- Toshiba Corporation v. Optical Devices, LLCNo claims unpatentablePTAB · Mar 9, 2016 · IPR2014-01446 · APJ Glenn J Perry · IPR · Final written decision
Toshiba did not prove claims 1, 2, 6, 7, 11, 13, 14, and 16 unpatentable over Baird and Yoshimoto, or that combination with the ST Datasheet, which was not established as prior art.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“As we seek to give the term “DSP” its ordinary and customary meaning, as would have been understood by one of ordinary skill in the art at the time of the invention, we take into account the Microsoft and IBM dictionary definitions submitted by Optical Devices. We note that each of those dictionaries define a DSP as designed for “high speed” manipulation of data/digital signals. Ex. 2002; Ex. 2003. Optical Devices, however, has not directed our attention to evidence establishing what “high speed” encompasses. We note that one of the submitted dictionary definitions characterizes such digital signal manipulation as “real-time.” Ex. 2003. However, the Specification’s disclosure describes that some embodiments can execute real time digital servo algorithms on a DSP. We determine that Optical Devices has not established persuasively that the broadest reasonable interpretation of a DSP requires “high speed” processing achieving this “real time” feature. Indeed, Patent Owner’s “basic” construction for a DSP does not include a “real time” requirement for “real time” processing. See PO Resp. 10 (providing a minimal definition for a DSP). We are persuaded that the broadest reasonable interpretation of the term “digital signal processor,” consistent with the Specification, is “an integrated circuit structured and arranged for manipulation of digital signals in accordance with programmed commands, and in a manner that operates faster than a microprocessor.” We do not adopt Optical Devices’ proposal to further characterize further an integrated circuit as “specialized.” We find that proposed modification is superfluous in that our construction describes that the integrated circuit is structured and arranged to achieve a specific function, i.e., manipulation of digital signals and operating faster than a microprocessor.” slip op. at 8
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Optical Devices asserts that one of ordinary skill in the art would have “a Bachelor of Science in Mechanical or Electrical Engineering and at least two years of experience in control systems technology.” PO Resp. 6 (citing Ex. 2008 ¶¶ 9–11) (emphasis added). Based on our consideration of the record, we find that the evidence as a whole supports Toshiba’s description of the level of ordinary skill in the art. Accordingly, we adopt Toshiba’s statement of the ordinary skill in the art.” slip op. at 12
- Expert testimonyPetitioner expert discountedDecided for patent owner
“that Toshiba has established by a preponderance of the evidence that Baird inherently discloses a DSP configured to determine a FES and a TES from digital signals received by the SCP. In particular, Toshiba’s primary contention with respect to inherency is that one of ordinary skill in the art would have understood that Baird must determine a FES and TES in order for the SCP to operate focus and tracking control loops. Pet. Reply 14 (citing Ex. 1006 ¶ 81). However, neither Toshiba nor Toshiba’s declarant, Dr. Zech, provides any explanation why that is true. When asked for an explanation during his deposition, Dr. Zech responded in a manner that relied upon a probability that Baird’s SCP determines FES and TES. For example, the following is an excerpt from Dr. Zech’s deposition: Q Can you explain to me why it is your opinion that it is inherent that a servo control processor in Baird determines a focus error signal and a tracking error signal? A Well, because the way he designed it, it does. And I can’t imagine why somebody, an engineer at Cirrus Logic, would swim against the current and come up with something entirely new. The chip surely would not sell. I know that from pretty broad experience in sales and marketing. Once you tell me optical disk drive -- I’ve explained to you the statistics of it -- 99 percent plus are probably using continuous composite servoing. When you use continuous composite servoing, you need to have a tracking error and a focus error signal. So it’s not much of a leap for me to conclude that that’s what’s going on here. Ex. 2001, 151, 3–20 (emphases added). Dr. Zech’s deposition testimony describes what functions and systems optical disk drives “are probably using” and that “it’s not much of a leap” for him to conclude what is occuring in Baird with respect to whether error signals are determined Id.; See MEHL/Biophile Int’l Corp. v. Milgraum, 192 F.3d 1362, 1365 (Fed. Cir. 1999) (inherency is not to be established by probabilities or possibilities). Moreover, both in his declaration and at the deposition, Dr. Zech bases his opinion regarding that issue on assumptions unsupported by evidence. See Office Patent Trial Practice Guide 77 Fed. Reg. 48, 756, 48,763 (Aug. 14, 2012) (“Affidavits expressing an opinion of an expert must disclose the underlying facts or data upon which the opinion is based. . . . Opinions expressed without disclosing the underlying facts or data may be given little to no weight.”) (citations omitted). Thus, we do not afford Dr. Zech’s unsupported opinions persuasive weight.” slip op. at 21
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureInherency not foundNot shown unpatentable
“Having considered the arguments and evidence, we are not persuaded that Toshiba has established by a preponderance of the evidence that Baird inherently discloses a DSP configured to determine a FES and a TES from digital signals received by the SCP. In particular, Toshiba’s primary contention with respect to inherency is that one of ordinary skill in the art would have understood that Baird must determine a FES and TES in order for the SCP to operate focus and tracking control loops. Pet. Reply 14 (citing Ex. 1006 ¶ 81). However, neither Toshiba nor Toshiba’s declarant, Dr. Zech, provides any explanation why that is true. When asked for an explanation during his deposition, Dr. Zech responded in a manner that relied upon a probability that Baird’s SCP determines FES and TES. For example, the following is an excerpt from Dr. Zech’s deposition: Q Can you explain to me why it is your opinion that it is inherent that a servo control processor in Baird determines a focus error signal and a tracking error signal? A Well, because the way he designed it, it does. And I can’t imagine why somebody, an engineer at Cirrus Logic, would swim against the current and come up with something entirely