• Qualcomm Inc. v. Bandspeed, Inc.Some claims unpatentable
  PTAB · Sep 7, 2016 · IPR2015-01577 · 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, with the specified-vote limitation not established.

  RulingsFinal written decision

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term 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.” slip op. at 8

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

    “as disclosed by Gerten’s description of modified frequency hopping schemes. Id. at 14. In doing so, Petitioner notes that Gerten discloses periodic updating of the modified frequency hopping scheme, supporting a conclusion that Gerten discloses selection at different times. Id. at 14, 15– 16. Petitioner highlights this periodic updating to identify distinct “period[s] of time” during which different “set[s] of two or more communications channels [are] used to transmit and receive.” Id. at 15–16 (italics omitted). In addressing independent claim 1’s specific requirement that different sets of channels be used with the second and third communications devices, Petitioner reasons that the process summarized above may be applied by the master device to each of the slave devices separately: “the master device of Gerten performs a service discovery request to determine if each slave device has interference avoidance capabilities.” Id. at 18 (emphasis added) (citing Ding Decl. ¶ 53; Ex. 1003, col. 4, ll. 38–51). Thus, Petitioner argues, if one slave has such interference avoidance capabilities, communications with that slave may take place using a modified frequency hopping scheme; if another (legacy) slave lacks such interference avoidance capabilities, communications take place using a normal mode with default communications channels that are not changed based on channel performance. Id. at 18 (citing Ding Decl. ¶ 55); see id. at 16–17. Thus, Petitioner concludes, the recited transmissions and receptions from the third communications device over default communications channels occur “while” transmitting to and receiving from the second communications device over the first and second sets of communications channels, as we have construed the term “while.” Petitioner supports this reasoning with testimony by Dr. Ding, which we credit. Id. at 18 (citing Ding Decl. ¶¶ 53– 55).” slip op. at 15

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

    “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.” slip op. at 24

  • Obviousness (§103) › Analogous artAnalogous artDecided for petitioner

    “Two criteria have evolved for determining whether prior art is analogous: (1) whether the art is from the same field of endeavor, regardless of the problem addressed, and (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved. In re Clay, 966 F.2d 656, 658–59 (Fed. Cir. 1992) (citing In re Deminski, 796 F.2d 436, 442 (Fed. Cir. 1986); In re Wood, 599 F.2d 1032, 1036 (CCPA 1979)). Patent Owner understates the degree to which Petitioner addresses the analogousness of the art by focusing on Petitioner’s contention that Gerten and Cuffaro are in the same field of endeavor. PO Resp. 40 (citing Pet. 30). Petitioner also addresses the second prong of the Clay test by providing reasons why a person of skill in the art would use the transmitted performance data of Cuffaro in the selection process of Gerten, including improved accuracy in determining the impact on the receiver unit from the interference on a given channel. See Pet. 31. We agree with Petitioner’s reasoning and find that Cuffaro and Gerten are analogous art to the claimed invention at least because they are reasonably pertinent to the particular problem with which the inventor was involved. We conclude that Petitioner has demonstrated, by a preponderance of the evidence, that claims 2, 14, and 26 are unpatentable under 35 U.S.C. § 103(a) over Gerten and Cuffaro.” slip op. at 26

  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 · IPR2015-00316 · 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
• Mastercard International Inc. v. Leon StamblerAll claims unpatentable
  PTAB · Jul 6, 2016 · CBM2015-00044 · APJ Peter P Chen · CBM · Final written decision

  Claims 51 and 53 are unpatentable as anticipated by Davies; claims 51, 53, 55, and 56 are unpatentable as obvious over Davies and Meyer; claim 55 over Davies and Nechvatal; and claim 56 over Davies, …

  RulingsFinal written decision

  • Skill levelSkill level board ownOther

    “F. Level of Ordinary Skill in the Art Petitioner’s proposal for the level of ordinary skill in the art is “at least a bachelors degree in computer programming and two years’ experience as a programmer or developer in the field of computer science, with a working understanding of cryptographic operations for transforming original input into a coded output using a known algorithm.” Pet. 14–15. Patent Owner has proposed similarly, that one of ordinary skill in the art would possess “(1) undergraduate education in mathematics, physics, computer science, electrical engineering or similar technical subject; and (2) either postgraduate education in networking, cryptography, or other discipline encompassing information theory, or equivalent experience with applications involving communication of financial, military, medical or similarly sensitive data over secure and non-secure networks.” Prelim. Resp. 30–31. We determine that an express definition of the level of ordinary skill is not required. The level of ordinary skill in the art can be reflected in the cited prior art references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“[T]he absence of specific findings on the level of skill in the art does not give rise to reversible error ‘where the prior art itself reflects an appropriate level and a need for testimony is not shown.’”) (internal quotations omitted); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). Therefore, we find the level of ordinary skill in the art to be reflected in the cited references.” slip op. at 16

