- PTAB · Sep 15, 2023 · IPR2023-00516 · APJ Minn Chung · IPR · Institution
The Board instituted review of claims 1, 2, and 8–13 on all petition grounds, finding a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority to determine whether to institute an inter partes review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Under 35 U.S.C. § 314(a), institution of an inter partes review is authorized when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Taking into account the arguments and evidence presented in Patent Owner’s Preliminary Response, we determine that the information presented in the Petition establishes that there is a reasonable likelihood that Petitioner would prevail in showing the unpatentability of at least one challenged claim. Accordingly, we institute an inter partes review of all challenged claims of the ’589 patent, based on all grounds raised in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Citing testimony from Dr. Melvin, Petitioner asserts a person of ordinary skill in the art (“POSITA”) at the relevant time would have had “a Bachelor’s degree in Electrical Engineering or Computer Science and two years of experience” or “equivalent education, work, or experience in this field.” Pet. 21 (citing Ex. 1003 ¶¶ 31–34). According to Dr. Melvin, “[m]ore education could substitute for experience, and vice versa.” Ex. 1003 ¶ 33. Patent Owner states that “[f]or the limited purpose of this Preliminary Response, Patent Owner does not contest Petitioner’s definition of a person of ordinary skill in the art, but it reserves the right to do so in the event that trial is instituted.” Prelim. Resp. 11. For purposes of this Decision, based on our review of the ’589 patent, the types of problems and solutions described in the ’589 patent, and cited prior art, we adopt and apply Petitioner’s unopposed definition of a person of ordinary skill in the art.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner asserts that “construction of terms is unnecessary because it is not dispositive to this case—the art teaches the limitations under any construction under the Phillips standard.” Pet. 21. Patent Owner states that we need not construe any claim term for purposes of this Decision. See Prelim. Resp. 11. Based on the record presented, we need not construe any claim term for purposes of this Decision. See 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))). C. Asserted Grounds of Unpatentability Based on Lee or the Combination of” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“motivation to combine the references because “[w]hile Lee does expressly illustrate the ‘circuitry’ that is initialized by the reset signal ϕRST output from its initialization circuit, Iketani illustrates and describes in detail the various circuits, including the control circuit, that receive and are initialized by such an initialization signal.” Pet. 59 (emphasis added) (citing Ex. 1003 ¶ 140). Petitioner further asserts that the proposed combination “amounts to a simple substitution of one component (i.e., Lee’s initialization circuit) for another (i.e., Iketani’s power on reset circuit), and a POSITA would have understood that this substitution would yield predicable results.” Id. at 61 (citing Ex. 1003 ¶ 143).” slip op. at 23
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,157,589 - PTAB · May 24, 2023 · IPR2023-00120 · APJ Larry J Hume · IPR · Institution
The Board instituted IPR on claims 1–24 on all asserted grounds, finding a reasonable likelihood that Google would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least one of the claims challenged in the petition.” 35 U.S.C. § 314(a); see 37 C.F.R. § 42.4. Having reviewed the parties’ papers and the evidence of record, we determine that Petitioner has shown a reasonable likelihood it will prevail in establishing the unpatentability of at least one challenged claim. Accordingly, we institute an inter partes review of all challenged claims 1 through 24 of the ’092 patent, based on the grounds raised in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“At this stage, “Patent Owner agrees to Petitioner’s proffered level of ordinary skill in the art because it comports with the technology and claims of the ’092 Patent as well as the asserted prior art.” See Prelim. Resp. 11. For purposes of this Decision, we adopt Petitioner’s unopposed position as to the level of ordinary skill in the art at the time of the claimed invention, as articulated above. We are satisfied that Petitioner’s proposed definition generally comports with the level of skill necessary to understand and implement the teachings of the ’092 patent and the asserted prior art. This definition is also supported by the testimony of Dr. Franzon (see Ex. 1004 ¶¶ 34–36), as well as a declaration from Patent Owner’s declarant, Dr. Hassan Zeino, Ph.D. See Ex. 2001 ¶ 24 (“Zeino Declaration”).” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for petitioner
“above that Heil’s configuration does not meet the limitation “dedicated I/O channel” because of other types of data purportedly being communicated over the channel, we infer from Patent Owner’s assertion and Dr. Zeino’s statement that the second claim construction issue articulated above is relevant, i.e., whether a “dedicated I/O channel” should be interpreted as a channel that is used exclusively for a certain type of data, i.e., I/O requests. We find that, in contrast to Patent Owner’s and Dr. Zeino’s assertions, the ʼ092 patent provides a somewhat broader description of elements 121 and 122, to wit: “The PC data storage system 131 services a plurality of channel attached host processors 111, 112 using channels 121, 122, and a plurality of network attached host processors 106, 107. . . .” Ex. 1001, 5:10–13 (omitting Dr. Zeino’s proffered words “dedicated I/O” (Ex. 2001 ¶ 27 (emphasis added)). The ʼ092 patent goes on to later describe channels 121 and 122 as “I/O channels.” Ex. 1001, 5:51. We have reviewed the ʼ092 patent and prosecution history, and find no further intrinsic evidence of record, i.e., original disclosure or arguments presented during prosecution, that would provide additional context for the “dedicated I/O channel” limitation. Nonetheless, for purposes of this Decision, we need not determine whether a “dedicated I/O channel” can transmit data other than I/O requests because, as discussed in Section III.E.1 below, Petitioner shows sufficiently that Heil discloses a “dedicated I/O channel” even under the claim construction inferred from Patent Owner’s argument. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (Fed. Cir. 1999))). Thus, based on the current record and purposes of this Decision, we preliminarily construe a “dedicated I/O channel” as a channel that is used exclusively for a certain type of data, i.e., I/O requests, thus encompassing load sharing configurations that share the I/O channel between multiple CPUs and I/O peripheral devices for communication of I/O requests.” slip op. at 16
