• EMC Corporation / Rsa Security LLC v. Secure Axcess, LLCAll claims unpatentable
  PTAB · Sep 8, 2015 · IPR2014-00475 · APJ Barbara A Benoit · IPR · Final written decision

  Claims 1–23 and 25–32 are unpatentable: some are anticipated by Arent or Tygar, and the remaining claims are obvious over the stated combinations.

  RulingsFinal written decision

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

    “As an initial matter, in accordance with the plain language of the claims and because the ’191 patent does not provide any special meaning for the term “received data,” we construe “received data” to mean “data that has been received.” The term “received data” implies data has been received but does not itself require the data to be received at a particular time, in a particular manner, by a particular device (such as an authentication host computer), or from a particular device (such as a device other than an authentication host computer). None of independent claims 1, 31, or 32 expressly recites from where the received data is sent, much less recite expressly that the data is sent from a device other than the authentication host computer. Of independent claims 1, 31, and 32, only independent claim 32 expressly requires a particular device—“an authentication host computer”—to receive data. Independent claims 1 and 31 require acting on received data in a certain manner—to transform (claim 1), or format (claim 31), received data in a certain manner to create formatted data. Thus, none of claims 1, 31, or 32 expressly requires an authentication host computer to receive data from a device other than the authentication host computer, as Patent Owner contends.” slip op. at 10

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner

    “We agree with Petitioner that none of the claims requires the authenticity key to locate the preferences file or have the ability to determine the location of a preferences file. First, none of the independent claims recites the authenticity key being used to locate the preferences file.10 Nor is there evidence of written description support for such an interpretation— the ’191 patent does not disclose using an authenticity key to locate the preferences file. Rather, as noted previously, the ’191 patent discloses in a preferred embodiment that a preferences key, which is different than an authenticity key, is used to locate the preferences file. See Ex. 1001, 4:38– 40. This understanding is confirmed by Patent Owner’s declarant Dr. Katz. See Ex. 1034, 164:20–165:5. Further, Dr. Katz acknowledges the 9 To the extent that Patent Owner argues Dr. Tygar’s testimony concerning a particular embodiment disclosed in the ’191 patent acknowledges Patent Owner’s proposed construction here is correct (Paper 23, 2–4), we disagree. Dr. Tygar did not provide testimony about the meaning of the claims, only what a particular embodiment in the ’191 patent described. See Paper 27, 1– 3. 10 Claim 1 recites “returning. . . the formatted data to enable the authenticity key to be retrieved from the formatted data and to locate a preferences file”; independent claim 29 recites “the authenticity key enables location of a preferences file”; independent claims 31 and 32 require retrieving the authenticity key to locate a preferences file. Independent claim 17 does not recite the location of a preferences file. 19 authenticity key does not have information to locate the preferences file. See, e.g., Ex. 1034, 165:6–9. Petitioner’s proposed construction of independent claims 1, 17, 29, 31, and 32 as only requiring some action as a precondition to locating the preferences file better comports with the claims and written description of the ’191 patent. For example, the ’191 patent discloses that after verification of a received digital signature, the preferences key is requested and subsequently used to determine the location of the preferences file. See Ex. 1001, 4:22–40 (referring to Fig. 5). The verification of the received digital signature must occur before the preferences key can be requested and used to determine the location of the preferences file. In other words, verification of the received digital signature is a precondition of requesting and using the preferences key to determine the location of the preferences file. Thus, verification of the received digital signature enables—supplies the opportunity for11—the requested preferences key. We, therefore, adopt Petitioner’s proposed construction that the” slip op. at 19

  • Skill levelSkill level board ownDecided for petitioner

    “The parties propose similar levels of ordinary skill in the art and do not directly challenge the other’s proposal. Ex. 1002 ¶ 12 (testimony by Petitioner’s declarant); Ex. 2007 ¶ 8 (testimony by Patent Owner’s declarant). The parties’ declarants differ in the amount of work experience one with ordinary skill in the art with a bachelor’s degree would have. Patent Owner’s declarant opines two years of work experience would be sufficient, whereas Petitioner’s declarant opines five years of work experience would be necessary for one of ordinary skill in the art with a bachelor’s degree. Id. Despite these initial differences, Petitioner later acknowledged that record evidence supports a level of ordinary skill having two years of work experience. Hearing Tr. 32:1–16; see also Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (indicating the level of ordinary skill in the art is reflected by the prior art of record). We adopt the areas of agreement in the parties’ proposals. Therefore, one of ordinary skill in the art would have a bachelor’s degree in computer 23 science (or an equivalent field) and least two years of work experience in the area of information technology.” slip op. at 23

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “Weighing the testimony of the declarants, as discussed above, we credit Dr. Tygar’s testimony over Dr. Katz’s testimony that Arent discloses sending the digital signature separately from the message. See, e.g., Yorkey v. Diab, 601 F.3d 1279, 1284 (Fed. Cir. 2010) (holding the Board has discretion to give more weight to one item of evidence over another “unless no reasonable trier of fact could have done so”); In re Am. Acad. of Sci. Tech 31 Ctr., 367 F.3d at 1368 (“[T]he Board is entitled to weigh the declarations and conclude that the lack of factual corroboration warrants discounting the opinions expressed in the declarations.”). First, Dr. Katz does not address sufficiently the Petitioner’s position regarding the signed web offer being the formatted data recited in claims 1, 31, and 32. Rather, Dr. Katz focuses his testimony on Arent’s technology for authentication of a merchant, whereas Petitioner relies on Arent’s authentication of the offer. Compare Pet. 29–32, Reply 3–4 with Ex. 1034 153:10–154:21, 159:17–160:19; see also Ex. 1035 ¶ 52 (Dr. Tygar confirming Dr. Katz based his understanding on Arent’s discussion of the authentication of a merchant). Second, Dr. Tygar directly counters Dr. Katz’s testimony. Dr. Tygar testifies that “[c]onventional digital signature techniques would not have sent the message and signature separately, especially in the context of signing web pages.” Ex. 1035 ¶ 53 (explaining how “an elaborate system would be needed to correlate specific instances of web pages for specific user/browser combinations and specific moments in time and the corresponding digital signatures” if digital signatures were sent separately from messages/web pages).” slip op. at 31