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

    “1. “variable authentication number (VAN)” In the Decision to Institute, we construed the term “variable authentication number” or “VAN” as “a variable number resulting from a coding operation that can be used in verifying the identity of a party or the integrity of information or both.” Dec. to Inst. 8. See also Case IPR2014-00694, slip op. at 8–9 (PTAB Oct. 31, 2014) (Paper 10). Patent Owner “does not challenge this construction.” PO Resp. 16–17. Patent Owner asserts additional construction of the term is necessary for CBM standing issues, but does not elaborate further. PO Resp. 1. Patent Owner also argues we incorrectly applied the broadest reasonable interpretation to the term in the Decision to Institute. PO Resp. 9. The Decision to Institute noted that our review of the claims of the expired ’302 patent is similar to that of a district court’s review, In re Rambus, Inc., 694 F.3d 42, 46 (Fed. Cir. 2012); Phillips v. AWH Corp., 415 F.3d 1303, 1327 (Fed. Cir. 2005), but inadvertently mentioned the broadest reasonable interpretation standard in construing this term. Dec. to Inst. 7–8. We reaffirm our agreement with Patent Owner that the Phillips framework is applied to the expired ’302 patent. Our construction of “VAN” is the same under either claim construction standard. We reject Patent Owner’s undeveloped argument regarding standing, and maintain the construction of VAN from the Decision to Institute, as the ordinary and customary meaning of the term: “a variable number resulting from a coding operation that can be used in verifying the identity of a party or the integrity of information or both.”” slip op. at 10

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

    “2. Sequence of method steps: receiving, generating In the Decision to Institute, we agreed with Patent Owner and construed the sequence of method steps in independent claim 51 to mean that at least a portion of the receiving step must precede the generating step. Dec. to Inst. 8. See also Case IPR2014-00694, slip op. at 11–14 (PTAB Oct. 31, 2014) (Paper 10). We maintain that construction as the ordinary and customary meaning of the sequence of the receiving and generating method steps.” slip op. at 11

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner

    “intended use of an invention is generally not treated as limiting the scope of the claim. Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003). However, “a preamble limits the invention if it recites essential structure or steps, or if it is ‘necessary to give life, meaning, and vitality’ to the claim.” Catalina Mktg. Int'l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (citing Pitney Bowes Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999). “The effect preamble language should be given can be resolved only on review of the entirety of the patent to gain an understanding of what the inventors actually invented and intended to encompass by the claim.” Corning Glass Works v. Sumitomo Elec. U.S.A., Inc., 868 F.2d 1251, 1257 (Fed. Cir. 1989). When the limitations in the body of the claim rely upon or derive essential structure from the preamble elements, e.g., the preamble serves as an antecedent basis for limitations in the claim, then the preamble acts as a necessary component of the claimed invention and is limiting. See Eaton Corp. v. Rockwell Int’l Corp., 323 F.3d 1332, 1339 (Fed. Cir. 2003). In this case, the preamble of independent claim 51 recites “a credential being previously issued,” and the limitations of the claim include “determining whether the at least a portion of the received funds transfer information is authentic by using the VAN and the credential information.” Ex. 1001, 33:18–19, 33:29–31. Thus, the preamble’s recitation of “a credential” is an antecedent basis for the recited “the credential information” in the “determining” step, and we determine that the preamble limits the scope of the challenged independent claim 51 and dependent claims 53, 55, and 56.” slip op. at 11

  Patent outcomesUS 5,793,302 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 5,793,302
• Sipnet Eu S.R.O. v. Straight Path IP Group, Inc.No claims unpatentable
  PTAB · May 23, 2016 · IPR2013-00246 · APJ Kalyan K Deshpande · IPR · Remand

  On remand, the Board held claims 1–7 and 32–42 not shown unpatentable because WINS and NetBIOS do not disclose the claimed current-connection status.

