- Oneplus Technology (Shenzhen) Co., Ltd. v. WSOU Investments, LLC D/B/A Brazos Licensing And DevelopmentInstitution deniedPTAB · Mar 8, 2022 · IPR2021-01400 · APJ Robert J Weinschenk · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood that claims 1, 2, 4–7, or 13–16 were unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“An inter partes review may not be instituted unless “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). We determine that Petitioner does not demonstrate a reasonable likelihood of prevailing in showing that at least one of the challenged claims of the ’708 patent is unpatentable. Accordingly, the Petition is denied, and no trial is instituted.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“had “at least an undergraduate degree in electrical engineering, or equivalent education, and two years of work experience in the field of battery charging systems, or equivalent work experience or training.” Pet. 18–19 (citing Ex. 1005 ¶ 38). Petitioner’s description of the level of ordinary skill in the art is supported by the testimony of Petitioner’s declarant, Dr. Joshua Phinney. Ex. 1005 ¶ 38. Patent Owner does not propose a description of the level of ordinary skill in the art or dispute Petitioner’s description. Prelim. Resp. 10. We adopt Petitioner’s description for purposes of this Decision.” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“using the same standard used in a civil action under 35 U.S.C. § 282(b), including construing the claim in accordance with the ordinary and customary meaning of the claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. 37 C.F.R. § 42.100(b). Petitioner proposes construing the phrase “detecting, by an apparatus, an availability of a charger adapter” in claim 1, and similar phrases in claims 14 and 15, to mean “detecting charging energy (e.g., voltage and/or current) from an adaptor.” Pet. 19–21 (emphasis omitted). Patent Owner does not propose an express construction for any claim terms. Prelim. Resp. 11. We determine that no claim terms require express construction for purposes of this Decision.” slip op. at 7
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“Petitioner asserts that Kao’s Figure 4 shows that the tCC calculation “is performed in the constant-current stage.” Pet. 37–38; Ex. 1005 ¶ 87. Petitioner does not support that assertion sufficiently. The evidence of record indicates that Kao’s Figure 4 is a graph that shows what tCC “represent[s],” namely, that tCC is the time for a battery pack “to go from the pre-charge voltage to the charged voltage.” Ex. 1003, 4:49–50, 4:61–63, Fig. 4. But Petitioner does not explain specifically how Figure 4 discloses calculating tCC if the battery charging point is in the constant current phase. See Pet. 37–38; Ex. 1003, 4:49–5:8, Fig. 4; Ex. 1005 ¶ 87. Thus, on this record, Petitioner does not show sufficiently that Kao discloses calculating tCC if the battery charging point is in the constant current phase.” slip op. at 9
Claim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 8,712,708 - PTAB · Feb 22, 2022 · IPR2021-01333 · APJ Robert J Weinschenk · IPR · Institution
Instituted IPR of claims 18, 26, 27, 29, and 31 on all asserted grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“District Court would grant a stay of the District Court Litigation. Neither party identifies any statements by the District Court or other evidence that specifically addresses a stay of the District Court Litigation. See Pet. 60–61; Prelim. Resp. 15. And “[a] judge determines whether to grant a stay based on the facts of each specific case as presented in the briefs by the parties.” Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 15 at 12 (PTAB May 13, 2020) (informative) (“Fintiv II”). “We decline to infer, based on actions taken in different cases with different facts, how the District Court would rule should a stay be requested by the parties in the parallel case here.” Id. As a result, we determine that the first Fintiv factor is neutral.” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). Further, a decision to institute may not institute on fewer than all claims challenged in the petition. 37 C.F.R. § 42.108(a) (2021). Based on the arguments and evidence of record, Petitioner demonstrates a reasonable likelihood of prevailing in showing that at least one of the challenged claims of the ’252 patent is unpatentable. Accordingly, we institute an inter partes review as to the challenged claims of the ’252 patent on all the grounds of unpatentability in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“had a “Bachelor of Science in Electrical Engineering, Computer Science, Computer Engineering, or equivalent, and one to two years of experience working with image processing, image recognition, or a related field.” Pet. 17 (citing Ex. 1003 ¶ 43). Petitioner’s description of the level of ordinary skill in the art is supported by the testimony of Petitioner’s declarant, Dr. Jeffrey Rodriguez. Ex. 1003 ¶ 43. Patent Owner does not propose a description of the level of ordinary skill in the art or dispute Petitioner’s description. We adopt Petitioner’s description for purposes of this Decision.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“using the same standard used in a civil action under 35 U.S.C. § 282(b), including construing the claim in accordance with the ordinary and customary meaning of the claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. 37 C.F.R. § 42.100(b). Neither party proposes an express construction for any claim terms. Pet. 18. We determine that no claim terms require express construction for purposes of this Decision.” slip op. at 12