  Patent outcomesUS 7,631,191 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,631,191
• PNC Bank, N.A. / U.S. Bank, N. A. et al. v. Secure Axcess, LLCAll claims unpatentable
  PTAB · Sep 8, 2015 · CBM2015-00009 · APJ Barbara A Benoit · CBM · Final written decision

  Claims 1–32 are unpatentable as obvious over the SHTTP document and Arent.

  RulingsFinal written decision

  • BurdenFwd all claims unpatentableUnpatentable

    “For the foregoing reasons, we determine that Petitioner has established by a preponderance of the evidence that the subject matter recited in claims 1–32 of the ’191 patent as a whole would have been obvious to one of ordinary skill in the art in view of the teachings of the SHTTP document and Arent. See 35 U.S.C. § 103(a).” slip op. at 71

  • ExcludeMotion to exclude, deniedNot reached

    “Information Prepared by Paul C. Clark” (Ex. 1018). Petitioner opposes, arguing that Exhibit 1018 is Dr. Clark’s notes used during his deposition. We did not refer to or rely on Exhibit 1018 in this Final Written Decision. As such, we need not reach the merits as to Patent Owner’s Motion to Exclude. Accordingly, Patent Owner’s Motion to Exclude certain evidence (Ex. 1018) is dismissed as moot.” slip op. at 71

  • Skill levelSkill level board ownOther

    “Petitioner’s expert adopted the level of ordinary skill in the art at the time of the invention used by Patent Owner’s expert. See Ex. 2006 ¶ 8 (testimony by Patent Owner’s declarant identifying the level of ordinary skill); Ex. 1002 ¶ 29 (testimony by Petitioner’s declarant). We do not 31 disagree with the parties. Therefore, one of ordinary skill in the art would have a bachelor’s degree in computer science, computer engineering, or an equivalent field and least two years of work experience in the area of information technology.” slip op. at 31

  • Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner

    “We agree with Petitioner and its declarant that the provisional application does not disclose the claimed authenticity key or preferences file or the claimed use thereof, as recited in each of independent claims 1, 17, 29, 31, and 32. The provisional application describes the invention in a few sentences. The scarcity of detail fails to provide sufficient disclosure of the claimed steps. For example, we see no disclosure of inserting any data in the provisional application, much less inserting something that could be identified as an authenticity key. Although a shared secret is disclosed, the shared secret is not described as being inserted into the web page or any other data. See id. at 5–6 (“The invention proposes to utilize the shared secret data created as part of being” a credit card holder of a particular credit 33 card company.). Moreover, the record evidence indicates that the provisional application does not disclose the recited “authenticity key.” Pet. 20 (citing Ex. 1002 at 18, ¶ 37). Thus, we agree with Petitioner that the provisional application lacks written description support for “authenticity key,” which is recited by all claims in the ’191 patent. Accordingly, we determine Arent is prior art under 102(a) to the ’191 patent and is available for consideration in this covered business method patent review.” slip op. at 33

  Patent outcomesUS 7,631,191 unpatentable
  Claim construction§ 103 obviousness§ 112 disclosurecites KSR · Graham
  Patents in suitUS 7,631,191
• PNC Bank, N.A. / U.S. Bank, N. A. et al. v. Secure Axcess, LLCAll claims unpatentable
  PTAB · Sep 8, 2015 · CBM2014-00100 · APJ Barbara A Benoit · CBM · Final written decision

  Claims 1–32 are unpatentable as obvious over SHTTP and Arent; the Board found the combined teachings and reason to combine established by a preponderance of the evidence.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for petitioner

    “Petitioner’s expert adopted the level of ordinary skill in the art at the time of the invention used by Patent Owner’s expert. See Ex. 2006 ¶ 8 (testimony by Patent Owner’s declarant identifying the level of ordinary skill); Ex. 1002 ¶ 29 (testimony by Petitioner’s declarant). We do not 31 disagree with the parties. Therefore, one of ordinary skill in the art would have a bachelor’s degree in computer science, computer engineering, or an equivalent field and least two years of work experience in the area of information technology.” slip op. at 31

  • Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner

    “We agree with Petitioner and its declarant that the provisional application does not disclose the claimed authenticity key or preferences file or the claimed use thereof, as recited in each of independent claims 1, 17, 29, 31, and 32. The provisional application describes the invention in a few sentences. The scarcity of detail fails to provide sufficient disclosure of the claimed steps. For example, we see no disclosure of inserting any data in the provisional application, much less inserting something that could be identified as an authenticity key. Although a shared secret is disclosed, the shared secret is not described as being inserted into the web page or any other data. See id. at 5–6 (“The invention proposes to utilize the shared secret data created as part of being” a credit card holder of a particular credit 33 card company.). Moreover, the record evidence indicates that the provisional application does not disclose the recited “authenticity key.” Pet. 20 (citing Ex. 1002 at 18, ¶ 37). Thus, we agree with Petitioner that the provisional application lacks written description support for “authenticity key,” which is recited by all claims in the ’191 patent. Accordingly, we determine Arent is prior art under 102(a) to the ’191 patent and is available for consideration in this covered business method patent review.” slip op. at 33

