• Solaredge Technologies Ltd. v. Koolbridge Solar, Inc.All claims unpatentable
  PTAB · Apr 17, 2023 · IPR2022-00007 · APJ Brian J Mcnamara · IPR · Final written decision

  Claims 1–13 and 20 are unpatentable: claims 1–3 and 8–10 over Tracy, claims 4 and 11 over Tracy and Fujimoto, claims 6 and 20 over Tracy and De, claim 7 over Tracy and Bond, and …

  RulingsFinal written decision

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

    “IV. CLAIM CONSTRUCTION In the Decision to Institute we declined to treat any of the claim terms as mean-plus-function terms because the terms have an ordinary and customary meaning. Dec. to Inst. 14–15. Neither party has proposed any other claim constructions. We apply the plain and ordinary meaning in this Decision.” slip op. at 7

  • Expert testimonyPetitioner expert creditedOther

    “Dr. Baker’s testimony is persuasive evidence that Tracy discloses the claimed floating DC power source, as Tracy’s terminals are not permanently connected to the neutral.” slip op. at 24

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

    “We agree with Petitioner that Patent Owner unrealistically reads this definition to mean there can never be a connection to ground or neutral, because Patent Owner ignores the disclosure in the ’822 patent of temporarily connecting one or the other of the floating DC sources to neutral, as discussed above. Id. at 9–10 (citing Ex. 1001, 3:52–60, 4:27–40, 10:44–47, 11:1–7, 11:25–28, 23:47–52; Ex. 1074, Baker Reply Decl. ¶¶ 12–13).” slip op. at 20

  Patent outcomesUS 8,937,822 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 8,937,822
• ROKU, Inc. v. Universal Electronics, Inc.All claims unpatentable
  PTAB · Sep 22, 2022 · IPR2021-00758 · APJ Patrick M Boucher · IPR · Final written decision

  Claims 1–13 are unpatentable as obvious over Chardon, HDMI 1.3a, and Mishra because the combined teachings meet each limitation and support a reason to combine.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner’s proposal is reasonable on the current record, and is additionally supported by the testimony of Dr. Russ. See Ex. 1003 ¶¶ 15–19. Patent Owner notes that its expert, Dr. Turnbull, agrees with Patent Owner’s proposed articulation, but that Dr. Turnbull’s “conclusions resulting from his analysis did not change when reviewing the cited references from the perspective of the level of ordinary skill in the art as proposed by the Petition.” PO Resp. 13 (citing Ex. 2004 ¶¶ 24–29, 31–41). We adopt Petitioner’s articulation of the level of ordinary skill for purposes of this Decision. We note, however, that we would reach the same ultimate conclusion were we to adopt Patent Owner’s proposal.” slip op. at 13

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

    “The ultimate difficulty with Patent Owner’s theory is that it presumes relationships between various elements of the claim, but such relationships are not expressed by the language of the claim. This includes relationships between the “command communication,” the “functional operation of the media sink device,” and “activation of an input element of the controlling device.” See id. at 29:13–31:20, 33:10–35:2. Under such circumstances, we necessarily agree with Petitioner that “[t]he patentee chose to claim broadly and vaguely,” such that there is “no principled reason to exclude steps 500/502/504 from reading on the broadly-worded first wherein clause [that the media source device is programmed to provide the ‘message having data’ to the controlling device].” See Reply 13. For the reasons explained above, the prosecution history of the ’785 patent and its ancestors provides insufficient basis to discriminate between the parties’ positions. But both the plain and ordinary meaning of the claim language and the specification of the ’785 patent support Petitioner’s position, which we accordingly adopt. That is, we construe the “message having data” limitation as not requiring actual transmission of a “command communication” to indicate responsiveness to such a “command communication.”” slip op. at 26

  • Expert testimonyPatent owner expert creditedDecided for patent owner

    “1 Petitioner asks that we “discount Dr. Turnbull’s testimony with respect to HDCP [i.e., High-bandwidth Digital Content Protection]” because Dr. Turnbull “did not know what HDCP stands for” and incorrectly testified that “HDCP break” is a term of art in the HDCP standard. Reply 10–11 n.4. We decline to do so after reviewing Dr. Turnbull’s testimony, and instead accord his testimony due weight when evaluated in context.” slip op. at 8

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

    “contention that HDMI 1.3a is a printed publication under 35 U.S.C. § 102(b): (1) internet web pages referring to HDMI 1.3a, together with affidavits from the Internet Archive supporting a date of June 8, 2009, 5 When citing to HDMI 1.3a, we cite to the native pagination. Exs. 1042, 1045, 1048, 1049; (2) a declaration by Steve Venuti, former Vice President of Marketing HDMI Licensing, LLC, who attests to facts within his personal knowledge that support public availability of HDMI 1.3a at least as of November, 2006, Ex. 1043; (3) citations to HDMI 1.3a as prior art by the Office before October 28, 2011, Exs. 1037–1041; and (4) the date of November 10, 2006 on the face of HDMI 1.3a itself, Ex. 1010, 1. Patent Owner does not contest that HDMI 1.3a is prior art to the challenged claims. See PO Resp. 11–12. We have reviewed Petitioner’s evidence and find it sufficient to treat HDMI 1.3a as prior art.” slip op. at 29

  Patent outcomesUS 9,641,785 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,641,785
• Flex Logix Technologies Inc. v. Venkat KondaAll claims unpatentable
  PTAB · Mar 16, 2021 · PGR2019-00042 · APJ Norman H Beamer · PGR · Final written decision

  Claims 1–7, 9–15, and 17–19 are unpatentable under §§ 102(a)(1) and 103; the revised motion to amend and motion to exclude are denied.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We find Petitioner’s proposal consistent with the level of ordinary skill in the art reflected by the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). Therefore, for purposes of this Decision, we adopt Petitioner’s unopposed position as to the level of ordinary skill in the art.” slip op. at 16

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

    “Because only those claim terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy, we do not expressly construe any claim term for purposes of this Decision. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017).” slip op. at 17

