- Cisco Systems, Inc. v. TQ Delta, LLCAll claims unpatentablePTAB · Mar 12, 2018 · IPR2016-01760 · APJ Trevor M Jefferson · IPR · Final written decision
Claims 1, 2, 4, 11, 12, 14, 16, and 18 are unpatentable as obvious over Bowie and Yamano; Patent Owner’s motion to exclude is denied.
RulingsFinal written decision- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“We are not persuaded by Patent Owner’s arguments which are grounded in the ADSL standard applicable to Bowie. Patent Owner has not provided persuasive evidence or argument that the xDSL improvements in Yamano would alter the ADSL compliance of Bowie to discourage the combination of Bowie and Yamano. PO Resp. 37–39 (citing Ex. 2005 ¶¶ 23, 24, 26, 124–132). Instead, we credit the testimony of Petitioner’s declarant, who testifies that “a POSITA would understand Yamano’s burst mode to be compatible with the ANSI standard because low power mode operation is just an additional function that the standard permits.” Ex. 1012 33 ¶ 23. Thus, we disagree with Patent Owner that Bowie and Yamano are incompatible.” slip op. at 33
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Petitioner’s Declarant Testimony Patent Owner argues that we should ignore Petitioner’s declarant testimony because it is contradictory, and lacks credibility and objective support. PO Resp. 56–59. Specifically, Patent Owner argues that [Petitioner’s declarant,] Dr. Kiaei’s testimony is not reliable or credible, and the Board should give it no weight in evaluating Petitioner’s arguments. See 37 C.F.R. § 42.65(a); Icon Health, 849 F.3d at 1041 (the Board is entitled to “weigh the declarations and conclude that the lack of factual corroboration warrants discounting the opinions expressed”) (quoting In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004)); Rohm & Haas, 127 F.3d at 1092 (noting that “[n]othing in the rules [of evidence] or in our jurisprudence requires the fact finder to credit the unsupported assertions of an expert witness”); In re Nuvasive, 842 F.3d at 1379-1380 (noting that an agency’s factual determination should be based on “such relevant evidence as a reasonable mind might accept as adequate to support a conclusion”).” slip op. at 25
- ExcludeMotion to exclude, deniedDenied
“A motion to exclude is not a vehicle to argue that a reply contains new arguments. See Vibrant Media, Inc. v. General Electric Co., IPR2013- 00170, slip op. at 31 (PTAB June 26, 2014) (Paper 56). We agree with Petitioner, that a motion to exclude is available to parties to explain why certain evidence is inadmissible, and is not the proper place to raise arguments regarding the scope of a reply. Trial Practice Guide, 77 Fed. Reg. 48756, 48767 (Aug. 14, 2012); Liberty Mutual Insurance Co. v. Progressive Casualty Insurance Co., Case No. CBM2012-00002, slip op. at 62 (PTAB Jan. 23, 2014) (Paper 66) (stating that a motion to exclude “is not a mechanism to argue that a reply contains new arguments or relies on evidence necessary to make out a prima facie case”). We also agree with Petitioner that Patent Owner has not carried its burden to show that the identified paragraphs of Exhibit 1012 and Exhibit 1016 are not admissible under the Fed. R. Evid. 402 and 403. Rule 401 of the Federal Rules of Evidence states that evidence is relevant if “it has any tendency to make a fact more or less probable than it would be without the evidence.” Fed. R. Evid. 401. We find that Petitioner has met the threshold to establish that the evidence Patent Owner seeks to exclude is relevant. See OddzOn Prods., Inc. v. Just Toys, Inc., 122 F.3d 1396, 1407 (Fed. Cir. 1997); Laird Techs., Inc. v. GrafTech Int’l Holdings, Inc., IPR2014-00025, slip op. at 44 (PTAB Mar. 25, 2015).” slip op. at 42
- Strike new argumentNew argument consideredDecided for petitioner
“Having reviewed Patent Owner’s listing of statements and evidence in connection with Petitioner’s Reply it deemed to be beyond the proper scope of a reply, and Petitioner’s response, we do not agree with Patent Owner that portions of Petitioner’s Reply are beyond the scope of a proper reply. The mere fact that a petitioner submits rebuttal testimony that relies on new evidence not previously identified in the petition does not suffice to establish its impropriety. Indeed, the very nature of a reply is to rebut the Patent Owner’s response. 37 C.F.R. § 42.23(b). For example, Patent Owner identifies evidence and argument addressed in Petitioner’s Reply to claim construction issues first raised in Patent Owner’s Response. See, e.g., Paper 23 (items 1 and 2); Paper 28 (citing PO Resp. 19–24 as supporting Petitioner’s response to items 1 and 2). Finding that Petitioner’s response to Patent Owner’s claim construction identification is an improper new 43 argument would deprive Petitioner of the ability to address Patent Owner’s claim construction evidence and argument introduced after Institution. Having fully considered Patent Owner’s list of alleged new arguments in Petitioner’s Reply and Petitioner’s identification of the portions in Patent Owner’s Response that prompted Petitioner’s Reply, we do not find that Petitioner introduced improper new argument and evidence that is beyond the scope of a proper reply. Our Order in this proceeding states that “the panel is capable of determining whether new argument/evidence is outside the proper scope of a reply when writing the final written decision.” Paper 22, 3. In this case, we do not agree with Patent Owner that the portions of Petitioner’s Reply and evidence identified in Paper 23 are beyond the scope of a proper reply. Petitioner’s reply argument and evidence are sufficiently responsive to Patent Owner’s argument and evidence introduced in Patent Owner’s response.” slip op. at 43