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

    “10. Conclusion Regarding Obviousness We have resolved the question of obviousness based on factual determinations of (1) the scope and content of the prior art; (2) differences between the subject matter of challenged claims and the teachings of the prior art; and (3) the level of ordinary skill in the art. Graham, 383 U.S. at 17–18. Patent Owner did not put forth any objective evidence of nonobviousness. For the foregoing reasons, we determine that Petitioner has established by a preponderance of the evidence that the subject matter recited in claims 1–32 of the ’191 patent as a whole would have been obvious to one of ordinary skill in the art in view of the teachings of the SHTTP document and Arent. See 35 U.S.C. § 103(a).” slip op. at 71

  Patent outcomesUS 7,631,191 unpatentable
  Claim construction§ 103 obviousness§ 112 disclosurecites KSR · Graham
  Patents in suitUS 7,631,191
• Canon Inc. v. Intellectual Ventures II LLCAll claims unpatentable
  PTAB · Aug 19, 2015 · IPR2014-00631 · APJ Richard E Rice · IPR · Final written decision

  Claims 1–24 are unpatentable: claims 1, 2, 8, 11, 13–16, 19–21, and 24 as anticipated by Mishima; claims 3–7, 9, 10, 12, and 15–23 under specified obviousness combinations.

  RulingsFinal written decision

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

    “Patent Owner’s argument that we should limit “selecting” in claim 1 to “user . . . selecting” (PO Resp. 3) is not persuasive for the reasons that we provided in the Decision to Institute. Inst. Dec. 8–9. In addition, Patent Owner’s proposed claim construction would exclude embodiments in which the image capture device, itself, selects an automatic trigger condition. E.g., Ex. 1001, 10:28–32 (“The camera automatically enters the automatic response mode as soon as power is applied unless otherwise instructed by the operator. Alternately, configuration tools can be provided to select from various sensed conditions.”), 12:23–26 (“Once one or more subjects of interest have been stored, digital image capture device 10 can employ these subjects of interest as image capture triggers whenever it is placed in automatic response mode.”). Patent Owner has not explained sufficiently why “selecting” should be interpreted to exclude such embodiments. See, e.g., Oatey Co. v. IPS Corp., 514 F.3d 1271, 1277 (Fed. Cir. 2008) (holding that, at least where claims can be interpreted reasonably to include a specific embodiment, it is incorrect to construe the claims to exclude that embodiment, absent probative evidence to the contrary). For the above reasons, we determine that the term “selecting” carries its ordinary and customary meanings, and is not limited to acts performed by a user of the image capture device; and we maintain our interpretation.” slip op. at 14

  • Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer not foundTerm construed board ownDecided for petitioner

    “[D]isavowal requires that ‘the specification [or prosecution history] make[] clear that the invention does not include a particular feature.’” GE Lighting Solutions, LLC v. AgiLight, Inc., 750 F.3d 1304, 1309 (Fed. Cir. 2014) (quoting SciMed Life Sys. Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1341 (Fed. Cir. 2001)). Applying that standard in this case, we are not persuaded that the prosecution history makes clear that claim 1 does not include “entering” of a threshold level by the image capture device itself. The statement on which Patent Owner relies is only part of a sentence; the full sentence reads as follows: In amended Claim 1, a trigger condition and associated threshold [are] selected by a user in a step prior to image capture, the image capture device then monitors a signal corresponding to the trigger condition so that the image capture device can automatically determine when an image should he captured without intervention by a user. Ex. 1015, 6 (emphasis added). The thrust of that sentence, as explained in the paragraph that follows it in the prosecution history, is that, in claim 1, “the timing of image capture[] is determined automatically by the image capture device without the involvement of the user.” Id. (emphasis added). The Beck reference is not distinguished by the applicant on the basis of how the threshold level is selected, but rather on how an image is captured “after a trigger condition and associated threshold ha[ve] been satisfied.” Id. As such, whether “a trigger condition and associated threshold” are selected by a user, or by the device itself, is not central to applicant’s argument distinguishing the Beck reference. Accordingly, the statement that “a trigger condition and associated threshold [are] selected by a user” does not evidence a clear intent to disavow claim scope, contrary to Patent Owner’s contention. For the reasons discussed above, we determine that the broadest slip op. at 24

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

    “In opposition, Patent Owner argues that Mishima fails to disclose entering a threshold level corresponding to the automatic trigger condition, because, as asserted by Dr. Bovik, “the user is not involved in setting the threshold in any way.” PO Resp. 31 (citing Ex. 2006 ¶ 72). As discussed above, however, the user does not need to be involved in setting the threshold level under our interpretation of “entering.” See supra Section II.A.4. That is, the term “entering” is not limited to acts of entering performed by a user, but encompasses acts of entering performed by the image capture device itself. See id. We determine that Petitioner has made a sufficient showing that Mishima discloses “entering a threshold level.” See PO Resp. 32. In particular, Petitioner has shown that, when the user sets Mishima’s device in the automatic mode and selects a reference image for comparison with a captured image or photographic subject, the device sets or selects a threshold level, such as Kn, P, or 40%, and, thus, satisfies the “entering a threshold level” requirement under our claim construction. See Pet. 13–15; Pet. Reply 13–15; Ex. 1002 ¶ 43; Ex. 1016 ¶¶ 13, 48–50; Ex. 1005 ¶ 40 (describing “setting a threshold value Kn” based on reference brightness value K0), ¶ 90 (setting or selecting “X < P” to determine a match, where P is a threshold value and X is the average square of differences between the part that is subject to recognition and the user-selected image pattern); ¶ 114 (describing setting a threshold level as “40%” of “the number of pixels that produce 1”). Moreover, we are not persuaded by Dr. Bovik’s testimony that “the user [in Mishima] is not involved in setting the threshold in any way.” See Ex. 2006 ¶ 72. Dr. Bovik does not address adequately Mishima’s disclosure that the user places the camera in the automatic imaging mode and selects a reference image6 for comparison with a captured image or photographic subject. See, e.g., Ex. 1005 ¶¶ 26, 37, 38, 83, 85, 87, 97, 98, 107, 108; see Pet. Reply 14 (citing Ex. 1005 ¶¶ 37, 83). Those acts satisfy “selecting an automatic image trigger condition.” See Pet. 14; Ex. 1002 ¶ 42. Dr. Bovik does not discuss whether those acts also satisfy “entering a threshold level corresponding to the automatic image trigger condition.” As such, Dr. Bovik’s analysis of Mishima is inconsistent with his” slip op. at 31