  RulingsRemand decision

  • PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner

    “party-in-interest. Whether a non-party is a “real party-in-interest” or “privy” for purposes of an inter partes review proceeding is a “highly fact-dependent question” that takes into account how courts generally have used the terms to “describe relationships and considerations sufficient to justify applying conventional principles of estoppel and preclusion.” Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,759. Whether parties are real parties-in-interest or in privity, for instance, depends on whether the relationship between the party and its alleged real party-in-interest or privy is “sufficiently close such that both should be bound by the trial outcome and related estoppels.” Id. A number of factors may be relevant to the analysis, including whether the non-party “exercised or could have exercised control over a party’s participation in a proceeding,” and whether the non-party is responsible for funding and directing the proceeding. Id. “The concept of control generally means that ‘it should be enough that the nonparty has the actual measure of control or opportunity to control that might reasonably be expected between two formal coparties.’” Id. (quoting 18A C. Wright, A. Miller & E. Cooper, Federal Practice & Procedure § 4451 (2d ed. 2011)). Patent Owner has not demonstrated that Stalker Software exercised or could have exercised control over Petitioner’s participation in this proceeding. The evidence of record establishes only that Stalker Software provided the WINS reference, at the request of Petitioner. Pet. Reply 1; Tr. 28:3–9. This alone is insufficient to demonstrate that Stalker Software exercised, or could have exercised, control over Petitioner’s participation in this proceeding. Patent Owner’s evidence of the existence of a vendor-reseller relationship between Stalker Software does not demonstrate Stalker Software exercised, or could have exercised, any control. When a patent holder sues a dealer, seller, or distributor of an accused product, the mere payment of counsel fees and minor participation by the vendor in the trial are insufficient to establish privity between the vendor and reseller. Bros, Inc. v. W.E. Grace Mfg. Co., 261 F.2d 428, 430 (5th Cir. 1958); see generally Broadcom Corp. v. Telefonaktiebolaget LM Ericsson, Case IPR2013-00601, slip op. at 7, 8 (PTAB Jan. 24, 2014) (Paper 23). Patent Owner’s assertions regarding witnesses with connections to both Stalker Software and Petitioner, and Petitioner’s alleged lack of presence in the U.S. market, are statements of counsel unsupported by any record evidence, and, in any event, are not indicative of any control of this proceeding by Stalker Software. Considering the lack of probative evidence submitted by Patent Owner, we disagree that Stalker Software is a real partyin-interest. Accordingly, we are not persuaded that Petitioner is barred from initiating this proceeding, or that sanctions should be imposed on Petitioner.” slip op. at 10

  • BurdenNot shown unpatentable

    “fail to determine whether a computer or process is connected to the computer network. PO Resp. 31–46. In view of our construction of this claim limitation, we agree with Patent Owner. WINS discloses that once a computer is registered with the WINS server (which is a NetBIOS Name Server (NBNS)) as active and on-line, the WINS server maintains a database of names and addresses as active and on-line by (1) releasing names once a computer is shut down properly and (2) requiring a renewal time period in which a computer must reregister. Ex. 1004, 62–63, 75, 84, 130. WINS discloses that in response to User Datagram Protocol (UDP) name queries, “a mapping in the database does not ensure that the related device is currently running.” Id. at 73. WINS further explains that a “local WINS database should periodically be cleared of released entries and old entries that were registered at another WINS server but did not get removed from this WINS database for some reason.” Id. at 148. In other words, WINS discloses that the WINS database may include entries of computers that are not currently connected to the WINS network. See id. at 73, 148. Accordingly, a query as to whether a second process “is connected to the computer network” in WINS will not determine whether the second process is connected to the WINS network at the time that the query is transmitted to the server. As discussed above in our claim construction analysis (see Section I.E.1), a query as to whether a process “is connected to a computer network” or has an “on-line” status asks “whether the device ‘is’ connected, not whether it was connected or whether it is still registered as being connected even if that registration information is no longer accurate. It is not a reasonable interpretation of the claim language . . . to say that it is satisfied by a query that asks only for registration information, regardless of its current accuracy.” Straight Path, 806 F.3d at 1360. WINS discloses that the WINS server has information that a process “was” connected to the computer network, and that information may no longer be accurate. See Ex. 1004, 84, 166. As such, we determine that WINS does not disclose the claimed “is connected to the computer network,” “on-line status,” “currently connected to the Internet,” and “connected to the computer network,” as construed herein.” slip op. at 15

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

    “Petitioner provides the testimony of Mr. Kolesnikov that WINS was publically available and a CD version (Ex. 1019) was received by Mr. Kolesnikov in 1994. Pet. Reply 13–14; Tr. 19:5–19; see Ex. 1017. Mr. Kolesnikov testifies that he saw several Microsoft Windows NT 3.5 Server packages that included a print copy of WINS. Ex. 1017 ¶ 7. Petitioner further provides the testimony of Ms. Ehrlich to establish that the differences between WINS and the CD version are differences mostly as to formatting. Pet. Reply 13–14; see Ex. 1018. Ms. Ehrlich testifies that WINS and the CD version are substantially similar, noting differences in the glossaries and formatting. Ex. 1018 ¶ 6; Ex. 2044, 16:17–24. We are persuaded that Petitioner has established WINS as prior art. We are persuaded that WINS was publically available in 1994. Mr. Kolesnikov testifies to seeing printed copies of WINS and the CD version in 1994. Ex. 1017 ¶ 7. Mr. Kolesnikov further testifies he recalls seeing printed copies of WINS during installations he did for clients in 1994, and is certain that it was 1994 because he switched jobs in 1995. Ex. 2043, 29:1–10, 32:21–22. Additionally, we are persuaded that the portions of WINS relied upon by Petitioner are different from the CD version due to formatting only. Tr. 23:1–25:8. Patent Owner’s argument consists of alleging that Petitioner has failed to establish that WINS was publically available and does not offer any evidence contrary to that presented by Petitioner. Based on the evidence discussed above, we are persuaded that Petitioner has established that WINS was publicly available in 1994, and, therefore, qualifies as prior art under 35 U.S.C. § 102(a).” slip op. at 14

