• Google LLC v. Uniloc 2017 LLCAll claims unpatentable
  PTAB · Oct 12, 2021 · IPR2020-00756 · APJ Michael R Zecher · IPR · Final written decision

  Claims 9–12 are unpatentable under § 103(a) as obvious over Paulson and Surprenant; additional grounds combine those references with Beenau and, for claim 11, McConnell.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “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). Relying on the testimony of Mr. Lipoff, Google provides the following assessment of the level of skill in the art: A person of ordinary skill at the time of the alleged invention of the ’952 patent would have held at least a bachelor’s degree in electrical engineering or computer science and had one year of relevant experience in the field of wireless communications. Less work experience may be compensated by a higher level of education, such as a master’s degree, and vice versa. Pet. 8–9 (citation omitted) (citing Ex. 1003 ¶¶ 33–35). Uniloc argues that Google’s proposed assessment is improper because it does not define thresholds for “[l]ess work experience” or “higher level of education.” PO Resp. 6 (alteration in original). Uniloc, however, does not offer its own 4 In its Patent Owner Response, Uniloc does not present arguments or evidence of secondary considerations. See PO Resp. assessment of the level of skill in the art, much less indicate that the resolution of any issue depends on a specific type of work experience or a specific level of education. See id. We, therefore, adopt Google’s proposed assessment of the level of skill in the art and apply it to our obviousness analysis below because it is consistent with the ’952 patent and the asserted prior art.” slip op. at 11

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “a person of ordinary skill in the art would have recognized these frequencies to be within the scope of a “plurality of predetermined frequencies” because the frequencies are set initially, before communication takes place, and are based on the capabilities of the communicating devices [(i.e., the transmit device and the receive device)], which are known in advance in at least one disclosed embodiment. Ex. 1003 ¶ 68 (citing Ex. 1005, 13:23–26). In his Declaration accompanying the Reply Brief, Mr. Lipoff clarifies how the “initially determined” frequencies at step 402 preset the range of frequencies discussed in the context of steps 404 and 406 by testifying that, “[t]o achieve [Paulson’s] goal of reducing the probability of interference from noise, one of ordinary skill [in the art] would have understood that it is essential for the noise characteristic created at Step 404 to cover at least the frequencies initially set in Step 402.” Ex. 1027 ¶ 11. Mr. Lipoff further clarifies that “[o]ne of ordinary skill [in the art] would have understood that the phrase ‘initially determined,’ in conjunction with Paulson’s disclosure about further refining the available frequencies in light of the noise characteristic in the surrounding environment, conveys that the range of frequencies identified at Step 402 is related to the later steps in Paulson’s process,” specifically steps 404 and 406. Id. ¶ 19. We credit the aforementioned testimony of Mr. Lipoff because it takes into account the reasonable inferences a person of ordinary skill the art would draw to explain how Paulson’s “initially determined” frequencies at step 402 preset the range of frequencies that are further refined based on the noise characteristic in the surrounding environment at steps 404 and 406. See KSR, 550 U.S. at 418 (An obviousness evaluation “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.”).” slip op. at 30

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

    “Owner Response, Uniloc provides a table listing the parties’ proposed constructions in the district court case, but does not argue that any particular claim term requires construction for purposes of this Final Written Decision. See PO Resp. 6–8. After considering the fully developed trial record, the issues raised by the parties do not turn on the construction of a particular claim term. As a result, we need not construe any claim term for purposes of determining whether Google has demonstrated by a preponderance of the evidence that claims 9–12 of the ’952 are unpatentable as obvious under § 103(a). See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). In our obviousness analysis below, we address the scope and meaning of the claim term “non-user-configurable data,” as this term pertains to the teachings of Surprenant contested by the parties. See infra Section II.B.5.c. More specifically, we address below whether Surprenant’s acoustics modulation protocol identification (“AMP ID”), which is described as being a “unique identification string” specific to “transmit device 101,” teaches or suggests the claim term “non-user-configurable data” as that term is used in the context of the ’952 patent. See infra id. B. Obviousness Over the Combined Teachings of Paulson and Surprenant” slip op. at 9

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

    “At the outset, we note that Uniloc advocates—and Google does not dispute—that the claim term “non-user-configurable data” should be construed in accordance with its plain and ordinary meaning—namely, data that is not configurable by a user. See PO Sur-reply 10 (arguing that “non- user-configurable data . . . must be data that is not configurable by the user”); Tr. 31:13–17, 32:21–23 (arguing the same). Instead, the parties’ dispute appears to turn on what types of data amount to data that is not configurable by a user. The specification of the ’952 patent provides important guidance in this respect because it discloses that “[n]on-user-configurable data includes data such as hardware component model numbers, serial numbers, and version numbers, and hardware component parameters such as processor speed, voltage, current signaling, and clock specifications.” Ex. 1001, 6:37–41 (emphasis added). Dependent claim 8 of the ’952 patent, which was not challenged in this proceeding, further limits “non-user-configurable data” to only “hardware component numbers, serial numbers, and version numbers.” Id. at 14:50–52. In contrast, independent claim 9 is broader in scope because it does not limit “non-user-configurable data” to any specific type of data and, therefore, encompasses all the examples from the specification identified above. With this in mind, we turn to Google’s reliance on Surprenant’s AMP ID to teach the “non-user-configurable data,” as recited in independent claim 9. Based on the fully developed trial record, we agree with Google that Surprenant’s AMP ID teaches the “non-user-configurable data” because it discloses that it is a “unique identification string” specific to “transmit device 101.” Pet. 45 (quoting Ex. 1006, 7:45–49). Although Surprenant does not provide further clarification as to what might qualify as a “unique identification string,” Mr. Lipoff provides testimony accompanying the Petition that explains the following: “[b]ecause the AMP ID is disclosed as a ‘unique identification string’ specific to a transmit device, one of ordinary skill [in the art] would have understood it to be derived from a unique property of the device itself that is not user-configurable.” Ex. 1003 ¶ 107. As just one example, Mr. Lipoff testifies that it would have been obvious to a person of ordinary skill in the art for Surprenant’s AMP ID “to take the form of . . . the device’s serial number,” because it is a “unique identification string” that is nothing more than “data [that] helps uniquely identify the transmit device.” Id. ¶ 109. We credit the aforementioned testimony of Mr. Lipoff because it is consistent with Surprenant’s disclosure that the AMP ID is a “unique identification string” specific to “transmit device 101,” and his testimony also is consistent with the examples of “non-user-configurable data” set forth in the specification of the ’952 patent.” slip op. at 43

