• Comcast Cable Communications, LLC v. Entropic Communications, LLCInstituted
  PTAB · Sep 6, 2024 · IPR2024-00430 · APJ Jon M Jurgovan · IPR · Institution

  The Board instituted IPR on claims 1–24 on all asserted grounds, finding a reasonable likelihood of prevailing on at least one claim.

  RulingsInstitution decision

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

    “Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in a petition and the preliminary response “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the Petition and Preliminary Response, and accompanying exhibits and evidence, we determine Petitioner has established a reasonable likelihood that it would prevail with respect to at least one challenged claim in the inter partes review. Therefore, we grant institution of an inter partes review as to all of the challenged claims of the ’690 patent on all challenges in the Petition.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “A POSITA6 would have had a bachelor’s degree in electrical engineering, computer engineering, or a similar discipline, and three to four years of experience working in signal processing and/or communication systems/networks. Additional education may substitute for experience, and significant work experience may substitute for formal education. Pet. 6 (citing Ex. 1002 ¶¶ 115–120). Patent Owner does not dispute Petitioner’s proposed level of skill in the art, which is consistent with the prior art references asserted by Petitioner. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (stating that the applied prior art may reflect an appropriate level of skill). For this stage of the proceeding, we agree with and will use Petitioner’s proposed level for this Decision.” slip op. at 12

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

    “Since the parties apply what they contend is the plain and ordinary meaning of the claim terms in their briefs, and have stipulated in the Cox case that the plain and ordinary meaning applies, and Patent Owner argues that the district court’s construction in the Charter case is the plain and ordinary meaning, there is no controversy concerning claim terms that we need to resolve in this Decision. Pet. 6; Prelim. Resp. 10; Ex. 1005, 104–105; Ex. 2001, 2. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). At this stage of the proceeding, therefore, we apply the plain and ordinary meaning to the claim terms consistent with their ordinary and customary meaning under 37 C.F.R. § 42.100(b). We note, however, that Patent Owner seems to consider the court’s construction in the Charter case to require that the claimed “probe” must be of a type that can be compared with a reference signal. Prelim. Resp. 10. We question whether all of the different types of probes mentioned and claimed in the ’690 patent would require comparison with a reference signal. See, e.g., Ex. 1001, 2:7–19. However, this is a matter best resolved, if necessary, on a full record at trial.” slip op. at 14

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

    “Prelim. Resp. 23 (citing Ex. 1013, 37) (annotated in red by Patent Owner). IEEE-802.16’s Table 5 shows that the CID is a field of a generic MAC header. Petitioner does not show sufficiently that the CID, located in the header, specifies content payload of a MAC message, as required by limitation 1A. Petitioner alternatively relies on IEEE-802.16’s ranging code index that it contends is another example of data that is in a ranging request parameter and is used for the ranging response payload. Pet. 15 (citing Ex. 1013, 49–51, 204–213, 576–579, 665–66; Ex. 1002 ¶ 149). Patent Owner asserts that the portions of IEEE-802.16 that Petitioner cites do not disclose that the ranging code index is sent as part of a ranging request message. Prelim. Resp. 25. Although the parts of IEEE-802.16 that Petitioner cites disclose that the ranging code index is sent from the SS to the BS and is included in a ranging response (Ex. 1013, 49–51, 204–213, 576–579, 665–66), the cited parts do not disclose that the SS sends the ranging code index to the BS in a ranging request. Consequently, Petitioner has not established that IEEE- 802.16 anticipates a ranging code index that is a parameter of a ranging request specifying the content payload of the ranging response corresponding to limitation 1A. For the foregoing reasons, on this record, we determine that Petitioner has not shown a reasonable likelihood to prevail in showing that claim 1 is anticipated by IEEE 802.16.” slip op. at 18

  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR
  Patents in suitUS 8,284,690
• Hunter’S Manufacturing Company, Inc. D/B/A Tenpoint Crossbow Technologies v. Ravin Crossbows, LLCAll claims unpatentable
  PTAB · Jul 9, 2024 · IPR2023-00407 · APJ Robert J Silverman · IPR · Final written decision

  Claim 1 is unpatentable as anticipated by Stanziale ’771; the Board did not reach the alternative grounds.

  RulingsFinal written decision

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

    “As an initial matter, the recited expression “mounted to” is broad. The Federal Circuit has explained that words in a claim “will ordinarily be given their full meaning,” without imposing narrowing modifications on the claim language. Johnson Worldwide, 175 F.3d at 989, see also Virginia Panel, 133 F.3d at 865–66. As to whether the “mounted to” connection may be an indirect connection, the parties agree that an indirect connection is permitted — a view that is amply supported by the intrinsic record, as discussed above. With regard to the types of movement that may occur between a “string guide” and a corresponding “limb,” the intrinsic record shows that that various types of movements (including no movement at all) are characterized as “mounted to.” Slight variations of “mounted to,” occurring in the intrinsic record, are helpful in understanding the claim language — particularly because the ’015 patent itself uses such a variant (“mounted . . . on”) to describe the very connection (between a “string guide” and a “limb”) that is elsewhere, and in claim 1, is described as “mounted to.” See Ex. 1001, 5:23–26.” slip op. at 22

