• Tricklestar LLC v. Embertec Pty Ltd.All claims unpatentable
  PTAB · Dec 20, 2017 · IPR2016-01336 · APJ Stacy B Margolies · IPR · Final written decision

  Claims 1–4, 7, and 9 are unpatentable as anticipated by EP ’379; claims 5 and 6 are unpatentable as obvious over EP ’379 and EP ’752.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We determine that the level of ordinary skill proposed by Petitioner and Petitioner’s declarant is consistent with the challenged patent and the asserted prior art, and we therefore adopt that definition of the level of ordinary skill in the art for the purposes of the analysis below. See Ex. 1001, 1:14–15 (“The invention relates to aspects of the monitoring of electrical power supply to electrical equipment.”); Ex. 1002 ¶ 1 (“The present invention relates to a method and system to provide power saving for electronic devices while such devices are in the standby mode and are not in use, particularly for a setting accommodating multiple electronic devices especially in the end-user sector.”); Ex. 1003 ¶ 1 (“The present invention relates to an automatic means switch device used to disconnect a load from” slip op. at 9

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

    “We determine that we do not need to expressly construe “input” (claim 1), “electrical input” (claim 9), “sensor” (claims 1 and 9), and “alert device” (claim 5) to determine whether Petitioner has shown by a preponderance of the evidence that claims 1–7 and 9 are unpatentable.” slip op. at 11

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

    “EP ’379 was published April 22, 2009. Ex. 1002, [43]. Because EP ’379 was published before the earliest possible invention date of record in this proceeding, Petitioner has shown by a preponderance of the evidence that EP ’379 is prior art to claims 1–4, 7, and 9 of the ’099 patent at least under 35 U.S.C. § 102(a).” slip op. at 16

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

    “Pet. 16. As illustrated above, Petitioner adds red ovals around what it contends, and with which we agree, correspond to the claimed sensor and microprocessor: infrared receiver unit 10 and microprocessor 12. Id. EP ’379 discloses that infrared receiver unit 10 is coupled to microprocessor 12 and that the infrared receiver unit monitors wireless output signals from a remote control. Ex. 1002, Fig. 3, ¶¶ 24, 26. Specifically, EP ’379 discloses that “the signals of the remote controls of electronic devices connected to the subject controller [are] sensed, identified, and interpreted by the controller.” Id. ¶ 23; see also id. ¶ 26 (stating that “the remote control signals controlling the devices connected to the controller can also be sensed by the controller”). According to EP ’379, “[t]he controller unit identifies as to which electronic device’s remote control the user has depressed by means of the signal receiver (10) on itself.” Id. ¶ 24. EP ’379 also discloses that the microprocessor terminates power supplied to the external electrical device based upon the absence of detection of signals from the remote control. Id. ¶ 26. EP ’379 states the following: The controller can be set to a predetermined time period in order to save power, and if no signal is received within this time period from a remote control of any device connected to it, the controller can turn OFF such devices in turn or at the same time according to a predetermined power saving rule. Id. EP ’379 adds an example of a user setting the automatic turn-off period to three hours. Id. Under this example, according to EP ’379, “if the user does not depress any key on any remote control of any electronic device connected to the controller, or if no signal is sensed by the controller within three hours, the controller may power off the electronic devices connected to itself in sequence according to an automatic turning-off rule.” Id. In sum, Petitioner shows by a preponderance of the evidence that claim 1 is unpatentable as anticipated by EP ’379.” slip op. at 20

  Patent outcomesUS 9,106,099 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,106,099
• Nautilus Hyosung Inc. v. Diebold Nixdorf, Inc.All claims unpatentable
  PTAB · Aug 14, 2017 · CBM2016-00034 · APJ Barbara A Benoit · CBM · Final written decision

  Claims 1–24 are unpatentable under § 101; claims 1–3 and 5 are also anticipated by Riach, and specified claims are obvious over combinations of Riach, Graf, Gustin, and Anderson.

  RulingsFinal written decision

  • Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionUnpatentable

    “For these reasons, we determine that claim 20—its focus and its” slip op. at 37

  • Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptStep2 no inventive conceptUnpatentable

    “For the foregoing reasons, we conclude that claim 20 is directed to an” slip op. at 52

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

    “encompasses Riach’s process that copies a portion (but not all) of the original check image data to produce the required modified check image data. Accordingly, we agree that the portion of Riach on which Petitioner relies discloses step (b) of claim 1 that requires, among other limitations, the modified check image data not include at least some visual feature data included in the check image data. Pet. 30 (relying on Ex. 1008, 5:16–30, Figs. 4, 7).” slip op. at 73

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

    “several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.” KSR, 550 U.S. at 418. Rather, “it can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does.” Apple, 839 F.3d at 1058 (quoting KSR, 550 U.S. at 418–19); see also KSR, 550 U.S. at 418 (“[T]here must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.”) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).” slip op. at 89

