• Marvell Semiconductor, Inc. v. Intellectual Ventures I LLCSome claims unpatentable
  PTAB · Nov 30, 2015 · IPR2014-00553 · APJ Patrick M Boucher · IPR · Final written decision

  Claims 1–3, 5–10, 13, 18, and 23 are unpatentable under § 103; claims 4, 11–12, 14–17, and 19–22 were not shown unpatentable.

  RulingsFinal written decision

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

    “A reference is established to be a “printed publication” “upon a satisfactory showing that such document has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art, exercising reasonable diligence, can locate it.” In” slip op. at 8

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

    “the art “would have appreciated the benefit of including multi-carrier modulation in the Wu system” because “Wu itself references the 802.11a standard as a multi-carrier OFDM scheme that is able to achieve data rates that are faster than the 802.11b transmission rates used in the Wu system.” Id. at 48 (citing Ex. 1120 ¶¶ 43–47, 65–68; Ex. 1108, 411). Petitioner contends that [w]ith this motivation in mind a [person of ordinary skill in the art] would have recognized that adding the multi-carrier 802.11a modulation scheme to the modulation schemes already available in the Wu system would have been a simple addition, if a technique was available for using a channel estimate obtained from data modulated according to a single carrier modulation scheme for acquisition of data modulated according to a multi-carrier modulation scheme[,] and supports that contention with testimony by Dr. Almeroth. Id. at 48 (citing Ex. 1120 ¶¶ 43–47, 65–68). Petitioner identifies such a technique as disclosed by Böhnke. Id. at 49. Böhnke “relates to the mapping of data and pilot symbols in an OFDM-system.” Ex. 1113, col. 1, ll. 4–5. Figure 2 of Böhnke is reproduced below. Figure 2 illustrates a sequence that includes a first OFDM modulated signal S1, a midamble MA that can be OFDM modulated or single-carrier modulated, and a second OFDM symbol S2. Id. at col. 4, ll. 36–41. The midamble can be used for the transmission of pilot symbols, which “are necessary for a channel estimation such as to effect coherent detection of e.g. OFDM-modulated signals,” and such pilot symbols can be created by a single carrier modulation with a known training sequence. Id. col. 1, ll. 7–9, col. 5, ll. 45–49, col. 5, ll. 61–63. Böhnke, thus, uses the channel estimation obtained from the single-carrier training sequence to detect multi-carrier OFDM symbols by matching bandwidth and performing synchronization. Id. at col. 2, ll. 43–45, col. 2, ll. 61–62. Petitioner reasons that the Böhnke channel-estimation techniques “provide a way to combine a high-rate, multicarrier OFDM data transmission scheme with a single carrier training sequence” and that [w]ith this background, a [person of ordinary skill in the art] investigating options for including the multi-carrier 802.11a standard in the Wu system would have appreciated that Bohnke’s channel estimation techniques could be applied to Wu’s single-carrier 802.11b preamble and used for acquisition of data modulated according to multi-carrier 802.11a.” slip op. at 12

  • BurdenMixed

    “We agree with Patent Owner that Petitioner’s analysis of claim 22, which recites separate single-carrier and multi-carrier receivers, as well as a switch coupled to such receivers, is deficient. Petitioner’s assertion that claim 22 is unpatentable for “reasons similar to those explained in regards to claims 1-3 and 5” insufficiently addresses these limitations, which do not appear in claims 1–3 or 5. Pet. 58.” slip op. at 23

  Patent outcomesUS 6,754,195 mixed
  § 102 anticipation§ 103 obviousness
  Patents in suitUS 6,754,195
• Homeland Housewares, LLC v. Whirlpool CorporationNo claims unpatentable
  PTAB · Oct 21, 2015 · IPR2014-00877 · APJ Patrick M Boucher · IPR · Final written decision

  Claims 1–16 were not shown unpatentable: Kolar did not anticipate them, Kolar did not render them obvious, and Wulf did not anticipate them.

  RulingsFinal written decision

  • Expert testimonyPatent owner expert creditedDecided for patent owner

    “As Petitioner observes, the Board has found the rule of Harza inapplicable where duplicating components would have rendered the claimed subject matter unsuitable for its intended purpose. PO Resp. 43 (citing Ex parte Efremova, No. 2010-003842, 2011 WL 1131352, at *3 (BPAI Mar. 28, 2011)). We agree with the reasoning of the panel in Efremova. Mr. Faerber testifies that “it would not have been obvious to repeat the drink program of Figure 6, in whole or in part” because “[r]epeating a program would risk overmixing the blender contents, and would defeat the purpose of having a set program to produce consistent and complete results.” Ex. 2001 ¶ 89. We credit the testimony of Mr. Faerber, which is uncontroverted.” slip op. at 11

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

    “3. “to effect a pulsing” Patent Owner proposes that “to effect a pulsing,” which is recited in each of the independent claims, should be construed to mean “to effect a series of repeated pulses.” PO Resp. 14–20. Patent Owner contends that the specification supports a distinction between “pulsing” and “pulses,” and that it would be unreasonable to construe “pulsing” to include only one pulse. Id. Patent Owner supports its position with uncontroverted testimony by Mr. Faerber. Ex. 2001 ¶¶ 46–53. Petitioner responds in its Reply that “a ‘pulsing that includes only one pulse is still a reasonable interpretation which the Board should adopt.” Reply 6. But Petitioner recanted that position in its argument at oral hearing: JUDGE BOUCHER: . . . You seem to indicate that a “pulsing” implie[s] that there would be multiple pulses. Is that a correct understanding of Petitioner’s position? MR. TROJAN: That’s correct, that -- right. Tr. 7:12–16. We adopt Patent Owner’s proposed construction of “to effect a pulsing” as “to effect a series of repeated pulses.”” slip op. at 7