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

    “Ex. 1001, 49:9–18. Petitioner argues, and we agree, that this language is non-limiting as reciting optional features that “may or may not” be present, and therefore irrelevant to the issue of anticipation.9 Pet. 54–57.” slip op. at 23

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

    “In light of these and other disclosures in Wong ’308, Petitioner argues that a POSITA would have been motivated to implement the switches of the ’756 PCT application using multiplexers. Pet. 102; Ex. 1002 ¶ 182. Patent Owner does not challenge this fact — the references to multiplexers (also referred to a “muxes”) in the ’342 patent suggest that Patent Owner would concede this point. E.g., Ex. 1001, 9:67, 14:33. Upon review of the record, we are persuaded that Petitioner has proved by a preponderance of the evidence that the combination of the ’724 provisional application and Wong ’308 renders claims 1–7, 9–15, and 17–19 obvious.” slip op. at 29

  Patent outcomesUS 10,003,553 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites KSR · Graham · Nautilus
  Patents in suitUS 10,003,553
• BMW Of North America, LLC v. Stragent, LLCAll claims unpatentable
  PTAB · Jun 13, 2018 · IPR2017-00677 · APJ Patrick M Boucher · IPR · Final written decision

  Claims 51–59 are unpatentable: claims 51–59 over Staiger and Millsap, and claims 51 and 54–57 over each OSEK-based obviousness ground.

  RulingsFinal written decision

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

    “We have reviewed the relevant deposition testimony, in which Dr. Miller was asked to identify the standard he used when construing claim terms in his Declaration. Ex. 1025, 27:1–34:14. We agree with Petitioner that Dr. Miller did not provide responses sufficient to conclude that he was aware of and/or applied the correct claim-construction standard. See id. at 27:5–6 (“I used what is generally accepted in the field.”), 27:9–11 (“So to – for construing the claim terms is providing a definition of what the term is. So I provided a general definition for the terms.”), 30:3–6 (“Well, that’s the standard that I used for construing the claim terms in this Declaration. I don’t know if that’s the legal qualification for construing claim terms.”), 32:18–23 (“broadest reasonable interpretation” would mean “when you’re defining a term that you would define it in a way that is, first of all, reasonable, that it makes sense and that it’s broad, meaning general and that it’s interpreting the phrase or the term”). Nevertheless, we are not persuaded that the appropriate remedy is exclusion of Dr. Miller’s testimony. As Patent Owner asserts, “[t]he role of the expert witness under the Federal Rules of Evidence is to ‘help the trier of fact to understand the evidence or to determine a fact in issue.’” Paper 24, 2–3 (quoting Fed. R. Evid. 702) (emphasis by Patent Owner). As Patent Owner further asserts, Petitioner does not “impugn[]” Dr. Miller’s credibility as an expert in the subject matter at issue. Id. at 3–4. We agree with Patent Owner that “Petitioner’s attack on the sufficiency of the evidence is improper in a motion to exclude.” Id. at 4 (citing Microsoft Corp. v. Surfcast, Inc., Case IPR2013-00292 at 52–53 (Paper 93) (PTAB Oct. 14, 2014)). We accordingly deny Petitioner’s Motion to Exclude.” slip op. at 13

  • Expert testimonyPatent owner expert discountedOther

    “Petitioner alternatively argues in its Reply that “Because Dr. Miller did not apply the correct claim construction standard, his opinions on claim construction (Ex. 2001, §§16-21) should be afforded no weight.” Reply 2. Although we agree that the weight to be accorded to Dr. Miller’s testimony on claim construction is impacted by the uncertainty of the analytical procedure he followed, we are not persuaded that his testimony should be discounted wholesale. Dr. Miller provides relevant opinions on a number of issues, particularly including how a person of ordinary skill in the art would understand certain terms in light of the Specification, that are helpful to us as the trier of fact. “There is no more certain test for determining when experts may be used than the common sense inquiry whether the untrained layman would be qualified to determine intelligently and to the best possible degree the particular issue without enlightenment from those having a specialized understanding of the subject involved in the dispute.” Ladd, Expert Testimony, 5 Vand. L. Rev. 414, 418 (1952).” slip op. at 14

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner

    “shared “in real time utilizing a second network protocol . . . ,” and dependent claim 59 recites that information is processed “to create, in real-time, messages in at least two other message formats . . . .” Petitioner argues that the Specification of the ’843 patent expressly defines “real-time”: “In the context of the present description, real-time may include any response time that may be measured in milli- or microseconds, and/or is less than 1 second.” Ex. 1001, col. 3, ll. 35–38. Accordingly, Petitioner proposes that “‘real-time’ should be construed as responses that occur in less than one second.” Pet. 13. Patent Owner contends that the definition from the Specification should be adopted. PO Resp. 15. We construe “real-time” as Petitioner proposes, i.e., as including responses that occur in less than one second. The first part of the quote cited above provided in the Specification (“may be measured in milli- or microseconds”) is not limiting because any response time, no matter how large or small, may be measured in milli- or microseconds.” slip op. at 16

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

    “been reached in association with the storage request.” Petitioner proposes that “threshold” be construed consistent with a dictionary definition it provides, as a “value above which something is true or will take place and below which it is not or will not.” Pet. 13–14 (citing Ex. 1016, 5). Observing that the Specification of the ’843 patent uses “threshold” in the context of an elapsed time, Petitioner further proposes that this construction “include the maximum value (i.e., time-out) of a timer.” Id. (citing Ex. 1001, col. 8, ll. 21–25, col. 8, ll. 47–51). We agree, and accordingly construe “threshold” as Petitioner proposes.3 3. “heterogeneous networks” Dependent claim 55 recites that the “apparatus is operable such that the first network and the second network are heterogeneous networks.” The Specification of the ’843 patent defines “heterogeneous networks”: “In the context of the present description, heterogeneous networks may refer to any different communication networks with at least one aspect that is different.” Ex. 1001, col. 7, ll. 26–29. In light of this explicit definition, for purposes of this Decision, we construe “heterogeneous networks” as Petitioner proposes, i.e., as “networks having at least one aspect that is different.” Pet. 14 (citing 3 Patent Owner advocates for the same construction advanced by Petitioner, but omits inclusion of the maximum value of a timer. PO Resp. 15. Although Patent Owner asserts that the construction is otherwise “the definition provided by the ‘843 Patent,” it does not cite to the ’843 patent to support its assertion, and we are unable to identify such a definition in the patent. Nevertheless, we agree with Petitioner that any distinction between the constructions is not material to any grounds. See Reply 6.” slip op. at 16