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

    “In opposition, Patent Owner argues that a person of skill in the art would not have combined the teachings of Mishima and Misawa because: (1) the devices of Mishima and Misawa are not similar as Petitioner contends and, in fact, operate in fundamentally different ways, (2) the reasons Petitioner provides for combining Mishima and Misawa are undermined by the teachings of those references, and (3) Misawa would discourage one of ordinary skill from combining it with Mishima to arrive at the inventions of claims 3-6. PO Resp. 34. Patent Owner argues, for example, that Misawa “has nothing to do with automatic image trigger conditions, thresholds, or automatic image capture.” Id. at 35 (citing Ex. 2006 ¶ 91). We are persuaded by Petitioner, however, that Patent Owner’s argument is largely unresponsive to Petitioner’s asserted reason to combine, which “does not rely on Misawa for automatic image capture, but for an example user interface for creating an image database.” See Pet. Reply 15. We also are persuaded that a person of ordinary skill “would have looked to Misawa’s user interface as an example of how to construct/control image feature database 80 used in Mishima’s camera.” Id. at 16 (citing Ex 1005 ¶¶ 80, 94); see Ex. 1016 ¶¶ 53–55. Patent Owner has not persuaded us that using Misawa’s selection/extraction process in Mishima’s camera would have been outside the skill in the art, or yielded an unpredictable result. See KSR, 550 U.S. at 417 (“[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.”). Further, we are not persuaded by Patent Owner’s argument that Misawa would have led one in a divergent direction and, thus, teaches away from the recited method. See PO Resp. 44–45 (citing Ex. 2006 ¶¶ 108–111). Patent Owner has not shown that Misawa criticizes, discredits, or otherwise discourages investigation into the invention claimed. See Depuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009 (“A reference does not teach away, however, if it merely expresses a general preference for an alternative invention but does not “criticize, discredit, or otherwise discourage” investigation into the invention claimed.”) (emphases added; citation omitted). Patent Owner makes essentially the same arguments for claims 4–6 as” slip op. at 37

  Patent outcomesUS 7,817,914 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,817,914
• Canon Inc. v. Intellectual Ventures II LLCAll claims unpatentable
  PTAB · Aug 19, 2015 · IPR2014-00632 · APJ Richard E Rice · IPR · Final written decision

  Claims 1–24 are unpatentable: claims 1, 2, 8, 11, 13–16, 19–21, and 24 as anticipated by Mishima; claims 3–7, 9, 10, 12, 15–18, 22, and 23 as obvious over specified combinations.

  RulingsFinal written decision

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

    “Patent Owner’s argument that we should limit “selecting” in claim 1 to “user . . . selecting” (PO Resp. 3) is not persuasive for the reasons that we provided in the Decision to Institute. Inst. Dec. 8–9. In addition, Patent Owner’s proposed claim construction would exclude embodiments in which the image capture device, itself, selects an automatic trigger condition. E.g., Ex. 1001, 10:28–32 (“The camera automatically enters the automatic response mode as soon as power is applied unless otherwise instructed by the operator. Alternately, configuration tools can be provided to select from various sensed conditions.”), 12:23–26 (“Once one or more subjects of interest have been stored, digital image capture device 10 can employ these subjects of interest as image capture triggers whenever it is placed in automatic response mode.”). Patent Owner has not explained sufficiently why “selecting” should be interpreted to exclude such embodiments. See, e.g., Oatey Co. v. IPS Corp., 514 F.3d 1271, 1277 (Fed. Cir. 2008) (holding that, at least where claims can be interpreted reasonably to include a specific embodiment, it is incorrect to construe the claims to exclude that embodiment, absent probative evidence to the contrary). For the above reasons, we determine that the term “selecting” carries its ordinary and customary meanings, and is not limited to acts performed by a user of the image capture device; and we maintain our interpretation.” slip op. at 14

  • Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer not foundDecided for petitioner

    “[D]isavowal requires that ‘the specification [or prosecution history] make[] clear that the invention does not include a particular feature.’” GE Lighting Solutions, LLC v. AgiLight, Inc., 750 F.3d 1304, 1309 (Fed. Cir. 2014) (quoting SciMed Life Sys. Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1341 (Fed. Cir. 2001)). Applying that standard in this case, we are not persuaded that the prosecution history makes clear that claim 1 does not include “entering” of a threshold level by the image capture device itself. slip op. at 24

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “7 Patent Owner does not dispute Petitioner’s definition of the level of skill in the art as “(1) a Bachelor’s degree in electronics, computer science, or a related discipline and 2-3 years of camera electronics design and implementation experience, or (2) a Master’s degree or higher in a field such as electronics, computer science, or a related discipline with some concentration in imaging systems or image processing.” PO Resp. 5 n.2 (citing Ex. 1002 ¶¶ 16–17; Ex. 2006 ¶¶ 25–27). We adopt that definition for purposes of this Final Written Decision. 8 Patent Owner does not contend in the Patent Owner Response that any secondary considerations are present that would render the challenged claims patentable over the combined teachings of these references.” slip op. at 35

