• Nearmap US, Inc. v. Eagle View Technologies, Inc.All claims unpatentable
  PTAB · Jan 9, 2024 · IPR2022-01090 · APJ Garth D Baer · IPR · Final written decision

  Claims 1–42 and 46–66 are unpatentable as obvious over Littleworth, Linder, Middlebrook, and Nishitani; claims 5, 23, and 38 on the Heller ground were not reached.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “area emphasizing the design of electrical, computer, or software technologies, or a similar discipline, and at least two years of experience related to computerized image analysis and three-dimensional modeling.” Pet. 4. Further, “education could compensate for a deficiency in work experience, and vice-versa.” Id. Although Patent Owner presents its own formulation, see PO Resp. 23, Patent Owner notes that “there does not appear to be any meaningful distinction between” the parties’ formulations. PO Sur-reply 29– 30. We adopt Petitioner’s description as it is consistent with the prior art and ’436 patent’s specification. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill). Our decision would not change under either party’s definition of the level of ordinary skill.” slip op. at 7

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

    “required in claims 1 and 18 “mean[s] that the two images are ‘captured independently of each other and without metadata (or other information) relating angles of cameras that captured the images.’” Pet. 5 (quoting Ex. 1004 ¶ 20). In addition to its expert, Petitioner cites as support the patent’s prosecution history, in which Patent Owner asserted this definition. Id. at 5–6 (citing Ex. 1003, 167–169; Ex.1004 ¶ 21). Patent Owner does not propose a construction for this limitation. We agree with Petitioner that images that are not a stereoscopic pair means that the two images are captured independently of each other and without metadata (or other information) relating angles of cameras that captured the images.” slip op. at 7

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

    “B. WHETHER LITTLEWORTH AND LINDER ARE PRIOR ART Patent Owner asserts Petitioner failed to demonstrate that Littleworth and Linder are prior art. PO Resp. 9–19; PO Sur-reply 9–11. We addressed this issue based on the same arguments in IPR2022-01009. See PO Resp. 9– 19; Pet. Reply 31–35; IPR2022-01009, Paper 28 at 21–27, 28–31. As we explained, the evidence of record supports that Littleworth and Linder were publicly available before the critical date. IPR2022-01009, Paper 28 at 25– 27, 31. Thus, for the same reasons explained in IPR2022-01009, we maintain Petitioner has shown sufficiently that Littleworth and Linder were publicly available before the critical date.” slip op. at 17

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

    “been motivated to correlate the images described in Littleworth based on the selected control points in order to allow the images to be utilized in the threedimensional model generation process, as taught by Linder.” Pet. 29. Patent Owner argues that one of ordinary skill would not have been motivated to combine Littleworth and Linder as Petitioner proposes because Linder is limited to corresponding stereoscopic images and would not have been suitable for correlating Littleworth’s non-stereoscopic imagery. PO Resp. 40–46. We addressed this issue based on the same arguments in IPR2022-01009. See PO Resp. 40–46; Pet. Reply 10–22; IPR2022-01009, Paper 28 at 48–57. As we explained there, the evidence of record, including Dr. Forsyth’s testimony and relevant passages from Linder, supports that Linder’s correlation method applies more broadly than to just stereoscopic images, and none of the additional material Patent Owner cites undermines Petitioner’s proposed combination. See IPR2022-01009, Paper 28 at 52–54, 56–67. Thus, for the same reasons explained in IPR2022-01009, we maintain Petitioner has articulated sufficient rationale to support that its proposed combination of Littleworth and Linder would have been obvious.” slip op. at 19

  Patent outcomesUS 8,078,436 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR
  Patents in suitUS 8,078,436
• Patent Quality Assurance, LLC / Intel Corporation v. VLSI Technology LLCAll claims unpatentable
  PTAB · Jun 13, 2023 · IPR2022-00479 · APJ Jason W Melvin · IPR · Final written decision

  Claims 1–16 are unpatentable: claims 1–7, 9–11, and 13–16 as obvious over Harris, Abadeer, and Zhang; claims 2, 11, and 12 with Cornwell; and claim 8 with Bilak.

  RulingsFinal written decision

  • Prior constructionPrior construction adoptedDecided for petitioner

    “claim 14, which recites a “means for providing the operating voltage to the memory at a value at least as great as the minimum operating voltage in response to the operating value selected by the processor being below the 1 Our bracketed designations for limitations largely follow those used by the parties. See Pet. 25–46. 2 US 5,867,719, issued Feb. 2, 1999 (Ex. 1003). 3 US 2006/0259840 A1, published Nov. 16, 2006 (Ex. 1004). 4 US 2003/0122429 A1, published July 3, 2003 (Ex. 1005). 5 US 7,702,935 B2, issued Apr. 20, 2010 (Ex. 1006). 6 US 2005/0188230 A1, published Aug. 25, 2005 (Ex. 1007). minimum operating voltage.” Pet. 24, 64; Ex. 1001, 14:31–37. Petitioner points out that a district court construed the term as a means-plus-function term under 35 U.S.C. § 112, sixth paragraph, with the claimed function and a corresponding structure of the “power supply selector.” Id. at 64 (quoting Ex. 1028, 2). Patent Owner does not challenge or otherwise address that construction, and we apply it in this decision.” slip op. at 6