  Patent outcomesUS 7,314,163 unpatentable
  § 101 eligibility§ 102 anticipation§ 103 obviousnesscites Alice · Mayo · Bilski · Enfish · Electric Power · Phillips · Graham
  Patents in suitUS 7,314,163
• TCL Corporation / TCL Communication Technology Holdings, Ltd. et al. v. Telefonaktiebolaget L. M. EricssonAll claims unpatentable
  PTAB · Jan 31, 2017 · IPR2015-01650 · APJ Stacy B Margolies · IPR · Final written decision

  Claims 1–3, 8, 9, 11, 12, and 15–19 are unpatentable as anticipated by King; claim 10 is unpatentable as obvious over King and Gilbert.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner does not challenge Dr. Goldberg’s testimony regarding the level of skill in the art. See generally PO Resp. However, Mr. Blackburn, Patent Owner’s declarant, opines that a person of ordinary skill in the art would probably have had a graduate degree in computer engineering, electrical engineering, applied physics, or a related field, and at least three years’ experience in the design and development of GPS or cellular location services, systems, and/or devices or (2) a Bachelor’s degree in computer engineering, electrical engineering, applied physics, or a related field, and at least five years’ experience in the design, analysis, and/or development of GPS, cellular and PSTN location services, systems, and/or devices. Ex. 2004 ¶ 11 (emphases added). As illustrated by the emphasized words above, Mr. Blackburn’s proposed level of ordinary skill differs slightly from Dr. Goldberg’s. Patent Owner, however, does not cite the above testimony in its Patent Owner Response. Nor does Patent Owner or Mr. Blackburn explain the reason for including cellular and PSTN location services, or for adding analysis as an alternative in the description of experience in the field. See generally PO Resp. We determine that the level of ordinary skill proposed by Petitioners’ declarant is consistent with the challenged patent and the asserted prior art, and we therefore adopt Dr. Goldberg’s definition of the level of ordinary skill in the art for the purposes of the analysis below. However, our analysis would not differ if we were to adopt Mr. Blackburn’s definition.” slip op. at 13

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

    “Petitioners’ proposed construction of “quality of service,” on the other hand, is consistent with the ’815 patent specification. The specification, for example, describes evaluating criteria such as “accuracy,” “time-to-first-fix” and “sensitivity.” Ex. 1001, 6:9–24. The specification also gives the following examples of quality of service: “Most accurate,” “Fastest,” and “Least Expensive.” Id. at 5:33–36. Moreover, Petitioners’ declarant, Dr. Goldberg, persuasively testifies that the attributes of accuracy, time-to-first-fix (TTFF), sensitivity, speed, and cost are all indications of a grade or level of performance that is to be associated with the computed position estimate. Ex. 1051 ¶ 155. Petitioners’ proposed construction also is supported by the applicant’s statements during prosecution of the ’815 patent and a description of quality of service in a prior art reference as referring to, for example, accuracy, periodicity, and response time. See Pet. 19–20 (citing Ex. 1002, 50; Ex. 1005, 5; Ex. 1051 ¶¶ 155–157). Patent Owner does not challenge Petitioners’ proposed construction of the shorter phrase “quality of service.” See PO Resp. 10–20. We determine that the common term “desired”—for which there is no special definition or disavowal in the specification—need not be expressly construed. See Pet. Reply 3–4. For the foregoing reasons, the broadest reasonable interpretation of “determining a desired quality of service,” as recited in claim 1, and “determine a desired quality of service,” as recited in claim 17, is not limited to “ascertaining a quality of service associated with a computed position estimate as a function of any user- or position application-selectable input related to quality of service,” as proposed by Patent Owner. We also determine that, contrary to Patent Owner’s unsupported argument, the desired QoS may be received from the cellular network. Moreover, for the reasons explained above, we determine that the broadest reasonable interpretation of “quality of service” is “an indication of grade or level of performance associated with a computed position estimate.”” slip op. at 19

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

    “mobile terminal “determining” a “desired” quality of service because, in King, the mobile station receives a QoS parameter from the network are based on Patent Owner’s proposed construction, which we do not adopt. See supra Section II.C. As explained in the claim construction section above, Patent Owner’s proposal to limit “determining a desired quality of service” to “ascertaining a quality of service associated with a computed position estimate as a function of any user- or position application-selectable input related to quality of service” unreasonably limits the claim to one embodiment in the specification. See supra Section II.C. Moreover, as explained above, Patent Owner’s claim construction argument that the desired QoS is not sent from the cellular network to the mobile terminal is unreasonably narrow in light of express disclosures in the ’815 patent specification that determining a desired quality of service includes receiving a specified quality of service from a source external to the mobile terminal. See id. Thus, Patent Owner’s arguments distinguishing King because King’s mobile terminal receives a QoS from the cellular network, and that King’s mobile terminal does not determine the desired QoS, rest on a proposed claim construction which we do not adopt. Patent Owner’s remaining arguments distinguishing King are based on requirements not recited in the claim—that the quality of service be chosen by a user or a positioning application, and that the quality of service be an input which can prioritize criteria according the user or positioning application’s preference. The disputed limitation merely recites “determining a desired quality of service” without specifying the source of desired quality of service or requiring multiple options for prioritizing criteria (such as the options of most accurate, fastest, or least expensive). Although one embodiment in the ’815 patent specification is providing a user with the ability to select from a number of options, claim 1 is not specific to that embodiment. Indeed, as explained above, claim 1 at least encompasses the subject matter of dependent claims 8, 9, and 10, and only claim 10 is directed to prompting a user to input the desired quality of service. And, claim 10 is not limited to a “selectable input” and does not require input which can prioritize criteria according the user or positioning application’s preference. In sum, Patent Owner’s arguments that King does not disclose “determining a desired quality of service” are based on an unreasonably narrow reading of this claim limitation. Accordingly, for the above reasons, we determine that Petitioners have shown that King discloses “determining a desired quality of service,” as recited in claim 1.” slip op. at 31