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

    “fail to determine whether a computer or process is connected to the computer network. PO Resp. 31–46. In view of our construction of this claim limitation, we agree with Patent Owner. WINS discloses that once a computer is registered with the WINS server (which is a NetBIOS Name Server (NBNS)) as active and on-line, the WINS server maintains a database of names and addresses as active and on-line by (1) releasing names once a computer is shut down properly and (2) requiring a renewal time period in which a computer must reregister. Ex. 1004, 62–63, 75, 84, 130. WINS discloses that in response to User Datagram Protocol (UDP) name queries, “a mapping in the database does not ensure that the related device is currently running.” Id. at 73. WINS further explains that a “local WINS database should periodically be cleared of released entries and old entries that were registered at another WINS server but did not get removed from this WINS database for some reason.” Id. at 148. In other words, WINS discloses that the WINS database may include entries of computers that are not currently connected to the WINS network. See id. at 73, 148. Accordingly, a query as to whether a second process “is connected to the computer network” in WINS will not determine whether the second process is connected to the WINS network at the time that the query is transmitted to the server. As discussed above in our claim construction analysis (see Section I.E.1), a query as to whether a process “is connected to a computer network” or has an “on-line” status asks “whether the device ‘is’ connected, not whether it was connected or whether it is still registered as being connected even if that registration information is no longer accurate. It is not a reasonable interpretation of the claim language . . . to say that it is satisfied by a query that asks only for registration information, regardless of its current accuracy.” Straight Path, 806 F.3d at 1360. WINS discloses that the WINS server has information that a process “was” connected to the computer network, and that information may no longer be accurate. See Ex. 1004, 84, 166. As such, we determine that WINS does not disclose the claimed “is connected to the computer network,” “on-line status,” “currently connected to the Internet,” and “connected to the computer network,” as construed herein.” slip op. at 15

  Patent outcomesUS 6,108,704 not shown unpatentable
  § 102 anticipation§ 103 obviousnesscites Phillips
  Patents in suitUS 6,108,704
• Corelogic, Inc. v. Boundary Solutions, Inc.No claims unpatentable
  PTAB · May 19, 2016 · IPR2015-00219 · APJ Lynne E Pettigrew · IPR · Final written decision

  Claims 12–15 and 17–21 were not shown unpatentable because Oosterom did not disclose searching the database using a jurisdictional identifier.

  RulingsFinal written decision

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

    “In the Institution Decision, we construed “jurisdictional identifier” to mean “a number or other name, code, or description that identifies a jurisdiction.” Dec. 6. We based our construction on the only appearance of “jurisdictional identifier” in the written description of the ’352 patent, which states: FIG. 3 illustrates a USA County Boundary Map (USACM). This is a public domain boundary file of each and every of the 3140 counties within the United States. Each of these polygons is geocoded with its county name and FIPS number, a numerical jurisdictional identifier, as illustrated in the figure. Ex. 1001, 8:48–53 (emphasis added).3 BSI does not challenge our construction of “jurisdictional identifier” in its Patent Owner Response, see PO Resp. 6, nor does CoreLogic challenge the construction in its Reply, see Reply 10. For this Final Written Decision, after considering the complete record, we maintain our construction of “jurisdictional identifier” as “a number or other name, code, or description that identifies a jurisdiction.”” slip op. at 5