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialPatents in suitUS 7,899,252 - Bank Of America, N.A. v. Nant Holdings IP, LLCInstitution deniedPTAB · Feb 15, 2022 · IPR2021-01389 · APJ Elizabeth M Roesel · IPR · Institution
The Board denied institution because Bank of America did not show that Rhoads anticipates claims 1 and 3–5, failing to establish that document validity is determined using the image.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“and the symbol information,” as recited in claim 1. By its express terms, this limitation requires determining a validity of a document based on two things: (1) the image; and (2) the symbol information. Rhoads arguably discloses determining a validity of a document based on the symbol information, for example, the “Bedoop data” extracted from an ID badge. Pet. 36; Ex. 1022, 17:1–16; 17:23–31, 17:46–59. But Petitioner does not show sufficiently that Rhoads discloses determining a validity of a document based on the image, for example, an image of the ID badge.” slip op. at 12
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“and the symbol information,” as recited in claim 1. By its express terms, this limitation requires determining a validity of a document based on two things: (1) the image; and (2) the symbol information. Rhoads arguably discloses determining a validity of a document based on the symbol information, for example, the “Bedoop data” extracted from an ID badge. Pet. 36; Ex. 1022, 17:1–16; 17:23–31, 17:46–59. But Petitioner does not show sufficiently that Rhoads discloses determining a validity of a document based on the image, for example, an image of the ID badge.” slip op. at 12
- Skill levelSkill level petitioner adoptedOther
“We find that Petitioner’s definition of a POSITA is consistent with the scope and content of the ’278 Patent and the asserted prior art, and we apply this definition for purposes of this Decision.” slip op. at 7
§ 102 anticipationcites PhillipsPatents in suitUS 9,031,278 - ZTE Corporation / ZTE (USA), Inc. et al. v. WSOU Investments LLC D/B/A Brazos Licensing And DevelopmentInstitution deniedPTAB · Oct 5, 2021 · IPR2021-00694 · APJ John D Hamann · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–15 were unpatentable on any asserted ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Accordingly, Petitioner has not demonstrated a reasonable likelihood of success in challenging independent claim 1 as being anticipated by Hwang. In addition, the Petition does not present any information with respect to dependent claims 2, 3, 6, 8–10, 12, 13, and 15 that addresses the deficiencies discussed above. Pet. 55–73. Thus, Petitioner has not demonstrated a reasonable likelihood of success in challenging claims 2, 3, 6, 8–10, 12, 13, and 15 as being anticipated by Hwang.” slip op. at 20
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner argues that “[n]o claim terms need to be construed by the Board at this time.” Pet. 23. Patent Owner does not identify any claim terms for construction. Prelim. Resp. 24–25. Accordingly, we determine that no express constructions are needed for us to render our Decision on Institution. See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’”).” slip op. at 10
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“We find that this sentence from Hwang is unavailing. Simply put, this sentence fails to disclose anything about how Hwang manages a mobile station’s active set with respect to establishing a new link. Ex. 1005 ¶ 30. Instead, this sentence explicitly discloses that a hard handover is used for the uplink synchronous timing procedure, but does not disclose that a hard 9 Patent Owner sometimes argues that “the Petition fails to establish it is more likely than not” that Hwang discloses the disputed limitation. See, e.g., Prelim. Resp. 25. This is not the standard, however, for deciding whether to institute an inter partes review. See 35 U.S.C. 314(a). Rather, we apply here a reasonable likelihood standard in evaluating the Petition. Id. handover is used for establishing a new link. Id. Notably, the sentence Petitioner relies upon is immediately preceded by the following sentence: “[I]n order to improve the method of controlling the handover, a hard handover means of the uplink synchronous timing essentially required in the uplink synchronous transmission scheme should be added together with the related art soft handover method.” Id. (emphasis added). In other words, Hwang discloses using both soft and hard handovers. See, e.g., id. at code (57), ¶¶ 30, 53, 64. Hwang characterizes its use of both soft and hard handovers for its data flow procedure of a preferred embodiment as follows: The data flow shown in F[igure] 7 can be classified into 1) a soft handover procedure for setting the radio link in the target base station 333 as shown in step 501, 2) a hard handover procedure for converting the synchronous mode, and 3) a soft handover procedure for releasing the radio link of the source base station 335 as shown in step 539. Id. ¶ 64. Similarly, the sentence Petitioner quotes from paragraph 30 discloses using Hwang’s hard handover procedure for converting the synchronous mode, and using Hwang’s soft handover procedures for setting and releasing radio links. Compare id. ¶ 30, with id. ¶ 64.” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“VI. REMAINING GROUNDS Petitioner argues that the combination of (i) Hwang, Kim, and TS25.301 renders dependent claims 4 and 5 obvious; (ii) Hwang and Kim renders dependent claim 7 obvious; and (iii) Hwang and Miklos renders dependent claims 11 and 14 obvious. Pet. 73–90. For these grounds, Petitioner relies on its showing for independent claim 1 from which claims 4, 5 7, 11, and 14 depend. Id. As we find above, however, the Petition fails to show a reasonable likelihood that Hwang teaches independent claim 1. See supra Section V(B). Petitioner’s showing for the remaining grounds do not cure the deficiencies discussed above. See Pet. 73–90. Accordingly, we determine that Petitioner has not demonstrated a reasonable likelihood of success in challenging these dependent claims as being obvious over these additional grounds.” slip op. at 20
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 7,489,929 - Hologic, Inc. / Varex Imaging Corp. et al. v. University Of South Florida Board Of TrusteesInstitution deniedPTAB · Sep 27, 2021 · IPR2021-00656 · APJ Debra K Stephens · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 2–6, 9–11, 16, or 17 unpatentable over Stewart or Freedman and Cade.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“(a) THRESHOLD.—The Director may not authorize an inter partes review to be instituted unless the Director determines that the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition (35 U.S.C. § 314(a)). Petitioner challenges claims 2–6, 9–11, 16, and 17 as unpatentable under both 35 U.S.C. § 102 and 35 U.S.C. § 103 (Pet. 3). Based on our review of the record, we conclude that Petitioner is not reasonably likely to prevail in demonstrating that at least one of the challenged claims is not patentable.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that a “person of ordinary skill in the art (‘POSITA’) at the time of the alleged invention would have at least three years’ experience developing software for computer workstations, and at least one year of this experience in a clinical environment” (Pet. 8 (citing Ex. 1003 ¶ 27)). The prior art itself demonstrates the level of ordinary skill in the art at the time of the invention (see Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown”) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985))). Based on the present record and the disclosure in the ’937 Patent, we apply Petitioner’s definition of the level of ordinary skill in the art. We determine the definition offered by Petitioner—as interpreted by the panel— comports with the qualifications a person would have needed to understand and implement the teachings of the ’937 Patent and the prior art of record (cf. Okajima v. Bourdeau, 261 F.3d at 1355 (the prior art itself may reflect an appropriate level of skill in the art)).” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownNo construction neededOther
“We look to the Specification in interpreting the limitation. None of the terms in the above limitation is defined expressly in the ’937 Patent (see generally Ex.1001). The Specification describes, however, “a case may contain single-view or standard four-view mammograms (left and right medio-lateral, ML, left and right cranio-caudal, CC)” (id. at 5:2–5). Thus, the ’937 Patent distinguishes a “case” from a “mammogram” –– a mammogram is one slice of the case, not all the slices of a breast mammography (case). The ’937 Patent further describes an “analysis window,” in which “decimated views 41, 42 of the original images are provided in the upper section [and] . . . the lower part two windows 43, 44 display selected sections . . . at high resolution” (id. at 5:21–25). Thus, the analysis window provides, on one side, a view of an original image (e.g., left CC) in one form (e.g., decimated view 41), and a view of that original image in another form (e.g., high-resolution view 43) (id.; see also id. at Fig. 3). On the other side, the analysis window also provides a view of an original image (e.g., right CC) in one form (e.g., decimated view 42), and a view of that original image in another form (e.g., high-resolution view 44). Based on the record before us, “a mammogram image” is an image that is originally taken (“original image”), i.e., the left or right medio-lateral images, etc. The ’937 Patent further describes “[t]his arrangement enables the physician to keep the overview . . . while looking at the high-resolution sections” (id. at 5:25–28). “The overview images are lower-resolution, reduced-sized images and are displayed in a short-time period” (id. at 7:6– 8). “[A] common practice is to scan through the image in the decimated view but pan in the high-resolution view for a thorough and slow examination of certain regions of interest” (id. at 5:34–38). Thus, the ’937 Patent describes “display[ing] a mammogram image in a different form in each window,” e.g., both a lower-resolution, reduced-size (decimated) view of an original image and a higher-resolution view of that image in a window. Additionally, the ’937 Patent describes real-time grayscale adjustment of the window (id. at 5:39–40). In light of the disclosure of the ’937 Patent, we determine that the limitation “display a mammogram image in a different