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

    “Patent Owner’ sole argument — i.e., that Stanziale ’771 fails to teach the “mounted to” limitation — is based upon its construction of the “mounted to” limitation, which permits the “string guide” to be rotatable relative the corresponding “limb,” but permits no other type of relative motion. See PO Resp. 4, 13–14. As discussed above, we do not accept Patent Owner’s construction of the “mounted to” limitation. In Stanziale ’771, first and second pulleys 145, 146, and interconnecting pivot 147 (all three of which Petitioner maps to claim 1’s “string guide[s]”) are pivotally connected to a number of intermediate members (e.g., lever arms or pushing arms 32, connecting elements 27, and constraining member 29) which are, in turn, pivotally connected to elastic members 10 (which Petitioner maps to claim 1’s “limb[s]”). See Pet. 41–42 (citing Ex. 1012 7:9–17, 8:26–8:13, 11:8–9, 14:18–15:22, 16:24–25, 16:29, 17:2, 17:15–17, 17:24–27, 19:12–30, 20:32–21:16, Figs. 1–7; Ex. 1016 ¶¶ 177–179); see also Ex. 1012 11:3–7, 11:34–12:4, 12:10–17, 16:29–18:3, 18:22–19:30, Figs. 8, 9, 10a, 10b. Therefore, Stanziale ’771, in Petitioner’s mapping, teaches the “string guide[s]” connected indirectly to the “limb[s].” Per the construction of the “mounted to” limitation employed herein (“connected to, either directly or indirectly”), Petitioner establishes, by a preponderance of the evidence, that Stanziale ’771 teaches the “string guide[s]” “mounted to” the “limb[s],” as recited in claim 1 of the ’015 patent. Contrary to Patent Owner’s concerns (see Paper 47, 1), the indirect connection between Stanziale ’771’s “string guide[s]” and “limb[s]” is not “unbounded.” Rather, the connection disclosed by Stanziale ’771 is the type of indirect connection supported by the intrinsic record. See supra § II.B. Patent Owner’s contention that “a POSA would be disinclined to rely on [Stanziale ’771] as a reference for the improved crossbow design disclosed in Claim 1” is not persuasive. See PO Resp. 38 (citing Ex. 2029 ¶ 46). The test for anticipation is whether a prior art reference discloses each and every element recited in the claim, not whether one of ordinary skill in the art would have been inclined to rely on the reference. See Net MoneyIN, Inc., 545 F.3d at 1369.” slip op. at 32

  • ExcludeMotion to exclude, deniedMixed

    “Motions to exclude evidence are authorized under 35 C.F.R. § 42.64. Rule 42.64(b)(1) states: “Once a trial has been instituted, any objection [to evidence] must be filed within five business days of service of evidence to which the objection is directed.” Further, “[t]he objection must identify the grounds for the objection with sufficient particularity to allow correction in the form of supplemental evidence.” 35 C.F.R. § 42.64(b)(1). “A motion to exclude evidence must be filed to preserve any objection.” 35 C.F.R. § 42.64(c).” slip op. at 40

  • Expert testimonyPatent owner expert creditedDecided for patent owner

    “In the present proceeding, Petitioner proposed — and Patent Owner does not dispute (see PO Resp. 3) — the following definition of a person of ordinary skill in the art: A hypothetical POSA to which the ’015 Patent pertains would be a technical person who has at least some experience working in the field of archery, reviewing crossbows or engineering related to bows and/or crossbows, and is generally familiar with prior art crossbows. (Ex. 1016 ¶17.) Such a person would likely have at least a bachelor’s degree in mechanical engineering or, alternatively, would have several years of experience in the field of archery or engineering related to bows and/or crossbows. (Id.) Pet. 28. As discussed above, we adopt Petitioner’s description of a person of ordinary skill for the purposes of this Decision. See supra § II.A. Petitioner alleges various deficiencies in Mr. Teater’s background, education, and knowledge. Paper 39, 4–8. Nevertheless, Mr. Teater satisfies the definition, of a person of ordinary skill in the art, that Petitioner advanced. Specifically, Mr. Teater has reviewed crossbows for 14 years, encompassing the relevant priority date for the ’015 patent, during which time he wrote evaluations of various bows and crossbows, developed and published testing standards for crossbows, and served on the Archery Trade Association’s technical committee for standards and guidelines. Paper 41, 4 (citing Ex. 2029 ¶¶ 3, 4, 7). Accordingly, Mr. Teater satisfies Petitioner’s definition of “a technical person who has at least some experience working in the field of archery, reviewing crossbows or engineering related to bows and/or crossbows, and is generally familiar with prior art crossbows.” Pet. 28. Petitioner emphasizes that Mr. Teater “does not have a degree in mechanical engineering.” Paper 39, 4 (citing Ex. 2034, 1; Ex. 1034, 43:20–44:5). However, no degree of any kind is mandatory for satisfying Petitioner’s definition of a person of ordinary skill in the art. Indeed, Petitioner’s definition states that “[s]uch a person would likely have at least a bachelor’s degree in mechanical engineering or, alternatively, would have several years of experience in the field of archery or engineering related to bows and/or crossbows.” Pet. 28 (emphasis added). There is no dispute that Mr. Teater meets this standard. Petitioner raises various other issues that form no part of the definition that Petitioner advanced — for example, whether Mr. Teater has taught courses related to crossbows, whether he is named as an inventor on a” slip op. at 36

  Patent outcomesUS 9,354,015 unpatentable
  Claim construction§ 102 anticipationcites Phillips
  Patents in suitUS 9,354,015
• Shenzhen Buxiang Network Technology Co., Ltd. v. Sun Pleasure Co. LimitedNo claims unpatentable
  PTAB · Apr 11, 2022 · IPR2021-00080 · APJ Patrick R Scanlon · IPR · Final written decision

  Claims 1–9 were not shown unpatentable because Metzger lacked the claimed fluid passage, and Wu was not prior art based on the claims’ earlier reduction to practice.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Relying on the testimony of Mr. Kuchel, Petitioner submits that a person of ordinary skill in the art “would have either (i) a bachelor’s degree in mechanical engineering, or an equivalent field, or (ii) would have an associate degree in mechanical engineering, or an equivalent field, and two years of practical experience in inflatable product design.” Pet. 16 (citing Ex. 1002 ¶ 26). In the Decision on Institution, we adopted Petitioner’s proposed level of ordinary skill in the art, stating it was “consistent with the evidence of record, including the asserted prior art.” Dec. Inst. 9. In its Response, Patent Owner makes arguments that rely on Petitioner’s proposed level of ordinary skill in the art, but does not dispute Petitioner’s definition. See PO Resp. 35, 39–53 (citing Ex. 2014 ¶ 66). Based on our review of the complete record, we continue to apply the level of ordinary skill in the art adopted in the Decision on Institution.” slip op. at 10