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “electronic device.” See Pet. Reply 2 (citing Ex. 1016 ¶¶ 9–16). We credit Dr. Stevenson’s testimony on this point: Data entry in electronic devices occurs through a variety of different mechanisms. For instance, in the context of electronic devices, including digital cameras, “entering” of data encompasses the electronic input of data into a component of the electronic device, such as a processor or memory. An electronic device’s operating instructions may cause the device to input data into a processor or memory. The entered data may be data from another memory (e.g., read-only memory (“ROM”)), a removable memory card, or a network.” slip op. at 19

  Patent outcomesUS 7,817,914 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,817,914
• Oracle Corporation v. Thought, Inc.All claims unpatentable
  PTAB · Apr 23, 2015 · IPR2014-00117 · APJ Stacey G White · IPR · Final written decision

  Claims 1–3 are unpatentable as anticipated by Franklin; claim 2 is also unpatentable over Franklin and JVM; claims 6–7 are unpatentable over Franklin and Chang.

  RulingsFinal written decision

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

    “have understood the recited phrase “any other” to mean that the reliable messaging service of claim 1 is a reliable messaging service with capabilities similar to those of the Java Messaging Service (“JMS”). Id. at 11–12 (citing Ex. 2001 ¶ 83). In support of its position, Patent Owner relies upon the testimony of Sam Malek, Ph.D. See Ex. 2001 ¶¶ 80–85. Dr. Malek provides a detailed description of JMS (id. ¶¶ 39–47), however, he does not provide a sufficient factual basis for his assertion that “any other” would be limited to services similar to JMS. During his deposition, Dr. Malek testified that JMS was an example of a messaging service and that there were other messaging services beyond JMS. Ex. 1016, 48:19–24. He, however, asserts that because the ’912 Patent mentions JMS, that in itself is an indication that the claims are directed to a particular form of messaging performed by JMS. Id. at 50:19–51:7. We note, however, that the ’912 Patent does not limit the messaging service to JMS; instead it lists JMS as an example of a messaging service that could be used. Ex. 1001, 5:57–60 (“caching system that utilizes a messaging system such as the Java Messaging Service (JMS)”), 16:28–30 (“the Java Messaging Service (JMS) or to any other reliable messaging service”), 16:46–49 (“JMS . . . or other reliable messaging service), 41:22– 25 (“JMS (or similar) notification caching system”). At most, there is one passing reference in the specification to the messaging system being “similar” to JMS, but the specification does not describe in what way the messaging system should be similar to JMS, nor does it state how similar the messaging system should be to JMS. Thus, we find that the ’912 Patent does not require JMS or any specific features of JMS. Therefore, we determine that the broadest reasonable interpretation of “any other” as recited in claim 1 of the ’912 Patent does not limit the claimed messaging service to those similar to JMS. As to the phrase “available in the object programming language system environment,” Patent Owner argues that this should mean that the recited messaging service has an interface for object oriented programs to use the messaging service. PO Resp. 12 (citing Ex. 2001 ¶ 83). In support of its position, Patent Owner cites Dr. Malek’s testimony. Dr. Malek, however, provides no analysis or factual support for that assertion outside of a discussion of JMS’s program language system environment. Ex. 2001 ¶¶ 82–83. We determine that this term is not limited to the environment of the JMS. Therefore, we determine that the broadest reasonable interpretation of “available in the object programming language system environment” is not limited to having an interface for object oriented programs to use the messaging service. We are not persuaded that express construction is necessary for the terms “any other” and “available in the object programming language system environment.” In addition, after reviewing the evidence of record, we determine that our preliminary construction of “reliable messaging service” to be “a messaging service that sends messages that will be received according to guarantees made by the service” is the broadest reasonable construction of the term and, as such, we do not modify our preliminary construction.” slip op. at 7

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureInherency foundUnpatentable

    “Ex. 1014 ¶ 9.2.1.1.3.4. We find Dr. Hosking’s testimony to be well reasoned. “‘[A]nticipation by inherent disclosure is appropriate only when the reference discloses prior art that must necessarily include the unstated limitation.’” Rexnord Indus., LLC v. Kappos, 705 F.3d 1347, 1355 (Fed. Cir. 2013) (quoting In re Omeprazole Patent Litigation, 483 F.3d 1364, 1378 (Fed. Cir. 2007)). According to our construction of reliable messaging service, such a service makes guarantees regarding the receipt of messages. Therefore, we find that one of ordinary skill in the art would understand an unreliable messaging service to be one that makes no such guarantees. It follows that if an unreliable messaging service is used, then there is no guarantee that invalidation messages would be received. The stated purpose of the algorithms described in Franklin is “to ensure that such caching does not result in the violation of transaction semantics.” Ex. 1005, 1. Franklin goes on to note that “care must be taken to ensure that the presence of multiple copies [of data] in the distributed system does not jeopardize the correctness of programs.” Id. at 2. The absences of guarantees regarding the receipt of invalidation messages would render the disclosed algorithms ineffective for their stated purpose because one cannot ensure that messages are received if an unreliable messaging system is used. Thus, we find that one of ordinary skill in the art would read Franklin’s disclosure to require a reliable messaging service.” slip op. at 16