  Patent outcomesUS 9,564,952 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 9,564,952
• Clearone, Inc. v. Shure Acquisition Holdings, Inc.Some claims unpatentable
  PTAB · Aug 14, 2020 · IPR2019-00683 · APJ Christa P Zado · IPR · Final written decision

  Claims 1–5, 7–33, and 35–40 are unpatentable; claims 6 and 34 were not shown unpatentable. The motion to amend was granted for substitute claims 57–67.

  RulingsFinal written decision

  • ExcludeMotion to exclude, deniedMixed

    “establish that it is entitled to the relief requested—namely, that the material sought to be excluded is inadmissible under the Federal Rules of Evidence. See 37 C.F.R. §§ 42.20(c), 42.62(a). For the reasons discussed below, Petitioner’s Motion is dismissed as moot, and Patent Owner’s Motion is denied-in-part and dismissed-in-part.” slip op. at 10

  • Skill levelOther

    “C. Level of Ordinary Skill in the Art To establish the level of ordinary skill in the art, we look to various” slip op. at 19

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

    “For the foregoing reasons, we determine the term “rotationally offset” slip op. at 23

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

    “date it becomes publicly accessible. In re Hall, 781 F.2d 897, 899 (Fed. Cir. 1986). “Whether a reference qualifies as a printed publication under § 102 is a legal conclusion based on underlying fact findings.” Acceleration Bay, LLC v. Activision Blizzard Inc., 908 F.3d 765, 772 (Fed. Cir. 2018). “A reference is considered publicly accessible if it was ‘disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art, exercising reasonable diligence, can locate it.’” Id.” slip op. at 24

  Patent outcomesUS 9,565,493 mixed
  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · Graham
  Patents in suitUS 9,565,493
• Toshiba America Information Systems, Inc. / Msi Computer Corp. v. Walletex Microelectronics Ltd.All claims unpatentable
  PTAB · Feb 26, 2020 · IPR2018-01538 · APJ Scott B Howard · IPR · Final written decision

  Claims 1–24 are unpatentable based on the listed anticipation and obviousness grounds; the Patent Owner’s contingent motion to amend is denied.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art” slip op. at 10

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

    “7. Conclusion on Motion to Amend For the reasons discussed above, Patent Owner has not established that proposed substitute claims 26, 29, 31, and 34 are supported by the original disclosure of the ’825 patent. Additionally, Petitioner has shown by a preponderance of the evidence that proposed substitute claims 25–27, 29, 30, and 32–48 are indefinite and proposed substitute claims 28 and 30 are not enabled. Accordingly, Patent Owner’s Conditional Motion to Amend is denied.31 CONCLUSION32 In summary: 31 In light of the dispositive nature of these determinations, we do not reach the other issues raised by Patent Owner’s Motion to Amend, including the additional arguments Petitioner presents as to why the Motion to Amend should be denied. No implications, especially regarding the merits, should be drawn from our failure to decide these issues. The only reason we do not decide these issues is because it is unnecessary for us to do so. See Beloit Corp. v. Valmet Oy, 742 F.2d 1421, 1423 (Fed. Cir. 1984) (explaining that an administrative agency is at liberty to reach a decision based on a dispositive issue because doing so “can not only save the parties, the [agency], and [the reviewing] court unnecessary cost and effort,” but can “greatly ease the burden on [an agency] faced with a . . . proceeding involving numerous complex issues and required by statute to reach its conclusion within rigid time limits”). 32 Should Patent Owner wish to pursue amendment of the challenged claims in a reissue or reexamination proceeding subsequent to the issuance of this Final Written Decision, we draw Patent Owner’s attention to the April 2019 Notice Regarding Options for Amendments by Patent Owner Through Reissue or Reexamination During a Pending AIA Trial Proceeding. See 84 Fed. Reg. 16,654 (Apr. 22, 2019). If Patent Owner chooses to file a reissue application or a request for reexamination of the challenged patent, we remind Patent Owner of its continuing obligation to notify the Board of any such related matters in updated mandatory notices. See 37 C.F.R. § 42.8(a)(3), (b)(2).” slip op. at 85

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

    “2. Analysis of Claim 1 (Anticipation) For the most part Patent Owner does not dispute that Harkabi” slip op. at 24

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

    “A conclusion of unpatentability based on obviousness must be supported by “some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), cited with approval in KSR, 550 U.S. at 418. The requirement for a reason to combine the references acts as a check on the potential for the improper use of hindsight. Plantronics, Inc. v. Aliph, Inc., 724 F.3d 1343, 1354 (Fed. Cir. 2013) (holding that an articulated reasoning “is especially important to guard against the dangers of hindsight bias”).” slip op. at 40

  Patent outcomesUS 7,458,825 unpatentable
  § 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,458,825
• Intel Corporation v. Hera Wireless S.A.Other
  PTAB · Feb 3, 2020 · IPR2018-01373 · APJ Michael R Zecher · IPR · Final written decision

  The Board granted cancellation of claims 1–9 and denied substitution of claims 10–12 because Wallace anticipated and rendered the substitute claims obvious.

