• Hanshow America Inc. / Hanshow Technology Co., Ltd. v. Ses-Imagotag Inc.No claims unpatentable
  PTAB · Mar 28, 2025 · IPR2024-00208 · APJ Terrence W Mcmillin · IPR · Final written decision

  Claims 1–20 were not shown unpatentable because Wu and the asserted combinations did not teach or suggest the claimed acquisition and transmission of a sequence of shelf label identifiers.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “identifying information and the label location information[,]’ by extrapolating from the ESL that is already installed as required by steps S104 and S106.” Pet. 16 (citing Ex. 1003, 4:26-28; Ex. 1009 ¶ 81) (third and fourth alterations in original). There is no explanation or reasoning provided in the Petition to support this assertion. See id. We can find no support for this assertion that the method described in Wu requires this undisclosed step or that it could not otherwise possibly work14 to create the relationship between the label identifying information and the label location information of the added shelf label by extrapolation from the ESL that is already installed. The only evidence cited in support of this assertion is a short passage in Wu (Ex. 1003, 4:26–28) and paragraph 81 of the Declaration of Dr. Tentzeris (Ex. 1009). This short passage in Wu provides that, “[i]n step S106, the deploying device 130 or the controlling device 120 creates the relationship between the label identifying information and the label location information.” Ex. 1003, 4:26–28. This passage does not support Petitioner’s assertion. The cited paragraph in the Declaration of Dr. Tentzeris provides: 81. In my opinion, a POSITA would understand that, without acquiring this second identifier in the sequence (which 14 Prior art patents enjoy a presumption of enablement. Apple Inc. v. Corephotonics, Ltd., 861 Fed. Appx. 443, 450 (Fed. Cir. 2021). Wu is presumed to enable what it discloses. See Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1355 (Fed. Cir. 2003) (“a presumption arises that both the claimed and unclaimed disclosures in a prior art patent are enabled”). However, even without applying this presumption, Wu provides a disclosure that establishes how to create the relationship between the label identifying information and the label location information of the added shelf label by extrapolation or interpolation without the reading device acquiring the label identifying information of the adjacent shelf label which is already installed. See Ex. 1003, 3:59–4:28. is explicitly shown in FIG. 3B of Wu), the reading device could not possibly “create[] the relationship between the label identifying information and the label location information[,]” by extrapolating from the ESL that is already installed as required by steps S104 and S106. Ex. 1003, [4:26-28]. Ex. 1009 ¶ 81. Dr. Tentzeris does not support his opinion with any explanation, reasoning, facts or data, here or elsewhere. This unsupported, conclusory testimony is entitled to little or no weight. See cxLoyalty, Inc. v. Maritz Holdings Inc., 986 F.3d 1367, 1378 (Fed. Cir. 2021) (“We do not accord weight to conclusory expert testimony.”); see also 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). There is no evidence that supports Petitioner’s assertion that a skilled artisan would understand from Wu that the reading device acquires the label identifying information of a second shelf label that is already installed and adjacent to the added shelf label.” slip op. at 27

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “A person having ordinary skill in the art relating to the subject matter of the ’709 Patent as of the Critical Date (“POSITA”) would have had at least a Master of Science Degree in an academic area emphasizing electrical engineering, computer engineering, wireless telecommunication systems, or an equivalent field (or a similar technical Master’s degree, or higher degree). Pet. 6 (citing Ex. 1009 ¶ 31). Petitioner further contends, in the alternative, that “a POSITA would have had a Bachelor’s Degree (or higher degree)” in one of the fields noted above, with “two or more cannot demonstrate unpatentability of any claim of the ’709 Patent because Petitioners fail to identify a ‘reading device’ that acquires and transmits the ‘sequence of label identifiers’ recited by the claims.”). Our decision is based on our determination that Petitioner has failed to establish that the cited art teaches or suggests acquiring and transmitting a sequence of label identifiers as recited in the independent claims of the ’709 patent. years of work experience” in one of those fields. Id. According to Petitioner, “[a]dditional education in a relevant field or relevant industry experience may compensate for a deficit in one of the other aspects of the requirements stated above.” Id. Patent Owner applies Petitioner’s definition of the level of ordinary skill in the art. PO Resp. 16. Determining the level of ordinary skill in the art involves various factors, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). The prior art of record also reflects the level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). We adopt the assessment offered by Petitioner, as it is not disputed by the Patent Owner and is consistent with the ’709 patent and the asserted prior art.” slip op. at 10

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

    “necessary to resolve the controversy involved in this IPR, and the terms of the ’709 Patent should be given their ordinary and customary meaning.” Pet. 4. In the claim construction section of its Response, Patent Owner discusses the claim terms “location(s)” and “planogram.” See PO Resp. 16– 29. As discussed in our analysis below, we determine that Petitioner has failed to show that the prior art teaches or suggests certain limitations of the claims that do not include either the term “location(s)” or “planogram.” Accordingly, no need exists to expressly construe any claim terms to resolve the parties’ disputes. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). Our decision relies on the plain and ordinary meaning of the limitations on which our decision is based and no need exists to expressly construe any claim term to make our decision.8” slip op. at 9

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “Based on the entire record of this proceeding, we find that Wu does not teach or suggest: (1) “acquiring, by a reading device, a sequence of label identifiers . . . comprising a label identifier of an adjacent shelf label which is adjacent to the added shelf label” as recited in independent claim 1: (2) “transmitting, by the reading device, the sequence of label identifiers to the computer system” as recited in independent claim 1: (3) “acquiring, by a reading device, a sequence of label identifiers . . . comprising a label identifier of an adjacent shelf label which is adjacent to the added shelf label” as recited in independent claim 10; (4) “transmitting, by the reading device, the sequence of label identifiers to the computer system” as recited in independent claim 10: (5) “the computer system being configured to receive, from the reading” slip op. at 37

  Patent outcomesUS 11,010,709 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 11,010,709
• Apple Inc. v. Scramoge Technology Ltd.No claims unpatentable
  PTAB · May 5, 2023 · IPR2022-00118 · APJ Brian J Mcnamara · IPR · Final written decision

  Claims 6, 7, 16, 17, 19, and 20 were not shown unpatentable over Hasegawa under § 103 because Hasegawa did not disclose the separately claimed connection terminals.