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

    “Petitioner responds that “[i]t is noteworthy that the limitation . . . is at the very end of claim 1,” contending that “what happen[s] after the blade reaches the operating speed is not covered by the claims.” Reply 6. We are not persuaded by this contention because the “pulsing” recited in the independent claims requires multiple pulses, each of which has the recited “constant speed phase,” “deceleration phase,” and “acceleration phase.” We also are unpersuaded by Petitioner’s argument that the cutter assembly may have multiple operating speeds. See id. at 7–8. Even acknowledging that the recitation of “a predetermined operating speed” in the “constant speed phase” allows for the possibility that the cutter assembly may have more than one predetermined operating speed, the relevant limitation refers to increasing the speed of the cutter assembly “to the operating speed” (emphasis added). Petitioner’s argument is not supported by the claim language nor by any evidence presented by Petitioner. We adopt Patent Owner’s construction of “to the operating speed” as “up to, but not past, the operating speed.”” slip op. at 8

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

    “We agree with Patent Owner that Kolar does not disclose “automatically controlling a rotational speed of the cutter assembly to effect a pulsing,” wherein each pulse comprises the recited “constant speed phase,” “deceleration phase,” and “acceleration phase.” See PO Resp. 26–31. First, Patent Owner observes that the “pulse blend” routine identified by Petitioner executes separately from automatically controlled user drink programs as a manual pulse in which the blender motor runs only as long as the user is pushing the pulse button. Id. at 27–28. Patent Owner supports its position with unrebutted testimony by Mr. Faerber. Ex. 2001 ¶ 74. Thus, the “pulse blend” routine described by Kolar does not “automatically” control a rotational speed of the cutter assembly to effect a pulsing as required by the independent claims. Second, as Mr. Faerber testifies, Figure 6 of Kolar “depicts a set of different, non-repeating steps. No part of the drink program is repeated.” Ex. 2001 ¶ 75. The illustrated sequence, for example, has only a single deceleration phase, and, therefore, does not disclose “effect[ing] a pulsing” by effecting a series of repeated pulses that each have a constant speed phase, a deceleration phase, and an acceleration phase. See PO Resp. 31. We also agree with Patent Owner that Kolar does not disclose an acceleration phase, where the speed of the cutter assembly is “increased from the settling speed to the operating speed,” as recited in each of the independent claims. See id. at 32–33. Patent Owner supports its position with unrebutted testimony by Mr. Faerber. Ex. 2001 ¶¶ 77–83. The acceleration phase identified by Petitioner between t4 and t5 in Figure 6 of Kolar does not increase “to the operating speed,” as we have construed the phrase, but instead increases to a speed greater than the operating speed. For these reasons, we conclude that Petitioner has not shown, by a preponderance of the evidence, that any claim of the ’688 patent is anticipated by Kolar.” slip op. at 9

  Patent outcomesUS 7,581,688 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 7,581,688
• Canon Inc. v. Intellectual Ventures I LLCNo claims unpatentable
  PTAB · Oct 2, 2015 · IPR2014-00757 · APJ Patrick M Boucher · IPR · Final written decision

  Claims 1–20 were not shown unpatentable because the asserted references did not disclose received scan control signals that contain no timing control signals.

  RulingsFinal written decision

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

    “considerations are relevant. First, the Specification of the ’285 patent explains that the “flat cable transmits scanning control signals . . . instead of timing control signals.” Ex. 1001, col. 4, ll. 26–28 (emphasis added). In the related proceeding, we observed that this portion of the Specification “suggests a distinction between scanning control signals and timing control signals,” but “does not support unambiguously Patent Owner’s position of complete independence between scan control signals and timing control signals.” Canon Inc. v. Intellectual Ventures I LLC, Case IPR2014-00535, slip op. at 8 (PTAB Sept. 23, 2015) (Paper 37). We note that a construction of “scan control signals” and “timing control signals” that effected such complete independence would render the negative limitation that “the received scan control signals do not comprise any timing control signals” superfluous in the claims of the ’285 patent. “A claim construction that gives meaning to all the terms of the claim is preferred over one that does not do so.” Merck & Co., Inc. v. Teva Pharms. USA, Inc., 395 F.3d 1364, 1372 (Fed. Cir. 2005) (citing Elekta Instrument S.A. v. O.U.R. Sci. Int’l, Inc., 214 F.3d 1302, 1307 (Fed. Cir. 2000)); see Gen. Am. Transp. Corp. v. Cryo- Trans, Inc., 93 F.3d 766, 770 (Fed. Cir. 1996) (rejecting district-court claim construction that rendered claim requirement superfluous). Second, we disagree with Petitioner’s contention that Patent Owner’s” slip op. at 7

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Decided for petitioner

    “3. Means-Plus-Function Limitations Claims 1–6 include several terms recited as “means for” performing identified functions. In the Institution Decision, we construed these recitations under 35 U.S.C. § 112, ¶ 6, as follows. Dec. 7–8. We see no reason to alter those constructions based on the positions of the parties as developed during the trial, and accordingly adopt them herein.” slip op. at 9

