• Marvell Semiconductor, Inc. / Mediatek Inc. et al. v. Bandspeed, Inc.Some claims unpatentable
  PTAB · Sep 7, 2016 · IPR2015-00316 · APJ Patrick M Boucher · IPR · Final written decision

  Claims 9, 10, 12, 21, 22, and 24 are unpatentable; claims 11 and 23 are not shown unpatentable because Cuffaro does not support the specified-vote limitation.

  RulingsFinal written decision

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

    “1. “hopping sequence” Each of challenged claims 9, 10, 22, and 24 recites a “hopping sequence.” Petitioner’s declarant, Dr. Zhi Ding, attests that the phrase is “a well-understood term of art.” Ding Decl. ¶ 35 (citing Ex. 1016, 127–33). Consistent with Dr. Ding’s testimony, we applied a preliminary construction of “hopping sequence” in the Institution Decision as “the order in which the communications network hops among the set of frequencies.” Dec. 7. That construction is not contested by Patent Owner, and we adopt it for this Final Written Decision.” slip op. at 8

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

    “participants in such other claim language “was because it wanted to clarify that each participant got a single vote,” and explained its position that, in the claims at issue in this proceeding, “participant is implicit in the claim language as it is.” Tr. 78:16–25. But the claims are directed to a “communications device,” and recite “votes” in the context of what the “particular communications channel” “receives.” Nothing within the structure of the claims requires resolving the origin of such votes. Furthermore, Patent Owner’s proposed construction is inconsistent with the construction it agreed to before the district court in the Qualcomm Litigation. In that litigation, the parties agreed that the term “vote” should be construed as “a binary expression (to use or not to use),” a construction that makes no reference to the origin of the “vote” as from a participant or otherwise. Ex. 1018, 6. We see no compelling reason to excuse the inconsistency by adopting a narrower construction when the Board applies a claim-construction standard (broadest reasonable interpretation) that could only result in the same or a broader construction. See Amazon.com, Inc. v. Barnesandnoble.com, Inc., 239 F.3d 1343, 1351 (Fed. Cir. 2001) (“A patent may not, like a ‘nose of wax,’ be twisted one way to avoid anticipation and another to find infringement.” (quoting Sterner Lighting, Inc. v. Allied Elec. Supply, Inc., 431 F.2d 539, 544 (5th Cir. 1970))). Accordingly, we construe “votes to use a particular communications channel” as “expressions of preference for using the particular communications channel.”” slip op. at 10

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

    “(citing Melendez Decl. ¶ 32). Patent Owner contends that “Gerten’s disclosure is directed toward eliminating channels for use in an entire piconet as opposed to eliminating channels for use by certain participants within a piconet.” Id. (emphasis added). Patent Owner argues that Gerten does not disclose a selection kernel capable of maintaining synchronization between a master and more than one slave in a piconet, with the master and one slave using a default set of channels while the same master and a different slave use a different set of channels. Id. We are not persuaded that the absence of a specific teaching of such a selection kernel supports the conclusion that one of skill in the art would understand Gerten to function in the manner Patent Owner suggests. In this instance, Petitioner refers to two embodiments of Gerten “in which a first participant communicates with a second participant via a normal sequence and with another participant via an adaptive hopping sequence.” Reply 5. First, Figure 3 of Gerten is reproduced below. Figure 3 illustrates “methodology for determining and communicating channels to be avoided to a remote device.” Ex. 1003, col. 2, ll. 4–6. As illustrated in the drawing, a master unit performs a discovery process (block 110) upon connecting with a new slave unit. Ding Decl. ¶¶ 58, 61. If the slave unit is capable of using interference avoidance, the master unit begins the process of determining a modified set of channels for use (block 120). Id. ¶ 46. If a second slave unable to use interference avoidance enters the piconet, standard frequency hopping is used. Supp. Ding Decl. ¶ 9. Under Patent Owner’s characterization of Gerten, entry of the second slave into the network would require the first slave necessarily to revert back to the default hopping sequence. Id. ¶ 10. But this would undermine the stated benefits of Gerten, which explicitly discloses: The above process can be applied to a Bluetooth example and includes identification of a Bluetooth device’s ability to support interference avoidance, the measurements of signal strength on all channels and identification of which channel should not be used without violating the FCC rules, a method of modifying the Bluetooth hop sequence so that it will avoid channels containing strong or fixed interferers while still supporting standard Bluetooth hopping with other non-enabled members of the piconet and a method of relating necessary interference avoidance information to the remote Bluetooth devices. Ex. 1003, col. 4, l. 66–col. 5, l. 9 (emphasis added).” slip op. at 16

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner

    “teaches away from the claim limitations. See PO Resp. 15. A prior-art reference does not teach away from the claimed subject matter unless the prior-art reference also criticizes, discredits, or otherwise discourages the solution claimed. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). In support of this contention, Patent Owner relies on testimony by Dr. Melendez that “the only selection kernels (Gerten Fig. 6 and Fig. 7) disclosed for the transceiver (Gerten Fig. 2) in Gerten are expressly not capable of providing the subject claimed limitations of the [’]624 patent as is discussed below, and so would serve only to teach away from the claim.” Melendez Decl. ¶ 32. Even if Dr. Melendez’s statement is accurate, such examples in Gerten do not meet the “teaching away” standard because the mere use of examples in a reference that function in a different way does not criticize, discredit, or otherwise discourage the solution claimed. In addition, “[t]eaching away is irrelevant to anticipation.” Seachange Int’l, Inc. v. C-Cor, Inc., 413 F.3d 1361, 1380 (Fed. Cir. 2005).” slip op. at 19

  Patent outcomesUS 7,477,624 mixed
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 7,477,624
• Qualcomm Inc. / Marvell Semiconductor, Inc. et al. v. Bandspeed, Inc.Some claims unpatentable
  PTAB · Sep 7, 2016 · IPR2015-00315 · APJ Patrick M Boucher · IPR · Final written decision

  Claims 5, 6, 8, 17, 18, and 20 are unpatentable; claims 7 and 19 were not shown unpatentable, because Cuffaro does not disclose or render obvious a specified number of votes.

