- Ericsson Inc. / Telefonaktiebolaget LM Ericsson v. Intellectual Ventures I LLCAll claims unpatentablePTAB · Dec 9, 2015 · IPR2014-00921 · APJ Josiah C Cocks · IPR · Final written decision
Claims 23, 24, 60, and 61 are unpatentable as obvious over Robertson and Ungerboeck; claims 23 and 60 were not shown anticipated by Palicot.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“It is clear from the record evidence before us that, in the context of the ’783 patent, a connection between two components is not one that is considered properly as “direct” if there is an interleaver between those components. We understand that an “interleaver” is a structure that provides extensive reordering of data. For instance, record evidence characterizes a particular interleaver as a “pseudorandom block scrambler” that reads out data “in a specified permuted order.” Ex. 1009, 29. Indeed, the ’783 patent itself characterizes an interleaver as a “pseudo-random block scrambler” that operates to output data “in a specified (fixed) random order.” Ex. 1001, 5:57–61. In that respect, it is further understood from the ’783 patent that there are extensive considerations that go into the design of interleavers and the effect that a given interleaver has on the configuration, order, and characteristics of data. See id. at 9:53–13:54. Thus, the operations of an interleaver appear to constitute complex data reordering schemes where the “pseudorandom” scrambling of data is, at least in some cases, the desired goal. As noted above, in the context of an inter partes review, the Board construes claim terms based on their broadest reasonable construction that is consistent with the underlying specification. Here, with that guidance in mind, we do not discern that Intellectual Ventures’s position that the claim terms in question should be construed narrowly to prohibit any intervening structure that performs any type of operation that may be regarded as manipulating data or changing the order of data in some aspect, regardless of the nature or extent of the data reordering. To that end, while the reordering operations provided by an interleaver are not encompassed by “directly” connecting elements, we are not satisfied that Intellectual Ventures has provided a suitable evidentiary basis for its position that any intervening data reordering, of any kind, is the benchmark for evaluating whether structures are directly connected to one another. It also is clear from the Specification of the ’783 patent, and as we observed in our Decision instituting trial (Inst. Dec. 12–13), that a direct connection does not prohibit some intervening structures, such as the intervening presence of a switch. In considering the totality of the record before us, we do not discern that there is cause to deviate from the construction we initially adopted for “directly coupled”/“signal directly from” as a part of the Decision to institute trial. Accordingly, for purposes of this Final Written Decision, we maintain the understanding that components that are “directly” coupled to one another, or which receive signals “directly” from one another, excludes the presence of an interleaver between those components, but does not prohibit any and all intervening structures, such as a switch.” slip op. at 11
- Skill levelSkill level petitioner adoptedDecided for patent owner
“Thus, the declarants are largely in agreement as to the level of ordinary skill in the art, but for a slight difference of opinion as to the extent of education. While Mr. Lanning and Dr. Xiong take the view that a person of ordinary skill “would have at least a Bachelors or Masters level college degree in Electrical Engineering, Computer Science, Computer Engineering or equivalent training and experience,” Dr. Cimini opines that only a Bachelor’s degree would be insufficient. Dr. Cimini advanced that opinion on the theory that one with only a Bachelor’s degree would lack an appropriate “mathematical foundation.” On the record before us, it is not apparent that the possession of a Master’s degree as compared with possession of a Bachelor’s degree establishes a dividing line between a person who is of ordinary skill in the art, and a person who is not. Dr. Cimini does not explain persuasively why a person with a Bachelor’s degree in the noted areas, coupled for instance, with the noted “academic or industry experience” would lack the requisite “mathematical foundation.” To that end, we are cognizant of the level of ordinary skill to which all declarants have testified, but do not understand the record as establishing that a Master’s degree, to the exclusion of other equivalent experience, is a strict requirement of a skilled artisan in the pertinent field.” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“contends that Robertson discloses all the features of claims 23 and 60 (Pet. 49–54) with the exception of those features directed to “multilevel modulation” (id. at 53). In that regard, Ericsson contends that Robertson is directed to “binary modulation” rather than “multilevel modulation,” but points to Ungerboeck as disclosing multilevel modulation. Id. Referencing the declaration testimony of Mr. Mark Lanning (Ex. 1003), Ericsson contends the following: As noted by Mr. Lanning, it would have been obvious to one of ordinary skill in the art to combine Robertson and Ungerboeck to replace the binary modulation in Roberton’s coding system with multilevel modulation taught by Ungerboeck because it would yield the predictable result–that more data bits correspond to a modulated symbol, thereby enhancing bandwidth efficiency. Id. at 53–54. To that end, we understand that Ericsson proposes, and Mr. Lanning testifies (Ex. 1003 ¶ 230), that one of ordinary skill in the art would have had reason to substitute Ungerboeck’s multilevel 8-PSK modulator for Robertson’s binary modulator so as to enhance bandwidth efficiency.” slip op. at 18
- Expert testimonyPatent owner expert discountedDecided for patent owner
“ordinary skill in the art, but for a slight difference of opinion as to the extent of education. While Mr. Lanning and Dr. Xiong take the view that a person of ordinary skill “would have at least a Bachelors or Masters level college degree in Electrical Engineering, Computer Science, Computer Engineering or equivalent training and experience,” Dr. Cimini opines that only a Bachelor’s degree would be insufficient. Dr. Cimini advanced that opinion on the theory that one with only a Bachelor’s degree would lack an appropriate “mathematical foundation.” On the record before us, it is not apparent that the possession of a Master’s degree as compared with possession of a Bachelor’s degree establishes a dividing line between a person who is of ordinary skill in the art, and a person who is not. Dr. Cimini does not explain persuasively why a person with a Bachelor’s degree in the noted areas, coupled for instance, with the noted “academic or industry experience” would lack the requisite “mathematical foundation.” To that end, we are cognizant of the level of ordinary skill to which all declarants have testified, but do not understand the record as establishing that a Master’s degree, to the exclusion of other equivalent experience, is a strict requirement of a skilled artisan in the pertinent field.” slip op. at 16
Patent outcomesUS 6,023,783 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,023,783 - Google Inc. v. Intellectual Ventures II LLCAll claims unpatentablePTAB · Dec 7, 2015 · IPR2014-01031 · APJ William A Capp · IPR · Final written decision
Claims 1–8 and 21–27 are unpatentable: claims 1–6, 8, and 21–26 are anticipated by Pierzga, and the remaining claims are obvious over the stated combinations.
RulingsFinal written decision- ExcludeMotion to exclude, deniedDenied
“Rule 901 of the Federal Rules of Evidence provides that the requirement of admissibility is satisfied by evidence sufficient to support a finding that the material in question is what its proponent claims. The burden of proof for authentication is “slight.” Lexington Ins. Co. v. W. Penn. Hosp, 423 F.3d 318, 329 (3d Cir. 2005). Rule 901(b) lists nine examples of authentication techniques, the list of examples is not intended to be exclusive. United States v. Simpson, 152 F.3d 1241, 1249–50 (10th Cir. 1998). Rule 901(a) merely prescribes that a proponent produce sufficient evidence of authenticity to support a prima facie case that the item is genuine. Rickets v. City of Hartford, 74 F.3d 1397, 1409–11 (2d Cir. 1996). Courts maintain that a bona fide dispute as to the authenticity of evidence generally should be decided by the trier of fact. See id. Conflicting evidence of authenticity goes to weight, not admissibility, as long as some reasonable person could believe that the item is what it is claimed to be. Id. at 1411. In light of Dr. Madisetti’s testimony based on his personal experience and observation of the author/publisher and the reliability of the dates of publication that appear on the face of its publications, we find that Google has a laid a sufficient foundation for admission of Exhibit 1003 over Intellectual Ventures’s objection. Exhibit 1003 is not hearsay as it is not offered for its truth, but merely for what it states. We DENY Intellectual Ventures’s motion to exclude Exhibit 1003 and Exhibit 1019.” slip op. at 8
