• 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
• 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
• 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
• Unified Patents Inc. v. Dragon Intellectual Property, LLCAll claims unpatentable
  PTAB · Feb 5, 2016 · IPR2014-01252 · APJ Stacey G White · IPR · Final written decision

  Claims 1, 2, 7, 8, 10, 13, and 14 are unpatentable as obvious over Ulmer and Goldwasser.

  RulingsFinal written decision

  • BurdenFwd all claims unpatentableUnpatentable

    “Ulmer and Goldwasser. Pet. 35–51. We have reviewed Petitioner’s detailed explanation identifying where each limitation allegedly would have been taught by Ulmer and Goldwasser, along with the testimony of Petitioner’s declarant, Dr. Hemani. See id.; Ex. 1013; Reply 12–24. We also have reviewed Patent Owner’s assertions and evidence as to why Petitioner’s explanations and evidence are deficient. PO Resp. 17–49; Ex. 2022 (Declaration of Adam Goldberg). On this record, we are persuaded that Petitioner has shown by a preponderance of the evidence that Ulmer and Goldwasser teach each limitation of claims 1 and 2.” slip op. at 10

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

    “Petitioner proffers constructions for a number of claim terms. Pet. 18–24. No claim terms require express construction for purposes of this Decision. B. Obviousness of Claims 1, 2, 7, 8, 10, 13, and 14 over Ulmer and Goldwasser” slip op. at 6

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

    “there was no motivation to combine Ulmer and Goldwasser. PO Resp. 42– 47. At the Oral Hearing, however, Patent Owner withdrew this argument. Tr. 32:4–11. Regardless, we find that Petitioner has provided sufficient evidence of a motivation to combine. Petitioner explains that a person of ordinary skill in the art would be motivated to combine Goldwasser’s disclosure with Ulmer’s because both references “address the same problem: providing simultaneous recording and playback as a mechanism to allow a viewer to skip commercials.” Pet. 25. Petitioner elaborates that due to extensive overlap between the systems of Ulmer and Goldwasser, a person of ordinary skill in the art would have been led to use various design details from Goldwasser’s teachings in a combination of Ulmer’s and Goldwasser’s systems. Id. at 25–26 We find that Petitioner’s assertions and evidence provide rational underpinning for a conclusion that it would have been obvious to combine the teachings of Ulmer and Goldwasser. And we are persuaded Petitioner’s assertions and evidence show sufficiently that the resulting system would include each of the limitations of independent claim 1 and dependent claim 2. Claim 2 depends from claim 1 and recites that the claimed apparatus “further compris[es] a remote control unit, and wherein said keyboard is housed in said remote control unit.” Petitioner notes that Ulmer explicitly discloses that its system includes a remote control unit. Id. at 28, 37, 51. We agree with Petitioner’s analysis of the recited art’s disclosures as applied to claim 2. Accordingly, we are persuaded that Petitioner has demonstrated by a preponderance of the evidence the unpatentability of independent claim 1 and dependent claim 2 over Ulmer and Goldwasser.” slip op. at 17

  • Obviousness (§103) › KSR rationalesDecided for petitioner

    “In addition, we also find persuasive Petitioner’s argument that it would have been an obvious design choice to use play and record buttons on a remote control to control Ulmer’s device. See Pet. 14 (citing Ex. 1013 ¶ 38). Petitioner has provided evidence that such remote controls were well known at the time of the application for the ’444 patent. See Reply 15 (citing Ex. 1013 ¶¶ 25, 27–28; Ex. 1004); Tr. 10–11 (citing Ex. 1013 ¶ 28; Ex. 1004, 2; Ex. 1008, 2:29–34). Based on this evidence, we are persuaded it would have been within the knowledge and abilities of one of ordinary skill in the art to control Ulmer’s device with a remote control that includes play and record buttons.” slip op. at 16

  Patent outcomesUS 5,930,444 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 5,930,444
• HTC Corporation / HTC America, Inc. v. NFC Technology, LLCAll claims unpatentable
  PTAB · Feb 3, 2016 · IPR2014-01198 · APJ James B Arpin · IPR · Final written decision

  Claims 1–3 and 5 are unpatentable as obvious over Sears and as obvious over Sears and Nguyen.