  RulingsFinal written decision

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner

    “phrase “means for . . . .” Petitioner construes these terms in accordance with 35 U.S.C. § 112 ¶ 6, identifying an algorithm described in the specification corresponding to each “means” limitation. Pet. 7–9 (citing Ex. 1001, col. 8, l. 8–38, col. 8, ll. 49–col. 9, l. 16, col. 19, l. 25–col. 20, l. 67). Petitioner identifies a general purpose computer, processor 704 in Figure 7, as structure for “executing the instructions associated with the corresponding function” recited in each “means limitation,” except for the “means fro [sic] the first participant to communicate . . .” recited in claims 5 and 20. Pet. 7–9 (citing Ex. 1001, Fig. 7, col. 25, ll. 13–18). For the “means fro [sic] the first participant to communicate” limitation, Petitioner identifies transceiver 216, shown in Figure 2, reproduced supra. Pet. 9 (citing Ex. 1001, Fig. 2, col. 9, ll. 54–59). Patent Owner does not contest these identifications. We agree with Petitioner’s identifications and adopt them as our constructions of the means-plus-function limitations. Specifically, as to those means-plus-function limitations that correspond to processor 704 in Figure 7, Petitioner identifies in its claim chart the algorithm described in the specification for performing each function of these means. Pet. 8–9; See also Function Media, L.L.C. v. Google, Inc., 708 F.3d 1310, 1318 (Fed. Cir. 2013) (“When dealing with a ‘special purpose computer-implemented means-plus-function limitation,’ [the Federal Circuit] require[s] the specification to disclose the algorithm for performing the function.”); Blackboard, Inc. v. Desire2Learn, Inc., 574 F.3d 1371, 1384 (Fed. Cir. 2009) (“[W]hen a computer is referenced as support for a function in a means-plus-function claim, there must be some explanation of how the computer performs the claimed function.”).” slip op. at 8

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

    “We are not persuaded by this reasoning. As Petitioner observes, the embodiments of the ’624 patent identified by Patent Owner are characterized as “examples,” and a person of ordinary skill “would understand that the example scenarios of the specification are not necessarily limiting on the claims.” Reply 3 (citing Ding Supp. Decl. ¶ 6). In addition, Petitioner notes that claim language in related patents owned by Patent Owner explicitly refers to participants, evidencing Patent Owner’s understanding “how to expressly create participant-specific voting requirements in claims.” Id. at 3.” slip op. at 10

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

    “Patent Owner responds that “the Gerten device is not capable of and expressly teaches away from performing this functionality.” PO Resp. 15 (citing Melendez Decl. ¶ 33). Patent Owner contends that “Gerten’s disclosure is directed toward eliminating channels for use in an entire piconet as opposed to eliminating channels for use by certain participants within a piconet.” Id. at 16 (emphasis added). Patent Owner argues that Gerten does not disclose a selection kernel capable of maintaining synchronization between a master and more than one slave in a piconet, with the master and one slave using a default set of channels while the same master and a different slave use a different set of channels. Id. We are not persuaded that the absence of a specific teaching of such a selection kernel supports the conclusion that one of skill in the art would understand Gerten to function in the manner Patent Owner suggests. In this instance, Petitioner refers to two embodiments of Gerten “in which a first participant communicates with a second participant via a normal sequence and with another participant via an adaptive hopping sequence.” Reply 5. First, Figure 3 of Gerten is reproduced below. Figure 3 illustrates “methodology for determining and communicating channels to be avoided to a remote device.” Ex. 1003, col. 2, ll. 4–6. As illustrated in the drawing, a master unit performs a discovery process (block 110) upon connecting with a new slave unit. Ding Decl. ¶¶ 60, 64. If the slave unit is capable of using interference avoidance, the master unit begins the process of determining a modified set of channels for use (block 120). Id. ¶ 45. If a second slave unable to use interference avoidance enters the piconet, standard frequency hopping is used. Supp. Ding Decl. ¶ 9. Under Patent Owner’s characterization of Gerten, entry of the second slave into the network would require the first slave necessarily to revert back to the default hopping sequence. Id. ¶ 10. But this would undermine the stated benefits of Gerten, which explicitly discloses: The above process can be applied to a Bluetooth example and includes identification of a Bluetooth device’s ability to support interference avoidance, the measurements of signal strength on all channels and identification of which channel should not be used without violating the FCC rules, a method of modifying the Bluetooth hop sequence so that it will avoid channels containing strong or fixed interferers while still supporting standard Bluetooth hopping with other non-enabled members of the piconet and a method of relating necessary interference avoidance information to the remote Bluetooth devices. Ex. 1003, col. 4, l. 66–col. 5, l. 9 (emphasis added).” slip op. at 17

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

    “of performance data from remote devices to a base station, which Petitioner respectively associates with the slave and master devices of Gerten. See Pet. 29. A quality metric is obtained from measurements of both assigned and unassigned frequency channels that are reported back to the base station. Ex. 1004, col. 7, ll. 23–47. Because Cuffaro does not limit the type of communications link used for such reporting, Petitioner reasons, and we agree, that “a person of ordinary skill in the art . . . would consider it obvious for the slave device in Gerten to perform the interference signal strength measurements” and to communicate channel performance data measured by the slave device over one or more of the plurality of communications channels based on the hopping sequence. Pet. 31. Petitioner supports this reasoning with declaration testimony by Dr. Ding. Ding Decl. ¶ 111. Petitioner further provides persuasive reasoning why a person of ordinary skill in the art would have combined the relevant teachings of Gerten and Cuffaro, including that “Cuffaro and Gerten are in the same field of endeavor” of selecting channels to avoid interference in a communications system; that measuring interference signal strength at a slave device such as described by Cuffaro provides a more accurate determination of the impact of the receiver unit from the interference on a given channel, and, therefore, would provide more accurate identification of bad channels in Gerten; and that Gerten suggests such a modification by describing that both a master and a slave can participate in identifying channels to avoid. Pet. 31–32. Petitioner supports this reasoning with declaration testimony by Dr. Ding. Ding Decl. ¶¶ 113, 114.” slip op. at 24

  Patent outcomesUS 7,477,624 mixed
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 7,477,624
• Marvell Semiconductor, Inc. / Mediatek Inc. et al. v. Bandspeed, Inc.Some claims unpatentable
  PTAB · Sep 7, 2016 · IPR2015-00314 · APJ Patrick M Boucher · IPR · Final written decision

  Claims 1, 2, 4, 13, 14, 16, 25, 26, 28, and 29 are unpatentable; claims 3, 15, and 27 were not shown unpatentable under the Gerten and Cuffaro obviousness ground.