  RulingsFinal written decision

  • PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend granted in partGranted in part

    “need.” 37 C.F.R. § 42.121(a)(3) (2018). Patent Owner proposes three substitute claims—one for each of cancelled independent claims 1, 4, and 7. Mot. to Amend 1, Claims App’x. We determine that the number of proposed substitute claims is reasonable under 35 U.S.C. § 316(d)(1)(B) and 37 C.F.R. § 42.121(a)(3).” slip op. at 9

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “Apart from Dr. Sharony’s assessment requiring a Bachelor of Science degree in Electrical Engineering or an equivalent degree and Dr. Wicker’s assessment requiring a Master’s degree in Electrical Engineering, we do not discern a material difference between the assessments advanced by the declarants. In any event, each party’s declarant appears to meet or exceed both parties’ assessments (see Ex. 1002 ¶¶ 3–24, App’x A; Ex. 2016 ¶¶ 11– 19), and either assessment of the level of skill in the art is consistent with the ’851 patent and the prior art of record. We, therefore, adopt Dr. Sharony’s assessment and apply it to our anticipation and obviousness evaluations below, but we note that our conclusions would remain the same under Dr. Wicker’s assessment.” slip op. at 16

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

    “Patent Owner contends that “[t]he meanings of any new limitations (e.g., ‘maximum number of spatial paths’ or ‘request to establish a link channel’)—taken as a whole—are discernable from their context and would be readily understood by those of ordinary skill in the art.” Mot. to Amend 12 (citing Ex. 2016 ¶ 16). In its Opposition, Petitioner does not contend that any claim term requires an explicit construction to determine whether the prior art of record anticipates or renders obvious proposed substitute claims 10–12. See generally Opp. 1–30. In the course of our discussion of the merits of Petitioner’s opposition, we address the scope of proposed substitute claims 10–12 in applying them to Wallace.” slip op. at 17

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

    “Based on the record developed during trial, we find that Wallace discloses or reasonably suggests antenna number information that sets the maximum number of spatial paths that a terminal can form. Accordingly, Wallace accounts for “a value indicating the maximum number of spatial paths formable by said communication unit for multiplex communication,” as recited in proposed substitute claim 11.” slip op. at 37

  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,934,851
• Procon Analytics, LLC v. Spireon, Inc.Institution denied
  PTAB · Nov 22, 2019 · PGR2019-00051 · APJ John P Pinkerton · PGR · Institution

  The Board denied institution of PGR on claims 1–14 because the Petition did not show it was more likely than not that any challenged claim was unpatentable.

  RulingsInstitution decision

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

    “element in a claim, arranged as recited in the claim, must be found in a single prior art reference. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008); Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001). Each element of the challenged claim must be found, either expressly or inherently, in the single prior art reference. Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). While the elements must be arranged or combined in the same way as in the claim, “the reference need not satisfy an ipsissimis verbis test,” i.e., identity of terminology is not required. In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009); In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). Thus, the dispositive question is whether one skilled in the art would have reasonably understood or inferred from a prior art reference that every claim element is disclosed in that reference. Eli Lilly v. Los Angeles Biomedical Research Inst. at Harbor–UCLA Med. Ctr., 849 F.3d 1073, 1074–75 (Fed. Cir. 2017).” slip op. at 17

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable

    “A patent claim “is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.” KSR, 550 U.S. at 418. An obviousness determination requires finding “both ‘that a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation of success in doing so.’” Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1367– 68 (Fed. Cir. 2016) (citation omitted); see KSR, 550 U.S. at 418 (for an obviousness analysis, “it can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does”). Further, an assertion of obviousness “cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” KSR, 550 U.S. at 418 (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)); see In re Nuvasive, Inc., 842 F.3d 1376, 1383 (Fed. Cir. 2016) (a finding of a motivation to combine “must be supported by a ‘reasoned explanation’” (citation omitted)).” slip op. at 18

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “element in a claim, arranged as recited in the claim, must be found in a single prior art reference. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008); Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001). Each element of the challenged claim must be found, either expressly or inherently, in the single prior art reference. Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). While the elements must be arranged or combined in the same way as in the claim, “the reference need not satisfy an ipsissimis verbis test,” i.e., identity of terminology is not required. In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009); In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). Thus, the dispositive question is whether one skilled in the art would have reasonably understood or inferred from a prior art reference that every claim element is disclosed in that reference. Eli Lilly v. Los Angeles Biomedical Research Inst. at Harbor–UCLA Med. Ctr., 849 F.3d 1073, 1074–75 (Fed. Cir. 2017).” slip op. at 17

