• Yantai Jereh Petroleum Equipment & Technologies Co., Ltd v. BJ Energy Solutions, LLCSome claims unpatentable
  PTAB · Feb 6, 2023 · PGR2021-00102 · APJ Patrick R Scanlon · PGR · Final written decision

  Claims 5 and 9 are unpatentable as indefinite under §112(b); the Board did not find claims 1–4, 6–8, and 10–28 unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Based on our review of the record before us, particularly the ’459 patent’s description and Dr. Adnan’s testimony, we agree with Petitioner that the ordinary level of skill in the art does not require the high level of specialized knowledge of control systems suggested by Patent Owner. Moreover, we find that Petitioner’s stated level of ordinary skill in the art is reasonable because it is consistent with the evidence of record, including the asserted prior art. Accordingly, for the purposes of this Decision, we apply Petitioner’s definition, although our conclusions with respect to obviousness would be the same if we were to apply Patent Owner’s definition.” slip op. at 9

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “Based on the full record, we are not persuaded that Mr. Marscher is unqualified to serve as an expert in this proceeding. As noted above, a person of ordinary skill in the art is not required to have been a fracturing operator. Patent Owner’s proposed definition does not even require experience as a fracturing operator. See PO Resp. 22. Furthermore, Mr. Marscher testifies that he has extensive experience developing pumps for fracturing applications. Ex. 2027, 6:24–8:7. Mr. Marscher also testifies that he has experience with control systems relating to pumps and pumps units. Id. at 212:19–23. This testimony, as well as his declaration and curriculum vitae, show that Mr. Marscher has extensive education and experience in relevant fields. Ex. 1003 ¶¶ 8–17; Ex. 1004. Accordingly, we are not persuaded that Mr. Marscher’s qualifications or experience provide reason to discount the weight associated with Mr. Marscher’s testimony.” slip op. at 10

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

    “is the pump unit’s highest HHP output and one of ordinary skill in the art would have understood this value is the pump unit’s output power in intermittent duty. Pet. Reply 2 (citing Ex. 1003 ¶¶ 71–72, 123–124; Pet. 9– 10; Ex. 1036, 64:17–67:13, 119:17–120:11, 124:7–24, 198:9–200:9, 221:8– 222:15). However, even if Petitioner is correct that the “maximum power output value” is near or equivalent to a pump unit’s output power in intermittent duty, we are still not persuaded that the term “maximum intermittent power” should be tied to the “maximum power output value,” in conflict with the definition provided in the Specification. Petitioner also argues that Patent Owner’s proposed construction is indefinite. Pet. Reply 3. For the reasons discussed below (see supra § II.I.1), we determine that Petitioner has not shown by a preponderance of the evidence that the term “maximum intermittent power,” as defined in the Specification, is indefinite. Thus, based on the complete record before us, we maintain our prior construction of “maximum intermittent power” for this Final Written Decision.” slip op. at 13

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

    “5. Additional Terms We determine that we need not expressly construe any other claim terms to resolve the parties’ disputes because doing so would have no effect on the analysis below. See Nidec, 868 F.3d at 1017; see also Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms that . . . are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 15

  Patent outcomesUS 10,907,459 mixed
  Claim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham · Nautilus
  Patents in suitUS 10,907,459
• Med-El Elektromedizinische Geräte Ges.M.B.H. v. Advanced Bionics AGSome claims unpatentable
  PTAB · Jun 2, 2021 · IPR2020-00190 · APJ Patrick R Scanlon · IPR · Final written decision

  Claims 1, 2, and 4–7 are unpatentable as obvious over Dooley and von Ilberg 1999; claims 3 and 8 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “In the Decision on Institution, we adopted Petitioner’s proposed level of ordinary skill in the art, stating it was “consistent with the evidence at this stage of the proceeding, including the asserted prior art.” Dec. Inst. 21. In its Response, Patent Owner notes that “Dr. Zeng explains that he would particularly emphasize experience relating to designing or developing cochlear implants and hearing aids, or systems for fitting such prostheses to patients,” but indicates that it does not dispute Petitioner’s proposed level of ordinary skill in the art for the purposes of this proceeding. PO Resp. 13 (citing Ex. 2014 ¶ 66). Based on our review of the complete record, we continue to apply the level of ordinary skill in the art adopted in the Decision on Institution. We” slip op. at 9