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

    “This distinction is particularly significant because Harris describes that its low-power feature is realized by using “the test mode.” Ex. 1003, 4:64–65. The test mode uses a software-selected switch that allows the CPU to write to a register to control which power supply is provided to the memory. Id. at 3:9–18, 3:50–51. Thus, Harris describes that the low-power feature uses a software-defined switching threshold, and nothing about that threshold requires that it be the same as the threshold used for the failure mode. The failure mode, in contrast, is “a hardware controlled function” that monitors the voltage on the VDD terminal, and when that voltage “drops below a set level or threshold, the voltage on the Vstby terminal 132 is switched to power the memory 105 to sustain memory contents when either main or VDD power is failing.” Id. at 3:52–60. Accordingly, we do not agree with Patent Owner that “Harris’s system cannot use a threshold [for its low-power feature] lower than the power-failure detection threshold.” PO Resp. 11–12 (emphasis omitted). The two aspects use different mechanisms to control which power supply is provided to the memory. Relatedly, Patent Owner asserts that Petitioner fails to justify “why a POSITA would have been motivated to abandon the ‘failure mode’ in favor of pursuing the specific ‘low power feature.’” Id. at 14. Because Harris’s failure mode and low-power feature are distinct aspects of Harris’s operation, however, there would have been no need for skilled artisans to abandon one in favor of the other. In that regard, we credit Dr. Singh’s testimony that because Harris’s circuitry can be used for multiple functions, skilled artisans would have understood “how the operation of the circuitry would have been configured differently for those different functions or operations.” Ex. 1040 ¶ 9. Patent Owner argues additionally that, even if the low-power feature is distinct from the failure mode, Petitioner has not justified using the failure mode’s “set level or threshold” with a different threshold for the low-power feature. PO Resp. 13–14. But that argument ignores that the low-power feature uses software to control the switch, rather than the hardware-controlled failure mode, as described above. Because the low-power feature and failure mode are based on different controlling mechanisms, Harris already describes using different thresholds for switching the memory’s power supply in the two instances. And as Dr. Singh testifies, achieving the desired power savings or low-power operating parameters would have motivated skilled artisans to select a specific minimum operating voltage for the low-power feature. Ex. 1040 ¶ 9.” slip op. at 11

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

    “When the evidence shows that a product includes “the invention disclosed and claimed in the patent,” we presume that any commercial success of the product is due to the patented invention. PPC Broadband v. Corning Optical Commc’ns, 815 F. 3d 734, 746–747 (Fed. Cir. 2016). Such a presumed nexus requires not only that a commercial product embodies the claims, but also that it is coextensive with them. See Fox Factory, Inc. v. SRAM, LLC, 944 F.3d 1366, 1373 (Fed. Cir. 2019) (“[P]resuming nexus is appropriate ‘when the patentee shows that the asserted objective evidence is tied to a specific product and that product embodies the claimed features, and is coextensive with them.’” (quoting Polaris Indus., Inc. v. Arctic Cat, Inc., 882 F.3d 1056, 1072 (Fed. Cir. 2018))). Petitioner notes that the jury infringement verdict is on appeal. Pet. Reply 23. According to Petitioner, Patent Owner fails to show the verdict demonstrates commercial success with a nexus to the challenged claims. Id. at 24. Petitioner argues that the challenged claims were not the basis for customer demand of the accused products. Id. (citing Ex. 1044, 811:13– 812:24 (Intel employee Adam King testifying that Intel’s customers care about numerous technical attributes, including graphics performance for video editing, camera quality for video conferencing and power efficiency for laptops)). Petitioner notes that Patent Owner accused only the “C6 SRAM multiplexer” feature of infringing the ’373 patent (Ex. 1042, 453:20– 25; Ex. 1044, 815:16–816:21) and that Patent Owner’s damages expert, Dr. Sullivan, “conceded that many of the thousands of other features ‘have nothing to do with what [Patent Owner] accuses.’” Pet. Reply 24 (quoting Ex. 1043, 690:19–691:24). The record before us does not show that Intel’s product or products underlying the infringement verdict are coextensive with “the invention disclosed and claimed.” See Fox Factory, 944 F.3d at 1373, 1377; Facebook, Inc. v. Express Mobile Inc., IPR2021-01457, Paper 38 at 76–80 (PTAB Mar. 14, 2023) (concluding an infringement verdict was insufficient to establish nexus). Rather, the record shows that the accused products contained many features beyond those claimed in the ’373 patent. Ex. 1043, 690:19–691:24; Ex. 1044, 815:16–816:21. That evidence persuades us that, regardless of a presumed nexus, the commercial success does not have a nexus with the challenged claims.” slip op. at 22

