- PTAB · Jul 20, 2015 · IPR2015-00517 · APJ Kevin F Turner · IPR · Institution
The Board denied institution because neither petition showed a reasonable likelihood that claims 1, 9, 10, 12, 30, 32, 42, or 45 were unpatentable over Kitamura or Mehrotra.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We review the Petitions under 35 U.S.C. § 314, which provides that an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Based on our review of the record, we conclude that neither Petitioner is reasonably likely to prevail in demonstrating that at least one of the challenged claims is not patentable, based on the Petitions filed. See 35 U.S.C. § 314. B.” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“Kitamura is largely silent as to the specific functioning of the D/A conversion circuit 10. Kitamura discloses that D/A conversion circuit 10 and A/D conversion circuit 13 “preferably share a voltage dividing element and a reference voltage supply (for the purpose of making their characteristics uniform),” and level differences to maximize the operating margin (Ex. 1010 ¶ 11), but does not disclose a “selection” between reference voltages or signals. Although Petitioners emphasize the obviousness of certain elements of the challenged claims (Pet. 25– 26), the obviousness of selecting a reference voltage versus outputting a voltage from a D/A conversion is not discussed. Indeed, Dr. Baker’s discussion is clear (Ex. 1003 ¶¶ 74–79) as to how the output voltages could be set, but it remains unclear how Kitamura itself suggests the examples proffered. The normal function of a D/A converter is not to select between reference voltages, but to render the digital input into analog form. We are not persuaded that Kitamura teaches or suggests the selection of one of a plurality of reference voltages in accordance with the input information, per the challenged claims. In addition, the Petitions fail to provide any rationale for why Kitamura’s disclosure of D/A conversion renders the selection of a reference voltage or signal obvious. For these reasons, Patent Owner’s contentions that Kitamura does not teach or suggest “reference voltage selecting means,” or equivalent elements, or “reference voltages,” per the challenged claims, are persuasive. C.” slip op. at 10
- Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Term construed petitioner construction§112(f) appliesDecided for petitioner
“Reference Voltage Selection Claim 1 recites “reference voltage selecting means for selecting one of a plurality of reference voltages,” with claims 9, 12, and 30 reciting “selecting device which selects one of a plurality of reference signals,” and claims 42 and 45 reciting “selecting one of a plurality of predetermined reference signals.” Petitioners acknowledge that the means-plus-function element in claim 1 is “governed by 35 U.S.C. § 112, ¶ 6,” and that the construction of the claim term in claim 1 “is applicable to claim terms” recited in claims 9, 12, 30, 42, and 45, discussed above. Pet. 5, 8. Petitioners assert that “the verify reference voltage select circuit 222 selects and provides such a reference voltage to the comparator,” and is the corresponding structure described in the specification. Id. at 56 (citing Ex. 1003 ¶¶ 4552). For purposes of this Decision, we construe the referenced claim terms according to that structure and apply the same to the analysis below. B.” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“Reference Voltages” “Reference Signals” All of the independent claims of the challenged claims recite either “reference signals” or “reference voltages.” Petitioners emphasize that “a person of ordinary skill in the art would have interpreted these features to be broad enough to include and be met by either a digital reference voltage/ signal or an analog reference voltage/signal.” Id. at 10 (citing Ex. 1003 ¶¶ 53–58). For purposes of this Decision, we construe the reference voltages and signals terms as being met by either digital or analog reference voltages/signals, and apply that construction to the analysis below. slip op. at 7
Claim construction§ 103 obviousnesscites KSRPatents in suitUS 5,764,571 - PTAB · Jul 20, 2015 · IPR2015-00504 · APJ Kevin F Turner · IPR · Institution
The Board denied institution in both proceedings because neither petition showed a reasonable likelihood of proving any challenged claim obvious over Kitamura or Mehrotra.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We review the Petitions under 35 U.S.C. § 314, which provides that an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Based on our review of the record, we conclude that neither Petitioner is reasonably likely to prevail in demonstrating that at least one of the challenged claims is not patentable, based on the Petitions filed. See 35 U.S.C. § 314. B.” slip op. at 3