  RulingsFinal written decision

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

    “sequence.” Petitioner’s declarant, Dr. Zhi Ding, attests that the phrase is “a well-understood term of art.” Ding Decl. ¶ 35 (citing Ex. 1016, 127–33). Consistent with Dr. Ding’s testimony, we applied a preliminary construction of “hopping sequence” in the Institution Decision as “the order in which the communications network hops among the set of frequencies.” Dec. 7. That construction is not contested by Patent Owner, and we adopt it for this Final Written Decision. 2. “votes to use the particular communications channel” The noun phrase “votes to use the particular communications channel” is recited in each of challenged claims 3, 15, and 27. The term “vote” is not defined in the Specification of the ’624 patent. In the Institution Decision, we applied a preliminary construction of “votes to use the particular communications channel” as “expressions of preference for using the particular communications channel,” a construction that rejected Petitioner’s further proposal that the phrase alternatively encompasses indications whether the communications channel is “good or bad.” Dec. 7– 8. The parties do not present arguments that cause us to reconsider that aspect of the construction. Patent Owner “submits that ‘votes to use the particular communications channel’ should be construed to mean ‘expressions of preference of participants for using the particular communications channel,’” with underscoring to indicate words it proposes to add to the Board’s preliminary construction. PO Resp. 6. Patent Owner contends that “all of the embodiments” discussed in the Specification of the ’624 patent “are limited to originating from participant devices involved in the communications and are intended to be used to determine the best channels for communication among those same participants.” Id. This contention is not disputed by Petitioner, and we find no counter examples in the Specification. Patent Owner reasons that omission of reference to participants in the construction of the phrase “would be unduly broad and not supported by the specification and would not be how a [person of ordinary skill in the art] would understand that limitation in view of the specification.” Id. at 7–8 (citing Melendez Decl. ¶ 28). We are not persuaded by this reasoning. As Petitioner observes, the embodiments of the ’624 patent identified by Patent Owner are characterized as “examples,” and a person of ordinary skill “would understand that the example scenarios of the specification are not necessarily limiting on the claims.” Reply 3 (citing Ding Supp. Decl. ¶ 6). In addition, Petitioner notes that claim language in related patents owned by Patent Owner explicitly refers to participants, evidencing Patent Owner’s understanding “how to expressly create participant-specific voting requirements in claims.” Id. at 3.” slip op. at 8

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

    “Patent Owner responds that “the Gerten device is not capable of and expressly teaches away from performing this functionality.” PO Resp. 15 (citing Melendez Decl. ¶ 33). Patent Owner contends that “Gerten’s disclosure is directed toward eliminating channels for use in an entire piconet as opposed to eliminating channels for use by certain participants within a piconet.” Id. (emphasis added). Patent Owner argues that Gerten does not disclose a selection kernel capable of maintaining synchronization between a master and more than one slave in a piconet, with the master and one slave using a default set of channels while the same master and a different slave use a different set of channels. Id. We are not persuaded that the absence of a specific teaching of such a selection kernel supports the conclusion that one of skill in the art would understand Gerten to function in the manner Patent Owner suggests. In this instance, Petitioner refers to two embodiments of Gerten “in which a first participant communicates with a second participant via a normal sequence and with another participant via an adaptive hopping sequence.” Reply 5. First, Figure 3 of Gerten is reproduced below. Figure 3 illustrates “methodology for determining and communicating channels to be avoided to a remote device.” Ex. 1003, col. 2, ll. 4–6. As illustrated in the drawing, a master unit performs a discovery process (block 110) upon connecting with a new slave unit. Ding Decl. ¶¶ 60, 63. If the slave unit is capable of using interference avoidance, the master unit begins the process of determining a modified set of channels for use (block 120). Id. ¶ 45. If a second slave unable to use interference avoidance enters the piconet, standard frequency hopping is used. Supp. Ding Decl. ¶ 9. Under Patent Owner’s characterization of Gerten, entry of the second slave into the network would require the first slave necessarily to revert back to the default hopping sequence. Id. ¶ 10. This would undermine the stated benefits of Gerten, which explicitly discloses: The above process can be applied to a Bluetooth example and includes identification of a Bluetooth device’s ability to support interference avoidance, the measurements of signal strength on all channels and identification of which channel should not be used without violating the FCC rules, a method of modifying the Bluetooth hop sequence so that it will avoid channels containing strong or fixed interferers while still supporting standard Bluetooth hopping with other non-enabled members of the piconet and a method of relating necessary interference avoidance information to the remote Bluetooth devices. Ex. 1003, col. 4, l. 66–col. 5, l. 9 (emphasis added).” slip op. at 16

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner

    “Nor are we persuaded by Patent Owner’s contention that Gerten teaches away from the claim limitations. See PO Resp. 15. A prior-art reference does not teach away from the claimed subject matter unless the prior-art reference also criticizes, discredits, or otherwise discourages the solution claimed. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). In support of this contention, Patent Owner relies on testimony by Dr. Melendez that “the only selection kernels (Gerten Fig. 6 and Fig. 7) disclosed for the transceiver (Gerten Fig. 2) in Gerten are expressly not capable of providing the subject claimed limitations of the [’]624 patent as is discussed below, and so would serve only to teach away from the claim.” Melendez Decl. ¶ 33. Even if Dr. Melendez’s statement is accurate, such examples in Gerten do not meet the “teaching away” standard because the mere use of examples in a reference that function in a different way does not criticize, discredit, or otherwise discourage the solution claimed. In addition, “[t]eaching away is irrelevant to anticipation.” Seachange Int’l, Inc. v. C-Cor, Inc., 413 F.3d 1361, 1380 (Fed. Cir. 2005).” slip op. at 19

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

    “Petitioner further provides persuasive reasoning why a person of ordinary skill in the art would have combined the relevant teachings of Gerten and Cuffaro, including that “Cuffaro and Gerten are in the same field of endeavor” of selecting channels to avoid interference in a communications system; that measuring interference signal strength at a slave device such as described by Cuffaro provides a more accurate determination of the impact of the receiver unit from the interference on a given channel, and, therefore, would provide more accurate identification of bad channels in Gerten; and that Gerten suggests such a modification by describing that both a master and a slave can participate in identifying channels to avoid. Pet. 30–31. Petitioner supports this reasoning with declaration testimony by Dr. Ding. Ding Decl. ¶¶ 128, 129. Patent Owner responds by observing that, unlike Gerten, “Cuffaro does not relate to communications systems wherein the devices that are communicating with each other . . . are even transmitting or receiving on the same channels.” PO Resp. 21. Instead, the cellular telephone systems described by Cuffaro use separate physical channels for uplink and downlink. Ex. 1004, col. 4, ll. 9–11. Patent Owner contends that, in Cuffaro, performance data cannot be sent back on the same set of channels on which they were received, and, therefore “[a] mobile station of Cuffaro cannot transmit channel performance data ‘over one or more of the plurality of communications channels.’” PO Resp. 21–22. Dr. Melendez agrees. Melendez Decl. ¶¶ 42–44. Even accepting that Patent Owner’s contention regarding Cuffaro is factually accurate does not lead to the conclusion that Petitioner’s reasoning regarding the combination of Gerten and Cuffaro is deficient. Petitioner does not propose simply to incorporate the performance-data communication mechanism of Cuffaro into the system of Gerten. Rather, Petitioner relies on Cuffaro’s teaching of communicating performance data between devices, and applying that teaching to the system described by Gerten. See Reply 9– 10. That Cuffaro incidentally uses different frequencies for uplink and downlink communications does not diminish the relevance of the teaching identified by Petitioner. For these reasons, we Patent Owner makes too broad a general” slip op. at 24

  Patent outcomesUS 7,477,624 mixed
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 7,477,624
• Maxlinear, Inc. v. Cresta Technology Corp. And CF Crespe LLCSome claims unpatentable
  PTAB · Aug 15, 2016 · IPR2015-00594 · APJ Phillip J Kauffman · IPR · Final written decision

  Claims 1–17 and 24–29 are unpatentable; claims 18–23 were not shown unpatentable because the § 103(c) safe haven bars the obviousness grounds against them.