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

    “Petitioner asserts that the Specification of the ’747 patent defines the term “electric-acoustic processor.” Pet. 20 (citing Ex. 1001, 10:65–67, 11:1–7). In the Decision on Institution, we determined that it was not necessary to construe “electric-acoustic processor” at that stage of the proceeding. Dec. Inst. 22 (citing Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017)). Patent Owner agrees the term “electric-acoustic processor” does not require construction for purposes of this proceeding. PO Resp. 14. Accordingly, we do not expressly construe “electric-acoustic processor” for this Decision.” slip op. at 10

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

    “that “configured to generate or apply . . . acoustic stimulation signals to the acoustic sensing organs of the ear” means more than simply being capable of applying acoustic stimulation signals. Dec. Inst. 28. In its Response, Patent Owner argues that the term should be given its plain meaning and does not require explicit construction. PO Resp. 15–16. Patent Owner adds that: To the extent there is a dispute, Patent Owner agrees with the Board’s reasoning that the “configured to” language does not merely reflect an intended use and requires more than a device that is simply “capable of” generating or applying the recited acoustic or electric stimulation in different or separate configurations. Id. at 16 (citing Dec. Inst. 28). Petitioner does not respond to Patent Owner’s assertion that “configured to generate or apply” should be given its plain meaning but does indicate that it disagrees with our “construction” of the term “configured to.” Pet. Reply 14–15 (citing Dec. Inst. 27–28). Petitioner, however, does not present any reasoning supporting its assertion the Board was wrong or offer any argument regarding how “configured to” should be construed. See generally Pet. Reply. We did not expressly construe “configured to” or “configured to generate or apply” in the Decision on Institution, but, as noted above, we did determine that that “configured to generate or apply . . . acoustic stimulation signals to the acoustic sensing organs of the ear” means more than simply being capable of applying acoustic stimulation signals. Dec. Inst. 28. Based on the complete record, we still are not persuaded by Petitioner’s argument that “configured to” should be construed as merely “capable of,” and for the reasons in the Decision on Institution, which we adopt here, we determine acoustic sensing organs of the ear” means more than simply being capable of applying acoustic stimulation signals.” slip op. at 11

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

    “Anderson discloses an embodiment (“the acoustic embodiment”) in which earpiece 10 includes speaker 15 that generates acoustic waves (i.e., acoustic signals) to stimulate the user’s ear. Ex. 1003, 3:58–60, 4:33–35, 5:18–21, 6:63–67, Figs. 1, 2. Anderson also discloses in Figure 10 a different embodiment (“the cochlear implant embodiment”) that combines earpieces 10’ and 10” with a cochlear implant system. Id. at 27:25–45, Fig. 10. In this embodiment, “[s]peakers 15 in the left and right earpieces serve no purpose in the cochlear implant application, as the user is profoundly deaf, and may be disconnected to conserve power.” Id. at 27:52– 55. Because Anderson discloses that the speakers serve no purpose in the cochlear implant embodiment and could be disconnected from power, we determine that the speakers are not used in this embodiment. In addition, Petitioner does not direct us to—nor are we aware of—any disclosure in Anderson indicating that speaker 15 of the cochlear implant embodiment receives a signal that causes the speaker to generate acoustic output. In contrast, Anderson discloses that earpiece headset 21 of Figure 2, which is functionally equivalent to speaker 15 of the acoustic embodiment, receives a modified speech signal and converts this signal to acoustic waves. Ex. 1003, 4:33–35, 5:18–21; see also id. at 6:63–67 (disclosing that speaker 15 produces a processed acoustic signal that corresponds to the ambient acoustic signal detected by microphone 12). embodiment cannot generate or apply acoustic stimulation signals. For these reasons, we determine that speakers 15 in the cochlear implant embodiment are not configured to generate or apply acoustic stimulation signals.” slip op. at 16

  Patent outcomesUS 8,155,747 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,155,747
• Google Inc. v. Intellectual Ventures II LLCSome claims unpatentable
  PTAB · Nov 20, 2015 · IPR2014-00787 · APJ Patrick R Scanlon · IPR · Final written decision

  Claims 19–22 and 24–30 are unpatentable as anticipated by Gough; claims 1–3, 5, 7–10, 12–14, and 21 are not shown unpatentable over the asserted grounds.