  • Obviousness (§103) › Analogous artAnalogous artDecided for petitioner

    “We agree with Petitioner. Both Harris and the ’373 patent are in the field of memory power supply. While Harris describes a voltage-supply system allowing for a particular testing approach, its field is not limited to its primary purpose of soft-defect testing on-chip memory. Rather, Harris also describes that its system allows other features such as failure protection and a low-power feature. Ex. 1003, 3:50–67, 5:59–5:4. Thus, we find that Harris’s field is memory power supply, and more specifically, switchable memory power supplies. As discussed, the ’373 patent describes its related art as making tradeoffs between performance and power when choosing voltage and frequency for processors and memory. Ex. 1001, 1:12–25. While the ’373 patent describes determining the minimum operating voltage for each part and storing that determined value (id. at 2:3–37, 6:22–8:15), its disclosures are considerably broader in scope. The patent describes selecting memory voltage based on multiple considerations, such as using the logic voltage when it is higher than the memory minimum operating voltage, or a variety of minimum voltages depending on operating circumstances. Id. at 3:30–5:41. As to the system controlling a memory’s power supply, the ’373 patent describes mechanisms that may be used to control a memory’s power supply, such as power supply selector 21. Id. at 2:52–59, 5:42–58. It details operation of the power supply controller 28 and selector 21. Id. at 8:33–9:4. The ’373 patent describes alternatively that memory may be permanently coupled to a particular voltage bus that is scaled to provide the desired power. Id. at 2:59–61, 5:61–67. The disclosures regarding mechanisms for controlling the memory power supply show that the ’373 patent’s field is broader than just determining the minimum operating voltage. We find that the ’373 patent’s field includes switchable memory power supplies, supporting that Harris is from the same field as the ’373 patent. As to whether Harris is reasonably pertinent to the problem addressed by the ’373 patent, Petitioner contends that the ’373 patent addresses “lowering power consumption in integrated circuits, considering that ‘different types of circuitry within a data processing system may have different ranges of allowable operating voltages’ and that ‘the processor may be able to operate at a lower voltage than is possible for the memory.’” Pet. Reply 19 (quoting Ex. 1001, 1:12–25, 2:5–7). Petitioner contends that Harris addresses the same problem with its circuit to “ensure the memory is provided with sufficient voltage to avoid data loss.” Pet. 14–15 (citing Ex. 1003, 3:54–56, 3:64–67 (Harris’s disclosure of switching memory power supply “to avoid memory data loss”)). Patent Owner’s expert agrees that the ’373 patent addresses “the problem of providing different voltages to different parts of the circuit” to accommodate different “allowable operating voltages.” PO Resp. 49 (quoting Ex. 2052 ¶ 159). As discussed above, Harris discloses a mechanism for providing different voltages to different parts of its circuit, whether for testing or low-power operation. Ex. 1003, 3:50–67, 5:59–5:4. We find that Harris is reasonably pertinent to the problem of providing different voltages to different parts of the circuit. While the ’373 patent addresses other problems also, that does not undermine the problem to which Harris is reasonably pertinent. See Ethicon LLC v. Intuitive Surgical, Inc., No. 2021-1601, 2022 WL 1576779, at *4 (Fed. Cir. May 19, 2022) (nonprecedential) (holding that the patent owner’s identification of an additional problem beyond that supporting analogous art was irrelevant); Donner Tech., LLC v. Pro Stage Gear, LLC, 979 F.3d 1353, 1361 (Fed. Cir. 2020) (noting the analysis considers “one or more problems to which the claimed invention relates”). Accordingly, Harris is analogous art to the ’373 patent because it is both from the same field of endeavor and reasonably pertinent to a problem confronting the inventor of the ’373 patent.” slip op. at 25

  Patent outcomesUS 7,523,373 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 7,523,373
• Lyft, Inc. v. Rideshare Displays, Inc.All claims unpatentable
  PTAB · Apr 10, 2023 · IPR2021-01599 · APJ Lynne E Pettigrew · IPR · Final written decision

  Claims 1, 2, 4, and 6–8 are unpatentable as obvious over Kalanick and Kemler, anticipated by Lalancette, or obvious over Lalancette and Kemler.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Prelim. Resp. 5. At the institution stage, we adopted Petitioner’s more general formulation, with one qualification. Inst. Dec. 19. We stated we would also expect a person of ordinary skill to have at least some experience in wireless cellular network protocols, as suggested by Patent Owner. Id. at 19–20. We reasoned that our review of the ’987 patent and the cited prior art did not suggest that specific experience with data privacy policies and protection models would be required, given the focus of the ’987 patent on more general principles of cellular communications and signaling. Id. at 20. However, we observed that our decision would be the same under either formulation. Id. at 20.” slip op. at 10

