument and found it unpersuasive. Dec. 27–28. As we noted, “Petitioner’s reason to combine does not depend on the PAR increase exceeding some specific numeric threshold,” “there also is no dispute that equipment designed to handle a higher PAR can be larger, more expensive, and more power hungry than equipment designed to handle a lower PAR,” and, therefore, “a person of ordinary skill in the art . . . would have been motivated to reduce PAR regardless of whether Shively’s technique resulted in clipping.” Id. In other words, as we explained in our Decision, Shively’s PAR need not result in clipping in order to motivate a person of ordinary skill in the art because we are persuaded such a person would have been motivated sufficiently to reduce PAR by the benefit of being able to use smaller, less expensive, less power hungry components.” slip op. at 8
Claim construction§ 103 obviousnessPatents in suitUS 9,014,243 - Cisco Systems, Inc. / DISH Network, LLC et al. v. TQ Delta, LLCRehearing deniedPTAB · Feb 1, 2018 · IPR2016-01021 · APJ Sally C Medley · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving intact the final written decision finding the challenged claims unpatentable.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). The party must identify specifically all matters we misapprehended or overlooked, and the place where each matter was addressed previously in a motion, an opposition, or a reply. Id. With this in mind, we address the arguments presented by Patent Owner.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“construction in part by construing “scrambling the phase characteristics of the carrier signals” to mean “adjusting the phases of a plurality of carriers in a single multicarrier symbol.” Dec. 8–11. We did not add to that construction “by pseudo-randomly varying amounts” because Patent Owner did not show why that additional language should be included for the broadest reasonable construction of the term “scrambling the phase characteristics of the carrier signals.” Id. Patent Owner argues that our construction is overly broad because it encompasses adjusting the phases of every carrier in the single multicarrier symbol by the same amount. Req. Reh’g. 2–3. Such an adjustment, according to Patent Owner, would not reduce peak-to-average power ratio (“PAR”), which the parties and the panel all agree scrambling must do. Id. at 3–6. “The FWD misapprehends or overlooks that, under any proper construction, there must at a minimum be varying amounts by which the phases are adjusted within a single multicarrier symbol (i.e., from carrier-to-carrier) such that PAR is reduced.” Id. at 2.” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“With respect to Patent Owner’s argument that “there is no PAR problem presented by Shively” (Req. Reh’g. 14) and “the only PAR problem in this case relates to clipping” (id. at 15), we considered that argument and found it unpersuasive. Dec. 30–31. As we noted, “Petitioner’s reason to combine does not depend on the PAR increase exceeding some specific numeric threshold,” “there also is no dispute that equipment designed to handle a higher PAR can be larger, more expensive, and more power hungry than equipment designed to handle a lower PAR,” and, therefore, “a person of ordinary skill in the art . . . would have been motivated to reduce PAR regardless of whether Shively’s technique resulted in clipping.” Id. In other words, as we explained in our Decision, Shively’s PAR need not result in clipping in order to motivate a person of ordinary skill in the art because we are persuaded such a person would have been motivated sufficiently to reduce PAR by the benefit of being able to use smaller, less expensive, less power hungry components.” slip op. at 8
Claim construction§ 103 obviousnessPatents in suitUS 8,718,158 - Arris Group, Inc. v. TQ Delta, LLCNo claims unpatentablePTAB · Dec 13, 2017 · IPR2016-01160 · APJ Matthew R Clements · IPR · Final written decision
Claims 1–20 were not held unpatentable because the asserted combination did not teach the construed synchronization signal.
RulingsFinal written decision- Prior constructionPrior construction not adoptedOther
“Owner that our construction in the Decision to Institute is overly broad to the extent it encompasses a synchronization frame. Petitioner relies heavily on column 5, lines 50 to 52 of the ’404 patent, but that disclosure does not unambiguously support Petitioner’s proposed construction. The paragraph, which we reproduce below for context, describes “normal (non-sleep mode) operation”: During normal (non-sleep mode) operation, a phase-lock loop (PLL) 62 receives from the FFT 56 a timing reference signal 62a (see FIG. 1A) via a line 62b. The timing reference signal 62a is transmitted from the transmitter with which the receiver 16 communicates (e.g., the CO transmitter). This signal is advantageously a pure tone of fixed frequency and phase which is synchronized with the Master Clock in the transmitter; its frequency defines the frame rate of the transceivers. Other forms of timing signal may, of course, be used, but use of a pure tone has the advantage of simplicity and reliability even when portions of the transceiver are powered down in accordance with the invention. The PLL 62 locks itself to this signal and drives clock 30 in synchronism with the Master Clock in the driving transmitter. This also synchronizes frame counter 34 of the CPE transceiver to the corresponding frame counter of the CO transceiver. Control of the receiver section is provided by the controller 32. Ex. 1001, 5:37–53 (emphasis added to 5:50–52). Rather than read “this” as referring to timing reference signal 62a, as Petitioner contends, we read “this” as referring to what is disclosed in the preceding sentence—i.e., driving clock 30 in synchronism with the Master Clock in the driving transmitter. The synchronism of clock 30 with the Master Clock in the driving transmitter is what “synchronizes frame counter 34 of the CPE transceiver to the corresponding frame counter of the CO transceiver.” Ex. 1001, 5:50–52.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Having considered the arguments and evidence, we are not persuaded that this term requires an express construction. Patent Owner’s proposed construction merely replaces “full power mode operation” with “transmission and/or reception of data during normal operation.” The parties, however, do not dispute the meaning of “full power mode operation.” As a result, an express construction of this term is not necessary in order to resolve the parties’ dispute.” slip op. at 10