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

    “generation of timing control signals in response to receipt of scan control signals, “wherein the [received] scan control signals do not comprise any timing control signals.” Petitioner contends that all limitations of the independent claims, including this recitation, are disclosed by Hayashi. Pet. 17–25. Specifically, Petitioner contends that the set of signals WR*, A<0>, and CDATA<7, . . . ,0> are “scan control signals” and that the signals output by driving clock generating circuit 112 are “timing control signals.” Id. at 17–19. Petitioner identifies a distinction in the functionality of signals WR*, A<0>, and CDATA<7, . . . ,0>, and the functionality of signals output by driving clock generating circuit 112. Because the signals output by the driving clock generating circuit are produced in response to a data value carried by CDATA<7, . . . ,0>, Petitioner contends that CDATA<7, . . . , 0> is not itself a timing control signal. Id. at 19. According to Petitioner, only signals output by Hayashi’s driving clock generating circuit are timing control signals, not signals traveling to the driving clock generating circuit. Id. Petitioner supports its argument with testimony by Richard Carley, Ph.D. Ex. 1002 ¶¶ 52–60, 121–128, 196–203.” slip op. at 12

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable

    “Petitioner thus contends that all limitations of the independent claims, including the requirement that “the [received] scan control signals do not comprise any timing control signals,” are disclosed by Tsuboi and Wada. Pet. 41–54. Patent Owner responds that “[p]eople of ordinary skill in the art would readily recognize Tsuboi’s primary scanning synchronization signal and Wada’s synchronization signal TR are timing control signals.” PO Resp. 25. Similar to its argument directed at the Hayashi-based grounds, Patent Owner relies on testimony by Dr. Zech that a “CPU is understood by one of ordinary skill in the art to control a timing generator.” Id. at 25–26 (citing Ex. 2004 ¶ 69). Patent Owner observes that “Tsuboi’s primary scanning synchronization signal is generated . . . by CPU 21” and that “Wada’s synchronization signal TR is also generated by a timing generator, namely control signal generating circuit 27.” Id. (citing Ex. 1005 ¶ 39; Ex. 1006 ¶ 18). Patent Owner further notes that Petitioner’s expert, Dr. Carley, acknowledged during his deposition that the primary scanning synchronization signal “is used to align the reading out of the CCD in time, meaning it starts it up.” Id. at 26 (citing Ex. 2006, 72:14–16). Under the claim construction we have adopted, we are persuaded by Patent Owner’s analysis. Based on the evidence before us, we find that Petitioner has not demonstrated that Tsuboi or Wada discloses “wherein the received scan control signals do not comprise any timing control signals,” as recited in each independent claim. Patent Owner’s analysis thus applies to all claims of the ’285 patent. Accordingly, we conclude that Petitioner has not established, by a preponderance of the evidence, that any claim of the ’285 patent is unpatentable over Tsuboi and Wada together or in combination with other art.” slip op. at 17

  Patent outcomesUS 8,300,285 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 8,300,285
• Canon Inc. v. Intellectual Ventures I LLCAll claims unpatentable
  PTAB · Sep 23, 2015 · IPR2014-00535 · APJ Patrick M Boucher · IPR · Final written decision

  Claims 1–31 are unpatentable: claims 1, 3, 5, 6, and 10–31 are anticipated by Tsuboi, and all claims are also held unpatentable on one or more obviousness grounds.

  RulingsFinal written decision

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

    “We partially agree with Patent Owner, in that Petitioner’s proposed construction includes the words “instruction” and “signal,” which are unnecessary for a construction of the word “converting” itself. But a dictionary definition of “convert” is “to change from one form or function to another.” Ex. 3001. Patent Owner offers no explanation for its position that “changing is not the same as converting,” and that position is inconsistent with the dictionary definition. Accordingly, we refine our construction herein to construe “converting [X] into [Y] signals” as changing the form of X into Y signals.” slip op. at 6

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

    “We are not persuaded by Patent Owner’s reasoning. Although the portion of the Specification cited by Patent Owner suggests a distinction between scanning control signals and timing control signals, it does not support unambiguously Patent Owner’s position of complete independence between scan control signals and timing control signals. That is, it is not apparent from the statement identified by Patent Owner that the scan control signals transmitted over the flat cable lack any signal that affects timing control. For example, Patent Owner acknowledged at the Oral Hearing that the specific scanning control signals mentioned in the ’406 patent are the image resolution, the brightness level, and the scanning range, and that these scanning control signals are used “to create the timing [control] signal on the optical unit 220.” Tr. 50:13–20. Moreover, the plain language of claims 1, 2, 12, 14, 22, 26, and 27, which recite “converting” scan control signals into timing control signals, is inconsistent with Patent Owner’s position. Under the construction we adopt, “converting” scan control signals into timing control signals means changing the form of scan control signals into timing control signals, which does not require their complete independence. The negative limitation that Patent Owner proposes to read into the expression appears nowhere in the text of the claim itself. “[A] claim construction analysis must begin and remain centered on the claim language itself.” Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1116 (Fed. Cir. 2004). Claims terms can be assigned a scope narrower than their ordinary meaning only if there is some indication in the patent or the prosecution history that a term was meant to have a more restrictive meaning or a broader meaning was disclaimed during prosecution. Saunders Grp., Inc. v. Comfortrac, Inc. 492 F.3d 1329, 1331 (Fed. Cir. 2007). Neither the portion of the Specification identified by Patent Owner nor the prosecution history persuades us that the phrase was meant to have the more restrictive meaning Patent Owner now advocates.” slip op. at 8

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

    “4. Means-plus-function Limitations Claims 21–25 include several terms recited as “means for” performing identified functions. In the Institution Decision, we construed these recitations under 35 U.S.C. § 112, ¶ 6, as follows. We see no reason to alter those constructions based on the positions of the parties as developed during the trial, and accordingly adopt them herein.” slip op. at 10