  RulingsFinal written decision

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

    “We agree with Petitioner. Although Figures 4 and 5 of the ’960 patent show keys that are partially surrounded by shadowing or shading, there is no suggestion in the Specification that the “blended shadow” recited in the claims should be limited to only this shadowing. The claim language itself, referring to a blended shadow of the representation of at least one key and the main image (see claim 24), indicates explicitly that the blended shadow incorporates both the key image and the main image and, thus, should not be limited to the shadowing surrounding the keys. Accordingly, based on the full record, we adopt Petitioner’s proposed construction of “blended shadow” as “a portion of a composite image in which the main image is visible through the overlaid image as a result of combining the data from corresponding pixels from the main and overlaid images” for the purpose of this Final Written Decision. B.” slip op. at 11

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed

    “We agree with Patent Owner. Petitioner does not explain adequately where the detailed analysis set forth in the Reply is made in the Petition, and, in any event, we do not find the arguments persuasive. “A patent claim is anticipated if a single prior art reference expressly or inherently discloses every limitation of the claim.” DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1252 (Fed. Cir. 2014). Here, Petitioner does not describe sufficiently how Gough expressly discloses using logical operators to accomplish the blending process.6 We do not agree that either Gough’s description of the blending process depicted in Figures 10a–10f (Ex. 1007, 10:23–41) or Gough’s description of using the color look-up table (id. at 14:9–19) expressly discloses using logical operators, and such express disclosure is required for anticipation. At best, Petitioner’s arguments suggest how Gough could be envisioned as using logical operators, but do not explain adequately where or how Gough expressly discloses using logical operators to carry out the blending process. For these reasons, we are not persuaded that Petitioner has shown, by a preponderance of the evidence, that independent claim 1, and claims 2, 3, 5, 7–10, and 12–14 depending therefrom, are anticipated by Gough.” slip op. at 15

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

    “3. Harrison Petitioner also argues Harrison teaches certain limitations. Pet. 44, 48, 52–55. Petitioner does not explain what Harrison adds to what is taught by Buxton. See id. at 48 (“[t]o the extent that these features may not be fully disclosed in Buxton, they are clearly disclosed in Harrison”). For purposes of this Final Written Decision, we determine the teachings of Harrison are cumulative to the teachings of Buxton, and therefore, do not address Harrison further.7 4. Claims 1–3, 5, 7–10, and 12–14 Petitioner argues that “Buxton discloses nearly all of the elements and limitations” of the challenged claims. Pet. 42. With respect to claim 1, Petitioner argues that Buxton discloses using alpha blending in accordance with the equation I = αI1 + (1-α)I2, where I is the resulting color intensity, I1 is the color intensity of the foreground image pixel, I2 is the color intensity of the background image pixel, and α is the specified transparency level between 0 and 1. Id. at 43–44 (citing Ex. 1009, 17:17–28). Petitioner argues that Buxton’s alpha blending “permits pixels to be ‘dedicated simultaneously’ to both images in order to produce a composite image” and is an “example of an operation using logical operators to provide different blending effects.” Id. at 44 (citing Ex. 1009, 16:63–17:4). Petitioner contends that although “Buxton may lack explicit disclosure of . . . a touchactivated device (required in claims 1 and 26),” Bier discloses that a touch screen is interchangeable with a mouse. Id. at 44–45. Petitioner also contends that Bier discloses a keyboard superimposed over a display. Id. at 7 Because the asserted ground includes Harrison, we continue to include it as part of our overall analysis.” slip op. at 23

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed

    “After considering all evidence and arguments, we agree with Patent Owner. In particular, we determine that Petitioner’s arguments do not persuade us that Buxton’s alpha blending equation uses operators that manipulate binary values at the bit level, consistent with our construction of “logical operators.” The alpha blending equation unquestionably involves arithmetic operations, which we find differ from logical operations. Furthermore, Petitioner has not shown persuasively whether any logical operations overlap with any arithmetic operations. Therefore, we agree with Patent Owner’s contention that Buxton’s alpha blending equation does not use logical operators.” slip op. at 24

  Patent outcomesUS 6,121,960 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips
  Patents in suitUS 6,121,960
• Motorola Mobility LLC v. Intellectual Ventures II LLCSome claims unpatentable
  PTAB · Sep 9, 2015 · IPR2014-00504 · APJ Patrick R Scanlon · IPR · Final written decision

  Claims 1–4 and 18 are unpatentable: claims 1 and 2 are anticipated by Boehm, and the challenged claims are obvious over the instituted combinations.

