- Vizio, Inc. v. Polaris Powerled Technologies, LLCAll claims unpatentablePTAB · Feb 25, 2025 · IPR2024-00073 · APJ John F Horvath · IPR · Final written decision
Claims 1–22 are unpatentable: Zane anticipates claims 1–4, 11, 12, 14, 17, and 22; other claims are held unpatentable on the stated obviousness grounds.
RulingsFinal written decision- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“Upon consideration of the evidence and argument presented, we decline Patent Owner’s invitation to categorically discount the weight of Dr. Zane’s testimony. First, that testimony concerns what is already disclosed in 3 US 7,948,468 B2 (“the Zane patent”), which issued on May 24, 2011 to Regan A. Zane and Montu Doshi and was assigned to the Regents of the University of Colorado. Ex. 2005. perspective of a POSITA.” Ex. 1003 ¶ 32. Patent Owner cites no evidence to suggest otherwise.4 PO Resp. 29–40; PO Sur-Reply 20–26. Second, the Zane patent is assigned to the University of Colorado, and Dr. Zane testifies that he does not currently receive remuneration for that patent and does not believe he ever received remuneration for that patent. Ex. 2004, 64:12–17, 69:9–22. Third, for the reasons explained below, we find Patent Owner’s reliance on Glaxo and Medtronic inapposite given the facts presented here.” slip op. at 13
- Strike new argumentNew argument consideredDenied
“We need not resolve this dispute and dismiss Petitioner’s Motion to Strike as moot for the following reason. One of the issues disputed by the parties was whether all shift registers require a clock to shift bits. See Pet. 34 (“All shift registers must have a clock connected to them for shifting the bits.”); PO Resp. 20 (“[S]hift registers without clocks are not only possible, but a well-understood electronic circuit with a variety of uses.”). We using a clock to shift the bits corresponding to PWM signal E through a shift register because a clock would be needed to ensure signal E was periodic with period 40 as disclosed by Thomas. That is, we resolved the parties dispute without reference to the dictionary definition of “strobe” Patent Owner introduced during Dr. Zane’s deposition. Accordingly, we dismiss Petitioner’s motion to strike as moot.” slip op. at 58
- Skill levelSkill level petitioner adoptedDecided for petitioner
“of the invention as someone that would have had “a bachelor’s degree in physics, electrical engineering, or a related field, and approximately two years of experience in the fields of LED technology, backlights, LED devices and control thereof, or other related fields.” Pet. 16 (citing Ex. 1003 ¶¶ 34–35). Petitioner further contends that “advanced education in the fields of physics, electrical engineering, or a related field can compensate for lesser work experience in the relevant fields” and that the merits of the Petition “do[] not turn on this specific definition of the level of ordinary skill.” Id. Patent Owner does not dispute this definition. PO Resp. 4–5. In our Institution Decision, we found Petitioner’s assessment of the level of skill in the art to be reasonable and commensurate with the problems and solutions disclosed in the prior art and, omitting the open-ended phrase 2 Applicant Admitted Prior Art continue to do so here.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b).” 37 C.F.R. § 42.100(b). Under this standard, a claim is construed “in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” Id. However, “[t]he Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Petitioner contends “no claim terms need to be expressly construed to resolve the invalidity issues in this Petition.” Pet. 16. Patent Owner agrees. PO Resp. 5. In our Institution Decision, we declined to construe any claim term because we found no term required express construction. See Realtime Data, 912 F.3d at 1375. We maintain that finding here.” slip op. at 9
Patent outcomesUS 7,843,148 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 7,843,148 - PTAB · Jul 15, 2024 · IPR2024-00537 · APJ John F Horvath · IPR · Institution