new. The chip surely would not sell. I know that from pretty broad experience in sales and marketing. Once you tell me optical disk drive -- I’ve explained to you the statistics of it -- 99 percent plus are probably using continuous composite servoing. When you use continuous composite servoing, you need to have a tracking error and a focus error signal. So it’s not much of a leap for me to conclude that that’s what’s going on here. Ex. 2001, 151, 3–20 (emphases added). Dr. Zech’s deposition testimony describes what functions and systems optical disk drives “are probably using” and that “it’s not much of a leap” for him to conclude what is occuring in Baird with respect to whether error signals are determined Id.; See MEHL/Biophile Int’l Corp. v. Milgraum, 192 F.3d 1362, 1365 (Fed. Cir. 1999) (inherency is not to be established by probabilities or possibilities). Moreover, both in his declaration and at the deposition, Dr. Zech bases his opinion regarding that issue on assumptions unsupported by evidence. See Office Patent Trial Practice Guide 77 Fed. Reg. 48, 756, 48,763 (Aug. 14, 2012) (“Affidavits expressing an opinion of an expert must disclose the underlying facts or data upon which the opinion is based. . . . Opinions expressed without disclosing the underlying facts or data may be given little to no weight.”) (citations omitted). Thus, we do not afford Dr. Zech’s unsupported opinions persuasive weight.” slip op. at 21
Patent outcomesUS 7,196,979 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 7,196,979 - Toshiba Corporation v. Optical Devices, LLCNo claims unpatentablePTAB · Mar 9, 2016 · IPR2014-01445 · APJ Erica A Franklin · IPR · Final written decision
Claims 1–10 were not shown unpatentable: Baird did not disclose the required FES and TES determination, and the ST Datasheet was not established as prior art.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Ex. 1001, 13:50–61. From this disclosure, we recognize that the Specification suggests that a DSP operates faster than a microprocessor and, in some embodiments, real time digital servo algorithms can be executed on a DSP. Id. at 53–55. The Specification, however, does not expressly define the term “digital signal processor.” We note the competing views of Dr. de Callafon, on behalf of Patent Owner, and Dr. Zech, on behalf of Petitioner. We also note issues regarding the testimony of each declarant. For example, in some respects, Dr. de Callafon bases his proposed construction of a DSP on features that he asserts one of ordinary skill in the art would have understood that “most DSP processors have,” as opposed to features that all DSP processors require. Ex. 2008 ¶ 21(a). Dr. Zech’s deposition testimony describing the design of a DSP, also relied upon by Patent Owner, is unreliable because Dr. Zech testified that he had “no expertise” as to design elements distinguishing a DSP from a general processor. See, e.g., Ex. 2001, 35:12–13, 44:12–14. As we seek to give the term “DSP” its ordinary and customary meaning, as would be understood by one of ordinary skill in the art at the time of the invention, we take into account the Microsoft and IBM dictionary definitions submitted by Patent Owner. We note that each of those dictionaries define a DSP as being designed for “high speed” manipulation of data/digital signals. Ex. 2002; Ex. 2003. Patent Owner, however, has not directed our attention to evidence establishing what “high speed” encompasses. We note also that only one of the submitted dictionary definitions additionally characterizes such digital signal manipulation as “real-time.” Id. at 2003. The Specification, however, discloses that only some embodiments can execute real time digital servo algorithms on a DSP. We determine that Patent Owner has not established persuasively that the broadest reasonable interpretation of a DSP requires “high speed” processing achieving this “real time” feature. Indeed, Patent Owner’s “basic” construction for a DSP does not include a requirement for “real time” processing. See PO Resp. 20 (providing a minimal definition for a DSP). Thus, we are persuaded that that the broadest reasonable intepretation of the term “digital signal processor,” consistent with the Specification, is “an integrated circuit structured and arranged for manipulation of digital signals in accordance with programmed commands, and in a manner that operates faster than a microprocessor.” Patent Owner’s proposal to characterize further an integrated circuit as “specialized” is not well taken. Indeed, we find that proposed modification to be superfluous in that our construction describes that the integrated circuit is structured and arranged to achieve a specific function, i.e., manipulation of digital signals and operating faster than a microprocessor. 2.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Patent Owner proposes constructions for additional claim phrases without providing any discussion or reference to the Specification in support of those proposed constructions. PO Resp. 12–13. Based on our analysis, we determine that no express claim construction is necessary for any remaining claim term. Thus, we are not persuaded to adopt those proposed constructions.” slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that one of ordinary skill in the art at the time of the filing of the ’729 patent as having: (1) a Bachelor’s of Science Degree in Electrical Engineering, Mechanical Engineering, Physics or a related field and at least two years of additional experience in control system technology, optical disk servo technology, magnetic disk servo technology, or related technologies, either in industry or research[,] or (2) at least a Master’s of Science Degree in Electrical Engineering, Mechanical Engineering, Physics or a related field with coursework in control system technology, optical disk servo technology, magnetic disk servo technology, or related technologies. Pet. 36–37 (citing Ex. 1006 ¶¶ 65–66) (emphases added). Patent Owner asserts that one of ordinary skill in the art would have “a Bachelor of Science in Mechanical or Electrical Engineering and at least two years of experience in control systems technology.” PO Resp. 5 (citing Ex. 2008 ¶¶ 9–11) (emphasis added). Based on our consideration of the record, we find that the evidence as a whole supports Petitioner’s broader description of the level of ordinary skill in the art. Accordingly, we adopt Petitioner’s statement of the ordinary skill in the art.” slip op. at 11