  RulingsFinal written decision

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

    “We turn first to the language of the claim. Claim 6 recites a coil, a first connection terminal connected to an outer end of the coil and a second connection terminal connected to an inner end of the coil (claim limitations 6.1, 6.2, and 6.3). Claim 6 further recites a connecting unit (claim limitation 6.5) comprising a third connection terminal connected to the first connection terminal, a fourth connection terminal connected to the first connection terminal, and a wiring layer connected to the third connection terminal (claim limitations 6.6, 6.7, and 6.8). Claim 6 does not explicitly recite a connection between the coil and the connecting unit, except through the first and second terminals, i.e., the first and second connection terminals are connected to the outer and inner ends of the coil and the third and fourth connection terminals of the connecting unit, respectively. The Specification informs us that “the coil unit 200 (subject matter not recited in the claim) may include first connection terminal 210, a second connection terminal 220 and a coil 230” and that “first connection terminal 210 is located at one end of the coil 230 and the second connection terminal is provided at the other end of the coil 230.” Ex. 1001, 4:57–63. The Specification further states “[t]he first and second connection terminals 210 and 220 are necessary for connection with the connecting unit 300.” Id. at 4:66–67. The claim recites the first and second connection terminals are connected to the coil; and the Specification describes the first and second connection terminals 210, 220 as being part of coil unit 200, a structure different from coil 230. The Specification does not describe an embodiment in which the first and second connection terminals are not part of a coil unit that is separate from the connecting unit. Therefore, we do not read claim 6 to encompass an embodiment in which the first and second connection terminals are part of the coil itself or are part of a connecting unit that is directly connected to the coil without a separate coil unit in between them.. A reading of the claim that is consistent with the claim language and the Specification also requires we read claim 6 to require that the coil and the connecting unit are separate.” slip op. at 11

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “The fundamental premise of Petitioner’s argument is inconsistent with our claim construction. Section V supra. Petitioner acknowledges that in Hasegawa the entire line 34, 35 (not just the ends) is a part of the connecting unit. Pet. 31; Reply 2; Hr’g. Tr. 10:1–14:15. In Hasegawa, then, all the connection terminals (the first, second, third and fourth terminals) are on the connecting unit. Thus, we agree with Patent Owner that Hasegawa does not disclose the claimed first and second connection terminals connected to the coil as separate and distinct from the claimed “connecting unit” that overlaps the receiving space. Petitioner has thus failed to establish by a preponderance of the evidence that claim 6 is unpatentable. 3. Independent Claim 16 Independent claim 16 is similar to claim 6, except that instead of limiting the location of the connecting unit to “overlapping the receiving space in a vertical direction perpendicular to the adhesive layer,” as recited in claim 6, claim 16 recites only that the connecting unit is “disposed corresponding to the receiving space.” The difference between claims 6 and 16 does not bear on the parties’ arguments or on the substance of our analysis concerning the disclosures in Hasegawa. See Pet. 38–42. Therefore, we determine that Petitioner has failed to establish by a preponderance of the evidence that challenged claim 16 is unpatentable over Hasegawa.” slip op. at 19

  • PTAB / AIA Trials › Motions to amend / substitute claimsNot reached

    “Having reviewed the arguments of the parties and the supporting evidence, we conclude that Petitioner has not demonstrated by a preponderance of the evidence that the challenged claims are unpatentable. Having determined that no challenged claims are unpatentable, we dismiss Patent Owner’s Revised Motion to Amend as moot.” slip op. at 2

  Patent outcomesUS 10,804,740 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,804,740
• ZTE Corporation / ZTE (USA), Inc. et al. v. WSOU Investments, LLC D/B/A Brazos Licensing And DevelopmentNo claims unpatentable
  PTAB · Oct 14, 2022 · IPR2021-00698 · APJ John A Hudalla · IPR · Final written decision

  Claims 1–45 were not shown unpatentable because the cited references did not establish the claimed limitations arranged as required or cure that deficiency.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “ordinary skill in the art (or “POSITA”) “would at least have [had] a bachelor’s degree in electrical engineering, computer engineering, or a related engineering discipline and two or more years of industry experience in the field of telecommunications, or equivalent experience, education, or both” and “knowledge or familiarity with telecommunication.” Pet. 13 (citing, inter alia, Ex. 1003 ¶ 41). Patent Owner does not propose an alternative definition. See PO Resp. 4. We adopt Petitioner’s definition of the level of ordinary skill in the art without the qualifiers “at least” and “or more,” which introduce ambiguity. Based on the full trial record, we are satisfied that this definition comports with the level of skill necessary to understand and implement the teachings of the ’505 patent and the asserted prior art.” slip op. at 8

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyDecided for petitioner

    “In our Decision on Institution, we determined that 35 U.S.C. § 112 ¶ 6 did not apply to the limitation in claim 14 that recites “a formatter to format the received data into at least one SMS (Short Message Service) message.” Dec. on Inst. 11 (citing Diebold Nixdorf, Inc. v. Int’l Trade Comm’n, 899 F.3d 1291, 1298 (Fed. Cir. 2018); Ex. 1001, 1:66–2:1, 4:26–27, 4:46–51). Neither party addressed this determination after institution. We maintain our determination that § 112 ¶ 6 does not apply to this limitation, and we instead apply the plain and ordinary meaning. Thus, we determine that no terms require explicit construction. See, e.g., Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 10

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

    “Thus, we determine that no terms require explicit construction. See, e.g., Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 10

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

    “c. Analysis At the outset, we note that Petitioner relies solely on an express anticipation theory for this ground. Petitioner did not put forth any contentions based on inherent anticipation, and Petitioner did not put forth any arguments or evidence like those in Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381 (Fed. Cir. 2015), to show that “a person of skill in the art, reading the reference, would ‘at once envisage’ the claimed arrangement or combination.” Thus, we must decide whether Haller discloses “all elements of [the] claimed invention arranged as in the claim.” Finisar Corp. v. DirecTV Grp., Inc., 523 F.3d 1323, 1334 (Fed. Cir. 2008).” slip op. at 19

  Patent outcomesUS 7,203,505 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,203,505
• Elekta, Inc. v. Varian Medical Systems, Inc.No claims unpatentable
  PTAB · Jun 5, 2017 · IPR2016-00380 · APJ Patrick M Boucher · IPR · Final written decision

  Claims 1, 2, and 4–9 were not shown unpatentable under either § 103 ground; claims 13 and 18 were canceled after Patent Owner’s motion to amend was granted.