  RulingsFinal written decision

  • BurdenDecided for patent owner

    “We agree with Patent Owner that the burden of persuasion to establish unpatentability is Petitioner’s burden and that burden never shifts to Patent Owner. See PO Resp. 3–4; 35 U.S.C. § 316(e); Nike, Inc. v. Adidias AG, 812 F.3d 1326, 1334 (Fed. Cir. 2016). Patent Owner argues that Petitioner has not met the burden of establishing that Favrat is “by another” as required by § 102(e). PO Resp. 4–25. Petitioner responds that Patent Owner is incorrect in that the burden of production has shifted to Patent Owner. Pet. Reply 2–3 (citing Dynamic Drinkware, LLC v. National Graphics, Inc., 800 F.3d 1375, 1378–79 (Fed. Cir. 2015)). The shifting burden of production is not applicable to our analysis under § 102(e). See In re Magnum Oil Tools Int’l, Ltd., 2016 WL 3974202, No. 2015-1300, slip op. at 13–18 (Fed. Cir. 2016). Patent Owner here, like the patent owner in Magnum Oil Tools, seeks to disprove Petitioner’s contention. Magnum Oil Tools, slip op. at 16. The inquiry before us is whether Petitioner has shown by a preponderance of the evidence that Favrat is “by another” as required by § 102(e).” slip op. at 14

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

    “Mr. Mombers, a Group B inventor, testified to the ITC that he conceived of the signal processor of claim 1, the sole independent claim of the ’792 patent, and thus conceived of every claim of the ’792 patent. All of the evidence presented to the ITC that was submitted and argued here is consistent with Mr. Mombers’s assertion. Patent Owner corroborated this testimony by stating that Favrat is prior art under § 102(e), meaning it is “by another.” Considering the entire admissible record, we determine that a 19 In re Land, 368 F.2d 866 (Fed. Cir. 1966), is also distinguishable because the patents were related. preponderance of the evidence demonstrates that Favrat is “by another” as required by § 102(e).” slip op. at 23

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

    “Consequently, with regard to claims 3, 6–10, and 12–17, Patent Owner has failed to carry its burden of establishing when the ’792 patent “was made.” As a result, the safe haven of § 103(c) does not apply, and we need not reach the question of common ownership or obligation of assignment as of the filing date of the ’792 patent. b) Claims 18–23 The evidence provided by Petitioner does not address claims 18–23. See Ex. 1212, 5–6. That is, Patent Owner did not assert these claims were conceived and reduced to practice at an earlier date. Given the absence of evidence to the contrary, the presumption that the ’792 patent “was made” as of its filing date applies. Our inquiry is then whether as of that date, Favrat and the ’792 patent were “owned by the same person or subject to an obligation of assignment to the same person.” See 35 U.S.C. § 103(c)(1). As explained above, Patent Owner asserts, with supporting evidence, that Favrat and the ’792 patent were commonly owned as of the filing date of the ’792 patent. Petitioner provides no evidence to the contrary regarding 23 Petitioner contends, without supporting evidence, that because the references asserted against Patent Owner in the ITC proceeding predated even the May 2001 date, Patent Owner changed to rely upon the filing date of the ’792 patent as the priority date. Pet. Reply 19 n.9. common ownership or evidence of assignment as of the filing date of the ’792 patent. Rather, Petitioner provides argument and evidence regarding common ownership and obligation of assignment for dates prior to the filing date of the ’792 patent. See Pet. Reply 17–24. We need not consider this argument and evidence as it does not pertain to the date at issue (i.e., the filing date of the ’792 patent, which is the date that claims 18–23 were made). In light of this, Patent Owner has demonstrated that claims 18–23 are subject to the safe haven of § 103(c). Consequently a ground of unpatentability based on obviousness may not be asserted against Patent Owner for these claims.” slip op. at 27

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Not reached

    “because it is in response to Patent Owner’s argument in the Response that Favrat is not prior art under § 102(a). See PO Resp. 22 n.2; Paper 71, 1. However, this does not end our inquiry. If the assertion that Favrat is prior art under § 102(a) was required to be in the Petition, then the fact that the issue was raised in Patent Owner’s Response does not cure that oversight. As the Federal Circuit recently emphasized, It is of the utmost importance that petitioners in the IPR proceedings adhere to the requirement that the initial petition identify “with particularity” the “evidence that supports the grounds for the challenge to each claim.” 35 U.S.C. § 312(a)(3). Intelligent Bio-Systems, 821 F.3d 1359, 1367–68 (Fed. Cir. 2016); see also 37 C.F.R. § 42.104(b)(2) (requiring a petition to specify the specific statutory grounds under 35 U.S.C. § 102). Prior to filing of the instant Petition, Petitioner knew from Patent Owner’s contentions in the ITC proceeding that the safe haven of § 103(c) was a potential issue. See Ex. 1207, 3. Even armed with this knowledge, Petitioner chose not to assert in the Petition that Favrat is prior art under § 102(a). If Petitioner had asserted both § 102(a) and § 102(e), perhaps Patent Owner would have chosen a different response and the evidence in this proceeding would have developed differently. In the particular circumstances of this case, adding consideration of § 102(a) at this late date would deprive Patent Owner of due process. Consequently, we do not consider Petitioner’s contention that Favrat is prior art under § 102(a).” slip op. at 29

  Patent outcomesUS 7,265,792 mixed
  § 102 anticipation§ 103 obviousness
  Patents in suitUS 7,265,792
• Zhongshan Broad-Ocean Motor Co. Ltd. v. Nidec Motor CorporationSome claims unpatentable
  PTAB · Jun 22, 2016 · IPR2015-00465 · APJ James A Tartal · IPR · Final written decision

  Claims 1, 3, 7, and 18 are unpatentable as anticipated by Mullin and Pant; claim 2 was not shown unpatentable, and the motion to amend was denied.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “the ‘first sensing circuit’ and the ‘second sensing circuit’ sense power simultaneously,” and further argues “[n]or does Patent Owner present any argument with reference to, e.g., the 459 Patent specification or prosecution history as to why this additional limitation should be read into this claim.” Pet. Reply 23. Petitioner’s reply, however, fails to recognize that Petitioner bears the burden of demonstrating that Mullin anticipates the claim, including providing sufficient evidence and argument in support of its proposed claim interpretation. The Petition fails to provide a sufficient explanation to support that “when both” should be construed in the manner asserted by Petitioner, particularly when the more natural reading of the claim language conveys that two sensing circuits sense power at the same time. Although Petitioner provided a second declaration from Mr. McAlexander in reply to Patent Owner’s response, neither that declaration nor Mr. McAlexander’s first declaration provides sufficient support for how claim 2 would have been understood by a person of ordinary skill to show that it is anticipated by Mullin. See Exs. 1007 and 1011. Because Petitioner failed to persuasively prove that claim 2 requires only that one of two sensors senses power for the motor controller to determine that power is applied to the second input, Petitioner has not shown by a preponderance of the evidence that claim 2 of the ’459 patent is anticipated by Mullin.” slip op. at 14

  • PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, deniedDenied

    “Mot. 15. Patent Owner’s attorney argument, which cites no evidence, does not support the contention that the proposed amended claim would not have been obvious to a person of ordinary skill in the art. Nonobviousness cannot be established by attacking the references individually when unpatentability is predicated upon a combination of prior art disclosures. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Even if each prior art reference is “missing at least two of the required limitations,” that has limited bearing on whether a combination of those references renders the claim obvious. Similarly, Patent Owner provides insufficient support for its implicit argument that one would not combine the references because, individually, they provide a “complete solution” to the problem they intend to address. Where “a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result.” See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). Thus, Patent Owner’s suggestion that there “is no reason one of skill would engage in mixing and matching,” fails to adequately address whether the combination would have been obvious. See Mot. 15.” slip op. at 28

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

    “We agree with Petitioner that, for Mullin to anticipate claim 1, Mullin need not disclose power sensed at COM. See Pet. Reply 19–22. The claim language does not require power to be sensed at any specific location, only that one sensing circuit senses “power applied to” the first and second inputs, and the other senses “power applied to” the second and third inputs. Patent Owner does not direct us to any persuasive disclosure in the ’459 patent to support its contention that claim 1 requires that power be sensed at the second input. See PO Resp. 21–26. Similarly, although Dr. Horenstein states that “the Mullin circuit is incapable of providing unique information that power has been connected to COM,” a point not in dispute, Dr. Horenstein provides only conclusory assertions and no persuasive explanation for why claim 1 would be understood to require such “unique information” for the second input. See Ex. 2001 ¶¶ 56, 63. Moreover, in Mullin, when a sensor detects power at either P2 or P3, power is necessarily applied to COM (neutral) to complete the circuit, even if the sensor does not directly detect power at COM. As Dr. Horenstein explained, “at least two inputs from the source of AC power – generally line and neutral – would have to be connected in order to complete the circuit and enable the flow of power to the motor.” Ex. 2001 ¶ 53. Mr. McAlexander similarly explained that by the very nature of alternating current, “the flow of electric charge periodically reverses direction.” Ex. 1011 ¶ 12. Thus, when alternating current is applied to Mullin’s input P2 and COM it will “be input from the input P2 and return by way of the COM, and at other times it will be input from the COM and return by way of the input P2.” Id. ¶ 13. The same is true of P3 and COM. See id. As shown by Petitioner, Dr. Horenstein confirmed during cross-examination that, when AC power, as referred to in Mullin, is applied to the power input P2 and common input COM as shown above, the opto-isolator ISO1 senses this power and outputs a corresponding signal, [and] when Mullin’s AC power is applied to the power input P3 and common input COM as shown above, the opto-isolator ISO2 senses this power and outputs a corresponding signal. Pet. Reply 22; see also Ex. 1010, 68:24–69:19. Accordingly, the testimony of Mr. McAlexander and Dr. Horenstein supports our determination that Mullin discloses a first sensing circuits that “senses power applied to the first and second inputs” and a second sensing circuit that “senses power applied to the second and third inputs,” as well as a motor controller that is “operable for determining that power is applied to the first input when the first sensing circuit senses power,” as required by claim 1.” slip op. at 11

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

    “Ex. 2001 ¶¶ 104–105. Thus, Dr. Horenstein contends there is a lack of a motivation to combine the references because opto-couplers are simpler and require fewer parts than the current based sensor of Nordby. In KSR, the Supreme Court rejected the Federal Circuit’s rigid application of its “teaching, suggestion, motivation” test in favor of an expansive and flexible approach. 550 U.S. at 415. The Supreme Court noted that often, it will be necessary: to look to interrelated teachings of multiple patents; the effects of demands known to the design community or present in the marketplace; and the background knowledge possessed by a person having ordinary skill in the art, all in order to determine whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue. Id. at 418. Moreover, the Federal Circuit has explained that: an implicit motivation to combine exists not only when a suggestion may be gleaned from the prior art as a whole, but when the “improvement” is technology-independent and the combination of references results in a product or process that is more desirable for example because it is stronger, cheaper, cleaner, faster, lighter, smaller, more durable, or more efficient. Because the desire to enhance commercial opportunities by improving a product or process is universal – and even common-sensical – we have held that there exists in these situations a motivation to combine prior art references even absent any hint of suggestion in the references themselves. In such situations, the proper question is whether the ordinary artisan possesses knowledge and skills rendering him capable of combining the prior art references. Dystar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1368 (Fed. Cir. 2006). In this case, Patent Owner’s contention that there is no motivation to substitute one sensor for another is not supported by anything beyond conclusory statements. Moreover, contrary to the assertion that voltage and current sensors are “not substitutable,” Nordby expressly states that “[v]oltage (potential) sensing may be used, or alternately, current (flow) sensing may be used. Since the sensing scheme is used only to detect the presence or absence of voltage or current on the sensed line and does not require any significant accuracy, the cost of either type of sense circuitry can be made very low.” Ex. 1004, 4:43–48. In light of the evidence that current and voltage sensors were known to be interchangeable, Patent Owner’s contention that there was “no reason one of skill would have sought to replace those voltage based opto-isolator systems with the bulky current transformer and attendant circuitry of Nordby,” is insufficient to demonstrate the combination of references was not obvious. See Mot. 16.” slip op. at 30

  Patent outcomesUS 8,049,459 mixed
  § 102 anticipation§ 103 obviousnesscites KSR
  Patents in suitUS 8,049,459
• Palo Alto Networks, Inc. v. Finjan, Inc.Rehearing denied
  PTAB · May 20, 2016 · IPR2015-02000 · APJ Thomas L Giannetti · IPR · Rehearing

  The Board denied Palo Alto Networks’ rehearing request, leaving in place the denial of institution for claims 1–22 because it showed no overlooked or misapprehended matter.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “A party dissatisfied with a decision may file a single request for rehearing without prior authorization from the Board. The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” slip op. at 2