  RulingsFinal written decision

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportReference is prior artDecided for petitioner

    “To remove Boehm as a prior art reference, the record must establish either: (1) a conception and reduction to practice before the filing date of Boehm; or (2) a conception before the filing date of the Boehm patent combined with diligence and reduction to practice after that date. See Taurus IP, LLC v. DaimlerChrysler Corp., 726 F.3d 1306, 1323 (Fed. Cir. 2013). Under either approach, however, it must be proven that conception occurred prior to November 4, 2002. See id. “Conception exists when a definite and permanent idea of an operative invention, including every feature of the subject matter sought to be patented, is known.” Sewall v. Walters, 21 F.3d 411, 415 (Fed. Cir. 1994). Furthermore, “[t]he conception analysis necessarily turns on the inventor’s ability to describe his invention with particularity. Until he can do so, he cannot prove possession of the complete mental picture of the invention.” Burroughs Wellcome Co. v. Barr Labs., Inc., 40 F.3d 1223, 1228 (Fed. Cir. 1994). Objective evidence that corroborates an inventor’s testimony regarding the conception of the invention is required “because of the danger in post-hoc rationales by an inventor claiming priority.” Invitrogen Corp. v. Clontech Labs., Inc., 429 F.3d 1052, 1065 (Fed. Cir. 2005). The sufficiency of corroboration is determined according to a “rule of reason.” Price v. Symsek, 988 F.2d 1187, 1195 (Fed. Cir. 1993). This approach, however, “does not dispense with the requirement for some evidence of independent corroboration.” Coleman v. Dines, 754 F.2d 353, 360 (Fed. Cir. 1985).” slip op. at 12

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

    “We agree with Patent Owner that Petitioner’s proposed construction does not take into account properly the “managing the data path” claim language, even given that Petitioner construes only the limitation “a Local Area Network (LAN) routing system” rather than the entire phrase. In any event, we decline to adopt Petitioner’s proposed construction because it erroneously equates a LAN routing system to “a local area network or equivalent circuitry.” We do not view a LAN routing system as being equivalent to a LAN itself or circuitry “equivalent” to a LAN, which Petitioner has not described. We also decline to adopt Patent Owner’s proposed construction, which is not supported adequately. Specifically, Patent Owner does not explain sufficiently why managing the data path necessarily is accomplished “by controlling client devices’ access to the Internet and by controlling access to the client devices from the Internet.” Patent Owner asserts that the Specification of the ’771 patent describes managing the data path “by controlling the client devices’ access to the Internet, such as by requiring authentication before permitting access” and preventing “unauthorized access in the opposite direction by ‘allow[ing] all client devices 30 to share a single external Internet address.’” PO Resp. 5–6 (citing Ex. 1001, 4:1–14); see also Tr. 43:10–14 (stating the Specification “talks about managing as controlling the client devices’ access to the Internet, things like authentication, and controlling access to client devices from the Internet, like sharing a single Internet address”). The Specification, however, does not describe “managing the data path” explicitly, and we are not persuaded that the “managing the data path” claim language necessarily includes the authentication and sharing functions described in the cited passages. As such, Patent Owner’s reliance on the cited passages in its construction seeks to improperly read limitations from the Specification into the claim. See In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004) (“We have cautioned against reading limitations into a claim from the preferred embodiment described in the specification, even if it is the only embodiment described, absent clear disclaimer in the specification.”). Dr. Tewfik testifies that “[i]n computer networking, routing systems allow data to be exchanged between networks by forwarding data to a recipient device in one network from a sending device in another network.” Ex. 2004 ¶ 10. Dr. Tewfik further testifies that, “[i]n the ’771 patent, the LAN routing system is the LAN [R]outer 16,” and the LAN routing system allows data to be exchanged between the short-range local network and the Internet. Id. ¶ 11. This testimony is not dissimilar to Dr. Roy’s testimony that a LAN routing system “routes (i.e. communicates) data between a client device that is accessible via a short-range wireless interface and the Internet that is accessible [via] a long range Internet access interface.” Ex. 1012 ¶ 18. Thus, Dr. Tewfik and Dr. Roy essentially are in agreement that a routing system directs (i.e., exchanges, routes, or communicates) data between networks. This meaning is consistent with the Specification of the ’771 patent, which describes LAN Router 16 as “direct[ing] traffic from the access point 12 to the Internet 20 via the fixed WAN interface 18.” Ex. 1001, 3:33–34. Therefore, applying the broadest reasonable interpretation of the claims in light of the Specification, we interpret the phrase “a Local Area Network (LAN) routing system managing the data path between said wireless access point and said Internet access interface” to mean “a system that directs data between a local area network and the Internet by managing the data path between a wireless access point and an Internet access interface.”” slip op. at 8

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

    “3. “stand-alone system” In the Decision on Institution, we interpreted “stand-alone system” to mean “a system capable of operating independently of any other system.” Dec. on Inst. 8–9. The parties do not dispute this interpretation (PO Resp. 10; Pet. Reply 13), and we see no reason to modify this interpretation in light of the record developed at trial. Accordingly, we adopt this interpretation for this Final Written Decision. B.” slip op. at 11