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “is conclusory and not supported by the evidence. Prelim. Resp. 32, 37–40. Petitioner’s argument relies on Dr. Wilhelm’s testimony, Jefferies, and the knowledge of a person of ordinary skill in the art. See Pet. 28. Dr. Wilhelm testifies that “[c]onventional vehicle inventory management systems associate information with a particular identifier; the systems are agnostic as to whether that identifier represents a financial institution or dealer.” Ex. 1029 ¶ 73. Based on this testimony, Petitioner argues “it does not matter whether that identifier represents a bank or dealer.” Pet. 28. Petitioner then argues Jefferies teaches that a location device may be marked as “available/in inventory” to be associated with a vehicle. Id. Finally, Petitioner argues that, in view of these teachings, a person of ordinary skill “would have sought to manage various types of vehicle inventories for several types of owners, including dealers.” Id. As stated, we agree with Patent Owner that Petitioner’s argument that the “ownership” requirement would have been obvious is conclusory and not supported by the evidence of record. Initially, we note that Dr. Wilhelm’s testimony concerning conventional vehicle inventory management systems is conclusory and unsupported by factual evidence. Thus, we give little, if any, weight to Dr. Wilhelm’s opinion testimony that such systems are “agnostic” to whether equipment identifiers are associated with lending institutions or auto dealers. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); see also In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) (noting that “the Board is entitled to weigh the declarations and conclude that the lack of factual corroboration warrants discounting the opinions expressed in the declarations”). In any event, Dr. Wilhelm’s testimony adds nothing in this regard because, as discussed supra, Boling discloses equipment identifiers, such as UINs, are associated with the ID number of banks and auto dealers. See Ex. 1005, 6:22–26; 6:29–33.” slip op. at 26

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,089,598
• Comcast Cable Communications, LLC v. Rovi Guides, Inc.All claims unpatentable
  PTAB · Oct 16, 2018 · IPR2017-01048 · APJ Kevin F Turner · IPR · Final written decision

  Claims 1–18 are unpatentable: claims 1, 3–10, and 12–18 as obvious over Humpleman and Killian; claims 2 and 11 as obvious over Humpleman, Killian, and Lawler.

  RulingsFinal written decision

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

    “functionality of an “interactive television program guide” (i.e., navigable, selectable, and capable of controlling certain functions or settings), neither party directs us to, nor can we find, a disclosure in the specification that specifically identifies what element or elements constitute a “guide.” Given the lack of disclosure in this regard, we decline to limit the “guide” to a single software application. Rather, these disclosures support Comcast’s proposed construction that an “interactive television program guide” is “control software operative at least in part to generate a display of television program listings and allow a user to navigate through the listings, make selections, and control functions of the software.” We further clarify that, based on the plain language of independent claims 1 and 10, they indicate that the claim terms “local interactive television program guide” and “remote access interactive television program guide” are separately identifiable elements. See Becton, Dickinson & Co. v. Tyco Healthcare Grp., LP, 616 F.3d 1249, 1254 (Fed. Cir. 2010) (“Where a claim lists elements separately, ‘the clear implication of the claim language’ is that those elements are ‘distinct component[s]’ of the patented invention.” (alteration in original) (quoting Gaus v. Conair Corp., 363 F.3d 1284, 1288 (Fed. Cir. 2004))). Our determination in this regard is supported by the specification, which includes various embodiments that treat these claim terms as separately identifiable elements capable of communicating with each other. See, e.g., Ex. 1001, 15:20–23 (“In still another suitable approach, the [local interactive television program guide and remote access interactive television program guide] may be different guides that communicate in a manner or manners discussed . . . herein.”), 23:4–7 (“The remote access [interactive television] program guide may . . . send audio, graphical, and text messages to the local interactive [television] program guide for playing or display by user television equipment 22.”). The specification also explains that the “local interactive television program guide” and “remote access interactive television program guide” may be the same guide, in which case they are separately identifiable elements in that each guide is compiled to run on a different platform. See id. at 15:15–18 (“The remote access and local guide may, for example, be the same guide but compiled to run on two different platforms and to communicate in a manner or manners discussed herein.”).” slip op. at 16

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference is prior artDecided for petitioner

    “The relevant section of Humpleman is reproduced below: This patent application claims priority from provisional patent application Ser. No. 60/050,762, filed on Jun. 25, 1997, entitled Home Network, Browser Based, Command and Control and provisional patent application Ser. No. 60/059,499, filed on Sep. 22, 1997, entitled Improved Home Network, Browser Based, Command and Control, which are incorporated herein by reference. Ex. 1006, 1:7–13 (emphasis added). From this cited disclosure, we find the patentee in Humpleman incorporated the entireties of both provisional applications by reference. If the intent was to incorporate only one provisional or just part of one provisional, then we would agree that sufficient particularity has not been supplied. However, a reasonable interpretation of such an incorporation by reference clause is that all of the referenced provisional disclosures are incorporated. Similarly, there is no need to stipulate where particular material to be incorporated is found when that particular material is all.” slip op. at 22

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “the knowledge level of a person of ordinary skill in the art. Relying on the testimony of its declarant, Dr. Tjaden, Comcast asserts that a person of ordinary skill in the art as of July 17, 1998, which is the earliest priority date on the face of the ’413 Patent, would be an individual who possesses the following: a bachelor’s degree in computer science, electrical engineering, computer engineering, or a similar discipline, and two years of experience with interactive program guides, set-top boxes, mobile computer devices, and techniques for delivering content or program guides over communication networks, such as a cable system, a local-area network, and the Internet. Pet. 12–13 (quoting Ex. 1002 ¶ 28). Alternatively, once again relying on the testimony of Dr. Tjaden, Comcast asserts that a person of ordinary skill in the art “could have had equivalent experience in industry or research, such as designing, developing, evaluating, testing, or implementing the aforementioned technologies.” Id. at 13 (quoting Ex. 1002 ¶ 28). Conversely, Rovi’s declarant, Dr. Shamos, does not offer an assessment of the level of skill in the art as of July 1998, nor does he explicitly state his intent to adopt Dr. Tjaden’s assessment. See generally Ex. 2011. Given Dr. Shamos’s lack of testimony on this matter, we adopt Dr. Tjaden’s assessment because it is consistent with the ’413 Patent and the asserted prior art, and apply it to our obviousness evaluation below.” slip op. at 25

