• Machinex Industries, Inc. v. JJG IP Holdings, LLCAll claims unpatentable
  PTAB · Oct 4, 2021 · IPR2020-00899 · APJ Michael L Woods · IPR · Final written decision

  Claims 1–16 are unpatentable under the asserted §103 grounds, including combinations based on Carlsohn and Arleth.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “B. Level of Ordinary Skill in the Art In determining whether an invention would have been obvious at the time it was made, we consider the level of ordinary skill in the pertinent art at the time of the invention. Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17 (1966). citations will be to the exhibits’ page numbers, rather than the native page numbers. 4 By e-mail communication from the Board on June 25, 2020, we authorized Petitioner to file a corrected Exhibit 1008. Our reference to Exhibit 1008 is to the corrected, second-filed exhibit, filed on July 7, 2020. Factors pertinent to a determination of the level of ordinary skill in the art include: (1) educational level of the inventor; (2) type of problems encountered in the art; (3) prior art solutions to those problems; (4) rapidity with which innovations are made; (5) sophistication of the technology; and (6) educational level of workers active in the field. Environmental Designs, Ltd. v. Union Oil Co., 713 F.2d 693, 696–97 (Fed. Cir. 1983) (citing Orthopedic Equip. Co. v. All Orthopedic Appliances, Inc., 707 F.2d 1376, 1381–82 (Fed. Cir. 1983)). Not all such factors may be present in every case, and one or more of these or other factors may predominate in a particular case. Id. Moreover, these factors are not exhaustive but are merely a guide to determining the level of ordinary skill in the art. Daiichi Sankyo Co. Ltd, Inc. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007). In determining a level of ordinary skill, we also may look to the prior art, which may reflect an appropriate skill level. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). In the Institution Decision, we determined that a person having” slip op. at 9

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner

    “plain and ordinary meaning, and determined that the plain and ordinary meaning of “proximate” is “nearby. Inst. Dec. 18. Accordingly, we construed “disposed proximate to a visible or infrared source,” as recited in Limitation 1(c), to mean “disposed nearby” the visible or infrared source. See id. We further note that during prosecution of the ’346 patent, the applicant acknowledged that the term “‘proximate’ is broad in its scope.” See Ex. 1020, 70 (emphasis added).” slip op. at 20

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

    “1. Relevant Law Petitioner bears the burden of establishing by a preponderance of the” slip op. at 27

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

    “3. Independent Claim 1 We address the claim limitations using Petitioner’s nomenclature as” slip op. at 41

  Patent outcomesUS 9,950,346 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 9,950,346
• Platform Science, Inc. v. Omnitracs, LLCRehearing granted
  PTAB · Sep 3, 2021 · IPR2020-01612 · APJ Bart A Gerstenblith · IPR · Rehearing

  The Board granted rehearing and instituted IPR on all petition grounds for claims 1–4, 6–9, 11, 12, and 15, finding a reasonable likelihood of prevailing.

  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 request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id. When rehearing a decision on a petition, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c).” slip op. at 2

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

    “preliminary stage, we determine that Petitioner demonstrates a reasonable likelihood of prevailing with respect to claim 1.” slip op. at 44

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

    “The only dispute pertaining to claim construction at this stage of the proceeding is whether the phrase “a process for creating said response message,” recited in claim 1, is governed by 35 U.S.C. § 112 ¶ 6.6 Petitioner 6 As noted above, Petitioner raises a second claim construction issue in its Rehearing Request. See Req. Reh’g 12–15 (asserting that the claims require only one instance of copying information from a formatted message to a response message based on which formatted message was received). Petitioner did not raise this issue in the Petition, Patent Owner has not had an contends that the phrase should be interpreted as a means-plus-function limitation, whereas Patent Owner contends that it should not. Compare Pet. 2–7 (advocating for a means-plus-function construction), with Prelim. Resp. 9–11 (advocating for an ordinary and customary meaning). At this stage of the proceeding, the dispute between the parties regarding the construction of this claim phrase does not impact our Decision. Accordingly, we need not construe expressly any claim terms for the purpose of this Decision.” slip op. at 17