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

    “Petitioner proposes claim constructions for the terms “substantially below” and “substantially inwardly” recited in claims 1 and 6. Pet. 40–41. In the Decision on Institution, we determined that it was not necessary to construe the terms at that stage of the proceeding. Dec. Inst. 9–10 (citing Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017)). Patent Owner contends “the claim terms ‘substantially below’ and ‘substantially inwardly’ are sufficiently clear on their face to preclude any need for claim construction,” but proposes claim constructions that differ somewhat from Petitioner’s proposed constructions in the event the Board determines that these terms require claim construction. PO Resp. 13, 15–16. Patent Owner also proposes a claim construction for the term “upper tubular periphery” recited in claims 1 and 6 that Petitioner opposes. Id. at 17–19; Pet. Reply 7–10. Only terms that are in controversy need to be construed, and then only to the extent necessary to resolve the controversy. Nidec, 868 F.3d at 1017. Because the outcome of our decision does not depend on either parties’ construction of the terms “substantially below,” “substantially inwardly,” or “upper tubular periphery,” we need not construe these terms to resolve the issues in dispute in this proceeding.” slip op. at 11

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

    “We agree with Patent Owner that Metzger’s gaps define fluid passages located between adjacent side support beams 25 (i.e., “internal walls”) and are not formed in any of the side support beams. We are not directed to any written description in Metzger indicating that the gaps are formed in a side support beam.7 Instead, Figures 5 and 6 of Metzger depict the gaps as being defined between four distinct side support beams 25. Furthermore, as Patent Owner points out, Mr. Kuchel appears to agree that there are no passages formed through the side support beams 25 of Figures 5 and 6. Ex. 2003, 107:12–108:9, 108:17–108:21. For these reasons, we determine that Metzger’s gaps are not formed through an internal wall, as required by claim 1. In the Reply, Petitioner asserts that, even if Metzger discloses four discrete, spaced-apart beams or walls, “the gaps or slices between walls are apertures in a structure through which air can pass.” Pet. Reply 15 (emphasis added). This argument is not persuasive because claim 1 recites that the fluid passage is formed through the internal wall (which Petitioner asserts is met by Metzger’s side support beam 25), not just any structure. Petitioner’s general assertion that air passes through “a structure” fails to establish that the gaps are formed in a side support beam.” slip op. at 16

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

    “Specifically, Petitioner argues that one of ordinary skill in the art would have understood from Metzger “that an air passage would be necessary to bypass the side support beam 25 and inflate the upper tubular periphery for the air mattress to function as intended.” Id. (citing Ex. 1002 ¶ 200). According to Petitioner, because Metzger discloses only a single air inlet valve, an ordinarily skilled artisan would have understood that providing openings, or fluid passages, through the side support beam 25, in lieu of or in addition to the gaps between the side support beam 25, would have been a simple solution to adequately inflate the peripheral frame of the mattress defined by the side support beam(s) 25. Id. at 74–75 (citing Ex. 1002 ¶ 200). Petitioner thus presents two alternate theories for modifying Metzger: (1) providing fluid passages in at least one side support beam 25 in addition to the gaps, and (2) providing fluid passages in lieu of the gaps. In support of the first theory, Petitioner only argues that providing fluid passages in the side support beams, in addition to the gaps between the ends of the side support beams, would have allowed the peripheral frame to inflate more freely. Id. at 75 (citing Ex. 1002 ¶ 201). In its Response, Patent Owner contends that “Petitioner is just wrong.” PO Resp. 45 (citing Ex. 2001 ¶¶ 146–149). Dr. Letton testifies that pumps used to inflate air mattresses are low flow and low pressure and generally inflate an air mattress to a maximum pressure of around 1 psi. Ex. 2001 ¶ 147. Dr. Letton further testifies that, with Metzger’s design, the” slip op. at 28

  Patent outcomesUS 7,353,555 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,353,555
• St. Jude Medical, LLC v. Snyders Heart Valve LLCAll claims unpatentable
  PTAB · May 2, 2019 · IPR2018-00107 · APJ Mitchell G Weatherly · IPR · Final written decision

  Claims 1–3, 8, 9, 22, 23, 31–35, 37–39, and 45 are unpatentable, including as obvious over Bessler and Johnson; anticipation by Bessler succeeds only for claims 38, 39, and 45.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Factual indicators of the level of ordinary skill in the art include “the various prior art approaches employed, the types of problems encountered in the art, the rapidity with which innovations are made, the sophistication of the technology involved, and the educational background of those actively working in the field.” Jacobson Bros., Inc. v. U.S., 512 F.2d 1065, 1071 (Ct. Cl. 1975); see also Orthopedic Equip. Co. v. U.S., 702 F.2d 1005, 1011 (Fed. Cir. 1983) (quoting with approval Jacobson Bros.). We find, based on our review of the record before us, that Petitioner’s stated level of ordinary skill in the art is reasonable because it is consistent with the record, including the asserted prior art and, for the purposes of this Final Written Decision, we adopt Petitioner’s definition.” slip op. at 9

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

    “direct attachment” of the flexible valve element to the frame. Id. at 8. However, the portion of the Specification on which Patent Owner relies also describes indirectly attaching the flexible valve element to a frame by securing it to a band that is directly attached to the frame. Ex. 1001, 7:55–66. This type of indirect attachment is illustrated in Figure 3, reproduced below right. The Specification describes Figure 3 as follows: As illustrated in FIG. 3, the flexible valve element 22 is attached to the central portion 36 of the frame 20 at a position substantially centered between the anchors 34. Although the valve element 22 may be attached to the frame 20 by other means without departing from the scope of the present invention, the valve element of the preferred embodiment is attached to the frame by adhesive bonding. Further, the flexible valve element 22 is attached to the frame 20, and more particularly to the band 40, at several attachment points 56 around the frame. Id. at 7:57–66 (emphasis added). This passage indicates that the flexible valve element is attached to the frame in two ways: (1) directly by being bonded to the central portion 36 of frame 20 and (2) indirectly by being attached to band 40 at attachment points 56. The Specification later expresses a preference for bonding valve element 22 to band 40 with adhesive. Id. at 8:11–14. Interpreting “attached to” to mean “directly attached to” as suggested by Patent Owner would be inconsistent with the Specification’s broader description of how valve element 22 is attached to frame 20. We interpret claim language “in light of the specification of the patent in which it appears.” 37 C.F.R. § 42.100(b) (2018). Doing so requires us to interpret claim language in a manner that “corresponds with what and how the inventor describes his invention in the specification.” In re Smith Int’l, Inc., 871 F.3d 1375, 1383 (Fed. Cir. 2017). The inventor describes both direct and indirect methods of attaching the flexible valve element to the frame. Accordingly, we interpret “attached to” as encompassing both direct and indirect ways of attaching the flexible valve element to the frame.” slip op. at 12