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

    “least the following reasons. Under our rules a petition must set forth, for each claim challenged, “[h]ow the challenged claim is to be construed.” 37 C.F.R. § 42.104(b)(3). As we pointed out in our Decision, the Petition did not proffer a specific construction for the term “file cache.” Decision 6. Instead, Petitioner proposed the following blanket construction for all terms: “the BRI for every claim term to be its plain and ordinary meaning.” Pet. 12 (footnote omitted). Petitioner provided no further explanation or support for its proposal. Nor does Petitioner provide a construction for “file cache” in the rehearing request, or any explanation why the Board’s construction is incorrect. Thus, while Petitioner contends that the Patent Owner’s construction adopted by the Board is “unsupported by the ʼ731 patent claims, specification, or even any extrinsic evidence,” Petitioner provides no details as to what was allegedly overlooked or misapprehended by the Board. Req. Reh’g 7. Petitioner’s argument is unavailing because it shifts the burden of advancing a claim construction from the petitioner to the Board. The AIA statute is clear that the burden lies with Petitioner to demonstrate a reasonable likelihood of prevailing before an inter partes review is instituted. 35 U.S.C. § 314(a). Consequently, our rules require the petition to set forth a claim construction. See supra. Having failed to present a specific construction for “file cache” in its Petition, or to convince the Board that the term needed no further construction, Petitioner did not discharge its burden and therefore is not in a position to complain now that the Board chose an alternative construction presented by Patent Owner.” slip op. at 3

  • Strike new argumentNew argument disregardedDecided for patent owner

    “This argument could not have been overlooked or misapprehended because it was not presented in the Petition. The Petition’s argument on this issue was one paragraph long and raised two points. Pet. 12. First, Petitioner asserted that neither the parent nor grandparent applications disclosed a file cache because “the word ‘cache’ does not appear in either application.” Id. The second argument was that Patent Owner “tacitly admitted during prosecution” that the challenged claims were not entitled to the earlier date. Id. Both arguments were addressed by the Board in the Decision on Institution, at pages 11–13. The rehearing request cites no discussion in the Petition of the current assertion that the known Downloadables are lists. Moreover, the evidence relied on by Patent Owner to support this argument does not contradict the Board’s finding that the ’194 patent described a file cache. Patent Owner relies on the ʼ194 patent itself, which states: “A Downloadable is an executable application program, which is downloaded from a source computer and run on the destination computer.” Ex. 2001, col. 1, ll. 44–47. Thus, Petitioner’s argument that a “known Downloadable” is just a list and not a file is not supported by the ʼ194 patent. A rehearing request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed. See supra. It is not an opportunity to present new arguments. Petitioner’s argument that known Downloadables are lists was not raised by in the Petition and is not proper in a rehearing request.” slip op. at 6

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedDecided for patent owner

    “because it was not presented in the Petition. The Petition’s argument on this issue was one paragraph long and raised two points. Pet. 12. First, Petitioner asserted that neither the parent nor grandparent applications disclosed a file cache because “the word ‘cache’ does not appear in either application.” Id. The second argument was that Patent Owner “tacitly admitted during prosecution” that the challenged claims were not entitled to the earlier date. Id. Both arguments were addressed by the Board in the Decision on Institution, at pages 11–13. The rehearing request cites no discussion in the Petition of the current assertion that the known Downloadables are lists. Moreover, the evidence relied on by Patent Owner to support this argument does not contradict the Board’s finding that the ’194 patent described a file cache. Patent Owner relies on the ʼ194 patent itself, which states: “A Downloadable is an executable application program, which is downloaded from a source computer and run on the destination computer.” Ex. 2001, col. 1, ll. 44–47. Thus, Petitioner’s argument that a “known Downloadable” is just a list and not a file is not supported by the ʼ194 patent.” slip op. at 6

  Claim construction§ 102 anticipation
  Patents in suitUS 7,418,731
• Zhongshan Broad Ocean Motor Co., Ltd. / Broad Ocean Motor LLC et al. v. Nidec Motor CorporationAll claims unpatentable
  PTAB · May 9, 2016 · IPR2014-01121 · APJ Patrick M Boucher · IPR · Final written decision

  Claims 1–3, 8, 9, 12, 16, and 19 are unpatentable as obvious over Bessler and Kocybik and anticipated by Hideji; the motion to amend is denied.

  RulingsFinal written decision

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

    “Generally, . . . the preamble does not limit the claims.” DeGeorge v. Bernier, 768 F.2d 1318, 1322 n.3 (Fed. Cir. 1985). In particular, “[t]he preamble of a claim does not limit the scope of the claim when it merely states a purpose or intended use of the invention.” In re Paulsen, 30 F.3d 1475, 1479 (Fed. Cir. 1994) (citing DeGeorge, 768 F.2d at 1322 n.3). In this instance, the “HVAC system” portions of the preambles of the challenged claims provide no antecedents for ensuing claim terms, with the bodies of the claims neither repeating nor referencing HVAC systems. Because the language in the bodies of the claims, standing alone, is sufficient to set forth the invention, the “HVAC system” portions merely provide a stated purpose for the invention. Accordingly, we find no slip op. at 10

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

    “2. “using independent values of Q and d axis currents” In the Institution Decisions, the Board construed “using independent values of Q and d axis currents,” which is recited in independent claims 1, 16, and 19, as requiring the use of Q and d axis current values that are developed independently of each other, without relying on one to derive the other. Paper 20, 7–8; IPR2015-00762, Paper 12, 6–7. Patent Owner does not explicitly contest this construction, and advocated for this construction in its Preliminary Responses. Paper 14, 9–10; IPR2015-00762, Paper 10, 19. But Patent Owner presents arguments that implicitly construe the phrase as requiring the use of independent demand Q and d axis currents, rather than the use of independent actual Q and d axis currents. See Paper 72, 6, 8.” slip op. at 11

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

    “3. “back-emf . . . motor” In the Institution Decisions, the Board construed “back-emf . . . motor,” which is recited in claim 9, as coterminous with “permanent magnet motor.” Paper 20, 7–8; IPR2015-00762, Paper 12, 6–7. Neither party contests that construction and we adopt it for this Final Written Decision.” slip op. at 12