Patent outcomesUS 9,094,268 unpatentable§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,094,268 - DISH Network, LLC v. TQ Delta, LLCAll claims unpatentablePTAB · Feb 10, 2018 · IPR2016-01469 · APJ Trevor M Jefferson · IPR · Final written decision
Claims 1, 2, 11, and 12 are unpatentable over Bowie, Morelli, and ANSI T1.413; claims 4, 14, 16, and 18 are unpatentable over Bowie and Morelli.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“Having considered the parties’ arguments and evidence, we do not agree with Patent Owner’s proposed construction that “maintaining synchronization” requires timing synchronization by correcting errors or differences between timing references. The claims of the ’268 patent do not recite “synchronization signal” or “synchronization frame” but refer only to “maintaining synchronization” during low power mode without specification as to the method of synchronization. See, e.g., Ex. 1001, 10:6–17 (claims 1 and 2). Indeed, claims 2 and 12 do not recite any particular synchronization signal or synchronization frame as a limitation.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“In light of the arguments and evidence presented, we are not persuaded that this term requires an express construction. Patent Owner’s proposed construction does not add necessary clarity to the claims, as it merely replaces “full power mode operation” with “transmission and/or reception of data during normal operation.” The parties, however, do not dispute the meaning of “full power mode operation.” Accordingly, an express construction is not necessary to resolve the disputes between the parties.” slip op. at 13
- Skill levelOther
“We determine that no express finding on a specific corresponding level of technical education and experience is necessary. Here, the level of ordinary skill in the art is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 14
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“Petitioner notes, Morelli expressly discusses the receiver receiving while the transmitter is in low power mode. Reply 8–9; Ex. 1005, Fig. 6A (block 102), 15:46–52; 16:29–34). Thus, Morelli does not disclose mere boilerplate language that is not specific or nonenabling, but specifically discloses a transmitter 12 and receiver 16 in Figures 6A–9 where the receiver remains on while the transmitter is off. Reply 7–8. We are not persuaded by Patent Owner’s argument regarding Morelli’s Received Signal Strength Indicator (RSSI). PO Resp. 31–32, 33–34 (discussing RSSI). We do not agree with Patent Owner that Morelli’s teaching regarding using RSSI to determine whether to enter or exit a low power (“sleep”) (Ex. 1005, Abstract) could indicate that the receiver in Morelli is performing the RSSI function to determine when data is “available to be received,” but not actually using the receiver to receive data during the transceiver’s low power mode. Id. Such speculation is belied by the express teachings of Morelli. As Petitioner argues, Morelli states that “it is equally possible to have either the transmitter 12 or receiver 16 be designed to enter a sleep mode as described herein while the other is always in an active mode” (Ex. 1005, 21:51–54). Pet. 23, 40–41. We are also persuaded by Petitioner’s argument and evidence that Morelli is enabling, as it discloses in Figures 6A–9 and accompanying embodiments that the data received by the receiver is provided to MAC 30 to determine if the received packet requires a response necessary to switch the transmitter from sleep to active mode. Reply 9; Ex. 1005, Figs. 1 (control signal on line 38), 6A (block 102), 15:46–52, 15:59–62, 16:29–34; see also Pet. 40–41 (citing Ex. 1005, 1:45–50, 6:43–51, 8:16–20, 8:46–59, Fig. 2, 8:60–9:57, Fig. 3, 14:6–64, 19:7–10, 21:51–54). As Petitioner argues, in the case when Morelli determines that a response is not required, the receiver in Morelli is on and actively receiving data to make the determination based on the data received, while the transmitter is off or sleeping. Reply 8–9; Ex. 1005, Fig. 5A, 15:46–52; see also Pet. 40–41. We also note that Petitioner has provided testimony that a person of ordinary skill in the art would have been able to configure a circuit in accordance with the operation of Morelli and Bowie combined. Ex. 1002 ¶¶ 152–153; Pet. 41; Reply 8–9. Accordingly, we determine that Morelli provides sufficient detailed disclosure teaching of a receiver in full power mode and the transmitter in low power mode as required in the challenged claims.” slip op. at 22
Patent outcomesUS 9,094,268 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,094,268 - Cisco Systems, Inc. / DISH Network, LLC et al. v. TQ Delta, LLCRehearing deniedPTAB · Feb 1, 2018 · IPR2016-01020 · APJ Matthew R Clements · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, finding no overlooked or misapprehended matter that would change its prior decision applying the prior art to the challenged claims.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). The party must identify specifically all matters we misapprehended or overlooked, and the place where each matter was addressed previously in a motion, an opposition, or a reply. Id. With this in mind, we address the arguments presented by Patent Owner.