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “We also credit and find persuasive, as supported by King, Dr. Goldberg’s testimony (i) that the features on which Petitioners rely are all applicable to assisted GPS; (ii) that the use of DGPS data does not exclude the use of other aiding data such as ephemeris data; and (iii) that an ordinarily skilled artisan would have recognized that King’s embedded algorithm could be used with the steps illustrated in Figures 5, 9A, and 9B of King. Ex. 1056 ¶¶ 32–34. Indeed, the final point is corroborated by the claims of King, which illustrate that the embedded algorithm is one way of computing the predicted accuracy per step 608 of Figure 9A. Specifically, claim 1 of King recites a method for determining a location of the mobile radio handset that includes receiving a point-to-point ephemeris message that includes ephemeris data, receiving a point-to-point differential correction message that includes differential correction data, and determining a prediction of an accuracy of the computed location. Ex. 1026, 28:17–46. According to King, Figures 9A and 9B “are a flowchart of the operation of the handset . . . for request/receive and point-to-point delivery of ephemeris and differential correction data in accordance with the preferred embodiment of the present invention.” Id. at 4:20–24. Claim 3 of King depends from claim 1 and recites that the step of determining a prediction of the accuracy comprises determining a prediction based on covariance information derived by a Weighted Least Square fixing method. Id. at 28:53–58. King discloses a Weighted Least Square fixing method only in connection with the embedded algorithm. See id. at 22:53–24:35.” slip op. at 39

  Patent outcomesUS 6,535,815 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,535,815
• TCL Corporation / TCL Communication Technology Holdings, Ltd. et al. v. Telefonaktiebolaget LM EricssonAll claims unpatentable
  PTAB · Jan 24, 2017 · IPR2015-01584 · APJ Barbara A Benoit · IPR · Final written decision

  Claims 13, 15, 16, and 18 are unpatentable as obvious over Jentschel and JP947; additional obviousness grounds also establish unpatentability.

  RulingsFinal written decision

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

    “2. Analysis A central issue is whether Petitioner has met its burden to show by a preponderance of the evidence that Lawton discloses, either expressly or inherently, the recited step of “low pass filtering the in-phase received signal and the quadrature received signal in a low pass in-phase filter and a low pass quadrature filter, respectively,” as arranged in claim 13. Verdegaal Bros., 814 F.2d at 631. After introducing the claim limitation and repeating Dr. Razavi’s conclusion that Lawton discloses the limitation, Petitioner presents another annotation of Lawton’s Figure 9 (shown below on left)” slip op. at 40

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

    “2. Reason to Combine Jentschel and JP947 Our inquiry, however, continues because “[a] patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.” KSR, 550 U.S. at 418. Rather, “it can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does.” Id. In other words, “there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” Id. (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). In addition, “[c]are 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” slip op. at 55

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

    “references could be physically combined but whether the claimed inventions are rendered obvious by the teachings of the prior art as a whole.”)). Furthermore, Patent Owner’s assertion regarding the teaching of Thomas does not negate JP947’s unambiguous teaching that the order of the bandpass filter and amplifier may be reversed. Thus, for these reasons, we do not agree with Patent Owner’s position that “the teachings of JP947 are nonanalogous because Jentschel performs band selection at RF, whereas JP947 performs channel selection at RF.” PO Resp. 61 (heading VIII.A.1); id. at 61–64.” slip op. at 61

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

    “Petitioner fails to provide the requisite articulated reasoning with some rational underpinning to support the legal conclusion of obviousness. PO Resp. 65–76 (citing Ex. 2022 ¶¶ 98, 128); see KSR, 500 U.S. at 418. More specifically, Patent Owner contends that (i) the benefits of Jentschel identified by Dr. Razavi do not apply to JP947’s direct conversion receiver, (ii) JP947’s architecture is incompatible with, and therefore, teaches away from, using a frequency divider, and (iii) Jentschel itself teaches away from the use of a frequency divider. PO Resp. 65–66; see id. at 65–76.” slip op. at 83

  Patent outcomesUS 6,029,052 unpatentable
  § 102 anticipation§ 103 obviousnesscites KSR
  Patents in suitUS 6,029,052
• TCL Corporation / TCL Communication Technology Holdings, Ltd. et al. v. Telefonaktiebolaget LM EricssonAll claims unpatentable
  PTAB · Jan 24, 2017 · IPR2015-01600 · APJ Barbara A Benoit · IPR · Final written decision

  Claims 13, 15, 16, and 18 are unpatentable as obvious over Jentschel and JP947; claims 13, 15, and 16 over JP947 and JP755; and claim 18 over JP947, JP755, and Jentschel.