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

    “VI. ANALYSIS Legal Standards – Anticipation “[A] claim is anticipated ‘if each and every limitation is found expressly or inherently in a single prior art reference.’” King Pharm., Inc. v. Eon Labs., Inc., 616 F.3d 1267, 1274 (Fed. Cir. 2010) (quoting Celeritas Techs., Ltd. v. Rockwell Int’l Corp., 150 F.3d 1354, 1361 (Fed. Cir. 1998)). Anticipation is a question of fact, In re Gleave, 560 F.3d 1331, 1334–35 (Fed. Cir. 2009), assessed from the perspective of one of ordinary skill in the art, see Dayco Prods., Inc. v. Total Containment, Inc., 329 F.3d 1358, 1368 (Fed. Cir. 2003) (“the dispositive question regarding anticipation [i]s whether one skilled in the art would reasonably understand or infer from the [prior art reference’s] teaching that every claim element was disclosed in that single reference” (alteration in original) (quotation omitted)).” slip op. at 18

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 6,925,308
• Platform Science, Inc. v. Omnitracs, LLCInstitution denied
  PTAB · Apr 13, 2021 · IPR2020-01613 · APJ Bart A Gerstenblith · IPR · Institution

  The Board denied institution because the petition did not show a reasonable likelihood of proving claims 1–3 and 5–15 unpatentable over Milewski, or claims 1–3, 7–9, and 12 obvious over Milewski and Heijden.

  RulingsInstitution decision

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

    “analysis. Petitioner maps the action message shown in Milewski’s Figure 4 to the recited “formatted message” (see, e.g., Pet. 32 (“Figure 4 shows an exemplary screen display of an action message (the ‘formatted message’) presented to the recipient at the receiver communication station.”)), while also mapping Figure 4 to the recited “response message” (see, e.g., id. at 37 (identifying Figure 4 as the “completed reply form (response message)”)). Milewski describes Figure 4 as both the action message and reply form. Compare Ex. 1007, 7:38–39 (“FIG. 4 is a screen of the action message 400 displayed by the controller at the recipient’s station.” (emphasis added)), with id. at 9:11–15 (“In an operation 803, the controller renders the action message body in a reply form shown in FIG. 4 to the recipient using standard World Wide Web protocols and processes (HyperText Transaction Protocols-HTTP; HyperText Mark Up Language-HTML).” (emphasis added)). Milewski appears to explain the basis for its terminology by stating that “[t]hroughout the description, structured responses may also be classified as an ‘action message’ as more descriptive of the reply sought by a sender.” See id. at 5:56–59. The problem Patent Owner identifies with Petitioner’s analysis, however, is that Petitioner fails to explain where Milewski indicates copying information from the action message to the reply form when the action message and reply form appear to be the same. In support of its argument regarding copying, Petitioner cites to column 7, lines 44 through 52, of Milewski. That section states the following: Upon marking the selected response, the recipient completes the response to the action message. In the present instance, the recipient has marked the “other” response and provides text in a field 408 as a response to the text in field 402. A field 410 is available for additional comments which the sender authorized to be entered by checking the field 212 in template 200. In this case, the recipient has chosen not to provide any additional comments. Ex. 1007, 7:44–52. We find that there is nothing in this section that expressly supports Petitioner’s contention that information is copied from the action message to the reply form, especially in light of Milewski’s indication that the action message is the reply form. Furthermore, Petitioner fails to explain sufficiently why a skilled artisan would view this passage as describing the alleged copying.” slip op. at 29

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)No construction neededNot reached

    “The only dispute pertaining to claim construction at this stage of the proceeding is whether the phrase “a process for creating said response message,” recited in claim 1, is governed by 35 U.S.C. § 112 ¶ 6. Petitioner contends that the phrase should be interpreted as a means-plus-function limitation, whereas Patent Owner contends that it should not. Compare Pet. 3–7 (advocating for a means-plus-function construction), with Prelim. Resp. 9–11 (advocating for an ordinary and customary meaning). At this stage of the proceeding, the dispute between the parties regarding the construction of this claim phrase does not impact our Decision. Accordingly, we need not construe expressly any claim terms for the purpose of this Decision.” slip op. at 13

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Level of Ordinary Skill in the Art Petitioner, supported by Mr. Andrews’s testimony, proposes that a person of ordinary skill in the art at the time of the invention would have had at least a Bachelor of Science degree (or equivalent) in electrical engineering, computer engineering, computer science, or a related technical field, and at least 2–3 years of experience in the fields of messaging systems, and wireless communication devices, or an equivalent advanced education in the field of messaging systems, including wireless communication devices. Pet. 12 (citing Ex. 1003 ¶ 28). Patent Owner “does not dispute Petitioner’s offered level of ordinary skill in the art” for purposes of this proceeding. Prelim. Resp. 8. At this stage of the proceeding, we find Petitioner’s proposal consistent with the level of ordinary skill in the art reflected by the ’308 patent and 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), and, therefore, we adopt Petitioner’s unopposed position as to the level of ordinary skill in the art for purposes of this Decision.” slip op. at 12