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“carrier phases.” Independent claims 13 and 20 similarly recite “scramble[s] a plurality of phases.” We adopted Patent Owner’s proposed construction in part by construing “scrambling . . . a plurality of carrier phases” to mean “adjusting the phases of a plurality of carriers in a single multicarrier symbol.” Dec. 6–9. We did not add to that construction “by pseudo-randomly varying amounts” because Patent Owner did not show why that additional language should be included for the broadest reasonable construction of the term “scrambling . . . a plurality of carrier phases.” Id. Patent Owner argues that our construction is overly broad because it encompasses adjusting the phases of every carrier in the single multicarrier symbol by the same amount. Req. Reh’g. 1–2. Such an adjustment, according to Patent Owner, would not reduce peak-to-average power ratio (“PAR”), which the parties and the panel all agree scrambling must do. Id. at 3–5. “The FWD misapprehends or overlooks that, under any proper construction, there must at a minimum be varying amounts by which the phases are adjusted within a single multicarrier symbol (i.e., from carrier-tocarrier) such that PAR is reduced.” Id. at 2.” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“technique “will increase PAR” (Dec. 27–28), but does not characterize Shively as having a “high” or “increased” PAR.4 Our Decision relies upon page 28 of Patent Owner’s Response (Paper 12), which concedes that “Shively’s ‘spreading’ technique will contribute a small uptick in clipping probability.” Patent Owner does not dispute, in its Request for Rehearing, Shively’s technique increases PAR. With respect to Patent Owner’s argument that “there is no PAR problem presented by Shively” (Req. Reh’g. 13) and “the only PAR problem in this case relates to clipping” (id. at 14), we considered that argument and found it unpersuasive. Dec. 27–28. As we noted, “Petitioner’s reason to combine does not depend on the PAR increase exceeding some specific numeric threshold,” “there also is no dispute that equipment designed to handle a higher PAR can be larger, more expensive, and more power hungry than equipment designed to handle a lower PAR,” and, therefore, “a person of ordinary skill in the art . . . would have been motivated to reduce PAR regardless of whether Shively’s technique resulted in clipping.” Id. In other words, as we explained in our Decision, Shively’s PAR need not result in clipping in order to motivate a person of ordinary skill in the art because we are persuaded such a person would have been motivated sufficiently to reduce PAR by the benefit of being able to use smaller, less expensive, less power hungry components.” slip op. at 8
Claim construction§ 103 obviousnessPatents in suitUS 9,014,243 - Cisco Systems, Inc. / DISH Network, LLC et al. v. TQ Delta, LLCRehearing deniedPTAB · Feb 1, 2018 · IPR2016-01021 · APJ Sally C Medley · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving intact the final written decision finding the challenged claims unpatentable.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). The party must identify specifically all matters we misapprehended or overlooked, and the place where each matter was addressed previously in a motion, an opposition, or a reply. Id. With this in mind, we address the arguments presented by Patent Owner.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“construction in part by construing “scrambling the phase characteristics of the carrier signals” to mean “adjusting the phases of a plurality of carriers in a single multicarrier symbol.” Dec. 8–11. We did not add to that construction “by pseudo-randomly varying amounts” because Patent Owner did not show why that additional language should be included for the broadest reasonable construction of the term “scrambling the phase characteristics of the carrier signals.” Id. Patent Owner argues that our construction is overly broad because it encompasses adjusting the phases of every carrier in the single multicarrier symbol by the same amount. Req. Reh’g. 2–3. Such an adjustment, according to Patent Owner, would not reduce peak-to-average power ratio (“PAR”), which the parties and the panel all agree scrambling must do. Id. at 3–6. “The FWD misapprehends or overlooks that, under any proper construction, there must at a minimum be varying amounts by which the phases are adjusted within a single multicarrier symbol (i.e., from carrier-to-carrier) such that PAR is reduced.” Id. at 2.” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“With respect to Patent Owner’s argument that “there is no PAR problem presented by Shively” (Req. Reh’g. 14) and “the only PAR problem in this case relates to clipping” (id. at 15), we considered that argument and found it unpersuasive. Dec. 30–31. As we noted, “Petitioner’s reason to combine does not depend on the PAR increase exceeding some specific numeric threshold,” “there also is no dispute that equipment designed to handle a higher PAR can be larger, more expensive, and more power hungry than equipment designed to handle a lower PAR,” and, therefore, “a person of ordinary skill in the art . . . would have been motivated to reduce PAR regardless of whether Shively’s technique resulted in clipping.” Id. In other words, as we explained in our Decision, Shively’s PAR need not result in clipping in order to motivate a person of ordinary skill in the art because we are persuaded such a person would have been motivated sufficiently to reduce PAR by the benefit of being able to use smaller, less expensive, less power hungry components.” slip op. at 8
Claim construction§ 103 obviousnessPatents in suitUS 8,718,158 - Arris Group, Inc. v. TQ Delta, LLCNo claims unpatentablePTAB · Dec 13, 2017 · IPR2016-01160 · APJ Matthew R Clements · IPR · Final written decision
Claims 1–20 were not held unpatentable because the asserted combination did not teach the construed synchronization signal.