  RulingsFinal written decision

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

    “Although a claim term that does not include the word “means” is presumed not to invoke a means-plus-function analysis, that presumption may be overcome if the limitation does not “recite sufficiently definite structure” or recites a “function without reciting sufficient structure for performing that function.” Williamson v. Citrix Online, LLC, 792 F.3d 2 Section 4(c) of the Leahy-Smith America Invents Act (“AIA”) redesignated 35 U.S.C. § 112, ¶ 6, as 35 U.S.C. § 112(f). Pub. L. No. 112- 29, 125 Stat. 284, 296 (2011). Because the ’703 patent has a filing date before September 16, 2012 (effective date of § 4(c)), we refer to the pre-AIA version of § 112. 1339, 1349 (Fed. Cir. 2015). Petitioner’s expert, Russell J. Hamilton, Ph.D., testifies that “the term ‘logic’ would not be recognized by one of ordinary skill in the art as providing sufficiently definite structure for performing the claimed functions,” and that “[l]ogic can be implemented in software, in hardware, and in combinations of hardware and software.” Ex. 1021 ¶ 122. The parties provide sufficient reasoning to overcome the presumption against a means-plus-function construction, and we accordingly construe “first logic” and “second logic” in accordance with 35 U.S.C. § 112 ¶ 6.” slip op. at 9

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

    “untenable because its broad identification only of “computer software and/or computer hardware” as structure for performing the recited function is too generic. The law regarding construction of means-plus-function limitations as applied to computer-implemented elements is well-established: For computer-implemented means-plus-function claims where the disclosed structure is a computer programmed to implement an algorithm, “the disclosed structure is not the general purpose computer, but rather the special purpose computer programmed to perform the disclosed algorithm.” . . . This court permits a patentee to express that algorithm in any understandable terms including as a mathematical formula, in prose, . . . , or as a flow chart, or in any other manner that provides sufficient structure. Finisar Corp. v. DirecTV Group, Inc., 523 F.3d 1323, 1340 (Fed. Cir. 2008) (citations omitted). Patent Owner’s proposed construction is superior because it identifies the algorithm through explicit reference to the flow chart of Figure 4 and related disclosure in the Specification. Patent Owner’s position is supported by testimony of its expert, Sasa Mutic, Ph.D., who refers to those disclosures in opining that “the [’703] patent describes a process of steps for obtaining the result of properly positioning a patient to begin a treatment” and that “Fig. 4 of the [’703] patent provides a flowchart of a process for use of an embodiment of the invention.” Ex. 2012 ¶ 69. Petitioner takes the position that the ultimate scope of the corresponding algorithm “does not matter” because Petitioner contends that the challenged claims are unpatentable even under Patent Owner’s proposed construction. Pet. Reply 315, 3. Nevertheless, Petitioner attacks Patent Owner’s proposed construction as “implicitly adopt[ing]” two “additional but unreasonable limitations.” Id. First, Petitioner contends that “the claims do not require the performance of the function of the second logic to be fully automated and instead permit human interaction with the second logic.” Id. Second, Petitioner contends that blocks 520 (“Position Patient”), 525 (“Register Treatment Image Data with Simulator/Reference Image Data and Reposition Patient”), and 530 (“Position Clinical Treatment Machine”) of Figure 4 “need not be performed in their entirety by logic so long as the second logic is used for some step in each block.” Id. at 4. We find no inconsistency in these positions with Patent Owner’s proposed construction. In light of the foregoing considerations, we adopt Patent Owner’s proposed construction.” slip op. at 14

  • PTAB / AIA Trials › §315(e) estoppelEstoppel does not applyDecided for patent owner

    “Petitioner contends that the claims canceled in IPR2016-00341 “were directed to methods that recited the function performed by the second logic,” and that “Patent Owner is now estopped from arguing the subject matter of the same scope is patentable.” Pet. Reply 315, 1. Petitioner cites no authority to support this position, which improperly focuses on only one limitation of the claims, divorced from the claims’ other limitations. We reject Petitioner’s contention because the method claims canceled in IPR2016-00341 do not constitute “subject matter of the same scope” as the apparatus claims challenged in these proceedings.” slip op. at 16

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “skill in the art relevant to the ’703 patent “would be a person with a graduate degree (MS or PhD) in medical physics or a related field (e.g. Physics, Engineering) and three years of experience in radiation oncology beyond the completion date of their degree.” Ex. 1021 ¶ 17. Patent Owner’s expert, Dr. Mutic, expresses a level of ordinary skill that is generally similar to Petitioner’s expert, but accounts for the possibility of a medical education instead of a medical-physics education: [A] person of ordinary skill in the art . . . would be a medical physicist with a Ph.D. (or similar advanced degree) in physics, medical physics, or a related field, and two or more years of experience in radiation oncology physics and image processing/computer programming related to radiation oncology applications. Alternatively, one of ordinary skill in the art might have an M.D. degree in the same relevant fields and two or more years of practical experience with image processing and the use of computer systems that is related to medical applications. Ex. 2012 ¶ 36. The similarity in the experts’ opinions is reinforced by Dr. Mutic’s assertion that he has “considered Dr. Hamilton’s definition of the level of ordinary skill in the art and determined that it does not differ from [his] own expressions of this concept in any way that is relevant to the opinions” he expresses in his Declaration. Id. ¶ 38. Based on the expert testimony in the record, we agree with and adopt the level of skill expressed by Dr. Hamilton.” slip op. at 17

  Patent outcomesUS 8,867,703 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,867,703
• Elekta, Inc. v. Varian Medical Systems, Inc.No claims unpatentable
  PTAB · Jun 5, 2017 · IPR2016-00315 · APJ Patrick M Boucher · IPR · Final written decision

  Claims 1, 2, and 4–9 were not shown unpatentable under either §103 ground because the references did not disclose the claimed second logic; claims 13 and 18 were canceled by motion.