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Kitamura is largely silent as to the specific functioning of the D/A conversion circuit 10. Kitamura discloses that D/A conversion circuit 10 and A/D conversion circuit 13 “preferably share a voltage dividing element and a reference voltage supply (for the purpose of making their characteristics uniform),” and level differences to maximize the operating margin (Ex. 1010 ¶ 11), but does not disclose a “selection” between reference voltages or signals. Although Petitioners emphasize the obviousness of certain elements of the challenged claims (Pet. 25– 26), the obviousness of selecting a reference voltage versus outputting a voltage from a D/A conversion is not discussed. Indeed, Dr. Baker’s discussion is clear (Ex. 1003 ¶¶ 74–79) as to how the output voltages could be set, but it remains unclear how Kitamura itself suggests the examples proffered. The normal function of a D/A converter is not to select between reference voltages, but to render the digital input into analog form. We are not persuaded that Kitamura teaches or suggests the selection of one of a plurality of reference voltages in accordance with the input information, per the challenged claims. In addition, the Petitions fail to provide any rationale for why Kitamura’s disclosure of D/A conversion renders the selection of a reference voltage or signal obvious. For these reasons, Patent Owner’s contentions that Kitamura does not teach or suggest “reference voltage selecting means,” or equivalent elements, or “reference voltages,” per the challenged claims, are persuasive. C.” slip op. at 10
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“The standard for granting a motion to seal is “good cause,” reflecting the strong public policy for making all information in inter partes review proceedings open to the public. 37 C.F.R. § 42.54. The moving party bears the burden of showing that the relief requested should be granted. 37 C.F.R. § 42.20(c). This includes showing that the information is truly confidential, and that such confidentiality outweighs the strong public interest in having an open record. See Garmin Int’l v. Cuozzo Speed Techs., LLC, Case IPR2012-00001, slip op. at 3 (PTAB Mar. 14, 2013) (Paper 36). Petitioner Micron has made a sufficient showing. Accordingly, the Motion to Seal Exhibit 1011 is granted.” slip op. at 15
§ 103 obviousnesscites KSRPatents in suitUS 5,764,571 - Sure-Fire Electrical Corporation v. Yongjiang Yin And Shenzhen El Lighting Co. Ltd.Rehearing grantedPTAB · Jun 1, 2015 · IPR2014-01448 · APJ Debra K Stephens · IPR · Rehearing
Rehearing was granted for claims 1 and 7 under § 103 over He and Korodi, and denied for the He and Currie ground.
RulingsRehearing decision- RehearingRehearing, grantedRehearing, deniedGranted in part
“Therefore, we conclude that we did not abuse our discretion in declining to institute an inter partes review based the combination of He and Currie. Accordingly, we do not institute an inter partes review based on this ground. III. CONCLUSION For the foregoing reasons, on rehearing, based on our review of the record before us, we determine Petitioner has demonstrated a reasonable likelihood of prevailing on its assertion that the challenged claims are unpatentable based on the combination of He and Korodi. Therefore, we modify our Decision to institute an inter partes review of claims 1 and 7 for obviousness over He and Korodi. We determine, however, that we did not abuse our discretion in declining to institute review on the asserted ground based on He and Currie, and rehearing is denied as to that ground. At this stage in the proceeding, we have not made a final determination with respect to the patentability of the challenged claims, including the claim construction.” slip op. at 12
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“a reasonable likelihood that an ordinarily skilled artisan would have been motivated to combine the teachings of He and Korodi. Specifically, we determine, based on the current record, Petitioner has articulated reasoning with a rational underpinning as to why an ordinarily skilled artisan would have been motivated to combine the teachings. “‘[T]here must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness’ . . . [H]owever, the analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). We credit Dr. Horenstein’s testimony that an ordinarily skilled artisan would have found it obvious simply to replace the aluminum core wire in He with a power cord as taught by Korodi. Ex. 1008 ¶¶ 99, 102. We additionally are persuaded, on the record before us, that the combination of He and Korodi unites old elements with no change in their respective functions. See KSR, 550 U.S. at 415–16. To be nonobvious, an improvement must be “more than the predictable use of prior art elements according to their established functions.” Id. at 417. Indeed, we credit Dr. Horenstein’s testimony that replacing the aluminum core wire in He for the power cord in Korodi would have been a merger of familiar elements according to their established functions, known methods, and predictable results. Ex. 1008 ¶ 103.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundOther
“Based on the record before us, we are persuaded Petitioner has shown a reasonable likelihood that an ordinarily skilled artisan would have been motivated to combine the teachings of He and Korodi. Specifically, we determine, based on the current record, Petitioner has articulated reasoning with a rational underpinning as to why an ordinarily skilled artisan would have been motivated to combine the teachings. “‘[T]here must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness’ . . . [H]owever, the analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). We credit Dr. Horenstein’s testimony that an ordinarily skilled artisan would have found it obvious simply to replace the aluminum core wire in He with a power cord as taught by Korodi. Ex. 1008 ¶¶ 99, 102. We additionally are persuaded, on the record before us, that the combination of He and Korodi unites old elements with no change in their respective functions. See KSR, 550 U.S. at 415–16. To be nonobvious, an improvement must be “more than the predictable use of prior art elements according to their established functions.” Id. at 417. Indeed, we credit Dr. Horenstein’s testimony that replacing the aluminum core wire in He for the power cord in Korodi would have been a merger of familiar elements according to their established functions, known methods, and predictable results. Ex. 1008 ¶ 103. Accordingly, based on the record before us, we are persuaded the combination of He and Korodi is a proper combination.” slip op. at 10