  RulingsFinal written decision

  • BurdenDecided for petitioner

    “A party seeking to establish an actual reduction to practice must satisfy a two-prong test: (1) the party must construct an embodiment or perform a process that satisfies every element of the claim at issue, and (2) the embodiment or process must operate for its intended purpose. See Eaton v. Evans, 204 F.3d 1094, 1097 (Fed. Cir. 2000). Moreover, in order to demonstrate an actual reduction to practice, the constructed embodiment must have been tested sufficiently to demonstrate that it will work for its intended purpose, but it need not be in a commercially satisfactory stage of development. See, e.g., Scott, 34 F.3d at 1062; see also Wells v. Fremont, 177 USPQ 22, 24–25 (BPAI 1972) (“[E]ven where tests are conducted under ‘bench’ or laboratory conditions, those conditions must ‘fully duplicate each and every condition of actual use’ or if they do not, then the evidence must establish a relationship between the subject matter, the test condition and the intended functional setting of the invention,” but it is not necessary that all the conditions of actual use are duplicated.). Further, an actual reduction to practice can be done by another on behalf of the inventor. De Solms v. Schoenwald, 15 USPQ2d 1507, 1510 (BPAI 1990). Here, it is undisputed that Concept Electronique, rather than the named inventor, Mr. Charrat, fabricated the prototype, on which Patent Owner relies to establish actual reduction to practice. PO Resp. 17–18. Assuming initially, without deciding, that the prototype embodies the subject matter of the challenged claims, the issue is whether Patent Owner has sufficiently shown that the Concept Electronique-built prototype inures to Patent Owner’s benefit. We determine that Patent Owner has not.” slip op. at 23

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportReference is prior artPriority date, deniedDecided for petitioner

    “To antedate . . . an invention, a party must show either an earlier reduction to practice, or an earlier conception followed by a diligent reduction to practice.” Purdue Pharma L.P. v. Boehringer Ingelheim GMBH, 237 F.3d 1359, 1365 (Fed. Cir. 2001) (emphasis added, internal citation omitted). Patent Owner’s position is based on the first of these options, i.e., that it was the first actually to reduce the invention to practice, rather than the first to conceive plus diligent reduction to practice. PO Resp. 9; PO Sur-Reply 4–5. A party seeking to establish an actual reduction to practice must satisfy a two-prong test: (1) the party must construct an embodiment or perform a process that satisfies every element of the claim at issue, and (2) the embodiment or process must operate for its intended purpose. See Eaton v. Evans, 204 F.3d 1094, 1097 (Fed. Cir. 2000). Moreover, in order to demonstrate an actual reduction to practice, the constructed embodiment must have been tested sufficiently to demonstrate that it will work for its intended purpose, but it need not be in a commercially satisfactory stage of development. See, e.g., Scott, 34 F.3d at 1062; see also Wells v. Fremont, 177 USPQ 22, 24–25 (BPAI 1972) (“[E]ven where tests are conducted under ‘bench’ or laboratory conditions, those conditions must ‘fully duplicate each and every condition of actual use’ or if they do not, then the evidence must establish a relationship between the subject matter, the test condition and the intended functional setting of the invention,” but it is not necessary that all the conditions of actual use are duplicated.). Further, an actual reduction to practice can be done by another on behalf of the inventor. De Solms v. Schoenwald, 15 USPQ2d 1507, 1510 (BPAI 1990). Here, it is undisputed that Concept Electronique, rather than the named inventor, Mr. Charrat, fabricated the prototype, on which Patent Owner relies to establish actual reduction to practice. PO Resp. 17–18. Assuming initially, without deciding, that the prototype embodies the subject matter of the challenged claims, the issue is whether Patent Owner has sufficiently shown that the Concept Electronique-built prototype inures to Patent Owner’s benefit. We determine that Patent Owner has not. slip op. at 23