  Patent outcomesUS 8,566,843 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham
  Patents in suitUS 8,566,843
• Unified Patents Inc. v. Harry Heslop And Sportbrain Holdings, LLCAll claims unpatentable
  PTAB · Feb 6, 2018 · IPR2016-01464 · APJ Jeffrey S Smith · IPR · Final written decision

  Claims 1–16 are unpatentable under § 103 over the combinations of Vock, Smith, and Onari; Vock, Smith, Onari, and Root; Vock, Smith, Onari, and Browne; or Shum, Nikolic, and Root.

  RulingsFinal written decision

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

    “Petitioner proposes the claim term “step data corresponding to a number of steps” should be interpreted to mean data related to a number of steps, which can include data gathered by a pedometer. Pet. 21. Petitioner highlights that during prosecution, Applicants argued that the scope of this claim term encompasses pedometer step data. Pet. 22 (citing Ex. 1017, 8). Petitioner also highlights that the Examiner in the reissue application interpreted this claim term to encompass any data developed from the number of steps of the user. Id. (citing Ex. 1022, 35). The Specification of the ’002 patent discloses examples of personal data as the number of steps counted during the user’s fitness activity or during the day, the distance walked by the user during the day, and the amount of calories burned by the user during the day. See Ex. 1001, 7:34, 8:53–55, 10:27–30. Patent Owner does not challenge Petitioner’s proposed construction of the claim term “step data corresponding to a number of steps.” Pet. 22. Patent Owner also does not provide its own proposed construction of this claim term. We agree with Petitioner’s reasoning and construe the term “step data corresponding to a number of steps” as encompassing at least data gathered by a pedometer, including a number of steps, or data developed from a number of steps, including a distance walked or an amount of calories burned.” slip op. at 7

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Supported by testimony of Dr. Eldering, Petitioner contends that a person of ordinary skill in the art “would have had at least two years of work towards a Bachelor’s Degree in electrical engineering, computer science, or a related subject or equivalent, or at least one year of experience working with computer networks and web sites.” Pet. 14 (citing Ex. 1009 ¶ 22). Patent Owner does not address the level of ordinary skill in the art. We adopt Petitioner’s statement of the level of ordinary skill in the art.” slip op. at 8

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

    “We determine that Patent Owner’s contention that Vock teaches away from using the pedometer of system 620 shown in Figure 21 with the system shown in Figure 1 is inconsistent with Vock’s disclosure that “system 620 [shown in Figure 21] is useful to joggers who can gate it to serve as a pedometer” and that “[d]ata may also be acquired by the accelerometer and telemetered to the electronics 626 via an RF link 631 back to a remote base 632 for storage and processing (e.g., such as the base station 70, FIG. 1).” Ex. 1006, 50:5, 49:21–23, and Fig. 21. We determine that the Petition and supporting testimony of Dr. Eldering show that it would have been obvious to a person of ordinary skill in the art to modify the sensing unit of Vock to measure and transmit the number of steps taken by a user, and to modify the base station of Vock to provide feedback based on the number of steps, in light of the teachings of Smith, for the benefit of providing a user with additional information with which to quantitatively assess performance during a physical activity, and that such modifications would have been accomplished with a high chance of success. See Ex. 1009 ¶¶ 50–52. We determine that the Petition and supporting testimony of Dr. Eldering show that a person of ordinary skill in the art would have modified the sensing unit of Vock to periodically transmit data gathered by the sensing unit to a base station, in light of the teachings of Onari, for the benefit of providing other users with updates on the performance of a user as new data is collected. See Ex. 1009 ¶¶ 55–62.” slip op. at 17

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

    “SportBrain iSTEP product is evidence that the claims are not obvious. PO Resp. 32–36. Petitioner contends that Patent Owner has not established a nexus between the evidence of commercial success and the patented invention. Reply 22–23. In particular, Petitioner contends that the evidence suggests that data was sent from the activity tracker over a telephone line when the device was docked, rather than “over a wireless network” from “wireless communication devices” as claimed. Reply 22 (citing Ex. 1024, 11). Accordingly, Petitioner shows that the challenged claims do not encompass the docked/telephone product for conveying data, and no nexus presumption exists. See Reply Br. 22–23; WBIP, LLC v. Kohler Co., 829 F.3d 1317, 1328–29 (Fed. Cir. 2016) (error to reach obviousness conclusion without first weighing all the factors, and relied upon product must be “the invention disclosed and claimed in the patent” to obtain a presumption of nexus) (quoting J.T. Eaton & Co. v. Atl. Paste & Glue Co., 106 F.3d 1563, 1571 (Fed. Cir. 1997)). Even if a nexus presumption were to apply, Patent Owner’s alleged commercial success does not provide any analysis with respect to market share, so it is not clear how 10,000 subscribers or units with accessories sold shows success that alters the obviousness calculus appreciably. See PO Resp. 35–36 (alleging 10,000 subscribers and 35,000 related units and accessories); Pet. Reply 23 (citing Ex. 1024, 7–8 (showing any success probably was due to the growing popularity of exercise trackers in general)). We determine that Patent Owner has not established commercial success or a nexus, such that the product identified by Patent Owner sent data over a wireless network from wireless communication devices, as required by the claims.” slip op. at 18

  Patent outcomesUS 7,454,002 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,454,002
• Elekta, Inc. v. Varian Medical Systems, Inc.All claims unpatentable
  PTAB · Jun 16, 2017 · IPR2016-00547 · APJ Garth D Baer · IPR · Final written decision

  Claims 57–59 are unpatentable as anticipated by Jaffray MICCAI 2001 and the Jaffray Publication, and as obvious over the identified Jaffray combinations.