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

    “The Supreme Court has held that an obviousness evaluation “cannot be confined by a formalistic conception of the words teaching, suggestion, and motivation, or by overemphasis on the importance of published articles and the explicit content of issued patents.” KSR, 550 U.S. at 419. Instead, the relevant inquiry is whether Comcast has set forth “some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), cited with approval in KSR, 550 U.S. at 418. When describing examples of what may constitute a sufficient rationale to combine, the Supreme Court elaborated that, “if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.” KSR, 550 U.S. at 417. Based on the record developed during trial, we agree with Comcast that one of ordinary skill in the art would have had a sufficient reason to implement Killian’s enhancements in Humpleman’s system. When, as here, a technique has been used to improve one device (i.e., Killian’s interactive features), and one of ordinary skill in the art would have recognized that it would improve similar devices in the same way (i.e., applying Killian’s interactive features to Humpleman’s system, thereby allowing viewers to more intelligently select, schedule, and record their viewing opportunities), using the technique is obvious unless its actual application is beyond the skill level of an ordinary skilled artisan. See Pet. 23–25; Ex. 1002 ¶¶ 102– 106. The record includes credible evidence explaining why applying Killian’s features to Blake’s system would not have been uniquely challenging or otherwise beyond the skill level of an ordinary skilled artisan. Comcast declarant, Dr. Tjaden, provides the necessary motivation for doing so—namely, “allowing viewers to more intelligently select, schedule, and record their viewing opportunities.” Ex. 1002 ¶ 106.” slip op. at 43

  Patent outcomesUS 8,578,413 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,578,413
• Apple Inc. v. Andrea Electronics Corp.Some claims unpatentable
  PTAB · Jul 12, 2018 · IPR2017-00627 · APJ Jeremy M Plenzler · IPR · Final written decision

  Claims 1–5, 10–16, 21–23, 25, and 38–46 are unpatentable; claims 6–9, 17–20, 24, and 47 were not shown unpatentable.

  RulingsFinal written decision

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

    “Although the dictionary defines “periodically” as “from time to time” or “at regular intervals of time,” based on the record before us, we agree with Patent Owner that its proposed construction is how one skilled in the art would have understood that term in the context of the ’345 patent Specification. Turning first to the intrinsic evidence, the Specification explains that “[t]he future and current minimum values are calculated continuously and initiated periodically, for example, every 5 seconds.” Ex. 1001, 8:37–39. Although the Specification later notes that “[i]t will be appreciated that, while specific values are used as in the several equations and calculations employed in the present invention, these values may be different than those shown” (id. at 8:64–67), this passage does not mean that the Specification contemplates arrangements where “periodically” is simply “from time to time.” Rather, we determine that statement from the Specification indicates that the specific amount of time (i.e., every 5 seconds) may vary. Turning now to the extrinsic evidence, the testimony of Dr. Douglas supports our conclusion, explaining that “at regular intervals of time” is the “only . . . definition . . . consistent with the understanding of a person skilled in the art in light of the specification of the ’345 Patent and its use in the particular field of audio signal processing” because [l]ike the “period” of an audio signal itself, which is the amount of time it takes for a signal to repeat itself, “periodically” as recited in claims 6 and 9 and throughout the remainder of the specification of the ’345 Patent refers to actions that occur at regular intervals (e.g., every 5 seconds rather than merely “from time to time”). Ex. 2002 ¶ 48. Moreover, Petitioner’s declarant, Dr. Hochwald testifies that outside of the context of the ’345 patent Specification, “periodically” means “at regular time intervals” (Ex. 2005, 99:13–15), and when asked about that term’s meaning in the context of the ’345 patent Specification, Dr. Hochwald simply noted that “all I can do is read what it says,” which is that “[i]t’s doing something periodically, for example, every five seconds” (id. at 100:4–6). Accordingly, the testimony from Dr. Douglas, as well as that from Dr. Hochwald, supports Patent Owner’s construction. In summary, we adopt Patent Owner’s construction of “periodically,” requiring “at regular intervals of time,” because (1) this is consistent with how this term is used in the context of the ’345 Patent Specification; and (2) this is supported by the testimony of both experts.” slip op. at 7

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

    “Patent Owner responds that, because Helf uses average values (i.e., the average of eight consecutive values), it does not disclose using a minimum value. PO Resp. 17–23. Patent Owner acknowledges that the ’345 patent, itself, uses a “smoothing process [that] produces frequency bins with multiple smoothed magnitude values, ultimately finding the minimum of all of the values,” but contends that “Helf’s averaging process produces a single output representing one average of the original samples.” Id. at 20–21 (underlining omitted) (citing Ex. 1001, 8:14–28; Ex. 2002 ¶¶ 52, 63–72). We disagree with Patent Owner’s characterization of the differences between Helf and the ’345 patent. While Helf may ultimately produce a single minimum value, as discussed above, that value is based on a minimum value of the averages calculated over the given time period. At oral hearing, Patent Owner acknowledged that Helf determines many averages values (i.e., the averages of the eight consecutive frames) and determines a minimum of those values. See, e.g., Tr. 22:2–6. The claim simply requires a “future minimum value,” and does not preclude that value from being a minimum value taken from a set of average values. Indeed, such an interpretation of the claim would be inconsistent with the ’345 patent’s use of smoothed values noted by Patent Owner. Ex. 1001, 8:14–28. The testimony of Dr. Douglas cited by Patent Owner does not convince us otherwise. See Ex. 2002 ¶¶ 52, 63–72 (effectively repeating Patent Owner’s contentions, which are unpersuasive for the reasons set forth above). Accordingly, we are persuaded that Helf’s minimum value (Mk) corresponds to the “future minimum value” recited in claims 4 and 39.” slip op. at 13