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “We also find unavailing Patent Owner’s argument that Mr. Williams, Petitioner’s expert, “acknowledges that Lalancette does not disclose the use of a mobile communication device associated with the driver.” Id. (citing Ex. 2022, 128:14–129:25, 132:1–8). Patent Owner misrepresents Mr. Williams’s testimony. Mr. Williams was not asked whether Lalancette “discloses” a mobile communication device, but rather was asked “You’ll agree that La[l]ancette doesn’t identify the mobile computer as a mobile communication device associated with the driver?” Ex. 2022, 129:10–13. specifically referenced, that description is not in that passage.” Id. at 129:14–16. Notably, Mr. Williams also testified that (i) “[t]he nature of La[l]ancette requires some sort of computing device in the taxi that has the ability to receive and communicate in order to get information, for example, icon information from the central computer”; (ii) “mobile computer . . . has a variety of form factors inclusive of something like a [s]martphone”; and (iii) “[i]n the passage where [Lalancette] references mobile computer, it doesn’t have a specific form factor discussion such as referencing [s]martphones.” Id. at 125:17–22, 129:20–25, 132:5–8.” slip op. at 38

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

    “1. “indicator” In our Institution Decision, we construed the term “indicator” as a “code (e.g., a text string or an alphanumeric string), an icon, or other identifier, for display to enable a match between a user/rider and a driver.” Inst. Dec. 22. We determined this construction was consistent with the description of an indicator in the specification of the ’987 patent. Id. at 21–22 (citing Ex. 1001, 4:9–13). Neither party challenges this construction, which we maintain for this Final Written Decision. See PO Resp. 6; Pet. Reply 2; PO Sur-reply 2.” slip op. at 12

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

    “Because the specification and prosecution history do not explicitly provide a definition for the term “generate,” we looked to extrinsic sources to determine its plain meaning. Inst. Dec. 24. The Federal Circuit has approved the use of dictionaries for guidance in claim construction, “so long as the extrinsic evidence does not contradict the meaning otherwise apparent from the intrinsic record.” Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1382 (Fed. Cir. 2008); see also Comaper Corp. v. Antec, Inc., 596 F.3d 1343, 1348 (Fed. Cir. 2010) (approving of “consult[ing] a general dictionary definition of [a] word for guidance” in determining ordinary meaning); Praxair, Inc. v. ATMI, Inc., 543 F.3d 1306, 1325 (Fed. general dictionary definitions as an aid to claim construction.”) (citation omitted). One dictionary definition of “generate” is “to bring into existence: such as: . . . to originate by a vital, chemical, or physical process: PRODUCE.” See https://www.merriam-webster.com/dictionary/generate. We therefore construed the term “generate” as it relates to the controller in reference to a signal in accordance with its plain and ordinary meaning, which is “to originate or produce the signal.” Inst. Dec. 24–25.” slip op. at 13

  Patent outcomesUS 10,169,987 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,169,987
• Hulu, LLC v. Sito Mobile R&D IP, LLC And Sito Mobile, Ltd.All claims unpatentable
  PTAB · May 4, 2022 · IPR2021-00265 · APJ Joni Y Chang · IPR · Final written decision

  Claims 15–19, 21, 24, and 27 are unpatentable as obvious over Eyal and Wiser; claims 15, 16, 19, 21, and 27 are also unpatentable over Madison and Wiser.

  RulingsFinal written decision

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

    “The Specification sets forth the following definition: “[a] reservation is a feature that enables the streaming system 102 to reserve system resources, such as switches, processors, or media, either now or in the future, to ensure a quality media experience.” Ex. 1001, 11:59−62 (emphasis added). The Federal Circuit has recognized that “the specification may reveal a special definition given to a claim term by the patentee that differs from the meaning it would otherwise possess,” and “[i]n such cases, the inventor’s lexicography governs.” Phillips, 415 F.3d at 1316 (citing CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002). Therefore, consistent with the definition in the Specification, we construe “reservation” as “a feature that enables the streaming system . . . to reserve system resources, such as switches, processors, or media, either now or in the future, to ensure a quality media experience.” Ex. 1001, 11:59−62. We agree with Patent Owner that the construction of the term “reservation” does 7 not require “a set of instructions uniquely identifying the communication device.” As to “reservation identification,” we adopt Patent Owner’s construction, construing the term “reservation identification” as “identification of a reservation” because this construction is consistent with the term’s plain and ordinary meaning, without requiring the identification to be unique.” slip op. at 7

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

    “is a feature that enables the streaming system 102 to reserve system resources, such as switches, processors, or media, either now or in the future, to ensure a quality media experience.” Ex. 1001, 11:59−62 (emphasis added). The Federal Circuit has recognized that “the specification may reveal a special definition given to a claim term by the patentee that differs from the meaning it would otherwise possess,” and “[i]n such cases, the inventor’s lexicography governs.” Phillips, 415 F.3d at 1316 (citing CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002). Therefore, consistent with the definition in the Specification, we construe “reservation” as “a feature that enables the streaming system . . . to reserve system resources, such as switches, processors, or media, either now or in the future, to ensure a quality media experience.” Ex. 1001, 11:59−62. We agree with Patent Owner that the construction of the term “reservation” does 7 not require “a set of instructions uniquely identifying the communication device.” As to “reservation identification,” we adopt Patent Owner’s construction, construing the term “reservation identification” as “identification of a reservation” because this construction is consistent with the term’s plain and ordinary meaning, without requiring the identification to be unique.” slip op. at 7