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

    “Having reviewed the arguments and evidence, we are not persuaded CoreLogic has demonstrated that Oosterom discloses searching the parcel map database “using a jurisdictional identifier” as recited in claim 12. Among the attributes in Oosterom’s parcel and boundary tables identified by CoreLogic in its analysis, only the municipality codes (i.e., “municip” in the parcel table and “L_municip” and “R_municip” in the boundary table) qualify as “jurisdictional identifiers.” See Ex. 1010, 513–14 (Tables 1, 2). The “object_id” of an object, e.g., a parcel or a boundary, is a nationwide unique identifier, but there is no indication in Oosterom that the object_id of a parcel or boundary identifies a jurisdiction. See id. at 512; see also id. at 513–14 (showing object_id attribute in parcel and boundary tables). As for the “ogroup” attribute in the parcel and boundary tables, Oosterom states only that it “indicates to which group the record belongs.” Id. at 519. Nothing in Oosterom describes the ogroup as identifying a jurisdiction. Although the municipality code attributes in the parcel and boundary tables identify jurisdiction, CoreLogic does not cite any portion of Oosterom that illustrates the use of municipality codes in searching the database for selected parcels as required by claim 12. See Pet. 45. Dr. Goodchild opines that the “municipality code . . . would allow us to search [the] parcel table by that jurisdiction and to identify all the parcels in that jurisdiction.” Ex. 2010, 19:22–24. He further testifies that in his analysis, he “was concerned with the specific kind of query identified in the claim, which is much narrower than Oosterom’s discussion [and] much more specific than the broad range of queries discussed by Oosterom.” Id. at 21:14–25. Ultimately, he states that the “question [he] analyzed is whether [Oosterom’s] database is capable of supporting the type of query identified in the claim.” Id. at 22:14–16 (emphasis added). Dr. Goodchild’s testimony that municipality codes could be used in searching Oosterom’s database, however, is insufficient to establish for anticipation purposes that Oosterom discloses the step of searching a multi-jurisdictional digital parcel map database for a selected parcel boundary polygon “using a jurisdictional identifier.”” slip op. at 10

  • ExcludeOther

    “C. CoreLogic’s Motion to Exclude Evidence CoreLogic moves to exclude the redirect testimony of BSI’s expert, Mr. William Huxhold, on the ground that it was provided in response to leading questions. Mot. Excl. 1 (citing Ex. 1034, 150:6–153:8). The redirect testimony relates to a portion of Mr. Huxhold’s cross-examination testimony. Id. at 1–2 (citing Ex. 1034, 72:5–22). Because we do not rely on Mr. Huxhold’s testimony, CoreLogic’s motion is dismissed as moot.” slip op. at 12

  Patent outcomesUS 8,065,352 not shown unpatentable
  Claim construction§ 102 anticipation
  Patents in suitUS 8,065,352
• Sandisk Corporation v. Netlist, Inc.Rehearing denied
  PTAB · Apr 27, 2016 · IPR2014-00970 · APJ Linda M Gaudette · IPR · Rehearing

  Denied SanDisk’s rehearing request; the Board maintained its findings that claims 2, 5, and 6 were not shown obvious over Huang and claims 17–19 and 35 were not shown anticipated by Averbuj.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. STANDARD OF REVIEW The party requesting rehearing has the burden of showing the decision should be modified, and “[t]he 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.” 37 C.F.R. § 42.71(d).” slip op. at 3

  • BurdenNot shown unpatentable

    “20–21 (“Averbuj discloses that in BIST mode, the multiplexer 46 shown in Fig. 6 selectively inputs signals BIST_ADDR/CTRL (i.e., address and control signals from the control module) to the address and control port of the corresponding memory device 12.” (emphasis added)). In other words, the Petition is devoid of any discussion of BIST_EN in connection with the limitations of claims 17–19 and 35. See Pet. 19–21. Likewise, the Reply fails to contain any discussion of how the claim limitations are met by Averbuj’s use of the BIST_EN signal. See Reply 17. 37 C.F.R. § 42.22(a)(2) requires each petition to include “[a] full statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence including material facts, and the governing law, rules, and precedent.” Our discussion in the Final Decision of the patentability challenge as to claims 17–19 and 35 based on anticipation by Averbuj addresses Petitioner’s arguments in the Petition and Reply, which are limited to a contention that Averbuj’s multiplexer 46 is required to meet the “configured to selectively input” and “selectively inputs” limitations recited in claims 17–19 and 35. See Final Dec. 44–46 (citing Pet. 19–21; Reply 17). In arguing that we should have considered Dr. Alpert’s testimony that Averbuj’s sequencer, by generating a BIST_EN signal, is “configured to selectively input”/“selectively inputs” address and control signals to the memory modules, Petitioner attempts to improperly incorporate arguments into its Petition and Reply by reference to Dr. Alpert’s declaration testimony. See 37 C.F.R. § 42.6(a)(3) (“Arguments must not be incorporated by reference from one document into another document.”). In any event, we find the declaration testimony relied on by Petitioner in support of this Request (see Req. Reh’g 13) supports our determination that Petitioner failed to show, by a preponderance of the evidence, that Averbuj anticipates claims 17–19 and 35. Dr. Alpert testified that if the “configuration [to selectively input to the address and control ports] is determined to require the structure that performs the selection itself, then the disclosed control module also includes multiplexer 46 of memory interface 41.” Ex. 1007 ¶ 78 (emphasis added); see also id. ¶ 81 (identifying multiplexer 46 as the “DRAM controller which performs the selective inputting” as recited in claim 18). Petitioner did not explain (see Pet. 19–21; Reply 17) how Averbuj describes multiplexer 46 as being part of sequencer 8 (the alleged control module). See Final Dec. 45–46 (explaining that Petitioner has not addressed Patent Owner’s argument that the device that selectively inputs address and control signals to memory modules 12 is multiplexer 46 of memory interface 41 (the alleged data handler), not sequencer 8 (the alleged control module)). In sum, for the above reasons, we are not persuaded of error in our determination that Petitioner did not meet its burden to establish unpatentability of claims 17–19 and 35 under 35 U.S.C. § 102(b) based on Averbuj.” slip op. at 11