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundMotivation foundMixed

    “With respect to its “running minimum estimator,” Helf explains that the “running minimum estimator” is used “when either the speech signal is never absent for more than a second or the background noise itself is never constant in spectral shape.” Ex. 1010, 8:11–15. Helf acknowledges that its “running minimum estimator” is “much less accura[te]” than its “stationary estimator,” which is typically used for background noise estimates. Id. at 8:15–17. As a result, Helf only uses its “running minimum estimator” if “[i]t has been more than 10 seconds since the last update of the background noise spectral estimate due to the Stationary Estimator,” and “[t]he difference, D, between the past background noise estimate, which may have resulted from the Stationary Estimator or the Running Minimum Estimator, and the current Running Minimum Estimator is great.” Id. at 8:32–42. We see no persuasive reason to set Helf’s current background noise estimate (Nk and Ck, considered the “current minimum” by Petitioner) to the minimum estimate (Mk) from the “running minimum estimator” (considered the “future minimum” by Petitioner). The testimony of Dr. Douglas supports this conclusion. See, e.g., Ex. 2002 ¶¶ 119, 120. Addressing the portions of Helf noted above, Dr. Douglas testifies that “Helf only relies on Mk in a ‘worst case’ scenario” and “disfavors the use of Mk, even where Bk is unavailable,” and concludes that “one of ordinary skill would not be motivated to force the use of the disfavored Mk every ten seconds even where the much more accurate Bk estimate is available.” Id. ¶ 119. Dr. Douglas further testifies that “one of ordinary skill would not have been motivated to abandon[] the comparison of D to a threshold” because “one of ordinary skill in the art would recognize that Helf is a signal-dependent system, and it would not abandon its ability to adapt to varying signal conditions in favor of a blind periodic update using a disfavored estimate.” Id. ¶ 120. We credit the testimony of Dr. Douglas over that of Dr. Hochwald in this regard. See Ex. 1004 ¶¶ 157–159; Ex. 2002 ¶¶ 115–120. The testimony from Dr. Douglas is consistent with the disclosure of Helf, while that of Dr. Hochwald is based on conclusory statements. For example, the only portions of Dr. Hochwald’s testimony cited in the Petition in connection with the rationale provided in this challenge are conclusory statements that “[a] person of ordinary skill would have found it obvious to modify Helf to update the background noise estimate after every 10 second period based on the teachings of Martin,” and “[t]he skilled person would have recognized it was beneficial to periodically update the minimum noise value to ensure it accurately reflected the current noise level,” which are contrary to the disclosure of Helf noted above. Ex. 1004 ¶¶ 158, 159.” slip op. at 21

  • Expert testimonyPatent owner expert creditedPetitioner expert discountedOther

    “We see no persuasive reason to set Helf’s current background noise estimate (Nk and Ck, considered the “current minimum” by Petitioner) to the minimum estimate (Mk) from the “running minimum estimator” (considered the “future minimum” by Petitioner). The testimony of Dr. Douglas supports this conclusion. See, e.g., Ex. 2002 ¶¶ 119, 120. Addressing the portions of Helf noted above, Dr. Douglas testifies that “Helf only relies on Mk in a ‘worst case’ scenario” and “disfavors the use of Mk, even where Bk is unavailable,” and concludes that “one of ordinary skill would not be motivated to force the use of the disfavored Mk every ten seconds even where the much more accurate Bk estimate is available.” Id. ¶ 119. Dr. Douglas further testifies that “one of ordinary skill would not have been motivated to abandon[] the comparison of D to a threshold” because “one of ordinary skill in the art would recognize that Helf is a signal-dependent system, and it would not abandon its ability to adapt to varying signal conditions in favor of a blind periodic update using a disfavored estimate.” Id. ¶ 120. We credit the testimony of Dr. Douglas over that of Dr. Hochwald in this regard. See Ex. 1004 ¶¶ 157–159; Ex. 2002 ¶¶ 115–120. The testimony from Dr. Douglas is consistent with the disclosure of Helf, while that of Dr. Hochwald is based on conclusory statements. For example, the only portions of Dr. Hochwald’s testimony cited in the Petition in connection with the rationale provided in this challenge are conclusory statements that “[a] person of ordinary skill would have found it obvious to modify Helf to update the background noise estimate after every 10 second period based on the teachings of Martin,” and “[t]he skilled person would have recognized it was beneficial to periodically update the minimum noise value to ensure it accurately reflected the current noise level,” which are contrary to the disclosure of Helf noted above. Ex. 1004 ¶¶ 158, 159.” slip op. at 21

  Patent outcomesUS 6,363,345 mixed
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 6,363,345
• Apple Inc. v. Andrea Electronics Corp.Some claims unpatentable
  PTAB · Jul 12, 2018 · IPR2017-00626 · APJ Jeremy M Plenzler · IPR · Final written decision

  Claims 1–3, 12–25, 38, and 47 are unpatentable; claims 4–11 and 39–46 are not shown unpatentable, chiefly because the proposed Hirsch–Martin combination was not supported.