RulingsFinal written decision- Prior constructionPrior construction not adoptedOther
“Owner that our construction in the Decision to Institute is overly broad to the extent it encompasses a synchronization frame. Petitioner relies heavily on column 5, lines 50 to 52 of the ’404 patent, but that disclosure does not unambiguously support Petitioner’s proposed construction. The paragraph, which we reproduce below for context, describes “normal (non-sleep mode) operation”: During normal (non-sleep mode) operation, a phase-lock loop (PLL) 62 receives from the FFT 56 a timing reference signal 62a (see FIG. 1A) via a line 62b. The timing reference signal 62a is transmitted from the transmitter with which the receiver 16 communicates (e.g., the CO transmitter). This signal is advantageously a pure tone of fixed frequency and phase which is synchronized with the Master Clock in the transmitter; its frequency defines the frame rate of the transceivers. Other forms of timing signal may, of course, be used, but use of a pure tone has the advantage of simplicity and reliability even when portions of the transceiver are powered down in accordance with the invention. The PLL 62 locks itself to this signal and drives clock 30 in synchronism with the Master Clock in the driving transmitter. This also synchronizes frame counter 34 of the CPE transceiver to the corresponding frame counter of the CO transceiver. Control of the receiver section is provided by the controller 32. Ex. 1001, 5:37–53 (emphasis added to 5:50–52). Rather than read “this” as referring to timing reference signal 62a, as Petitioner contends, we read “this” as referring to what is disclosed in the preceding sentence—i.e., driving clock 30 in synchronism with the Master Clock in the driving transmitter. The synchronism of clock 30 with the Master Clock in the driving transmitter is what “synchronizes frame counter 34 of the CPE transceiver to the corresponding frame counter of the CO transceiver.” Ex. 1001, 5:50–52.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Having considered the arguments and evidence, we are not persuaded that this term requires an express construction. Patent Owner’s proposed construction merely replaces “full power mode operation” with “transmission and/or reception of data during normal operation.” The parties, however, do not dispute the meaning of “full power mode operation.” As a result, an express construction of this term is not necessary in order to resolve the parties’ dispute.” slip op. at 10
- Skill levelOther
“We determine that no express finding on a specific corresponding level of technical education and experience is necessary. Here, the level of ordinary skill in the art is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“We agree with Patent Owner. The contentions in the Petition are based upon Petitioner’s proposed construction of “synchronization signal” as encompassing a synchronization frame—i.e., “allowing for frame synchronization.” See, e.g., Pet. 24, 37–38. We have not adopted that construction, however, for the reasons discussed above. Because our construction of “synchronization signal” excludes a synchronization frame, we are not persuaded that the argument and evidence in the Petition shows that the combination of Bowie, Vanzieleghem, and ANSI T1.413 teaches transmitting/receiving, in full power mode, a “synchronization signal.” Moreover, we agree with Patent Owner that Petitioner’s reliance, in the Reply, upon the teachings of a pilot tone in Vanzieleghem and ANSI T1.413 constitutes a change in theory and, therefore, is beyond the scope of a proper reply. Notwithstanding the mention of “a pilot tone” in paragraph 58 of Dr. McNally’s declaration, the Petition itself unambiguously identifies the synchronization frame, not a pilot tone, as the recited “synchronization symbol.” See, e.g., Pet. 37–38 (citing Bowie’s and ANSI T1.413’s teachings of synchronization frame). We, therefore, do not address whether the pilot tone taught in Vanzieleghem and in ANSI T1.413 teaches the recited “synchronization signal.” As a result, Petitioner has not shown, by a preponderance of the evidence, that claims 1–20 would have been obvious over Bowie, Vanzieleghem, and ANSI T1.413.” slip op. at 15
Patent outcomesUS 8,611,404 not shown unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,611,404 - PTAB · Nov 14, 2017 · IPR2015-01802 · APJ Matthew R Clements · IPR · Rehearing
Granted rehearing and held claims 2, 4, and 6 unpatentable as obvious over Rabinovich because the wireless-network limitation encompasses a connection through a wireless hub.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“II. STANDARD OF REVIEW A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). The party must identify specifically all matters we misapprehended or overlooked, and the place where each matter was addressed previously in a motion, an opposition, or a reply. Id. With this in mind, we address the arguments presented by Petitioner.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“Ex. 1002, 3:41–49. Thus, the ’680 patent itself does not limit the recited “wireless network” to an ad hoc network. Moreover, we are not persuaded by Patent Owner’s contention that our construction of “computer unit” requires limiting the recited “wireless network” to an ad hoc network. Specifically, dependent claims 2 and 4 each recite “wherein the at least one computer unit and the at least two data storage units are connected over a wireless network.” Dependent claim 6 recites a similar limitation. We construed “computing unit” to encompass any computing device. Dec. 6. We did not, as Patent Owner contends, “construe[] both the ‘computer unit’ and ‘data storage units’ as hosts” (PO Br. 3). Although our construction encompasses Rabinovich’s hosts, it does not require the recited “computer unit” and “data storage units” to be hosts. Moreover, even assuming that both units are Rabinovich’s “hosts,” dependent claims 2, 4, and 6 require only that they be “connected over a wireless network,” not “between” or “directly connected to each other,” as Patent Owner contends (PO Br. 3). Thus, we are not persuaded by Patent Owner’s contention that two hosts “connected over a wireless network” necessarily requires a wireless connection “between” two hosts. Id. Based on our review of the ’680 patent, we construe “connected over a wireless network” as broad enough to encompass a connection through a wireless hub.” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“Ex. 1002, 3:41–49. Thus, the ’680 patent itself does not limit the recited “wireless network” to an ad hoc network. Moreover, we are not persuaded by Patent Owner’s contention that our construction of “computer unit” requires limiting the recited “wireless network” to an ad hoc network. Specifically, dependent claims 2 and 4 each recite “wherein the at least one computer unit and the at least two data storage units are connected over a wireless network.” Dependent claim 6 recites a similar limitation. We construed “computing unit” to encompass any computing device. Dec. 6. We did not, as Patent Owner contends, “construe[] both the ‘computer unit’ and ‘data storage units’ as hosts” (PO Br. 3). Although our construction encompasses Rabinovich’s hosts, it does not require the recited “computer unit” and “data storage units” to be hosts. Moreover, even assuming that both units are Rabinovich’s “hosts,” dependent claims 2, 4, and 6 require only that they be “connected over a wireless network,” not “between” or “directly connected to each other,” as Patent Owner contends (PO Br. 3). Thus, we are not persuaded by Patent Owner’s contention that two hosts “connected over a wireless network” necessarily requires a wireless connection “between” two hosts. Id. Based on our review of the ’680 patent, we construe “connected over a wireless network” as broad enough to encompass a connection through a wireless hub. Because we determine that the “wireless network” recited in dependent claims 2, 4, and 6 need not be an ad hoc network, Patent Owner’s argument that Rabinovich’s replication method would have been unsuitable for use over an ad hoc network does not persuasively rebut Petitioner’s showing. Having considered the arguments and evidence of both parties, we are persuaded that Petitioner has shown by a preponderance of the evidence that dependent claims 2, 4, and 6 are unpatentable under 35 U.S.C. § 103(a) as obvious over Rabinovich.” slip op. at 7
- ExcludeNot reached
“We decline to assess the merits of Petitioner’s Motion to Exclude. Even without excluding the identified evidence, we have concluded that Petitioner has demonstrated, by a preponderance of the evidence, that claims 2, 4, and 6 are unpatentable. Accordingly, Petitioner’s Motion to Exclude is dismissed as moot.” slip op. at 8
Claim construction§ 103 obviousnessPatents in suitUS 7,904,680 - Department Of Justice v. Discovery Patents, LLCSome claims unpatentablePTAB · Nov 9, 2017 · IPR2016-01041 · APJ Matthew R Clements · IPR · Final written decision
Claims 11, 12, 14, 16–18, and 20–31 are unpatentable over Monroe ’183; claims 15 and 19 were not shown unpatentable over Monroe ’183.
RulingsFinal written decision- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“A petition for inter partes review may be considered only if, inter alia, “the petition identifies all real parties in interest.” 35 U.S.C. § 312(a)(2). The Office Patent Trial Practice Guide provides guidance regarding factors to consider in determining whether a party is a real party in interest. 77 Fed. Reg. 48,756, 48,759–60 (Aug. 14, 2012). Considerations may include whether a non-party “funds and directs and controls” an IPR petition or proceeding. Id. at 48,760. Additional relevant factors include: the non-party’s relationship with the petitioner; the non-party’s relationship to the petition itself, including the nature and/or degree of involvement in the filing; and the nature of the entity filing the petition. Id. Whether a party who is not a named participant in a given proceeding is a real party in interest to that proceeding “is a highly fact-dependent question.” Id. at 48,759. There is no “bright line test.” Id. Courts invoke the term real party in interest to describe relationships and considerations sufficient to justify applying conventional principles of estoppel and preclusion. Id. A non-party’s participation with a petitioner may be overt or covert, and the evidence may be direct or circumstantial, but the evidence as a whole must show that the non-party possessed effective control over the petitioner relating to the inter partes review. Zoll Lifecor Corp. v. Philips Elecs. N. Am. Corp., Case IPR2013-00609, slip op. at 10 (PTAB Mar. 20, 2014) (Paper 15). We have considered Patent Owner’s and Petitioner’s arguments and evidence, and we determine that Petitioner was not required to identify the Third Parties as real parties in interest because there is insufficient evidence that any of these companies exercised, or could exercise, control over Petitioner with respect to this proceeding. Patent Owner’s arguments regarding the motion practice before the Court of Federal Claims and notification of that action to the Third Parties does not reflect otherwise. Although we acknowledge that the existence of the above-identified indemnification clauses supports Patent Owner’s argument, we are unaware of any inter partes review decision in which a real party in interest finding was based solely on evidence of an indemnification clause, and we decline to do so here.” slip op. at 7
- PTAB / AIA Trials › Constitutional / APA (Arthrex, Oil States, due process)Decided for petitioner
“We decline to consider Patent Owner’s constitutional challenge as, generally, “administrative agencies do not have jurisdiction to decide the constitutionality of congressional enactments.” See Riggin v. Office of Senate Fair Employment Practices, 61 F.3d 1563, 1569 (Fed. Cir. 1995); see also Harjo v. Pro-Football, Inc., 50 USPQ2d 1705, 1710 (TTAB 1999) (“[T]he Board has no authority . . . to declare provisions of the Trademark Act unconstitutional.”); Amanda Blackhorse v. Pro-Football, Inc., 111 USPQ2d 1080 (TTAB 2014), rev’d on other grounds, 284 F. Supp. 2d 96 (D.D.C. 2003); but see Am. Express Co. v. Lunenfeld, Case CBM2014- 00050, slip op. at 9–10 (PTAB May 22, 2015) (Paper 51) (“for the reasons articulated in Patlex [Corp. v. Mossinghoff, 758 F.2d 594 (Fed. Cir. 1985)], we conclude that covered business method patent reviews, like reexamination proceedings, comply with the Seventh Amendment”).” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“We agree with Petitioner. The ’980 patent states that “the term ‘secured location’ may refer to residences, commercial properties, public venues, such as hospitals and sports arenas, government facilities, military installations and any other location, outside or inside, which is protected by a security alarm system.” Ex. 1003, 3:20–24. This definition is non-limiting and does not exclude a changeable area or region. Based on the record developed during this proceeding, we maintain that the broadest reasonable construction in light of the ’980 patent of “secured location” is “any location, outside or inside, which is protected by a security alarm system.”” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“We agree with Petitioner. Although the Specification of the ’980 patent gives examples of “response agency,” e.g., Ex. 1003, 1:41–43 (“an emergency response agency (e.g., the police department, the fire department or an emergency medical team)”), Patent Owner does not identify, and we do not find, a definition in the specification limiting “response agency” to 911, police, or fire departments. Patent Owner also does not identify, and we do not find, anything in the entire disclosure of the ’980 patent requiring a “response agency” to be distinct from the “surveillance system infrastructure.” Accordingly, we decline to limit “response agency” to 911, police, or fire departments, or construe it to be distinct from surveillance system infrastructure.” slip op. at 11