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

    “in element (c) of claim 1. PO Resp. 25–33. We note, however, that “as a general rule the claim is not limited to performance of the steps in the order recited, unless the claim explicitly or implicitly requires a specific order.” Baldwin Graphic Sys., Inc. v. Siebert, Inc., 512 F.3d 1338, 1345 (Fed. Cir. 2008) (citing Interactive Gift Express, Inc. v. Compuserve Inc., 256 F.3d 1323, 1342–43 (Fed. Cir. 2001)). This is particularly true here because claim 1 recites a computer system and not a method. According to Patent Owner, the inclusion of the term “when” means that the invalidation message cannot be sent to the clients before the update is persisted in the data source. PO Resp. 29. Patent Owner urges that the term “when” has an ordinary and customary meaning of “at or during which time.” Id. at 29 n.5 (quoting Ex. 2003, 1424). We do not agree with Patent Owner’s narrow interpretation. Franklin discloses the sending of invalidation messages and the commitment to the database to be contemporaneous activities. Ex. 1005, 23–24. Franklin describes that in the O2PL algorithms a “transaction enters its commit phase” then it sends invalidation messages to the server and the client regarding the data to be updated, and then the data is updated in accordance with the algorithm. Id. Thus, one of ordinary skill in the art would have understood that the sending of invalidation messages to be part of the “commit phase.” As such, the sending of invalidation messages would occur “when” the update is being committed. Therefore, we determine that this disclosure meets the limitations of element (c) of claim 1.” slip op. at 18

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

    “reasoning to combine JVM and Franklin. PO Resp. 38. We are not persuaded by Patent Owner’s assertion. We, instead, are persuaded that the Java Virtual Machine was well-known, and that the implementation of a caching system, such as the one described by Franklin, in the Java Virtual Machine environment would have been within the knowledge of one of ordinary skill, and that such modification would have been motivated by the knowledge of one of ordinary skill. See In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971) (“Any judgment on obviousness is . . . 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.”). Therefore, we are not persuaded of improper hindsight reasoning. After considering the arguments and evidence presented by Petitioner and Patent Owner, we determine that Petitioner has shown by a preponderance of the evidence that Franklin and JVM would have rendered obvious claim 2.” slip op. at 21

  Patent outcomesUS 6,985,912 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 6,985,912
• Yamaha Corporation Of America v. Black Hills Media, LLCAll claims unpatentable
  PTAB · Mar 18, 2015 · IPR2013-00593 · APJ Stacey G White · IPR · Final written decision

  Claims 9, 10, and 14 are unpatentable as anticipated by Berman and Wolff; claim 13 is unpatentable as obvious over Berman.

  RulingsFinal written decision

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

    “from the Specification of the ’952 Patent, which defined “playlist 1528 . . . [as] a list of audio files and associated URL’s of where the audio files were retrieved from.” Ex. 1001, 21:6365. Petitioner persuasively argues that the Specification and the claims reflect that the playlist and associated URLs are separate items. Reply 5–6. For example, the Specification discusses a server having “a playlist for the Device 1110” and also “maintain[ing] a list of URL’s from which the device 1110 received audio files listed in the playlists.” Ex. 1001, 16:67–17:6; see also Reply 5–6 (citing Ex. 1001, 21:63–65, 21:45–46, 21:49, 21:51–52, Fig. 15) (pointing out examples in the Specification that discuss the playlist and URLs as separate items); Ex. 2012 ¶¶ 66–71, 75–76, 81–84 (explanation by Patent Owner’s declarant as to why a list of URLs is not a playlist). Thus, we are persuaded that URLs are not part of the playlist. Therefore, the broadest reasonable construction of playlist is “a list of audio files.”” slip op. at 8

  • Skill levelOther

    “a bachelor’s degree in computer science or electrical engineering, and at least one 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 or its equivalent and 1–2 years of practical experience with media file sharing.” PO Resp. 9–10 (citing Ex. 2012 ¶¶ 26–29). We find this dispute between the parties to be of little value. An express definition of the level of ordinary skill is not required in all situations, as 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). 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”) changes the analysis in this case. We find the level of ordinary skill in the art to be reflected in the cited references, and we determine that no express statement of the level of ordinary skill in the art is required.” slip op. at 11

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

    “Pet. 15–18. Specifically, Petitioner argues that Berman discloses a playback unit that receives a song list from the DUL server. Pet. 17 (citing Ex. 1012, Fig. 3 (step 308)); see also id. at 10:23–28 (describing song list packet sent to playback unit with a user ID “to confirm that the updated song list information was sent to and received by the correct playback unit”). Petitioner also asserts that the songs identified in the song list are stored on audio material server 104, and, thus, the songs are not stored on the playback unit. Id. at 18 (citing Ex. 1012, 4:5152). The playback unit receives URLs for songs on the song list from the audio material server. Id. (citing Ex. 1012, Fig. 3 (step 314), 7:22–54). Finally, Petitioner asserts that the playback unit obtains songs from the audio material server. Id. (citing Ex. 1012, Fig. 4 (step 412), 8:31–34). We agree with Petitioner’s arguments regarding the disclosures of Berman.” slip op. at 14

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

    “rendered obvious by the teachings of Berman. Pet. 34–35. Claim 13 depends from 9 and adds further limitations regarding the useage of web sites, which is not disclosed expressly by Berman. Petitioner asserts that it would have been obvious to one of ordinary skill in the art to use a web site as a remote source in place of Berman’s servers. Pet. 20–21. Dr. Bove supports Petitioner’s argument by testifying that “[i]t would have been well known to one of ordinary skill in the art in 2000 that music files could be provided by a Web server. As one example, the MP3.com music server site launched in 1997.” Ex. 1002 ¶ 19. We credit Dr. Bove’s testimony and find Petitioner’s arguments to be persuasive. Patent Owner does not proffer any additional arguments directed to the patentability of claim 13. PO Resp. 40. We determine that Petitioner has demonstrated by a preponderance of the evidence that dependent claim 13 would have been obvious over Berman.” slip op. at 16

  Patent outcomesUS 8,045,952 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 8,045,952
• Yamaha Corporation Of America v. Black Hills Media, LLCAll claims unpatentable
  PTAB · 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 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 8,230,099
• Captioncall, L.L.C. v. Ultratec, Inc.All claims unpatentable
  PTAB · Mar 3, 2015 · IPR2013-00544 · APJ Lynne E Pettigrew · IPR · Final written decision

  Claims 7–11 are unpatentable: claim 7 is anticipated by Ryan and obvious over Wycherley and Yamamoto; claims 8–11 are obvious over Ryan and McLaughlin.