  RulingsFinal written decision

  • Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner

    “In its Reply, Petitioner contends that, “[i]n this configuration [where W = 1], any purported distinction between windows and sub-windows in Martin vanishes and [Patent Owner]’s argument is irrelevant,” acknowledging that the proposed modification eliminates Martin’s sub-windows. Pet. Reply 5. Petitioner further contends that Patent Owner “incorrectly argues that the use of sub-windows is central to Martin’s algorithm” and “[n]othing in Martin suggests that the use of sub-windows is required.” Id. at 7 (citing Ex. 1023 ¶¶ 6–8). We disagree with Petitioner, and credit the testimony of Dr. Douglas over that of Dr. Hochwald with respect to Martin’s use of sub-windows because, as discussed below, Dr. Hochwald’s testimony is not consistent with the disclosure of Martin, while the testimony of Dr. Douglas is consistent with that disclosure. See, e.g., Ex. 1023 ¶¶ 6–9 (asserting that Martin does not expressly require sub-windows); Ex. 2002 ¶¶ 94–96 (discussing Martin’s use of at least two sub-windows for monotonic determination). As noted above, Martin’s algorithm requires a determination of whether or not “the minimum power of the last W windows with M samples each is monotonically increasing.” Ex. 1006, 1094. We are not persuaded by Petitioner’s argument that one skilled in the art would have found it obvious to modify Hirsch’s system based on a scenario from Martin where W = 1 because such a scenario is counter to the entire purpose of Martin. Even Petitioner’s Declarant, Dr. Hochwald, acknowledges that a single data point (i.e., W = 1) cannot be used to determine whether something is monotonically increasing. See Ex. 2005 69:10–17 (explaining that you need at least two data points to make such a determination, meaning W ≥ 2). Petitioner fails to provide persuasive reasoning as to why one skilled in the art would have modified Hirsch’s teachings in a manner that is contrary to the express disclosure of Martin.” slip op. at 14

  • Strike new argumentNew argument disregardedDecided for patent owner

    “Petitioner attempts to cure these deficiencies in its Reply, contending that, “[e]ven where Martin’s algorithm is configured to use multiple sub-windows, it still teaches the claimed ‘future minimum.’” Pet. Reply 8. We do not consider this new argument, as it is a new theory of unpatentability presented for the first time in the Petitioner’s Reply. See Dell Inc. v. Acceleron, LLC, 818 F.3d 1293, 1301 (Fed Cir. 2016) (“A patent owner . . . is undoubtedly entitled to notice of and a fair opportunity to meet the grounds of [unpatentability].”) (quoting Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1080 (Fed. Cir. 2015)). For at least these reasons, Petitioner has failed to establish by a preponderance of the evidence that claims 4–11, 39–42, and 46 are unpatentable over the combined teachings of Hirsch and Martin.” slip op. at 15

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

    “Hirsch is directed to “techniques . . . to estimate the noise spectra or the noise characteristics for noisy speech signals” that “can be combined with a nonlinear spectral subtraction scheme.” Ex. 1005, 153. Hirsch discusses use of “FFT based spectral analysis” (id. at 154), for example, which Petitioner cites as corresponding to the “generating the frequency spectrum of said audio signal thereby generating frequency bins of said audio signal” recited in claim 1 (Pet. 27). Hirsch discusses use of an “adaptive threshold” for each frequency bin to distinguish between speech and noise (Ex. 1005, 153), which Petitioner cites as corresponding to the “setting a threshold for each frequency bin using a noise estimation process” recited in claim 1 (Pet. 27). Hirsch describes comparing spectral components to their corresponding thresholds to determine if speech is present (Ex. 1005, 153), which Petitioner cites as corresponding to the “detecting for each frequency bin whether the magnitude of the frequency bin is less than the corresponding threshold, thereby detecting the position of noise elements for each frequency bin” recited in claim 1 (Pet. 27–28). Based on the record before us, we are persuaded that Hirsch discloses each and every element of claim 1. We also are persuaded that Hirsch discloses each and every element of claim 38 for the reasons discussed above in connection with claim 1, as well as the “subtracting said noise elements . . . from said audio signal” additionally recited in claim 38. With respect to the recited “subtracting,” Petitioner cites Hirsch’s discussion of spectral subtraction. Pet. 25–26 (citing Ex. 1005, 153–155). As Petitioner notes, “[t]he spectral subtraction technique shown in Hirsch subtracts the noise estimate from each sub-band or ‘bin’ and sets any negative values to zero” (id. (citing Ex. 1005, 153)), which “is the same technique used in the ’345 patent” (id. (citing Ex. 1001, 6:58–61, 7:16–27)). Claims 2, 3, 12, 13, 21, and 23 depend from claim 1, and Petitioner cites to relevant portions of Hirsch as disclosing the additional limitations of those claims. See Pet. 28–31. We are persuaded by Petitioner’s unrebutted arguments and evidence related to how Hirsch properly accounts for each and every element of these dependent claims, which we adopt for purposes of this decision. Specifically, we find that Hirsch discloses the additional limitations recited in those claims based on the citations to Hirsch therein and the supporting expert testimony. See id. Based on our review of the record before us, the preponderance of the evidence supports Petitioner’s contentions that claims 1–3, 12, 13, 21, 23, and 38 are anticipated by Hirsch.” slip op. at 7

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundMotivation foundMixed

    “Initially, we agree with Petitioner that one skilled in the art would have considered Martin’s teachings, generally, when reviewing the teachings of Hirsch, as Martin is specifically referenced in Hirsch itself. Nevertheless, we are not persuaded that one skilled in the art would have modified Hisch’s system based on the teachings of Martin in the particular manner proposed by Petitioner. Consistent with Patent Owner’s contentions noted above, Martin describes determining “[t]he noise power estimate is based on the minimum of signal power within a window of L samples” and “[f]or reasons of computational complexity and delay the data window of length L is decomposed into W windows of length M such that M * W = L,” and provides an example where W=4. Ex. 1006, 1094. Martin distinguishes between “slowly varying noise power” and “rapidly varying noise power” to determine its noise power estimate, with a determination of whether the minimum power in successive sub-windows is monotonically increasing central to its estimation. Id. “If the minimum power of the last W windows with M samples each is monotonically increasing we decide on rapid noise power variation” and “the noise power estimate equals the power minimum of the last M samples Pn(i) = PMmin(i = r * M).” Id. “In case of non monotonic power the noise power estimate is set to the minimum of the length L window.” Id. Regardless of whether the noise power calculation is that for “slowly varying noise power” or “rapidly varying noise power,” Martin requires that first a determination is made as to whether or not “the minimum power of the last W windows with M samples each is monotonically increasing.” Id. (emphasis added). To the extent there can be any dispute on this issue, the testimony from Dr. Douglas supports the understanding that at least two subwindows are required to determine which noise power calculation to use. See Ex. 2002 ¶¶ 95, 96. In its Reply, Petitioner contends that, “[i]n this configuration [where” slip op. at 13