Patent outcomesUS 7,323,980 mixedClaim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 7,323,980 - SK Hynix Inc. / SK Hynix America Inc. et al. v. Netlist, Inc.Rehearing deniedPTAB · Oct 30, 2017 · IPR2017-00730 · APJ Matthew R Clements · IPR · Rehearing
The Board denied Petitioner’s rehearing request, leaving in place the denial of institution on claims 1–5, 12–14, and 19–20 over Saito and Swain, and claims 3 and 13–14 over Saito, Swain, and Kim.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). The party must identify specifically all matters we misapprehended or overlooked, and the place where each matter was addressed previously in a motion, an opposition, or a reply. Id. When rehearing a decision on a petition, we review the decision for an abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion may be indicated if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. See Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Not reached
“Ex. 1005 ¶ 101. Paragraph 101 describes Figure 7. See id. ¶¶ 100, 101. Recognizing that the timing of signals DQ-Pre (between memory controller and data buffer 300 on connectors 120) and the timing of signals DQ-Post (between data buffer 300 and memory chips 200 on data lines L1 or L2) is “off” because “data DQ is buffered by the data register buffer 300,” Saito teaches that “it is required to perform a timing adjustment between the memory chips 200 and the data register buffer 300 and a timing adjustment between the data register buffer 300 and the memory controller in a separate manner.” Ex. 1005 ¶ 101. This paragraph, therefore, does not teach that retiming from CL=5 to CL=6 is based on “time intervals from the leveling operations,” as Petitioner contends. Req. Reh’g 7. To the contrary, it explicitly teaches the necessity of a “separate manner” for adjusting timing between a data buffer and memory chip (i.e., for “signals received by the each respective buffer circuit during a memory write operation,” as recited in claim 1) and adjusting timing between a data buffer and a memory controller (i.e., for “transmission of a respective set of read data signals received from the respective group of memory devices,” as recited in claim 1).” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“We disagree. Neither paragraph teaches that the re-timing from CL=5 to CL=6 is “based on signals received by the each respective buffer circuit during a memory” read or write “operation,” as required by the claims. Paragraph 101 of Saito is reproduced below. Although the data DQ-Pre and the data DQ-Post have the same content, because the data DQ is buffered by the data register buffer 300, the timing is off between the data DQ-Pre and the data DQ-Post. The same is true for a relationship between the data strobe signal DQS-Pre and the data strobe signal DQS-Post. Therefore, in the present embodiment, it is required to perform a timing adjustment between the memory chips 200 and the data register buffer 300 and a timing adjustment between the data register buffer 300 and the memory controller in a separate manner. Details on the timing adjustments will be described later. Ex. 1005 ¶ 101. Paragraph 101 describes Figure 7. See id. ¶¶ 100, 101. Recognizing that the timing of signals DQ-Pre (between memory controller and data buffer 300 on connectors 120) and the timing of signals DQ-Post (between data buffer 300 and memory chips 200 on data lines L1 or L2) is “off” because “data DQ is buffered by the data register buffer 300,” Saito teaches that “it is required to perform a timing adjustment between the memory chips 200 and the data register buffer 300 and a timing adjustment between the data register buffer 300 and the memory controller in a separate manner.” Ex. 1005 ¶ 101. This paragraph, therefore, does not teach that retiming from CL=5 to CL=6 is based on “time intervals from the leveling operations,” as Petitioner contends. Req. Reh’g 7. To the contrary, it explicitly teaches the necessity of a “separate manner” for adjusting timing between a data buffer and memory chip (i.e., for “signals received by the each respective buffer circuit during a memory write operation,” as recited in claim 1) and adjusting timing between a data buffer and a memory controller (i.e., for “transmission of a respective set of read data signals received from the respective group of memory devices,” as recited in claim 1).” slip op. at 3
- Strike new argumentNew argument disregardedDenied
“These arguments were not in the Petition so we could not have misapprehended or overlooked them. To the extent that Petitioner is arguing that these paragraphs of our Decision indicate a misapprehension of what was argued in the Petition, we disagree. Specifically, we are unpersuaded by Petitioner’s contention that Saito’s teaching to use time A to time reception of read data by “input buffer circuit INB and the like” (Ex. 1005 ¶ 149) teaches using that same interval “to time transmission” of read data, as claimed, merely because data is received by that input buffer circuit before, at some later point, being transmitted to the memory controller. Req. Reh’g. 8–9. We also are not persuaded that Saito’s use of “and the like” extends to the timing of the output of read data from buffer 300 in the manner argued. Req. Reh’g 9–11. This argument is particularly unpersuasive because, as our Decision points out (Dec. 13–14), Saito discloses an alternative to timing the output of read data from data buffer 300, which is a read leveling operation by the memory controller. Thus, although “Petitioner does not rely on those data buffer-memory controller operations for any of its arguments” (Req. Reh’g 13), they are nevertheless relevant because they corroborate that Saito does not teach its data buffer 300 using a time interval “based on signals received by [it]” for the purpose of “tim[ing] transmission of a respective set of read data signals.”” slip op. at 5
§ 103 obviousnessPatents in suitUS 9,128,632 - Cisco Systems, Inc. / DISH Network, LLC et al. v. TQ Delta, LLCAll claims unpatentablePTAB · Oct 26, 2017 · IPR2017-00420 · APJ Sally C Medley · IPR · Final written decision
Claims 1–6 are unpatentable as obvious over Milbrandt, Hwang, Chang, and ANSI T1.413 under § 103(a).