  RulingsFinal written decision

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

    “communication system that facilitates communication between many devices and that uses a networking protocol to selectively route messages to their intended devices.’” PO Resp. 9 (internal quotation marks omitted). Petitioner proposes a broader construction: “a link between two or more components of the radiation treatment system that allows information to be shared between them.” Reply 2. In our Final Written Decision in Elekta, Inc. v. Varian Medical Systems, Inc., IPR2015-01401 (PTAB Dec. 23, 2016) (Paper 56, “IPR2015- 01401 FWD”), we construed the same term based on nearly identical arguments and substantially the same evidence. See IPR2015-01401 FWD 7–8. In our Decision, we rejected the same argument Patent Owner presents in this case—that a “communications network” requires a networking protocol to selectively route messages to their intended devices. See id. We did so because neither the term’s plain language nor the specification supported imposing such a requirement. See id. For the same reasons explained in IPR2015-01401, we maintain our agreement with Petitioner. Under the broadest reasonable construction, a communications network is simply a link between two or more components of the radiation treatment system that allows information to be shared between them.” slip op. at 7

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

    “i. Jaffray MICCAI 2001 Teaches “a computing unit, coupled to the rotatable gantry via a communications network, to store the image projection data captured by the flat-panel imager” Claim 57 (and, by dependence, claims 58 and 59) requires “a computing unit, coupled to the rotatable gantry via a communications network, to store the image projection data captured by the flat-panel imager.” We agree with Petitioner one skilled in the art would understand Jaffray MICCAI 2001 includes this feature. Jaffray MICCAI 2001 teaches “[p]rototypes of the hardware and software of the system have been constructed.” Ex. 1020, 1077. It further describes “[b]ecause the bone matching can be performed accurately on fairly low resolution CT and the prostate matching only requires a small part of the cone-beam CT volume, the complete image analysis can be performed in less than 10 s on a 700 MHz PC.” Id. at 1078. As Petitioner’s expert, Dr. Hamilton, explains, because Jaffray MICCAI 2001’s computing unit performs image reconstruction, it “necessarily stores the projection image data captured by the flat-panel imager.” Ex. 1037 ¶ 20 (citing Ex. 1020, 1077; Ex. 1022 ¶ 162). Further, as Dr. Hamilton, explains, “[t]he outcome of [the computing unit’s] analysis is used with treatment planning data to control the treatment delivery,” which “necessarily requires controlling the gantry.” Id. (citing Ex. 1020, 1077; Ex. 1022 ¶ 163); see also Ex. 1020, 1077 (describing that “[t]he selected treatment plan will be delivered by means of a step-and-shoot intensity delivery technique using 5 beam angles and about 20 treatment segments”).” slip op. at 12

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

    “In addition to demonstrating these alternative prior-art disclosures, Petitioner identified sufficient reasons that would have prompted a person of ordinary skill in the relevant field to combine the elements as the claimed invention does. See KSR, 550 U.S. at 418. Specifically, Petitioner explains—with support from Dr. Hamilton—that one skilled in the art would have been motivated to combine the computers disclosed in Jaffray MICCAI 2001, Jaffray JRO 1999, and Jaffray 2001 into an interconnected network because doing so would increase the efficiency of delivering radiation therapy to a patient. See Pet. 38 (citing Ex. 1022 ¶ 181). In addition, Petitioner explains a person of ordinary skill in the art would have been motivated to combine the claimed radiation energies (as disclosed in Jaffray JRO 1999) with the linear accelerator of Jaffray MICCAI 2001 to achieve a therapeutic response. Id. at 39 (citing Ex. 1022 ¶ 181). Thus, in addition to demonstrating the necessary disclosures in the prior art, Petitioner articulated sufficient reasoning with some rational underpinning to support the legal conclusion that its proffered combination would have been obvious to one of ordinary skill in the art. In disputing obviousness based on Jaffray MICCAI 2001, Jaffray 2001, and Jaffray JRO 1999, Patent Owner relies on its narrow construction for “communications network” as requiring a networking protocol and message routing. See PO Resp. 35–38, 43–45. In particular, Patent Owner asserts that, given added complexity associated with addressing data, communications networks are slower and more complex than dedicated physical connections, so one skilled in the art would not have been motivated to use a communications network as opposed to a direct connection. See id. at 43–44. We find Patent Owner’s arguments unpersuasive because, as explained above, we do not construe a communications network as requiring a networking protocol to selectively route messages to their intended devices, as Patent Owner contends. Instead, a communications network requires only a link between two or more components that allows information to be shared between them. Based on our review of the arguments and evidence in the Petition, Response, and Reply, we determine Petitioner has shown, by a preponderance of the evidence, that claims 57–59 are unpatentable under 35 U.S.C. § 103(a) over Jaffray MICCAI 2001, Jaffray 2001, and Jaffray JRO 1999. 3. Anticipation of Claims 57–59 Based on the Jaffray Publication” slip op. at 17

  • Obviousness (§103) › KSR rationalesUnpatentableUnpatentable

    “Petitioner contends “[t]o the extent they are not found to be anticipated by the Jaffray Publication, claims 57–59 are unpatentable because they would have been obvious over the Jaffray Publication in view of the general knowledge of a person of ordinary skill in the art.” Pet. 54– 55. In light of our findings on anticipation based on Jaffrey Publication, and absent any assertions of secondary considerations supporting non-obviousness, we are persuaded Petitioner has demonstrated by a preponderance of the evidence that the subject matter of claims 57–59 would have been obvious over the Jaffray Publication. See In re McDaniel, 293 F.3d 1379, 1385 (Fed. Cir. 2002) (“It is well settled that ‘anticipation is the epitome of obviousness.’”); cf. Cohesive Techs., Inc. v. Waters Corp., 543 F.3d 1351, 1364 (Fed. Cir. 2008) (distinguishing anticipation from obviousness because “obviousness requires analysis of secondary considerations of nonobviousness, while secondary considerations are not an element of a claim of anticipation”).” slip op. at 22

  Patent outcomesUS 7,945,021 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,945,021
• Elekta, Inc. v. Varian Medical Systems, Inc.All claims unpatentable
  PTAB · Jun 16, 2017 · IPR2016-00476 · APJ Garth D Baer · IPR · Final written decision

  Claim 6 is unpatentable over Jaffray MICCAI 2001 under §§ 102(a), 102(b), and 103(a); claims 1–3, 7–10, and 12 are canceled on Patent Owner’s granted motion to amend.