  RulingsFinal written decision

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

    “The steps recited in the body of claim 7—providing words spoken by the remote user to a relay, a call assistant re-voicing the words to create a text stream, and presenting a text stream of the spoken words to the assisted user—define a complete method and do not rely on a recitation of a “captioned telephone service” in the preamble. Thus, “operating a captioned telephone service” is not an essential step that is necessary to give meaning to the claim and only states a purpose or intended use of the claimed method steps. Although claim 7 recites some steps associated with providing a captioned telephone service, notably missing from claim 7 is a limitation that requires providing the voice of the remote user to the assisted user. Because claim 7 does not recite that limitation explicitly, and because the phrase “operating a captioned telephone service” in the preamble is not an essential step of the claim, we do not construe the claim to include the additional limitation of providing the voice of the remote user to the assisted user. Reading the claim as a whole and applying the broadest reasonable construction of the claim language, we conclude that the “operating a captioned telephone service” language in the preamble of claim 7 is not a limitation requiring a remote user’s voice to be transmitted to, or received by, the assisted user. Accordingly, claim 7 has an effective filing date of September 8, 1997.” slip op. at 10

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

    “The ’578 patent does not set forth a special definition for “training.” In the “Brief Summary of the Invention,” however, the ’578 patent refers to “a speech recognition computer program which has been trained to the voice pattern of the call assistant.” Ex. 1001, 2:44–46 (emphasis added). The ’578 patent incorporates by reference the disclosure of the ’482 patent regarding the use of voice recognition software in a re-voicing relay. Id. at 3:51–53. In that context, the ’482 patent describes “the call assistant operat[ing] at a computer terminal which contains a copy of a voice recognition software package which is specifically trained to the voice of that particular call assistant.” Ex. 1002, 5:44–47 (emphasis added). Thus, the ’578 patent contemplates software trained to “a voice pattern of the call assistant” as well as software “specifically trained to the voice of [a] particular call assistant.” Neither description of training, however, indicates when or how the training occurs. Patent Owner, relying on its declarant Mr. Paul W. Ludwick, asserts that a person of ordinary skill in the art would not have understood software that is “designed” in advance to recognize the voice of particular agents to be software that is “trained to recognize individual voices,” because such technology was not used in telecommunications relay service in 1994. PO Resp. 24 (citing Ex. 2010 ¶¶ 21–22). We note that technology available in 1994 has little probative value here because the earliest date of invention for claims of the ’578 patent is 1997. We give claim language its broadest reasonable construction in light of the specification of the patent in which it appears. Thus, we will not limit “trained to the voice of the call assistant” to require training to the voice of one particular call assistant, because the claim language encompasses the invention as disclosed in the written description of the ’578 patent— software trained to a voice pattern of a call assistant. Ex. 1001, 2:39–47 (“Summary of the Invention”). Nor will we limit “trained to the voice of the call assistant” to a particular time at which training must occur or to a particular manner of training that is not found in the claims or the written description of the ’578 patent.” slip op. at 12

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner

    “The ’578 patent uses the term “captioned telephone device” consistent with this ordinary meaning. Claim 8 recites receiving spoken words at the captioned telephone device. The written description of the ’578 patent describes a captioned telephone device as a device that receives both voice signals and text information and displays the text information to an assisted user. Id. at 6:36–42 (“The captioned telephone device 72 is constructed to accomplish two objectives. One objective is to filter, or separate, the digital signals carrying the text information from the voice signal. The other objective is to take the digital signals and create a visual display of the text information for the assisted user.”); see also id. at Fig. 4 (showing a simultaneous text and voice connection between captioned telephone device 72 and relay 66). Note that a captioned telephone device need not output any audio signals to the assisted user. See id. at 6:46–48 (stating that a captioned telephone device may be a stand-alone device separate from a telephone at an assisted user’s location); id. at Figs. 4, 5 (illustrating captioned telephone device and telephone as two separate devices). In light of the use of “captioned telephone device” in the ’578 patent and the ordinary meaning of the term, we construe “captioned telephone 7 THE AMERICAN HERITAGE DICTIONARY OF THE ENGLISH LANGUAGE 286 (3d ed. 1992) (defining “caption” in relevant part as “2. A subtitle in a motion picture.”); THE AMERICAN HERITAGE DICTIONARY OF THE ENGLISH LANGUAGE 278 (4th ed. 2006) (defining “caption” in relevant part as “2. A series of words . . . that communicate dialogue to the hearing-impaired or translate foreign dialogues.”). device” as a device that transmits and receives voice signals, receives text information, and displays text to an assisted user.” slip op. at 8