form in each window with grayscale values, along with the illumination characteristics of said monitor, appears to a user as a mammogram in each window under a predetermined illumination state” means the original mammogram image is displayed in a different form (i.e., different resolution) in each window “with grayscale values that, along with the illumination characteristics of said monitor, appears to a user as a mammogram in each window under a predetermined illumination state.” For similar reasons, we determine “transforming the image into a plurality of varying-resolution forms, each form having a different set of greyscale values; and . . . displaying the forms on the display means, each form displayed within a different sector of the display means,” as recited in claim 3 (Ex. 1001, 9:67–10:3) means the original mammogram image is displayed in a different form within a different sector of the display means. We further determine, “transforming the image into a plurality of varying-resolution forms, each form having a different set of greyscale values; and . . . displaying a first form on the first monitor and a second form on the second monitor,” as recited in claim 17 (id. at 10:61–65) means the original image is transformed into a plurality of varying-resolution forms, having different set of greyscale values, and displaying a first and a second form on a first and a second monitor, respectively. b) Other terms We determine we do not need to expressly construe any other terms for purposes of this Decision (see Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”))).” slip op. at 13
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“Petitioner, however, has not shown reasonably where, or how, those cited portions of Stewart disclose different forms of a mammogram image are displayed in multiple respective windows, i.e., “a plurality of windows . . . display[ing] a mammogram image in a different form in each window,” as recited in claim 2. In particular, Petitioner has not reasonably shown, or explained how, either of Stewart’s split screen option or tile mode displays different forms of the original image (see generally Pet.). Nor has Petitioner shown Stewart’s split screen option or tile mode displays those different forms of the original image in respective windows. Petitioner points out (Pet. 29) that Stewart describes the “tile presentation mode maximizes the number of simultaneous images displayed without compromising image quality” (Ex. 1005, 95, Fig. 7). That description, however, discloses displaying multiple (i.e., different) images in multiple windows, rather than displaying different forms of an image in multiple windows. Further, Petitioner contends that Stewart’s “split screen option allows an image set to span either (1) two display monitors, (2) one display monitor, (3) one-half display monitor (two image sets per display monitor), or (4) one-quarter display monitor (four image sets per display monitor)” ((Pet. 28 (quoting Ex. 1005, 95)). That description, however, like the description of tile mode, describes displaying multiple images in multiple windows instead of different forms of an image in multiple windows. For example, the split screen option displays one image split over more than one monitor –– not one image in different forms over more than one monitor. Additionally, although Petitioner contends Stewart describes “images are transformed into different forms having varying resolutions” (Pet. 31 (citing Ex. 1005, 95 (“images are stored with a greater bit depth (12-bits) than they may be displayed (8-bits)”)), that portion of Stewart does not describe that different forms of a mammogram image are displayed in multiple windows. Rather, the cited disclosure in Stewart describes a mammogram image stored in a different form. In particular, the cited description of Stewart discloses an image is stored with “a greater bit depth” than displayed (Ex. 1005, 95). That portion of Stewart does not describe that images are displayed in a plurality of different bit depths, i.e., “a plurality of windows” having “a different form” of a mammogram image “in each window.” Furthermore, Petitioner’s expert declaration of Dr. Bryan P. Bergeron does not explain reasonably how, or show where, the cited portions of Stewart describe displaying different forms of an image in multiple windows. Dr. Bergeron states that, in Stewart, “not only can the initial presentation of images appear in various grayscale values, but also further displays of images can do the same” (Ex. 1003 ¶ 55). Dr. Bergeron further states that “pursuant to the monitor characteristics and the window and level settings for display, images are transformed into forms, which may be shown in various windows, and each having a predetermined illumination state” (id. ¶ 56). Dr. Bergeron’s declaration describes different images being displayed in some particular form, i.e., at some display setting. None of Dr. Bergeron’s statements establish or explain how different forms of an image are displayed in multiple windows on the same monitor.” slip op. at 17
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 6,630,937 - Google LLC v. Uniloc 2017 LLCAll claims unpatentablePTAB · May 11, 2021 · IPR2020-00447 · APJ Scott Raevsky · IPR · Final written decision
Claim 1 is unpatentable as anticipated by Liu; the Board did not reach the obviousness ground over Liu and Chitprasert.