  RulingsFinal written decision

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

    “construction in light of the specification of the patent in which [they] appear[].” 37 C.F.R. § 42.100(b). We presume a claim term carries its “ordinary and customary meaning,” which is “the meaning that the term would have to a person of ordinary skill in the art in question” at the time of the invention. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). We construe only those claim terms necessary to resolve the controversy. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). 2. “communications network”” slip op. at 7

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

    “i. Jaffray MICCAI 2001 Teaches “a translatable treatment couch coupled to the rotatable gantry via a communications network” Claim 6 requires “a translatable treatment couch coupled to the rotatable gantry via a communications network.” As Petitioner explains, the linear accelerator in Jaffray MICCAI 2001 is an Elekta SL-20. Pet. 16 (citing Ex. 1021, 1076; Ex. 1026 ¶ 167), 24 (citing Ex. 1021, 1076, Fig. 1; Ex. 1026 ¶¶ 156, 167). A technical note describing the SL-20 explains as follows: “The hardware/software interaction of the SL-20 makes it particularly suitable for automated data collection. Communication between the control processor and the accelerator, gantry and patient couch is handled by a pair of high-speed serial links. These are daisy-chained through three separate control areas distributed throughout the machine.” Ex. 1015, 220. “[R]ecourse to extrinsic evidence is proper to determine whether a feature, while not explicitly discussed, is necessarily present in a reference.” Telemac Cellular Corp. v. Topp Telecom, Inc., 247 F.3d 1316, 1328 (Fed. Cir. 2001). In light of Exhibit 1015, we agree with Petitioner one skilled in the art would understand Jaffray MICCAI 2001’s translatable treatment couch and rotatable gantry are coupled via a communications network—i.e., a link between the two components that allows information to be shared between them. See Pet. 24 (citing Ex. 1021, 1076, Fig. 1; Ex. 1015, 220; Ex. 1026 ¶¶ 156, 167); see also Reply 7–12; Ex. 1031 ¶¶ 19– 29.” slip op. at 10

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

    “Petitioner asserts “to the extent [claim 6 is] not found to be anticipated by Jaffray MICCAI 2001, [claim 6] would have been obvious in view of Jaffray MICCAI 2001.” Pet. 27. In light of our findings on anticipation based on Jaffray MICCAI 2001, and absent any assertions of secondary considerations supporting non-obviousness, we are persuaded Petitioner has demonstrated by a preponderance of the evidence that the subject matter of claim 6 would have been obvious over Jaffray MICCAI 2001. See In re McDaniel, 293 F.3d 1379, 1385 (Fed. Cir. 2002) (“It is well settled that anticipation is the epitome of obviousness.”); cf. Cohesive Techs., Inc. v. Waters Corp., 543 F.3d 1351, 1364 (Fed. Cir. 2008) (distinguishing anticipation from obviousness because “obviousness requires analysis of secondary considerations of nonobviousness, while secondary considerations are not an element of a claim of anticipation”). 3. Anticipation of Claim 6 Based on the Jaffray Publication” slip op. at 13

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureNot shown unpatentableInherency not foundNot shown unpatentable

    “We agree with Patent Owner that using a computer-controlled treatment couch does not necessarily mean the treatment couch is connected to the gantry via a communications network, as claim 6 requires. See PO Resp. 28. As Patent Owner explains, controlling the couch with a computer “says nothing about how, if at all, the table would be coupled to the rotatable gantry.” Id. In addition, Petitioner’s standard-feature argument, even if correct, is not enough to show the Jaffray Publication necessarily discloses the disputed communications network feature. See Rexnord Indus., LLC v. Kappos, 705 F.3d 1347, 1355 (Fed. Cir. 2013) (explaining that “anticipation by inherent disclosure is appropriate only when the reference discloses prior art that must necessarily include the unstated limitation”). Thus, we find Petitioner has not shown the Jaffray Publication expressly or inherently discloses “a translatable treatment couch coupled to the rotatable gantry via a communications network,” as claim 6 requires, and consequently has not met its burden to show the Jaffray Publication anticipates claim 6. 4. Obviousness of Claim 6 Based on the Jaffray Publication” slip op. at 14

  Patent outcomesUS 8,116,430 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,116,430
• Elekta, Inc. v. Varian Medical Systems, Inc.All claims unpatentable
  PTAB · Dec 23, 2016 · IPR2015-01401 · APJ Garth D Baer · IPR · Final written decision

  Claims 1, 4–7, 14, 15, 53, 60, and 61 are unpatentable over Jaffray 2001 under §§ 102(b) and 103(a), and over the stated Jaffray combinations under § 103(a).