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “Here, Petitioner asserts that a person of ordinary skill in the art of the ’360 patent would have had “at least a bachelor’s degree in computer science, electrical or computer engineering, or equivalent.” Pet. 16. And, such an artisan also would have had “at least two years of experience in distributed systems, multimedia streaming, and various HTTP-related technologies, or an equivalent amount of relevant work or research experience,” citing to the Declaration of Henry Houh, Ph.D., for support. Id. (citing Ex. 1003 ¶¶ 59−61). Patent Owner’s declarant, Mr. Michael Adams, provides similar assessment, but also testifies that such an artisan, alternatively, would have had “at least five years of work experience and training in the design and development of distributed network systems and/or multimedia streaming.” Ex. 2012 ¶ 28. Neither party points out any meaningful difference between the parties’ assessments. We apply Patent Owner’s assessment on the level of ordinary skill in the art. However, our analysis would be the same under either party’s description.” slip op. at 9

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

    “added). Dr. Houh testifies that an ordinarily skilled artisan would have used Wiser’s voucher ID in Eyal’s play-list because delivery servers may have a “limited number of active streams of data being delivered at any one time,” so that generating and tracking reservations by the content server using voucher IDs is necessary. Ex. 1003 ¶ 144 (citing Ex. 1006, 14:65−15:1). We agree with and credit Dr. Houh’s testimony, and we find that such an artisan of ordinary skill would have understood that, in Eyal in combination with Wiser, the voucher ID provided in the play-list is uniquely associated with the client device and a viewing session of the media. Ex. 1003 ¶ 151 (citing Ex. 1006, 8:30−33, 15:23−28). We do not agree with Patent Owner’s assertion that “Wiser teaches away from video.” PO Resp. 33 (citing Ex. 2012 ¶ 174). “A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.” In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). Here, nothing in Wiser would discourage a relevant artisan from applying its teachings to video media, as Patent Owner alleges. Patent Owner’s argument of teaching away is based on speculation. As discussed above, Wiser’s disclosure is not limited to audio media. Ex. 1006, 1:5−8, 1:23−26, 3:8−10; Ex. 1083, 145:20−147:21. The “mere disclosure of alternative designs does not teach away.” In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Moreover, KSR instructs us that “if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize 20 that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.” KSR, 550 U.S. at 417. As Dr. Houh testifies, “[s]ervers’ limited streaming capacity was a common media delivery problem, and well-known solutions existed before the ’360 Patent, including generating a reservation to ensure resource availability for streaming media to the user.” Ex. 1003 ¶¶ 106, 167 (citing Ex. 1019, 263 (Discussion on Resource Reservation Protocols (RSVP) in the book entitled “Communication and Computing for Distributed Multimedia Systems”); Ex. 1023 (RSVP Specification); Ex. 1024, 194 (Discussion on the Reservation Protocol in the book entitled “Multimedia Servers”)).” slip op. at 20

  Patent outcomesUS 9,591,360 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites KSR · Graham
  Patents in suitUS 9,591,360
• Western Digital Corporation / Western Digital Technologies, Inc. et al. v. Martin KusterAll claims unpatentable
  PTAB · Feb 10, 2022 · IPR2020-01410 · APJ Nabeel U Khan · IPR · Final written decision

  Claims 1–18 are unpatentable: claims 1–4, 9–13, and 18 as anticipated by Hsiao, and claims 1–18 as obvious over Hsiao and Sun.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner’s proposed level of ordinary skill does not materially differ from that articulated by Mr. Welch. Both require a bachelor’s in many of the same fields and roughly one to two years of experience with USB protocols or USB product development. Neither Petitioner nor Patent Owner indicates that the outcome of any arguments made in this case would change depending on the level of ordinary skill in the art. We adopt Petitioner’s description, which we determine to be consistent with the level of skill reflected in the asserted prior art references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). We note, however, that we would reach the same conclusions under either proposed level of ordinary skill.” slip op. at 8

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

    “The term “mounted on” appears in several limitations of claim 1, including limitations 1.c, 1.d, and 1.e. The dispute between the parties, however, centers only on how the term should be construed in limitation 1.e, which recites “a contact bar mounted on the connection surface of the substrate” (Ex. 1001, 9:63–64) and only with respect to the Grounds involving Chen. Patent Owner does not dispute Petitioner’s contentions that Hsiao teaches a contact bar “mounted on” the connection surface of the substrate. See PO Resp. 42–55. For the reasons stated below, we determine Petitioner has not shown that Chen teaches certain other limitations of the independent claims regardless of whether it teaches “a contact bar mounted on the connection surface of the substrate.” See infra § II.D.2. Thus, it is not necessary to construe the term “mounted on” to resolve the dispute between the parties.” slip op. at 10

