• Department Of Justice v. Envisionit, LLCInstitution denied
  PTAB · May 3, 2017 · IPR2017-00186 · APJ Lynne E Pettigrew · IPR · Institution

  The Board denied institution because the Petition did not show a reasonable likelihood of proving claims 14, 15, 23, 27, or 30 unpatentable on any asserted ground.

  RulingsInstitution decision

  • PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner

    “We are not persuaded by Patent Owner’s argument. We generally accept a petitioner’s identification of real parties in interest at the time of filing the petition. Petitioner represents that IBM has not funded, directed, or otherwise controlled the preparation of the Petition in this proceeding. Pet. 4. Patent Owner introduces no evidence that reasonably brings into question Petitioner’s identification of real parties in interest. Moreover, Patent Owner has not shown persuasively that the indemnification clause at issue, which gives IBM an “opportunity as is afforded by applicable laws, rules, or regulations to participate in its defense,” gives IBM an opportunity to direct or control this proceeding.8 On this record, we are not persuaded that IBM is a real party in interest.” slip op. at 9

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedDecided for patent owner

    “Linköping University in Norrköping, Sweden, and is alleged to have been made available over the Internet. Thus, to determine a date on which Gundlegård was publicly accessible, we look to evidence of the library’s cataloging and indexing practices and any search capability of the library’s website. See Blue Calypso, 815 F.3d at 1348; Voter Verified, 698 F.3d at 1380; SRI, 511 F.3d at 1196.” slip op. at 12

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

    “The parties propose competing constructions of “broadcast.” Pet. 10– 11; Prelim. Resp. 14–19. Patent Owner also proposes a construction for “validating,” recited in claim 14. Prelim. Resp. 19–21. Nevertheless, we need not construe these or any other terms for the purposes of this Decision to resolve the parties’ dispute. See Vivid Technologies, Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”).” slip op. at 15

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “1. Level of Ordinary Skill in the Art Petitioner, relying on the testimony of its declarant, Mr. Randall A. Snyder, contends that a person of ordinary skill in the art would have had a bachelor’s degree in computer science, engineering, physics, mathematics, or other technical field, along with three to five years of practical cellular network and protocol design and software development experience. Pet. 9 (citing Ex. 1011 ¶ 28). Patent Owner does not propose a level of skill or contest Petitioner’s statement. Petitioner’s proposal is consistent with the level of ordinary skill 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). For purposes of this Decision, we adopt Petitioner’s statement of the level of ordinary skill in the art.” slip op. at 16

  Claim construction§ 102 anticipation§ 103 obviousnesscites Graham
  Patents in suitUS 8,103,719
• Department Of Justice v. Envisionit, LLCInstitution denied
  PTAB · May 1, 2017 · IPR2017-00183 · APJ Bryan F Moore · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 1, 11–13, 42, 47, and 57 unpatentable on the asserted obviousness and anticipation grounds.

  RulingsInstitution decision

  • PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner

    “We are not persuaded by Patent Owner. We generally accept a petitioner’s identification of real parties in interest at the time of filing the petition. Petitioner represents that IBM has not funded, directed, or otherwise controlled the preparation of the Petition in this proceeding. Pet. 4. Patent Owner introduces no evidence that reasonably brings into question Petitioner’s identification of real parties in interest. Moreover, Patent Owner has not shown persuasively that the indemnification clause at issue, which gives IBM an “opportunity as is afforded by applicable laws, rules, or regulations to participate in its defense,” gives IBM an opportunity to direct or control this proceeding.1 On this record, we are not persuaded that IBM is a real party in interest.” slip op. at 9

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable

    “1. Petitioner has not shown that Gundlegård was publicly accessible Gundlegård states on its face that it is a master’s thesis kept at Linköping University in Norrköping, Sweden, and is alleged to have been made available over the Internet. Thus, to determine a date on which Gundlegård was publicly accessible, we look to evidence of the library’s cataloging and indexing practices and any search capability of the library’s website. See Blue Calypso, 815 F.3d at 1348; Voter Verified, 698 F.3d at 1380; SRI, 511 F.3d at 1196.” slip op. at 12

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

    “III. CONCLUSION Petitioner has not established a reasonable likelihood it would prevail in showing that claims 1, 11–13, 42, 47, and 57 are unpatentable. IV. ORDER For the reasons given, it is: ORDERED that, pursuant to 35 U.S.C. § 314(a), an inter partes review is not instituted for claims 1, 11–13, 42, 47, and 57 of U.S. Patent No. 7,693,938 B2.” slip op. at 31

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “of ordinary skill in the art would have had a bachelor’s degree in computer science, engineering, physics, mathematics, or other technical field, along with three to five years of practical cellular network and protocol design and software development experience. Pet. 9–10 (citing Ex. 1011 ¶ 28). Patent Owner does not propose a level of skill or contest Petitioner’s statement. Petitioner’s proposal is consistent with the level of ordinary skill 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); 3 The record does not include allegations or evidence of objective indicia of nonobviousness. In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). For purposes of this Decision, we adopt Petitioner’s statement of the level of skill in the art.” slip op. at 16

  § 102 anticipation§ 103 obviousnesscites Graham
  Patents in suitUS 7,693,938
• Department Of Justice v. Envisionit, LLCInstitution denied
  PTAB · Apr 26, 2017 · IPR2017-00180 · APJ David C Mckone · IPR · Institution

  The Board denied institution because the Petition did not show a reasonable likelihood that claims 1, 2, 4, 17, and 23 were unpatentable as obvious.