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“Having considered the arguments and evidence, we are not persuaded that Petitioner has established by a preponderance of the evidence that Baird inherently discloses a DSP configured to determine a FES and a TES from digital signals received by the SCP. In particular, Petitioner’s primary contention with respect to inherency is that one of ordinary skill in the art would understand that Baird must determine a FES and TES in order for the SCP to operate focus and tracking control loops. Pet. Reply 14 (citing Ex. 1006 ¶ 82). However, neither Petitioner, nor Petitioner’s declarant, Dr. Zech, provides any explanation why that is true. When asked for an explanation during his deposition, Dr. Zech responded in a manner that relied upon a probability that Baird’s SCP determines FES and TES. For example, the following is an excerpt from Dr. Zech’s deposition: Q Can you explain to me why it is your opinion that it is inherent that a servo control processor in Baird determines a focus error signal and a tracking error signal? A Well, because the way he designed it, it does. And I can’t imagine why somebody, an engineer at Cirrus Logic, would swim against the current and 0 come up with something entirely new. The chip 1 surely would not sell. I know that from pretty broad experience in sales and marketing. Once you tell me optical disk drive -- I’ve explained to you the statistics of it -- 99 percent plus are probably using continuous composite servoing. When you use continuous composite servoing, you need to have a tracking error and a focus error signal. So it’s not much of a leap for me to conclude that that’s what’s going on here. Ex. 2001, 151:3–20 (emphases added). Dr. Zech’s deposition testimony describes what functions and systems optical disk drives “are probably using” and that “it’s not much of a leap” for him to conclude what is occuring in Baird with respect to whether error signals are determined Id.; see MEHL/Biophile Int’l. Corp., 192 F.3d at 1365 (inherency is not established by probabilities or possibilities). Moreover, both in his declaration and at the deposition, Dr. Zech bases his opinion regarding that issue on assumptions unsupported by evidence. See Office Patent Trial Practice Guide 77 Fed. Reg. 48,756, 48,763 (Aug. 14, 2012) (“Affidavits expressing an opinion of an expert must disclose the underlying facts or data upon which the opinion is based. . . . Opinions expressed without disclosing the underlying facts or data may be given little to no weight.”) (citations omitted). Thus, we do not afford Dr. Zech’s opinions persuasive weight.” slip op. at 20
Patent outcomesUS 7,839,729 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 7,839,729 - Toshiba Corporation v. Optical Devices, LLCNo claims unpatentablePTAB · Mar 9, 2016 · IPR2014-01447 · APJ James B Arpin · IPR · Final written decision
Claims 1–39 were not shown unpatentable: Baird did not necessarily disclose determining FES and TES, and the ST Datasheet was not established as publicly accessible prior art.
RulingsFinal written decision- Expert testimonyPetitioner expert discountedDecided for patent owner
“that Petitioner has established by a preponderance of the evidence that Baird inherently discloses a DSP configured to determine a FES and a TES from digital signals received by the SCP. In particular, Petitioner’s primary contention with respect to inherency is that one of ordinary skill in the art would have understood that Baird must determine a FES and TES in order for the SCP to operate focus and tracking control loops. Pet. Reply 14 (citing Ex. 1006 ¶ 77). However, neither Petitioner nor Petitioner’s declarant, Dr. Zech, provides any explanation why that is so. When asked for an explanation during his deposition, Dr. Zech responded in a manner that relied upon a probability that Baird’s SCP determines FES and TES. In particular, the following is an excerpt from Dr. Zech’s deposition: Q Can you explain to me why it is your opinion that it is inherent that a servo control processor in Baird determines a focus error signal and a tracking error signal? A Well, because the way he designed it, it does. And I can’t imagine why somebody, an engineer at Cirrus Logic, would swim against the current and 0 come up with something entirely new. The chip 1 surely would not sell. I know that from pretty broad experience in sales and marketing. Once you tell me optical disk drive -- I’ve explained to you the statistics of it -- 99 percent plus are probably using continuous composite servoing. When you use continuous composite servoing, you need to have a tracking error and a focus error signal. So it’s not much of a leap for me to conclude that that’s what’s going on here. Ex. 2001, 151:3–20 (emphases added); see Tr. 100:13–101:2. Dr. Zech’s deposition testimony describes what functions and systems optical disk drives “are probably using” and that “it’s not much of a leap” for him to conclude what is occuring in Baird with respect to whether error signals are determined Ex. 2001, 151:15–18; see MEHL/Biophile Int’l. Corp. v. Milgraum, 192 F.3d 1362, 1365 (Fed. Cir. 1999) (inherency is not to be established by probabilities or possibilities). Moreover, both in his declaration and at the deposition, Dr. Zech bases his opinion regarding that issue on assumptions unsupported by evidence. See Office Patent Trial Practice Guide 77 Fed. Reg. 48, 756, 48,763 (Aug. 14, 2012) (“Affidavits expressing an opinion of an expert must disclose the underlying facts or data upon which the opinion is based. . . . Opinions expressed without disclosing the underlying facts or data may be given little to no weight.”) (citing Fed. R. Evid. 705; 37 C.F.R. § 42.65; Rohm & Haas Co. v. Brotech Corp., 127 F.3d 1089, 1092 (Fed. Cir. 1997)). Thus, we do not credit Dr. Zech’s unsupported opinions with persuasive weight.” slip op. at 29
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownOther
“As we seek to give the term “digital signal processor” its ordinary and customary meaning, as would be understood by one of ordinary skill in the art at the time of the invention, we take into account the Microsoft and IBM dictionary definitions submitted by Patent Owner. Ex. 2002, 145; Ex. 2003, 198. We note that each of those dictionaries define a DSP as being designed for “high speed” manipulation of data/digital signals. Id. Patent Owner, however, has not directed our attention to evidence establishing what “high speed” encompasses. See Tr. 98:12–23; see also id. at 95:10–96:3 (Petitioner’s argument that speed governed by function). We also note one of the submitted dictionary definitions characterizes “high speed,” such that digital signal manipulation as “real-time.” Ex. 2003, 198. Another dictionary definition simply includes “high speed.” Ex. 2002, 145. However, the Specification discloses that only some embodiments can execute real time digital servo algorithms on a DSP. See Ex. 1001, col. 13, ll. 38–42. We determine that Patent Owner has not established persuasively that the broadest reasonable interpretation of a DSP requires “high speed” processing achieving this “real time” feature. Indeed, Patent Owner’s “basic” construction for a DSP does not include a requirement for “real time” processing. See PO Resp. 16 (providing a minimal definition for a DSP). We are persuaded, however, that the broadest reasonable interpretation of the term “digital signal processor,” consistent with the Specification and the ordinary and customary meaning of the term as understood at the time of the invention by a person of ordinary skill in the art, is “an integrated circuit structured and arranged for manipulation of digital signals in accordance with programmed commands, and in a manner that operates faster than a microprocessor.” We do not adopt Patent Owner’s proposal to characterize further an integrated circuit as “specialized.” We determine that proposed modification is superfluous in that our construction describes that the integrated circuit is structured and arranged to achieve a specific function, i.e., manipulation of digital signals and operation faster than a microprocessor. B.” slip op. at 15
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureNot shown unpatentableInherency not foundNot shown unpatentable
“To establish inherency, the extrinsic evidence must make clear that the missing descriptive matter is necessarily present in the thing described in the reference, and that it would be so recognized by persons of ordinary skill. Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient. PO Resp. 30–31 (quoting In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (emphasis added) (citations omitted)). Petitioner argues that, because Baird discloses that the servo control processor performs focus and tracking control loops (Ex. 1003, col. 5 l. 63–col. 6, l. 11), “it is necessarily the case that a focus error and tracking error signal are generated” in order to perform that function (Pet. 42–43). See Ex. 1006 ¶ 77; Tr. 20:21–23:5. According to Petitioner and, its declarant, Dr. Zech, one of ordinary skill in the art would” slip op. at 25
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedDecided for patent owner
“qualify as a prior art printed publication under 35 U.S.C. § 102, the reference must be shown to have been “sufficiently accessible to the public interested in the art” prior to the earliest effective filing date. In re Cronyn, 890 F.2d 1158, 1160 (Fed. Cir. 1989). “Because there are many ways in which a reference may be disseminated to the interested public, ‘public accessibility’ has been called the touchstone in determining whether a reference constitutes a ‘printed publication’ bar under 35 U.S.C. § 102(b).” In re Hall, 781 F.2d 897, 898–99 (Fed. Cir. 1986). A reference will be considered publicly accessible if it was “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.” Kyocera Wireless Corp. v. Int’l Trade Comm’n, 545 F.3d 1340, 1350 (Fed. Cir. 2008). Whether a reference qualifies as a printed publication is a legal conclusion based on underlying factual determinations. In re Lister, 583 F.3d 1307, 1311 (Fed. Cir. 2009). Blue Calypso, LLC v. Groupon, Inc., Dkt. Nos. 2015-1391, 2015-1393, 2015- 1394, slip op. at 28–29 (Fed. Cir. Mar. 1, 2016).” slip op. at 38
Patent outcomesUS 8,416,651 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,416,651 - Toshiba Corporation v. Optical Devices, LLCAll claims unpatentablePTAB · Mar 8, 2016 · IPR2014-01443 · APJ Erica A Franklin · IPR · Final written decision
Claims 37, 38, 48, 49, 51–53, 55, 57, 58, 60, 61, 63, 64, 67–69, and 71 are anticipated by Ando; the contingent motion to amend is denied for insufficient written-description support.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for petitioner
“Patent Owner’s arguments notwithstanding, we conclude that the strongest evidence for construing the term “optical gain” comes from the Specification itself which defines the term. As the Federal Circuit has explained, [The claims] are part of a fully integrated written instrument, consisting principally of a specification that concludes with the claims. For that reason, claims must be read in view of the specification . . . . [T]he specification is always highly relevant to the claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of a disputed term. See Phillips v. AWH Corp., 415 F.3d 1303, 1320–21 (Fed. Cir. 2005) (the specification is “the single best guide to the meaning of a disputed term” and “acts as a dictionary when it expressly defines terms used in the claims or when it defines terms by implication”); In re Abbott Diabetes Care Inc., 696 F.3d 1142, 1149 (Fed. Cir. 2012) (any broadest reasonable construction must be consistent with the specification, and claim language should be read in” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Only terms which are in controversy need to be construed, and only to the extent necessary to resolve the controversy. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). For this reason, we provide express constructions for only the following terms.” slip op. at 7
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that one of ordinary skill in the art at the time of the filing of the ’729 patent as having either: (1) a Bachelor’s of Science Degree in Physics, Optics, Electrical Engineering, or a related field with coursework in Optics technology, Photonics technology, or related technologies, either in industry, academia, or research, or (2) a Master’s degree in Physics, Optics, Electrical Engineering, or a related field with coursework in Optics or Photonics. Pet. 26–27 (citing Ex. 1008 ¶ 32) (emphasis added). Patent Owner asserts that one of ordinary skill in the art in 1967 would have “held a Bachelor of Science and Master of Science Degrees in either Physics or Electrical Engineering with a focus on optics, and additionally, at least two to three (2-3) years of experience in Physics or Electrical Engineering optics research.” PO Resp. 4 (citing Ex. 2104 ¶ 10) (emphasis added). Based on our consideration of the record, we find that the evidence as a whole supports Petitioner’s broader description of the level of ordinary skill in the art. Accordingly, we adopt Petitioner’s statement of the ordinary skill in the art.” slip op. at 15
- Expert testimonyPatent owner expert discountedDecided for petitioner