RulingsFinal written decision- Expert testimonyPetitioner expert creditedDecided for petitioner
“Lastly, we disagree that Dr. Rodriguez’s testimony is conclusory and unsupported. See PO Resp. 10. We agree, rather, with Petitioner that Patent Owner “has not identified where or how Dr. Rodriguez’s testimony is inconsistent with the record.” Reply 16. And Patent Owner did not cross-examine Dr. Rodriguez or submit rebuttal testimony of its own. In short, we are persuaded that Dr. Rodriguez’s testimony is supported by Liu’s disclosure of modifying the output of inverse DCT module 209. Compare, e.g., Ex. 1002 ¶¶ 108, 110–111, with Ex. 1005, 7:4–9, 2:55–57, 8:40–49, 9:61–74. We have reviewed Patent Owner’s contrary arguments and given them due consideration, but they do not sufficiently rebut Petitioner’s persuasive showing and evidence.” slip op. at 15
- BurdenUnpatentable
“contorted reading of Liu.” Reply 8. This is easiest to see in Patent Owner’s assertion that Liu only modifies the output of spatial bitstream output module 213 or inverse quantizer 207. PO Resp. 9. Liu actually teaches that its “layered decoder can stop decoding . . . [at] any one of the decoding modules.” Ex. 1005, 7:5–7 (emphasis added), cited in Ex. 1002 ¶¶ 75, 76, 87, 88, 97, 108. In that same vein, Liu’s system “can process a compressed input bitstream in any state of compression.” Id. at 2:55–57 (emphasis added), cited in Ex. 1002 ¶ 73. And Liu’s “selective interconnection path selectively connects the output of one of the decoding modules”—i.e., any decoding module—“to the input of the decoded bitstream processor.” Id. at 3:12–14 (emphasis added), cited in Ex. 1002 ¶¶ 78, 92. What is more, Liu’s “blocks of differences” from inverse DCT module 209 “are fed to the output bus 134 for connection to the output selector 215,” which “selects the output of one of the decoding modules” and “feeds this bitstream” to decoded bitstream processor 118. Id. at 8:40–49, 9:61–64, cited in Ex. 1002 ¶ 108. These disclosures expressly teach that Liu selects the output of inverse DCT module 209 for modification. At the very least, we agree with Dr. Rodriguez that one of ordinary skill in the art would have understood that Liu selects the output of inverse DCT module 209 for modification. See Ex. 1002 ¶ 108; Paulsen, 30 F.3d at 390 (Prior art references must be “considered together with the knowledge of one of ordinary skill in the pertinent art.”).” slip op. at 12
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“We agree with Petitioner that Patent Owner’s “argument rests on a contorted reading of Liu.” Reply 8. This is easiest to see in Patent Owner’s assertion that Liu only modifies the output of spatial bitstream output module 213 or inverse quantizer 207. PO Resp. 9. Liu actually teaches that its “layered decoder can stop decoding . . . [at] any one of the decoding modules.” Ex. 1005, 7:5–7 (emphasis added), cited in Ex. 1002 ¶¶ 75, 76, 87, 88, 97, 108. In that same vein, Liu’s system “can process a compressed input bitstream in any state of compression.” Id. at 2:55–57 (emphasis added), cited in Ex. 1002 ¶ 73. And Liu’s “selective interconnection path selectively connects the output of one of the decoding modules”—i.e., any decoding module—“to the input of the decoded bitstream processor.” Id. at 3:12–14 (emphasis added), cited in Ex. 1002 ¶¶ 78, 92. What is more, Liu’s “blocks of differences” from inverse DCT module 209 “are fed to the output bus 134 for connection to the output selector 215,” which “selects the output of one of the decoding modules” and “feeds this bitstream” to decoded bitstream processor 118. Id. at 8:40–49, 9:61–64, cited in Ex. 1002 ¶ 108. These disclosures expressly teach that Liu selects the output of inverse DCT module 209 for modification. At the very least, we agree with Dr. Rodriguez that one of ordinary skill in the art would have understood that Liu selects the output of inverse DCT module 209 for modification. See Ex. 1002 ¶ 108; Paulsen, 30 F.3d at 390 (Prior art references must be “considered together with the knowledge of one of ordinary skill in the pertinent art.”).” slip op. at 12
Patent outcomesUS 6,329,934 unpatentable§ 102 anticipationPatents in suitUS 6,329,934 - Microsoft Corporation / Apple Inc. et al. v. Uniloc 2017 LLCAll claims unpatentablePTAB · Nov 13, 2020 · IPR2020-00315 · APJ Sally C Medley · IPR · Final written decision
Claims 1–3, 9, and 10 are unpatentable as obvious over TR25.835 and Abrol because the combined teachings establish each challenged limitation.