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

    “Huang and Tsern, Petitioner relied on the declaration testimony of its expert, Dr. Donald Alpert (Ex. 1007). See, e.g., id. at 44 (citing Ex. 1007 ¶ 222 in support of its challenge as to claim 2). In concluding Petitioner had not demonstrated a reasonable likelihood it would prevail in showing that claims 2, 5, and 6 would have been obvious over Huang in view of Tsern, we said the following: Dr. Alpert’s opinion that a person of ordinary skill in the art would have been motivated to combine Huang and Tsern . . . is either unsupported or relies on disclosure in the ’434 patent Detailed Description. See, e.g., Ex. 1007 ¶¶ 193, 199, and 206. . . . [T]here is no evidence on this record that the cited portions of the ’434 patent are a description of prior art. Moreover, Dr. Alpert’s statements lack sufficient articulated reasoning with rational underpinning as to why an ordinary artisan at the time of the invention would have had a reason to combine the prior art elements in the manner required by the challenged claims.” slip op. at 4

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

    “statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence including material facts, and the governing law, rules, and precedent.” Our discussion in the Final Decision of the patentability challenge as to claims 17–19 and 35 based on anticipation by Averbuj addresses Petitioner’s arguments in the Petition and Reply, which are limited to a contention that Averbuj’s multiplexer 46 is required to meet the “configured to selectively input” and “selectively inputs” limitations recited in claims 17–19 and 35. See Final Dec. 44–46 (citing Pet. 19–21; Reply 17). In arguing that we should have considered Dr. Alpert’s testimony that Averbuj’s sequencer, by generating a BIST_EN signal, is “configured to selectively input”/“selectively inputs” address and control signals to the memory modules, Petitioner attempts to improperly incorporate arguments into its Petition and Reply by reference to Dr. Alpert’s declaration testimony. See 37 C.F.R. § 42.6(a)(3) (“Arguments must not be incorporated by reference from one document into another document.”). In any event, we find the declaration testimony relied on by Petitioner in support of this Request (see Req. Reh’g 13) supports our determination that Petitioner failed to show, by a preponderance of the evidence, that Averbuj anticipates claims 17–19 and 35. Dr. Alpert testified that if the “configuration [to selectively input to the address and control ports] is determined to require the structure that performs the selection itself, then the disclosed control module also includes multiplexer 46 of memory interface 41.” Ex. 1007 ¶ 78 (emphasis added); see also id. ¶ 81 (identifying multiplexer 46 as the “DRAM controller which performs the selective inputting” as recited in claim 18). Petitioner did not explain (see Pet. 19–21; Reply 17) how Averbuj describes multiplexer 46 as being part of sequencer 8 (the alleged control module). See Final Dec. 45–46 (explaining that Petitioner has not addressed Patent Owner’s argument that the device that selectively inputs address and control signals to memory modules 12 is multiplexer 46 of memory interface 41 (the alleged data handler), not sequencer 8 (the alleged control module)). In sum, for the above reasons, we are not persuaded of error in our determination that Petitioner did not meet its burden to establish unpatentability of claims 17–19 and 35 under 35 U.S.C. § 102(b) based on Averbuj.” slip op. at 11

  § 102 anticipation§ 103 obviousness
  Patents in suitUS 8,001,434
• Masterimage 3d, Inc. / Masterimage 3d Asia, LLC v. Reald Inc.No claims unpatentable
  PTAB · Apr 20, 2016 · IPR2015-00035 · APJ Bart A Gerstenblith · IPR · Final written decision

  The Board denied cancellation of claims 1–23 because Petitioner did not show Schuck was entitled to the provisional filing date, so it was not prior art.