“Contrary to Patent Owner’s assertion, Dr. Leger’s declaration does not confirm that each of the proposed amendments find support in the ’186 application. To begin, the portion of Dr. Leger’s declaration cited by Patent Owner contains a conclusory opinion that is allegedly supported by disclosures in the ’186 application. Ex. 2104 ¶ 134. Dr. Leger, however, does not explain or otherwise justify why one of skill in the art would have understood from those cited portions of the ’186 application that the inventor possessed the claimed subject matter. Further, we agree with Petitioner that Dr. Leger’s testimony on cross-examination undermined his credibility with respect to written description support for the amended claim. In particular, we consider Dr. Leger’s cross-examination testimony regarding detecting radiant flux density and comparing radiant flux density that Petitioner listed: Making a determination “by comparing the radiant flux density of the retroreflected radiant energy to that of a reference in the scanned area” as recited in claims 72, 74 and 83 requires measuring radiant flux density twice and comparing the measured values. ([Ex.]-1009 at 155:20-160:4.) Measuring radiant flux density requires measuring radiant flux through a known area, and dividing the radiant flux by the known area. (Id. at 50:9-51:4.) Without knowing the area (e.g. spot size hitting detector), radiant flux density cannot be measured or determined. (Id. at 53:21-54:1.) Even if the beam completely fills the detector, a utilization” slip op. at 31
Patent outcomesUS RE40,927 unpatentableClaim construction§ 102 anticipationcites Phillips · Graham - Toshiba Corporation v. Optical Devices, LLCAll claims unpatentablePTAB · Mar 8, 2016 · IPR2014-01439 · APJ Glenn J Perry · IPR · Final written decision
Claims 48–53 are unpatentable as anticipated by Ando; the motion to amend with substitute claims 54–59 is denied for insufficient written-description support.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Based on our consideration of the record, we find that the evidence as a whole supports Petitioner’s broader description of the level of ordinary skill in the art. Accordingly, we adopt Petitioner’s statement of the ordinary skill in the art.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner
“Optical Devices’ arguments notwithstanding, we conclude that the strongest evidence for construing the term “optical gain” comes from the Specification itself which clearly defines the term. [The claims] are part of a fully integrated written instrument, consisting principally of a specification that concludes with the claims. For that reason, claims must be read in view of the specification . . . . [T]he specification is always highly relevant to the claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of a disputed term. See Phillips v. AWH Corp., 415 F.3d 1303, 1320–21 (Fed. Cir. 2005) (the specification is “the single best guide to the meaning of a disputed term” and “acts as a dictionary when it expressly defines terms used in the claims or when it defines terms by implication”); In re Abbott Diabetes Care Inc., 696 F.3d 1142, 1149 (Fed. Cir. 2012) (any broadest reasonable construction must be consistent with the specification, and claim language should be read in light of the specification. We give less weight to Optical Devices’ argument that all embodiments should be embraced by the construction. “‘[E]ach claim does not necessarily cover every feature disclosed in the specification. When the claim addresses only some of the features disclosed in the specification, it is improper to limit the claim to other, unclaimed features.’” Broadcom Corp. v. Qualcomm Inc., 543 F.3d 683,689 (Fed. Cir. 2008) (quoting Ventana Med. Sys., Inc. v. Biogenex Labs., Inc., 473 F.3d 1173, 1181 (Fed. Cir. 2006)). The ’913 patent includes description of a radar system embodiment with respect to Figures 13 and 14. Ex. 1001, 9:34–65. It is described that the radar system is detected by means of the “retroreflection principles” of the invention. However, the term “optical gain” is not used in connection with this embodiment. The term appears in the Specification only in connection with embodiments relying on what has traditionally been referred to as “optical.” WEBSTER’S SEVENTH NEW COLLEGIATE DICTIONARY 592 (1967) (Ex. 3002)3 (the adjective “optic” defined as “of or relating to vision or the eye” and the adjective “optical” defined as “relating to the science of optics” and “relating to vision”).” slip op. at 15
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“We agree with Optical Devices’ description of Ando, but not with Optical Devices’ conclusion. We do not read into the “detecting” step of claim 48 a requirement of detecting an optical gain. The ’913 patent invention lies in discerning a retroreflector from its background. The retroreflector provides a brighter spot than does its background because of the concentration of flux caused by the retroreflector that makes it appear brighter. However, that key feature is missing from claim 48. Claim 48 requires “receiving reflected radiation energy with an optical gain after retroreflection of the radiant energy.” However, the “detecting” step that follows simply requires detecting the reflected radiant energy after retroreflection to determine at least one characteristic of the object. Ando does indeed detect reflected radiant energy after retroreflection. It also determines at least one characteristic of the object, namely its contour. Ex. 1007 at Abstract. We “determine that there is no reasoned basis to read into the “detecting” step of claim 48 a requirement of detecting an optical gain. We, therefore, conclude that Ando meets the limitations of claim 48.” slip op. at 20
- Expert testimonyPetitioner expert creditedDecided for patent owner
“Dr. Hesselink opines that the additional limitations of the substitute claims are not taught by the ’913 patent. Ex. 1010 ¶¶ 36–37. We find his testimony to be persuasive. Further, under cross-examination in his deposition Dr. Leger testified that (1) the detectors described in the ’913 patent could not detect radiant flux density because they do not know the size of the spot hitting the detector (Ex. 1009, 50:9–51:4, 53:21–54:1) and measuring radiant flux density cannot be done with detectors that only measure radiant flux like those described in the ‘913 patent (Id. at 82:6–10, 85:18–86:6, 145:14– 146:4, 148:22–25) and (2) the ’913 patent does not describe a detector or utilization means that compares radiant flux density values to determine a change (Id. at 163:20–25, 164:20–24). 4. Conclusions Considering and weighing the priority document references, the” slip op. at 34
Patent outcomesUS RE42,913 unpatentableClaim construction§ 102 anticipationcites Phillips · Graham - PTAB · Nov 25, 2015 · IPR2015-01289 · APJ Miriam L Quinn · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1, 15, and 21 were anticipated by Perry or obvious over Hochstein and Perry.