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

    “analysis. Petitioner maps the action message shown in Milewski’s Figure 4 to the recited “formatted message” (see, e.g., Pet. 32 (“Figure 4 shows an exemplary screen display of an action message (the ‘formatted message’) presented to the recipient at the receiver communication station.”)), while also mapping Figure 4 to the recited “response message” (see, e.g., id. at 37 (identifying Figure 4 as the “completed reply form (response message)”)). Milewski describes Figure 4 as both the action message and reply form. Compare Ex. 1007, 7:38–39 (“FIG. 4 is a screen of the action message 400 displayed by the controller at the recipient’s station.” (emphasis added)), with id. at 9:11–15 (“In an operation 803, the controller renders the action message body in a reply form shown in FIG. 4 to the recipient using standard World Wide Web protocols and processes (HyperText Transaction Protocols-HTTP; HyperText Mark Up Language-HTML).” (emphasis added)). Milewski appears to explain the basis for its terminology by stating that “[t]hroughout the description, structured responses may also be classified as an ‘action message’ as more descriptive of the reply sought by a sender.” See id. at 5:56–59. The problem Patent Owner identifies with Petitioner’s analysis, however, is that Petitioner fails to explain where Milewski indicates copying information from the action message to the reply form when the action message and reply form appear to be the same. In support of its argument regarding copying, Petitioner cites to column 7, lines 44 through 52, of Milewski. That section states the following: Upon marking the selected response, the recipient completes the response to the action message. In the present instance, the recipient has marked the “other” response and provides text in a field 408 as a response to the text in field 402. A field 410 is available for additional comments which the sender authorized to be entered by checking the field 212 in template 200. In this case, the recipient has chosen not to provide any additional comments. Ex. 1007, 7:44–52. We find that there is nothing in this section that expressly supports Petitioner’s contention that information is copied from the action message to the reply form, especially in light of Milewski’s indication that the action message is the reply form. Furthermore, Petitioner fails to explain sufficiently why a skilled artisan would view this passage as describing the alleged copying.” slip op. at 29

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 6,925,308
• Platform Science, Inc. v. Omnitracs, LLCInstitution denied
  PTAB · Apr 13, 2021 · IPR2020-01612 · APJ Bart A Gerstenblith · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that Coffee, alone or with Heijden, rendered any challenged claim unpatentable.

  RulingsInstitution decision

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

    “An inter partes review may be instituted only if “the information presented in the petition . . . and any [preliminary] response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). For the reasons given below, Petitioner has not established a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims of the ’308 patent. Accordingly, we do not institute an inter partes review.” slip op. at 2

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)No construction neededNot reached

    “The only dispute pertaining to claim construction at this stage of the proceeding is whether the phrase “a process for creating said response message,” recited in claim 1, is governed by 35 U.S.C. § 112 ¶ 6. Petitioner contends that the phrase should be interpreted as a means-plus-function limitation, whereas Patent Owner contends that it should not. Compare Pet. 2–7 (advocating for a means-plus-function construction), with Prelim. Resp. 9–11 (advocating for an ordinary and customary meaning). At this stage of the proceeding, the dispute between the parties regarding the construction of this claim phrase does not impact our Decision. Accordingly, we need not construe expressly any claim terms for the purpose of this Decision.” slip op. at 14

  • Skill levelSkill level petitioner adoptedOther

    “Patent Owner “does not dispute Petitioner’s offered level of ordinary skill in the art” for purposes of this proceeding. Prelim. Resp. 8. At this stage of the proceeding, we find Petitioner’s proposal consistent with the level of ordinary skill in the art reflected by the ’308 patent and 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), and, therefore, we adopt Petitioner’s unopposed position as to the level of ordinary skill in the art for purposes of this Decision.” slip op. at 13