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“Under our preliminary claim construction of the phrase “dedicated I/O channel” adopted above, i.e., we interpret “dedicated I/O channel” as a channel that is used exclusively for a certain type of data, i.e., I/O requests, thus encompassing load sharing configurations that share the I/O channel between multiple CPUs and I/O peripheral devices for communication of I/O requests. See § III.C, supra. Patent Owner’s declarant states that Petitioner “maps path 115 to 116.5 to 102 as the dedicated I/O channel of element [1.a]” (Ex. 2001 ¶ 17), and opines “[t]his mapping [cannot be made . . . because] Heil specifically notes that the indicated path (i.e., the path including elements 115, 116.5 and 102) is not dedicated” because Figure 1 of Heil shows “one HBA services the I/O requests from CPU1 and CPU2 100” (id.), thus providing “the load sharing benefits of allowing a plurality of HBAs to service the local and remote I/O requests of CPU 1 and CPU 2 100.” Prelim. Resp. at 14. Relying on the Declaration of Dr. Zeino, Patent Owner states “[t]he channel used by the PCI bus bridge 115 and PCI bus 116.5 is used for other communications besides I/O requests, for example arbitrary communications among peer CPUs (Heil, Col. 8, lines 8–18) and thus the PCI bus bridge 115 and PCI bus 116.5 simply cannot be and cannot serve as a dedicated I/O channel.” Prelim. Resp. 15. “[T]he the only path to the Fibre Channel backbone 121 from the host system CPUs 100 and remote system CPUs 135 is over PCI bus bridge 115 and PCI bus 116.5, so PCI bus bridge 115 and PCI bus 116.5 are also used to allow a channel or path for each CPU to be connected to peer CPU’s.” Id. at 16. cited by Patent Owner, below: In the present invention, each CPU within Node 150, Nodes 152, and Node N 151 does [sic] not have direct connectivity to a peer CPU within another node. For example, CPU 1 100 does not communicate directly with CPU N+1 135 in Node N 151. Instead, Node 150, Nodes 152, and Node N 151 are connected via a network communications medium. In the preferred embodiment, a Fibre Channel backbone 121 allows each CPU to be connected to peer CPU’s. One skilled in the art will recognize all node-to-node inter-processor communication can occur on this Fibre Channel backbone 121. Alternatively, the Fibre Channel backbone 121 can be used exclusively for storage communications and inter-processor communications can occur over a separate network.” slip op. at 26
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSRPatents in suitUS 10,154,092 - PTAB · Apr 17, 2023 · IPR2022-01525 · APJ Minn Chung · IPR · Institution
The Board instituted IPR on claims 1–20 and all petitioned grounds, finding a reasonable likelihood of success on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Under 35 U.S.C. § 314(a), institution of an inter partes review is authorized when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Taking into account the arguments and evidence presented in Patent Owner’s Preliminary Response, we determine that the information presented in the Petition establishes that there is a reasonable likelihood that Petitioner would prevail in showing the unpatentability of at least one challenged claim. Accordingly, we institute an inter partes review of all challenged claims of the ’526 patent, based on all grounds raised in the Petition.” slip op. at 2
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedInstituted
“includes “evidence sufficient to establish a reasonable likelihood that the reference was publicly accessible before the critical date of the challenged patent and therefore that there is a reasonable likelihood that it qualifies as a printed publication.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018- 01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential). Based on the current record, we find that there is a reasonable likelihood that IPUG was publicly accessible before the earliest possible priority date of the ’526 patent, July 24, 2017.” slip op. at 15
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“this proceeding.” Pet. 9–10. Patent Owner notes that in the related ITC proceeding, the parties agreed that the term “flow identification data” means “identification data that identifies a communication flow.” Prelim. Resp. 6. For purposes of this Decision, we need not construe the term “flow identification data” because the parties do not identify any material issue that would turn on the construction. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that only terms that are in controversy need to be construed, and “only to the extent necessary to resolve the controversy”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. in the context of an inter partes review). Patent Owner asserts that “no other express construction of any term is required to resolve any controversies” at this preliminary stage of this proceeding. Prelim. Resp. 6. Nonetheless, as discussed below in Section III.C.4.f, in the context of its patentability analysis, Patent Owner raises an implicit claim construction argument regarding the claim term “performing a corresponding action” recited in independent claims 1 and 11. See Prelim. Resp. 22–24. Although Patent Owner’s argument raises an issue of claim construction, the issue is closely related to the issue of whether IPUG discloses “performing a corresponding action” recited in claims 1 and 11. Thus, we address this issue in the context of the patentability discussion in Section III.C.4.f below. Apart from this term, no other claim terms need to be construed expressly for purposes of this Decision. See Vivid Techs., 200 F.3d at 803.” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“Starting with the claim language, claim 1 recites “performing a corresponding action on each packet of the encrypted communication flow.” Ex. 1001, 18:12–14. The claim recites broadly “performing a corresponding action” and does not require, at least not explicitly, any additional action to the traffic after allowing, such as “logging and capturing” or “applying some transformation.” In addition, the claim recites “performing a corresponding action on . . . the encrypted communication flow,” not on decrypted plaintext packet of the allowed traffic. Thus, at least based on the claim language, we are not persuaded at this time “performing a corresponding action” should be limited as Patent Owner contends.” slip op. at 25
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 10,284,526 - Bytedance Ltd. / Tiktok Inc. v. Triller, Inc.All claims unpatentablePTAB · Apr 19, 2022 · IPR2021-00099 · APJ Gregg I Anderson · IPR · Final written decision