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “in the art as “a person with at least a master’s degree in electrical engineering (or a substantively equivalent degree), in addition to two years of experience with systems that use short-range wireless communication, such as radio frequency identification (RFID) systems.” Ex. 1003 ¶ 12 (emphasis added); Ex. 1031 ¶ 18; see also Pet. 8 (adopting this definition). Patent Owner’s declarant, Dr. Alyssa B. Apsel, defines a person of ordinary skill in the art as a person having “at least a bachelor’s degree in electrical 7 Patent Owner does not contend in the Patent Owner Response that secondary considerations are present that would render the challenged claims patentable over the applied references. See Paper 11, 2–3. engineering (or an equivalent degree), and two years of experience with short-range wireless communication systems.” Ex. 2027 ¶ 13 (emphasis added); see PO Resp. 9, 45, 47. The proposed definitions differ primarily in level of academic achievement, with Patent Owner’s declarant proposing a lower level. Based on Exhibit 1003 (Attachment A) and Exhibit 2028, both Dr. Tentzeris and Dr. Apsel meet or exceed the requirements for qualification as a person of ordinary skill in the art under either definition. Moreover, neither party challenges the other party’s declarant’s credentials. Therefore, to the extent necessary, we adopt Dr. Apsel’s definition of a person of ordinary skill in the art.” slip op. at 32

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

    “Specifically, Patent Owner contends that “[t]his method of modulating the power does not involve ‘setting’ the buffers to any particular value; it only involves changing the duty cycle of the input they receive.” Id. (citing Ex. 2027 ¶ 58). Nevertheless, because Sears’s Figure 5 depicts a square wave provided by buffers 200A–200F, we are persuaded that Sears teaches a control circuit comprising binary ports or teaching or suggesting binary ports. See Ex. 1003 ¶¶ 30, 31. In addition, Petitioner argues that buffers 200A–200F are “tristatable” because “buffers (200A–200F) are used to yield (1) a high level output, (2) a low level output, or (3) complete disconnection that amounts to a high impedance state.” Pet. 16 (citing Ex. 1004, col. 5, ll. 4–8, col. 6, ll. 39–46; Ex. 1003 ¶¶ 32, 33). Moreover, each buffer 200 may be “constructed from a CMOS hex inverter integrated circuit” that drives a load impedance that is either “a low impedance load, such as the electromagnetic antenna 108B, or a high or infinite impedance load.” Id. at 16 (quoting Ex. 1004, col. 4, ll. 36–42). Petitioner discusses the application of Sears’s disclosure of a CMOS hex inverter circuit and why a person of ordinary skill in the art would understand that this circuit teaches the control circuit recited in the challenged claims. Pet. 15–16; see Ex. 1003 ¶ 33 (“A [person of ordinary skill in the art] would have understood that a tristatable CMOS inverter, as described in Sears, provides output in one of three states: logic 0, logic 1, and high impedance.”). Consequently, we are persuaded that Petitioner has identified sufficiently “the scope and content of the prior art . . . ; differences between the prior art and the claims at issue . . . ; and the level of ordinary skill in the art.” Graham, 383 U.S. at 17.” slip op. at 36

  Patent outcomesUS 6,700,551 unpatentable
  § 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 6,700,551
• Oracle Corporation / Netapp Inc. v. Crossroads Systems, Inc.All claims unpatentable
  PTAB · Jan 29, 2016 · IPR2014-01207 · APJ Kristina M Kalan · IPR · Final written decision

  Claims 14–39 are unpatentable as obvious over the CRD Manual, CRD-5500 Data Sheet, and Smith, and over Kikuchi and Bergsten; unpatentability over Bergsten and Hirai was not shown.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageTerm construed petitioner constructionDecided for petitioner