  RulingsFinal written decision

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

    “Although a claim term that does not include the word “means” is presumed not to invoke a means-plus-function analysis, that presumption may be overcome if the limitation does not “recite sufficiently definite structure” or recites a “function without reciting sufficient structure for performing that function.” Williamson v. Citrix Online, LLC, 792 F.3d 2 Section 4(c) of the Leahy-Smith America Invents Act (“AIA”) redesignated 35 U.S.C. § 112, ¶ 6, as 35 U.S.C. § 112(f). Pub. L. No. 112- 29, 125 Stat. 284, 296 (2011). Because the ’703 patent has a filing date before September 16, 2012 (effective date of § 4(c)), we refer to the pre-AIA version of § 112. 1339, 1349 (Fed. Cir. 2015). Petitioner’s expert, Russell J. Hamilton, Ph.D., testifies that “the term ‘logic’ would not be recognized by one of ordinary skill in the art as providing sufficiently definite structure for performing the claimed functions,” and that “[l]ogic can be implemented in software, in hardware, and in combinations of hardware and software.” Ex. 1021 ¶ 122. The parties provide sufficient reasoning to overcome the presumption against a means-plus-function construction, and we accordingly construe “first logic” and “second logic” in accordance with 35 U.S.C. § 112 ¶ 6.” slip op. at 9

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

    “untenable because its broad identification only of “computer software and/or computer hardware” as structure for performing the recited function is too generic. The law regarding construction of means-plus-function limitations as applied to computer-implemented elements is well-established: For computer-implemented means-plus-function claims where the disclosed structure is a computer programmed to implement an algorithm, “the disclosed structure is not the general purpose computer, but rather the special purpose computer programmed to perform the disclosed algorithm.” . . . This court permits a patentee to express that algorithm in any understandable terms including as a mathematical formula, in prose, . . . , or as a flow chart, or in any other manner that provides sufficient structure. Finisar Corp. v. DirecTV Group, Inc., 523 F.3d 1323, 1340 (Fed. Cir. 2008) (citations omitted). Patent Owner’s proposed construction is superior because it identifies the algorithm through explicit reference to the flow chart of Figure 4 and related disclosure in the Specification. Patent Owner’s position is supported by testimony of its expert, Sasa Mutic, Ph.D., who refers to those disclosures in opining that “the [’703] patent describes a process of steps for obtaining the result of properly positioning a patient to begin a treatment” and that “Fig. 4 of the [’703] patent provides a flowchart of a process for use of an embodiment of the invention.” Ex. 2012 ¶ 69.” slip op. at 14

  • PTAB / AIA Trials › §315(e) estoppelEstoppel does not applyDecided for patent owner

    “Petitioner contends that the claims canceled in IPR2016-00341 “were directed to methods that recited the function performed by the second logic,” and that “Patent Owner is now estopped from arguing the subject matter of the same scope is patentable.” Pet. Reply 315, 1. Petitioner cites no authority to support this position, which improperly focuses on only one limitation of the claims, divorced from the claims’ other limitations. We reject Petitioner’s contention because the method claims canceled in IPR2016-00341 do not constitute “subject matter of the same scope” as the apparatus claims challenged in these proceedings.” slip op. at 16

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “skill in the art relevant to the ’703 patent “would be a person with a graduate degree (MS or PhD) in medical physics or a related field (e.g. Physics, Engineering) and three years of experience in radiation oncology beyond the completion date of their degree.” Ex. 1021 ¶ 17. Patent Owner’s expert, Dr. Mutic, expresses a level of ordinary skill that is generally similar to Petitioner’s expert, but accounts for the possibility of a medical education instead of a medical-physics education: [A] person of ordinary skill in the art . . . would be a medical physicist with a Ph.D. (or similar advanced degree) in physics, medical physics, or a related field, and two or more years of experience in radiation oncology physics and image processing/computer programming related to radiation oncology applications. Alternatively, one of ordinary skill in the art might have an M.D. degree in the same relevant fields and two or more years of practical experience with image processing and the use of computer systems that is related to medical applications. Ex. 2012 ¶ 36. The similarity in the experts’ opinions is reinforced by Dr. Mutic’s assertion that he has “considered Dr. Hamilton’s definition of the level of ordinary skill in the art and determined that it does not differ from [his] own expressions of this concept in any way that is relevant to the opinions” he expresses in his Declaration. Id. ¶ 38. Based on the expert testimony in the record, we agree with and adopt the level of skill expressed by Dr. Hamilton.” slip op. at 17

  Patent outcomesUS 8,867,703 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,867,703
• Ericsson Inc. / Telefonaktiebolaget LM Ericsson v. Intellectual Ventures II LLCNo claims unpatentable
  PTAB · Feb 15, 2017 · IPR2015-01872 · APJ David C Mckone · IPR · Final written decision

  Claims 1–4, 7, 11–14, 17, and 20–25 were not shown unpatentable because Lu did not teach providing resources to queued users of packet data.

  RulingsFinal written decision

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

    “1. Means-plus-function Terms Claims 11–14 and 17 recite several terms in means-plus-function format. Claim 24 recites several terms in the form of “logic for” performing the functions of parallel terms recited in claim 11. In the Institution Decision, we adopted Petitioner’s proposed constructions, set forth at pages 10–15 of the Petition, as our constructions for the means-plus-function terms of claims 11–14 and 17. Dec. 17–18. We also determined to treat the “logic for” terms of claim 24 as means-plus-function terms, see Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1349 (Fed. Cir. 2015), and adopted Petitioner’s statement of the structure corresponding to the “logic for” terms (Pet. 10–13). Id. at 18. Patent Owner does not dispute these constructions. PO Resp. 8. On the complete record, we maintain these constructions.” slip op. at 8

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

    “Read in light of the Specification, “providing said communication resource to queued packet data users on a tier-by-tier basis,” as recited in claim 1, means providing the communication resource to queued users of packet data on a tier-by-tier basis. We are persuaded by Patent Owner that this is the only reasonable reading that is consistent with the Specification. Petitioner provides no examples in the Specification consistent with its reading. Although the preamble of claim 1 recites a “method of processing queued data packets,” this is consistent with the Specification’s general statement that the invention pertains to “an improved packet data queueing algorithm,” Ex. 1001, 9:3. We do not read this general statement in the preamble of claim 1 (or the similar preamble recitations in claims 11 and 24) to provide a basis for construing more specific language in the body of the claim in a manner inconsistent with the description in the Specification. In sum, the only reasonable reading of “queued packet data users,” in the context of the dependent claims, and in light of consistent description in the Specification, is queued users of packet data, not users of queued packet data.” slip op. at 14