Claims 1–10 are unpatentable as obvious over Beauregard and Hozumi; the other asserted anticipation and obviousness grounds were not shown.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“synchronizing . . . from a first beginning, the selected audio track at substantially the same time as a second beginning of capturing each video take of the plurality of video takes.” Patent Owner characterizes this term and the “beginning-beginning synchronization requirement.” PO Resp. 24 (emphasis omitted). Petitioner argues that this element “does not require ‘a first beginning’ and ‘a second beginning’ to be at the beginning of the audio track, but rather are a matching point between the audio track and the video clip.” Pet. 17. Patent Owner agrees with what was preliminarily determined in the Institution Decision, i.e., the “beginning-beginning requirement means that the ‘beginning’ of the audio track and the video take occur at the same time.” PO Resp. 18 (citing Inst. Dec. 19 (citing Ex. 1001, 26:63–67, Figs. 6A–6C, Fig. 7A). Thus, according to Patent Owner “the audio track must be playing while the video take is being captured.” Id. at 12 (citing Ex. 2009 ¶ 30). Petitioner argues that applying the plain meaning or Patent Owner’s proposed construction does not change the result and construction is not (Fed. Cir. 2011) (“claim terms need only be construed to the extent necessary to resolve the controversy.”)). We agree with Petitioner, and because applying either the plain and ordinary meaning or Patent Owner’s proposal, which we find is consistent with the plain and ordinary meaning, does not affect our final decision below, no express construction of this term is necessary. The third appearance is for “synchronized” and recites “at least two video takes of the plurality of video takes synchronized with the selected audio track.” Neither party argues any construction for this appearance and we apply the plain and ordinary meaning of “synchronized” as it appears in limitation 1.4. slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Consistent with the preceding, nothing in the Specification precludes a “video take” from being the same as or including a “video clip” or other piece of video. The Specification states that “each video take, whether it begins at the beginning of the audio track or at some other point of the audio track, will be synchronized to the audio track.” Ex. 1001, 10:24–26 (“each video take, whether it begins at the beginning of the audio track or at some other point of the audio track, will be synchronized to the audio track”). A “video take” is described as “a plurality of captured video takes synchronized to a selected audio track.” Id. at 11:4–6. Based on this, we find that a person or ordinary skill would have understood the Specification as describing a “video take” as sometimes the equivalent video clip or segment of video. See Ex. 1001, 10:24–26. We agree with Patent Owner that a “video take” is a continuous recording. Petitioner agreed during the ’663 Lawsuit claim construction process that a video take is “continuous.” PO Resp. 14–15 (citing Ex. 2011,6 8 (“agree any stoppages of recording (e.g., pausing) and restarting is not allowed”); Ex. 2012,7 4). Accordingly, we determine that “video take”” slip op. at 15
- Skill levelSkill level petitioner adoptedDecided for petitioner
“C. Person of Ordinary Skill in the Art Petitioner alleges: A person of ordinary skill in the art as of the Critical Date of the ’429 Patent (“POSITA”) would have been a person with a working knowledge of digital video and audio technologies. The person would have had a Bachelor of Science, a Bachelor of Applied Science, or a Bachelor of Engineering degree in an academic discipline emphasizing the design of electrical, computer, or software technologies, in combination with training or at least one to two years of related work experience with capture and processing of data or information, including but not limited to digital video and audio technologies. TIKTOK-1003, ¶12. Alternatively, the person could have also had a Master of Science, Master of Applied Science, or Master of Engineering degree in a relevant academic discipline with less than a year of related work experience in the same discipline. Id. Pet. 6. Patent Owner does not comment on Petitioner’s proposal or propose an alternative. On this record, we adopt Petitioner’s proposed description of a person of ordinary skill, which is consistent with the disclosure in the ’429 patent and the cited prior art.” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“As to the reasons supporting the combination, Patent Owner focuses narrowly on the users of the Beauregard system and not what a person of ordinary skill in the art would have understood from the combination of Beauregard and Hozumi. Patent Owner cites no authority for its argument that a lack of “coordination and communication” between Beauregard’s users is required for a person of ordinary skill in the art to have had reason to make the proposed combination. Cf. In re Etter, 756 F.2d 852, 859–60 (Fed. Cir. 1985) (Patent Owner’s arguments regarding use are “basically irrelevant, the criterion being not whether the references could be physically combined but whether the claimed inventions are rendered obvious by the stated in the Shamos Declaration are unsupported by facts and thus entitled to little or no weight. See Ex. 2009 ¶ 115; 37 C.F.R. § 42.65(a). Although the references being in the same field of art is not conclusively a reason for a person of ordinary skill to make the combination, it is a factor. KSR, 550 U.S. 401 (“When a work is available in one field, design incentives and other market forces can prompt variations of it, either in the same field or in another. If a person of ordinary skill in the art can implement a predictable variation, and would see the benefit of doing so, § 103 likely bars its patentability.”). As for Patent Owner’s argument about hindsight reasoning (PO Resp. 69), “[a]ny judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning, but so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made and does not include knowledge gleaned only from applicant’s disclosure, such a reconstruction is proper.” In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971). Here, Petitioner provides persuasive evidence that a person of ordinary skill in the art at the time of the invention would have been motivated to combine Hozumi with Beauregard based on the disclosures of Hozumi and Beauregard and the evidence of the knowledge of a person of ordinary skill in the art at the time of the ’429 patent’s filing date. See, e.g., Pet. 53–56; Ex. 1003 ¶¶ 80–82. This is not evidence of hindsight bias. Patent Owner does not identify, and we do not discern, any particular knowledge used by Petitioner in its combination of Beauregard and Hozumi that was gleaned only from the ’429 patent’s disclosure and was not within the level of ordinary skill in the art at the time of the invention. and motivation for combining the teachings of Hozumi with Beauregard is sufficient. See Pet. 53–56.” slip op. at 37
Patent outcomesUS 9,691,429 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 9,691,429 - Unified Patents, LLC v. Oceana Innovations LLCAll claims unpatentablePTAB · Feb 14, 2022 · IPR2020-01463 · APJ Steven M Amundson · IPR · Final written decision