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

    “2. Embedded to be Exposed Upon the Cover of the Contact Bar The only word in the phrase “embedded to be exposed upon the cover of the contact bar,” recited in claims 1, 12, and 18, that Petitioner offers a construction for is the word “embedded,” which Petitioner argues has no special meaning in the art and should be afforded its ordinary dictionary definition of “set firmly into a mass or material.” Pet. 26 (citing Ex. 1005 ¶ 111). Patent Owner does not dispute Petitioner’s construction. PO Resp. 34–35. We adopt Petitioner’s construction, which we find is supported by the evidence of record. Ex. 1005 ¶ 111.” slip op. at 10

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date, deniedDecided for petitioner

    “It is well established that when a party seeks to prove conception through an inventor’s testimony, the party must proffer independent evidence corroborating the inventor’s testimony. Cooper, 154 F.3d at 1330. To be “independent,” the corroborating evidence must be evidence other than the inventor’s testimony. In re NTP, Inc., 654 F.3d 1279, 1291 (Fed. Cir. 2011). The sufficiency of the proffered corroboration is determined by a “rule of reason” analysis in which all pertinent evidence is examined. See NTP, 654 F.3d at 1291. Even under the “rule of reason” analysis, however, the “evidence of corroboration must not depend solely on the inventor himself.” Cooper, 154 F.3d at 1321; see also Hahn v. Wong, 892 F.2d 1028, 1033 (Fed. Cir. 1989) (corroborating evidence must be “independent of information received from the inventor”).” slip op. at 16

  Patent outcomesUS 8,705,243 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,705,243
• Western Digital Corporation / Western Digital Technologies, Inc. et al. v. Martin KusterSome claims unpatentable
  PTAB · Feb 10, 2022 · IPR2020-01391 · APJ Thomas L Giannetti · IPR · Final written decision

  Claims 11, 12, and 14–19 are unpatentable: claims 11 and 12 are anticipated by Hsiao, and claims 11 and 14–19 are obvious over He and Cheng or He, Cheng, and Hiller.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner’s proposed level of ordinary skill does not differ materially from that presented by Mr. Welch. Both require a bachelor’s degree in many of the same fields and roughly one to two years of experience with USB protocols or USB product development. The arguments presented by Petitioner and Patent Owner do not indicate that the outcome of this case would change depending on the level of ordinary skill in the art. We, therefore, adopt Petitioner’s description, which we determine to be consistent with the level of skill reflected in the asserted prior art references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). We note, however, that we would reach the same conclusions under either proposed level of ordinary skill.” slip op. at 8

  • BurdenDecided for patent owner

    “Proof of conception must be by “corroborating evidence which shows that the inventor disclosed to others his ‘completed thought expressed in such clear terms as to enable those skilled in the art’ to make the invention.” Coleman v. Dines, 754 F.2d 353, 359 (Fed. Cir. 1985) (citing Field v. Knowles, 183 F.2d 593, 601 (CCPA 1950)); see also Mahurkar v. C.R. Bard, Inc., 79 F.3d 1572, 1577 (Fed. Cir. 1996) (corroboration requirement “arose out of a concern that inventors testifying in patent infringement cases would be tempted to remember facts favorable to their case by the lure of protecting their patent or defeating another’s patent”). Similarly, an inventor’s testimony alone is insufficient to establish an earlier reduction to practice. Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1169–71 (Fed. Cir. 2006). Instead, a party seeking to prove an actual reduction to practice must proffer evidence corroborating that testimony. Id. at 1170. The sufficiency of corroboration is determined according to a “rule of reason.” Price v. Symsek, 988 F.2d 1187, 1195 (Fed. Cir. 1993). This, however, does not dispense with the requirement that some independent evidence provide corroboration. Coleman, 754 F.2d at 360. The requirement of “independent” corroboration requires evidence other than the inventor’s testimony. In re NTP, Inc., 654 F.3d 1279, 1291–92 (Fed. Cir. 2011). 3. Discussion We find that Patent Owner has not met its burden of establishing that Mr. Kuster conceived and reduced to practice his invention prior to the filing dates of Hsiao or He. By itself, Mr. Kuster’s testimony is insufficient to establish that he reduced his invention to practice prior to the November 23, 2010, filing date or Hsiao or the June 2, 2010, filing date of He. “Throughout the history of the determination of patent rights, oral testimony by an alleged inventor asserting priority over a patentee’s rights is regarded with skepticism, and as a result, such inventor testimony must be supported by some type of corroborating evidence.” Woodland Tr. v. Flowertree Nursery, Inc., 148 F.3d 1368, 1371 (Fed. Cir. 1998) (quoting Price, 988 F.2d at 1194). Patent Owner has failed to provide sufficient independent evidence corroborating Mr. Kuster’s testimony.” slip op. at 20