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

    “Regarding claim 1, Petitioner argues that Boehm discloses (1) the recited short-range, high-speed wireless access point in the form of wireless access point 325; (2) the recited long-range, wireless Internet access interface in the form of interchangeable network interface 350; and (3) the recited LAN routing system in the form of router 330. Pet. 13. Petitioner also argues that Boehm discloses the recited stand-alone system without the need to access an external service controller server, because Boehm discloses “performing DHCP and network address translation locally rather than by requiring an external server accessible via a long-range network connection to do so.” Id. at 13, 16. With respect to claim 2, Petitioner argues that Boehm discloses using 802.11b wireless communication technology. Id. at 16 (quoting Ex. 1005 ¶ 21).” slip op. at 21

  Patent outcomesUS 7,382,771 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips
  Patents in suitUS 7,382,771
• Motorola Mobility LLC v. Intellectual Ventures I LLCSome claims unpatentable
  PTAB · Sep 9, 2015 · IPR2014-00501 · APJ Kristina M Kalan · IPR · Final written decision

  Claims 1–3, 7, 9–12, and 16–18 were held unpatentable; claims 4–6, 8, 13–15, and 19–21 were patentable because the cited art did not disclose the required transmission behavior.

  RulingsFinal written decision

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportReference not prior artDecided for patent owner

    “With respect to entitlement to any earlier effective priority date, a party must identify, specifically, the disclosure in ancestral applications “which do not share the same disclosure,” and which allegedly show § 112 support for the relied-upon priority date. See, e.g., Polaris Wireless, Inc. v. TruePosition, Inc., Case IPR2013-00323, slip. op. at 29 (PTAB Nov. 15, 2013) (Paper 9). To link the Ayyagari Provisional with Ayyagari ’508, Petitioner relates the claims of the ’392 patent to Ayyagari ’508, and then, separately, relates the claims of the ’392 patent to the Ayyagari Provisional. This triangulation does not meet Petitioner’s burden of showing that Ayyagari ’508 is entitled to the earlier filing date of the Ayyagari Provisional. Specifically, while the cited portions of the Ayyagari Provisional and Ayyagari ’508 may each disclose a certain claim limitation, the disclosures may be in different embodiments or contexts such that the cited portion of the Ayyagari Provisional does not provide an adequate ancestral basis for the cited portion of Ayyagari ’508. Petitioner should not expect the Board to search the record and cull the evidence necessary to support Petitioner’s arguments. Amazon.com, Inc. v. Personalized Media Comm., LLC, Case IPR2014-01533, slip op. at 6 (PTAB April 20, 2015) (Paper 16); cf., DeSilva v. DiLeonardi, 181 F.3d 865, 866–67 (7th Cir. 1999) (“A brief must make all arguments accessible to the judges, rather than ask them to play archeologist with the record.”). Petitioner has not, in its case-in-chief, linked the Ayyagari Provisional disclosure with the Ayyagari ’508 disclosure in a sufficient manner to meet its burden. Petitioner has not shown that Ayyagari ’508 is entitled to a priority date any earlier than its actual filing date of February 22, 2001.” slip op. at 8

  • Expert testimonyPatent owner expert discountedDecided for petitioner

    “explain the alleged reduction to practice embodied in Exhibit F. In evaluating a Patent Owner’s reliance on a declaration, we take into consideration whether Petitioner has had an opportunity to cross-examine the declarant. Amneal Pharms., LLC v. Endo Pharms. Inc., Case IPR2014- 00360, slip op. at 4 (PTAB December 3, 2014) (Paper 39). If Patent Owner does not produce a declarant for cross-examination, we will give that declaration little to no weight. See Mexichem Amanco Holdings S.A. de C.V. v. Honeywell Int’l, Inc., Case IPR2013-00576, slip op. at 3 (PTAB Sept. 5, 2014) (Paper 36). Petitioner, upon requesting deposition availability for Mr. Wentink, was informed by Patent Owner that “[w]ith respect to Mr. Wentink, Patent Owner does not believe it is required, under the rules, to produce Mr. Wentink for deposition.” Ex. 1017 (corrected), 1. No further explanation of Patent Owner’s interpretation of the rules, or regarding availability of Mr. Wentink for deposition, is before us. Although we have no reason to question Dr. Tewfik’s credentials, his value as a witness is compromised heavily by his distance from and post hoc evaluation of the circumstances of the alleged reduction to practice of the invention. Patent Owner is correct that it was not required, under the rules, to make Mr. Wentink available for cross-examination. Under these circumstances, however, we accord Mr. Wentink’s declaration little weight.” slip op. at 12