RulingsFinal written decision- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“Rodermund’s testimony is insufficient because he did not testify, or provide documentary evidence, that email notifications were provided of the actual upload of TR25.835 to the 3GPP server. Id. Here, Mr. Rodermund’s testimony sufficiently demonstrates his personal knowledge of the business practices of 3GPP for him to testify regarding such practices. Ex. 1004 ¶¶ 2, 6, 7, 13. He explains the general practice of emailing persons having ordinary skill in the art as soon as new or additional documents are uploaded to 3GPP’s ftp server. Id. ¶ 19.8 We give substantial weight to Mr. Rodermund’s testimony that persons having ordinary skill in the art were notified by email as soon as new documents, like TR25.835, were uploaded to 3GPP’s ftp server based on his personal knowledge of the business practices of 3GPP. Id.; see Hall, 781 F.2d at 899 (accepting evidence regarding the general library procedure for cataloging as probative value of routine business practice to show the performance of the specific act of cataloging a document). In re Klopfenstein, 380 F.3d 1345, 1350–51 (Fed. Cir. 2004) (“Evidence of routine business practice can be sufficient to prove that a reference was made [publicly] accessible.”).” slip op. at 14
- Strike new argumentNew argument consideredDecided for petitioner
“Petitioners are not prohibited from relying on new evidence and arguments in a reply, if the evidence and arguments are responsive to arguments made in a patent owner response. See 37 C.F.R. 42.23(b); Patent Trial and Appeal Board Consolidated Trial Practice Guide (“Consolidated Practice Guide”) 73 (Nov. 2019)9; Hulu, LLC. v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 15 (PTAB Dec. 20, 2019) (precedential) (“For example, if the patent owner challenges a reference’s status as a printed publication, a petitioner may submit a supporting declaration with its reply to further support its argument that a reference qualifies as a printed publication”). Here, we determine that Petitioner’s arguments and new evidence in connection with the Petitioner Reply are responsive to Patent Owner’s challenges to TR25.835’s status as a printed publication.” slip op. at 16
- ExcludeDenied
“Next, Patent Owner makes several evidentiary objections to Petitioner’s Reply exhibits. Sur-reply 2, 12–13. A party wishing to challenge the admissibility of evidence “must file any objections within five business days of service of evidence to which the objection is directed.” Consolidated Practice Guide 78–79 (citing 37 C.F.R. § 42.64(b)(1)). Patent Owner, however, did not file any objections within five business days of service of the Reply evidence. Tr. 19:25–20:7. Rather, Patent Owner, for the first time, presents its evidentiary objections in connection with its Sur-reply. By disregarding the rules, Patent Owner prevented Petitioner from serving supplemental evidence, and filing an opposition to a motion to exclude as permitted. 37 C.F.R. §§ 42.64(b)(2), 42.64(c); Paper 8, 8–9. Patent Owner’s evidentiary objections, therefore, are not timely and we do not, nor need not, consider them.” slip op. at 17
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not provide its own assessment of the level of ordinary skill in the art, but argues that the Petition fails to link the subject matter of hybrid ARQ methods to the identified levels of education and industry experience proposed by Petitioner. PO Resp. 14. Patent Owner has failed to show that such a linkage is necessary. Rather, in determining the level of ordinary skill in the art, we consider several factors, such as the type of problems encountered in the art and prior art solutions to those problems, as well as education and industry experience. Here, we agree with Petitioner and find that a person having ordinary skill in the art would have known of the hybrid ARQ methods described in the ’917 patent and closely followed ARQ developments by 3GPP and other network standardization groups. Pet. 28 (citing Ex. 1001, 1:5–62, 5:13–36). Moreover, we adopt Dr. Bims’s assessment of a person with ordinary skill in the art as it is consistent with the ’917 patent and the asserted prior art. Ex. 1003 ¶ 27. We further note that the prior art of record in the instant proceeding reflects the appropriate level of ordinary skill in the art. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (holding the Board may omit specific findings as to the level of ordinary skill in the art “where the prior art itself reflects an appropriate level and a need for testimony is not shown”).” slip op. at 7
Patent outcomesUS 7,075,917 unpatentable§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,075,917 - Microsoft Corporation / Apple Inc. et al. v. Uniloc 2017 LLCAll claims unpatentablePTAB · Nov 13, 2020 · IPR2020-00224 · APJ Sally C Medley · IPR · Final written decision