  RulingsFinal written decision

  • BurdenDecided for patent owner

    “as those presented in Dynamic Drinkware, with a few exceptions. The main difference is that here, Patent Owner did not have the burden to antedate Schuck because the ’455 patent was filed before the actual filing date of Schuck. The result of that difference is that the burden of production started with Petitioner and remains with Petitioner to establish that Schuck is entitled to claim priority to the ’657 provisional. Dynamic Drinkware is clear in that Petitioner is required to “compare the claims of . . . [Schuck] to the disclosure in the . . . [’657] provisional application.” Dynamic Drinkware, 800 F.3d at 1381. The Federal Circuit explained: “A reference patent is only entitled to claim the benefit of the filing date of its provisional application if the disclosure of the provisional application provides support for the claims in the reference patent in compliance with § 112, ¶ 1.” Id. (citing In re Wertheim, 646 F.2d 527, 537 (CCPA 1981)). Petitioner acknowledges that the ’657 provisional fails to provide support under § 112, first paragraph, for Schuck’s claim 1. Supp. Reply 4. Petitioner’s claim chart, submitted as “Appendix 1” to its Supplemental Reply, indicates that the ’657 provisional refers to a “doublet lens” rather than a “telephoto lens pair.” Id. at App. 1, A-5. And Petitioner does not argue that the “doublet lens” provides support for the recited “telephoto lens pair.” See generally id.” slip op. at 14

  • PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted

    “It is only “confidential information” that may be protected from disclosure, 35 U.S.C. § 316(a)(7), and, even then, there is a public interest in “maintaining a complete and understandable file history” of the proceeding. Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,760 (Aug. 14, 2012). The standard for granting a motion to seal is “for good cause.” 37 C.F.R. § 42.54(a). The party moving to seal bears the burden of proof in showing entitlement to the requested relief. 37 C.F.R. § 42.20(c).” slip op. at 19

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

    “as those presented in Dynamic Drinkware, with a few exceptions. The main difference is that here, Patent Owner did not have the burden to antedate Schuck because the ’455 patent was filed before the actual filing date of Schuck. The result of that difference is that the burden of production started with Petitioner and remains with Petitioner to establish that Schuck is entitled to claim priority to the ’657 provisional. Dynamic Drinkware is clear in that Petitioner is required to “compare the claims of . . . [Schuck] to the disclosure in the . . . [’657] provisional application.” Dynamic Drinkware, 800 F.3d at 1381. The Federal Circuit explained: “A reference patent is only entitled to claim the benefit of the filing date of its provisional application if the disclosure of the provisional application provides support for the claims in the reference patent in compliance with § 112, ¶ 1.” Id. (citing In re Wertheim, 646 F.2d 527, 537 (CCPA 1981)). Petitioner acknowledges that the ’657 provisional fails to provide support under § 112, first paragraph, for Schuck’s claim 1. Supp. Reply 4. Petitioner’s claim chart, submitted as “Appendix 1” to its Supplemental Reply, indicates that the ’657 provisional refers to a “doublet lens” rather than a “telephoto lens pair.” Id. at App. 1, A-5. And Petitioner does not argue that the “doublet lens” provides support for the recited “telephoto lens pair.” See generally id.” slip op. at 14

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference not prior artDecided for patent owner

    “for multiple reasons. First, Petitioner acknowledges that what it refers to as “the Milburn doctrine” was codified in 35 U.S.C. § 102(e), and Petitioner does not show persuasively that we should read Milburn as requiring anything beyond application of that statutory section in light of the facts presented here. Supp. Reply 6. Second, Milburn did not address directly the question of whether an issued patent is entitled to claim priority to a provisional patent application, and, specifically, what must be shown in order to do so. Third, Schuck claims priority to not one, but three provisional applications, which was not the case in Milburn. Fourth, in Giacomini, the Federal Circuit expressly considered Milburn and stated: “An important limitation [on 35 U.S.C. § 119(e)(1)] is that the provisional application must provide written description support for the claimed invention.” Giacomini, 612 F.2d at 1383 (emphasis added). Although the Federal Circuit did not address the application of the argument—that the reference patent’s provisional application fails to provide written description support for the claimed subject matter—in Giacomini, because the appellant had waived it, the Federal Circuit’s decision acknowledges that there was an argument that could have been raised. Id. Finally, Dynamic Drinkware is directly on point and clearly establishes that Petitioner is required to show that the claimed invention of Schuck finds written description support in the ’657 provisional in order to rely on the ’657 provisional’s filing date. Dynamic Drinkware, 800 F.3d at 1381. It is undisputed that Petitioner has not done so. We find that Petitioner has not shown that claim 1 or any other claim of Schuck is supported by the ’657 provisional, and, thus, Petitioner has not shown that Schuck is entitled to claim priority to the ’657 provisional’s filing date. See Apple, Case IPR2015-00969, slip op. at 12–13. The result of our finding is that Schuck does not qualify as prior art, under § 102(e), to the ’455 patent, and, therefore, is not a reference which may be relied upon to establish the unpatentability of claims in an inter partes review. See 35 U.S.C. § 311(b) (“A petitioner in an inter partes review may request to cancel as unpatentable 1 or more claims of a patent only on a ground that could be raised under section 102 or 103 and only on the basis of prior art consisting of patents or printed publications.” (emphasis added)). Accordingly, Petitioner has not demonstrated, by a preponderance of the evidence, that: (1) claims 1–8, 10–14, and 16–22 are unpatentable as anticipated by Schuck and (2) claims 9, 15, and 23 are unpatentable as obvious over Schuck and APA.” slip op. at 16