  Patent outcomesUS 6,363,345 mixed
  § 102 anticipation§ 103 obviousness
  Patents in suitUS 6,363,345
• SK Hynix Inc. / SK Hynix America Inc. et al. v. Netlist, Inc.All claims unpatentable
  PTAB · Jul 5, 2018 · IPR2017-00692 · APJ Matthew R Clements · IPR · Final written decision

  Claims 1–15 are unpatentable: claims 1–14 as anticipated by Best and obvious over Best, and claim 15 as obvious over Best, Mills, and Bonella.

  RulingsFinal written decision

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

    “construction “requires two layers of IC packages, in which a first IC package (the Board’s ‘carrier’) contains one or more second IC packages (the Board’s memory chips).” PO Resp. 39. Petitioner counters that “[t]he Board’s construction does no such thing.” Pet. Reply 18–19. We agree with Petitioner. Patent Owner’s argument is predicated upon the erroneous assertion that “[e]ach memory chip in the Board’s ‘carrier’ requires a different IC package (i.e., a second IC package) that encloses at least one memory die.” PO Resp. 39. Each memory chip does not require its own integrated circuit package. On the contrary, it may be, as Best discloses, a die enclosed with another die in a single IC package. Having considered the arguments and evidence, we maintain our construction of “memory module” to mean “a carrier that contains one or more memory chips,” where “carrier” encompasses an integrated circuit package.” slip op. at 14

  • Skill levelSkill level board ownOther

    “Otherwise, we determine that no express finding on a specific corresponding level of technical education and experience is necessary. Here, the level of ordinary skill in the art is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 15

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “We have reviewed the arguments provided by Patent Owner and determine such arguments are insufficient to have Mr. Maltiel’s declaration excluded in its entirety. Rather, it is within our discretion to assign the appropriate weight to be accorded evidence. See 37 C.F.R. § 42.65(a); see also, 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) (“[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.”); and Velander v. Garner, 348 F.3d 1359, 1371 (Fed. Cir. 2003) (“In giving more weight to prior publications than to subsequent conclusory statements by experts, the Board acted well within [its] discretion.”). Based on the record before us, we are not persuaded that we should give the entirety of Mr. Maltiel’s declaration no weight.” slip op. at 16

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

    “8–14. Pet. 30–37, 44–49. Notwithstanding Patent Owner’s arguments, which we have considered and which we address below, we are persuaded by Petitioner’s showing, which we adopt as our own findings and conclusions, that claims 1–14 are unpatentable under 35 U.S.C. § 102 as anticipated by Best.” slip op. at 24

  Patent outcomesUS 8,874,831 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,874,831
• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Image Processing Technologies LLCSome claims unpatentable
  PTAB · May 9, 2018 · IPR2017-00336 · APJ Joni Y Chang · IPR · Final written decision

  Claim 22 is unpatentable as obvious over Pirim; claims 1, 18, 19, and 29 were not shown unpatentable on the asserted grounds.

  RulingsFinal written decision

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

    “We begin our claim construction analysis with the plain language of the claim. In particular, the plain and ordinary meaning of “an input multiplexer adapted to receive data describing one or more parameters of the event being detected and to output data describing a selected one of the one or more parameters in response to a selection signal” encompasses two alternative structures. Ex. 1001, 29:64−67 (emphases added). The first alternative structure includes a “single parameter” multiplexer. The second alternative structure includes a “multiple parameters” multiplexer. The Specification confirms our understanding of the plain and ordinary meaning of the claim language because the Specification discloses both alternative structures. Id. at 2:51−61; 9:1−6, 11:14−48, 17:55−18:23, 20:58−66, Figs. 3, 4, 12, 13d, 14, 15a, 15b, 17, 25, 31a.” slip op. at 19

  • Skill levelSkill level board ownOther

    “may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are 6 No objective evidence of non-obviousness has been presented in this proceeding. 27 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) (quoting Custom Accessories, Inc. v. Jeffrey–Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986)). In that regard, we do not observe meaningful differences between the parties’ assessments of a person of ordinary skill in the art at the time of the invention. Pet. 28–29; PO Resp. 13. For instance, both the parties agree that such an artisan would have had a degree in electrical engineering or a related field and experience in the field of image processing. Id. We further note that either assessment appears consistent with the level of ordinary skill in the art at the time of the invention as reflected in the prior art in the instant proceeding. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Our analysis in this Decision is supported by either assessment.” slip op. at 27

  • Obviousness (§103) › Objective indicia / secondary considerationsNot reached

    “differences between the claimed subject matter and the prior art are such that the subject matter, as a whole, would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of ordinary skill in the art; and (4) when in evidence, objective evidence of non-obviousness.6 Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).” slip op. at 27

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

    “Having reviewed the parties’ contentions and supporting evidence, we determine that Petitioner has established sufficiently that Pirim discloses an input multiplexer and a selection signal, as recited in claim 22. Patent Owner’s arguments and supporting evidence do not undermine Petitioner’s showing.” slip op. at 33

  Patent outcomesUS 6,959,293 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,959,293

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.