    “The construction proposed by Patent Owner is overly narrow. Although Patent Owner emphasizes that the map must identify specific host devices, it does not explain persuasively why the claim language should be construed to exclude doing so via intermediate identifiers. See PO Resp. 2–3. Patent Owner does not identify any disclosure in the ’147 patent’s specification that clearly disavows mapping to a device indirectly, or mapping to a device via an intermediate identifier that could identify a different host if the system were configured differently. See Gillette Co. v. Energizer Holdings, Inc., 405 F.3d 1367, 1374 (Fed. Cir. 2005) (holding that “words or expressions of manifest exclusion or explicit disclaimers in the specification are necessary to disavow claim scope” (internal quotations omitted)). Its discussion of Figure 3, for example, is insufficient to compel a narrow construction of the term because it analyzes only a preferred embodiment of the invention. PO Resp. 45–46; see, e.g., In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004) (holding that limitations should not be imported from preferred embodiments into the claims absent a clear disclaimer of claim scope in the specification). Moreover, the ’147 patent specifically discusses mapping with identifiers that are not immutable. For example, the specification discusses addressing devices on an FC loop using an AL_PA (arbitrated loop physical address), and the possibility of “FC devices changing their AL-PA due to device insertion or other loop initialization.” Ex. 1001, 8:40–46; Reply 3–6 (discussing evidence supporting the use of intermediate identifiers, including testimony by Patent Owner’s proffered expert). Further, the challenged claims of the ’147 patent indicate the mapping may use mere representations of a device rather than requiring direct mapping to the device itself. Claim 15, for example, recites mapping including “virtual LUNs that provide a representation of the storage device,” and claim 17 recites “mapping from a host device ID to a virtual LUN representation of the remote storage device.” Although these claims refer to “virtual” representations of storage devices rather than host devices, the “maps between” term of the independent claims uses the same language when referring to both the devices and storage devices—for example, claim 14 merely recites a “map between the device and the remote storage device.” The claim language does not indicate that the mapping may address storage devices one way, but that devices must be addressed in a different, more specific or direct way. For the reasons above, we are not persuaded that the broadest reasonable interpretation of “map between the device and the remote storage device” mandates mapping directly or immutably to a host device itself, or excludes mapping to devices using intermediate identifiers.” slip op. at 7

  • Prior constructionPrior construction adoptedDecided for patent owner

    “The parties note that a district court in a related case construed the term as follows, and the Special Master in the co-pending litigation between the parties recommended adoption of this construction: To create a path from a device on one side of the storage router to a device on the other side of the router. A “map” contains a representation of devices on each side of the storage router, so that when a device on one side of the storage router wants to communicate with a device on the other side of the storage router, the storage router can connect the devices. Ex. 2034, 4; see also PO Resp. 2. Although we are not bound by the construction or reasoning of the district court, we do not disregard the analysis and conclusions of a court construing the same claim term in a concurrent proceeding concerning the same patent. Power Integrations, Inc. v. Lee, 797 F.3d 1318, 1326–1327 (Fed. Cir. 2015) (discussing the Board’s error in declining to address or acknowledge the district court’s claim construction). After considering the construction of the district court, we determine this construction corresponds to the broadest reasonable interpretation and adopt it for purposes of this Decision.” slip op. at 8

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

    “We credit the testimony of Dr. Chase that one of ordinary skill in the art would have been motivated and able to combine Kikuchi and Bergsten in the manner proposed by Petitioner. Ex. 1010 ¶¶ 142–147; Ex. 2054, 180–213. Patent Owner’s arguments to the contrary address the purported complexity of the combination, but do not establish that a person of ordinary skill would not have had a reasonable expectation of success. Obviousness does not require absolute predictability. In re Kronig, 539 F.2d 1300, 1304 (CCPA 1976). Both experts agree that the modifications were within the level of ordinary skill in this field (Ex. 1010 ¶ 145; Ex. 1218, 103:16–21). Dr. Chase’s Declaration states that tables and trees are interchangeable data lookup constructs for address translations, and that the “tree mapping” of Bergsten may be collapsed into a simple mapping table construct such as that of Kikuchi in a single-controller implementation; his deposition testimony provides greater detail in response to Patent Owner’s questions on how the collapsing would occur in different circumstances. Ex. 1010 ¶ 145; 2054, 180–219. Thus, we are persuaded by Petitioner’s testimony and evidence that the combination of Kikuchi and Bergsten was within the skill level of an ordinarily skilled artisan, and would not change the principles of operation of the respective references.” slip op. at 28

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportReference is prior artDecided for petitioner