Claims 1–5 are unpatentable: claims 1–3 are anticipated by Jones, and claims 1–5 are obvious over the combinations stated in the grounds.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“angled away from each other” means “extending away from each other” and encompasses “angled at 180 degrees,” i.e., pointing in opposite directions. See Pet. 28. First, the claim language supports the conclusion that “being angled away from each other” means “extending away from each other” and encompasses “angled at 180 degrees.” Claim 1 requires that “said third sides are substantially perpendicular to said first side.” Ex. 1001, 6:2–3. Claim 2 depends from claim 1 and requires that “said fifth sides are respectively and substantially perpendicular to said third sides.” Id. at 6:6–8. Thus, claim 2 defines an assembly with (1) third sides “substantially perpendicular” to the first side, i.e., third sides arranged about 90 degrees relative to the first side, and (2) fifth sides “substantially perpendicular” to respective third sides, i.e., fifth sides arranged about 90 degrees relative to respective third sides. In that assembly, the fifth sides are arranged about 180 degrees relative to the first side, and the fifth sides are “angled at 180 degrees” relative to each other. A dependent claim should narrow a base claim by containing a reference to the base claim and “then specify[ing] a further limitation of the subject matter claimed.” 35 U.S.C. § 112 ¶ 4 (2006); see Myco Indus., Inc. v. BlephEx, LLC, 955 F.3d 1, 14 (Fed. Cir. 2020). So if narrower claim 2 encompasses an assembly with fifth sides “angled at 180 degrees” relative to each other, then broader claim 1 also encompasses such an assembly. As an example, claim 1 covers an arrangement where the fifth side on the left has a slight inclination clockwise from horizontal (⸜) and the fifth side on the right has a slight inclination counterclockwise from horizontal (⸝), such that the sides angle upwardly (⸜ ⸝) relative to a centerline. As another example, claim 1 covers an arrangement where the fifth side on the left has a slight inclination counterclockwise from horizontal (⸝) and the fifth side on the right has a slight inclination clockwise from horizontal (⸜), such that the sides angle downwardly (⸝ ⸜) relative to a centerline. Patent Owner does not dispute that claim 1 covers these example arrangements. See Resp. 10–16; see also id. at 47–48, 50–51. Based on the claim language, claim 1 also covers an arrangement intermediate between these example arrangements where the fifth side on the left has no inclination from horizontal (–) and the fifth side on the right has no inclination from horizontal (–), such that the sides point in opposite directions (– –), i.e., the sides are “angled at 180 degrees” relative to each other. Second, the ’678 patent’s specification supports the conclusion that “being angled away from each other” means “extending away from each other” and encompasses “angled at 180 degrees.” See Ex. 1001, 3:66–4:19, Figs. 9–10. When describing the receptacle and the complementary plug depicted in Figures 9 and 10, the patent states that “[t]he third sides 373 (483) are substantially perpendicular to the first side 371 (481).” Id. at 4:14–16. The patent also states that “[t]he fifth sides 375, (485) are respectively and substantially perpendicular to the third sides 373 (483).” Id. at 4:18–19. Hence, similar to claim 2, Figures 9 and 10 depict an assembly with (1) third sides “substantially perpendicular” to the first side, i.e., third sides arranged about 90 degrees relative to the first side, and (2) fifth sides “substantially perpendicular” to respective third sides, i.e., fifth sides arranged about 90 degrees relative to respective third sides. Ex. 1001, 4:14–19, Figs. 9–10. In that assembly, the fifth sides are arranged about 180 degrees relative to the first side, and the fifth sides are “angled at 180 degrees” relative to each other. Id. at 4:14–19, Figs. 9–10. Further, when describing the receptacle and the complementary plug depicted in Figures 9 and 10, the ’678 patent states that “[t]he fifth sides 375 (485) are angled away from each other while extending from the fourth sides 374 (484) to the third sides 373 (483).” Ex. 1001, 4:11–13, code (57). Thus, the patent uses “angled away” to encompass “angled at 180 degrees,” i.e., pointing in opposite directions. Third, the ’678 patent’s prosecution history supports the conclusion that “being angled away from each other” means “extending away from each other” and encompasses “angled at 180 degrees.” See Ex. 1004, 17, 41–48, 144–51, 153–58; see also Ex. 1010, 2:52–54, 2:66–3:14, 3:46–4:31, Fig. 1. Application claim 1 became patent claim 1. Ex. 1004, 241. As filed, application claim 1 recited “said fifth sides being angled away from each other while extending from said fourth sides to said third sides.” Id. at 17. In the first Office action, the Examiner rejected application claims 1–3 and 7 as anticipated by Nishio. Ex. 1004, 42–44, 48, 144–51. In rejecting application claim 1, the Examiner found that Nishio discloses an assembly with “fifth sides being angled away from each other while extending from the fourth sides to the third sides.” Id. at 43, 145. As explained below, Nishio discloses an assembly with fifth sides “angled at 180 degrees” relative to each other. See Ex. 1010, 2:52–54, 2:66–3:14, 3:46–4:31, Fig. 1; infra § III.G.2(l). Petitioner provides an annotated excerpt from Nishio’s Figure 1 (reproduced below) depicting an assembly with fifth sides “angled at 180 degrees” relative to each other (Pet. 30): Figure 1 is “an exploded perspective drawing of an electrical connector” with “a section cut away.” Ex. 1010, 2:52–54, Fig. 1. The above annotated excerpt from Figure 1 includes two green lines denoting two fifth sides, and the two green lines are “angled at 180 degrees” relative to each other. See Pet. 30. The Applicant did not dispute the Examiner’s finding that Nishio” slip op. at 18
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“3. OTHER CLAIM TERMS We determine that no other claim terms require explicit constructions” slip op. at 24
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“2. INDEPENDENT CLAIM 1 (a) Preamble [1a] Claim 1’s preamble recites “[a]n electrical connector assembly.” Ex. 1001, 5:9. Petitioner contends that Jones discloses claim 1’s preamble because Jones discloses “a series of electrical connector assemblies each . . . comprising a socket and a corresponding plug.” Pet. 31 (alteration by Petitioner) (quoting Ex. 1007, 1:43–45). Patent Owner makes no arguments specific to claim 1’s preamble. See Resp. 16–28. Nonetheless, the burden remains on Petitioner to demonstrate unpatentability. See Dynamic Drinkware, 800 F.3d at 1378.” slip op. at 29