  RulingsFinal written decision

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

    “preponderance of the evidence that Lawton discloses, either expressly or inherently, the recited step of “low pass filtering the in-phase received signal and the quadrature received signal in a low pass in-phase filter and a low pass quadrature filter, respectively,” as arranged in claim 13. Verdegaal Bros., 814 F.2d at 631. After introducing the claim limitation and repeating Dr. Razavi’s conclusion that Lawton discloses the limitation, Petitioner presents another annotation of Lawton’s Figure 9 (shown below on left) 40” slip op. at 40

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

    “several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.” KSR, 550 U.S. at 418. Rather, “it can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does.” Id. In other words, “there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” Id. (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). In addition, “[c]are 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” slip op. at 55

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

    “references could be physically combined but whether the claimed inventions are rendered obvious by the teachings of the prior art as a whole.”)). Furthermore, Patent Owner’s assertion regarding the teaching of Thomas does not negate JP947’s unambiguous teaching that the order of the bandpass filter and amplifier may be reversed. Thus, for these reasons, we do not agree with Patent Owner’s position that “the teachings of JP947 are nonanalogous because Jentschel performs band selection at RF, whereas JP947 performs channel selection at RF.” PO Resp. 61 (heading VIII.A.1); id. at 61–64.” slip op. at 61

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

    “determine that Jentschel’s discussion of advantages and disadvantages of using a frequency divider and Jentschel’s indication that another component is “suitable” does not rise to the level of teaching away from the use of frequency dividers. Nor does Jentschel’s indication that “high power demand [of frequency dividers] is disadvantageous” amount to a teaching away. Accordingly, we agree with Dr. Razavi that, although Jentschel 87 identifies advantages and disadvantages of using a frequency divider, Jentschel does not criticize, discredit or discourage the use of a frequency divider (Ex. 1308 ¶¶ 58–65). For these reasons, we determine that Petitioner provided sufficient articulated reasoning to support a conclusion of obviousness the combination of JP947, JP755, and Jentschel, as proposed by Petitioner.” slip op. at 87

  Patent outcomesUS 6,029,052 unpatentable
  § 102 anticipation§ 103 obviousnesscites KSR
  Patents in suitUS 6,029,052
• Arris Group, Inc. / Cox Communications, Inc. v. C-Cation Technologies, LLCAll claims unpatentable
  PTAB · Jul 28, 2016 · IPR2015-01796 · APJ Lynne E Pettigrew · IPR · Final written decision

  Claims 1, 3, and 4 are unpatentable under § 103: claims 1 and 4 over the MPT Specifications, and claim 3 over those specifications with Zdunek and Dufresne.

  RulingsFinal written decision

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

    “art “printed publications” under 35 U.S.C. §§ 102(b) and 311(b). Pet. 16– 17; PO Resp. 23–26; Pet. Reply 3–5. The determination whether a document is a “printed publication” involves a case-by-case inquiry into the facts and circumstances surrounding its disclosure to members of the public. In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). The key inquiry is whether the reference was made “sufficiently accessible to the public interested in the art” before the critical date. In re Cronyn, 890 F.2d 1158, 1160 (Fed. Cir. 1989). “A given reference is ‘publicly accessible’ 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.” Suffolk Techs., LLC v. AOL Inc., 752 F.3d 1358, 1364 (Fed. Cir. 2014) (quoting Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 1378 (Fed. Cir. 2006)). “[O]nce accessibility is shown, it is unnecessary to show that anyone actually inspected the reference.” In re Lister, 583 F.3d 1307, 1314 (Fed. Cir. 2009).” slip op. at 14

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “3. Obviousness of Claim 1 As an initial matter, we adopt Petitioner’s proposed level of ordinary skill in the art as a person with an undergraduate degree in electrical engineering, or an equivalent education experience, and three or more years working in a relevant field employing digital communications technology to deliver telecommunication services, or alternatively a relevant field involving the manufacture of telecommunication products. See Pet. 9 (citing Ex. 1002 ¶ 31). Patent Owner’s proposed level of ordinary skill in the art, see Ex. 2023 ¶ 25, is, according to Patent Owner’s expert, “essentially the same” as Petitioner’s proposal, id. ¶ 27.” slip op. at 18

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

  Patent outcomesUS 5,563,883 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 5,563,883
• T. Rowe Price Investment Services, Inc. v. Secure Axcess, LLCAll claims unpatentable
  PTAB · Jun 13, 2016 · CBM2015-00027 · APJ Barbara A Benoit · CBM · Final written decision

  Claims 1, 3, 5, 16, and 29–32 are unpatentable as anticipated by Houser; claims 2 and 4 are unpatentable as obvious over Houser and Yoshiura.