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed

    “Petitioner’s argument that Bessler’s valve is attached to the central part of the frame of claims 1 and 31 fails. Bessler’s valve is undeniably attached to its frame because the cuff portion of the valve is sutured to its stent. Claims 1 and 31 require the valve element to be attached to a portion of the frame located along the radial centerline. Ex. 1001, 19:19–20 (claim 1), 22:67–23:2 (claim 31). Bessler’s valves fail to meet this requirement. Bessler’s stent 32 is a hollow cylinder devoid of structure located along its centerline,3 and the “central portion of the frame” identified by Petitioner, straight sections 33, is part of walls 31 located on the radial periphery of stent 32. Id. at 5:28–43, Figure 4. Regardless of how Bessler’s valve is attached to the wall of its stent, the valve is not attached to structure “located along a centerline” as recited in claims 1 and 31. Therefore, we determine that Petitioner fails to establish by a preponderance of evidence that Bessler anticipates claims 1 and 31 or their respective dependent claims 2, 3, 8, 9, 32–35, and 37.” slip op. at 19

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

    “For all these reasons, Dr. Chronos’s assertion that incorporating Johnson’s strut-based frame and membrane into Bessler’s stent would render the combined structure too large is not supported by the objective evidence of record. Patent Owner’s argument rests upon Dr. Chronos’s testimony. Accordingly, we find Patent Owner’s argument unpersuasive. Instead, we determine that Petitioner has proven that an ordinarily skilled artisan would 5 Ex. 1009, 1:12–13. have been motivated to combine the teachings of Bessler and Johnson as alleged.” slip op. at 38

  Patent outcomesUS 6,821,297 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR
  Patents in suitUS 6,821,297
• Asustek Computer, Inc. / Asus Computer International v. Avago Technologies General IP (Singapore) Pte. LtdRehearing granted
  PTAB · Mar 8, 2017 · IPR2016-00647 · APJ Glenn J Perry · IPR · Rehearing

  Granted petitioner’s request for reconsideration and added institution of the §102 Cioffi challenge to claims 8, 11, 12, 14, 15, 18, and 19.

  RulingsRehearing decision

  • RehearingRehearing, grantedGranted

    “III. CONCLUSIONS For the foregoing reasons, we are persuaded that our Decision to Institute overlooked or misapprehended the matters discussed in this Decision, and that the information presented in the Petition establishes that there is a reasonable likelihood that Petitioner would prevail with respect to its challenge as to the patentability of claims 8, 11, 12, 14, 15, 18, and 19 as being anticipated by Cioffi. The Board has not made a final determination on the patentability of any challenged claims or the construction of any claim terms. Our final decision will be based on the record as fully developed during trial.” slip op. at 5

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

    “Upon review on rehearing, we are persuaded the Petition demonstrates sufficiently for purposes of institution that data and synchronization signals are multiplexed and encoded by MUX & ENCODER 43 in Cioffi’s Figure 3. Multiplexed sub-symbols are passed to modulator 45, which incorporates an inverse fast Fourier transform (IFFT). Based on this understanding of Cioffi, the detailed reading of claims 8, 11, 12, 14, 15, 18, and 19 on Cioffi at Petition pages 35–53, supported by the Lyon Declaration (Ex. 1003), presents a reasonable likelihood of Petitioner prevailing as to this challenge. We, therefore, modify our Decision on Institution to include this challenge.” slip op. at 4

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

    “Upon review on rehearing, we are persuaded the Petition demonstrates sufficiently for purposes of institution that data and synchronization signals are multiplexed and encoded by MUX & ENCODER 43 in Cioffi’s Figure 3. Multiplexed sub-symbols are passed to modulator 45, which incorporates an inverse fast Fourier transform (IFFT). Based on this understanding of Cioffi, the detailed reading of claims 8, 11, 12, 14, 15, 18, and 19 on Cioffi at Petition pages 35–53, supported by the Lyon Declaration (Ex. 1003), presents a reasonable likelihood of Petitioner prevailing as to this challenge. We, therefore, modify our Decision on Institution to include this challenge.” slip op. at 4

  § 102 anticipation
  Patents in suitUS 6,430,148
• Actifio, Inc. v. Delphix Corp.All claims unpatentable
  PTAB · Apr 29, 2016 · IPR2015-00108 · APJ Patrick R Scanlon · IPR · Final written decision

  Claims 9–13 and 21–23 are unpatentable as obvious under § 103 over Sanders, Edwards, and Patel; claims 13 and 23 also rely on Chapman.

  RulingsFinal written decision

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

    “printed publications” in accordance with 35 U.S.C. §§ 102 and 311(b). PO Resp. 1‒5. We look to the underlying facts to make a legal determination as to whether a document is a printed publication. Suffolk Techs., LLC v. AOL Inc., 752 F.3d 1358, 1364 (Fed. Cir. 2014). The determination of whether a document is a “printed publication” under 35 U.S.C. § 102(b) involves a caseby-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). Public accessibility is a key question in determining whether a document is a printed publication and is determined on a case-by-case basis. Suffolk Techs., 752 F.3d at 1364. To qualify as a printed publication, a document “must have been sufficiently accessible to the public interested in the art.” In re Lister, 583 F.3d 1307, 1311 (Fed. Cir. 2009). slip op. at 6