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

    “discloses converting scanning instructions into scan control signals and neither explicitly nor inherently discloses converting scan control signals to timing control signals. PO Resp. 13–24. Although Patent Owner is correct that “Petitioner acknowledges that the term ‘converting’ is not explicitly present in Tsuboi” (id. at 14), anticipation “is not an ‘ipsissimis verbis’ test.” In re Bond, 910 F.2d 831, 832–33 (Fed. Cir. 1990) (citing Akzo N.V. v. United States Int’l Trade Comm’n, 808 F.2d 1471, 1479 & n.11 (Fed. Cir. 1986)). “An anticipatory reference . . . need not duplicate word for word what is in the claims.” Standard Havens Prods., Inc., v. Gencor Indus., Inc., 953 F.2d 1360, 1369 (Fed. Cir. 1991). The proper test is what the reference would have taught a person of ordinary skill in the art. See In re Preda, 401 F.2d 825, 826 (CCPA 1968) (“[I]n considering the disclosure of a reference, it is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom.”). For example, Petitioner’s expert witness, L. Richard Carley, Ph.D., identifies control signals and certain intermediate-level clock signals in determining that main module 20 of Tsuboi converts scanning instructions in the form of various inputs and a start instruction into scan control signals. Ex. 1002 ¶ 65 (citing Ex. 1015 ¶¶ 20, 25, 27, 29, 39– 41). Dr. Carley further identifies generation of other control signals that include primary scanning synchronization signals and primary scanning effective interval signals by main module 20. Id. (citing Ex. 1015, ¶¶ 39, 40). Dr. Carley presents reasoning that one of ordinary skill in the art would have understood that CPU 21 of Tsuboi generates these scan control signals from the user-level scanning instructions because “CPUs ‘process’ signals that they receive” and because “the control signals for scanning issued by CPU 21 (e.g., primary scanning synchronization signal) provide the operation controls for performing scanning in accordance with the user’s instructions.” Id.” slip op. at 13

  Patent outcomesUS 7,315,406 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 7,315,406
• Zhongshan Broad Ocean Motor Co., Ltd. / Broad Ocean Motor LLC et al. v. Nidec Motor CorporationInstitution denied
  PTAB · Jul 20, 2015 · IPR2015-00763 · APJ Patrick M Boucher · IPR · Institution

  The Board denied institution because Petitioners did not show a reasonable likelihood that claim 9 was anticipated by Hiroyuki.

  RulingsInstitution decision

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

    “Applying the standard set forth in 35 U.S.C. § 314(a), which requires demonstration of a reasonable likelihood that Petitioners would prevail with respect to at least one challenged claim, we deny the Petition and do not institute an inter partes review. Accordingly, we dismiss as moot Petitioners’ motion to join.” slip op. at 2

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

    “between output torque component current command 24 and the calculated “scaled torque demand” recited in claim 1. Pet. 13–19. Petitioners contend that Hiroyuki’s torque component current command 24 is, thus, a “scaled torque demand that is a function of speed.” Id. at 19 (citing Ex. 1007 ¶ 55). Petitioners reason that input signal 20 “is ‘machine-specific’ because it is based upon a parameter of the motor involved (i.e., the motor’s rotational speed).” Id. at 17. Although Petitioners cite to Dr. Ehsani’s testimony for support, Dr. Ehsani’s expressed opinions are limited. Dr. Ehsani testifies that “[t]he calculated motor revolutions 20 is a representation of the speed of the motor,” but Petitioners have not identified testimony by Dr. Ehsani that motor speed is a machine-specific parameter. See Ex. 1007 ¶ 54.” slip op. at 9

  • Prior constructionPrior construction adoptedDecided for petitioner

    “In the related proceeding, the Board construed “scaled torque demand,” which is recited in claim 1, as “torque calculated from the received torque demand based on machine-specific parameters,” noting that scaling is “machine-specific” if it is “based upon parameters of the motor involved.” Zhongshan Broad Ocean Motor Co., Ltd. Nidec Motor Corporation, Case No. IPR2014-01122, slip op. at 9 (PTAB Jan. 21, 2015) (Paper 20). The Board also construed “substantially constant rotor torque over a range of rotor speeds,” which is also recited in claim 1, as “requiring that the rotor torque not vary substantially over a range of rotor speeds.” Id. at 9–10. Neither party contests these constructions, which we adopt for purposes of this decision.” slip op. at 7

  • PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingNot reached

    “reasonable likelihood of prevailing on their challenge of claim 9. Because we so conclude, we do not reach the joinder issue.” slip op. at 10

  Claim construction§ 102 anticipation
  Patents in suitUS 7,208,895
• Zhongshan Broad Ocean Motor Co., Ltd. / Broad Ocean Motor LLC et al. v. Nidec Motor CorporationInstitution denied
  PTAB · Jul 20, 2015 · IPR2015-00762 · APJ Patrick M Boucher · IPR · Institution

  The Board denied joinder and denied institution because the petition was time-barred under § 315(b), despite finding a reasonable likelihood that claims 1–3, 8, 9, 12, 16, and 19 were anticipated.