RulingsInstitution decision- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesOther
“means-plus-function format. Both parties also agree that the recited function is “detecting an incorrect functioning of the converter or of the semiconductor light source connected thereto” (claim 1) and “detecting a defective converter or semiconductor light source connected thereto” (claim 15). The parties, however, disagree on whether the structure should refer to a Zener diode, or a Zener diode Z60 or Zener diode Z70, specifically. See Prelim. Resp. 19 (“Philips disagrees with [Petitioner’s] construction insofar as it requires a generic zener diode.”). We agree with the parties that the “detection means” is a Zener diode that performs the recited function. But we do not agree, at this time, that the diode must be the Z60 or Z70 diode, arranged as indicted in the drawings of the ’458 patent. Nor do we find that the Zener diode must be arranged to detect minimum and maximum voltages, because the recited function specifically defines the function of the Zener diode and its equivalents. See 35 U.S.C. § 112, ¶ 6 (the structure of a means-plus-function term is construed to “cover the corresponding structure . . . described in the specification and equivalents thereof”) (emphasis added). Therefore, we construe the “detection means” as a Zener diode that performs the recited function, according to the claim language of the appropriate claim.” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Second, Petitioner failed to show that a Zener diode (or its equivalent) performs the recited function. We agree with Patent Owner that failure circuit 70 does not contain a Zener diode. Prelim. Resp. 28. We also find that Petitioner did not explain how failure circuit 70 is an equivalent to a Zener diode. Neither the Petition nor the cited passages of the Dr. Tingler’s Declaration allude to a Zener diode or its equivalent in describing the contention that Perry discloses the “detection means” limitation. Accordingly, we determine that Petitioner has failed to show a reasonable likelihood of prevailing in its contention that the challenged claims are unpatentable as anticipated by Perry.” slip op. at 10
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“First, the Petition did not show how the construed claim (as presented in the Petition) renders unpatentable the challenged claims in view of the prior art. See 37 C.F.R. § 42.104 (b)(4). Although the Petitioner proposed a Zener diode as the structure corresponding to the “detection means,” it presented an analysis of the prior art relying on a different position, i.e., that a transistor and a Zener diode are the corresponding structure of the “detection means.” Petitioner does not explain these different positions or how the applied construction of “a transistor and a Zener diode” is supported by the specification. Second, Petitioner failed to show that a Zener diode (or its equivalent) performs the recited function. We agree with Patent Owner that failure circuit 70 does not contain a Zener diode. Prelim. Resp. 28. We also find that Petitioner did not explain how failure circuit 70 is an equivalent to a Zener diode. Neither the Petition nor the cited passages of the Dr. Tingler’s Declaration allude to a Zener diode or its equivalent in describing the contention that Perry discloses the “detection means” limitation.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable
“claims 1, 15, and 21. Pet. 1735. Petitioner relies exclusively on Perry, however, as disclosing the “detection means.” Pet. 4345. The Petition cites for support the Declaration of Dr. Tingler. Id. (citing Ex. 1005, ¶¶ 119–121). Petitioner’s position with regard to the obviousness ground is the same as its anticipation contention that Perry discloses the “detection means.” Further, the Dr. Tingler Declaration passages relied upon for the “detection means” in the obviousness ground repeat the same analysis provided for the anticipation ground. Patent Owner has persuaded us that Petitioner’s obviousness contention relies on the same evidence of “detection means” proffered with respect to the anticipation ground. We determined above that Petitioner did not show that Perry discloses a “detection means.” Further, we find that Petitioner has not shown that Perry teaches or suggests the “detection means,” as we have construed the term. Consequently, we determine that Petitioner has failed to show a reasonable likelihood that it will prevail in its contention that the challenged claims are unpatentable as obvious over the combination of Hochstein and Perry.” slip op. at 11
Claim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 6,147,458 - Ace Bed Co., Ltd. v. Sealy Technology LLCAll claims unpatentablePTAB · Nov 24, 2015 · IPR2014-01119 · APJ Glenn J Perry · IPR · Final written decision
Claims 1–3, 5–8, and 10–17 were held unpatentable: claims 1–3, 5–8, 10–13, and 17 as anticipated by Ahn, and claims 14–16 as obvious over Ahn, Flesher, and Oakhill.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Decided for petitioner
“proposes a construction of “step” based on an explicit definition in the specification — “non-helical shaped segments of the described coils.” Ex. 1001, 3:8–10. Pet. 12. We adopt this construction.” slip op. at 7