  RulingsInstitution decision

  • PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner

    “We are not persuaded by Patent Owner. We generally accept a petitioner’s identification of real parties in interest at the time of filing the petition. Petitioner represents that IBM has not funded, directed, or otherwise controlled the preparation of the Petition in this proceeding. Pet. 3. Patent Owner introduces no evidence that reasonably brings into question Petitioner’s identification of real parties in interest. Moreover, Patent Owner has not shown persuasively that the indemnification clause at issue, which gives IBM an “opportunity as is afforded by applicable laws, rules, or regulations to participate in its defense,” gives IBM an opportunity to direct or control this proceeding.1 On this record, we are not persuaded that IBM is a real party in interest.” slip op. at 8

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable

    “1. Petitioner has not shown that Gundlegård was publicly accessible Gundlegård states on its face that it is a master’s thesis kept at Linköping University in Norrköping, Sweden, and is alleged to have been made available over the Internet. Thus, to determine a date on which Gundlegård was publicly accessible, we look to evidence of the library’s cataloging and indexing practices and any search capability of the library’s website. See Blue Calypso, 815 F.3d at 1348; Voter Verified, 698 F.3d at 1380; SRI, 511 F.3d at 1196. The Petition does not provide a detailed statement of Petitioner’s arguments as to the public accessibility of Gundlegård. Rather, Petitioner simply states “[a]s documented by the declaration of Amelia Nuss (Ex. 1021), the thesis was published at least as early as October 27, 2003.” Pet. 14. The detailed basis for Petitioner’s contention is stated in the Nuss Declaration. Patent Owner argues that this constitutes an improper incorporation by reference of arguments from the Nuss Declaration into the Petition, in violation of 37 C.F.R. § 42.6(a)(3). Prelim. Resp. 20–21 n.4. We share Patent Owner’s concern. Nevertheless, we agree with Patent Owner that the Nuss Declaration, even if considered, does not support a finding that Gundlegård was publicly available.” slip op. at 11

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

    “Although the parties propose competing constructions of “broadcast” (Pet. 7–8; Prelim. Resp. 14–18), we need not construe this or any other term for the purposes of this Decision to resolve the parties’ dispute. See Vivid Technologies, Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”).” slip op. at 14

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “of ordinary skill in the art would have had a bachelor’s degree in computer science, engineering, physics, mathematics, or other technical field, along with three to five years of practical cellular network and protocol design and software development experience. Pet. 7 (citing Ex. 1011 ¶ 28). Patent Owner does not propose a level of skill or contest Petitioner’s statement. Petitioner’s proposal is consistent with the level of ordinary skill 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); 4 The record does not include allegations or evidence of objective indicia of nonobviousness. In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). For purposes of this Decision, we adopt Petitioner’s statement of the level of skill in the art.” slip op. at 15

  Claim construction§ 102 anticipationcites Graham
  Patents in suitUS 9,136,954
• Sony Mobile Communications Inc. v. SSH Communications Security OyjAll claims unpatentable
  PTAB · Apr 20, 2017 · IPR2015-01869 · APJ Bryan F Moore · IPR · Final written decision

  Claims 1–32 are unpatentable: claims 1–3, 5–10, 12–16, 18–20, 22–27, and 29–32 as obvious over Bellovin; claims 1, 3–8, 10–12, 14–18, 20–23, 25, and 27–29 over Shuen and RFC 1234.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “their broadest reasonable construction in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b); see also Cuozzo Speed Techs. LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016) (upholding the use of the broadest reasonable interpretation standard in an inter partes review proceeding). Under the broadest reasonable interpretation standard, claim terms generally are given their ordinary and customary meaning, as would be understood by one of ordinary skill in the art, in the context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).” slip op. at 5

  • ExcludeMotion to exclude, deniedDenied

    “III. PATENT OWNER’S MOTION TO EXCLUDE Patent Owner moves to exclude Ex. 1040 cited by Petitioner in its Petitioner’s Reply as hearsay and as irrelevant. Mot. to Exclude 1. Petitioner relies on Ex. 1040 to support its obviousness case by stating “[i]n a co-pending action in the United Kingdom, the Patents Court found similar claims of related EP(UK) 2 254 311 invalid.” Pet. Reply 1 n.1. This issue is moot because this Final Written Decision does not cite to or rely upon Ex. 1040 or the Petitioner’s statement quoted above regarding Ex. 1040. For that reason, we do not address the matter on the merits and dismiss Patent Owner’s Motion to Exclude as moot.” slip op. at 48

  • Skill levelOther

    “differences between the claimed subject matter and the prior art are such that the subject matter, as a whole, would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of ordinary skill in the art; and (4) objective evidence of nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).” slip op. at 17

  • Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer not foundDecided for petitioner