  RulingsInstitution decision

  • PTAB / AIA Trials › §315(b) time barInstitution denied

    “Petitioners were served with a complaint alleging infringement of the ’349 patent on September 25, 2013. The Petition was filed on February 20, 2015, more than a year later. Notwithstanding our determination that the Petition meets the standard set forth in 35 U.S.C. § 314(a), we conclude that institution of an inter partes review is barred by § 315(b).” slip op. at 11

  • PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied

    “Section 315(c) provides: If the Director institutes an inter partes review, the Director, in his or her discretion, may join as a party to that inter partes review any person who properly files a petition under section 311 that the Director, after receiving a preliminary response under section 313 or the expiration of the time for filing such a response, determines warrants the institution of an inter partes review under section 314. In our view, the phrase “join as a party” indicates that only a person who is not already a party to an instituted inter partes review can be joined to the proceeding. A person cannot be joined as a party to a proceeding in which it is already a party. That the statute uses the expansive term “any person” is of little moment because the overall language of the statute places unambiguous limits on the term. Specifically, the phrase “join as a party” excludes a person who is already a party.” slip op. at 12

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

    “We conclude that Petitioners have established a reasonable likelihood of prevailing on their contention that Hideji discloses performing sinewave commutation using independent values of Q and d axis currents in the manner recited in each of independent claims 1, 16, and 19. Thus, we conclude that Petitioners have established a reasonable likelihood of prevailing on their challenge of claims 1–3, 8, 9, 12, 16, and 19 as anticipated by Hideji. B. Time Bar Under 35 U.S.C. § 315(b) Section 315(b) provides: An inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner . . . is served with a complaint alleging infringement of the patent. The time limitation set forth in the preceding sentence shall not apply to a request for joinder under subsection (c). Petitioners were served with a complaint alleging infringement of the ’349 patent on September 25, 2013. The Petition was filed on February 20, 2015, more than a year later. Notwithstanding our determination that the Petition meets the standard set forth in 35 U.S.C. § 314(a), we conclude that institution of an inter partes review is barred by § 315(b).” slip op. at 11

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

    “contention that Hideji discloses “performing sinewave commutation, using independent values of Q and d axis currents, in response to one or more control signals received from the system controller to produce continuous phase currents in the permanent magnet motor for driving the air-moving component,” recited in each of independent claims 1, 16, and 19. Pet. at 19– 26. Patent Owner contends that Hideji fails to disclose the use of independent values of Q and d axis currents: “In fact, Hideji discloses that it employs calculations in the rotating frame of reference in which Q and d axis currents depend on each other.” Prelim. Resp. 20. Petitioners observe that Figure 2 of Hideji illustrates that three-phase / two-phase coordinate conversion part 36 outputs separate values for Iq and Id, i.e. the Q and d axis currents.3 Pet. 23–24. Hideji discloses that 3 We note that the labels “Iq” and “Id” output from part 36 of Hideji are identified directly as such in the original Japanese reference. Ex. 1003, 8. [t]he three-phase/two-phase coordinate conversion part 36 converts the coordinates of the alternating current Iu and Iv introduced by the current input part 35 to a revolving coordination system (d-q coordination system) on the rotor of the brushless DC motor 30A, and calculates flux current Id (d-axis current) and torque current Iq (q-axis current). Ex. 1005 ¶ 35. Petitioners reason that such transformation results in separate, independent values of Q and d axis currents determined from control signals received from the system controller. Pet. 23. Petitioners support this reasoning with testimony by Dr. Ehsani. Ex. 1009 ¶ 38. Patent Owner responds that “the values coming from part 36 are at best a transform into the rotating frame of reference of actual measured currents” and that “[t]hey are not the demanded currents generated by the controller.” Prelim. Resp. 22. Notwithstanding the explicit identification of these values as “Iq” and “Id” in the original Japanese reference, Patent Owner also contends that they “are not values one of ordinary skill would refer to as Iq and Id.” Id. at 23. In addition, Patent Owner contends that “[i]t is the current control part 40 output that is used to create the continuous phase sine wave commutated currents for the motor after being transformed back out of the rotating frame of reference,” reasoning that “[i]f Iq and Id are not independent at this step, the ‘motor controller’ is not using ‘independent values of Q and d axis current’ to perform ‘sine wave commutation.’” Id. at 24. Patent Owner contends that such inputs are not independent, noting” slip op. at 9

  Claim construction§ 102 anticipationDiscretionary denial
  Patents in suitUS 7,626,349
• Yahoo! Inc. / Google Inc. v. Createads LLCAll claims unpatentable
  PTAB · Apr 29, 2015 · IPR2014-00200 · APJ Patrick M Boucher · IPR · Final written decision

  Claims 1–20 are unpatentable: claims 1, 2, 4–8, 10–15, and 17–20 as anticipated, and claims 3, 5, 9, 16, and 18 as obvious.

  RulingsFinal written decision

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

    “Ex. 2000 ¶ 19; see id. ¶ 22 (similar opinion for storage of predetermined design parameters), ¶ 25 (similar opinion for storage of text elements). Notably, the claims recite “storing” the various forms of data in combination with selection of at least one of the respective data. Although Petitioner challenges Patent Owner’s proposed construction, it appears not to have cross-examined Dr. Wills to explore further the basis for his opinion. See Reply 2–4. Petitioner also does not direct us to any disclosure in the specification of any other way of storing the recited forms of data. We are persuaded that, under the construction afforded claims of an expired patent, the reasoning of Fotomedia is applicable and the claimed combination of selection of at least one of the respective data with “storing” the different forms of data supports a construction of “storing data defining . . .” as requiring storage in a database. But to the extent that Patent Owner’s proposed constructions demand different databases for the different forms of data, we disagree. Although the specification of the ’320 patent makes reference to “first,” “second,” and “third” databases (see, e.g., Ex. 1001, col. 2, ll. 53–61), Patent Owner has not identified sufficient rationale for incorporating such a distinction into the claims. “Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims.” In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993).” slip op. at 9