- Skill levelOther
“We determine that no express finding on a specific corresponding level of technical education and experience is necessary. Here, the level of ordinary skill in the art is reflected by the prior art of record. 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).” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“We agree with Patent Owner. The contentions in the Petition are based upon Petitioner’s proposed construction of “synchronization signal” as encompassing a synchronization frame—i.e., “allowing for frame synchronization.” See, e.g., Pet. 24, 37–38. We have not adopted that construction, however, for the reasons discussed above. Because our construction of “synchronization signal” excludes a synchronization frame, we are not persuaded that the argument and evidence in the Petition shows that the combination of Bowie, Vanzieleghem, and ANSI T1.413 teaches transmitting/receiving, in full power mode, a “synchronization signal.” Moreover, we agree with Patent Owner that Petitioner’s reliance, in the Reply, upon the teachings of a pilot tone in Vanzieleghem and ANSI T1.413 constitutes a change in theory and, therefore, is beyond the scope of a proper reply. Notwithstanding the mention of “a pilot tone” in paragraph 58 of Dr. McNally’s declaration, the Petition itself unambiguously identifies the synchronization frame, not a pilot tone, as the recited “synchronization symbol.” See, e.g., Pet. 37–38 (citing Bowie’s and ANSI T1.413’s teachings of synchronization frame). We, therefore, do not address whether the pilot tone taught in Vanzieleghem and in ANSI T1.413 teaches the recited “synchronization signal.” As a result, Petitioner has not shown, by a preponderance of the evidence, that claims 1–20 would have been obvious over Bowie, Vanzieleghem, and ANSI T1.413.” slip op. at 15
Patent outcomesUS 8,611,404 not shown unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,611,404 - PTAB · Nov 14, 2017 · IPR2015-01802 · APJ Matthew R Clements · IPR · Rehearing
Granted rehearing and held claims 2, 4, and 6 unpatentable as obvious over Rabinovich because the wireless-network limitation encompasses a connection through a wireless hub.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“II. STANDARD OF REVIEW A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). The party must identify specifically all matters we misapprehended or overlooked, and the place where each matter was addressed previously in a motion, an opposition, or a reply. Id. With this in mind, we address the arguments presented by Petitioner.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“Ex. 1002, 3:41–49. Thus, the ’680 patent itself does not limit the recited “wireless network” to an ad hoc network. Moreover, we are not persuaded by Patent Owner’s contention that our construction of “computer unit” requires limiting the recited “wireless network” to an ad hoc network. Specifically, dependent claims 2 and 4 each recite “wherein the at least one computer unit and the at least two data storage units are connected over a wireless network.” Dependent claim 6 recites a similar limitation. We construed “computing unit” to encompass any computing device. Dec. 6. We did not, as Patent Owner contends, “construe[] both the ‘computer unit’ and ‘data storage units’ as hosts” (PO Br. 3). Although our construction encompasses Rabinovich’s hosts, it does not require the recited “computer unit” and “data storage units” to be hosts. Moreover, even assuming that both units are Rabinovich’s “hosts,” dependent claims 2, 4, and 6 require only that they be “connected over a wireless network,” not “between” or “directly connected to each other,” as Patent Owner contends (PO Br. 3). Thus, we are not persuaded by Patent Owner’s contention that two hosts “connected over a wireless network” necessarily requires a wireless connection “between” two hosts. Id. Based on our review of the ’680 patent, we construe “connected over a wireless network” as broad enough to encompass a connection through a wireless hub.” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“Ex. 1002, 3:41–49. Thus, the ’680 patent itself does not limit the recited “wireless network” to an ad hoc network. Moreover, we are not persuaded by Patent Owner’s contention that our construction of “computer unit” requires limiting the recited “wireless network” to an ad hoc network. Specifically, dependent claims 2 and 4 each recite “wherein the at least one computer unit and the at least two data storage units are connected over a wireless network.” Dependent claim 6 recites a similar limitation. We construed “computing unit” to encompass any computing device. Dec. 6. We did not, as Patent Owner contends, “construe[] both the ‘computer unit’ and ‘data storage units’ as hosts” (PO Br. 3). Although our construction encompasses Rabinovich’s hosts, it does not require the recited “computer unit” and “data storage units” to be hosts. Moreover, even assuming that both units are Rabinovich’s “hosts,” dependent claims 2, 4, and 6 require only that they be “connected over a wireless network,” not “between” or “directly connected to each other,” as Patent Owner contends (PO Br. 3). Thus, we are not persuaded by Patent Owner’s contention that two hosts “connected over a wireless network” necessarily requires a wireless connection “between” two hosts. Id. Based on our review of the ’680 patent, we construe “connected over a wireless network” as broad enough to encompass a connection through a wireless hub. Because we determine that the “wireless network” recited in dependent claims 2, 4, and 6 need not be an ad hoc network, Patent Owner’s argument that Rabinovich’s replication method would have been unsuitable for use over an ad hoc network does not persuasively rebut Petitioner’s showing. Having considered the arguments and evidence of both parties, we are persuaded that Petitioner has shown by a preponderance of the evidence that dependent claims 2, 4, and 6 are unpatentable under 35 U.S.C. § 103(a) as obvious over Rabinovich.” slip op. at 7
- ExcludeNot reached
“We decline to assess the merits of Petitioner’s Motion to Exclude. Even without excluding the identified evidence, we have concluded that Petitioner has demonstrated, by a preponderance of the evidence, that claims 2, 4, and 6 are unpatentable. Accordingly, Petitioner’s Motion to Exclude is dismissed as moot.” slip op. at 8
Claim construction§ 103 obviousnessPatents in suitUS 7,904,680
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.