    “specification and prosecution history. Cuozzo, 136 S. Ct. at 2144–46. There are, however, two distinct exceptions. The first is the circumstance in which a patentee sets forth a definition by acting as his own lexicographer. Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed.Cir.2012) (citation omitted). The second is the circumstance in which a patentee disavows the full scope of a claim term either in the specification or during prosecution. Id.; see also PPC Broadband, Inc. v. Corning Optical Commc’ns RF, LLC, 815 F.3d 734, 745 (Fed. Cir. 2016) (citing disavowal as an exception to the broadest reasonable interpretation standard). Here, Patent Owner relies on several embodiments in the Specification and the knowledge of its Declarant, but does not cite to sufficient evidence: 1) of the patentee becoming a lexicographer defining a NAT as bidirectional between two “realms,” or 2) of a clear disavowal of a NAT which translates addresses in a single direction or operates in a single “realm.”” slip op. at 9

  Patent outcomesUS 8,544,079 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,544,079
• 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
• Samsung Display Co., Ltd. / Funai Electric Co., Ltd. et al. v. Gold Charm Ltd.All claims unpatentable
  PTAB · Dec 27, 2016 · IPR2015-01416 · APJ Bryan F Moore · IPR · Final written decision

  Claims 1, 2, and 4–10 are unpatentable as obvious over Fujii, Fujii and Nakamura, or Fujii and Tsutsui, as applicable.

  RulingsFinal written decision

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

    “In essence, Patent Owner’s construction of the term “light shield area” as requiring an observable effect on the quantity of light leakage in order to improve the quality of the display to the user imports a term of degree into claims that recite this feature. “When a ‘word of degree’ is used [in a claim], . . . the patent [must provide] ‘some standard for measuring that degree.’” Enzo Biochem v. Applera Corp., 599 F.3d 1325, 1332 (Fed. Cir. 2010) (citing Seattle Box Co., Inc. v. Indus. Crating & Packing, Inc., 731 F.2d 818, 826 (Fed. Cir. 1984)). “The claims, when read in light of the specification and the prosecution history, must provide objective boundaries for those of skill in the art.” Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364, 1371 (Fed. Cir. 2014). “When a claim term ‘depend[s] solely on the unrestrained, subjective opinion of a particular individual purportedly practicing the invention,’ without sufficient guidance in the specification to provide objective direction to one of skill in the art, the term is indefinite.” DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1260 (Fed. Cir. 2014) (quoting Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1350 (Fed. Cir. 2005)). The phrases “observable” and “quality to the user” are highly subjective and, on their face, provide little guidance to one of skill in the art. These phrases are not recited explicitly in the claims themselves. Patent Owner has not directed us to any disclosure in the written description, nor can we find such a disclosure, relevant to determining a standard for 11 measuring the necessary degree of observability or quality.3 Consequently, we decline to adopt Patent Owner’s construction of the term “light shield area” because it would inject unnecessary ambiguity into the claims that recite this feature. Instead, we maintain our initial determination that “light shield area” should be accorded its plain and ordinary meaning (i.e. area that shields light), which, in our view, is a broad, yet reasonable construction in light of the Specification and claims of the ’275 patent.” slip op. at 11

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundMotivation foundDecided for petitioner

    “Patent Owner relies on Allergan for the proposition that Fujii’s criticism of blocking light means that it cannot be relied on as prior art in this case. PO Resp. 26 (citing Allergan, Inc. v. Sandoz Inc. 796 F.3d 1293, 1305-06 (Fed. Cir. 2015)). Patent Owner asserts that, “[i]n Allergan, the court found that the prior art criticized the claimed formulation [BAK] because the reference taught one of ordinary skill in the art to minimize the amount of a particular claimed element in order to avoid certain problems. PO Resp. 26 (citing Allergan, 796 F.3d at 1305–06.). However, Patent Owner does not explain that, in Allergan, “the prior art taught that BAK should be minimized in ophthalmic formulations to avoid safety problems.” Allergan, 796 F.3d at 1305. In Allergan, “the prior art [also] taught that BAK would not increase the permeability of bimatoprost, but might instead decrease it.” Id. at 1306. Thus, in Allergan, the prior art taught that the formulation at issue caused safety problems and caused the opposite effect than the one desired by the patent at issue. Here, in contrast, Fujii teaches that the metal auxiliary terminals will cause the exact effect desired (or intended result) in the ’275 patent, even though that same effect, i.e. blocking light, is disfavored by the Fujii inventors. In fact, Fujii suggests that the light blockage above the maximum width would block light and “darken[] the screen.” Ex. 1003, 16:11–32. This disclosure is Fujii is supported by the testimony of Dr. Chiang. Ex. 1008 ¶ 52 (testifying that chromium wiring materials disclosed in Fujii may be used as opaque light shield areas used to darken a screen). 15 Also relevant to Patent Owner’s argument presented here is its’ assertion in its claims construction argument that light shield areas must have an observable effect or “there would be no point in providing the light shield areas.” PO Resp. 20. Were we to accept that logic, then we would also apply the same logic here that there would be no point in reducing darkening in Fujii unless the darkening described was an observable effect. “A finding that two inventions were designed to resolve different problems . . . is insufficient to demonstrate that one invention teaches away from another.” Nat’l Steel Car, Ltd. v. Canadian Pac. Ry., Ltd., 357 F.3d 1319, 1339 (Fed. Cir. 2004). While Fujii suggests limiting the width of the metal auxiliary electrodes to avoid darkening of the screen and maintaining a consistent gap between the top and bottom substrates, it also teaches one of ordinary skill that widening of the metal auxiliary electrodes shields light to the screen. See, e.g., Ex. 1003, 16:29–33 (disclosing that “[w]hen the width of the metal auxiliary electrode 56 is increased to further reduce the wiring resistance, the display opening factor of the liquid crystal device is reduced darkening the screen”). Finally, in our claim construction section above, we construed “light” slip op. at 15