  • ExcludeMotion to exclude, deniedDenied

    “A witness who is qualified as an expert by knowledge, skill, experience, training, or education may testify in the form of an opinion or otherwise if” certain conditions are met. Fed. R. Evid. 702. Although Patent Owner did not provide a copy of Dr. Wills’s curriculum vitae (Ex. 2003) with his declaration, the summary description of Dr. Wills’s education and experience in the declaration itself qualifies him as an expert on the issues addressed in his declaration. Dr. Wills declares under penalty of perjury that he holds baccalaureate and advanced degrees in computer science and has taught courses on “User Interface Design, in which visual design was one of the topics of the course.” Ex. 2000 ¶¶ 1–4. In considering whether Dr. Wills’s opinions are deficient for failing to articulate sufficiently what materials he considered and what methodology he sued, we observe that his declaration is limited in scope. It provides some background description of the technology at issue (id. ¶¶ 6–10), a brief overview of the ’320 patent (id. ¶¶ 11–12), an evaluation of the level of ordinary skill in the art (id. ¶¶ 13–16), and an expression of his opinion of how a person of ordinary skill in the art would understand certain terms appearing in the claims (id. ¶¶ 17–30). This information is helpful in developing appropriate claim constructions and requires no unusual or elaborate methodology. Notably, Dr. Wills does not testify to any opinion whether the claim elements are taught or suggested by any of the prior art applied in any of the grounds upon which we instituted this inter partes review. For these reasons, we decline to exclude the testimony of Dr. Wills. slip op. at 12

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

    “Sieber and Sieber PCT disclose a “database [that] may contain numerous page specifications.” Ex. 1005, col. 6, l. 19; Ex. 1006, 11. Each such page specification “comprises a plurality of data structures representing the text and graphic elements of [a] document 30.” Ex. 1005, col. 5, ll. 12– 14; Ex. 1006, 9. We find that the disclosure of such multiple page specifications discloses “a plurality of predetermined visual design applications.” In addition, we find that Sieber and Sieber PCT’s disclosure of “user interface subroutines which allow the user to select one of the page specifications in [the] database 25” (Ex. 1005, col. 6, ll. 35–37; Ex. 1006, 12) discloses “selecting one of a plurality of predetermined visual design applications.”” slip op. at 17

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

    “Amari’s suggestion to use rule-based systems like PackIT in generating designs is provided in the context of maintaining design consistency over multiple products: “If a company has a number of related products, it is of great importance that the designs project the company identity throughout the line of product packages.” Ex. 1009, 7 (emphasis added). Amari’s suggestion of extending PackIT to “the design of letterheads, envelopes, business cards, and the like,” and to “advertising, signs for corporate offices, and graphics displayed on company vehicles” embraces each of the individual implementations recited in the claim. See id., 58. We conclude that Petitioner has proved by a preponderance of the evidence that claim 9 is unpatentable under 35 U.S.C. § 103(a) over Sieber and Amari and over Sieber PCT and Amari.” slip op. at 30

  Patent outcomesUS 5,535,320 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips
  Patents in suitUS 5,535,320
• Search America, Inc. v. Transunion Intelligence, LLCAll claims unpatentable
  PTAB · Feb 3, 2015 · CBM2013-00038 · APJ Patrick M Boucher · CBM · Final written decision

  Claims 1–18 are unpatentable: claims 1–3, 5–8, 10–14, 16, and 18 are anticipated by the TDHS System; the remaining claims are obvious over the Mather Method.

  RulingsFinal written decision

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

    “First, Patent Owner contends that the plain meaning of “derived” to one of ordinary skill in the art at the time of filing the application was “obtained by reasoning” or “calculated.” Id. In support of this contention, Patent Owner cites the Declaration of Stephen Gray,1 which refers to one of the definitions provided by Random House Webster’s Dictionary, 4th ed., 1 As discussed below, we deny Petitioner’s motion to exclude the Gray Declaration. Ballantine Books (New York 2001). Ex. 2002 ¶ 100 (citing Ex. 2002E). But as Petitioner points out, Mr. Gray refers to the last definition in the dictionary entry, although the first definition provided for the word “derive” is “to receive or get from a source.” Reply 3. Second, Patent Owner refers to a statement in the specification of the ’408 patent that “the debt to income ratio can be computed,” reasoning that “one of ordinary skill would understand that the credit information input into the [computer program product] of claim 1 could not have been mere data taken from a credit report but rather would have been the result of some calculation or computation.” PO Resp. 21 (citing Ex. 1001, col. 4, ll. 2–3; Ex. 2002 ¶ 100). We disagree with Patent Owner’s reasoning because the statement in the specification merely provides an example of a calculation. Furthermore, as Petitioner observes, Patent Owner’s position is untenable because the context of the identified statement refers to calculation of “qualification criteria” rather than of “credit information.” See Reply 3. The claim’s text distinguishes between “qualification criteria” and “credit information.” In addition, and as Petitioner also observes, the prosecution history supports that credit information need not be calculated to be input. See id. We construe “derived” as “received from a source.”” slip op. at 7

  • ExcludeMotion to exclude, grantedGranted in part

    “Dolamore is not being offered as an expert in these proceedings,” in which case the prohibition of Fed. R. Evid. 602 against testimony to a matter outside the personal knowledge of the witness applies. See Paper 38, 2; Paper 51, 1. The second sentence of paragraph 10 of the Dolamore Declaration asserts that “[t]hrough Bruce Nelson, Search America was able to fairly rapidly copy [ADS Response Corp.]’s healthcare product.” This assertion is not without ambiguity, and either may be read as asserting that Search America did, in fact, “fairly rapidly copy” the referenced product or may be read as asserting only that such fairly rapid copying was within the ability of Search America “through Bruce Nelson.” Under either interpretation, we agree with Petitioner that Patent Owner has provided insufficient evidence to prove personal knowledge of the assertion. Moreover, an opinion whether Search America possessed the ability to fairly rapidly copy the referenced product “through Bruce Nelson” is outside the scope of admissible testimony for a lay witness under Fed. R. Evid. 701. Accordingly, we exclude the second sentence of paragraph 10 of the Dolamore Declaration.” slip op. at 10