The Board instituted IPR on all challenged claims and all grounds, finding a reasonable likelihood that at least one claim is unpatentable over Forutanpour.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“deny institution. Fintiv seeks to “minimize potential conflict between the Patent Trial and Appeal Board (PTAB) and district court proceedings.” Fintiv Memo, 1; see also Fintiv, Paper 11 at 5 (introducing factors to weigh “[w]hen the patent owner raises an argument for discretionary denial . . . due to an earlier trial date”) (emphasis added). Because the district court has not set a trial date, and the trial court statistics indicate any trial is likely to occur months after a Final Written Decision in this proceeding, we see little potential for conflicting Board and district court decisions.” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“[T]he level of skill in the art is a prism or lens through which a judge, jury, or the Board views the prior art and the claimed invention.” Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). At this stage of the proceeding, we find Petitioner’s assessment of the level of skill in the art to be reasonable and commensurate with the problems and solutions disclosed in the prior art. See In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). Accordingly, for purposes of this Decision, we adopt Petitioner’s description as our own. slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b).” 37 C.F.R. § 42.100(b) (2019). Under this standard, a claim is construed “in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” Id. Only claim terms which are in controversy need to be construed and only to the extent necessary to resolve the controversy. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). Petitioner construes the claims to have their “plain and ordinary meaning” and contends “that no terms invoke means-plus-function analysis.” Pet. 17–18. Patent Owner does not contend that any terms require construction. Prelim. Resp. 7. At this stage of the proceeding, because the parties do not dispute the meaning of any claim terms and none appear to require construction, we offer no express constructions for any claim terms. See Nidec Motor, 868 F.3d at 1017.” slip op. at 14
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“of the grandparent application is that they disclose a WTRU having a communication peripheral that can (a) operate in Bluetooth or WiFi mode, (b) use Bluetooth to discover nearby devices and services, (c) transfer data to nearby devices, and (d) use discovered environmental information to determine which components are needed to effect data transfer. But they do not expressly disclose using Bluetooth to discover a nearby WTRU and WiFi to transfer data to that WTRU.” slip op. at 21
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosureDiscretionary denialPatents in suitUS 8,737,933 - PTAB · Jul 15, 2024 · IPR2024-00538 · APJ Lisa A Murray · IPR · Institution
Instituted inter partes review of all challenged claims on all asserted grounds because Microsoft showed a reasonable likelihood of prevailing on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)InstitutedDecided for petitioner
“We have considered the circumstances and facts before us in view of Fintiv factors 1–6. As discussed above, factor 1 is neutral and factors 2–4 and 6 weigh against discretionary denial, while factor 5 weighs marginally in favor of discretionary denial. Because our analysis is fact-driven, no single factor determines whether we exercise our discretion to deny institution under 35 U.S.C. § 314(a). In the circumstances of this case, considering each Fintiv factor as part of a holistic analysis, we are persuaded that the efficiency and integrity of the system would be best served by granting the Petition to institute an inter partes review. Accordingly, we decline to exercise discretion to deny institution under § 314(a).” slip op. at 11
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Thus, on this record, we find that Petitioner is reasonably likely to establish that claim 1 is unpatentable in light of Forutanpour. While this alone is sufficient for institution purposes, we also find that Petitioner is reasonably likely to show that Forutanpour anticipates independent claim 23, which is commensurate in scope with claim 1.” slip op. at 24
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“actually or inherently disclose the claim element.” PowerOasis, Inc. v. T- Mobile USA, Inc., 522 F.3d 1299, 1306–07 (Fed. Cir. 2008). The passages that Patent Owner cites from the great-grandparent application describe a WTRU that may be capable of both Bluetooth and Wi-Fi communications. Ex. 1282 ¶ 24 (’948 application). They describe detecting another WTRU using Bluetooth. Id. ¶ 34. They also describe transferring data to that target WTRU. Id. ¶¶ 32, 39, 42. None of the passages cited, however, describe using Bluetooth for detection and then switching to Wi-Fi for data transfer within the same transaction. This element of claim 1 is neither expressly nor inherently disclosed in the great-grandparent application.9 It therefore does not have written description support in the ancestor application and cannot benefit from its effective filing date.” slip op. at 16