Claims 1–3, 9, and 10 are unpatentable as obvious over TR25.835 and Abrol because the combined teachings establish each challenged limitation.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not provide its own assessment of the level of ordinary skill in the art, but argues that the Petition fails to link the subject matter of hybrid ARQ methods to the identified levels of education and industry experience proposed by Petitioner. PO Resp. 14. Patent Owner has failed to show that such a linkage is necessary. Rather, in determining the level of ordinary skill in the art, we consider several factors, such as the type of problems encountered in the art and prior art solutions to those problems, as well as education and industry experience. Here, we agree with Petitioner and find that a person having ordinary skill in the art would have known of the hybrid ARQ methods described in the ’917 patent and closely followed ARQ developments by 3GPP and other network standardization groups. Pet. 28 (citing Ex. 1001, 1:5–62, 5:13–36). Moreover, we adopt Dr. Bims’s assessment of a person with ordinary skill in the art as it is consistent with the ’917 patent and the asserted prior art. Ex. 1003 ¶ 27. We further note that the prior art of record in the instant proceeding reflects the appropriate level of ordinary skill in the art. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (holding the Board may omit specific findings as to the level of ordinary skill in the art “where the prior art itself reflects an appropriate level and a need for testimony is not shown”).” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“2018, “[claims] of a patent . . . shall be construed using the same claim construction standard that would be used to construe the [claims] in a civil action under 35 U.S.C. § 282(b), including construing the [claims] in accordance with the ordinary and customary meaning of such claims as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” See Changes to the Claim Construction Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340, 51,358 (Oct. 11, 2018) (amending 37 C.F.R. § 42.100(b) effective November 13, 2018) (now codified at 37 C.F.R. § 42.100(b) (2019)); see also Phillips v. AWH Corp., 415 F.3d 1303, 1312–14 (Fed. Cir. 2005). For purposes of this decision, we need not expressly construe any claim term. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs. in the context of an inter partes review). D. Asserted Obviousness of Claims 1–3, 9, and 10 over TR25.825 and Abrol” slip op. at 8
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
- Strike new argumentNew argument consideredDecided for petitioner
Patent outcomesUS 7,075,917 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,075,917 - Microsoft Corporation / Apple Inc. et al. v. Uniloc 2017 LLCAll claims unpatentablePTAB · Nov 13, 2020 · IPR2019-00973 · APJ Sally C Medley · IPR · Final written decision
Claims 1–3, 9, and 10 are unpatentable as obvious over TR25.835 and Abrol.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill In determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). Petitioner relies on the testimony of Dr. Harry Bims, who testifies that a person having ordinary skill in the art would have had “a bachelors’ degree in electrical engineering, computer science, or the” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“2018, “[claims] of a patent . . . shall be construed using the same claim construction standard that would be used to construe the [claims] in a civil action under 35 U.S.C. § 282(b), including construing the [claims] in accordance with the ordinary and customary meaning of such claims as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” See Changes to the Claim Construction Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340, 51,358 (Oct. 11, 2018) (amending 37 C.F.R. § 42.100(b) effective November 13, 2018) (now codified at 37 C.F.R. § 42.100(b) (2019)); see also Phillips v. AWH Corp., 415 F.3d 1303, 1312–14 (Fed. Cir. 2005). For purposes of this decision, we need not expressly construe any claim term. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs. in the context of an inter partes review). D. Asserted Obviousness of Claims 1–3, 9, and 10 over TR25.825 and Abrol” slip op. at 8
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“Rodermund’s testimony is insufficient because he did not testify, or provide documentary evidence, that email notifications were provided of the actual upload of TR25.835 to the 3GPP server. Id. Here, Mr. Rodermund’s testimony sufficiently demonstrates his personal knowledge of the business practices of 3GPP for him to testify regarding such practices. Ex. 1004 ¶¶ 2, 6, 7, 13. He explains the general practice of emailing persons having ordinary skill in the art as soon as new or additional documents are uploaded to 3GPP’s ftp server. Id. ¶ 19.8 We give substantial weight to Mr. Rodermund’s testimony that persons having ordinary skill in the art were notified by email as soon as new documents, like TR25.835, were uploaded to 3GPP’s ftp server based on his personal knowledge of the business practices of 3GPP. Id.; see Hall, 781 F.2d at 899 (accepting evidence regarding the general library procedure for cataloging as probative value of routine business practice to show the performance of the specific act of cataloging a document). In re Klopfenstein, 380 F.3d 1345, 1350–51 (Fed. Cir. 2004) (“Evidence of routine business practice can be sufficient to prove that a reference was made [publicly] accessible.”).” slip op. at 14