RulingsFinal written decision- Skill levelSkill level board ownOther
“Patent Owner’s expert, Dr. Douglas Chrissan, opines that a person of ordinary skill in the art would have had (1) a bachelor’s degree in electrical engineering, and (2) at least three years of experience working with multicarrier communication systems. Ex. 2001 ¶ 34. We determine that no express finding on a specific corresponding level of technical education and experience is necessary. Here, the level of ordinary skill in the art is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“frequency domain received idle channel noise information,” “array,” and “transceiver.” Pet. 8–9. In our Decision to Institute, we interpreted these terms. Dec. 5–8. Neither party has indicated that our interpretations were improper and we do not perceive any reason or evidence that now compels any deviation from our initial interpretations. See, PO Resp. 6 (“Patent Owner does not contest the Board’s express claim constructions.”); Pet. Reply 8 n.2. Accordingly, the following constructions apply to this Decision: Claim Term Construction frequency domain received idle information about the background channel noise information noise present in each of a plurality of frequency subchannels when the subchannels are not in use array an ordered collection of multiple data items of the same type transceiver a device, such as a modem, with a transmitter and receiver slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“ordinary skill would have recognized that Chang measures frequency domain received idle channel noise information (background noise).10 Pet. 31‒32; Ex. 1009, 60‒61. Petitioner concludes that it would have been obvious for Milbrandt to measure and evaluate background channel noise, for the purpose of assessing system interactions from different sources of noises and to address any problems. Pet. 32; Ex. 1009, 35‒37. Notwithstanding Patent Owner’s arguments with respect to the combined teachings of Milbrandt and Chang, which we address below, we are persuaded by Petitioner’s showing, and agree that it would have been obvious to combine Chang with the teachings of Milbrandt for the purpose of assessing interactions from other sources. The record evidence supports the conclusion of obviousness, because combining Chang’s teaching of assessing idle channel noise to Milbrandt’s system would have provided a person of ordinary skill in the art additional information, such as assessing interactions from other sources, enabling a person of ordinary skill in the art to have taken remedial measures to address system interactions. Pet. 16 (citing Ex. 1009, 35‒36).” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“A reference does not teach away if it merely expresses a general preference for an alternative invention but does not “criticize, discredit, or otherwise discourage” investigation into the invention claimed. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (emphasis added). Our reviewing court has recently held that “[e]vidence concerning whether the prior art teaches away from a given invention must relate to and be commensurate in scope with the ultimate claims at issue.” Idemitsu Kosan Co. v. SFC Co., 2016-2721, 2017 WL 4078964 *4 (September 15, 2017) (citing MeadWestVaco Corp. v. Rexam Beauty and Closures, Inc., 731 F.3d 1258, 1264‒1265 (Fed. Cir. 2013); In re Kahn, 441 F.3d 977, 990 (Fed. Cir. 2006); In re Zhang, 654 F. App’x 488, 490 (Fed. Cir. 2016) (“While a prior art reference may indicate that a particular combination is undesirable for its own purposes, the reference can nevertheless teach that combination if it remains suitable for the claimed invention.”) (emphasis added). The claims do not foreclose a “truck roll.” For instance, claim 1 recites a transceiver capable of transmitting test information over a communication channel. Claim 1 further recites that the transceiver comprise a “transmitter portion capable of transmitting a message” where “the message comprises one or more data variables that represent the test information” and that at least one data variable “comprises an array representing frequency domain received idle channel noise information.” Thus, claim 1 is directed to a transceiver and the type of message the transceiver is capable of transmitting. There is nothing in claim 1 that specifies how the transceiver message originates or how the test information is measured. While we agree with Patent Owner that the Specification of the ’430 patent describes that dispatching a technician to a remote site to perform testing, e.g., a “truck roll,” is time consuming and expensive (PO Resp. 12 (citing Ex. 1001, 1:21‒23)), we find that there are described embodiments of the invention that include a truck roll. Ex. 1001, 6:31‒38 (“If the CRC checker 210 does not determine a correct CRC at the maximum power level and the diagnostic link mode [cannot] be initiated then other methods for determining diagnostic information are utilized, such as dispatching a technician to the remote site, or the like.”) and 3:12‒14 (“[t]he systems and methods of this invention can enter the diagnostic link mode manually, for example, at the direction of a technician or a user after completing a portion of initialization.”). For these reasons, the claimed invention does not preclude a truck roll. In any event, as discussed above, the claims are not directed to how test information is obtained or measured. Accordingly, even if Patent Owner is correct that Milbrandt discourages a truck roll for its own purposes, we find the combined teachings of Milbrandt and Chang are relevant because the combination remains suitable for the claimed invention.” slip op. at 20
Patent outcomesUS 7,835,430 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,835,430 - Cisco Systems, Inc. / DISH Network, LLC et al. v. TQ Delta, LLCAll claims unpatentablePTAB · Oct 26, 2017 · IPR2017-00251 · APJ Sally C Medley · IPR · Final written decision
Claims 1–6 are unpatentable as obvious over Milbrandt, Hwang, Chang, and ANSI T1.413.