  RulingsFinal written decision

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

    “ordinary and customary meaning,” which is “the meaning that the term would have to a person of ordinary skill in the art in question” at the time of the invention. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). We construe only those claim terms necessary to resolve the controversy. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). 2. “capable of implementing a treatment plan” Patent Owner takes the position that to be “capable of implementing a treatment plan,” a radiation treatment system cannot still be in development and must pass industry-established quality assurance validations that are prerequisites to commissioning such systems for use on real patients. See PO Resp. 17–18. We decline to read in these additional limitations. Neither the claims nor the Specification has any support for excluding devices that are still early in development, or those that have not yet been validated against established quality standards. The broadest reasonable construction of the term requires no more than a system capable of implementing one or more treatment plans. 3. “communications network” slip op. at 7

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

    “Patent Owner asserts “[a] communications network is a communication system that facilitates communication between many devices and that uses a networking protocol to selectively route messages to their intended devices.” PO Resp. 28. In Reply, Petitioner proposes a broader construction: “a link between two or more components of the radiation treatment system that allows information to be shared between them.” Reply 11. We agree with Petitioner. In the three instances when the ’021 patent Specification recites “communications network,” it describes only a generic connection between components. See Ex. 1001, 2:36–40 (explaining that “[t]he couch 218 may be connected to the therapy simulator rotatable gantry via a communications network”), 4:16–18 (explaining that “the computer 220 connects to the simulator 100 and the command processor 225 via a communications network 240”), 6:16–18 (explaining that “box 451, processor 425, and computer 450 connect to simulator 400 via communications network 440”). Figures 1 and 3 of the ’021 patent depict the communications network (items 240 and 440) simply as arrows connecting various components. Notably absent from the ’021 patent is any reference to networking protocols or a routing mechanism, and nothing in the term’s plain language requires a networking protocol or selectively routing messages as Patent Owner suggests. We agree with Petitioner under the broadest reasonable construction, a communications network is simply a link between two or more components of the radiation treatment system that allows information to be shared between them. 4. “a high energy radiation source” and “a cone-beam radiation source”” slip op. at 7

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

    “i. Jaffray 2001 Teaches “a radiation treatment system capable of implementing a treatment plan” All of the challenged claims require a “radiation treatment system capable of implementing a treatment plan.” We agree with Petitioner that because Jaffray 2001 teaches “[t]he adaptation of this system to a medical linear accelerator for on-line image-guided radiation therapy demonstrates the suitability of this technology for intra-therapeutic guidance,” Jaffray 2001 discloses a system capable of implementing a treatment plan. See Pet. 18 (quoting Ex. 1003, 800); Ex. 2024 ¶¶ 25–28 (explaining that “a medical linear accelerator, by its very nature, is capable of implementing a treatment plan”), ¶¶ 29–30 (explaining that Fig. 2(a) from Patent Owner’s Exhibit 2015 confirms that Jaffray 2001’s medical linear accelerator is capable of implementing a treatment plan). In contesting this element, Patent Owner notes that one of the other Jaffray references—Jaffray JRO 1999 (Ex. 1007)—states its design “allows normal operation of the accelerator with the imagers removed and the kV xray tube retracted.” Ex. 1007, 775. Patent Owner interprets Jaffray JRO 1999’s statement to mean in all of Jaffray’s systems, removing the imaging system was “necessary” before the linear accelerator could implement a treatment plan. PO Resp. 8–9; Ex. 2020 ¶ 58. Patent Owner argues further Jaffray 2001’s system was not capable of implementing a treatment plan because it was still in development and had not been tested or validated against established industry standards that must be met before the FDA will commission such devices for medical use. See PO Resp.17–18; Ex. 2020 ¶¶ 49–52. We disagree. As explained above, under our claim construction, the claim limitation at issue requires only a system capable of implementing one or more treatment plans, not one that is ready to certify for actual medical use on real patients. Jaffray JRO 1999’s reference to allowing normal operation with the imagers removed does not undermine that teaching; it simply indicates the disclosed system permits radiation therapy with the imagers removed, a feature beneficial for “limited situations in which the treatment plan may require extreme angulation.” Reply 3; see Ex. 1024 ¶¶ 7–8. We find Jaffray 2001 discloses a radiation treatment system capable of implementing a treatment plan as the challenged claims require.” slip op. at 12

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

    “challenged claims, the claimed subject matter would have been obvious over Jaffray 2001 at the time of the invention. See Pet. 26–27. As explained above, we find Jaffray 2001 discloses every limitation from the challenged claims. In addition, Petitioner explains—with unrefuted support from Dr. Hamilton and the prior art—by 1981 translatable treatment couches moveable in three planes plus angulation and coupled to the gantry via a communications network were standard on linear accelerators. See Pet. 26– 27 (citing Ex. 1016 ¶ 36; Ex. 1015, 220; Ex. 1010, 1, 2, 12, 39–48). Petitioner also explains—again with unrefuted support from Dr. Hamilton— none of the Jaffray references suggest any changes to these standard features and one skilled in the art would understand the linear accelerator depicted in Jaffray 2001 is the Elekta SL20, which had a translatable treatment couch including the same standard features. Pet. 27 (citing Ex. 1016 ¶ 128). In addition, Petitioner explains that to the extent Jaffray 2001 fails to disclose a computing unit to capture and store image projection data, it would have been obvious to one skilled in the art to include one because “to process the image projection data to generate volumetric images, it is necessary to store the image projection data in the computer which will process the data.” Pet. 27 (citing 1016 ¶ 207). Thus, in addition to demonstrating the necessary disclosures in the prior art (through incorporating its anticipation argument), Petitioner identified sufficient reasons that would have prompted a person of ordinary skill in the relevant field to combine the elements the way the claimed invention does. See KSR, 550 U.S. at 418. In contesting obviousness based on Jaffray 2001, Patent Owner reiterates its argument that Jaffray 2001 does not disclose a system capable of implementing a treatment plan (as required in all of the challenged claims), a computing unit coupled to the rotatable gantry via a communications network (as required in claims 1, 4, and 5), or a translatable treatment couch coupled to the rotatable gantry via a communications network (as required in claims 14, 15, and 60). PO Resp. 45. Patent Owner asserts also we should reject Petitioner’s obviousness challenge as an improper attempt to “bootstrap” obviousness to anticipation, without identifying any differences between the claimed subject matter and the prior art or explaining why those elements would have been obvious to a person of ordinary skill in the art. Id. at 43. We disagree with Patent Owner’s arguments addressing Jaffray 2001’s ability to implement a treatment plan and communications network for the reasons explained in our anticipation analysis above. Moreover, we do not view Petitioner’s obviousness challenge as a mere “bootstrap” to anticipation because Petitioner identified potential differences between Jaffray 2001 and claimed subject matter (i.e., the claimed translatable treatment couch and computing unit to store image projection data) as well as rationale explaining why one skilled in the art would have known to include those elements.” slip op. at 19