  RulingsFinal written decision

  • ExcludeMotion to exclude, deniedDenied

    “Contrary to Petitioner’s contentions, the proper inquiry is whether one is “qualified in the pertinent art.” Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1363–64 (Fed. Cir. 2008) (holding “it is an abuse of discretion to permit a witness to testify as an expert on the issue[s] of . . . invalidity unless that witness is qualified as an expert in the pertinent art.”). The Federal Circuit continues by noting that being one of ordinary skill in the art would not “automatically entitle[] a witness to testify as an expert” as to invalidity issues, but the Federal Circuit clarifies that it does not “suggest[] that Rule 702 requires a witness to possess something more than ordinary skill in the art to testify as an expert.” Id. at 1363. Furthermore, 6 Dr. Katz’s declaration states that his curriculum vitae is included as Attachment A (Ex. 2008 ¶ 6), which is not correct. Petitioner also incorrectly states in its Motion that Dr. Katz’s declaration from IPR2014-00475 (Ex. 2007) was “submitted as Exhibit 1037 in this proceeding.” Mot. 4. Accordingly, for clarity and completeness of the record in this proceeding, we have entered Dr. Katz’s Declaration, filed as Exhibit 2007 (including its Attachment A) in IPR2014-00475, as Exhibit 3001 in the instant proceeding. 21 the Federal Circuit has upheld admission of the testimony of an expert who “had experience relevant to the field of the invention,” despite admitting that he was not a person of ordinary skill in the art. Mytee Prods., Inc. v. Harris Research, Inc., 439 Fed. App’x 882, 886–87 (Fed. Cir. 2011) (non-precedential) (upholding admission of the testimony of an expert who “had experience relevant to the field of the invention,” despite admission that he was not a person of ordinary skill in the art). In holding that, to testify as an expert under FRE 702, one must be qualified as an expert in the pertinent art, the Federal Circuit has not placed temporal restrictions, such as requiring an expert be qualified in the pertinent art at the time of the invention.” slip op. at 21

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

    “patent shall be given its broadest reasonable construction, in light of the specification of the patent in which it appears. 37 C.F.R. § 42.300(b); see Versata Dev. Grp., 793 F.3d at 1328 (affirming use of broadest reasonable construction standard in a covered business method patent review); see also In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1275–79 (Fed. Cir. 2015 (“Congress implicitly approved the broadest reasonable interpretation standard in enacting the AIA,” and “the standard was properly adopted by PTO regulation.”), cert. granted sub nom. Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 890 (mem.) (2016). Under that standard, claim terms are presumed to be given their ordinary and customary meaning as would be understood by one of ordinary skill in the art in the context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Any special definition for a claim term must be set forth in the specification with reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). A particular embodiment 27 appearing in the written description should not be read into the claim if the claim language is broader than the embodiment. SuperGuide Corp. v. DirecTV Enters, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004); In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). Furthermore, “[t]he PTO should also consult the patent’s prosecution history in proceedings in which the patent has been brought back to the agency for a second review.” Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015). We construe the terms below and discuss terms relative to prior art disclosures in accordance with these principles.” slip op. at 27

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

    “specifically, “a preferences file.”7 Challenged independent claims 1, 29, and 31 each recites “an authenticity stamp is retrieved from the preferences file,” and independent claim 32 similarly recites “retrieving an authenticity stamp from the preferences file.” Additionally, each of the challenged claims requires that the authentication key either be retrieved to locate a preferences file or to be able to locate a preferences file. The dependent claims do not recite additional features or functions for a file. Thus, the plain language of the claims requires a “file” to be able to store something that can be retrieved.” slip op. at 29

  • Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languagePlain and ordinary meaningDecided for petitioner

    “We decline to read limitations into a claim from these preferred embodiments described in the Specification when the claim language is broader than the embodiment. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004); In re Van Geuns, 988 F.2d at 1184. Here, the claim language is broader than the preferred embodiments describing the location of the preferences file as obscured or not readily known and, therefore, should not be narrowed by embodiments in the ’191 patent. Furthermore, the ’191 patent does not set forth a special definition for that claim term with reasonable clarity, deliberateness, or precision that would impose a special meaning requiring the location of the preferences file be obscured or hidden. See In re Paulsen, 30 F.3d at 1480. Accordingly, neither the term “to locate a preferences file” in claims 1, 31, and 32, nor the term enabling “location of a preferences file” in claim 29, require the location of the preferences file be obscured or hidden. Nor does “enabl[ing] authentication of the authenticity key . . . to retrieve an” slip op. at 52

  Patent outcomesUS 7,631,191 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,631,191
• St. Jude Medical, Inc. / St. Jude Medical S.C., Inc. et al. v. Atlas IP LLCAll claims unpatentable
  PTAB · Dec 3, 2015 · IPR2014-00916 · APJ Lynne E Pettigrew · IPR · Final written decision

  Claims 6, 11, 14, and 21 are unpatentable: claims 6, 14, and 21 as anticipated by Natarajan 1992 and obvious over Natarajan ’542 and Bantz; claim 11 as obvious over two combinations.