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached

    “such as initial class queues 416–438, organized into high, medium, and low classes, are “a plurality of individual packet data queues.” Pet. 19–20. As to claim element 1[b], “determining a total number of data packets that can use an available communication resource,” Petitioner points to Lu’s description of using a weight-based scheduling scheme to transfer packets from one level queue to another. Id. at 23–24. Petitioner identifies the transmission capacity of the output link (e.g., 209) as the “available communication resource,” and contends that such weighted transfer during a cycle includes determining a total number of data packets that can be transferred for a cycle.5 Id. at 24. Petitioner further contends that Lu’s description of using subscriber weights based on subscriber volumes for particular classes teaches “allocating different weights to each tier of service based on a number of users requiring access to the available communication resource,” as recited in claim element 1[c]. Id. at 28–30. Regarding claim element 1[d], Petitioner argues that “[b]ecause the weights of Lu vary with the 4 We refer the claim elements 1[a]–1[e] as identified in Section I.E, above. 5 Patent Owner contends that Lu does not teach claim element 1[b]. PO Resp. 12–23. Because we decide that Petitioner has not shown that Lu teaches claim element 1[e], as detailed below, we do not decide whether Petitioner has shown that Lu teaches claim element 1[b]. available capacity (which in turn would affect the ‘total number of data packets that can use an available communication resource’), the weights of Lu consistently indicate how much (i.e., ‘proportion’) of the capacity (‘total number of data packets’) each class (i.e., ‘tier of service’) will receive.” Id. at 32.” slip op. at 22

  • Strike new argumentNew argument disregardedDecided for patent owner

    “Petitioner’s Reply argument is not simply rebuttal to the Patent Owner Response. Rather, it is an attempt to formulate a new prima facie case of obviousness. The Office has instructed that such improper Reply argument will not be considered: A reply may only respond to arguments raised in the corresponding opposition. [37 C.F.R.] § 42.23. While replies can help crystalize issues for decision, a reply that raises a new issue or belatedly presents evidence will not be considered and may be returned. . . . Examples of indications that a new issue has been raised in a reply include new evidence necessary to make out a prima facie case for the patentability or 6 In the Institution Decision, we considered Petitioner’s argument and evidence (including Mr. Lanning’s testimony, Ex. 1006 ¶¶ 96–97) and determined that Petitioner did not present evidence sufficient to show a reason to modify Lu and, accordingly, declined to institute as to claims 5 and 15. Dec. 26–27. unpatentability of an original or proposed substitute claim, and new evidence that could have been presented in a prior filing. Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,767 (Aug. 14, 2012); see also Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1370 (Fed. Cir. 2016) (The “Board did not err in refusing the reply brief as improper under 37 C.F.R. § 42.23(b) because IBS relied on an entirely new rationale.”). Accordingly, we do not consider Petitioner’s Reply argument for claim element 1[e]. For the same reasons, we do not consider the argument Petitioner made for the first time at the oral argument (Tr. 22:17–23:2). Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,768 (“A party may rely upon evidence that has been previously submitted in the proceeding and may only present arguments relied upon in the papers previously submitted. No new evidence or arguments may be presented at the oral argument.”); see also Dell Inc. v. Acceleron, LLC, 818 F.3d 1293, 1301 (Fed. Cir. 2016) (“In this case, the Board denied Acceleron its procedural rights by relying in its decision on a factual assertion introduced into the proceeding only at oral argument, after Acceleron could meaningfully respond.”).” slip op. at 25

  Patent outcomesUS 7,385,994 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,385,994
• Holt’S Cigar Holdings, Inc. v. Boveda Inc.No claims unpatentable
  PTAB · Jan 3, 2017 · IPR2015-01845 · APJ Christopher M Kaiser · IPR · Final written decision

  Claims 14, 15, and 17–22 were not proven unpatentable under § 103 over Saari because the evidence did not establish the claimed viscosity limitation.

  RulingsFinal written decision

  • BurdenNot shown unpatentable

    “content is minimal,” Dr. Muzzio testifies that “the viscosity of the salt solution is unlikely to vary significantly” when the relative humidity of the environment is raised from zero to the equilibrium value of 74 percent. Id. ¶ 97 (emphasis added). This final point, however, is unsupported by any persuasive underlying evidence or reasoning. Although it seems reasonable to expect that small changes in the composition of a solution occasioned by small changes in the amount of water present in the solution would lead only to small changes in viscosity, our rules do not permit us to give significant weight to “[e]xpert testimony that does not disclose the underlying facts or data on which the opinion is based.” 37 C.F.R. § 42.65(a). Dr. Muzzio did not supply any test data regarding the actual change in viscosity that would be caused by the change in relative humidity discussed in his thought experiment, nor did he supply any scientific reasoning to support his conclusion that small changes in water content are “unlikely” to cause viscosity “to vary significantly.” Further, Dr. Muzzio does not explain how large an “insignificant” variance in viscosity is, making it impossible for us to conclude that the change in viscosity in his thought experiment is small enough to keep the actual measured viscosity of Saari’s salt solution within the range recited in the challenged claims. And Petitioner does not direct us to any evidence of record that supplies the missing support for Dr. Muzzio’s opinions. Accordingly, we conclude that, under Petitioner’s proposed interpretation of “has a viscosity . . . in an environment with a relative humidity of less than 5%,” Petitioner has not shown by a preponderance of the evidence that Saari teaches or suggests the limitation “wherein the salt solution has a viscosity of 1500–10,000 cps in an environment with a relative humidity of less than 5%.”” slip op. at 10