  • BurdenNot shown unpatentable

    “analysis. Even if we assume that Coffee discloses and/or renders obvious “field-mapping information for indicating information to be copied from said formatted message to a response message,”7 Petitioner has not shown that it is “based on which one of said pre-defined formatted messages was received.” Rather, whatever information Coffee may copy appears to be the same from each formatted message (as shown in Petitioner’s comparison of 7 For purposes of this Decision, we need not decide whether Coffee in fact discloses or renders obvious this recitation of claim 1. Coffee’s Tables 58 and 63) and not based on which pre-defined formatted message was received.8 Additionally, Petitioner’s alternative arguments as to whether Coffee discloses (explicitly or inherently) and/or renders obvious field-mapping information that is stored on the MDT do not address the specific deficiency identified above and do not provide an alternative basis for finding that Coffee discloses and/or renders obvious field-mapping information for indicating information to be copied from said formatted message to a response message based on which one of said pre-defined formatted messages was received. See Pet. 33–35 (discussing explicit, inherent, and obvious alternatives). Accordingly, based on the record before us, Petitioner has not shown sufficiently that Coffee discloses and/or renders obvious limitation 1d.” slip op. at 29

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 6,925,308
• Intel Corporation v. VLSI Technology LLCSome claims unpatentable
  PTAB · Jan 12, 2021 · IPR2019-01195 · APJ Minn Chung · IPR · Final written decision

  Claims 13 and 14 are unpatentable as anticipated by Kim; claims 17, 18, and 20 were not shown unpatentable over Kim and Lee because the proposed combination was inadequately explained.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “’026 patent would have had a Master’s degree in Electrical Engineering or Computer Engineering, plus at least two years of experience in integrated circuit design, or alternatively a Bachelor’s degree in one of those fields plus at least four years of experience in integrated circuit design. Pet. 16 (citing Ex. 1102 ¶ 49). In our Institution Decision, we found Petitioner’s proposal consistent with the level of ordinary skill in the art 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), and, therefore, preliminarily adopted Petitioner’s unopposed position as to the level of ordinary skill in the art. Inst. Dec. 15. Neither Patent Owner, in its Response, nor Dr. Annavaram, in his declaration, proposes a level of ordinary skill in the art. Instead, Patent Owner states that “Patent Owner applies Petitioner’s stated skill level for this response” (PO Resp. 26), and Dr. Annavaram similarly states that “[f]or the purpose of this declaration, I adopt Dr. Harris’ definition of a [person of ordinary skill in the art]” (Ex. 2009 ¶ 24). Nothing in the full record persuades us that our preliminary finding as to the level of ordinary skill in the art was incorrect. Based on the complete record, because our preliminary finding is consistent with the level of ordinary skill in the art reflected by the prior art of record, we maintain and reaffirm that one of ordinary skill in the art at the time of the invention would have had a Master’s degree in Electrical Engineering or Computer Engineering, plus at least two years of experience in integrated circuit design, or alternatively a Bachelor’s degree in one of those fields plus at least four years of experience in integrated circuit design. Inst. Dec. 15; see Pet. 16 (citing Ex. 1102 ¶ 49).” slip op. at 10

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner

    “To the extent Patent Owner argues that these particularized selection clauses recited in different claims must have the same or similar meaning because they all use the word “selecting” (see PO Resp. 28–29), we disagree with Patent Owner. See IGT v. Bally Gaming Int’l, Inc., 659 F.3d 1109, 1117 (Fed. Cir. 2011) (“We caution that claim language must be construed in the context of the claim in which it appears. Extracting a single word from a claim divorced from the surrounding limitations can lead construction astray. Claim language must be construed in the claim in which it appears.” (emphasis added)). The selection clauses recited in these claims are plainly different on the face of the claims when considering the material differences in the claim language set forth above. According the same meaning to the limitations that recite “select . . . based on” indicators, “select . . . when” certain conditions are met, and “select . . . out of a group” of values would be improper because it would blur the material differences in the claim language recited expressly in the claims. Instead, we interpret the selection clauses recited in the challenged claims “in the context of the particular claim in which the disputed term appears” and “in the context of the entire patent, including the specification.” Phillips, 415 F.3d at 1313. In other words, we do not construe the single word “selecting” in isolation, but, rather, interpret the full selection clauses recited in the challenged claims in the context of the entire patent. Claim 13 recites “selecting, by the control circuit, a value of a control signal based on the mode indicator and on the leakage indicator.” In our view, the plain meaning of this limitation is clear on the face of the claim—a value of a control signal is selected based on two indicators, the mode indicator and the leakage indicator.” slip op. at 14