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

    “The first phrase in the cited passage above explicitly defines the term, by stating “[a] database block is a unit of data used by a database.”4 Ex. 2102, 2:7–8. Although the sentence following shortly thereafter states that a database block “stores metadata,” that sentence by itself is insufficient to limit the disputed term by requiring the unclaimed “metadata” feature because it does not state unambiguously that all “database blocks” must include metadata. See Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 906 (Fed. Cir. 2004) (construing a claim term broadly because “[n]o statement in the written description [ ] constitute[d] a limitation on the scope of the invention”) (quoting Brookhill-Wilk 1, LLC. v. Intuitive Surgical, Inc., 334 F.3d 1294, 1301 (Fed. Cir. 2003)). Further, the cited passage also does not exclude the possibility of some database blocks not having any metadata. See id. at 908 (passages in the Summary of the Invention section of a patent did not limit the scope of the invention because the passages, “although focusing on the use of the invention in conjunction with pressure jackets, do not disclaim the use of the invention in the absence of a pressure jacket”). More importantly, the rest of the ’361 patent is consistent with a definition of database blocks that does not require metadata in all database blocks.” slip op. at 14

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

    “We are not persuaded by Patent Owner’s arguments. The crux of these arguments appears to be that, because a Snapshot copy allegedly is an exact copy of the current state of the volume, SnapMirror does not utilize database blocks from different points in time to create a Snapshot copy. The claim language, however, does not require database blocks for different point-in-time copies to be utilized in this manner. Rather, the claim language merely requires receiving and storing database blocks for different point-in-time copies. We agree with Petitioner that the combined teachings of Sanders and Edwards disclose receiving and storing database blocks for different point-intime copies. Sanders discloses that “[t]he SnapMirror initialize command creates a Snapshot copy of the source volume and transfers data from the source to the destination volume,” such that the transferred data is received and stored at the destination volume. Ex. 1104, 22. We also credit Dr. Zadok’s testimony that a Snapshot copy is a point-in-time copy. Ex. 1117 ¶¶ 44, 123. Thus, each Snapshot copy would result in transferred data (i.e., database block) for different point-in-time copies being received and stored. Lastly, even if Patent Owner is correct that a given Snapshot copy uses only database blocks from the same point in time, we agree with Petitioner that this does not mean that database blocks for different point-in-time copies are not received and stored. We conclude that a preponderance of the evidence demonstrates that a person of ordinary skill would have found the limitation of loading the first database at multiple points in time, including receiving and storing database blocks for different point-in-time copies, obvious.” slip op. at 47

  • ExcludeMotion to exclude, grantedMotion to exclude, deniedMixed

    “1132, 1133, 1135, 1136, 1138, 1141–1145, 1147, 1148, 1150, 1154, 1155, 1157, 1159, 1160, 1164, 1166, and 1167. Paper 36 (“Mot. to Exclude”), 1. In inter partes reviews, documents are admitted into evidence subject to an opposing party asserting objections to the evidence and moving to exclude the evidence. 37 C.F.R. § 42.64. As movant, Patent Owner has the burden of showing that an Exhibit is not admissible. 37 C.F.R. § 42.20(c). Patent Owner contends that Petitioner does not rely on Exhibits 1132, 1133, 1135, 1138, 1144, 1148, 1150, 1154, 1157, 1159, 1164, 1166, and 1167. Mot. To Exclude 1 n.1. Petitioner does not dispute this contention. See Paper 46 (“Opp. Mot. to Exclude”). We, therefore, grant Patent Owner’s motion as it pertains to Exhibits 1132, 1133, 1135, 1138, 1144, 1150, 1154, 1157, 1159, 1164, 1166, and 1167. We note, however, that Petitioner does rely on Exhibit 1148. See Reply 11. For reasons discussed below, we deny Patent Owner’s motion as it pertains to Exhibit 1148. Further, Petitioner has moved, unopposed, to expunge Exhibit 1128 (see Paper 34), which motion we hereby grant. Of the remaining objected-to Exhibits, our Final Written Decision discusses and relies on only Exhibits 1106, 1120, 1147, and 1148. We determine, for reasons set forth above, that Petitioner has demonstrated by a preponderance of the evidence that the challenged claims are unpatentable, without need for Petitioner’s additional arguments or evidence in relation to the remaining additional Exhibits. Accordingly, Patent Owner’s motion to exclude Exhibits 1136, 1141–1143, 1145, 1155, and 1160 is dismissed as moot.” slip op. at 57

  Patent outcomesUS 8,566,361 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips
  Patents in suitUS 8,566,361
• Actifio, Inc. v. Delphix Corp.All claims unpatentable
  PTAB · Apr 27, 2016 · IPR2015-00136 · APJ Jennifer S Bisk · IPR · Final written decision

  Claims 1, 4, 5, 27–29, and 34 are unpatentable under § 103 over the NetApp references, with Hart added for claims 4, 5, 29, and 34.

  RulingsFinal written decision

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

    “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.” SRI Int’l, Inc. v. Internet Sec. Sys., Inc. 511 F.3d 1186, 1194 (Fed. Cir. 2008) (quoting Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 1378 (Fed. Cir. 2006)). Petitioner asserts that the level of ordinary skill is not disputed in this case and that “[t]here is no difference between customers and potential customers of NetApp and a [person of ordinary skill in the art].” Reply 6–7. Mr. Hernandez testifies that NetApp’s customers and potential customers were entities or individuals who were “interested in data storage technology, data management technology, database storage and management technology, and related technologies.” Ex. 1048 ¶ 3. As discussed above, Mr. Hernandez also testifies NetApp had more than two hundred Systems Engineers and other sales personnel during the period of 2004–2009 who distributed NetApp’s technical documents (including Neto) to “thousands” of customers and potential customers. Id. ¶ 4. Hence, the record supports Petitioner’s contention that Neto was distributed to persons interested and ordinarily skilled in the subject matter of database technology at the time of its publication. See Reply 6–7. In view of the foregoing considerations, we find that Petitioner has established, by a preponderance of the evidence, that Neto (dated April 2009) was sufficiently disseminated to persons of ordinary skill interested in database technology to be deemed “publicly accessible” at least more than one year before November 30, 2010, the earliest possible priority date of the ʼ174 patent. See Ex. 1001, (60). Petitioner has also established, by a preponderance of the evidence, that Klivansky (dated October 2004) was available to the interested public at least more than one year before the critical date. Therefore, on this record, we determine Neto and Klivansky qualify as prior art printed publications under 35 U.S.C. § 102(b). slip op. at 18