  • ExcludeMotion to exclude, deniedDenied

    “Patent Owner’s arguments are unpersuasive at the outset because, to testify as an expert under FRE 702, a person need not be a person of ordinary skill in the art, but rather “qualified in the pertinent art.” Sundance, 550 F.3d at 1363–64; see SEB, 594 F.3d at 1372–73; Mytee, 439 Fed. App’x at 886–87. Patent Owner’s arguments are also unpersuasive because they attempt to constrict the “pertinent art,” i.e., the pertinent technology, to a particular subset of individuals who use the pertinent technology, rather than the pertinent technology itself. See Pet. Opp. to Mots. to Exc. 4–5 (arguing that the problems in the pertinent art are not “uniquely related” to the deaf and hard-of-hearing). Moreover, Patent Owner indicates elsewhere that the relevant field of art is telecommunication technologies. See PO Resp. 18 n.1 (Patent Owner indicating its declarant “Mr. Ludwick indisputably is [a person of ordinary skill in the art] in telecommunications technologies, which is the relevant field of art,” to opine on speech recognition software for use in telecommunication relay service settings). Petitioner similarly indicates the relevant field is telecommunication technologies. Pet. Opp. to Mots. to Exc. 6 (“Mr. Occhiogrosso’s qualifications should be analyzed with respect to the pertinent art of telecommunication technologies in which an intermediary facilitates voice-to-text transcription.”). We agree that the pertinent art is telecommunication technologies. The ’578 patent states that the “present invention relates to the general field of telephone communications.” Ex. 1001, 1:25–26. The ’578 patent focuses on a particular application of that technology: people who need assistance in using telecommunications devices. Id. at 1:25–2:34 (describing various prior art assistive technologies to help characterize the evolution of assistive technologies). The ’578 patent also summarizes the invention as the use of a speech recognition computer program trained to the voice of the call assistant to translate promptly the words spoken by an intermediary call assistant into a “high speed digital communication message [that] is then transmitted electronically promptly by telephone to a visual display accessible to the” hearing-assisted user. Id. at 2:47–50. The qualifications of Mr. Occhiogrosso, as summarized in his curriculum vitae (Ex. 1019), qualify him to give expert testimony on the subject of telecommunication technologies. He possesses a Bachelor of Science in Electrical Engineering and a Master of Science in Electrical Engineering. Ex. 1019, 2. Mr. Occhiogrosso testifies that he has more than thirty years of experience in the field of telecommunications and information technology, and he has planned, designed, implemented, and managed large scale projects involving wired and wireless communication systems, including transmission of voice and data. Ex. 1030 ¶ 7; see also Ex. 1019, 2–6 (detailing Mr. Occhiogrosso’s enterprise consulting engagements, research and development, and wireless experience). Moreover, to the extent Mr. Occhiogrosso is more familiar with” slip op. at 16

  Patent outcomesUS 8,213,578 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Graham
  Patents in suitUS 8,213,578
• Captioncall, L.L.C. v. Ultratec, Inc.All claims unpatentable
  PTAB · Mar 3, 2015 · IPR2013-00540 · APJ Barbara A Benoit · IPR · Final written decision

  Claims 1 and 2 are unpatentable as anticipated by Ryan and obvious over Wycherley and Yamamoto.

  RulingsFinal written decision

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

    “We give claim language its broadest reasonable construction in light of the specification of the patent in which it appears. Thus, we will not limit “trained to the voice of the call assistant” to require training to the voice of only one particular call assistant, because the claim language encompasses the invention as disclosed in the Specification—software trained to a voice pattern of a call assistant. Ex. 1021, 2:41-49 (“Summary of the Invention”). Nor will we limit “trained to the voice of the call assistant” to a particular time in which the training must occur or to a particular manner of training that is not found in the claims nor the Specification. Accordingly, “trained to the voice of the call assistant” does not preclude voice recognition software that is designed or built in advance of implementation at the source code level to the voice pattern of a call assistant. Nor is “trained to the voice of the call assistant” limited to training to the voice of one and only one call assistant. 2. “computer programmed to use a voice recognition computer software” slip op. at 8

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

    “We construe “the computer programmed to use a voice recognition computer software package trained to the voice of the call assistant to translate the words spoken in voice by the call assistant into a digital text stream,” recited in claims 1 and 2, in accordance with these principles. No other claim terms require express construction.” slip op. at 6

  • ExcludeMotion to exclude, deniedDenied

    “Patent Owner’s arguments are unpersuasive at the outset because, to testify as an expert under FRE 702, a person need not be a person of ordinary skill in the art, but rather “qualified in the pertinent art.” Sundance, 550 F.3d at 1363-64; SEB, 594 F.3d at 1372-73; Mytee, 439 Fed. App’x at 886-87. Patent Owner’s arguments are also unpersuasive because they attempt to constrict the “pertinent art,” i.e., the pertinent technology, to a particular subset of individuals who use the pertinent technology, rather than the pertinent technology itself. See Pet. Opp. to Mots. to Exc. 4-5 (arguing” slip op. at 13

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “expressly “a speaker” or “a digital computer connected to a microphone,” as recited in claims 1 and 2. Pet. 14-15, 17-18. Petitioner, however, asserts that Ryan inherently discloses those components. Pet. 14-15 (citing Ex. 1014 ¶¶ 28-30), 17-18 (citing Ex. 1014 ¶¶ 28-30). We credit Mr. Occhiogrosso’s explanation that a speaker necessarily must be present in Ryan’s relay system for a relay agent to “listen to the caller,” as Ryan expressly discloses. Ex. 1014 ¶ 30 (citing Ex. 1004, 4, l. 36). Also, we credit Mr. Occhiogrosso’s testimony that the recited “a digital computer 23 connected to a microphone” necessarily must be present in Ryan’s relay system for it to process the voice of the relay operator, and a digital computer necessarily must be present for Ryan’s relay system to use speech recognition software. Ex. 1014 ¶¶ 28-29 (citing Ex. 1004, 4:14, 33). Thus, we find that Ryan inherently discloses the recited “a digital computer connected to a microphone” and “a speaker.”” slip op. at 23

  Patent outcomesUS 6,233,314 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Graham
  Patents in suitUS 6,233,314

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.