- Burden
“With regard to the asserted ground of unpatentability of claims 1 and 7 for obviousness over He and Currie, Petitioner does not explain adequately the relative strengths or weaknesses of this ground and the grounds on which we have instituted. See Cisco Systems, Inc. v. Constellation Tech. LLC, Case IPR2014-01180, slip op. at 29–30 (PTAB Feb. 8, 2015) (Paper 8). The Currie reference has a filing date of September 24, 2004 and an issuance date of October 17, 2006. Thus, the Currie reference would not be prior art if Patent Owner were successful in establishing a conception date “at least as early as April 2004” and diligence from conception to reduction to practice. See Prelim. Resp. 11. Accordingly, the arguments presented in Petitioner’s Request for Rehearing do not apply to the combination of He and Currie. Therefore, we conclude that we did not abuse our discretion in declining to institute an inter partes review based the combination of He and Currie. Accordingly, we do not institute an inter partes review based on this ground.” slip op. at 11
§ 103 obviousnesscites KSRPatents in suitUS 7,671,279 - Yamaha Corporation Of America v. Black Hills Media, LLCAll claims unpatentablePTAB · Mar 18, 2015 · IPR2013-00597 · APJ Peter P Chen · IPR · Final written decision
Claims 2, 6, and 10–12 are unpatentable: Bi anticipates claims 2, 6, and 10–12; Gladwin anticipates claims 2, 6, 11, and 12; Berman renders claims 2, 6, 11, and 12 obvious.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for petitioner
“[a] playlist is a list of a user’s favorite selections.” Ex. 1001, 1:33–34. Patent Owner quotes from the specification of the ’099 Patent: Playlists also facilitate the playing of a plurality of selections in a particular order. That is, the playlist may be compiled in an order in which the playing of selections therefrom is desired. The selections may then be automatically played sequentially from the playlist. Typically, selections may also be played randomly from a playlist. PO Resp. 10; Ex. 1001, 1:45–52 (emphasis added).2 As noted by Petitioner, this passage reflects that a playlist may have a particular order of selections (see Pet. Reply 6), but also expressly discloses that selections may be played randomly from a playlist. slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“wireless handheld remote control which is associated with and separate from the media player device,” arguing that the term requires “a handheld remote control that can operate as an independent device relative to the media player that it control.” PO Resp. 14–16 (emphasis and grammatical error in original); see also Tr. 70:1–14 (“independent and separate would be synonyms.”). Petitioner argues that Patent Owner’s proposal is narrow and excludes “a standard remote control for a device,” Pet. Reply 8–9. We agree, as in addition to the Petitioner’s contentions, we note the terms “operate” and “independent” do not appear in the ’099 patent. 9 We decline to adopt Patent Owner’s proposed construction over the ordinary and customary meaning of the term.” slip op. at 9
- Skill levelOther
“year of practical experience with networked multimedia.” Ex. 1002 ¶ 8. Patent Owner’s proposal is similar, requiring “a person with a bachelor’s degree in computer science or electrical engineering and one year of practical experience with networked media.” PO Resp. 7. The parties dispute Petitioner’s use of the qualifying phrase “at least” in describing the level of education and work experience. While we disagree with Patent Owner’s argument that “at least” is “improper because it is open-ended” (PO Resp. 7–8),3 we determine that an express definition of the level of ordinary skill is not required. The level of ordinary skill in the art can be reflected in the cited prior art references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“the absence of specific findings on the level of skill in the art does not give rise to reversible error where the prior art itself reflects an appropriate level and a need for testimony is not shown.”) (internal quotations omitted); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). Here, neither party has provided a sufficient explanation as to how their specific proposal regarding the level of ordinary skill (and in particular the importance of the inclusion or exclusion of “at least”) affects the analysis in this case. Therefore, we find the level of ordinary skill in the art to” slip op. at 11
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, grantedGranted
“B. Motion to Amend In its Motion to Amend, Patent Owner moves to cancel independent claim 1 and dependent claim 9. Paper 25. Petitioner’s Reply does not oppose the motion. Pet. Reply 1. We grant the motion to amend, and proceed to analyze the remaining five claims.” slip op. at 10
Patent outcomesUS 8,230,099 unpatentableClaim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 8,230,099
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.