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

    “only loosely associated as Patent Owner contends is not central to our analysis. As Petitioner observes, a determination that the claims are unpatentable need be supported only by a demonstration that the claimed features were in the public’s possession before the critical date. Reply 5–6 (citing Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1570 (Fed. Cir. 1997)). Patent Owner has not argued persuasively for a claim construction that requires an assessment of how tightly software modules were integrated or that the claims demand that software be contained in a single program. We have reviewed the evidence presented by Petitioner, including the claim charts in the Petition (Pet. 23–33, 35–47), the transcript of Mr. Spruiell’s deposition (Ex. 1007), the transcript of Mr. Graves’s deposition (Ex. 1008), and relevant portions of CSA/FS (Ex. 1009). Notwithstanding Patent Owner’s arguments, we are persuaded that Petitioner has shown by a preponderance of the evidence that the TDHS System anticipates claims 1– 3, 5–8, 10–14, 16, and 18. We address specific arguments below, noting that Patent Owner concedes that the same arguments apply to each of independent claims 1, 6, 11, and 18. PO Resp. 26, 27.” slip op. at 17

  • Obviousness (§103) › KSR rationalesUnpatentableUnpatentable

    “obvious over the TDHS System. Pet. 53–56. Patent Owner correctly observes that Mr. Spruiell testified that TESS and GWS did not calculate the debt-to-income ratio. PO Resp. 28 (citing Ex. 1007,2 55:14–16, 88:18–20). Patent Owner further observes that Mr. Gray, “who reviewed the entirety of the technical documents in Exhibit 1009, testified that debt-to-income ratio was never calculated in the TDHS [S]ystem.” PO Resp. 28 (citing Ex. 2002 ¶ 129). We credit the testimony of both Mr. Spruiell and Mr. Gray, but ultimately do not find them inconsistent. In particular, Mr. Spruiell made clear that calculation of the debt-to-income ratio “was something that a caseworker would do . . . . So that income-to-debt ratio would be something that you looked at prior to beginning the Generic Worksheet.” Ex. 1007, 89:3–16. Mr. Gray’s testimony does not refute unambiguously this assertion. Rather, Mr. Gray expresses an opinion that “[a]n applicant’s debt was not included in any aspect of the GWS module” and that “an eligibility worker viewing a Combined Report for a TANF applicant containing credit trade lines does not involve any calculation.” Ex. 2002 ¶ 129. The former statement is of minimal relevance because Petitioner has not advanced an anticipation ground for claims 4, 9, and 15, and Patent Owner does not explain how Mr. Gray’s observation diminishes Petitioner’s argument that it “would have been well within the knowledge of a [person of skill in the art] at the time of the invention to program a computer to calculate [a debt to 2 Patent Owner’s citations to Ex. 1006 in connection with this argument appear to be typographical errors. income ratio] using debt data and income data” in light of Mr. Spruiell’s testimony. Pet. 55 (citing Ex. 1006 ¶ 16). The latter statement may be consistent with use of the TDHS System without calculation of the debt-toincome ratio, but does not controvert directly Mr. Spruiell’s testimony that caseworkers performed such a calculation in some instances. Accordingly, we conclude that Petitioner has shown, by a preponderance of the evidence, that claims 4, 9, and 15 would have been obvious over the TDHS System.” slip op. at 22

  Patent outcomesUS 8,185,408 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 8,185,408
• Search America, Inc. v. Transunion Intelligence, LLCAll claims unpatentable
  PTAB · Feb 3, 2015 · CBM2013-00037 · APJ Patrick M Boucher · CBM · Final written decision

  Claims 1–14 are unpatentable: the TDHS System anticipates claims 1–3, 5–8, and 10–14; the asserted obviousness grounds and written-description ground also succeed.

  RulingsFinal written decision

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

    “First, Patent Owner contends that the plain meaning of “derived” to one of ordinary skill in the art at the time of filing the application was “obtained by reasoning” or “calculated.” Id. In support of this contention, Patent Owner cites the Declaration of Stephen Gray,1 which refers to one of the definitions provided by Random House Webster’s Dictionary, 4th ed., Ballantine Books (New York 2001). Ex. 2002 ¶ 104 (citing Ex. 2002E). But as Petitioner points out, Mr. Gray refers to the last definition in the dictionary entry, although the first definition provided for the word “derive” is “to receive or get from a source.” Reply 4. Second, Patent Owner refers to a statement in the specification of the ’937 patent that “the debt to income ratio can be computed,” reasoning that “one of ordinary skill would understand that the credit information input into the method of claim 1 could not have been mere data taken from a credit report but rather would have been the result of some calculation or computation.” PO Resp. 21 (citing Ex. 1001, col. 3, ll. 65–66; Ex. 2002 ¶ 104). We disagree with Patent Owner’s reasoning, because the statement in the specification merely provides an example of a calculation. Furthermore, as Petitioner observes, Patent Owner’s position is untenable because the context of the identified statement refers to calculation of “qualification 1 As discussed below, we deny Petitioner’s motion to exclude the Gray Declaration. criteria” rather than of “credit information.” See Reply 5. The claim’s text distinguishes between “qualification criteria” and “credit information.” In addition, and as Petitioner also observes, the prosecution history supports that credit information need not be calculated to be input. See id.” slip op. at 9