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

    “We do not agree with this argument. “The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art.” MCM Portfolio LLC v. Hewlett-Packard Co., 812 F.3d 1284, 1294 (Fed. Cir. 2015) (quoting In re Keller, 642 F.2d 413, 425 (CCPA 1981)). Moreover, “[a] person of ordinary skill is also a person of ordinary creativity, not an automaton,” so the fact that it would take some creativity to carry out the combination does not defeat a finding of obviousness. KSR, 550 U.S. at 421; see also ClassCo, Inc. v. Apple, Inc., 838 F.3d 1214, 1219 (Fed. Cir. 2016) (“The rationale of KSR does not support [the] theory that a person of ordinary skill can only perform combinations of a puzzle element A with a perfectly fitting puzzle element B.”). We find there is support for making this combination of He and Cheng in the testimony of Dr. Baker that addition of a controller is “conventional” in USB flash drives. Baker Decl. ¶ 167. We find that for the reasons given by Dr. Baker, a person of ordinary skill would have added a controller to He. We determine that the combination of He and Cheng teaches each limitation of claim 11. We address Patent Owner’s argument that there are objective indicia of obviousness, infra. We conclude that Petitioner has demonstrated that claim 11 would have been obvious over He and Cheng.” slip op. at 37

  • Obviousness (§103) › Objective indicia / secondary considerations › Long-felt need / failure of othersDecided for patent owner

    “attorney argument, not evidence.” Pet. Reply 26. We agree. Patent Owner does not back up its argument with testimony or other credible evidence. To demonstrate long-felt need, a patentee must point to an “articulated identified problem and evidence of efforts to solve that problem” which were, before the invention, unsuccessful. Tex. Instruments v. Int’l Trade Comm’n, 988 F.2d 1165, 1178 (Fed. Cir. 1993). All Patent Owner proves, if anything, is that after the USB 3.0 specification issued, a number of companies rushed in to provide contacts that met the new standard. Patent Owner does not demonstrate that they failed where Mr. Kuster succeeded. In fact, there is no evidence that Mr. Kuster ever commercialized his invention.8 8 Victorinox never paid for the work Mr. Kuster did on the USB 3.0 memory device, and to Mr. Kuster’s knowledge, never marketed the product. Kuster Dep. 22:21–24:13. Patent Owner contends “Mr. Kuster’s invention filled the existing need for a durable yet slim USB flash drive compatible with USB 3.0 that was easy to manufacture.” PO Resp. 77. But instead of presenting independent evidence of failure of the others to solve known technical or manufacturing problems, Patent Owner relies on generalized statements concerning the need for USB 3.0 connectors and solutions by others that Patent Owner contends have not been successful. PO Resp. 74–77. We are not persuaded by Patent Owner’s argument that Mr. Kuster’s alleged invention filled a long-felt need where others failed.” slip op. at 29

  Patent outcomesUS 8,693,206 mixed
  § 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,693,206
• Sling TV LLC v. Uniloc 2017 LLCAll claims unpatentable
  PTAB · Jan 5, 2021 · IPR2019-01270 · APJ Kevin F Turner · IPR · Final written decision

  Claims 1–16 and 39–42 are unpatentable as anticipated by Ishihara and obvious over Ishihara combined with Ishihara798, Ishihara486, or Bellifemine.

  RulingsFinal written decision

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

    “Patent Owner asserts that no “comprehensive construction” is necessary to resolve the controversy. PO Resp. 11. We adopt Petitioner’s proposed claim constructions of “concurrently perform[ing]/[s] motion estimation [for]/[using] each of a plurality of different [motion estimation] prediction modes” as discussed above, for purposes of this decision as we determine that the construction is consistent with portions of the Specification cited.” slip op. at 12

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner’s declarant, Dr. Storer, testifies that a person of ordinary skill in the art in the context of the ’005 Patent would have been “a person with a bachelor’s degree in electrical engineering, computer engineering, computer science, or a similar field with at least two years of experience in data compression or a person with a master’s degree in electrical engineering, computer science, or a similar field with a specialization in data compression.” Ex. 1002 ¶ 49. Patent Owner does not challenge this assessment, nor does Patent Owner offer “a competing definition for POSITA.” PO Resp. 8. As we indicated in our Institution Decision, to the extent that Petitioner’s assessment uses the open ended “at least” modifiers to make the assessment open ended, we remove those modifiers to obtain definite amounts of education and experience. Inst. Dec. 15. We continue to note that Petitioner’s assessment appears consistent with the level of ordinary skill in the art at the time of the invention as reflected in the prior art in the instant proceeding. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). For purposes of this Decision, we continue to apply Dr. Storer’s assessment of the level of ordinary skill in the art.” slip op. at 9