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

    “Tr. 47:7–23. Because the output of Kim’s NAND gates will be different depending on the value of Kim’s memory cells C1–CN allowed to “pass through,” we agree with Petitioner that the value of Kim’s memory cells C1– CN (the claimed “leakage indicator”) “plays a role” in deciding what the output of Kim’s NAND gates (the claimed “value of the control signal”) will be. Moreover, Patent Owner acknowledged that the output of Kim’s NAND gate is determined based on the inputs to the NAND gates (i.e., the sleep signal input and the memory cell signal input). JUDGE CHUNG: But, knowing a little bit about how a NAND gate works, isn’t it the case that the input to the NAND gates, G1 through GN, with the input of the sleep signal and the C1 through CN signal, isn’t it the case that input to the NAND gate determines what the output is? MS. ZHONG: Okay. So any logic gate, the output will depend on the input. That’s for sure. Tr. 44:18–25; but see id. at 45:3–10 (stating that even if the “output is in control of the input, . . . that does not mean the selection is based on that input”). Thus, we find that Kim’s NAND gate (the claimed “control circuit”) operates to determine its output (the claimed “value of the control signal”) based on its input of the sleep signal (the claimed “mode indicator”) and the memory cell value input (the claimed “leakage indicator”). As discussed in Section III.B, the Specification indicates that “select[ing] the value of the control signal based on the mode indicator and on the leakage indicator” recited in claim 13 is synonymous to determining the value based on the recited indicators. See Ex. 1101, 4:4–11. Thus, the evidence of record shows that Kim teaches “selecting, by the control circuit, a value of a control signal based on the mode indicator and on the leakage indicator,” as recited in claim 13.” slip op. at 44

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable

    “We are not persuaded by Petitioner’s argument and evidence. First, although Petitioner proposes “[s]ubstituting Lee’s inputs of leakage current and temperature for generating a power gate control signal” (i.e., Lee’s “control signal (BIAS)”) for “Kim’s inputs of leakage current and other ‘stimuli’ for generating a power gate control signal” (Pet. 64 (citing Ex. 1102 ¶ 115)), neither Petitioner nor Dr. Harris explains adequately how they are proposing to “substitute” Kim’s control signal with Lee’s “control signal (BIAS).” For example, Figure A reproduced above does not show how Petitioner or Dr. Harris proposes to use Lee’s “control signal (BIAS)” in the proposed combination. Petitioner asserts that “[a]lthough Lee’s control signal is analog and Kim’s control signal is digital, it was well known to apply teachings in an analog domain to a digital domain, and conversions between analog and digital domains were easy to implement.” Pet. 66 (emphases added) (citing Ex. 1102 ¶ 121; Ex. 1115). Dr. Harris similarly states that Figures A and B show examples of obvious ways to use in Kim’s system Lee’s teaching of setting conductance of the array based on temperature. A POSA would have found both of these ways obvious. That Lee uses an analog control signal and Kim uses a digital control signal would have presented no obstacle to a POSA. . . . That is, converting analog circuit elements and signals to digital was well known long before the ’026 patent. Ex. 1102 ¶ 121 (emphases added) (citing (Ex. 1115) (“Analog-to-digital converters (ADC’s) are ubiquitous, critical components of software radio and other signal processing systems.”)). But Dr. Harris does not explain adequately how “to use in Kim’s system” the digitized BIAS signal of Lee. See id. The only additional input signal shown in Figure A compared to Figure 4 of Kim is the temperature line that has the value of 0 when the temperature is cold and the value of 1 when the temperature is hot. See Ex. 1102 ¶ 116 (Fig. A). There is no explanation of how the modified teaching of the BIAS signal of Lee (i.e., modified or converted to a digital signal) would have worked in the proposed combination of Figure A.” slip op. at 69

  Patent outcomesUS 8,081,026 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,081,026
• Intel Corporation v. Hera Wireless S.A.All claims unpatentable
  PTAB · Mar 18, 2020 · IPR2018-01657 · APJ Robert L Kinder · IPR · Final written decision

  The Board cancelled claims 1, 5, 6, 12, 16, and 17, and denied substitute claims 21 and 22 because Wallace anticipated them and rendered them obvious.