    “there must be continuous exercise of reasonable diligence. In re McIntosh, 230 F.2d 615, 619 (CCPA 1956); see also Burns v. Curtis, 172 F.2d 588, 591 (CCPA 1949) (referring to “reasonably continuous activity”). A party alleging diligence must account for the entire critical period. Griffith v. Kanamuru, 816 F.2d 624, 626 (Fed. Cir. 1987); Gould v. Schawlow, 363 F.2d 908, 919 (CCPA 1966). Even a short period of unexplained inactivity is sufficient to defeat a claim of diligence. Morway v. Bondi, 203 F.2d 742, 749 (CCPA 1953); Ireland v. Smith, 97 F.2d 95, 99–100 (CCPA 1938). In In re Mulder, 716 F.2d 1542, 1542–46 (Fed. Cir. 1983), the Federal Circuit affirmed a determination of lack of reasonable diligence, where the evidence of record was lacking for a two-day critical period. Likewise, in Rieser v. Williams, 255 F.2d 419, 424 (CCPA 1958), there was insufficient diligence where no activity was shown during the first 13 days of the critical period.” slip op. at 21

  Patent outcomesUS 7,051,147 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,051,147
• Oracle Corporation / Netapp Inc. v. Crossroads Systems, Inc.All claims unpatentable
  PTAB · Jan 29, 2016 · IPR2014-01209 · APJ Kristina M Kalan · IPR · Final written decision

  Claims 1, 2, 4, 5, 10, 11, and 13 are unpatentable as obvious over the Kikuchi-based grounds; the Bergsten–Hirai grounds did not establish unpatentability.

  RulingsFinal written decision

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportReference is prior artDecided for petitioner

    “must be continuous exercise of reasonable diligence. In re McIntosh, 230 F.2d 615, 619 (CCPA 1956); see also Burns v. Curtis, 172 F.2d 588, 591 (CCPA 1949) (referring to “reasonably continuous activity”). A party alleging diligence must account for the entire critical period. Griffith v. Kanamuru, 816 F.2d 624, 626 (Fed. Cir. 1987); Gould v. Schawlow, 363 F.2d 908, 919 (CCPA 1966). Even a short period of unexplained inactivity is sufficient to defeat a claim of diligence. Morway v. Bondi, 203 F.2d 742, 749 (CCPA 1953); Ireland v. Smith, 97 F.2d 95, 99–100 (CCPA 1938). In In re Mulder, 716 F.2d 1542, 1542–46 (Fed. Cir. 1983), the Federal Circuit affirmed a determination of lack of reasonable diligence, where the evidence of record was lacking for a two-day critical period. Likewise, in Rieser v. Williams, 255 F.2d 419, 424 (CCPA 1958), there was insufficient diligence where no activity was shown during the first 13 days of the critical period.” slip op. at 10

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

    “We credit the testimony of Dr. Chase that one of ordinary skill in the art would have been motivated and able to combine Kikuchi and Bergsten in the manner proposed by Petitioner. Ex. 1010 ¶¶ 142–147; Ex. 2054, 180– 213. Patent Owner’s arguments to the contrary address the purported complexity of the combination, but do not establish that a person of ordinary skill would not have had a reasonable expectation of success. Obviousness does not require absolute predictability. In re Kronig, 539 F.2d 1300, 1304 (CCPA 1976). Both experts agree that the modifications were within the level of ordinary skill in this field (Ex. 1010 ¶ 145; Ex. 1218, 103:16–21). Dr. Chase’s Declaration states that tables and trees are interchangeable data lookup constructs for address translations, and that the “tree mapping” of Bergsten may be collapsed into a simple mapping table construct such as that of Kikuchi in a single-controller implementation; his deposition testimony provides greater detail in response to Patent Owner’s questions on how the collapsing would occur in different circumstances. Ex. 1010 ¶ 145; 2054, 180–219. Thus, we are persuaded by Petitioner’s testimony and evidence that the combination of Kikuchi and Bergsten was within the skill level of an ordinarily skilled artisan, and would not change the principles of operation of the respective references. Finally, Patent Owner argues that Petitioner has not provided a motivation to combine Kikuchi and Bergsten. PO Resp. 50–52. According to Petitioner, one of ordinary skill in the art would have been motivated to combine Kikuchi and Bergsten to “improve the Kikuchi system with the advantage of virtualized, networked storage,” to “increase both the number of storage devices accessible to hosts and the storage address range available,” and to “benefit from increased restructuring capabilities.” Pet. 34–35 (citing Ex. 1010 ¶ 142–147); Reply 13 (citing Ex. 1010 ¶ 146). Patent Owner challenges each of these statements, and the supporting testimony, as lacking evidence supporting how Bergsten would provide the alleged benefits or explaining why one of ordinary skill in the art would be motivated to combine the references as proposed by Petitioner. PO Resp. 51–52. Here, too, we credit the testimony of Dr. Chase that one of ordinary skill in the art would have been motivated to combine Kikuchi and Bergsten in the manner proposed by Petitioner. Ex. 1010 ¶¶ 142–147. Bergsten itself indicates that it would be “desirable” for a storage controller to not be “dependent on any particular hardware or software configuration of any host computer or mass storage device which it services.” Ex. 1007, 1:48–51. The numerous reasons articulated by Petitioner for the combination of Kikuchi with Bergsten, resulting in an enhanced system with advantages including virtualized storage, increased capacity and increased flexibility, are detailed by Petitioner and supported by testimony. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421–22 (2007). Patent Owner’s arguments to the contrary are unavailing.” slip op. at 17