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

    “We find that Fujii explicitly states that “the invention [of Fujii] can also be applied to an active matrix liquid crystal display,” and further states that the electrodes could be replaced by “scanning signal . . . or video signal lines.” Ex. 1003, 1:7–12, 12:54–67. As mentioned previously, Fujii states that the auxiliary electrodes may cause a darkening of the panel. Id. at 16:29–33. This is the same effect that the inventors of the ’275 patent were trying to achieve. Ex. 1001, 2:39–43. “[I]f a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.” KSR, 550 U.S. at 417. A person of ordinary skill is a person of ordinary creativity, not an automaton. Id. at 421. Thus, because Fujii explicitly contemplates that its teachings may be applied to an active matrix liquid crystal display, and Fujii shares a common objective with the inventors of the ’275 patent— namely, resolving uneven brightness or darkening of a panel—Fujii provides sufficient teachings such that one of ordinary skill in would implement the claimed light shield areas in an active matrix crystal display. Pet. 19; Pet. Reply 9. Patent Owner does not address separately Petitioner’s contentions and supporting evidence with respect to claims 2 and 4, which depend from claim 1. We have reviewed Petitioner’s proposed ground of obviousness by Fujii against claims 1, 2, and 4, and we agree with and adopt Petitioner’s 20 analysis. Based on the record developed during trial, Petitioner has shown by a preponderance of the evidence that claims 1, 2, and 4 would have been obvious over Fujii.” slip op. at 20

  • ExcludeMotion to exclude, deniedDenied

    “III. PATENT OWNER’S MOTION TO EXCLUDE Patent Owner moves to exclude the ’163 patent introduced by Petitioner with its Reply as improper reply evidence and as irrelevant. Mot. to Exclude 1. Petitioner relies on the ’163 patent to support Dr. Watts’s purported admission that “in the embodiment of the ’275 patent where light shield areas are comprised of strips of light shield material (as shown in blue 27 coloration in Figure 6), the strips are on the order of 10–20 microns wide.” Pet. Reply 11 n.2. This issue is moot because this Final Written Decision does not cite to or rely upon the ’163 patent. In addition, we do not rely on any assertion by Petitioner that light shield material in the ’275 patent is on the order of 10–20 microns wide. For that reason, we do not address the matter on the merits and dismiss Patent Owner’s Motion to Exclude as moot.” slip op. at 27

  Patent outcomesUS 5,850,275 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 5,850,275
• Samsung Display Co., Ltd. / Funai Electric Co., Ltd. et al. v. Gold Charm Ltd.All claims unpatentable
  PTAB · Dec 27, 2016 · IPR2015-01417 · APJ Bryan F Moore · IPR · Final written decision

  Claims 2, 3, 5, and 6 are unpatentable: claims 3, 5, and 6 as anticipated by Takizawa; claim 2 as obvious over Takizawa and Hoshino; and claims 2, 3, and 6 as anticipated by Hoshino.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageTerm construed petitioner constructionDisclaimer not foundDecided for petitioner

    “The Federal Circuit “counsels the PTO to avoid the temptation to limit broad claim terms solely on the basis of specification passages.” In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). “Absent claim language carrying a narrow meaning, the PTO should only limit the claim based on the specification or prosecution history when those sources expressly disclaim the broader definition.” Id. Additionally, “‘words or expressions of manifest exclusion’ or ‘explicit’ disclaimers in the specification are necessary to disavow claim scope.” Gillette Co. v. Energizer Holdings, Inc., 405 F.3d 1367, 1374 (Fed. Cir. 2005).” slip op. at 10

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

    “Whether the order of the steps recited in a method claim must be performed in a particular order is properly a part of claim construction. See, e.g., Altiris, Inc. v. Symantec Corp., 318 F.3d 1363, 1371–72 (Fed. Cir. 2003). Generally, steps may be performed in any order so long as “nothing in the intrinsic evidence” compels otherwise. Id. at 1370. “Interactive Gift recites a two-part test for determining if the steps of a method claim that do not otherwise recite an order, must nonetheless be performed in the order in which they are written.” Altiris, 318 F.3d 1369 (citing Interactive Gift Express, Inc. v. Compuserve Inc., 256 F.3d 1323, 1342–43 (Fed. Cir. 2001)). “First, we look to the claim language to determine if, as a matter of logic or grammar, they must be performed in the order written.” Id. “If not, we next look to the rest of the specification to determine whether it directly or implicitly requires such a narrow construction.” Id. at 1370. (citation omitted). If not, the sequence in which such steps are written is not a requirement.” slip op. at 13