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

    “a credit report of the patient.” Petitioner contends that the Data Broker module obtained a computerized report on each applicant at the request of an eligibility worker, extracted certain credit information, and combined the extracted credit information with data about the applicant to provide a combined report to the eligibility worker for viewing in the TDHS System. Pet. 38. Patent Owner contends that the credit information extracted from the computerized report is not “credit information derived from a credit report” (emphasis added). PO Resp. 20–21. We disagree. In accordance with our construction of “derived” as “received from a source,” we conclude that the Data Broker module inputs “credit information derived from a credit report.”” slip op. at 19

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

    “Patent Owner responds the “Belford has nothing to do with providing financial assistance for medical care of financially needy people” and that “Petitioner provides no reasoning why a person of ordinary skill in the art would be motivated to combine the teaching of a reference that discusses providing loans to people that have the ability to pay (credit worthiness) with needy people that cannot pay (charity).” PO Resp. 28. Patent Owner characterizes the relevant disclosures too narrowly. Belford is reasonably pertinent to the problem identified by Petitioner, namely the need for a patient to pay some amount even after receiving financial assistance. See In re Clay, 966 F.2d 656, 658 (Fed. Cir. 1992). Identification of the problem and how it is solved by Belford provides sufficient articulated reasoning with rational underpinnings to support the legal conclusion of obviousness. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (cited with approval in KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007)). We conclude that Petitioner has shown, by a preponderance of the evidence, that claim 9 would have been obvious over the TDHS System and Belford.” slip op. at 27

  • Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner

    “Evidence of commercial success, or other secondary considerations, is only significant if there is a nexus between the claimed invention and the commercial success.” Ormco Corp. v. Align Tech., Inc., 463 F.3d 1299, 1311–12 (Fed. Cir. 2006). To establish a proper nexus, Patent Owner must offer “proof that the sales were a direct result of the unique characteristics of the claimed invention—as opposed to other economic and commercial factors unrelated to the quality of the patented subject matter.” In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996) (citation omitted). slip op. at 30

  Patent outcomesUS 7,333,937 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites KSR
  Patents in suitUS 7,333,937
• Marvell Semiconductor, Inc. v. Intellectual Ventures I LLCRehearing denied
  PTAB · Jan 14, 2015 · IPR2014-00547 · APJ Thomas L Giannetti · IPR · Rehearing

  The Board denied Marvell’s rehearing request, leaving institution denied because the petition did not establish Sherman as prior art or provide an adequate rationale to combine Chen and Choi.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “ANALYSIS The applicable standard for a request for rehearing is set forth in 37 C.F.R. § 42.71(d), which provides in relevant part: A party dissatisfied with a decision may file a request for rehearing, without prior authorization from the Board. The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, opposition, or a reply.” slip op. at 2

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference not prior artNot shown unpatentable

    “Petitioner alone and in combination with certain admitted prior art against all challenged claims of the ʼ944 patent. Decision 9. To qualify as prior art, however, Sherman would have to have an effective date prior to January 12, 2002, the earliest effective filing date of the ʼ944 patent. Petitioner recognized that the ʼ944 patent filing date “is no earlier than January 12, 2002.” Pet. 3. Petitioner, however, provided no proof that Sherman (which claims benefit of provisional applications filed in January 2001) is entitled to an effective date prior to January 12, 2002, and therefore would qualify as prior art under 35 U.S.C. § 102(e).” slip op. at 3

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

    “Chen and Choi were directed to solving different problems. Decision 13. Chen is directed to reducing collisions in a shared wireless network by stopping WLAN traffic. Id. at 11. In Choi, the purpose of pausing WLAN traffic is to assess signal strength. Id. This distinction in purposes between Chen and Choi is acknowledged in the Petition. Pet. 29. Petitioner contends that the Board misapprehended Choi, in that “Choi never mentions a Bluetooth device, much less keeping a Bluetooth device silent.” Req. Reh’g 11. We are not persuaded by this argument. Our Decision relies on the fact (which Petitioner does not dispute) that Chen and Choi are directed to solving different problems, and therefore the rationale for combining them is not sufficiently shown. Broadcom Corp. v. Emulex Corp., 732 F.3d 1325, 1334 (Fed. Cir. 2013): While a prior art reference may support any finding apparent to a person of ordinary skill in the art, prior art references that address different problems may not, depending on the art and circumstances, support an inference that the skilled artisan would consult both of them simultaneously. See Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342, 1366 (Fed.Cir.2012) (finding invention nonobvious when none of the “reference[s] relate to the [problem] described in the patents” and no evidence was proffered “indicating why a person having ordinary skill in the art would combine the references”).” slip op. at 5

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “insufficient weight to Dr. Ding’s testimony. Req. Reh’g 13–14. The portions of Dr. Ding’s testimony quoted in our Decision (pp.12, 15), in which he refers to what would be obvious to himself rather than to a person of ordinary skill, were among those cited and relied on by Petitioner (Pet. 29, 42–43). This testimony is not convincing for the reasons discussed in our Decision at 12–13. We are not persuaded we have overlooked or misapprehended anything in giving Dr. Ding’s testimony “little weight.” Decision 13. For instance, we are not persuaded by Petitioner’s argument that Dr. Ding’s credentials “clearly establish” that he is a person of ordinary skill. Req. Reh’g. 14. As Dr. Ding testified: “[i]t is my understanding that a person of ordinary skill in the art . . . is a person with at least a master’s degree . . . in electrical engineering, computer engineering, or computer science . . . in addition to at least two years of post-graduate or equivalent work experience with systems that use communications protocols.” Ex. 1003, ¶ 14. We are not convinced that Dr. Ding’s stated credentials (Ph.D., NASA, full professor, department chair, IEEE Fellow, etc.) meet his own definition of “ordinary” skill.” slip op. at 6

  § 102 anticipation§ 103 obviousnesscites KSR
  Patents in suitUS 6,977,944

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.