  RulingsFinal written decision

  • BurdenUnpatentable

    “With respect to transmission by the remotes, the proper construction of the “each” limitation requires only that each cycle have one or more intervals during which remotes are allowed to transmit. See supra Section II.A.1. Period B is such an interval, as it contains allocated slots during which individual mobile stations are allowed to transmit packets to the Access Point. See Ex. 1011, 5–6; Pet. 27; Ex. 1002 ¶ 118. The individual slots within Period B are also intervals. See Pet. 27; Ex. 1002 ¶ 122. Patent Owner’s argument that Period B is not an interval meeting the requirements of the claim is unpersuasive because it is premised on an incorrect claim construction requiring at least one interval in which a remote actually transmits to the hub. See PO Resp. 5–7. As explained previously, the Federal Circuit has rejected Patent Owner’s proffered construction of the “each” limitation. See supra Section II.A.1.” slip op. at 16

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

    “the proper construction of the “each” limitation in claims of the ’734 patent. On appeal from summary judgment in the Medtronic case, the Federal Circuit rejected the district court’s so-called “plain meaning” construction, also urged by Patent Owner here. Medtronic, 2015 WL 6550622, at *10. Instead, the Federal Circuit determined that context was necessary to resolve the facial uncertainty of the claim language. Id. at *8. The court analyzed the relevant contextual evidence, including the additional claim language and references to transmission opportunities in the written description that we cited in our claim construction discussion in the Decision on Institution. Id. at *9. With analysis similar to ours, the Federal Circuit held, as we did, that the claim language, properly construed, requires only that each cycle have one or more intervals in which remotes are allowed to transmit frames. Id. Thus, the Federal Circuit, in a precedential opinion, rejected the same “plain meaning” claim construction argument made by Patent Owner in this proceeding. Also, as in this proceeding, Patent Owner provided no extrinsic evidence, so the court construed the disputed limitation based on intrinsic evidence—the claim language and the written description. Moreover, the court used the same Phillips-based claim construction approach that the Board applies when a patent has expired. Accordingly, in our patentability analysis we will apply the Federal Circuit’s construction of the “each” limitation, which, with respect to transmission by remotes, requires only that each cycle have one or more intervals during which remotes are allowed to transmit.” slip op. at 10

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

    “With respect to transmission by the remotes, the proper construction of the “each” limitation requires only that each cycle have one or more intervals during which remotes are allowed to transmit. See supra Section II.A.1. Period B is such an interval, as it contains allocated slots during which individual mobile stations are allowed to transmit packets to the Access Point. See Ex. 1011, 5–6; Pet. 27; Ex. 1002 ¶ 118. The individual slots within Period B are also intervals. See Pet. 27; Ex. 1002 ¶ 122. Patent Owner’s argument that Period B is not an interval meeting the requirements of the claim is unpersuasive because it is premised on an incorrect claim construction requiring at least one interval in which a remote actually transmits to the hub. See PO Resp. 5–7. As explained previously, the Federal Circuit has rejected Patent Owner’s proffered construction of the “each” limitation. See supra Section II.A.1.” slip op. at 16

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

    “the system of Natarajan 1992 instead utilized Bella’s cancellation method, which revokes a previous transmission allocation when a remote transmits no packets in a communication cycle, we are persuaded by Petitioner’s argument that the combination would result in “the hub revoking a previous transmission opportunity allocation of a remote which has not transmitted more than a predetermined number of frames” (zero) “during a previous number of communication cycles” (one). See Pet. 37–38; Ex. 1002 ¶ 167. Furthermore, if Natarajan 1992 employed the cancellation technique of Bella, the hub would be “monitoring the frames transmitted by each remote during its transmission opportunity.” See Pet. 37; Ex. 1002 ¶¶ 162, 164. Petitioner also has articulated sufficient reasoning with some rational underpinning to support the legal conclusion that the subject matter of claim 11 would have been obvious to one of ordinary skill in the art in view of the combined teachings of the references. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007); Pet. 35–37; Ex. 1002 ¶¶ 156–60. According to Petitioner, for example, the combination would simplify the cancellation method of Natarajan 1992 by allowing the hub to revoke a time slot allocation when the remote stops transmitting. Pet. 36; Ex. 1002 ¶ 158. Relying on Dr. Haas’s testimony for support, Petitioner also asserts that using Bella’s cancellation method makes even more sense when the remotes are mobile, as in Natarajan 1992, because they may move outside of the hub’s range abruptly and be unable to cancel their own reservations. Pet. 37; Ex. 1002 ¶ 159. Moreover, we are persuaded by Petitioner’s position that only ordinary skill would be required to implement the reservation and cancellation method of Bella in the Natarajan 1992 system. See Pet. 37; Ex. 1002 ¶ 160. For these reasons, having considered the parties’ contentions and supporting evidence, we determine that Petitioner has shown by a preponderance of the evidence that claim 11 would have been obvious over the combination of Natarajan 1992 and Bella.” slip op. at 24

  Patent outcomesUS 5,371,734 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR
  Patents in suitUS 5,371,734
• St. Jude Medical, Inc. / St. Jude Medical S.C., Inc. et al. v. Atlas IP LLCAll claims unpatentable
  PTAB · Dec 3, 2015 · IPR2015-00534 · APJ Lynne E Pettigrew · IPR · Final written decision

  Claims 6, 11, 14, and 21 are unpatentable: claims 6, 14, and 21 as anticipated by Natarajan 1992 and obvious over Natarajan ’542 and Bantz; claim 11 as obvious over two combinations.