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

    “Although the ultimate determination of whether a document is a printed publication is a question of law, it is a question that is closely based on the underlying facts and circumstances surrounding the disclosure of a document to members of the public. Suffolk Techs., LLC v. AOL Inc., 752 F.3d 1358, 1364 (Fed. Cir. 2014); SRI Int’l, Inc. v. Internet Sec. Sys., Inc., 511 F.3d 1186, 1192 (Fed. Cir. 2008); In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). Public accessibility is a key question in determining whether a document is a printed publication and is determined on a case-bycase basis. Suffolk Techs., 752 F.3d at 1364. To qualify as a printed publication, a document “must have been sufficiently accessible to the public interested in the art.” In re Lister, 583 F.3d 1307, 1311 (Fed. Cir. 2009). “A given reference is ‘publicly accessible’ upon a satisfactory showing that such document has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it.” SRI Int’l, 511 F.3d at 1194 (quoting Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 1378 (Fed. Cir. 2006)).” slip op. at 16

  • ExcludeMotion to exclude, deniedMixed

    “The moving party has the burden of proof to establish that it is entitled to the requested relief. 37 C.F.R. § 42.20(c). A motion to exclude is neither a substantive sur-reply, nor a proper vehicle for arguing whether a reply or supporting evidence is of appropriate scope. Zynga Inc. v. Personalized Media Commc’ns, LLC, IPR2013-00162, slip op. at 3 (PTAB Aug. 28, 2013) (Paper 15); Berk-Tek LLC v. Belden Tech., Inc., IPR2013-00057, slip op. at 3 (PTAB Oct. 31, 2013) (Paper 39). Patent Owner’s objections to Exhibits 1005, 1006, 1010, 1013, 1014, and 1017 go more to the weight that the information disclosed therein should be afforded, rather than to its admissibility. It is within our discretion to assign the appropriate weight to be accorded to the information in Exhibits 1005, 1006, 1010, 1013, 1014, and 1017. The Board, sitting as a non-jury tribunal with administrative expertise, is well-positioned to determine and assign appropriate weight to evidence presented. Gnosis S.P.A. v. S. Ala. Med. Sci. Found., IPR2013-00118, slip op. at 43 (PTAB June 20, 2014) (Paper 64); see also Donnelly Garment Co. v. NLRB, 123 F.2d 215, 224 (8th Cir. 1941) (“One who is capable of ruling accurately upon the admissibility of evidence is equally capable of sifting it accurately after it has been received.”). We, thus, decline to exclude Exhibits 1005, 1006, 1010, 1013, 1014, and 1017. Moreover, we agree with Petitioner that Exhibits 1010, 1013, and 1014 are evidence that properly responds to arguments made by Patent Owner in its Response. Resp. to Mot. to Excl. 11, 12–14; 37 C.F.R. § 42.23. Regarding Exhibit 1006, we are persuaded by Petitioner’s arguments that the testimony of Mr. Worstell (Ex. 1010) authenticates Exhibit 1006. Resp. to Mot. to Excl. 7–8. Similarly, we are persuaded that Exhibit 1010, paragraphs 13–15, reflect testimony based on Mr. Worstell’s personal knowledge and should not be excluded. Accordingly, the Motion to Exclude is dismissed as to paragraphs 23 and 59 of Exhibit 1008, paragraph 6 of Exhibit 1019, and Exhibit 1016, and denied as to Exhibits 1005, 1006, 1010, 1013, 1014, and 1017.” slip op. at 31

  Patent outcomesUS 7,136,392 mixed
  § 102 anticipation
  Patents in suitUS 7,136,392
• Square, Inc. v. Rem Holdings 3, LLCSome claims unpatentable
  PTAB · Jul 7, 2015 · IPR2014-00312 · APJ Denise M Pothier · IPR · Final written decision

  Claims 1, 2, 6, 7, and 10–17 are unpatentable under §103 over Lekernel and Padilla, alone or with Wallner; claims 3–5, 8, and 9 are not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for petitioner