  Patent outcomesUS 7,857,455 not shown unpatentable
  § 102 anticipation
  Patents in suitUS 7,857,455
• Arista Networks, Inc. v. Cisco Systems, Inc.Institution denied
  PTAB · Apr 12, 2016 · IPR2016-00018 · APJ Peter P Chen · IPR · Institution

  The Board denied institution because Arista did not show a reasonable likelihood that claims 1, 2, 6–9, 12, 13, and 17–20 were unpatentable over Chau or Chau and Wils.

  RulingsInstitution decision

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

    “review of claims 1, 2, 6–9, 12, 13, and 17–20 of U.S. Patent No. 8,051,211 B2 (Ex. 1001, “the ’211 patent”). Paper 2 (“Pet.”). Patent Owner, Cisco Systems, Inc., filed a Preliminary Response. Paper 7 (“Prelim. Resp.”). Institution of an inter partes review is authorized by statute when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a); see 37 C.F.R. § 42.108. Upon consideration of the Petition and the Preliminary Response, we are not persuaded Petitioner has demonstrated a reasonable likelihood that it would prevail in establishing the unpatentability of claims 1, 2, 6–9, 12, 13, and 17–20 of the ’211 patent. Accordingly, we do not institute an inter partes review.” slip op. at 2

  • BurdenNot shown unpatentable

    “Petitioner’s only apparent contention for Chau’s disclosure that the first and second LANs are both usable for simultaneous transmission “subsequent to” the aggregation of LANs, is that “the simultaneous transmission occurs as a result of the grouping of the first LAN (channel C2) and second LAN (channel C1).” Pet. 19–20, citing Ex. 1014 ¶ 54. The Lin declaration is similarly worded, and like the Petition, is silent as to whether Chau’s alleged simultaneous transmission occurs “subsequent to,” i.e., after the aggregation of LANs. Petitioner’s argument of simultaneous transmission occurring “as a result of” alleged aggregation of LANs is unavailing, because “subsequent to” means, “after,” not “as a result of.” In fact, in the related ’975 IPR, we expressly rejected the Patent Owner’s proposed construction of “as a result of” for “subsequent to.” See Section II.A. Neither the Petition nor the Lin declaration (Ex. 1014) cite any evidence of simultaneous transmission occurring “after” aggregation of LANs in Chau. Accordingly, we are not persuaded that Petitioner’s showing demonstrates a reasonable likelihood that it would prevail as to claim 1 being anticipated by Chau.” slip op. at 11

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

    “In addition, as we determined in the ’975 IPR, for purposes of this decision, we determine that the broadest reasonable construction of “subsequent to” is its ordinary and customary meaning, namely, “after.” See Case IPR2015-00975, slip op. at 7–8 (PTAB Oct. 6, 2015) (declining to adopt Patent Owner’s proposed construction of “as a result of” for “subsequent to”).” slip op. at 7

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

    “Petitioner’s only apparent contention for Chau’s disclosure that the first and second LANs are both usable for simultaneous transmission “subsequent to” the aggregation of LANs, is that “the simultaneous transmission occurs as a result of the grouping of the first LAN (channel C2) and second LAN (channel C1).” Pet. 19–20, citing Ex. 1014 ¶ 54. The Lin declaration is similarly worded, and like the Petition, is silent as to whether Chau’s alleged simultaneous transmission occurs “subsequent to,” i.e., after the aggregation of LANs. Petitioner’s argument of simultaneous transmission occurring “as a result of” alleged aggregation of LANs is unavailing, because “subsequent to” means, “after,” not “as a result of.” In fact, in the related ’975 IPR, we expressly rejected the Patent Owner’s proposed construction of “as a result of” for “subsequent to.” See Section II.A. Neither the Petition nor the Lin declaration (Ex. 1014) cite any evidence of simultaneous transmission occurring “after” aggregation of LANs in Chau. Accordingly, we are not persuaded that Petitioner’s showing demonstrates a reasonable likelihood that it would prevail as to claim 1 being anticipated by Chau.” slip op. at 11

  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 8,051,211

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