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Ahn’s “contact-preventing ends” appear to be substantially coaxial with the longitudinal axis of the coil bodies that terminate at opposed axial ends which are generally perpendicular to the longitudinal axis of the coil. Linear segments (see base of coil 100 shown in Ahn Fig. 1a) of the coil spring accommodate interconnections by lacing wire (shown in Ahn Fig. 2a and 2b). Id. Transition segments (visible in Ahn Fig. 4d) connect coil ends with the “contact-preventing ends.” Pet. 14. Given these disclosures, we find that Ahn anticipates claim 1.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“We agree with Ace that it would have been obvious to a person of ordinary skill in the art to include a linear segment in the upper end of the coil disclosed in Ahn to facilitate a connection with lacing wire at the upper end of the coil – either in addition to, or in place of the linear segments already present in the Ahn coil. Pet. 43. Coils connected by lacing wires in that location were taught by Flesher to be both stable and “a common practice.” Ex. 1007, 1:13–26. A person of ordinary skill would have been motivated to connect the coils disclosed in Ahn at their ends to improve stability and form a matrix of interconnected coils in accordance with standard practice in the art. Coils so connected are nothing more than a predictable variation of the coils disclosed in Ahn. Accordingly, this limitation would have been obvious in view of Ahn alone, and/or in combination with Flesher. The preponderance of evidence establishes that claim 1 is unpatentable under 35 U.S.C. § 103(a) over Ahn and Flesher.” slip op. at 18
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“Claims 14–16 Dependent claim 14 states a range of spring height of 140 mm to 190 mm. Thus, the Oakhill range falls within the claimed range. Claim 15 depends from claim 14 and further requires that the “step” is substantially coaxial with the longitudinal axis of the coil body. As with claim 11, Ace has shown that this limitation is met by Ahn.” slip op. at 19
Patent outcomesUS 7,404,223 unpatentableClaim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 7,404,223 - Duodecad It Services Luxembourg S.à.R.L. / Friendfinder Networks Inc. et al. v. Wag Acquisition, LLCInstitution deniedPTAB · Oct 23, 2015 · IPR2015-01035 · APJ Trevor M Jefferson · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–18 were obvious over any of the three asserted combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Inc., and Streamray Inc. (collectively “Petitioner”) filed a Petition (Paper 2, “Pet.”) to institute an inter partes review of claims 1–18 of U.S. Patent No. 8,185,611 B2 (Ex. 1001, “the ’611 patent”) pursuant to 35 U.S.C. § 311 et seq. Patent Owner, WAG Acquisition, LLC (“WAG”), filed a Preliminary Response to the Petition. Paper 6 (“Prelim. Resp.”). We have jurisdiction under 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” After considering the Petition, the Preliminary Response, and cited evidence, we conclude that Petitioner has not demonstrated a reasonable likelihood that it would prevail in showing unpatentability of any of the challenged claims.” slip op. at 2
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedReference is prior artDecided for patent owner
“For purposes of this decision, we consider Chen FH to be a publication. In re Wyer, 655 F.2d 221, 226–27 (CCPA 1981) and Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 1378–79 (Fed. Cir. 2006) establish that an application underlying a published patent, such as the Chen FH in the present case, is a printed publication. Contrary to Patent Owner’s contentions, Bruckelmyer does not require that an issued patent suggests turning to the underlying application in order to establish the file history was publicly accessible. Prelim. Resp. 11–12 (citing Bruckelmyer, 445 F.3d at 1379). Instead, as discussed in In re Wyer, the abstract of the issued patent is sufficient to indicate the subject matter and substance of the underlying patent application and establish its public accessibility. 655 F.2d 2 at 227; see also Bruckelmyer, 445 F.3d at 1379 (noting sufficiency of abstract in In re Wyer). For purposes of this Decision and based on the present record, we determine that Chen FH is available as prior art against the challenged claims.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“Based on the record before us, Petitioner has failed to show that Chen and Chen FH teach or suggest that the server buffer in Chen fills at a constant rate that matches the rate of data coming out of the buffer. Petitioner’s citations to Chen (Pet. 19 (citing Ex. 1004, 5:17–34) and Pet. 31 (citing Ex. 1004, 9:21–30, claim 42)) and the Polish Declaration (Ex. 1003 ¶ 63) do not demonstrate that the data rate out of the server matches the data rate into its buffer and is “constant.” Indeed, Petitioner’s argument and evidence fails to address whether the rate is constant. In addition, we do not find the argument’s reliance on the small number of frames establishes that the rate of filling the server buffer is about at about playback rate. In sum, Petitioner has not provided persuasive evidence that Chen and Chen FH teach that “the media data elements is sent at a rate that matches the constant fill rate of a server buffer,” which appears in every challenged claims of the ’611 patent. Based on the foregoing, we find Petitioner has not demonstrated that there is a reasonable likelihood that it would prevail in showing that claims 1–18 are obvious in view of Chen and Chen FH.” slip op. at 15
§ 102 anticipation§ 103 obviousnessPatents in suitUS 8,185,611 - PTAB · Oct 19, 2015 · IPR2015-01037 · APJ Brian J Mcnamara · IPR · Institution
The Board denied institution for claims 1–28 because Su was not established as prior art and Diedrich did not show a reasonable likelihood of unpatentability for claim 19.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We are also not persuaded by Petitioner’s argument that Diedrich discloses the claimed “routine to store and serially identify sequential data elements comprising said streaming media content, in a format capable of being served to users by said server.” The subject matter Petitioner cites at column 4, lines 49–62 of Deidrich describes storing, updating and maintaining files, generally, but does not disclose the claimed routine to store and serially identify sequential data elements. Pet. 59. The subject matter Petitioner cites at columns 8 and 10 of Diedrich concern the receipt of parameters and transmission of pacing requests between the receiving station and the sending station, as discussed above, and also do not demonstrate the claimed routine. Pet. 59–60. For the reasons discussed above, we are not persuaded that Petitioner has demonstrated a reasonable likelihood it will prevail in its challenge to claim 19 and we decline to institute a trial on Petitioner’s challenge to claim 19 as anticipated by Diedrich.” slip op. at 12