    “We agree that the McLaughlin declaration does not outline specific qualifications of one skilled in the art. Ex. 1015 ¶ 9. However, Dr. McLaughlin states, and we agree, that “the level of ordinary skill in the art is evidenced by the prior art references.” Id. and Pet. Reply 3 (citing In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995)). We also agree with Petitioner that Patent Owner has unduly narrowed the qualifications of one of ordinary skill. See Pet. Reply 1. In particular, and in contrast with the above assertions, Patent Owner describes Mr. Bourdeauducq as an expert in the relevant field. PO Resp. 1 (stating “Sebastien Bourdeauducq (See Exhibit 2033), (and an actual expert in the Relevant Field)”). Yet, Mr. Bourdeauducq lacks several of the purported qualifications of an ordinarily skilled artisan that Patent Owner asserts. Pet. Reply 2. For example, Mr. Bourdeauducq was about eighteen years old when he wrote the Lekernel article, had no engineering degree, had about one week of experience with magnetic stripe card readers, and had a general consumer understanding of credit card processing. Id. (citing Ex. 1064, 12:14–15:20). Based on the record, we determine that the level of skill in the art is more aligned with a high school or first-year engineering student taking a class covering the topic of basic circuit analysis and having a general, consumer knowledge of magnetic card readers.4 Mr. Bourdeauducq, Dr. McLaughlin, Dr. Morley, and Mr. Wood all have these qualifications. Ex. 2033 ¶ 3 (referring to Exhibit A) and Ex. 1064, 15:16–20; Ex. 1015 ¶ 2 and Ex. 2035, 88:15–18; Ex. 2031 ¶¶ 6, 9; Ex. 2032 ¶¶ 7–8. As such, contrary to Patent Owner’s assertions, we disagree that the McLaughlin declaration should be given no weight. PO Resp. 11. Also, regardless of whether Dr. McLaughlin has immediate knowledge of certain details about magnetic card readers (e.g., card reader manufacturers, frequency characteristics of a read head signal when a card is swiped), we disagree that he is not qualified as an ordinarily skilled artisan. See PO Resp. 16, 19 (quoting portions from Ex. 2035); see Pet. Reply 1–2.” slip op. at 12

  • Expert testimonyPetitioner expert creditedPatent owner expert creditedMixed

    “We agree that the McLaughlin declaration does not outline specific qualifications of one skilled in the art. Ex. 1015 ¶ 9. However, Dr. McLaughlin states, and we agree, that “the level of ordinary skill in the art is evidenced by the prior art references.” Id. and Pet. Reply 3 (citing In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995)). We also agree with Petitioner that Patent Owner has unduly narrowed the qualifications of one of ordinary skill. See Pet. Reply 1. In particular, and in contrast with the above assertions, Patent Owner describes Mr. Bourdeauducq as an expert in the relevant field. PO Resp. 1 (stating “Sebastien Bourdeauducq (See Exhibit 2033), (and an actual expert in the Relevant Field)”). Yet, Mr. Bourdeauducq lacks several of the purported qualifications of an ordinarily skilled artisan that Patent Owner asserts. Pet. Reply 2. For example, Mr. Bourdeauducq was about eighteen years old when he wrote the Lekernel article, had no engineering degree, had about one week of experience with magnetic stripe card readers, and had a general consumer understanding of credit card processing. Id. (citing Ex. 1064, 12:14–15:20). Based on the record, we determine that the level of skill in the art is more aligned with a high school or first-year engineering student taking a class covering the topic of basic circuit analysis and having a general, consumer knowledge of magnetic card readers.4 Mr. Bourdeauducq, Dr. McLaughlin, Dr. Morley, and Mr. Wood all have these qualifications. Ex. 2033 ¶ 3 (referring to Exhibit A) and Ex. 1064, 15:16–20; Ex. 1015 ¶ 2 and Ex. 2035, 88:15–18; Ex. 2031 ¶¶ 6, 9; Ex. 2032 ¶¶ 7–8. As such, contrary to Patent Owner’s assertions, we disagree that the McLaughlin declaration should be given no weight. PO Resp. 11. Also, regardless of whether Dr. McLaughlin has immediate knowledge of certain details about magnetic card readers (e.g., card reader manufacturers, frequency characteristics of a read head signal when a card is swiped), we disagree that he is not qualified as an ordinarily skilled artisan. See PO Resp. 16, 19 (quoting portions from Ex. 2035); see Pet. Reply 1–2.” slip op. at 12