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

    “survey of electric motor control schemes for permanent magnet motors,8 for disclosure of sinewave commutation using vector control with independent Q and d axes to produce continuous phase currents. Id. at 43–46 (citing Ex. 1007, 11–12, 17, 37, 40, 80, 86, 140, 144, Fig. 6.3, Fig. 6.10, Figs. 7.13– 7.14, Fig. 9.1). We agree with Petitioner’s analysis as to how Bessler and Kocybik teach the limitations of claims 1, 16, and 19, which is supported by the testimony of Dr. Ehsani. See Ex. 1009 ¶¶ 47–55. Indeed, Patent Owner does not dispute that Kocybik teaches sinewave commutation using vector control with independent Q and d axes to produce continuous phase currents. Furthermore, Petitioner has provided adequate reasoning why a person of ordinary skill in the art would have effected the combination proposed (i.e., configuring the system of Bessler to perform sinewave commutation in the manner described in Kocybik), namely that the use of sinewave commutation and independent Q and d axis currents would have provided predictable results to address known problems associated with other types of motors. Pet. 1121, 36–37 (citing KSR Int’l Co. v. Teleflex Inc., 550 U.S. 415–421 (2007)). In particular, Petitioner reasons persuasively that “using 8 Patent Owner does not dispute Petitioner’s assertion that Kocybik qualifies as a prior art printed publication under 35 U.S.C. § 102(b). See Pet. 1121, 4; Paper 30, 3 (“Kocybik describes high end applications at the time of its publication”), 25 (“Kocybik references higher end applications at the time of its publication”); Paper 21, 3 (“The patent owner is cautioned that any arguments for patentability not raised in the response will be deemed waived.”); Paper 70, 3 (same). 18 rectangular currents creates unwanted torque, and the use of sinusoidal currents can reduce unwanted torque and create smoother and quieter motor operation.” Id. at 37 (citing Ex. 1007, 25; Ex. 1009 ¶ 52). We are not persuaded by Patent Owner’s counterarguments. First, Patent Owner contends that Bessler teaches away from the claimed combinations because “one of the principal objects of Bessler is to eliminate the need for a system controller in an HVAC system,” and that a benefit of such elimination is a reduction in the number of microprocessors used. Paper 30, 15–16 (citing Ex. 1006, col. 1, ll. 22–34, col. 2, ll. 3–5). Patent Owner observes that Bessler “provides an integral microprocessor in its motor controller that can interpret, for example, the cycling of the on/off signal of the thermostat and directly create motor control signals without the need of a system controller developing interim system demand signals.” Id. at 19–20 (citing Ex. 1006, col. 5, l. 66–col. 6, l. 22). Like Bessler, the Specification of the ’349 patent describes that the “system controller” may be a thermostat or a separate controller : “the system controller 402 may be a thermostat, an additional control module in communication with a thermostat, or a standalone controller for the HVAC system 400.” Ex. 1001, col. 4, ll. 35–38 (emphasis added). Thus, the claims do not require a separate standalone system controller. For these reasons, Patent Owner’s teaching away arguments are not commensurate in scope with the claim language. 19 Second, Patent Owner contends that Kocybik is applied too expansively by Petitioner because Kocybik limits its disclosure to “higher end applications” like hybrid car engines, the aerospace industry, and high-accuracy machine tooling applications: “To be sure, Kocybik discusses motor control schemes including that sine wave commutation may be used with a [brushless permanent magnet] motor, but Kocybik does not discuss HVAC systems or the motors used in them.” Paper 30, 25–27. Patent Owner argues that only through hindsight reconstruction would one apply the teachings of Kocybik to Bessler because common sense in the industry cautioned against using more complex technology in HVAC systems.9 Id. at 27. But Patent Owner’s argument does not effectively rebut the testimony of Dr. Ehsani that a person of ordinary skill in the art “would have recognized that a permanent magnet motor using sinusoidal commutation, such as is disclosed in Kocybik, could result in a motor that exhibits less unwanted ripple torque and, in turn, smoother output torque.” Ex. 1009 ¶ 52 (citing Ex. 1007, 25.” slip op. at 18

  Patent outcomesUS 7,626,349 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 7,626,349
• Securus Technologies, Inc. v. Global Tel*link CorporationAll claims unpatentable
  PTAB · Apr 29, 2016 · IPR2015-00156 · APJ Beverly M Bunting · IPR · Final written decision

  Claims 1–8 and 11–27 are unpatentable as anticipated by Rae under pre-AIA 35 U.S.C. § 102(e).

  RulingsFinal written decision

  • Skill levelOther

    “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) (citing Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986)). There is evidence in the record before us that reflects the knowledge level of a person with ordinary skill in the art. Petitioner’s expert witness, Dr. Akl, attests that a person with ordinary skill in the art in the relevant time frame would be an individual who possesses a combination of experience and education in the field of telecommunications, including “data storage, data transmission and analog/digital signal processing.” Ex. 1003 ¶ 46. According to Dr. Akl, this would consist of the following: (1) a minimum of a Bachelor’s Degree in electrical engineering, computer engineering or the equivalent; and (2) 2 or more years of industry or academic experience in the relevant field. Id. Petitioner’s rebuttal witness, Dr. Forys, offers testimony as to the knowledge level of a person with ordinary skill in the art at the relevant time frame that is essentially the same as Dr. Akl’s assessment. Ex. 2010 ¶ 29. Additionally, we note that the prior art of record in this proceeding— namely, Rae—is indicative of the level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); GPAC, 57 F.3d at 1579; In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 7

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

    “arguments and evidence concerning the construction of “streaming converter.” We first look to the full phrase that includes this claim term, namely, “a streaming converter coupled to said storage device.” The claim language informs us of the connection between the “streaming converter” and the storage device, i.e., “coupled,” and is not concerned necessarily with the format of the data, i.e. compressed. Patent Owner’s arguments, however, seemingly interpret “streaming converter” in the context of the data, without consideration of the entire claim phrase. Patent Owner does not direct us to, nor do we discern, language in the claim itself requiring the data be compressed. As for the portions of the specification identified by Patent Owner, all refer to the function performed by the streaming converter, namely to convert the compressed conversation data into a streaming format. Although the cited passages describe the voice data themselves as “compressed,” Patent Owner does not direct us to, nor can we find, disclosure in the specification necessarily limiting the voice data to a particular format for transmission, such as a compressed format. Indeed, our review of the specification reveals that: the present technology provides an Integrated Access Device (IAD) 30 wherein voice signals are converted to a digital format and routed by way of a wide area network (WAN) transport mechanism to the central data center 110 for storage. IAD 30 may be embodied as a device more commonly known as a Voice over Internet Protocol (VoIP) Gateway. It is to be specifically understood, however, that the present technology does not require specific devices or systems for implementation but rather is more broadly directed to the inclusion of devices and systems designed to convert analog voice signals into a digital format suitable for transmission over a digital network.” slip op. at 10

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITANo construction neededDecided for petitioner

    “dictionary definition of “Boolean search” does not support Patent Owner’s assertion that one of skill in the art would understand “logical search” to mean “Boolean search.” Reply 5–6. We agree. The proffered extrinsic evidence does not inform us sufficiently that one of skill in the art in the relevant time frame would equate a logical search with a Boolean search. Moreover, Patent Owner does not direct us to, nor can we find, any disclosure in the specification that supports Patent Owner’s proposed definition. Indeed, “logical search” is recited only in claims 16 and 17. We are not persuaded by Patent Owner’s arguments and evidence that the plain and ordinary meaning of “logical search” is a Boolean search. Nevertheless, the parties seemingly agree that a “logical search” is understood by one of skill in the communications field. PO Resp. 9; Reply 5; See Tr. 119:21–23 (“logical search was a well-known term”). Therefore, based on the record before us, we conclude the claim term “logical search” need not be construed expressly for purposes of this decision. 4. “file”” slip op. at 12