RulingsFinal written decision- Skill levelSkill level board ownOther
“We determine that no express finding on a specific corresponding level of technical education and experience is necessary. Here, the level of ordinary skill in the art is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for petitioner
“frequency domain received idle channel noise information,” “array,” and “transceiver.” Pet. 8–9. In our Decision to Institute, we interpreted these terms. Dec. 5–8. Neither party has indicated that our interpretations were improper and we do not perceive any reason or evidence that now compels any deviation from our initial interpretations. See, PO Resp. 6 (“Patent Owner does not contest the Board’s express claim constructions.”); Pet. Reply 8 n.2. Accordingly, the following constructions apply to this Decision: slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“A reference does not teach away if it merely expresses a general preference for an alternative invention but does not “criticize, discredit, or otherwise discourage” investigation into the invention claimed. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (emphasis added). Our reviewing court has recently held that “[e]vidence concerning whether the prior art teaches away from a given invention must relate to and be commensurate in scope with the ultimate claims at issue.” Idemitsu Kosan Co. v. SFC Co., 2016-2721, 2017 WL 4078964 *4 (September 15, 2017) (citing MeadWestVaco Corp. v. Rexam Beauty and Closures, Inc., 731 F.3d 1258, 1264‒1265 (Fed. Cir. 2013); In re Kahn, 441 F.3d 977, 990 (Fed. Cir. 2006); In re Zhang, 654 F. App’x 488, 490 (Fed. Cir. 2016) (“While a prior art reference may indicate that a particular combination is undesirable for its own purposes, the reference can nevertheless teach that combination if it remains suitable for the claimed invention.”) (emphasis added).” slip op. at 20
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“A reference does not teach away if it merely expresses a general preference for an alternative invention but does not “criticize, discredit, or otherwise discourage” investigation into the invention claimed. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (emphasis added). Our reviewing court has recently held that “[e]vidence concerning whether the prior art teaches away from a given invention must relate to and be commensurate in scope with the ultimate claims at issue.” Idemitsu Kosan Co. v. SFC Co., 2016-2721, 2017 WL 4078964 *4 (September 15, 2017) (citing MeadWestVaco Corp. v. Rexam Beauty and Closures, Inc., 731 F.3d 1258, 1264‒1265 (Fed. Cir. 2013); In re Kahn, 441 F.3d 977, 990 (Fed. Cir. 2006); In re Zhang, 654 F. App’x 488, 490 (Fed. Cir. 2016) (“While a prior art reference may indicate that a particular combination is undesirable for its own purposes, the reference can nevertheless teach that combination if it remains suitable for the claimed invention.”) (emphasis added). The claims do not foreclose a “truck roll.” For instance, claim 1 recites a transceiver capable of transmitting test information over a communication channel. Claim 1 further recites that the transceiver comprise a “transmitter portion capable of transmitting a message” where “the message comprises one or more data variables that represent the test information” and that at least one data variable “comprises an array representing frequency domain received idle channel noise information.” Thus, claim 1 is directed to a transceiver and the type of message the transceiver is capable of transmitting. There is nothing in claim 1 that specifies how the transceiver message originates or how the test information is measured. While we agree with Patent Owner that the Specification of the ’430 patent describes that dispatching a technician to a remote site to perform testing, e.g., a “truck roll,” is time consuming and expensive (PO Resp. 12 (citing Ex. 1001, 1:21‒23)), we find that there are described embodiments of the invention that include a truck roll. Ex. 1001, 6:31‒38 (“If the CRC checker 210 does not determine a correct CRC at the maximum power level and the diagnostic link mode [cannot] be initiated then other methods for determining diagnostic information are utilized, such as dispatching a technician to the remote site, or the like.”) and 3:12‒14 (“[t]he systems and methods of this invention can enter the diagnostic link mode manually, for example, at the direction of a technician or a user after completing a portion of initialization.”). For these reasons, the claimed invention does not preclude a truck roll. In any event, as discussed above, the claims are not directed to how test information is obtained or measured. Accordingly, even if Patent Owner is correct that Milbrandt discourages a truck roll for its own purposes, we find the combined teachings of Milbrandt and Chang are relevant because the combination remains suitable for the claimed invention.” slip op. at 20
Patent outcomesUS 7,835,430 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,835,430
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.