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

    “PO Resp. 18–19 (quoting Ex. 2002, 2:7–12). The first phrase in the cited passage above explicitly defines the term, by stating “[a] database block is a unit of data used by a database.”12 Ex. 2002, 2:7–9. Although the sentence following shortly thereafter states that a database block “stores metadata,” that sentence by itself is insufficient to limit the disputed term by requiring the unclaimed “metadata” feature because it does not state unambiguously that all “database blocks” must include metadata. See Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 906 (Fed. Cir. 2004) (construing a claim term broadly because “[n]o statement in the written description [ ] constitute[d] a limitation on the scope of the invention”) (quoting Brookhill-Wilk 1, LLC. v. Intuitive Surgical, Inc., 334 F.3d 1294, 1301 (Fed. Cir. 2003)). Further, the cited passage also does 12 The first sentence also states a database block comprises “a specific number of bytes stored in the storage.” For the reasons discussed below, we find this addition is not part of the explicit definition but, rather, represents embodiments within the defined term. Patent Owner also fails to explain how to interpret this particular phrase or how it presents a material issue related to the prior art. not exclude the possibility of some database blocks not having any metadata. See id. at 908 (passages in the Summary of the Invention section of a patent did not limit the scope of the invention because the passages, “although focusing on the use of the invention in conjunction with pressure jackets, do not disclaim the use of the invention in the absence of a pressure jacket”). More importantly, the rest of the ’174 patent is consistent with a definition of database blocks that does not require metadata in all database blocks.” slip op. at 21

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

    “We are persuaded that a preponderance of evidence demonstrates that the four NetApp References are sufficiently related for purposes of this obviousness analysis. Patent Owner does not dispute that all four documents refer to NetApp products and technologies that include FlexVol, FlexClone, Snapshots, and the ONTAP operating system. See Ex. 1018 ¶¶ 35–43; PO Resp. 35–39. Even if the documents refer to various versions of those products and technologies, we are persuaded that a person of ordinary skill in the art would have been motivated to look to the teachings of the four references based on express disclosures in the references themselves. For example, the basics of NetApp storage and cloning are described by Edwards and Edwards II. Pet. 30–31 (citing Ex. 1018 ¶¶ 102–103). Although the patent discussing this cloning technology (Ex. 1005, filed April 30, 2004) was filed prior to the publication of an article (Ex. 1003, dated June 22–27, 2008) on the same topic, we are not persuaded that this time difference would deter a person of ordinary skill from combining the teachings of the two references. This is true even if the Edwards article describes updates to the cloning technology not discussed by Edwards II. And Edwards explicitly discusses the use of writable Snapshot copies in database environments to make “copies of a production database for development or test purposes.” Ex. 1003, 14. A person of ordinary skill in the art looking to implement such a solution would have looked to other NetApp publications such as Neto, which explicitly states that it “is intended for use by ‘Oracle database administrators, storage administrators, and architects implementing a backup, recovery, and cloning solution for Oracle databases running on NetApp storage’” (Pet. 30 (quoting Ex. 1004, 4)) and Klivansky, which describes its contents as being useful as “a way of understanding the full landscape of FlexClone benefits, as a refresher of specific FlexClone operations, or as a guided tutorial that filer administrators can try” (Pet. 31 (quoting Ex. 1006, 25)). Given these explicit statements, we are persuaded that a person of ordinary skill would look to combine the teachings of Klivansky with the teachings of the other references even if Klivansky, published in 2004 (Ex. 1006), discussed an older version of the cloning technology.” slip op. at 48

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

    “The Petition further explains that a person of ordinary skill would have found it obvious to modify NetApp’s existing SnapManager GUI (as disclosed in Neto) for Hart’s timeline GUI because they provide similar functionality of managing multiple point-in-time databases and both allow restoring files to their prior stated based on a selected point-in-time. Pet. 34–35 (citing Ex. 1018 ¶ 117–120). We find a preponderance of the evidence supports this assertion. We find persuasive Dr. Zadok’s testimony that the difference between the two references is that “Hart’s GUI used a timeline structure to display stored snapshots, whereas Neto used a list structure to display backups (snapshots), one of which could be selected for restoration by right-clicking it.” Ex. 1018 ¶ 120. And we agree that “[s]ubstituting Hart’s timeline-based GUI for selecting (typically by clicking a mouse) a point-in-time copy for Neto’s right-click based method of selection was nothing more than a simple substitution of one known method of selection with another.” Pet. at 35; see also Ex. 1007 ¶ 25 (“[I]t should be apparent that the disclosed implementations can be incorporated in, or integrated with, any electronic device that has a user interface.”). Moreover, we credit Dr. Zadok’s testimony that “Neto’s examples name the point-in-time copies based on the time they were taken and can list them alphabetically; thus, they were typically arranged in a timeline” and concludes that “[g]iven the similarities . . . it would have been obvious for a POSITA to substitute Neto’s GUI with Hart’s GUI to perform the snapshot backup, restore, and clone functions described in Neto, Edwards, Edwards II, and Klivansky.” Ex. 1018 ¶ 120. We, therefore, find a preponderance of the evidence demonstrates that a person of ordinary skill would have had reason to combine the teachings of the Edwards, Edwards II, Neto, and Klivansky with Hart. In sum, as with the independent claims, we have reviewed both parties’ arguments and supporting evidence, including the disclosure of all four references and the testimony of both Dr. Zadok and Dr. Shenoy. Despite the counter-arguments in Patent Owner’s Response, and the evidence cited therein, for the reasons discussed above, Petitioner has shown, by a preponderance of the evidence, that each of claims 4, 5, 29, and 34 is unpatentable under 35 U.S.C. § 103 as directed to subject matter obvious over the combination of Edwards, Edwards II, Neto, Klivansky, and Hart.” slip op. at 69

  Patent outcomesUS 8,468,174 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips
  Patents in suitUS 8,468,174
• Actifio, Inc. v. Delphix Corp.All claims unpatentable
  PTAB · Apr 27, 2016 · IPR2015-00128 · APJ Jennifer S Bisk · IPR · Final written decision

  Claims 1, 4, 5, 27–29, and 34 are unpatentable as obvious over the NetApp references, with Hart added for claims 4, 5, 29, and 34.