  • Expert testimonyPetitioner expert creditedPatent owner expert creditedMixed

    “We have reviewed the expert testimony from both sides, and find that both experts have, at times, taken liberties in proffering conclusory statements without real analysis.4 As such, it is within our discretion to assign the appropriate weight to the testimony of both Dr. Akl and Dr. Forys. See, e.g., Yorkey v. Diab, 601 F.3d 1279, 1284 (Fed. Cir. 2010) (holding the Board has discretion to give more weight to one item of evidence over another “unless no reasonable trier of fact could have done so”); In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) 4 Under our rules, expert testimony that does not have a proper basis is entitled to little or no weight. 37 C.F.R. § 42.65(a). (“[T]he Board is entitled to weigh the declarations and conclude that the lack of factual corroboration warrants discounting the opinions expressed in the declarations.”). We are not persuaded by Patent Owner’s contentions that Dr. Akl’s testimony be disregarded. Thus, we accord the testimony of both Dr. Akl and Dr. Forys the appropriate weight in view of the arguments and evidence of record in this trial. 2. Overview of Rae (Ex. 1002)” slip op. at 16

  Patent outcomesUS 7,551,732 unpatentable
  Claim construction§ 102 anticipation
  Patents in suitUS 7,551,732
• Palo Alto Networks, Inc. v. Finjan, Inc.Institution denied
  PTAB · Mar 23, 2016 · IPR2015-02000 · APJ Thomas L Giannetti · IPR · Institution

  Institution was denied for claims 1–22 because the claims were entitled to the November 6, 1997 priority date, so the asserted references were not prior art.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “B. The Applicable Legal Standard Under 35 U.S.C. § 120 Under 35 U.S.C § 120, to claim the benefit of the filing date from an earlier application, each application in the chain leading back to the earlier application must comply with the written description requirement of 35 U.S.C. § 112. Zenon Envtl., Inc. v. U.S. Filter Corp., 506 F.3d 1370, 1378 (Fed. Cir. 2007); see also In re Hogan, 559 F.2d 595, 609 (CCPA 1977) (“[T]here has to be a continuous chain of co-pending applications each of which satisfies the requirements of § 112 with respect to the subject matter presently claimed.”). If any application in the priority chain fails to include the requisite disclosure, the later-filed application is not entitled to the benefit of the filing date of applications preceding the break in the priority chain. Lockwood v. Am. Airlines Inc., 107 F.3d 1565, 1571–72 (Fed. Cir. 1997).” slip op. at 10

  • Disclosure Requirements (§112) › Written description (Ariad)Written description adequateEntitled to earlier dateDecided for patent owner

    “the ʼ194 or ʼ780 patents. Pet. 12. However, as Patent Owner points out, that is not the proper test. Prelim. Resp. 13–14. The claimed subject matter need not be described “in haec verba” in the original specification in order to satisfy the written description requirement. In re Wright, 866 F.2d 422, 425 (Fed. Cir. 1989). Rather, “the test . . . is whether a person of ordinary skill in the art would recognize that the applicant possessed what is claimed in the later filed application as of the filing date of the earlier filed application.” Noelle v. Lederman, 355 F.3d 1343, 1348 (Fed. Cir. 2004). We are persuaded that, on the record presented, this test has been met. We are persuaded that the disclosure in the ʼ194 patent of a security database storing “known Downloadables” provides written description support for the file cache recitation in the ʼ731 patent claims. Prelim. Resp. 17–19. Petitioner does not dispute that known Downloadables are files. Pet. 26 (“Touboul discloses generating and using a Downloadable ID (file identifier) to identify each Downloadable (file).”). Moreover, Petitioner specifically refers to components of the security database as caches: “Claim 1 [of the ʼ731 patent] is the obvious combination of a cache such as the cache taught by Tso with the scanner, security profile cache, and security policy cache in Touboul’s gateway as detailed below.” Pet. 20 (emphasis added). We see no basis to distinguish these descriptions of caches from the storage of Downloadables in the security database. Moreover, we are persuaded that a security database providing temporary storage of known Downloadables meets the requirements of a cache as “a memory for holding a file, at least temporarily.” See supra.” slip op. at 11

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedDecided for patent owner

    “E. Conclusion We agree with Patent Owner that the ʼ731 patent claims are entitled to the benefit of the grandparent application filed on November 6, 1997. Accordingly, Touboul and the other art asserted by Petitioner does not qualify as prior art to the ʼ731 patent under 35 U.S.C. § 102(b), as asserted by Petitioner.” slip op. at 13

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “We are not persuaded, either, by Petitioner’s position, unsupported by any citation of authority, that Patent Owner’s decision not to claim the benefit of the earlier filing date during prosecution of the ʼ731 patent is an admission. Nor are we persuaded by the conclusory testimony of Petitioner’s expert on the filing date issue. See Rubin Decl. ¶ 69. Under our rules, expert testimony that does not have a proper basis is entitled to little or no weight. 37 C.F.R. § 42.65(a).” slip op. at 13

  § 102 anticipation§ 112 disclosure
  Patents in suitUS 7,418,731
• Broad Ocean Technologies, LLC v. Nidec Motor CorporationRehearing denied
  PTAB · Mar 7, 2016 · IPR2015-01617 · APJ Patrick M Boucher · IPR · Rehearing

  The Board denied rehearing, leaving claims 1–6 uninstituted because Beifus did not disclose adjusting all motor torque settings with the adjustment factor.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “On rehearing, the burden of showing that the Decision should be modified lies with Petitioner, the party challenging the Decision. 37 C.F.R. § 42.71(d). “The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id.” slip op. at 2

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

    “diamonds and squares) of an induction-motor speed-torque curve that may be stored within the memory of an electrically commutated motor (“ECM”) circuit, including breakdown speed, no-load or synchronous speed, and a “shape description number” used in calculating new torque demands. Ex. 1007 ¶ 36. The drawing illustrates scaling of the torque by a factor less than one between a breakdown speed of 1050 RPM and a no-load speed of 1200 RPM, with no scaling at speeds less than the breakdown speed. Id. That is, when Beifus adjusts torque settings at any particular operating speed that is between the breakdown speed and the no-load speed, the same adjustment factor is applied; consequently, torque settings of the motor are adjusted “with the adjustment factor to obtain proportionally reduced torque settings,” as recited in independent claim 1.” slip op. at 4

  • BurdenDecided for patent owner

    “On rehearing, the burden of showing that the Decision should be modified lies with Petitioner, the party challenging the Decision. 37 C.F.R. § 42.71(d). “The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id.” slip op. at 2

  § 102 anticipation
  Patents in suitUS 7,990,092

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.