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

    “Takizawa does require forming an etch-stop (or channel protection layer, referred to as “the protecting film 18” in Takizawa) prior to (and as a necessary prerequisite to) forming the operative semiconductor of the TFT. Ex. 1003 at 15:1–32. However, Takizawa still performs only five patterning steps. In fact, Patent Owner admits that Takizawa performs only five etching/patterning steps. Tr. 40:23–41:9 (“there are five steps in Takizawa”); Ex. 2025 ¶ 49. Patent Owner suggests that to meet the claims limitations, step (c) must be performed before, in a separate and distinct manner from step (d). PO Resp. 47–48. Petitioner states that, although Takizawa may not perform step (c) of claim 1 before step (d), this claim do not require a specific order of steps. Pet. Reply 16. Patent Owner’s argument is premised on construing claim 1 to require performing step (c) of the claim before step (d). As we explained above in the claim construction section, we did not so limit this claim; thus, we are not persuaded by Patent Owner’s argument. See supra Section II.A.2. Patent Owner does not address separately Petitioner’s contentions and supporting evidence with respect to claims 3, 5, and 6. See generally PO Resp. 47–48. We have reviewed Petitioner’s proposed ground of anticipation by Takizawa against claims 3, 5, and 6, and we agree with and adopt Petitioner’s analysis. Based on the record developed during trial, Petitioner has shown by a preponderance of the evidence that Takizawa anticipates claims 3, 5, and 6.” slip op. at 22

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

    “Petitioner concludes that one of ordinary skill in the art would have recognized that the TFT array operates best when the ACBL receives a consistent voltage, which is provided by driving circuitry through the ACBL terminal. Thus, to create a properly operating device, [a person of ordinary skill in the art] would seek out methods of providing a reference voltage to the capacitive electrodes and would incorporate the ACBL terminal of Hoshino into the Takizawa device in order to do so. Pet. 29; Ex. 1012 ¶ 70. We agree and adopt this stated rationale because it provides specific motivation to make the combination. We credit Petitioner’s declarant who testifies that “the [a person of ordinary skill in the art] would know how to etch the ACBL contact hole and gate bus line 24 contact hole in the same photolithography step because Hoshino provides an example of doing so.” Ex. 1012 ¶ 70. Hoshino itself provides the “how” to achieve the claims limitation.” slip op. at 24

  Patent outcomesUS 5,966,589 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 5,966,589
• Funai Electric Co., Ltd. / Samsung Display Co., Ltd. et al. v. Gold Charm Ltd.All claims unpatentable
  PTAB · Dec 27, 2016 · IPR2015-01468 · APJ Karl D Easthom · IPR · Final written decision

  Claims 1–10 are unpatentable as obvious over Yamada because the Board found the claimed connecting structure and limitations obvious in light of Yamada.

  RulingsFinal written decision

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

    “The record supports Petitioner’s position and the claim construction determined in the Institution Decision. The ’053 patent specification broadly describes a protrusion as having any configuration: “The configuration of the protrusion 17a is any provided that it can be connected to the GND line in the connecting substrate and the width and length of the protrusion 17a can be changed on demand.” Ex. 1001, 11:42–45. According to a general dictionary cited in the Institution Decision, the plain meaning of “protrusion” is “something that protrudes,” and “protrude” means “[t]o push or thrust outward” or “[t]o jut out; project.” Ex. 3001; Inst. Dec. 6 (citing Ex. 3001). The ’053 patent specification shows protrusions that correspond to this evidence of plain meaning. For example, Figures 6A–6C show protrusions 17a projecting from an edge of wiring pattern portion 17b of a bonding assist portion. See, e.g., Fig. 6C supra. Our claim construction and the plain meaning (as evidenced by the cited dictionary definition (Ex. 3001)) also comport with the statement in the specification that the protrusion configuration “is any” provided “it can be connected to the GND line” and “the width and length of the protrusion 17a can be changed on demand.” Ex. 1001, 11:42–45 (emphases added).” slip op. at 7

  • PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner

    “C. Real Parties in Interest Patent Owner argued in its Preliminary Response that Petitioner fails to name all real parties in interest (RPIs) in its Petition as required by 35 U.S.C. § 312(a)(2). Patent Owner does not present this argument in its Patent Owner Response and, therefore, has waived it. See Paper 15, 3 (“[P]atent owner is cautioned that any arguments for patentability not raised in the response will be deemed waived.). Assuming for the sake of argument that Patent Owner did not waive the RPI issue, we rely on, and incorporate, our findings and determination in the Institution Decision. See Inst. Dec. 20–28.” slip op. at 49