  Patent outcomesUS 7,945,021 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,945,021
• Zhongshan Broad Ocean Motor Co., Ltd. / Broad Ocean Motor LLC et al. v. Nidec Motor CorporationAll claims unpatentable
  PTAB · May 9, 2016 · IPR2014-01121 · APJ Patrick M Boucher · IPR · Final written decision

  Claims 1–3, 8, 9, 12, 16, and 19 are unpatentable as obvious over Bessler and Kocybik and anticipated by Hideji; the motion to amend is denied.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner

    “Generally, . . . the preamble does not limit the claims.” DeGeorge v. Bernier, 768 F.2d 1318, 1322 n.3 (Fed. Cir. 1985). In particular, “[t]he preamble of a claim does not limit the scope of the claim when it merely states a purpose or intended use of the invention.” In re Paulsen, 30 F.3d 1475, 1479 (Fed. Cir. 1994) (citing DeGeorge, 768 F.2d at 1322 n.3). In this instance, the “HVAC system” portions of the preambles of the challenged claims provide no antecedents for ensuing claim terms, with the bodies of the claims neither repeating nor referencing HVAC systems. Because the language in the bodies of the claims, standing alone, is sufficient to set forth the invention, the “HVAC system” portions merely provide a stated purpose for the invention. Accordingly, we find no slip op. at 10

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

    “2. “using independent values of Q and d axis currents” In the Institution Decisions, the Board construed “using independent values of Q and d axis currents,” which is recited in independent claims 1, 16, and 19, as requiring the use of Q and d axis current values that are developed independently of each other, without relying on one to derive the other. Paper 20, 7–8; IPR2015-00762, Paper 12, 6–7. Patent Owner does not explicitly contest this construction, and advocated for this construction in its Preliminary Responses. Paper 14, 9–10; IPR2015-00762, Paper 10, 19. But Patent Owner presents arguments that implicitly construe the phrase as requiring the use of independent demand Q and d axis currents, rather than the use of independent actual Q and d axis currents. See Paper 72, 6, 8.” slip op. at 11

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

    “3. “back-emf . . . motor” In the Institution Decisions, the Board construed “back-emf . . . motor,” which is recited in claim 9, as coterminous with “permanent magnet motor.” Paper 20, 7–8; IPR2015-00762, Paper 12, 6–7. Neither party contests that construction and we adopt it for this Final Written Decision.” slip op. at 12

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

    “survey of electric motor control schemes for permanent magnet motors,8 for disclosure of sinewave commutation using vector control with independent Q and d axes to produce continuous phase currents. Id. at 43–46 (citing Ex. 1007, 11–12, 17, 37, 40, 80, 86, 140, 144, Fig. 6.3, Fig. 6.10, Figs. 7.13– 7.14, Fig. 9.1). We agree with Petitioner’s analysis as to how Bessler and Kocybik teach the limitations of claims 1, 16, and 19, which is supported by the testimony of Dr. Ehsani. See Ex. 1009 ¶¶ 47–55. Indeed, Patent Owner does not dispute that Kocybik teaches sinewave commutation using vector control with independent Q and d axes to produce continuous phase currents. Furthermore, Petitioner has provided adequate reasoning why a person of ordinary skill in the art would have effected the combination proposed (i.e., configuring the system of Bessler to perform sinewave commutation in the manner described in Kocybik), namely that the use of sinewave commutation and independent Q and d axis currents would have provided predictable results to address known problems associated with other types of motors. Pet. 1121, 36–37 (citing KSR Int’l Co. v. Teleflex Inc., 550 U.S. 415–421 (2007)). In particular, Petitioner reasons persuasively that “using 8 Patent Owner does not dispute Petitioner’s assertion that Kocybik qualifies as a prior art printed publication under 35 U.S.C. § 102(b). See Pet. 1121, 4; Paper 30, 3 (“Kocybik describes high end applications at the time of its publication”), 25 (“Kocybik references higher end applications at the time of its publication”); Paper 21, 3 (“The patent owner is cautioned that any arguments for patentability not raised in the response will be deemed waived.”); Paper 70, 3 (same). 18 rectangular currents creates unwanted torque, and the use of sinusoidal currents can reduce unwanted torque and create smoother and quieter motor operation.” Id. at 37 (citing Ex. 1007, 25; Ex. 1009 ¶ 52). We are not persuaded by Patent Owner’s counterarguments. First, Patent Owner contends that Bessler teaches away from the claimed combinations because “one of the principal objects of Bessler is to eliminate the need for a system controller in an HVAC system,” and that a benefit of such elimination is a reduction in the number of microprocessors used. Paper 30, 15–16 (citing Ex. 1006, col. 1, ll. 22–34, col. 2, ll. 3–5). Patent Owner observes that Bessler “provides an integral microprocessor in its motor controller that can interpret, for example, the cycling of the on/off signal of the thermostat and directly create motor control signals without the need of a system controller developing interim system demand signals.” Id. at 19–20 (citing Ex. 1006, col. 5, l. 66–col. 6, l. 22). Like Bessler, the Specification of the ’349 patent describes that the “system controller” may be a thermostat or a separate controller : “the system controller 402 may be a thermostat, an additional control module in communication with a thermostat, or a standalone controller for the HVAC system 400.” Ex. 1001, col. 4, ll. 35–38 (emphasis added). Thus, the claims do not require a separate standalone system controller. For these reasons, Patent Owner’s teaching away arguments are not commensurate in scope with the claim language. 19 Second, Patent Owner contends that Kocybik is applied too expansively by Petitioner because Kocybik limits its disclosure to “higher end applications” like hybrid car engines, the aerospace industry, and high-accuracy machine tooling applications: “To be sure, Kocybik discusses motor control schemes including that sine wave commutation may be used with a [brushless permanent magnet] motor, but Kocybik does not discuss HVAC systems or the motors used in them.” Paper 30, 25–27. Patent Owner argues that only through hindsight reconstruction would one apply the teachings of Kocybik to Bessler because common sense in the industry cautioned against using more complex technology in HVAC systems.9 Id. at 27. But Patent Owner’s argument does not effectively rebut the testimony of Dr. Ehsani that a person of ordinary skill in the art “would have recognized that a permanent magnet motor using sinusoidal commutation, such as is disclosed in Kocybik, could result in a motor that exhibits less unwanted ripple torque and, in turn, smoother output torque.” Ex. 1009 ¶ 52 (citing Ex. 1007, 25.” slip op. at 18