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“As an initial matter, Patent Owner contends that Su is not applicable as a prior art reference. We addressed this issue extensively in related IPR2015-01033. There we determined that Petitioner had not carried its burden of production to establish that Su was accessible to one of ordinary skill exercising reasonable diligence. Friendfinder v. WAG Acquisiton, Case IPR2015-01033, slip op. at 6–13 (PTAB Oct. 19, 2015)(Paper 8, Decision Denying Institution) (“Friendfinder I”). The analysis we applied in Friendfinder I concerning the public accessibility of Su also applies in this proceeding. Thus, we decline to institute on Petitioner’s challenges based on Su.” slip op. at 8
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“As Patent Owner notes, although the parameters include frame numbers, the receiving station is not transmitting requests for particular data elements, but responding to a request to start a multimedia session from the sending station. The parameters the server transmits to the receiving station are not requests for data elements from the receiving station. The parameters identify the information the receiving station has received, the next information in the expected sequence, and the ability of the receiving station to accept additional information. Ex. 1012, col. 10, l. 64–col. 11, l. 6. The receiving station generates and transmits a multimedia session reply that includes a pacing parameter, as well as other parameters pertaining to the transmission of multimedia data. Id. at col. 11, ll. 7–18. A fixed multimedia buffer is then created, and the receiving station sends a multimedia pacing request to the sending station. Id. at col. 11, ll. 21–35. Although the parameters and pacing requests cited by Petitioner are used for purposes of synchronizing data transfer, we are not persuaded by Petitioner’s argument that Diedrich discloses the claimed feature “wherein said server responds to user requests for media data elements identified by a serial identifier.” Pet. 58. We are also not persuaded by Petitioner’s argument that Diedrich discloses the claimed “routine to store and serially identify sequential data elements comprising said streaming media content, in a format capable of being served to users by said server.” The subject matter Petitioner cites at column 4, lines 49–62 of Deidrich describes storing, updating and maintaining files, generally, but does not disclose the claimed routine to store and serially identify sequential data elements. Pet. 59. The subject matter Petitioner cites at columns 8 and 10 of Diedrich concern the receipt of parameters and transmission of pacing requests between the receiving station and the sending station, as discussed above, and also do not demonstrate the claimed routine. Pet. 59–60.” slip op. at 11
§ 102 anticipationPatents in suitUS 8,122,141 - PTAB · Oct 19, 2015 · IPR2015-01033 · APJ Brian J Mcnamara · IPR · Institution
The Board denied institution on all challenged claims because Petitioner did not show Su was publicly accessible prior art, defeating every asserted obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“In consideration of the above, we are not persuaded that Petitioner has met its initial burden of production of evidence establishing that Su is applicable as prior art. As Su is cited as prior art in each of Petitioner’s challenges to patentability, we are not persuaded that Petitioner has demonstrated a reasonable likelihood Petitioner would prevail in its challenges to patentability and we decline to institute inter partes review. SUMMARY Petitioner has not met its initial burden to establish that Su is applicable prior art. Therefore, Petitioner has not demonstrated a reasonable likelihood it would prevail on its challenges to patentability and we decline to institute inter partes review.” slip op. at 13
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“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.”’ Kyocera Wireless Corp. v. Int’l Trade Comm’n, 545 F.3d 1340, 1350 (Fed. Cir. 2008)(quoting SRI Int’l, Inc. v. Internet Sec. Sys. Inc., 511 F.3d 1186, 1194 (Fed. Cir. 2008). Whether a reference is a printed publication is a legal question based on underlying factual determinations. Id. The party seeking to introduce the reference “should produce sufficient proof of its dissemination or that it has otherwise been available and accessible to persons concerned with the art to which the document relates and thus most likely to avail themselves of its contents.” In re Wyer, 655 F.2d 221, 227 (CCPA 1981). Our inquiry focuses on whether Su, as it was catalogued, indexed, and shelved, was reasonably accessible to the public before the critical date. We consider all the facts and circumstances surrounding the disclosure and determine whether an interested researcher would have been able to find the reference and examine its contents exercising reasonable diligence, prior to the critical date. In re Lister, 558 F. 3d 1307, 1314–15, 1317 (Fed. Cir. 2009). Petitioner’s only evidence of public accessibility is TH-Su and Su itself. Thus, we look to other information provided on Su and TH-Su to assess whether Su was accessible to an interested researcher exercising reasonable diligence.” slip op. at 9
§ 102 anticipationPatents in suitUS 8,327,011
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.