  RulingsFinal written decision

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

    “I. INTRODUCTION We have jurisdiction to hear this inter partes review under 35 U.S.C. § 6(c). This Final Written Decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73. For the reasons discussed herein, Petitioner has shown by a preponderance of the evidence that claims 6, 11, 14, and 21 of U.S. Patent No. 5,371,734 are unpatentable. A. Procedural History St. Jude Medical, Inc., St. Jude Medical S.C., Inc., and Pacesetter, Inc. (collectively, “St. Jude”) filed a Petition for inter partes review of claims 6, 11, 14, 21, and 44 of U.S. Patent No. 5,371,734 (Ex. 1001, “the ’734 patent”). Paper 2 (“Pet.”). Atlas IP LLC (“Patent Owner”) filed a Preliminary Response. Paper 6 (“Prelim. Resp.”). On December 8, 2014, we instituted an inter partes review of claims 6, 11, 14, and 21 of the ’734 patent on asserted grounds of unpatentability. Paper 7 (“Dec.”).” slip op. at 2

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

    “by the parties as the “each” limitation: “repeating communication cycles, each of which has intervals during which the hub and the remotes transmit and receive frames.” E.g., Ex. 1001, 46:29–31 (claim 6). In the Decision on Institution, we construed this claim limitation “to require that each communication cycle include intervals during which the hub and remotes are allowed to transmit and receive, without requiring actual transmission of frames.” Dec. 12. We based our construction on the language of the claims, including additional language referring to “intervals . . . when the hub is allowed to transmit frames to the remotes [and] when the remotes are allowed to transmit frames to the hub.” Id. at 10 (citing Ex. 1001, 46:36– 39). We also considered the written description of the ’542 patent, which speaks of transmission opportunities during which remotes are provided an opportunity to transmit messages to the hub. Id. (citing Ex. 1001, 12:14– 17).” slip op. at 9

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

    “With respect to transmission by the remotes, the proper construction of the “each” limitation requires only that each cycle have one or more intervals during which remotes are allowed to transmit. See supra Section II.A.1. Period B is such an interval, as it contains allocated slots during which individual mobile stations are allowed to transmit packets to the Access Point. See Ex. 1011, 5–6; Pet. 27; Ex. 1002 ¶ 118. The individual slots within Period B are also intervals. See Pet. 27; Ex. 1002 ¶ 122. Patent Owner’s argument that Period B is not an interval meeting the requirements of the claim is unpersuasive because it is premised on an incorrect claim construction requiring at least one interval in which a remote actually transmits to the hub. See PO Resp. 5–7. As explained previously, the Federal Circuit has rejected Patent Owner’s proffered construction of the “each” limitation. See supra Section II.A.1.” slip op. at 16

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

    “Petitioner relies on a combination of Bella’s time slot cancellation method with the system of Natarajan 1992 to satisfy the additional limitations of claim 11. Pet. 34–38; Ex. 1002 ¶¶ 161–67. Like Bella, Natarajan 1992 describes a system in which mobile stations make reservation requests for slot allocation. Ex. 1011, 7–8; see Pet. 37–38; Ex. 1002 ¶ 165. If a mobile station requests isochronous service, the requested number of slots will be allocated to the mobile station in Period B of every frame until the mobile station cancels the allocation by sending a cancellation request. Ex. 1011, 8; see Pet. 36, 38; Ex. 1002 ¶ 166. Thus, Natarajan 1992 teaches “revoking a previous transmission opportunity allocation of a remote,” as recited in claim 11, when the hub receives a cancellation request from the remote. See Pet. 37–38; Ex. 1002 ¶ 166–67. If the system of Natarajan 1992 instead utilized Bella’s cancellation method, which revokes a previous transmission allocation when a remote transmits no packets in a communication cycle, we are persuaded by Petitioner’s argument that the combination would result in “the hub revoking a previous transmission opportunity allocation of a remote which has not transmitted more than a predetermined number of frames” (zero) “during a previous number of communication cycles” (one). See Pet. 37–38; Ex. 1002 ¶ 167. Furthermore, if Natarajan 1992 employed the cancellation technique of Bella, the hub would be “monitoring the frames transmitted by each remote during its transmission opportunity.” See Pet. 37; Ex. 1002 ¶¶ 162, 164. Petitioner also has articulated sufficient reasoning with some rational underpinning to support the legal conclusion that the subject matter of claim 11 would have been obvious to one of ordinary skill in the art in view of the combined teachings of the references. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007); Pet. 35–37; Ex. 1002 ¶¶ 156–60. According to Petitioner, for example, the combination would simplify the cancellation method of Natarajan 1992 by allowing the hub to revoke a time slot allocation when the remote stops transmitting. Pet. 36; Ex. 1002 ¶ 158. Relying on Dr. Haas’s testimony for support, Petitioner also asserts that using Bella’s cancellation method makes even more sense when the remotes are mobile, as in Natarajan 1992, because they may move outside of the hub’s range abruptly and be unable to cancel their own reservations. Pet. 37; Ex. 1002 ¶ 159. Moreover, we are persuaded by Petitioner’s position that only ordinary skill would be required to implement the reservation and cancellation method of Bella in the Natarajan 1992 system. See Pet. 37; Ex. 1002 ¶ 160.” slip op. at 23