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“Alleged Objective Indicia of Nonobviousness (i) Background Before reaching a conclusion about obviousness, we consider evidence concerning objective indicia of nonobviousness. See Apple, 839 F.3d at 1048. For such evidence to have substantial weight, “its proponent must establish a nexus between the evidence and the merits of the claimed invention.” ClassCo, Inc. v. Apple, Inc., 838 F.3d 1214, 1220 (Fed. Cir. 2016). “[T]here is no nexus unless the evidence presented is ‘reasonably commensurate with the scope of the claims.’” Id. (quoting Rambus Inc. v. Rea, 731 F.3d 1248, 1257 (Fed. Cir. 2013)). The patentee “bears the burden of showing that a nexus exists.” WMS Gaming, Inc. v. Int’l Game Tech., 184 F.3d 1339, 1359 (Fed. Cir. 1999). A rebuttable presumption of nexus arises “when the patentee shows that the asserted objective evidence is tied to a specific product and that product ‘embodies the claimed features, and is coextensive with them.’” Fox Factory, Inc. v. SRAM, LLC, 944 F.3d 1366, 1373 (Fed. Cir. 2019) (quoting Polaris Indus., Inc. v. Arctic Cat, Inc., 882 F.3d 1056, 1072 (Fed. Cir. 2018)). Whether a rebuttable presumption of nexus arises “turns on the nature of the claims and the specific facts.” Teva Pharm. Int’l GmbH v. Eli Lilly & Co., 8 F.4th 1349, 1362 (Fed. Cir. 2021). When, “for example, the patented invention is only a small component of the product tied to the objective evidence, there is no presumption of nexus.” Henny Penny Corp. v. Frymaster LLC, 938 F.3d 1324, 1333 (Fed. Cir. 2019). Absent a presumption of nexus, the patentee may prove nexus by showing that the objective evidence resulted directly from “the unique characteristics of the claimed invention.” Fox Factory, 944 F.3d at 1373–74; see In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996). Thus, the Board employs a two-step analysis in evaluating whether a patentee has established a nexus between the evidence concerning objective indicia of nonobviousness and the merits of the claimed invention. See Lectrosonics, Inc. v. Zaxcom, Inc., IPR2018-01129, Paper 33 at 32–33 (PTAB Jan. 24, 2020) (precedential). Initially, the Board considers whether the patentee has demonstrated that the “products are coextensive (or nearly coextensive) with the challenged claims,” resulting in a rebuttable presumption of nexus. Id. at 33. Absent a presumption of nexus, the Board considers whether the patentee has demonstrated “a legally and factually sufficient connection” between the evidence and the claimed invention. See Henny Penny, 938 F.3d at 1332; Lectrosonics, IPR2018-01129, Paper 33 at 33.” slip op. at 81
Patent outcomesUS 6,508,678 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,508,678 - Intel Corporation v. VLSI Technology LLCSome claims unpatentablePTAB · Jan 12, 2021 · IPR2019-01195 · APJ Minn Chung · IPR · Final written decision
Claims 13 and 14 are unpatentable as anticipated by Kim; claims 17, 18, and 20 were not shown unpatentable over Kim and Lee because the proposed combination was inadequately explained.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“’026 patent would have had a Master’s degree in Electrical Engineering or Computer Engineering, plus at least two years of experience in integrated circuit design, or alternatively a Bachelor’s degree in one of those fields plus at least four years of experience in integrated circuit design. Pet. 16 (citing Ex. 1102 ¶ 49). In our Institution Decision, we found Petitioner’s proposal consistent with the level of ordinary skill in the art reflected by the prior art of record, see Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978), and, therefore, preliminarily adopted Petitioner’s unopposed position as to the level of ordinary skill in the art. Inst. Dec. 15. Neither Patent Owner, in its Response, nor Dr. Annavaram, in his declaration, proposes a level of ordinary skill in the art. Instead, Patent Owner states that “Patent Owner applies Petitioner’s stated skill level for this response” (PO Resp. 26), and Dr. Annavaram similarly states that “[f]or the purpose of this declaration, I adopt Dr. Harris’ definition of a [person of ordinary skill in the art]” (Ex. 2009 ¶ 24). Nothing in the full record persuades us that our preliminary finding as to the level of ordinary skill in the art was incorrect. Based on the complete record, because our preliminary finding is consistent with the level of ordinary skill in the art reflected by the prior art of record, we maintain and reaffirm that one of ordinary skill in the art at the time of the invention would have had a Master’s degree in Electrical Engineering or Computer Engineering, plus at least two years of experience in integrated circuit design, or alternatively a Bachelor’s degree in one of those fields plus at least four years of experience in integrated circuit design. Inst. Dec. 15; see Pet. 16 (citing Ex. 1102 ¶ 49).” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“To the extent Patent Owner argues that these particularized selection clauses recited in different claims must have the same or similar meaning because they all use the word “selecting” (see PO Resp. 28–29), we disagree with Patent Owner. See IGT v. Bally Gaming Int’l, Inc., 659 F.3d 1109, 1117 (Fed. Cir. 2011) (“We caution that claim language must be construed in the context of the claim in which it appears. Extracting a single word from a claim divorced from the surrounding limitations can lead construction astray. Claim language must be construed in the claim in which it appears.” (emphasis added)). The selection clauses recited in these claims are plainly different on the face of the claims when considering the material differences in the claim language set forth above. According the same meaning to the limitations that recite “select . . . based on” indicators, “select . . . when” certain conditions are met, and “select . . . out of a group” of values would be improper because it would blur the material differences in the claim language recited expressly in the claims. Instead, we interpret the selection clauses recited in the challenged claims “in the context of the particular claim in which the disputed term appears” and “in the context of the entire patent, including the specification.” Phillips, 415 F.3d at 1313. In other words, we do not construe the single word “selecting” in isolation, but, rather, interpret the full selection clauses recited in the challenged claims in the context of the entire patent. Claim 13 recites “selecting, by the control circuit, a value of a control signal based on the mode indicator and on the leakage indicator.” In our view, the plain meaning of this limitation is clear on the face of the claim—a value of a control signal is selected based on two indicators, the mode indicator and the leakage indicator.” slip op. at 14
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Tr. 47:7–23. Because the output of Kim’s NAND gates will be different depending on the value of Kim’s memory cells C1–CN allowed to “pass through,” we agree with Petitioner that the value of Kim’s memory cells C1– CN (the claimed “leakage indicator”) “plays a role” in deciding what the output of Kim’s NAND gates (the claimed “value of the control signal”) will be. Moreover, Patent Owner acknowledged that the output of Kim’s NAND gate is determined based on the inputs to the NAND gates (i.e., the sleep signal input and the memory cell signal input). JUDGE CHUNG: But, knowing a little bit about how a NAND gate works, isn’t it the case that the input to the NAND gates, G1 through GN, with the input of the sleep signal and the C1 through CN signal, isn’t it the case that input to the NAND gate determines what the output is? MS. ZHONG: Okay. So any logic gate, the output will depend on the input. That’s for sure. Tr. 44:18–25; but see id. at 45:3–10 (stating that even if the “output is in control of the input, . . . that does not mean the selection is based on that input”). Thus, we find that Kim’s NAND gate (the claimed “control circuit”) operates to determine its output (the claimed “value of the control signal”) based on its input of the sleep signal (the claimed “mode indicator”) and the memory cell value input (the claimed “leakage indicator”). As discussed in Section III.B, the Specification indicates that “select[ing] the value of the control signal based on the mode indicator and on the leakage indicator” recited in claim 13 is synonymous to determining the value based on the recited indicators. See Ex. 1101, 4:4–11. Thus, the evidence of record shows that Kim teaches “selecting, by the control circuit, a value of a control signal based on the mode indicator and on the leakage indicator,” as recited in claim 13.” slip op. at 44