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

    “that Yamada teaches connecting the bonding assist region to ground in order to eliminate electrical noise through shielding. Pet. 17 (citing Ex. 1002 ¶ 79; Ex. 1009 ¶¶ 5, 7, 22, 30). Considering the teaching in Yamada of a necessary connection to ground for shielding, Petitioner cites Mr. Flasck, who declares that “one of ordinary skill in the art at the time of the ’053 [invention] would have known that some electrical protrusion would be inherently necessary to connect the bonding assist portions to a fixed potential.” Ex. 1002 ¶ 79 (emphasis added); Pet. 17 (citing Ex. 1002 ¶ 79). Petitioner also contends that “locating a protrusion” centrally or “at a different location is nothing more than a design choice,” or skilled artisans 8 Compare Wagner, 63 F.2d at 986–87 (relying on drawings), Seid, 161 F.2d at 231 (relying on accidental drawings), Mraz, 455 F.2d at 1072 (relying on drawings), and Vas-Cath, 935 F.2d at 1566 (relying solely on design patent drawings for written description of relative proportions), with Hockerson- Halberstadt, Inc. v. Avia Group Int’l., Inc., 222 F.3d 951, 956 (Fed. Cir. 2000) (stating “it is well established that patent drawings do not define the precise proportions of the elements and may not be relied on to show particular sizes if the specification is completely silent on the issue.”). As discussed above, notwithstanding the reasoning in Hockerson-Halberstadt, Yamada’s specification is not “completely silent” on the issue, as it disclose ranges for wiring widths, implying all widths need not be equal. Also, notwithstanding the dicta regarding drawings, the holding in Hockerson- Halberstadt turned on patent owner’s disavowal of claim scope based on prosecution history that overcame defendant’s argument that relied on alleged drawing dimensions that the patent owner had distinguished during prosecution. See id. at 956–57. “would be guided by design options.” Pet. 36–37 (citing 1002 ¶¶ 121–122). In other words, the thrust of Petitioner’s showing as summarized in the Institution Decision is that it would have been obvious to employ a protrusion somewhere in Yamada’s bonding assist region in order to ensure a ground connection and to prevent noise––a connection that Yamada discloses. See Ex. 1002 ¶¶ 70, 72–73, 79; Ex. 1009 ¶¶ 5, 7, 22, 30; Pet. 11, 35–37; Inst. Dec. 10 (connection to ground), 11 n.4, 14 (obviousness), 18 (obviousness); see also PO Resp. 32 (joining the issue and arguing the opposite: “Yamada does not . . . teach or suggest . . . a protrusion connected to ground” as claimed in the ’053 patent). Petitioner’s contentions are persuasive to show the obviousness of connecting Yamada’s bonding assist region using a simple protrusion or contact extension, for the purpose of ensuring the electrical connection disclosed by Yamada. The claimed “connecting structure . . . comprising: . . . a bonding assist region . . . including” a “protrusion” (an electrical contact), as claims 1 and 4 recite, constitutes “the predictable use of prior art elements according to their established functions.” See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007); see also In re Kuhle, 526 F.2d 553, 555 (CCPA 1975) (“We also agree that the particular placement of the contact provides no novel or unexpected result. The manner in which electrical contact is made for Smith’s battery would be an obvious matter of design choice within the skill of the art.”).” slip op. at 32

  • Obviousness (§103) › KSR rationalesUnpatentableUnpatentable

    “Yamada’s teachings or indicate a clear intent for the layers not to have “substantially the same height,” as called for in claim 2. See Ex. 1009, Fig. 9.11 Petitioner persuasively explains that using the same material and process to create both wiring portions, wherein a PCB nominally begins with a wiring layer as Patent Owner admits, would have been obvious as a matter of efficiency in terms of bonding and would have simplified the process by using the same existing materials. See Pet. 19–20; 1002 ¶¶ 85–86, 88; Prelim. Resp. 37 (“such wirings of a printed circuit board would presumably be comprised of copper, as would be known to those of ordinary skill in the art”); Inst. Dec. 17 (discussing showing of efficiency). Yamada uses predetermined bonding assist patterns 5 to improve bonding reliability between existing wiring layers and overcome defective bonding. See Ex. 1009, Abstract, ¶¶ 6, 8–11, 24, 27, 29, 31. Yamada at least suggests forming the two wiring portions using the same material and processes at the same time: “As illustrated in Fig. 1, the wiring terminals 4 and the conductive layer 5 are formed on the PWB 1 together.” Ex. 1009 ¶ 41 (emphasis added). Notwithstanding Patent Owner’s arguments about alleged “reasons . . . to have different heights” (PO Resp. 46 (citing Ex. 2021 ¶¶ 68, 69)), Patent Owner does not address the “efficiency” reasons advanced by Petitioner for suggesting substantially the same height at the side-by-side metal regions of Yamada. See PO Resp. 45–46. 11 Patent Owner argues that Petitioner inconsistently relies on what Figure 5 portrays and ignores what Figure 9 portrays. See PO Resp. 4–5 n.1, 38. That argument overlooks that drawings must be interpreted in view of what the full disclosure portrays to artisans of ordinary skill. Also, Yamada does not disclose adding other material or different material to wiring portions 4a-h and 5. Responding to Patent Owner’s position, Petitioner relies on Mr. Flasck, who testifies that “to those of ordinary skill in the art,” Yamada teaches making the bonding assist region and terminal region of the same material and thickness. Pet. Reply 13 (citing Ex. 1009 ¶ 41; Ex. 1015 ¶ 45). As noted above, at the cited paragraph of Yamada, Yamada discloses that “the wiring terminals 4 and the conductive layer 5 are formed on the PWB 1 together.” Ex. 1009 ¶ 41. This at least suggests forming them of the same material––i.e., using the material of the printed circuit board. Mr. Flasck testifies that “to the average practitioner at the time, in this context, ‘together’ would have had the natural meaning of ‘formed of the same material at the same time.’” Ex. 1015 ¶ 46.” slip op. at 44

  Patent outcomesUS 6,909,053 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 6,909,053
• Toshiba Corp. / Samsung Display Co., Ltd. v. Gold Charm LimitedAll claims unpatentable
  PTAB · Dec 23, 2016 · IPR2015-01497 · APJ Charles J Boudreau · IPR · Final written decision

  Claims 1–4, 8, 9, 13, and 14 are unpatentable as obvious over the ’512 Publication and APA because their combined teachings render the claimed subject matter obvious.