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Rule 901 of the Federal Rules of Evidence provides that the requirement of admissibility is satisfied by evidence sufficient to support a finding that the material in question is what its proponent claims. The burden of proof for authentication is “slight.” Lexington Ins. Co. v. W. Penn. Hosp, 423 F.3d 318, 329 (3d Cir. 2005). Rule 901(b) lists nine examples of authentication techniques, the list of examples is not intended to be exclusive. United States v. Simpson, 152 F.3d 1241, 1249–50 (10th Cir. 1998). Rule 901(a) merely prescribes that a proponent produce sufficient evidence of authenticity to support a prima facie case that the item is genuine. Rickets v. City of Hartford, 74 F.3d 1397, 1409–11 (2d Cir. 1996). Courts maintain that a bona fide dispute as to the authenticity of evidence generally should be decided by the trier of fact. See id. Conflicting evidence of authenticity goes to weight, not admissibility, as long as some reasonable person could believe that the item is what it is claimed to be. Id. at 1411. In light of Dr. Madisetti’s testimony based on his personal experience and observation of the author/publisher and the reliability of the dates of publication that appear on the face of its publications, we find that Google has a laid a sufficient foundation for admission of Exhibit 1003 over Intellectual Ventures’s objection. Exhibit 1003 is not hearsay as it is not offered for its truth, but merely for what it states. We DENY Intellectual Ventures’s motion to exclude Exhibit 1003 and Exhibit 1019.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionDecided for patent owner
“alternative depending on the context of its use. Pet. 13–14 (“Skilled persons would . . . understand that either of these definitions applies”). Google further argues that the ’353 patent uses “bandwidth” as synonymous with data rate. Id. Google’s position that the ’353 patent uses bandwidth as synonymous with data rate is contradicted by the prosecution history evidence discussed above where the claims were amended essentially to substitute “bandwidth” for “chip rate” to distinguish over Boer’s disclosure of variable data rates. Thus, the intrinsic record supports a meaning of “bandwidth” that more closely conforms to definition number 1 above. We agree with Intellectual Ventures that, in the context of the ’353 patent, “bandwidth” does not mean “data rate” or “data transfer rate.” In view of the foregoing, we retain the same construction for “bandwidth” that we adopted for purposes of the Decision to Institute. Thus, for purposes of this Final Written Decision, we construe “bandwidth” to mean “a frequency range.” For purposes of clarification, we will provide the following example: a band of frequencies with a lower cut-off frequency of 10 MHz and an upper cut-off frequency of 40 MHz has a “bandwidth” of 30 MHz. 2. indication of operating bandwidth (claims 1, 21)” slip op. at 19
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“A person of ordinary skill in the art reading the Specification of the ’353 patent, as a whole, would understand that the “operating bandwidth” of claims 1 and 21 is the frequency range or bandwidth that is used for the transport channel. The person of ordinary skill in the art would also understand that the operating bandwidth is coordinated between the transmitter and the receiver using logic and filtering so that the frequency range that the transmitter uses to transmit the data portion of the signal is compatible with the frequency range that the receiver uses to receive the data. See Ex. 1001, claims 21, 22. In other words, the system operates at a range of frequencies, i.e., the “operating bandwidth,” that enables the receiver to receive what the transmitter has transmitted. Intellectual Ventures’s proposed construction merely substitutes the word “identification” in lieu of “indication” and then inserts the word “particular” as a modifier to “operating bandwidth.” Substituting “identification” for “indication” does nothing to clarify the meaning of this phrase. Furthermore, we do not agree with Intellectual Ventures that interjection of the word “particular” into the construction contributes anything meaningful to an understanding of the term. Thus, for purposes of this Decision, it is sufficient to construe “indication of an operating bandwidth” to mean that the first signal portion contains sufficient information so that when it is received, the receiver is able to configure itself to receive the data portion of the signal (or “further signal portion” or “transport channel”) at approximately the same frequency range or bandwidth at which it will be transmitted by the transmitter.11 11 In further regard to Intellectual Ventures’s contention that the bandwidth indication must be “particular,” we express no opinion as to whether the receiver must be set to the exact same lower cut-off frequency and upper cut-off frequency as the transmitter as a slightly narrower or broader transmitter or receiver bandwidth may still be adequate to transmit and receive the information contained in the signal and thus function as an “operating bandwidth.” The key consideration is that the receiver is able to receive the data that the transmitter transmits.” slip op. at 22
Patent outcomesUS 7,848,353 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,848,353 - Seoul Semiconductor Co., Ltd / North America Seoul Semiconductor Inc. v. Sharp Kabushiki KaishaAll claims unpatentablePTAB · Oct 15, 2015 · IPR2014-00879 · APJ Jeremy M Plenzler · IPR · Final written decision
Claims 1–3 and 5–7 are unpatentable: claims 1, 3, and 7 are anticipated by Yoon; claims 2–3 and 5–6 are obvious over the listed combinations.