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“We are not persuaded by Petitioner’s argument and evidence. First, although Petitioner proposes “[s]ubstituting Lee’s inputs of leakage current and temperature for generating a power gate control signal” (i.e., Lee’s “control signal (BIAS)”) for “Kim’s inputs of leakage current and other ‘stimuli’ for generating a power gate control signal” (Pet. 64 (citing Ex. 1102 ¶ 115)), neither Petitioner nor Dr. Harris explains adequately how they are proposing to “substitute” Kim’s control signal with Lee’s “control signal (BIAS).” For example, Figure A reproduced above does not show how Petitioner or Dr. Harris proposes to use Lee’s “control signal (BIAS)” in the proposed combination. Petitioner asserts that “[a]lthough Lee’s control signal is analog and Kim’s control signal is digital, it was well known to apply teachings in an analog domain to a digital domain, and conversions between analog and digital domains were easy to implement.” Pet. 66 (emphases added) (citing Ex. 1102 ¶ 121; Ex. 1115). Dr. Harris similarly states that Figures A and B show examples of obvious ways to use in Kim’s system Lee’s teaching of setting conductance of the array based on temperature. A POSA would have found both of these ways obvious. That Lee uses an analog control signal and Kim uses a digital control signal would have presented no obstacle to a POSA. . . . That is, converting analog circuit elements and signals to digital was well known long before the ’026 patent. Ex. 1102 ¶ 121 (emphases added) (citing (Ex. 1115) (“Analog-to-digital converters (ADC’s) are ubiquitous, critical components of software radio and other signal processing systems.”)). But Dr. Harris does not explain adequately how “to use in Kim’s system” the digitized BIAS signal of Lee. See id. The only additional input signal shown in Figure A compared to Figure 4 of Kim is the temperature line that has the value of 0 when the temperature is cold and the value of 1 when the temperature is hot. See Ex. 1102 ¶ 116 (Fig. A). There is no explanation of how the modified teaching of the BIAS signal of Lee (i.e., modified or converted to a digital signal) would have worked in the proposed combination of Figure A.” slip op. at 69
Patent outcomesUS 8,081,026 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,081,026 - Microsoft Corporation v. Ipa Technologies Inc.All claims unpatentablePTAB · Oct 22, 2020 · IPR2019-00837 · APJ Lynne E Pettigrew · IPR · Final written decision
Claims 1–4, 14–19, 26, and 36–44 are unpatentable as obvious over Kiss and FIPA97, with some claims also challenged over Cohen.
RulingsFinal written decision- Skill levelSkill level board ownOther
“B. Level of Ordinary Skill in the Art We begin our analysis by addressing the level of ordinary skill in the art. Petitioner’s declarant, Dr. Lieberman, opines that a person of ordinary been someone familiar with the principles and conventions of computer science and computer networking, and also with multi-agent systems and inter-agent communication languages as documented in agent-centered literature by 1999. Ex. 1050 ¶ 32; see Pet. 5 (citing Ex. 1050 ¶ 32). Dr. Lieberman also testifies that a person of ordinary skill in the art may have been a graduate student in mathematics, engineering, or computer science, and may have had an advanced degree in one of these disciplines, and would also have had at least two years of experience working in the field of computer science, or a related field, and may have worked in academia, either as a professor or a graduate student, for a technology company, or for a government. Ex. 1050 ¶ 32. Citing the testimony of its declarant, Dr. Medvidovic, Patent Owner asserts that a person of ordinary skill in the art at the time of the ’560 patent’s effective filing date would have had “a Bachelor’s degree in Computer Science or equivalent field and at least two years of work experience in design and development of distributed systems, software specification languages, or a related area.” PO Resp. 28 (citing Ex. 2032 ¶ 41). Patent Owner criticizes Petitioner’s articulation of the level of ordinary skill in the art as being “vague and uncertain” due to Petitioner’s and Dr. Lieberman’s use of the word “may” in their proposed definition. Id. at 28–29. Patent Owner contends that Petitioner’s proposed definition “leav[es] every aspect of the level of skill ‘fluid,’” which is “particularly problematic here, where Petitioner claims that it would have been obvious to create an agent system that is very complex and advanced in its facilitation, goal processing, and inter-agent communication capacities.” Id. at 29 (citing Ex. 2032 ¶ 44). alternatives—i.e., that a Skilled Artisan would have been at least a graduate student in several relevant fields, and would have had at least two years of work experience in those fields.” Pet. Reply 12; see Pet. 5. Petitioner also argues that Patent Owner does not articulate how any differences between the parties’ proposals that would alter or even affect the outcome of this proceeding. Pet. Reply 12. Patent Owner asserts that it has “identified how the difference between the proposals would affect this proceeding” because Patent Owner has pointed out that “it is Petitioner’s burden under the law to address each Graham factor and Petitioner has failed to proffer a coherent level of ordinary skill in the art, [and] Petitioner’s obviousness assertion fails for that reason alone.” PO Sur-reply 16–17 (citing PO Resp. 29).” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Decided for petitioner
“1. “goal satisfaction plan” The claim term “goal satisfaction plan” is recited in challenged independent claims 1 and 26 of the ’560 patent. Ex. 1001, 30:7–15 (claim 1), 32:43–51 (claim 26). It is also recited in independent claim 50 of the ’560 patent, not challenged in this proceeding. Id. at 35:1–10. Petitioner contends that a “goal satisfaction plan” is a “procedure for sending one or more requests for service to one or more agents in order to satisfy a goal.” Pet. 9. Patent Owner disagrees and asserts that the claim term “goal a complex goal expression in an optimal or near-optimal manner that is consistent with any advice parameters or constraints.” PO Resp. 32. a. Claim Language We begin our claim construction analysis by considering the language of the claims themselves. Phillips, 415 F.3d at 1314. Addressing the claim language of the disputed term, we note that the claim language “a goal satisfaction plan” indicates that the term’s plain meaning is “a plan for satisfying a goal.” In independent claims 1 and 26, the recited “goal satisfaction plan” is further constrained by specific limitations recited in the claims. Claim 1 recites: a facilitating engine . . . further operable for generating a goal satisfaction plan associated with the base goal, wherein the goal satisfaction plan involves: using reasoning to determine sub-goal requests based on non-syntactic decomposition of the base goal and using said reasoning to co-ordinate and schedule efforts by the service-providing electronic agents for fulfilling the sub-goal requests in a cooperative completion of the base goal.” slip op. at 14