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “Saari’s teachings would have been understood by a person of ordinary skill in the art as teaching or suggesting viscosity measured under these conditions. Pet. 25–26 (citing Ex. 1003 ¶¶ 92–101). Specifically, Petitioner’s declarant, Dr. Muzzio, testifies that, using a humidity control device of a size and construction disclosed in Saari in an environment of a size disclosed in Saari and with zero percent relative humidity, approximately one-tenth of one percent of the water in the device would be lost to the environment in the process of the device coming to equilibrium with the environment. Ex. 1003 ¶¶ 94–96. Because “the change in water content is minimal,” Dr. Muzzio testifies that “the viscosity of the salt solution is unlikely to vary significantly” when the relative humidity of the environment is raised from zero to the equilibrium value of 74 percent. Id. ¶ 97 (emphasis added). This final point, however, is unsupported by any persuasive underlying evidence or reasoning. Although it seems reasonable to expect that small changes in the composition of a solution occasioned by small changes in the amount of water present in the solution would lead only to small changes in viscosity, our rules do not permit us to give significant weight to “[e]xpert testimony that does not disclose the underlying facts or data on which the opinion is based.” 37 C.F.R. § 42.65(a). Dr. Muzzio did not supply any test data regarding the actual change in viscosity that would be caused by the change in relative humidity discussed in his thought experiment, nor did he supply any scientific reasoning to support his conclusion that small changes in water content are “unlikely” to cause viscosity “to vary significantly.” Further, Dr. Muzzio does not explain how large an “insignificant” variance in viscosity is, making it impossible for us to conclude that the change in viscosity in his thought experiment is small enough to keep the actual measured viscosity of Saari’s salt solution within the range recited in the challenged claims. And Petitioner does not direct us to any evidence of record that supplies the missing support for Dr. Muzzio’s opinions. Accordingly, we conclude that, under Petitioner’s proposed interpretation of “has a viscosity . . . in an environment with a relative humidity of less than 5%,” Petitioner has not shown by a preponderance of the evidence that Saari teaches or suggests the limitation “wherein the salt solution has a viscosity of 1500–10,000 cps in an environment with a relative humidity of less than 5%.” The same faults render Petitioner’s argument unsuccessful under Patent Owner’s proposed interpretation of “has a viscosity . . . in an environment with a relative humidity of less than 5%.” Under Patent Owner’s interpretation, Petitioner must show by a preponderance of the evidence that Saari teaches or suggests a device with, among other things, a salt solution that has a viscosity of between 1,500 centipoise and 10,000 centipoise when that device is placed into an environment with less than five percent relative humidity, and that the viscosity remains within this range when the humidity of the environment reaches five percent. Dr. Muzzio provides some testimony on this point: “Since the range of ‘0–74%’ encompasses ‘less than 5%,’ the viscosity of the salt solution is also unlikely to vary significantly in an environment with a relative humidity of less than 5%.” Ex. 1003 ¶ 98. This testimony rests on the unsupported testimony that the viscosity is “unlikely to vary significantly” between zero and 74 percent. For the same reasons discussed above regarding paragraph 97 of the Muzzio Declaration, we find that paragraph 98 is unsupported. Accordingly, we conclude that, under Patent Owner’s proposed interpretation of “has a viscosity . . . in an environment with a relative humidity of less than 5%,” Petitioner has not shown by a preponderance of the evidence that Saari teaches or suggests the limitation “wherein the salt solution has a viscosity of 1500–10,000 cps in an environment with a relative humidity of less than 5%.”” slip op. at 9

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

    “environment.” Pet. 4; Resp. 3–5. In the Institution Decision, we construed “environment” as “a finite three-dimensional space wherein the relative humidity is to be modified or controlled.” Inst. Dec. 6–7. Subsequently, Patent Owner argued that this definition does not capture the full scope of spaces in which the user of the claimed humidity control device intends for the humidity to be controlled, because it is limited “to only those areas [in which the humidity is] yet to be modified or controlled,” excluding those spaces in which the humidity is currently being or has been modified or controlled. Resp. 3–5. Accordingly, Patent Owner argues that “environment” should be construed as “a finite three-dimensional space in which the relative humidity is to be modified or controlled, is in the process of being modified or controlled, or has been modified or controlled.” Id. Petitioner argues that Patent Owner’s suggested additions are unnecessary because our earlier construction is not limited to spaces in which the humidity control or modification will take place in the future. Reply 1–2. We agree with Patent Owner that the term “environment” should not be limited to humidity control that takes place in the future, and we agree with Petitioner that the construction adopted in our Institution Decision is not so limited. Accordingly, we construe “environment” as “a finite three-dimensional space wherein the relative humidity is to be modified or controlled.” To the extent that this construction could be interpreted as excluding humidity modification or control that is ongoing or that happened in the past, we reject such an interpretation. slip op. at 5

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner

    “wall means” and “amount sufficient to thicken the salt solution.” Pet. 4. Patent Owner does not dispute either of these proposed constructions on the trial record. Resp. 1–29. We need not construe either “wall means” or “amount sufficient to thicken the salt solution” in order to resolve this case, so we do not construe either term expressly. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”). Accordingly, there are no additional terms that we need to construe expressly at this time. slip op. at 6

  Patent outcomesUS 6,921,026 not shown unpatentable
  Claim construction
  Patents in suitUS 6,921,026
• Vmware, Inc. / International Business Machines Corporation et al. v. Electronics And Telecommunications Research InstituteNo claims unpatentable
  PTAB · Dec 9, 2015 · IPR2014-00901 · APJ Gregg I Anderson · IPR · Final written decision

  Claims 1–9 were not shown unpatentable over Mylex and Hathorn because Petitioner failed to show a person of ordinary skill would have been motivated to combine them.

  RulingsFinal written decision

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

    “Decision is incorrect for a number of reasons. Petitioner points out that the Webster’s definition does not support the “single logical drive” construction of RAID. Pet. Reply 3 (citing Ex. 2004, 308). As discussed above, Webster’s describes RAID generally as including levels, then defines the levels separately, each as including a “single logical drive.” However, that the general RAID definition and the definition of RAID 10 from Webster’s, or any other dictionary, do not include the “single logical drive,” is not dispositive. Rather, we must look to how the person of ordinary skill in the art would understand a RAID. See Translogic Tech., 504 F.3d at 1257. The evidence of what would be understood by one of ordinary skill, as represented by the testimony of Drs. Horst, Conte, and Katz, and authors Weygant, Chen, and Chong, is compelling. Petitioner’s argument based on the Webster’s definition of RAID is, at best, equivocal from an evidentiary standpoint. Indeed, Petitioner acknowledges that RAID can present as a “single logical unit [drive].” Pet. Reply 3. We, therefore, are not persuaded that Petitioner has met its burden of proving that the proffered dictionaries support a broader construction of RAID, i.e., to not be defined as a “single logical drive.”” slip op. at 12

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner

    “We are not persuaded by Patent Owner’s arguments. It is always necessary to review the Specification to determine whether the inventor has used any terms in a manner inconsistent with their ordinary meaning. See Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996).10 The claims must be read in view of the Specification. Id. Patent Owner’s evidence of how a person of ordinary skill would understand the terms is that the terms, though different, are both “network interconnection devices.” Ex. 2301 ¶¶ 58–59. Additionally, Patent Owner’s expert acknowledged “hub” and “switch” may be used interchangeably. See Pet. Reply 7 (citing Ex. 2302, 30:16–18). The Specification recognizes this as well, stating that “hubs 440, 441 are provided to connect a system connected to these hubs by one network and maintain the network …, and it can be as a hub or a switch. Hereinafter, they are named a ‘hub’ altogether.” Id. at 6–7 (citing Ex. 1001, 3:13–18). Thus, consistent with the Specification and our construction from the ’635 Final Decision, “connection unit” is “a hub or switch.”” slip op. at 16

  • Obviousness (§103) › Analogous artAnalogous artMotivation not foundDecided for patent owner