  RulingsFinal written decision

  • BurdenFwd all claims unpatentableUnpatentable

    “Based on the record before us, we are persuaded that Petitioner explains sufficiently how the ’512 Publication and the APA together teach each limitation of each of the challenged claims (see Pet. 29–59 and evidence cited therein), as well as the reasons that a person of ordinary skill in the art would have combined those teachings (see id. at 33, 41–42, 48, 51–52, 57 (citing, e.g., Ex. 1002 ¶¶ 90, 101, 111, 118, 129, 130)), so as to meet its burden to demonstrate by a preponderance of the evidence that the subject matter of the claims would have been obvious over the proffered combination. Patent Owner’s arguments to the contrary are not persuasive.” slip op. at 20

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

    “In the Petition, Petitioner proposed two alternate constructions for the claim 1 term “a drive means for driving the display,” depending on whether that term is properly construed as a means-plus-function limitation under 35 U.S.C. § 112, sixth paragraph. Pet. 26–28. Patent Owner responds that neither of Petitioner’s proposed constructions is proper, but that, “for purposes of this proceeding only,” Patent Owner relies upon those constructions. PO Resp. 22–23. According to Patent Owner, “even if one of Petitioners’ proposed constructions were adopted by the Board, the Petition nevertheless fails to a [sic] establish a prima facie case of obviousness.” PO Resp. 23. In our Decision on Institution, we concluded on the record then before us that it was not necessary for our determination of whether to institute an inter partes review to construe expressly any terms of the challenged claims. Dec. on Inst. 8. Because this Final Written Decision does not turn on the construction of “a drive means for driving the display” or of any other specific claim term, we again conclude that it is unnecessary to construe expressly any term 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 terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”).” slip op. at 9

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “Petitioner’s declarant, Dr. Silzars, testifies that one of ordinary skill in the art as of the July 28, 1994, the earliest claimed priority date of the ’092 patent, “would generally have had at least a Bachelor’s of Science degree in electrical engineering or physics, or equivalent, and several years of relevant experience relating to the design and fabrication of liquid crystal displays,” or, “[a]bsent a formal degree, a person of ordinary skill in the art would have additional years of work experience.” Ex. 1002 ¶¶ 13, 33; see Pet. 24 (citing Ex. 1002 ¶ 13). Patent Owner’s declarant, Dr. den Boer, essentially agrees, opining that one of ordinary skill in the art as of July 28, 1994, would have been “someone with at least a Bachelor’s of Science degree in a relevant field, such as electrical engineering, and with several years of experience in the field of design, development and fabrication of liquid crystal displays,” and stating “[i]n this specific regard, I agree with Dr. Silzars.” Ex. 2024 ¶ 9; see PO Resp. 9 (citing Ex. 2024 ¶ 9). Dr. Silzars and Dr. den Boer also agree that the person of ordinary skill in the art would understand the prior art as discussed herein. Ex. 1002 ¶ 13; Ex. 2024 ¶ 9. We determine that the differences in the declarants’ assertions are negligible and that both assessments are consistent with the ’092 patent and the referenced prior art. For the purposes of the analysis below, we adopt Dr. den Boer’s assessment.” slip op. at 13

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

    “Digest paper “concluded that only the dot mode polarity inversion method addresses and solves both the flicker and cross-talk problems,” “a person of ordinary skill in the art and familiar with the prior art of [the] ’092 [patent] and the SID92 Digest paper would employ dot mode polarity inversion over column inversion and row inversion, because it provides the best image quality.” Ex. 2024 ¶¶ 26–27. Irrespective of whether dot mode reversion would provide a still better image, however, we are persuaded that a person of ordinary skill in the art would have had reason, based on the APA, to add column polarity reversion to the ’512 Publication technique, in order to improve that technique in the same manner that the APA taught dot mode reversion provided an improvement over row polarity reversion. As the Supreme Court explained in KSR, “if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.” 550 U.S. at 417. As cited above, the APA taught that row polarity reversion eliminated crosstalk, but still suffered from flicker, whereas dot mode reversion, which effectively combines row polarity reversion with column polarity reversion, eliminated both crosstalk and flicker. We are persuaded, therefore, that a person of ordinary skill in the art would have had reason to add column polarity reversion of the APA to the double row polarity reversion of the ’512 Publication, to result in the driving method claimed in the ’092 patent. We further agree with Petitioner (see Tr. 7:7–14) that Patent Owner’s arguments that “adopting portions of the APA techniques as suggested would likely have little, if any positive effect on the power consumption by the ’512 Publication display” (PO Resp. 3) and that “power consumption may actually be exacerbated by this combination” (id.) focus on the wrong comparison and do not address our finding in the Decision on Institution that one of ordinary skill in the art would have had reason to pursue a combination of the ’512 Publication’s teachings with the APA in an attempt to solve the problem of excessive power dissipation by the APA’s dot mode polarity reversion (see Dec. on Inst. 17–18). Whereas Patent Owner’s argument focuses on a comparison of power consumption between the ’512 Publication display and a display having column inversion added to the ’512 Publication (Tr. 19:25–20:2), we agree with Petitioner (see Pet. Reply 20) that the relevant comparison is instead between the combination and the dot mode polarity reversion scheme of the APA. Nonetheless, because we are persuaded by Petitioner’s arguments and evidence, for the reasons set forth above, that a person of ordinary skill in the art would have had reason to combine the teachings of the APA with those of the ’512 Publication in the manner proposed by Petitioner rather than adopting dot mode polarity reversion in its entirety, and that such a combination would have rendered the subject matter of each of claims 1–4, 8, 9, 13, and 14 of the ’092 patent obvious, we need not reach Petitioner’s further argument that a desire to reduce power consumption would have provided additional reason to make that combination.” slip op. at 25