  RulingsFinal written decision

  • PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend granted in partGranted in part

    “the statutory and regulatory requirements set forth in 35 U.S.C. § 316(d) and 37 C.F.R. § 42.121. See Lectrosonics, Inc. v. Zaxcom, Inc., IPR2018-01129, Paper 15 and IPR2018-01130, Paper 14 (PTAB Feb. 25, 2019) (precedential) (“Lectrosonics”). We then consider the patentability of proposed substitute claims.” slip op. at 9

  • 112 supportDecided for patent owner

    “Based on the disclosures in the ’095 application, the ’655 application, and the ’375 application, we find that there is at least one embodiment where a terminal transmits antenna number information in a link channel request. Specifically, in the First Embodiment discussed supra in relation to Figure 3, the antenna number information is transmitted to the base station from terminal 1000 as control information in requesting establishment of a link channel (LCH allocation request). Ex. 1001, 9:59–64. We further find that this amounts to transmitting “information on the maximum number of spatial signals that can be processed” in “a request to establish a link channel,” as recited in proposed substitute claims 21 and 22. So, too, does the description of the first variation of the Figure 7 Second Embodiment described supra. This showing discharges Patent Owner’s burden on this issue. However, because we also conclude, infra, that Wallace anticipates and renders obvious proposed substitute claims proposed claims 21 and 22, we do not find it necessary to further address Petitioner’s specific written description arguments.” slip op. at 14

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “3. Person of Ordinary Skill Relying on the testimony of Dr. Sharony, Patent Owner contends that a person of ordinary skill in the art at the time of the invention of the ’024 patent would have possessed a working knowledge of multi-input multi-output (MIMO) wireless communications. The person would have gained this knowledge through a Bachelor of Science degree in Electrical Engineering or an equivalent degree, and three to five years of experience working in the field of wireless communications. Additional education or experience may serve as a substitute for these requirements. Motion 4 (citing Ex. 2018 ¶ 28).” slip op. at 17

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner

    “Claim 21 first requires a “storage means for storing prior to any request to establish a link channel being sent to the another radio apparatus information on the maximum number of spatial signals that can be processed by the signal processing unit for multiplex communication.” Motion, Claims App. We construe this claim language pursuant to 35 U.S.C. § 112 ¶ 6. The stated function of “storing prior to any request to establish a link channel being sent to the another radio apparatus information on the maximum number of spatial signals that can be processed by the signal processing unit for multiplex communication,” is carried out by a memory. See Institution Dec. 14. Claim 21 next requires “control means for controlling a process of transmitting the information on the maximum number of spatial signals.” We construe this language pursuant to 35 U.S.C. § 112 ¶ 6. The stated function of “controlling a process of transmitting the information on the maximum number of spatial signals,” is carried out by a controller or processor. See Institution Dec. 14–15. The ’024 patent discloses this function being performed by a “control circuit” or “a digital signal processor executing a software algorithm.” Id. (citing Ex. 1001, 7:61–62, 8:44–48, 8:51–55, 8:64–9:4, 17:21–38, 19:36–41). Further, “[a] control circuit is simply another name for a controller or processor.” Id. (citing Ex. 1002 ¶¶ 165, 175). Claim 22 requires “a storage unit” and “a control unit.” We determine that these terms should not be construed pursuant to § 112 ¶ 6, and also that their scope is clear from the context of the Specification. Patent Owner made a deliberate choice to employ the word “unit” instead of “means.” See Institution Dec. 14. Thus, based on the final record, we determine that Patent Owner intended to invoke § 112 ¶ 6 for the “means” terms (claim 21) but did not so intend for the “unit” terms (claim 22) in the ’024 patent.” slip op. at 19

  Patent outcomesUS 9,270,024 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,270,024
• Intel Corporation v. Hera Wireless S.A.All claims unpatentable
  PTAB · Mar 12, 2020 · IPR2018-01543 · APJ John A Hudalla · IPR · Final written decision

  Claims 1 and 2 are unpatentable as obvious over both instituted grounds; the motion to amend with substitute claims 3 and 4 is denied.

  RulingsFinal written decision

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

    “an inter partes review of claims 1 and 2 of U.S. Patent No. 8,295,400 B2 (Ex. 1001, “the ’400 patent”). Paper 2 (“Pet.”). Patent Owner, Hera Wireless S.A. (“Patent Owner”), filed a Preliminary Response. Papers 6, 7 (“Prelim. Resp.”). Taking into account the arguments presented in Patent Owner’s Preliminary Response, we determined that the information presented in the Petition established that there was a reasonable likelihood that Petitioner would prevail with respect to its unpatentability challenges. Pursuant to 35 U.S.C. § 314, we instituted this proceeding on March 14, 2019, as to all challenged claims and all grounds of unpatentability. Paper 12 (“Dec. on Inst.”).” slip op. at 1