  • Expert testimonyPetitioner expert creditedDecided for petitioner
  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “Patent Owner contends that Ishihara does not disclose concurrently performing motion estimation to “determine which of the prediction modes is an optimum prediction mode.” PO Resp. 13−14; PO Sur-Reply 4 (emphasis omitted). Patent Owner acknowledges that Ishihara discloses that the best prediction mode is selected from the three prediction modes, but argues that “there is no disclosure that the determination of the best prediction mode is based upon comparison of pixels in first- and second-pixel arrays.” PO Resp. 14−15. But the claim does not require that. As pointed out by Petitioner, the comparison of pixel arrays is made in step [1A] of claim 1, and is not disputed by Patent Owner as being disclosed in Ishihara. Pet. Reply 3−4; see Section II.E.1.b. As discussed above, Petitioner has shown the comparison of pixel arrays in Ishihara is to determine an error metric, which is used to determine the optimum prediction mode. Id. at 4−7 (citing Ex. 1006, 1503, 1505, Figs. 2, 6); see also Section II.E.1.b (discussing Ishihara’s block matching technique); prior paragraph (discussing minimum distortion). Although Ishihara discloses the determination of the best prediction mode and motion vectors for a macroblock at the same time, the determination is made based on the error metric coming from the pixel array comparison process. As such, we do not agree with Patent Owner’s argument that determining the best prediction mode in Ishihara is not based on a comparison of pixel arrays. Patent Owner also argues that there is no disclosure in Ishihara that explains how the best prediction mode is used in the motion process discussed therein. PO Resp. 15. Patent Owner further asserts that testimony of Dr. Storer, Petitioner’s declarant, linking the determinations of the best prediction mode and best vector, is entitled to “little to no weight” because it is unsupported by the disclosure of Ishihara itself. Id. Such an assertion is unavailing because the actual testimony of Dr. Storer is supported by additional documentation of the selection of the best mode based on a comparison of prediction errors, as explained by Petitioner. Pet. Reply 10−11 (citing Ex. 1002 ¶¶ 65, 122−134; Ex. 1009, 154). Additionally, even if, as Patent Owner contends, Ishihara does not explain how the best prediction mode is explicitly used in the motion process, it is not necessarily pertinent to element [1B] of claim 1, which only requires a determination of “which of the prediction modes is an optimum prediction mode,” as Patent Owner has acknowledged. PO Resp. 14. As such, we do not agree with Patent Owner’s argument. We determine that Petitioner has demonstrated that element [1B] of claim 1 is taught by Ishihara.” slip op. at 21

  Patent outcomesUS 6,519,005 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 6,519,005
• 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
• Toshiba America Information Systems, Inc. / Msi Computer Corp. v. Walletex Microelectronics Ltd.All claims unpatentable
  PTAB · Feb 26, 2020 · IPR2018-01538 · APJ Scott B Howard · IPR · Final written decision

  Claims 1–24 are unpatentable based on the listed anticipation and obviousness grounds; the Patent Owner’s contingent motion to amend is denied.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art” slip op. at 10

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

    “7. Conclusion on Motion to Amend For the reasons discussed above, Patent Owner has not established that proposed substitute claims 26, 29, 31, and 34 are supported by the original disclosure of the ’825 patent. Additionally, Petitioner has shown by a preponderance of the evidence that proposed substitute claims 25–27, 29, 30, and 32–48 are indefinite and proposed substitute claims 28 and 30 are not enabled. Accordingly, Patent Owner’s Conditional Motion to Amend is denied.31 CONCLUSION32 In summary: 31 In light of the dispositive nature of these determinations, we do not reach the other issues raised by Patent Owner’s Motion to Amend, including the additional arguments Petitioner presents as to why the Motion to Amend should be denied. No implications, especially regarding the merits, should be drawn from our failure to decide these issues. The only reason we do not decide these issues is because it is unnecessary for us to do so. See Beloit Corp. v. Valmet Oy, 742 F.2d 1421, 1423 (Fed. Cir. 1984) (explaining that an administrative agency is at liberty to reach a decision based on a dispositive issue because doing so “can not only save the parties, the [agency], and [the reviewing] court unnecessary cost and effort,” but can “greatly ease the burden on [an agency] faced with a . . . proceeding involving numerous complex issues and required by statute to reach its conclusion within rigid time limits”). 32 Should Patent Owner wish to pursue amendment of the challenged claims in a reissue or reexamination proceeding subsequent to the issuance of this Final Written Decision, we draw Patent Owner’s attention to the April 2019 Notice Regarding Options for Amendments by Patent Owner Through Reissue or Reexamination During a Pending AIA Trial Proceeding. See 84 Fed. Reg. 16,654 (Apr. 22, 2019). If Patent Owner chooses to file a reissue application or a request for reexamination of the challenged patent, we remind Patent Owner of its continuing obligation to notify the Board of any such related matters in updated mandatory notices. See 37 C.F.R. § 42.8(a)(3), (b)(2).” slip op. at 85

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

    “2. Analysis of Claim 1 (Anticipation) For the most part Patent Owner does not dispute that Harkabi” slip op. at 24

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

    “A conclusion of unpatentability based on obviousness must be supported by “some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), cited with approval in KSR, 550 U.S. at 418. The requirement for a reason to combine the references acts as a check on the potential for the improper use of hindsight. Plantronics, Inc. v. Aliph, Inc., 724 F.3d 1343, 1354 (Fed. Cir. 2013) (holding that an articulated reasoning “is especially important to guard against the dangers of hindsight bias”).” slip op. at 40

  Patent outcomesUS 7,458,825 unpatentable
  § 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,458,825
• 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

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.