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“relevant public, exercising reasonable diligence, could have located FIPA 97 Version 1.0 in late 1997 on the FIPA website, housed at the time at http://drogo.cselt.stet.it/fipa. FIPA published FIPA 97 Version 1.0 on its website at the conclusion of the Munich meeting on October 10, 1997, or shortly thereafter. See Ex. 1049 ¶ 20. In the several months leading up to the Munich meeting, persons of ordinary skill in the art would have known about the FIPA website through the widely distributed AgentWeb newsletters and the Software Agents mailing list, which provided website information or direct links to drafts of the specification and meeting announcements and reports. See Ex. 1091, 1–2; Ex. 1092, 3; Ex. 1093, 2; Ex. 1094; Ex. 1082, 1; Ex. 1083, 1. Therefore, people working in the field would have been sufficiently familiar with FIPA’s activities and its website to look for FIPA 97 Version 1.0 on the FIPA website when it was posted after the Munich meeting. Indeed, both Dr. Finin, who was affiliated with FIPA, and Dr. Lieberman, who worked in the software agent field, testify that they accessed FIPA 97 Version 1.0 on the FIPA website in late 1997. Ex. 1049 ¶ 21; Ex. 1050 ¶ 146.” slip op. at 50
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableUnpatentable
“skill in the relevant field to combine the prior art teachings, Petitioner “must show some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” KSR, 550 U.S. at 418. A reason to combine teachings from the prior art “may be found in explicit or implicit teachings within the references themselves, from the ordinary knowledge of those skilled in the art, or from the nature of the problem to be solved.” WMS Gaming Inc. v. Int’l Game Tech., 184 F.3d 1339, 1355 (Fed. Cir. 1999) (citing In re Rouffet, 149 F.3d 1350, 1357 (Fed. Cir. 1998)).” slip op. at 60
Patent outcomesUS 7,069,560 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,069,560 - Microsoft Corporation v. Ipa Technologies, Inc.All claims unpatentablePTAB · Oct 15, 2020 · IPR2019-00813 · APJ Kevin C Trock · IPR · Final written decision
Claims 1–3, 11, and 48–60 are unpatentable as obvious over Kiss and FIPA97; Patent Owner’s motion to exclude is denied.
RulingsFinal written decision- ExcludeMotion to exclude, deniedDenied
“question is “vague, ambiguous, confusing, lacks foundation and calls for a legal conclusion.” Paper 35, 1. Patent Owner, however, does not explain adequately how the question is vague, ambiguous or confusing, other than to state that “Dr. Medvidovic[’s] testimony highlights the vague, ambiguous, and confusing nature of Microsoft’s question.” Id. at 2. Nor does Patent Owner explain adequately how the question lacks foundation or calls for a legal conclusion aside from pointing to Dr. Medvidovic’s response that “[t]his is a legal thing, not a technical thing” in reference to the term “preferred embodiment.” Id.” slip op. at 166
- Skill levelSkill level board ownOther
“description of a person of ordinary skill in the art at the time of the claimed invention. That is, a person of ordinary skill in the art at the time of the claimed invention would have had “a Bachelor’s degree in Computer Science or equivalent field and at least two years of work experience in design and development of distributed systems, software specification languages, or a related area.” Our analysis and conclusions in this Final Written Decision would be the same regardless of whether Petitioner’s or Patent Owner’s description of the level of ordinary skill in the art is adopted.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningDecided for petitioner
“description may not be read into a claim when the claim language is broader than the embodiment.” SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) (citation omitted). As discussed above, the challenged independent claims 1 and 29 do not recite all of the limiting features required by Patent Owner’s proposed construction of “goal satisfaction plan.” Thus, unless one of the established exceptions, such as lexicography or disavowal, applies, the challenged claims are not restricted as Patent Owner contends. See, e.g., GE Lighting Sols., LLC v. AgiLight, Inc., 750 F.3d 1304, 1309 (Fed. Cir. 2014) (“the specification and prosecution history only compel departure from the plain meaning in two instances: lexicography and disavowal”) (citation omitted). Here, Patent Owner does not argue lexicography or disavowal. Nor does Patent Owner explain any other reason why the Specification limits “goal satisfaction plan” as it contends. Thus, claim construction in this case is governed by the general principle that “a particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment.” SuperGuide, 358 F.3d at 875; see also WesternGeco LLC v. ION Geophysical Corp., 889 F.3d 1308, 1323–24 (Fed. Cir. 2018) (“It is well established that claims are not limited to preferred embodiments, unless the specification clearly indicates otherwise.” (citing Comaper Corp. v. Antec, Inc., 596 F.3d 1343, 1348 (Fed. Cir. 2010) (“[T]his court has repeatedly cautioned against limiting claims to a preferred embodiment.”))). Accordingly, none of the embodiments in the Specification cited by Patent Owner limits “goal satisfaction plan” as Patent Owner contends.” slip op. at 19
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“http://drogo.cselt.stet.it/fipa. FIPA published FIPA 97 Version 1.0 on its website at the conclusion of the Munich meeting on October 10, 1997, or shortly thereafter. See Ex. 1049 ¶ 20. In the several months leading up to the Munich meeting, persons of ordinary skill in the art would have known about the FIPA website through the widely distributed AgentWeb newsletters and the Software Agents mailing list, which provided website information or direct links to drafts of the specification and meeting announcements and reports. See Ex. 1091, 1–2; Ex. 1092, 3; Ex. 1093, 2; Ex. 1094; Ex. 1082, 1; Ex. 1083, 1. Therefore, people working in the field would have been sufficiently familiar with FIPA’s activities and its website to look for FIPA 97 Version 1.0 on the FIPA website when it was posted after the Munich meeting. Indeed, both Dr. Finin, who was affiliated with FIPA, and Dr. Lieberman, who worked in the software agent field, testify that they accessed FIPA 97 Version 1.0 on the FIPA website in late 1997. Id. ¶ 21; Ex. 1050 ¶ 146.” slip op. at 46
Patent outcomesUS 6,851,115 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 6,851,115 - Microsoft Corporation v. Ipa Technologies, Inc.Some claims unpatentablePTAB · Oct 15, 2020 · IPR2019-00812 · APJ Kevin C Trock · IPR · Final written decision