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation not foundDecided for patent owner

    “This type of reasoning—where relevant parts of the reference are disregarded for the proposed combination without sufficient explanation of why a person of ordinary skill would do so—is precisely the type of hindsight reasoning that must be rejected. “Care must be taken to avoid hindsight reconstruction by using ‘the patent in suit as a guide through the maze of prior art references, combining the right references in the right way so as to achieve the result of the claims in suit.’” Grain Processing Corp. v. Am. Maize-Prods. Co., 840 F.2d 902, 907 (Fed. Cir. 1988) (quoting Orthopedic Equip. Co. v. United States, 702 F.2d 1005, 1012 (Fed. Cir. 1983)). We have been asked without sufficient justification to carve out and perhaps modify the access controls disclosed in Hirai and combine them with Bergsten to hold that the addition of a certain type of access controls to Bergsten would have been obvious. But “[t]his type of piecemeal analysis is precisely the kind of hindsight that the Board must not engage in.” In re NTP, Inc., 654 F.3d 1279, 1299 (Fed. Cir. 2011). Petitioner has not explained why a person of ordinary skill, without the claims in front of them, would have been motivated to take the access control table of Hirai and merge it with the alleged map of Bergsten in the manner that they have proposed. The only thing that Petitioner suggests is that a person of ordinary skill could have done it, but that is not the test of obviousness. See Belden, Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (“Obviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.”). Petitioner’s analysis of claims 1, 2, 4, 10, 11, and 13 all rely on the same principles. Accordingly, we find that Petitioner has failed to show by a preponderance of the evidence that claims 1, 2, 4, 10, 11, and 13 are obvious over the combination of Bergsten and Hirai.” slip op. at 26

  • Obviousness (§103) › Objective indicia / secondary considerations › Long-felt need / failure of othersDecided for petitioner

    “Establishing long-felt need requires objective evidence that an art- recognized problem existed in the art for a long period of time without solution.” Ex parte Jellá, 90 USPQ2d 1009, 1019 (BPAI 2008) (precedential). We have reviewed the cited testimony (Ex. 2029, 103:18–24, 104:15– 105:1, 136:6–14), and we do not find it to demonstrate a long-felt need. The testimony is directed to whether the term “storage router” was used in the art in the late 1990s. See, e.g., id. at 104:24–105:1. It does not address what the needs or problems of the art were at that time. Thus, we do not find it supports Patent Owner’s contention. The article cited by Patent Owner (Ex. 2038), which suggests that a problem might have existed in file system performance generally, nevertheless does not establish that there was long-felt need for the claimed invention. Patent Owner has proffered no evidence as to how long this problem had been recognized, the extent of the problem, whether it remained unresolved at the time of the invention, and whether the invention resolved this need. See Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1332–33 (Fed. Cir. 2009). As such, we find that Patent Owner has not shown adequately that there was any long-felt need. slip op. at 29

  Patent outcomesUS 7,051,147 unpatentable
  § 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,051,147

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.