- Strike new argumentNew argument consideredDecided for petitioner
“Petitioners are not prohibited from relying on new evidence and arguments in a reply, if the evidence and arguments are responsive to arguments made in a patent owner response. See 37 C.F.R. 42.23(b); Patent Trial and Appeal Board Consolidated Trial Practice Guide (“Consolidated Practice Guide”) 73 (Nov. 2019)9; Hulu, LLC. v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 15 (PTAB Dec. 20, 2019) (precedential) (“For example, if the patent owner challenges a reference’s status as a printed publication, a petitioner may submit a supporting declaration with its reply to further support its argument that a reference qualifies as a printed publication”). Here, we determine that Petitioner’s arguments and new evidence in connection with the Petitioner Reply are responsive to Patent Owner’s challenges to TR25.835’s status as a printed publication.” slip op. at 16
Patent outcomesUS 7,075,917 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,075,917 - Intel Corporation v. VLSI Technology LLCAll claims unpatentablePTAB · Feb 4, 2020 · IPR2018-01035 · APJ Minn Chung · IPR · Final written decision
Claims 1, 4, and 17 are unpatentable as anticipated by Schucker; claim 2 is unpatentable as obvious over Schucker and Maley.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“performed by the first and second circuits cancels out noise in the system or improve noise immunity, a “push/pull” function is not necessary to improve noise immunity or reduce noise in the system. Thus, to the extent improved noise immunity is a purpose of the invention, as Patent Owner argues, a “push/pull” function is not necessary to achieve that purpose. Accordingly, unlike Abbott Diabetes Care, Patent Owner’s argument here about the purpose of invention of the ’588 patent does not support a restrictive claim construction requiring a “push/pull” operation. In summary, none of the factors existing in Abbott Diabetes Care are present in this case. Thus, claim construction in this case is governed by the general principle that “a particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment.” SuperGuide, 358 F.3d at 875; see also WesternGeco LLC v. ION Geophysical Corp., 889 F.3d 1308, 1323–24 (Fed. Cir. 2018) (“It is well established that claims are not limited to preferred embodiments, unless the specification clearly indicates otherwise.” (citing Comaper Corp. v. Antec, Inc., 596 F.3d 1343, 1348 (Fed. Cir. 2010) (“[T]his court has repeatedly cautioned against limiting claims to a preferred embodiment.”))). As discussed above, the Specification describes several embodiments that do not require a “push/pull” operation. Accordingly, based on the complete record and the foregoing discussion of the arguments and evidence presented by Petitioner and Patent Owner, we determine that the claim term “couples” recited in claim 1 does not require the isolation paths to operate in a “push/pull” configuration. Instead, we construe the claim term “couples” according to its plain meaning and determine that the term “couples”” slip op. at 64
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“arguments and evidence presented by Petitioner and Patent Owner, we determine that Petitioner has demonstrated sufficiently that Schucker discloses all limitations recited in claim 1. Accordingly, based on the complete record, we determine that Petitioner has demonstrated, by a preponderance of the evidence, that claim 1 is unpatentable under 35 U.S.C. § 102 as anticipated by Schucker.” slip op. at 66
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable
“instead only addresses its asserted ground based on Schucker and Maley. See Reply 22–25. Accordingly, based on the complete records, we determine that Petitioner has not demonstrated, by a preponderance of the evidence, the subject matter of claim 2 would have been obvious under 35 U.S.C. § 103(a) over the combination of Schucker and the knowledge of a person of ordinary skill in the art.” slip op. at 86
- PTAB / AIA Trials › Constitutional / APA (Arthrex, Oil States, due process)Decided for petitioner
“E. Patent Owner’s Constitutionality Arguments Patent Owner contends cancelling claims in this proceeding would contravene the Appointments Clause of the U.S. Constitution as inter partes review is unconstitutional when conducted by administrative patent judges not nominated by the President and confirmed by the Senate. PO Resp. 61. Patent Owner also argues that “[t]he Constitution also forbids retroactive application of IPR to the Patent, which was filed before the Leahy-Smith America Invents Act (‘AIA’), Pub. L. No. 112-29, 125 Stat. 284 (2011) was enacted and issued before it took effect.” Id. at 61–62. We decline to consider these constitutional challenges as they have been addressed by the Federal Circuit in Celgene Corp. v. Peter, 931 F.3d 1342 (Fed. Cir. 2019) and Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320 (Fed. Cir. 2019). IV. CONCLUSION15 For the foregoing reasons, we conclude that Petitioner has met its” slip op. at 86
Patent outcomesUS 7,268,588 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,268,588
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.