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

    “§§ “Requisites,” “Hardware,” and “Improvements” and Ex. 1015 ¶¶ 39–42). Patent Owner does not dispute these findings related to Padilla or reasons to combine the references. See generally PO Resp. The record also reflects that conditioning signals within a circuit to achieve a desired result was known and, given the combined Lekernel/Padilla system, one skilled in the art would have conditioned signals sent from the card reader to the microphone input based on the cell phone’s characteristics. See Dec. on Inst. 12, 14–15 (citing Pet. 17–18 (discussing proving an analog signal in an acceptable processing range) and citing Ex. 1015 ¶ 29). In the Decision to Institute, we discussed cell phone characteristics, such as Padilla’s, and how these characteristics relate to whether signal attenuation is needed for the phone’s input. See Dec. on Inst. 14 (citing Ex. 1015 ¶ 29). For example, Padilla suggests using phones other than “the Siemens MC60” to turn a mobile phone into a magnetic stripe reader. Ex. 1010 § “Foreword.” Accordingly, based on the cell phone selected and its characteristics, we determine that one skilled in the art would have recognized that conditioning signals inputted and received by a cell phone’s microphone input may be necessary. Dec. on Inst. 12 (citing Pet. 17), 14. Specifically, we concluded that “an ordinarily skilled artisan would have recognized that the characteristics of the cell phone’s microphone input impact whether attenuation between the read head and the cell phone’s microphone input is needed.” Dec. on Inst. 14; see also Pet. 21–22, 24–25. The record includes two particular examples where one skilled in the art would have added resistance to Lekernel’s circuit and attenuated the signal received by the phone of the combined Lekernel/Padilla system. See Dec. on Inst. 14 (citing to Ex. 1015 ¶ 29). First, Dr. McLaughlin describes a known technique of providing the microphone input an acceptable level for the cell phone using a voltage divider by placing a resistor at the output of coil 24 or the read head. Ex. 1015 ¶ 16. To be clear, in this scenario, the resistor would be added outside Figure 2’s amplifier in Lekernel to achieve a voltage drop and to “to ensure the signal falls within a range of signals detectable and usable by a cell phone,” preventing damage to a recipient device. See Ex. 1015 ¶¶ 9, 14. Dr. McLaughlin further discusses impedance matching the card reader circuit with the cell phone’s microphone input when the cell phone has internal amplification. Dec. on Inst. 14 (citing Ex. 1015 ¶ 29); Ex. 1015 ¶¶ 28–29. Given the background knowledge of an ordinary artisan, one skilled in the art would have understood to add resistance to the combined Lekernel/Padilla system (e.g., after the amplifier in Lekernel’s Figure 2) for attenuating the signal sent to the microphone input in order to achieve an acceptable level for the cell phone and/or to impedance match the read head device with the cell phone.” slip op. at 18

  • Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner

    “In the context of this proceeding, we do not agree with Patent Owner’s contention that when the marketed product embodies and is coextensive with the claimed features, a secondary consideration factor (e.g., commercial success) is a presumptively attributed to the claimed invention. PO Resp. 49–50. For example, In re Huang, 100 F.3d 135 (Fed. Cir. 1996) states “that [commercial] success is relevant in the obviousness context only if there is proof that the sales were a direct result of the unique characteristics of the claimed invention-as opposed to other economic and commercial factors unrelated to the quality of the patented subject matter.” Id. at 140 (emphasis added); see also In re Huai-Hung Kao, 639 F.3d 1057, 1068 (Fed. Cir. 2011) (indicating there is no nexus where the evidence results from something other than what is both claimed and novel in the claim). Thus, in establishing a nexus with a secondary consideration in this proceeding, Patent Owner needs to show a specific feature of the claim is attributable to the commercial success of Square’s card reader and not just that the device is coextensive with the claimed features. Patent Owner points to an interview of Mr. Jack Dorsey, described as Square’s CEO. PO Resp. 51–52. In the interview and in response to asking what Square was, Mr. Dorsey states “OK, well [ah] Square is [ahh] a very simple little device that plugs into your iPhone or Android device and allows anyone to accept credit card immediately wherever they are.” PO Resp. 52 (citing Ex. 2047). Patent Owner asserts that this discussion establishes a nexus to the claimed “output plug” feature. Id. Yet, this statement just describes the plug and does not relate the plug itself to any of Square’s commercial success. The statement is also vague as how the device plugs into a phone, such that there is an insufficient tie to the recited “output plug, adapted to be inserted into a jack associated with a microphone input associated with a cell phone” in claim 1. Ex. 1001, 6:66– 67 (emphasis added). Although stating the reader is “very simple” and “little,” Patent Owner has not demonstrated these features are claimed and are a novel or unique feature of the claims — a requisite needed to outweigh the case for obviousness based on commercial success.” slip op. at 25

  Patent outcomesUS 8,584,946 mixed
  § 102 anticipation§ 103 obviousness
  Patents in suitUS 8,584,946

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