    “determine whether Petitioner has provided a sufficient rationale for a person of ordinary skill in the art to combine Hathorn and Mylex. One of the arguments presented involves the allegation that Mylex and Hathorn may be combined based on both being analogous art. Pet. 14–15, Pet. Reply 8–13. That Mylex and Hathorn are in one field is not, by itself, dispositive. See KSR, 550 U.S. at 418. We must look to other factors, like design incentives and other market forces, to determine whether the person of ordinary skill would be prompted to make the modification. Id. In reviewing the record here, Petitioner’s arguments in its briefs that Hathorn is analogous art, i.e., in the same field, do not reach, let alone explain, why the person of ordinary skill would be prompted to combine the two. Pet. 14–15, Pet. Reply 8–13, 20. At the oral hearing, Petitioner did not point to any additional argument or evidence on its field of endeavor argument. Tr. 6:14–23, 7:13–14. Conversely, Patent Owner asserted correctly that, even if the field of endeavor is the same, “[y]ou still need some motivation or other rationale to make a combination and that is what is missing in this case.” Id. at 47:5–7. Accordingly, Petitioner has not persuaded us that the fact that Mylex and Hathorn are in the same field of endeavor establishes a rationale for combining the two.” slip op. at 29

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

    “ports. First, the ground of unpatentability at issue relies on modification of Mylex’s reserved ports to establish the heartbeat path through a network switch, motivated by Hathorn’s communication paths through network switches. See Ex. 1003 ¶¶ 78–80. Petitioner does not allege, nor do we find, that Hathorn teaches or suggests modifying an offline port in a controller to establish a peer-to-peer connection through the network switch. The address of the Hathorn secondary device, although set to zero, is an address nonetheless. See Ex. 1005 at 11:6212:2. We credit Dr. Conte’s testimony that “the storage pertinent controller ports in Hathorn are always active.” Ex. 2301 ¶ 116. Petitioner’s offer of Hathorn’s peer-to-peer connection as some evidence of addressability of ports is incompatible with Mylex’s port operation. Moreover, even if Mylex’s “Reserved” ports were to be modified to operate like Hathorn’s ports, Petitioner offers no credible explanation of how or why the person of ordinary skill would make modification. The Petition states that the expense of communication paths would be reduced “by modifying network interface controlling unit ports to use the existing switch network for communications between RAID controllers (instead of using a direct “hearbeat” path). Pet. 18 (emphasis added). The Declaration of Dr. Horst repeats this general statement verbatim with no added factual support or further explanation. See Ex. 1003 ¶ 32. Furthermore, to the extent Petitioner’s declarant testifies that Mylex’s ports are replaced with or substituted by Hathorn’s “dynamically modifiable ports,” we find the testimony not persuasive. See Ex. 1003 ¶¶ 4855 (cited in Petition at page 18). Instead, we agree with Patent Owner that Hathorn’s ports are not interchangeable with Mylex’s ports because of the fundamental operational differences of these devices. See PO Resp. 5254. For example, we credit Dr. Conte’s testimony that the Hathorn ports operate as endpoints of established links in a circuit-switched network, whereas Mylex’s ports are nodes in a fibre-channel network that use packet-switched communications. Ex. 2301 ¶ 117. Further, we credit Dr. Conte’s testimony that the nature of the heartbeats and disk drive traffic data are different such that the links dedicated to transferring disk drive traffic data would not motivate the elimination of the heartbeat path. Id. at ¶¶ 118–119. Lastly, we credit Dr. Conte’s testimony that the transmission protocols in Hathorn and Mylex are different standards, Hathorn’s is IBM’s proprietary technology, and Mylex’s is an open, industry standard. Id. at ¶¶ 48, 85. As such, we find that although Hathorn’s controller ports are dynamically modifiable, the modifications are the result of a protocol and link architecture that is unique to Hathorn and not interchangeable with Mylex’s system. In summary, we are not persuaded that both Mylex and Hathorn disclose redundant communications, as opposed to redundant storage. Therefore, we find unpersuasive Petitioner’s proffered obviousness rationale that relies on redundancy. Notwithstanding the redundancy issue, we are persuaded by Patent Owner’s argument and evidence of record that the proffered rationale of Mylex’s modification, as proposed by Petitioner, is not reasonable. Consequently, we find that a person of ordinary skill would not be prompted to make the proposed modification given the unfeasibility of the proposed redundant communication and the differences in the taught ports of Mylex and Hathorn.” slip op. at 36

  Patent outcomesUS 6,978,346 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,978,346
• Vmware, Inc. / International Business Machines Corporation et al. v. Electronics And Telecommunications Research InstituteNo claims unpatentable
  PTAB · Dec 9, 2015 · IPR2014-00949 · APJ Gregg I Anderson · IPR · Final written decision

  Claims 1–9 were not shown unpatentable over Mylex and Hathorn because Petitioner failed to establish a sufficient motivation to combine them.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Dr. Horst testifies that, as of the year 2000, the person of ordinary skill would have had a B.S. in Electrical Engineering or Computer Science and at least two years of experience in designing storage systems. Ex. 1003 ¶ 12. Dr. Conte does not provide any specific opinion in this regard. See, e.g., Ex. 2301 ¶ 25. We determine Dr. Horst’s opinion is both not disputed and reasonable. Accordingly, we adopt Dr. Horst’s description of the level of ordinary skill for this case.” slip op. at 22

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

    “Accordingly, having considered the claim construction arguments made by Petitioner in its Reply regarding Hathorn, and weighing that against the evidence presented by Patent Owner, including the testimony of Dr. Conte, which we credit, we conclude that a RAID would have been understood by a person of ordinary skill in the art to have a customary meaning of “a single logical unit for mass storage using multiple physical disk drives.”” slip op. at 14

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner

    “We are not persuaded by Patent Owner’s arguments. It is always necessary to review the Specification to determine whether the inventor has used any terms in a manner inconsistent with their ordinary meaning. See Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996).10 The claims must be read in view of the Specification. Id. Patent Owner’s evidence of how a person of ordinary skill would understand the terms is that the terms, though different, are both “network interconnection devices.” Ex. 2301 ¶¶ 58–59. Additionally, Patent Owner’s expert acknowledged “hub” and “switch” may be used interchangeably. See Pet. Reply 7 (citing Ex. 2302, 30:16–18). The Specification recognizes this as well, stating that “hubs 440, 441 are provided to connect a system connected to these hubs by one network and maintain the network …, and it can be as a hub or a switch. Hereinafter, they are named a ‘hub’ altogether.” Id. at 6–7 (citing Ex. 1001, 3:13–18). Thus, consistent with the Specification and our construction from the ’635 Final Decision, “connection unit” is “a hub or switch.”” slip op. at 16