  RulingsFinal written decision

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

    “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.” SRI Int’l, Inc. v. Internet Sec. Sys., Inc. 511 F.3d 1186, 1194 (Fed. Cir. 2008) (quoting Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 1378 (Fed. Cir. 2006)). Petitioner asserts that the level of ordinary skill is not disputed in this case and that “[t]here is no difference between customers and potential customers of NetApp and a [person of ordinary skill in the art].” Reply 6–7. Mr. Hernandez testifies that NetApp’s customers and potential customers were entities or individuals who were “interested in data storage technology, data management technology, database storage and management technology, and related technologies.” Ex. 1048 ¶ 3. As discussed above, Mr. Hernandez also testifies NetApp had more than two hundred Systems Engineers and other sales personnel during the period of 2004–2009 who distributed NetApp’s technical documents (including Neto) to “thousands” of customers and potential customers. Id. ¶ 4. Hence, the record supports Petitioner’s contention that Neto was distributed to persons interested and ordinarily skilled in the subject matter of database technology at the time of its publication. See Reply 6–7. In view of the foregoing considerations, we find that Petitioner has established, by a preponderance of the evidence, that Neto (dated April 2009) was sufficiently disseminated to persons of ordinary skill interested in database technology to be deemed “publicly accessible” at least more than one year before November 30, 2010, the earliest possible priority date of the ʼ174 patent. See Ex. 1001, (60). Petitioner has also established, by a preponderance of the evidence, that Klivansky (dated October 2004) was available to the interested public at least more than one year before the critical date. Therefore, on this record, we determine Neto and Klivansky qualify as prior art printed publications under 35 U.S.C. § 102(b). slip op. at 18

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

    “Therefore, in view of the entire disclosure of the ’174 patent and the plain language of the claims, we find that the intrinsic record before us does not justify limiting the term “database block” by reading in the “metadata” limitation not found in the claims. See Liebel-Flarsheim Co., 358 F.3d at 908.” slip op. at 25

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

    “For example, the basics of NetApp storage and cloning are described by Edwards and Edwards II. Pet. 30–31 (citing Ex. 1018 ¶¶ 102–103). Although the patent discussing this cloning technology (Ex. 1005, filed April 30, 2004) was filed prior to the publication of an article (Ex. 1003, dated June 22–27, 2008) on the same topic, we are not persuaded that this time difference would deter a person of ordinary skill from combining the teachings of the two references. This is true even if the Edwards article describes updates to the cloning technology not discussed by Edwards II. And Edwards explicitly discusses the use of writable Snapshot copies in database environments to make “copies of a production database for development or test purposes.” Ex. 1003, 14. A person of ordinary skill in the art looking to implement such a solution would have looked to other NetApp publications such as Neto, which explicitly states that it “is intended for use by ‘Oracle database administrators, storage administrators, and architects implementing a backup, recovery, and cloning solution for Oracle databases running on NetApp storage’” (Pet. 30 (quoting Ex. 1004, 4)) and Klivansky, which describes its contents as being useful as “a way of understanding the full landscape of FlexClone benefits, as a refresher of specific FlexClone operations, or as a guided tutorial that filer administrators can try” (Pet. 31 (quoting Ex. 1006, 25)). Given these explicit statements, we are persuaded that a person of ordinary skill would look to combine the teachings of Klivansky with the teachings of the other references even if Klivansky, published in 2004 (Ex. 1006), discussed an older version of the cloning technology.” slip op. at 48

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

    “g. Conclusion In the Decision to Institute, we determined that Petitioner had shown a reasonable likelihood of prevailing on this proposed ground of unpatentability. Inst. Dec. 25–28. We have reviewed both parties’ arguments and supporting evidence, including the disclosure of all four references and the testimony of both Dr. Zadok and Dr. Shenoy. Despite the counter-arguments in Patent Owner’s Response, and the evidence cited therein, for the reasons discussed above, Petitioner has shown, by a preponderance of the evidence, that each of claims 1, 27, and 28 is unpatentable under 35 U.S.C. § 103 as directed to subject matter obvious over the combination of Edwards, Edwards II, Neto, and Klivansky.” slip op. at 68

  Patent outcomesUS 8,468,174 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips
  Patents in suitUS 8,468,174
• Google Inc. v. Intellectual Ventures II LLCSome claims unpatentable
  PTAB · Nov 20, 2015 · IPR2014-00787 · APJ Patrick R Scanlon · IPR · Final written decision

  Claims 19–22 and 24–30 are unpatentable as anticipated by Gough; claims 1–3, 5, 7–10, 12–14, and 21 are not shown unpatentable over the asserted grounds.

  RulingsFinal written decision

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

    “We agree with Petitioner. Although Figures 4 and 5 of the ’960 patent show keys that are partially surrounded by shadowing or shading, there is no suggestion in the Specification that the “blended shadow” recited in the claims should be limited to only this shadowing. The claim language itself, referring to a blended shadow of the representation of at least one key and the main image (see claim 24), indicates explicitly that the blended shadow incorporates both the key image and the main image and, thus, should not be limited to the shadowing surrounding the keys. Accordingly, based on the full record, we adopt Petitioner’s proposed construction of “blended shadow” as “a portion of a composite image in which the main image is visible through the overlaid image as a result of combining the data from corresponding pixels from the main and overlaid images” for the purpose of this Final Written Decision. B.” slip op. at 11

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed

    “We agree with Patent Owner. Petitioner does not explain adequately where the detailed analysis set forth in the Reply is made in the Petition, and, in any event, we do not find the arguments persuasive. “A patent claim is anticipated if a single prior art reference expressly or inherently discloses every limitation of the claim.” DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1252 (Fed. Cir. 2014). Here, Petitioner does not describe sufficiently how Gough expressly discloses using logical operators to accomplish the blending process.6 We do not agree that either Gough’s description of the blending process depicted in Figures 10a–10f (Ex. 1007, 10:23–41) or Gough’s description of using the color look-up table (id. at 14:9–19) expressly discloses using logical operators, and such express disclosure is required for anticipation. At best, Petitioner’s arguments suggest how Gough could be envisioned as using logical operators, but do not explain adequately where or how Gough expressly discloses using logical operators to carry out the blending process. For these reasons, we are not persuaded that Petitioner has shown, by a preponderance of the evidence, that independent claim 1, and claims 2, 3, 5, 7–10, and 12–14 depending therefrom, are anticipated by Gough.” slip op. at 15