Claims 1, 15, and 17–25 are unpatentable as obvious over Kiss and FIPA97, or over Kiss, FIPA97, and Cohen.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“A. Level of Ordinary Skill” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageTerm construed petitioner constructionDecided for petitioner
“description may not be read into a claim when the claim language is broader than the embodiment.” SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) (citation omitted). As discussed above, the challenged independent claims 1 and 29 do not recite all of the limiting features required by Patent Owner’s proposed construction of “goal satisfaction plan.” Thus, unless one of the established exceptions, such as lexicography or disavowal, applies, the challenged claims are not restricted as Patent Owner contends. See, e.g., GE Lighting Sols., LLC v. AgiLight, Inc., 750 F.3d 1304, 1309 (Fed. Cir. 2014) (“the specification and prosecution history only compel departure from the plain meaning in two instances: lexicography and disavowal”) (citation omitted). Here, Patent Owner does not argue lexicography or disavowal. Nor does Patent Owner explain any other reason why the Specification limits “goal satisfaction plan” as it contends. Thus, claim construction in this case is governed by the general principle that “a particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment.” SuperGuide, 358 F.3d at 875; see also WesternGeco LLC v. ION Geophysical Corp., 889 F.3d 1308, 1323–24 (Fed. Cir. 2018) (“It is well established that claims are not limited to preferred embodiments, unless the specification clearly indicates otherwise.” (citing Comaper Corp. v. Antec, Inc., 596 F.3d 1343, 1348 (Fed. Cir. 2010) (“[T]his court has repeatedly cautioned against limiting claims to a preferred embodiment.”))). Accordingly, none of the embodiments in the Specification cited by Patent Owner limits “goal satisfaction plan” as Patent Owner contends.” slip op. at 19
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“http://drogo.cselt.stet.it/fipa. FIPA published FIPA 97 Version 1.0 on its website at the conclusion of the Munich meeting on October 10, 1997, or shortly thereafter. See Ex. 1049 ¶ 20. In the several months leading up to the Munich meeting, persons of ordinary skill in the art would have known about the FIPA website through the widely distributed AgentWeb newsletters and the Software Agents mailing list, which provided website information or direct links to drafts of the specification and meeting announcements and reports. See Ex. 1091, 1–2; Ex. 1092, 3; Ex. 1093, 2; Ex. 1094; Ex. 1082, 1; Ex. 1083, 1. Therefore, people working in the field would have been sufficiently familiar with FIPA’s activities and its website to look for FIPA 97 Version 1.0 on the FIPA website when it was posted after the Munich meeting. Indeed, both Dr. Finin, who was affiliated with FIPA, and Dr. Lieberman, who worked in the software agent field, testify that they accessed FIPA 97 Version 1.0 on the FIPA website in late 1997. Id. ¶ 21; Ex. 1050 ¶ 146.” slip op. at 47
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“we consider any relevant evidence of secondary considerations of non-obviousness. See Graham, 383 U.S. at 17. Notwithstanding what the teachings of the prior art would have suggested to one of ordinary skill in the art at the time of the invention, the totality of the evidence submitted, including objective evidence of non-obviousness, may lead to a conclusion that the challenged claims would not have been obvious to one of ordinary skill. In re Piasecki, 745 F.2d 1468, 1471–72 (Fed. Cir. 1984). Patent Owner presents evidence of two such considerations: (1) industry praise (Resp. 120–141) and (2) long-felt but unresolved need (id. at 141–145), both involving the software product called “Siri” from Apple Inc. For the reasons explained below, we determine that Patent Owner’s proffered evidence of secondary considerations is not entitled much weight because Patent Owner does not establish a sufficient nexus between the evidence of non-obviousness and the challenged claims of the ’115 patent.” slip op. at 73
Patent outcomesUS 6,851,115 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 6,851,115 - Intel Corporation v. VLSI Technology LLCSome claims unpatentablePTAB · Feb 6, 2020 · IPR2018-01033 · APJ Bart A Gerstenblith · IPR · Final written decision
Claims 17 is anticipated by Bednar, and claims 1 and 17 are obvious over Bednar and Gunther; the remaining challenged claims were not shown unpatentable.
RulingsFinal written decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“requesting institution of inter partes review of claims 1, 4–6, and 17–19 of U.S. Patent No. 8,004,922 B2 (Ex. 1001, “the ’922 patent”). VLSI Technology LLC (“Patent Owner”) filed a Preliminary Response (Paper 12). Applying the standard set forth in 35 U.S.C. § 314(a), we instituted an inter partes review of all challenged claims. Paper 17 (“Inst. Dec.”).” slip op. at 2
- Skill levelSkill level board ownDecided for petitioner
“to the level of ordinary skill in the art was incorrect. Accordingly, because our preliminary finding is consistent with the level of ordinary skill in the art reflected by the prior art of record, we maintain and reaffirm that one of ordinary skill in the art at the time of the invention would have had “at least (1) an undergraduate degree in electrical engineering (or an equivalent subject), together with three years of post-graduate experience designing power management circuits; or (2) a master’s degree in electrical engineering (or equivalent subject) together with two years of post-graduate experience designing power management circuits.” Inst. Dec. 8–9; see Pet. 36 (citing Ex. 1002 ¶¶ 26–27).” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“construction of “memory device,” specifically whether it encompasses a latch. Neither party argues that “memory device” is expressly defined in the ’922 patent. Accordingly, the plain and ordinary meaning of the term controls. And, the standard under which we construe the term is the broadest reasonable construction in light of the specification.” slip op. at 45
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed
“preponderance of the evidence, that (1) claim 17 is anticipated by Bednar, and (2) claims 1 and 17 would have been obvious over the combination of Bednar and Gunther. For the reasons discussed above, Petitioner has not demonstrated, by a preponderance of the evidence, that (1) claim 1 is anticipated by Bednar or (2) claims 4–6, 18, and 19 would have been obvious over the combination of Bednar, Gunther, and Willingham. The chart below summarizes our conclusions.” slip op. at 91
Patent outcomesUS 8,004,922 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,004,922
Holdings, summaries, rulings, issues, outcomes, winners and claim constructions shown for a decision were generated by a large language model reading the opinion. They are a guide to the decision, not the decision. Confirm every one against the court's own text before relying on it. Outcomes read from the patent owner’s side. Party names are extracted from the decision and are missing on about 900 short Director denials and scans, which carry the trial number instead.