RulingsFinal written decision- Expert testimonyPetitioner expert creditedDecided for petitioner
“Patent Owner has not articulated a persuasive reason for giving Dr. Sasian’s Declaration, as a whole, little or no weight in our analysis. It is generally understood that some attorney involvement in the preparation of an expert report or declaration is permissible as long as the expert substantially participated in the preparation thereof, such that it cannot be considered to be “ghost written” by an attorney. See Manning v. Crockett, No. 95C3117, 1999 WL 342715, at *3 (N.D. Ill. May 18, 1999); see also Trigon Ins. Co. v. United States, 204 F.R.D. 277, 293 (E.D. Va. 2001) (discussing the decision in Manning). Patent Owner has not demonstrated persuasively that Dr. Sasian’s declaration was “ghost written.” Long Term Capital Holdings v. United States, No. 01-CV-1290, 2003 WL 21269586, at *4 (D. Conn. May 6, 2003). We may determine the appropriate weight to be accorded the evidence presented, including expert opinion, based on the disclosure of the underlying facts or data, upon which that opinion is based. Thus, we decline to make a determination about Dr. Sasian’s opinion, as a whole. Rather, in our analysis, we consider, as they arise, relevant portions of Dr. Sasian’s testimony and determine the appropriate weight to accord that particular testimony.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“the broadest reasonable interpretation in light of the ’679 patent Specification. See 37 C.F.R. § 42.100(b); see also In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1278–80 (Fed. Cir. 2015) (“Congress implicitly approved the broadest reasonable interpretation standard in enacting the AIA,” and “the standard was properly adopted by PTO regulation.”). Applying that standard, we interpret the claim terms of the ’679 patent according to their ordinary and customary meaning in the context of the patent’s written description. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). The only limitation construed expressly in our Decision to Institute is “A2<1/√nଶെ1, where n is a refraction index of a material forming the light flux controlling member; and A2=ΔR2/(R2Δα2), where ΔR2 is an increment of R2 and Δα2 is an increment of α2.” Dec. 7. Neither party disputes that construction, nor are we apprised of any other reason to change our construction of that limitation. We determine that no other term requires an express construction in order to conduct properly our analysis of the applied art.” slip op. at 9
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Drawings and pictures can anticipate claims if they clearly show the structure which is claimed. See Mraz, 455 F.2d at 1072. When the reference is a utility patent, it does not matter that the feature shown is unintended or unexplained in the specification. The drawings must be evaluated for what they reasonably disclose and suggest to one of ordinary skill in the art. Aslanian, 590 F.2d at 914 (“a drawing in a utility patent can be cited against the claims of a utility patent application even though the feature shown in the drawing was unintended or unexplained in the specification of the reference”). Regardless of the language used in paragraph 165 of Yoon, there is no dispute that Figure 14 of Yoon discloses curved central surface 16 as being concave when viewed from light emitting chip 15 (i.e., extending into Yoon’s base 14, similar to the ’679 patent’s light-incoming surface extending into bottom surface 2c). See Tr. 26:18–20 (At oral hearing, Patent Owner’s counsel agreed that “figure [14] shows a concave curve for 16 . . . 16 is definitely concave.”). Moreover, we are persuaded that the additional description of Yoon’s” slip op. at 13
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“Based on our review of the argument and evidence supporting Petitioner’s challenge to claims 2 and 3 (see Pet. 32–36 (citing, e.g., Ex. 1006, 5–6, 13–15, Figs. 1, 4; Ex. 1002 ¶ 65)), we are persuaded that Petitioner has established, by a preponderance of the evidence, that the subject matter of those claims would have been obvious over the combination of Yoon and Wanninger.” slip op. at 18
Patent outcomesUS 7,798,679 unpatentableClaim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 7,798,679 - Greene’S Energy Group, LLC v. Oil States Energy Services, LLCAll claims unpatentablePTAB · May 1, 2015 · IPR2014-00216 · APJ James A Tartal · IPR · Final written decision
Claims 1 and 22 are unpatentable as anticipated by Dallas ’118; the motion to amend with substitute claims 28 and 29 is denied.