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

    “3. Harrison Petitioner also argues Harrison teaches certain limitations. Pet. 44, 48, 52–55. Petitioner does not explain what Harrison adds to what is taught by Buxton. See id. at 48 (“[t]o the extent that these features may not be fully disclosed in Buxton, they are clearly disclosed in Harrison”). For purposes of this Final Written Decision, we determine the teachings of Harrison are cumulative to the teachings of Buxton, and therefore, do not address Harrison further.7 4. Claims 1–3, 5, 7–10, and 12–14 Petitioner argues that “Buxton discloses nearly all of the elements and limitations” of the challenged claims. Pet. 42. With respect to claim 1, Petitioner argues that Buxton discloses using alpha blending in accordance with the equation I = αI1 + (1-α)I2, where I is the resulting color intensity, I1 is the color intensity of the foreground image pixel, I2 is the color intensity of the background image pixel, and α is the specified transparency level between 0 and 1. Id. at 43–44 (citing Ex. 1009, 17:17–28). Petitioner argues that Buxton’s alpha blending “permits pixels to be ‘dedicated simultaneously’ to both images in order to produce a composite image” and is an “example of an operation using logical operators to provide different blending effects.” Id. at 44 (citing Ex. 1009, 16:63–17:4). Petitioner contends that although “Buxton may lack explicit disclosure of . . . a touchactivated device (required in claims 1 and 26),” Bier discloses that a touch screen is interchangeable with a mouse. Id. at 44–45. Petitioner also contends that Bier discloses a keyboard superimposed over a display. Id. at 7 Because the asserted ground includes Harrison, we continue to include it as part of our overall analysis.” slip op. at 23

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

    “After considering all evidence and arguments, we agree with Patent Owner. In particular, we determine that Petitioner’s arguments do not persuade us that Buxton’s alpha blending equation uses operators that manipulate binary values at the bit level, consistent with our construction of “logical operators.” The alpha blending equation unquestionably involves arithmetic operations, which we find differ from logical operations. Furthermore, Petitioner has not shown persuasively whether any logical operations overlap with any arithmetic operations. Therefore, we agree with Patent Owner’s contention that Buxton’s alpha blending equation does not use logical operators.” slip op. at 24

  Patent outcomesUS 6,121,960 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips
  Patents in suitUS 6,121,960
• Motorola Mobility LLC v. Intellectual Ventures I LLCAll claims unpatentable
  PTAB · Sep 9, 2015 · IPR2014-00500 · APJ Kristina M Kalan · IPR · Final written decision

  Claims 1, 4–6, 8, 10, 13–15, 17, 21, 24–26, 28, 30, 33–35, 37, 39, and 40 are unpatentable as anticipated by Payne and Putz.

  RulingsFinal written decision

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

    “We are unpersuaded that the “by” terms identified by Patent Owner should be accorded anything other than their ordinary and customary meaning, which in the context of the relevant claim limitations, is a computer’s performance of a given action. Regarding Patent Owner’s arguments concerning the Specification, Patent Owner concedes that the term “discretion” appears neither in the claims nor in the Specification. Tr. 43:22–25. Instead, Patent Owner would have us infer “discretion” based on an allegedly clear and unmistakable disavowal of “pull” communications in the Specification. As an initial matter, we are unpersuaded that there is a sufficiently definitive relationship between “pull” communications and “discretion” to infer that a disavowal of “pull” communications requires the inclusion of the term “discretion” in a proper construction of “by.” Moreover, we are unpersuaded that disclosure of exemplary “pull” communications in the Background section and use of “push” communications in a non-limiting embodiment of the Specification, without more, constitutes a clear and unmistakable disavowal of “pull” communications, especially where the referenced embodiment in the Specification actually may refer to “pull” communications.” slip op. at 7

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

    “In the Decision to Institute, we determined that the term “displaying the message and the data from the predetermined location” did not require express construction. Dec. 12–13. Regarding the “means” terms, Petitioner in its Petition proposed that the several terms containing “means” in claims 21 and 28 qualify as terms under 36 U.S.C. § 112, sixth paragraph.2 Pet. 6– 7. We determined that the various “means” terms of claim 21 and 28 were means-plus-function elements under § 112, ¶ 6, and adopted Petitioner’s construction of the terms “means for creating,” “means for transmitting,” “means for receiving,” and “means . . . for decoding,” and Patent Owner’s construction of “means for displaying.” Dec. 12. Neither party now proposes a different construction of these terms. We note that, in the Petition and Preliminary Response, the parties represented that the “means” terms constructions proposed to the Board were also proposed and agreed upon in the district court case. Pet. 6; Prelim. Resp. 6–7. We have reviewed our analysis in the Decision to Institute, and have determined, on the record presently before us, that application of the district court standard does not change our construction of the various terms reciting “means” set forth in the Decision to Institute. Dec. 9–12. Based on the complete record now before us, we see no reason to alter our earlier constructions, and maintain these constructions for this Final Written Decision.” slip op. at 10

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner

    “Although the ultimate determination of whether a document is a printed publication is a question of law, it is a question that is closely based on the underlying facts and circumstances surrounding the disclosure of a document to members of the public. Suffolk Techs., LLC v. AOL Inc., 752 F.3d 1358, 1364 (Fed. Cir. 2014); SRI Int’l, Inc. v. Internet Sec. Sys., Inc., 511 F.3d 1186, 1192 (Fed. Cir. 2008); In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). Public accessibility is a key question in determining whether a document is a printed publication and is determined on a case-bycase basis. Suffolk Techs., 752 F.3d at 1364. To qualify as a printed publication, a document “must have been sufficiently accessible to the public interested in the art.” In re Lister, 583 F.3d 1307, 1311 (Fed. Cir. 2009). “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.” SRI Int’l, 511 F.3d at 1194 (quoting Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 1378 (Fed. Cir. 2006)).” slip op. at 23

  Patent outcomesUS 5,790,793 unpatentable
  Claim construction§ 102 anticipationcites Phillips
  Patents in suitUS 5,790,793

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.