  • Obviousness (§103) › Analogous artAnalogous artDecided for patent owner

    “determine whether Petitioner has provided a sufficient rationale for a person of ordinary skill in the art to combine Hathorn and Mylex. One of the arguments presented involves the allegation that Mylex and Hathorn may be combined based on both being analogous art. Pet. 14–15, Pet. Reply 8–13. That Mylex and Hathorn are in one field is not, by itself, dispositive. See KSR, 550 U.S. at 418. We must look to other factors, like design incentives and other market forces, to determine whether the person of ordinary skill would be prompted to make the modification. Id. In reviewing the record here, Petitioner’s arguments in its briefs that Hathorn is analogous art, i.e., in the same field, do not reach, let alone explain, why the person of ordinary skill would be prompted to combine the two. Pet. 14–15, Pet. Reply 8–13, 20. At the oral hearing, Petitioner did not point to any additional argument or evidence on its field of endeavor argument. Tr. 6:14–23, 7:13–14. Conversely, Patent Owner asserted correctly that, even if the field of endeavor is the same, “[y]ou still need some motivation or other rationale to make a combination and that is what is missing in this case.” Id. at 47:5–7. Accordingly, Petitioner has not persuaded us that the fact that Mylex and Hathorn are in the same field of endeavor establishes a rationale for combining the two.” slip op. at 29

  Patent outcomesUS 6,978,346 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,978,346
• Eastman Kodak Co. / Agfa Corp. et al. v. CTP Innovations, LLCNo claims unpatentable
  PTAB · Nov 25, 2015 · IPR2014-00788 · APJ Benjamin D M Wood · IPR · Final written decision

  The Board held claims 10–20 not shown unpatentable because the asserted combinations did not show a reason to produce and provide the plate-ready file from a location remote from the printer.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner

    “reasonable interpretation in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b); In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1278 (Fed. Cir. 2015). Under this standard, the claim language should be read in light of the specification as it would be interpreted by one of ordinary skill in the art. In re Suitco Surface, Inc., 603 F.3d 1255, 1260 (Fed. Cir. 2010). Any special definition for a claim term must be set forth in the specification with reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). We expressly construe below only those claim terms that require analysis to resolve arguments related to the patentability of the challenged claims. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those [claim] terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”). All other terms will be accorded their ordinary and customary meaning as would be understood by one of ordinary skill at the time of the invention. 1. “A method of providing printing and publishing services to a remote client in real time using a communication network” (claim 10); “A method of providing printing and publishing services to a remote client . . . in real time using a wide area communication network” (claim 16) The preamble for each of independent claims 10 and 16 recites a method of providing printing and publishing services to a remote client “in real time.” In the Decision on Institution, we determined that “the preambles in the claims at issue, including the term ‘real time,’ do not limit the scope of the claims.” Dec. on Inst. 11–13. Neither Patent Owner in its Response nor Petitioner in its Reply disputed this determination. Further, we are not aware of any evidence adduced at trial that calls this determination into question. Therefore, based on our analysis in the Decision on Institution, we determine that the preambles in the claims at issue, including the term “real time,” do not limit the scope of the claims.” slip op. at 8

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

    “The Specification does not define “plate-ready file” expressly, but its meaning is discernible from the term itself: a file that can be used to produce a printing plate without further modification. See Ex. 1001, 10:7– 14 (equating the term “plate-ready file” with “a single file that is stable, predictable, and ready to image to proof or plate”). Moreover, as Petitioner states, the plate-ready file can be used with a platesetter to create a plate directly, or with an imagesetter to produce film that is then used to create the plate. Pet. 22. Further, we agree with the parties that because the file is “plate-ready,” it represents a page layout file that has gone through the prepress process, including RIPing. That is the purpose of prepress production: transforming “copy” into “a medium that is reproducible for printing,” such as a “computer to plate (CTP) file.” Id. at 1:26–38. Accordingly, in addition to the constructions we applied in the Decision on Institution, we construe “plate-ready file” to mean a file that represents a page layout that has gone through prepress processing, including RIPing, and is ready to image to a plate using either a platesetter or imagesetter.” slip op. at 9

  • ExcludeMotion to exclude, deniedDenied

    “Patent Owner seeks to exclude Mr. Suetens’ first Declaration for essentially the same reasons discussed above: that Mr. Suetens lacks personal knowledge regarding the public accessibility of Apogee. We have reviewed the First Motion and determine that Patent Owner’s objections to the First Suetens Declaration go more to the weight of the Declaration than to its admissibility. Further, we note that the public accessibility of the Apogee reference is a substantive issue that is better suited for Patent Owner’s Response than for a motion to exclude. For these reasons, we deny Patent Owner’s First Motion to Exclude.” slip op. at 17

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

    “§ 102, a reference must have been sufficiently accessible to the public interested in the art.” In re Lister, 583 F.3d 1307, 1311 (Fed. Cir. 2009) 8 Paper 30, 3; Tr. 31:4–8. (internal citation and quotation marks omitted). “Whether a reference is publicly accessible is determined on a case-by-case basis based on the facts and circumstances surrounding the reference’s disclosure to members of the public.” Id. (internal citation and quotation marks omitted). “A reference is considered publicly accessible if it was disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it.” Id. (internal citation and quotation marks omitted). We find that Petitioner has shown by a preponderance of the evidence that Apogee was publicly accessible before the ’155 patent’s filing date. There does not seem to be any dispute that Apogee was printed at least as early as April 1998. Further, Petitioner has shown that a large number of copies were printed and distributed to Agfa subsidiaries around the world in 1998. Ex. 1024 ¶¶ 10–14, Atts. E–H. Petitioner has also proffered evidence of at least one Agfa sales representative, Mr. Jahn, publicly distributing Apogee to potential customers at conferences. Ex. 1023. Given that Apogee was created to promote the Apogee system to prospective customers, and that a very large number of copies of the reference were printed, it is reasonable to infer that many of these copies made their way into the possession of interested persons. We also credit Mr. Jahn’s testimony that an earlier version of Apogee was posted on his website before the critical date, and that he directed interested persons to that document. Although we do not rely on this version itself in considering Petitioner’s grounds of unpatentability, we consider this testimony further evidence that a person of ordinary skill, using reasonable diligence, could have gained access to the Apogee reference.” slip op. at 20

  Patent outcomesUS 6,738,155 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR
  Patents in suitUS 6,738,155

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.