  Patent outcomesUS 5,790,092 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 5,790,092
• Sandisk Corp. v. Netlist, Inc.All claims unpatentable
  PTAB · Sep 28, 2016 · IPR2015-01021 · APJ Bryan F Moore · IPR · Final written decision

  Claims 1, 16, 17, 24, 30, and 31 are unpatentable as obvious over Takeda, JEDEC, and Connolly.

  RulingsFinal written decision

  • Prior constructionPrior construction adoptedDecided for patent owner

    “1. “Rank” In the Decision to Institute, we construed the term “rank” as “a block or area that is created using some or all of the memory chips on a memory module.” Dec. to Inst. 8–9. In their papers, neither party challenged our constructions of these claim terms. Thus, for the term “rank,” we see no reason to alter the construction of this claim term as set forth in the Decision to Institute as recited above, and we incorporate our previous analysis for purposes of this decision.” slip op. at 8

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

    “2. All Other Claim Terms We determine that no explicit construction is necessary for any other terms in the challenged claims. B.” slip op. at 8

  • Skill levelSkill level board ownOther

    “would understand basic memory and data communication concepts, with a bachelor’s degree in any of electrical engineering, computer engineering, computer science, or related field. Course work for one of ordinary skill in the art would have included a course on computer organization, principles of digital design, or computer architecture. One of ordinary skill in the art would also have around one year of experience related to computer memory systems. For example, such experience may include experience in DRAM memory technology and related industry standards such as JEDEC standards for DRAM memories and memory modules. Ex. 1002 ¶ 53. Patent Owner’s Declarant, Carl Sechen, Ph.D. (“Dr. Sechen”), testifies that one of ordinary skill in the art at the time of the ’536 Patent would have had an undergraduate degree in electrical engineering or computer engineering, at least two years of professional experience in the design of memory systems, familiarity with the latest JEDEC standard specifications for memory devices and modules, and familiarity with the latest DRAM (dynamic random access memory) memory devices widely available in the market. Ex. 2001 ¶ 14. Dr. Sechen further testifies that a person of ordinary skill in the art would have design proficiency in memory modules comprising DDR memory technology, such as memory modules with JEDEC standard DDR SDRAM (synchronous DRAM) devices. Id. ¶ 15. Based on our review of the ’536 Patent and the types of problems and solutions described in the ’536 Patent and cited prior art, we conclude a person of ordinary skill in the art at the time of the ’536 Patent would have a Bachelor’s degree in electrical engineering, computer engineering, computer science, or related field, and at least one year of work experience, including familiarity with computer memory systems and related industry standards such as JEDEC standards for DRAM memories and memory modules. We further note that the applied prior art reflects the appropriate level of skill at the time of the claimed invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). D.” slip op. at 10

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “To testify as an expert under Federal Rule of Evidence 702, a person need not be a person of ordinary skill in the art, but rather must be “qualified in the pertinent art.” Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1363–64 (Fed. Cir. 2008); see SEB S.A. v. Montgomery Ward & Co., 594 F.3d 1360, 1372–73 (Fed. Cir. 2010) (upholding a district court’s ruling to allow an expert to provide testimony at trial because the expert “had sufficient relevant technical expertise” and the expert’s “knowledge, skill, experience, training [and] education . . . [wa]s likely to assist the trier of fact to understand the evidence”); Mytee Prods., Inc. v. Harris Research, Inc., 439 F. App’x 882, 886–87 (Fed. Cir. 2011) (non-precedential) (upholding admission of the testimony of an expert who “had experience relevant to the field of the invention,” despite admission that he was not a person of ordinary skill in the art). As noted above, Dr. Jagannathan has designed and implemented hardware virtual memory caches, and researched theoretical performance measures of various cache coherency protocols, and has experience in the design of memory systems. We find that Dr. Jagannathan is qualified sufficiently to testify about memory systems and memory modules. E.” slip op. at 12

  Patent outcomesUS 8,081,536 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,081,536

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.