  • Skill levelDecided for petitioner

    “Level of Ordinary Skill in the Art In the Decision on Institution, we determined that a person of ordinary skill in the art would have had a Master’s degree in Electrical Engineering, at least 2–4 years of academic or industry experience designing and implementing digital wireless communication systems, and familiarity with the family of IEEE 802.11 standards. Dec. on Inst. 13–14 (citing Ex. 1002 ¶ 53). Neither party disputes our determination. We discern no reason to change our determination and apply it for purposes of this Decision.” slip op. at 10

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “TGn-Sync.” Id. (citing Ex. 1002 ¶¶ 212–216). Given TGn-Sync’s express reliance on earlier 802.11 standards (see, e.g., Ex. 1003, 3, 16, 17) and Dr. Wicker’s unrebutted testimony about how TGn-Sync is an extension of 802.11a (see Ex. 1002 ¶¶ 212–216), we are persuaded that an ordinarily skilled artisan would have had reasons to combine the references to make the claimed subject matter.” slip op. at 26

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

    “We are persuaded that 802.11a qualifies as prior art under § 102(b) based on Mr. Grenier’s unrebutted testimony. 802.11a’s initial publication date of December 30, 1999, is more than one year before the U.S. filing date of the application that led to the ’400 patent, which is September 9, 2005. Ex. 1001, code (22); Ex. 1032 ¶ 11.” slip op. at 15

  Patent outcomesUS 8,295,400 unpatentable
  § 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,295,400
• Intel Corporation v. Hera Wireless S.A.All claims unpatentable
  PTAB · Feb 25, 2020 · IPR2018-01371 · APJ Thomas L Giannetti · IPR · Final written decision

  Claims 1–6 are cancelled; proposed substitute claims 7 and 8 are unpatentable as anticipated by and obvious over Wallace, so the motion to amend is denied as to those claims.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “the level of skill in the art. The Petition, however, provides the following description: “As of 2002 or 2003, a skilled person in the ’103 patent’s field would have a Master’s degree in Electrical Engineering and at least 2-4 years of academic or industry experience in designing and implementing digital wireless communication systems.” Pet. 13 (citing Wicker Decl. ¶ 54). The parties’ formulations differ mainly in the level of education (Bachelor’s degree for Patent Owner, Master’s degree for Petitioner) and amount of experience in wireless communications (three to five years for Patent Owner, two to four years for Petitioner). We regard any differences in the two formulations as insignificant. For the purpose of this Final Written Decision, we adopt Patent Owner’s proposal as consistent with the prior art before us. However, we would reach the same result with regard to this decision under either formulation.” slip op. at 17

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “In light of the foregoing, we credit Petitioner’s evidence on this limitation, supported by the testimony of Dr. Wicker, and find that the limitation is met by Wallace. Wicker Supp. Decl. ¶¶ 22–27.” slip op. at 30

  • PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend granted in partGranted in part

    “Motion 11–12 (alterations in original). Patent Owner contends “[n]one of Petitioner’s references teaches or suggests systems having this new combination of limitations.” Id. at 12. We determine that the amended language in the proposed substitute claims, which will be discussed in more detail infra, is responsive to the ground of unpatentability involved in this trial under 37 C.F.R. § 42.121(a)(2)(i). 3. Scope of the Proposed Substitute Claims A motion to amend “may not enlarge the scope of the claims of the patent.” 35 U.S.C. § 316(d)(3); see 37 C.F.R. § 42.121(a)(2)(ii). Patent Owner contends that the substitute claims are “narrower than the original, now-cancelled claims and introduce no new matter.” Motion 3. We have reviewed the limitations added in the proposed substitute claims (see supra) and determine that they do not enlarge the scope of the original cancelled claims.” slip op. at 10

  • 112 supportDecided for patent owner

    “Based on the disclosures in the ’657 application, the ’655 application, and the ’375 application, we find that there is sufficient written description support for this limitation. The ’103 patent and its previously-filed supporting applications describe at least one embodiment where a terminal transmits antenna number information in a link channel request. Specifically, in the First Embodiment discussed supra in relation to Figure 3, the antenna number information is transmitted to the base station from terminal 1000 as control information in requesting establishment of a link channel (LCH allocation request). Ex. 1001, 9:62–65. We further find that this amounts to transmitting a “value indicating the maximum number of spatial paths formable” in “a request to establish a link channel,” as recited in the proposed substitute claims. See discussion infra. So, too, does the description of the first variation of the Figure 7 Second Embodiment, described supra. This showing discharges Patent Owner’s burden on this issue. However, because we also conclude, infra, that proposed substitute claims 7 and 8 are anticipated by and would have been obvious in light of Wallace, and in view of counsel’s concession at the oral hearing, we do not find it necessary to further address Petitioner’s specific written description” slip op. at 14