  Patent outcomesUS 7,626,349 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 7,626,349
• Securus Technologies, Inc. v. Global Tel*link CorporationAll claims unpatentable
  PTAB · Apr 29, 2016 · IPR2015-00156 · APJ Beverly M Bunting · IPR · Final written decision

  Claims 1–8 and 11–27 are unpatentable as anticipated by Rae under pre-AIA 35 U.S.C. § 102(e).

  RulingsFinal written decision

  • Skill levelOther

    “considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citing Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986)). There is evidence in the record before us that reflects the knowledge level of a person with ordinary skill in the art. Petitioner’s expert witness, Dr. Akl, attests that a person with ordinary skill in the art in the relevant time frame would be an individual who possesses a combination of experience and education in the field of telecommunications, including “data storage, data transmission and analog/digital signal processing.” Ex. 1003 ¶ 46. According to Dr. Akl, this would consist of the following: (1) a minimum of a Bachelor’s Degree in electrical engineering, computer engineering or the equivalent; and (2) 2 or more years of industry or academic experience in the relevant field. Id. Petitioner’s rebuttal witness, Dr. Forys, offers testimony as to the knowledge level of a person with ordinary skill in the art at the relevant time frame that is essentially the same as Dr. Akl’s assessment. Ex. 2010 ¶ 29. Additionally, we note that the prior art of record in this proceeding— namely, Rae—is indicative of the level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); GPAC, 57 F.3d at 1579; In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 7

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

    “arguments and evidence concerning the construction of “streaming converter.” We first look to the full phrase that includes this claim term, namely, “a streaming converter coupled to said storage device.” The claim language informs us of the connection between the “streaming converter” and the storage device, i.e., “coupled,” and is not concerned necessarily with the format of the data, i.e. compressed. Patent Owner’s arguments, however, seemingly interpret “streaming converter” in the context of the data, without consideration of the entire claim phrase. Patent Owner does not direct us to, nor do we discern, language in the claim itself requiring the data be compressed. As for the portions of the specification identified by Patent Owner, all refer to the function performed by the streaming converter, namely to convert the compressed conversation data into a streaming format. Although the cited passages describe the voice data themselves as “compressed,” Patent Owner does not direct us to, nor can we find, disclosure in the specification necessarily limiting the voice data to a particular format for transmission, such as a compressed format. Indeed, our review of the specification reveals that: the present technology provides an Integrated Access Device (IAD) 30 wherein voice signals are converted to a digital format and routed by way of a wide area network (WAN) transport mechanism to the central data center 110 for storage. IAD 30 may be embodied as a device more commonly known as a Voice over Internet Protocol (VoIP) Gateway. It is to be specifically understood, however, that the present technology does not require specific devices or systems for implementation but rather is more broadly directed to the inclusion of devices and systems designed to convert analog voice signals into a digital format suitable for transmission over a digital network.” slip op. at 10

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITANo construction neededDecided for petitioner

    “dictionary definition of “Boolean search” does not support Patent Owner’s assertion that one of skill in the art would understand “logical search” to mean “Boolean search.” Reply 5–6. We agree. The proffered extrinsic evidence does not inform us sufficiently that one of skill in the art in the relevant time frame would equate a logical search with a Boolean search. Moreover, Patent Owner does not direct us to, nor can we find, any disclosure in the specification that supports Patent Owner’s proposed definition. Indeed, “logical search” is recited only in claims 16 and 17. We are not persuaded by Patent Owner’s arguments and evidence that the plain and ordinary meaning of “logical search” is a Boolean search. Nevertheless, the parties seemingly agree that a “logical search” is understood by one of skill in the communications field. PO Resp. 9; Reply 5; See Tr. 119:21–23 (“logical search was a well-known term”). Therefore, based on the record before us, we conclude the claim term “logical search” need not be construed expressly for purposes of this decision. 4. “file”” slip op. at 12

  • Expert testimonyPetitioner expert creditedPatent owner expert creditedMixed

    “We have reviewed the expert testimony from both sides, and find that both experts have, at times, taken liberties in proffering conclusory statements without real analysis.4 As such, it is within our discretion to assign the appropriate weight to the testimony of both Dr. Akl and Dr. Forys. See, e.g., Yorkey v. Diab, 601 F.3d 1279, 1284 (Fed. Cir. 2010) (holding the Board has discretion to give more weight to one item of evidence over another “unless no reasonable trier of fact could have done so”); In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) 4 Under our rules, expert testimony that does not have a proper basis is entitled to little or no weight. 37 C.F.R. § 42.65(a). (“[T]he Board is entitled to weigh the declarations and conclude that the lack of factual corroboration warrants discounting the opinions expressed in the declarations.”). We are not persuaded by Patent Owner’s contentions that Dr. Akl’s testimony be disregarded. Thus, we accord the testimony of both Dr. Akl and Dr. Forys the appropriate weight in view of the arguments and evidence of record in this trial. 2. Overview of Rae (Ex. 1002)” slip op. at 16

  Patent outcomesUS 7,551,732 unpatentable
  Claim construction§ 102 anticipation
  Patents in suitUS 7,551,732

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.