  Patent outcomesUS 5,371,734 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR
  Patents in suitUS 5,371,734
• Captioncall, L.L.C. v. Ultratec, Inc.Rehearing granted
  PTAB · Dec 1, 2015 · IPR2013-00544 · APJ Lynne E Pettigrew · IPR · Rehearing

  Patent Owner’s rehearing request was granted to modify the Ryan–McLaughlin combination analysis and denied otherwise; claims 7–11 remain unpatentable.

  RulingsRehearing decision

  • RehearingRehearing, grantedRehearing, deniedGranted in part

    “II. DISCUSSION The party challenging a decision in a request for rehearing bears the burden of showing the decision should be modified. 37 C.F.R. § 42.71(d). A request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed.” Id.” slip op. at 2

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

    “Patent Owner Response, that for a patent to serve as prior art the patent must be enabled as to its own earliest claimed effective filing date in 1994. Req. 1–4; PO Resp. 15–22. We addressed this argument in the Final Decision and additionally examined the evidence of record as to whether Ryan would have enabled one of ordinary skill in the art to make the invention without undue experimentation prior to the date of invention of the challenged patent. Final Dec. 22–25. We are not persuaded that we overlooked or misapprehended Patent Owner’s prior argument or made an erroneous interpretation of law.” slip op. at 3

  • ExcludeDecided for petitioner

    “transcript is inadmissible because it does not satisfy the requirements that all testimony, other than uncompelled direct testimony, must be in the form of a deposition transcript, 37 C.F.R. § 42.53(a), and that the witness shall be sworn, 37 C.F.R. § 42.53(f)(1). Req. 5. Therefore, according to Patent Owner, the Yamamoto transcript was “not taken, sought, or filed in accordance with these regulations [and] is not admissible.” Id. (citing 37 C.F.R. § 42.61(a)). Rule 42.53, however, is titled “Taking Testimony,” and applies only to testimony taken “during a testimony period set by the Board” for purposes of a particular review proceeding. 37 C.F.R. § 42.53(b); see also 37 C.F.R. § 42.53(c) (providing time limits set by the Board); id. § 42.53(d) (providing notice requirements). As stated in our Final Decision, Petitioner sought to admit the Yamamoto transcript as a deposition taken in the district court proceeding, not as deposition testimony taken in this inter partes proceeding. Final Dec. 32. And based on the parties’ stipulation in district court, we treated the Yamamoto transcript as sworn deposition testimony taken in the district court. Id. at 32–33 (citing Ex. 1067 ¶ 5). Petitioner filed the Yamamoto transcript as supplemental information under 37 C.F.R. § 42.123(b), establishing that the Yamamoto transcript reasonably could not have been obtained earlier and that its consideration was in the interests of justice. Paper 59, 7–8. Therefore, Petitioner’s filing of the Yamamoto transcript complied with Board rules, and we properly relied on it in determining the public accessibility of Yamamoto. See Final Dec. 35–38. Having reviewed Patent Owner’s Request, we are not persuaded we misapprehended or overlooked any matter relating to the admissibility of the Yamamoto transcript.” slip op. at 6

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

    “disclosure in the ’578 patent of “voice pattern.” Id. at 7–9. We disagree that our reliance on the “Brief Summary of the Invention,” which refers to “a speech recognition computer program which has been trained to the voice pattern of the call assistant,” was improper. See Final Dec. 12 (quoting Ex. 1001, 2:44–46 (emphasis added)). Rather, in our Final Decision, we determined that the ’578 patent contemplated software trained to a “voice pattern of the call assistant,” as set forth in the “Brief Summary of the Invention,” as well as software “specifically trained to the voice of [a] particular call assistant,” as described in the context of a particular relay embodiment shown in Figure 1. Final Dec. 12 (quoting Ex. 1001, 2:44–46; Ex. 1002, 5:44–47). Based on the evidence in the written description (including the disclosure of “voice pattern”), we determined that the ’578 patent did not indicate expressly how training occurs. Id. Giving the claim language its broadest reasonable construction in light of the specification, we concluded we would not limit “trained to the voice of the call assistant” to require training to the voice of one particular call assistant. Id.” slip op. at 7

  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,213,578

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.