  Patent outcomesUS 7,962,103 unpatentable
  § 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,962,103
• Intel Corporation v. VLSI Technology LLCSome claims unpatentable
  PTAB · Feb 6, 2020 · IPR2018-01033 · APJ Bart A Gerstenblith · IPR · Final written decision

  Claims 17 is anticipated by Bednar, and claims 1 and 17 are obvious over Bednar and Gunther; the remaining challenged claims were not shown unpatentable.

  RulingsFinal written decision

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

    “requesting institution of inter partes review of claims 1, 4–6, and 17–19 of U.S. Patent No. 8,004,922 B2 (Ex. 1001, “the ’922 patent”). VLSI Technology LLC (“Patent Owner”) filed a Preliminary Response (Paper 12). Applying the standard set forth in 35 U.S.C. § 314(a), we instituted an inter partes review of all challenged claims. Paper 17 (“Inst. Dec.”).” slip op. at 2

  • Skill levelSkill level board ownDecided for petitioner

    “to the level of ordinary skill in the art was incorrect. Accordingly, because our preliminary finding is consistent with the level of ordinary skill in the art reflected by the prior art of record, we maintain and reaffirm that one of ordinary skill in the art at the time of the invention would have had “at least (1) an undergraduate degree in electrical engineering (or an equivalent subject), together with three years of post-graduate experience designing power management circuits; or (2) a master’s degree in electrical engineering (or equivalent subject) together with two years of post-graduate experience designing power management circuits.” Inst. Dec. 8–9; see Pet. 36 (citing Ex. 1002 ¶¶ 26–27).” slip op. at 9

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner

    “construction of “memory device,” specifically whether it encompasses a latch. Neither party argues that “memory device” is expressly defined in the ’922 patent. Accordingly, the plain and ordinary meaning of the term controls. And, the standard under which we construe the term is the broadest reasonable construction in light of the specification.” slip op. at 45

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

    “preponderance of the evidence, that (1) claim 17 is anticipated by Bednar, and (2) claims 1 and 17 would have been obvious over the combination of Bednar and Gunther. For the reasons discussed above, Petitioner has not demonstrated, by a preponderance of the evidence, that (1) claim 1 is anticipated by Bednar or (2) claims 4–6, 18, and 19 would have been obvious over the combination of Bednar, Gunther, and Willingham. The chart below summarizes our conclusions.” slip op. at 91

  Patent outcomesUS 8,004,922 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,004,922
• Intel Corporation v. VLSI Technology LLCSome claims unpatentable
  PTAB · Feb 6, 2020 · IPR2018-01144 · APJ Bart A Gerstenblith · IPR · Final written decision

  Claims 2, 7, and 8 are unpatentable as obvious over Bednar and Gunther; claim 3 was not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “to the level of ordinary skill in the art was incorrect. Accordingly, because our preliminary finding is consistent with the level of ordinary skill in the art reflected by the prior art of record, we maintain and reaffirm that one of ordinary skill in the art at the time of the invention would have had “at least (1) an undergraduate degree in electrical engineering (or an equivalent subject), together with three years of post-graduate experience designing power management circuits; or (2) a master’s degree in electrical engineering (or equivalent subject) together with two years of post-graduate experience designing power management circuits.” Inst. Dec. 8; see Pet. 29 (citing Ex. 1102 ¶¶ 26–27).” slip op. at 10

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for patent owner

    “construction is erroneous. Accordingly, because the ’922 patent defines “power island,” we maintain and reaffirm that “power island” means a “group of components with similar power requirements.”” slip op. at 12

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

    “not to expressly construe “conversion controller” was erroneous or that an express construction is required to resolve any dispute between the parties. Accordingly, we maintain and reaffirm that because the construction of “conversion controller” does not resolve a controversy in the matter before us, we decline to construe it expressly.” slip op. at 13

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner

    “construction of “memory device,” specifically whether it encompasses a latch. Neither party argues that “memory device” is expressly defined in the ’922 patent. Accordingly, the plain and ordinary meaning of the term controls. And, the standard under which we construe the term is the broadest reasonable construction in light of the specification.” slip op. at 86

  Patent outcomesUS 8,004,922 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,004,922

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.