RulingsFinal written decision- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“member for connection to a wellhead of the well, and a locking member for detachably engaging the base member. Claim 22 contains a similar requirement. We agree with Petitioner that bottom flange 22 of Dallas ’118 corresponds to the base member of a first lockdown mechanism, and that bolts through the bores in lower flange 22 correspond to a locking member, as claimed in the ’053 patent. See Pet. 42. Claim 1 further requires a second lockdown mechanism having a range of adjustment adequate to ensure that the mandrel can be moved into the operative position, and locked down in the operative position while the first lockdown mechanism is in the lockdown position. Claim 22 contains a similar requirement. We agree with Petitioner that the hydraulic cylinder mechanism of Dallas ’118, which ensures a fluid tight seal between annular seal 78 and bit guide 84 by maintaining a pressure of about 1000 psi in upper chamber 36, corresponds to the recited second lockdown mechanism. See Pet. 36, 44.” slip op. at 18
- 112 supportMotion to amend, deniedDenied
“The determination of whether there is written description support turns on whether the original disclosure of the application relied upon reasonably conveys to a person of ordinary skill in the art that the inventor had possession of the claimed subject matter as of the filing date. Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). The proposed substitute claims introduce the term “wellhead assembly,” a term that does not appear in the ’418 application or the ’053 patent. Patent Owner’s string citation to various disclosures, none of which identify a “wellhead assembly,” is insufficient to demonstrate written description support absent some explanation. The same is true with regard to the proposed addition of language requiring both an apparatus for securing the mandrel “within a tubing head spool of a wellhead assembly” and a setting tool “arranged to insert a bottom end of the mandrel through the wellhead.” A string citation does not explain how the original disclosure of the application relied upon reasonably conveys to a person the features intended to be encompassed by the proposed substitute claims. In particular, we cannot discern from Patent Owner’s conclusory discussion how the original disclosure describes both securing the mandrel within the wellhead assembly and inserting the mandrel through the wellhead, particularly where Patent Owner further argues a distinction between inserting a mandrel “into” a wellhead as opposed to “through” a wellhead. See PO Reply. 1–2. Accordingly, we conclude Patent Owner has not satisfied its burden of showing written description support for the proposed substitute claims 28 and 29.” slip op. at 26
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, deniedDenied
“patentable distinction of each proposed substitute claim over the prior art. See 37 C.F.R. § 42.20(c). This includes providing a construction of new claim terms sufficient to support the distinction of the proposed substitute claim over the prior art. Patent Owner introduces the new claim terms “wellhead assembly” and “setting tool” in the proposed substitute claims, but provides no express construction of either term. Absent any discussion of what is encompassed by the recited “wellhead assembly,” it is unclear how the term differs from the use of “wellhead,” alone, elsewhere in the claim. This is particularly problematic, as discussed above, when attempting to discern what is claimed as a setting tool “arranged to insert a bottom end of the mandrel through the wellhead,” relative to the claimed apparatus for securing a mandrel “above the casing of the well and within a tubing head spool of a wellhead assembly.” In its Motion to Amend, Patent Owner also does not provide a construction for “setting tool.” We note that Patent Owner was aware that the district court had previously suggested the term “setting tool” was “ambiguous.” District Court Markman Order, Ex. 2008, 15. In reply to Petitioner’s opposition to the Motion, Patent Owner argues that “the defining characteristics of the ‘setting tool’” are set out in the claim language as: (1) “arranged to insert a bottom end of the mandrel through the wellhead,” and, (2) “separate from” the first and second lockdown mechanisms and thus “removable.” PO Reply 1. Patent Owner proceeds to dispute the construction of “setting tool” proposed by Petitioner’s Declarant, Mr. Perkin, but fails to offer any express construction of the term itself. Petitioner’s Declarant, Mr. Perkin, defined “setting tool” as “any device that is used to align the mandrel with the wellhead so that the mandrel can be inserted without interference.” Perkin Decl., Ex. 1014 ¶ 44. Patent Owner’s Declarant, Mr. Wooley, testified that “setting tool” is “usually the name given to a device for inserting some sort of tool.” Ex. 1011, 61:17–21. Absent a clear explanation of what is claimed, Patent Owner’s assertion that a particular reference does not teach “any kind of setting tool” is conclusory and not persuasive. See Mot. 9. Patent Owner has not provided a sufficient construction of the term “setting tool” by merely pointing to other claim language or by disputing Petitioner’s proposed construction. By failing to articulate adequately a construction of “setting tool” or “wellhead assembly,” Patent Owner has not satisfied its burden of showing a patentable distinction of each proposed substitute claim over the prior art. 3. Conclusion We conclude Patent Owner has not come forward with sufficient evidence to establish proposed substitute claims 28 and 29 have adequate written description support. We further conclude Patent Owner has not supported sufficiently the distinction of the proposed substitute claims 28 and 29 over the prior art by failing to provide adequately the necessary construction of the proposed amendments to claims 1 and 22. For these reasons, we deny Patent Owner’s Motion to Amend.” slip op. at 27
Patent outcomesUS 6,179,053 unpatentable§ 102 anticipationPatents in suitUS 6,179,053
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.