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableInstituted
“Finally, claim 1 requires the WTRU to transfer, using a Wi-Fi communication, the selected media. Ex. 1201, 10:64–65. Forutanpour discloses that the user’s device may transfer the selected file to the intended recipient “using a wireless technology different from the wireless technology used to establish the wireless link.” Ex. 1204 ¶¶ 4–5. That wireless technology may be WiFi. Id. ¶¶ 81–84 (“messages may similarly be transmitted via another type of wireless communication network, such as a WiFi . . . network”); see also id. at claim 2 (“establishing the wireless link is accomplished using a wireless technology selected from Bluetooth®, ZigBee®, Near Field Communication (NFC), wide-area-wireless IEEE 802.11 (WiFi), infrared (IrDA), and ultrasound”), claim 3 (“The method of claim 2, wherein: . . . transmitting the file sharing message to the targeted computing device is accomplished using a wireless technology different from the wireless technology used to establish the wireless link.”). Thus, on this record, we find that Petitioner is reasonably likely to establish that claim 1 is unpatentable in light of Forutanpour. While this alone is sufficient for institution purposes, we also find that Petitioner is reasonably likely to show that Forutanpour anticipates independent claim 23, which is commensurate in scope with claim 1.” slip op. at 24
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosureDiscretionary denialcites Phillips · GrahamPatents in suitUS 9,173,054 - PTAB · Mar 6, 2024 · IPR2024-00073 · APJ John F Horvath · IPR · Institution
The Board instituted inter partes review of claims 1–22 on all grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Upon consideration of the Petition, we are persuaded that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing the unpatentability of at least one challenged claim, and we institute inter partes review of all challenged claims on all grounds raised.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“[T]he level of skill in the art is a prism or lens through which a judge, jury, or the Board views the prior art and the claimed invention.” Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). At this stage of the proceeding, we find Petitioner’s assessment of the level of skill in the art to be reasonable and commensurate with the problems and solutions disclosed in the prior art. See In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). Accordingly, for purposes of this Decision, we adopt Petitioner’s description as our own.3 slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b).” 37 C.F.R. § 42.100(b) (2019). Under this standard, a claim is construed “in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” Id. Only claim terms which are in controversy need to be construed and only to the extent necessary to resolve the controversy. However, “[t]he Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (internal citations omitted).” slip op. at 9
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“configured to draw the peak current through its LEDs at a duty cycle substantially corresponding to a duty cycle of the PWM brightness control signal applied to it but out of phase with the other current set circuits. Ex. 1001, 6:48–54. At this stage of the proceeding, Petitioner reasonably demonstrates how Thomas’s current set circuits meet this limitation. Pet. 30–32 (citing Ex. 1005, 3:24–63, 4:66–5:20, Figs. 1, 3). Figure 3 of Thomas illustrates that each of the PWM control signals E–H generated by Thomas’s PWM controller (PWM generator 17 and delay means 16) has the same duty signals E–H is coupled to a different current set circuit (resistor 3) through a respective one of switches 5–8, such that each current set circuit draws current through a respective LED group 9–12 at the same duty cycle, but out of phase with the other current set circuits. Ex. 1005, Figs. 1, 3. At this stage of the proceeding, for the reasons discussed above, we find Petitioner has demonstrated a reasonable likelihood of showing all the limitations of claim 1 are taught by Thomas and that claim 1 is anticipated by Thomas. Claim 14 is substantially similar to claim 1, reciting a method for driving a plurality of LEDs in a plurality of parallel paths that is substantially similar to the method the LED driver of claim 1 is configured to perform. Compare Ex. 1001, 7:51–8:8, with id. at 6:35–54. Petitioner’s analysis of claim 14 refers back to its analysis of claim 1. Accordingly, at this stage of the proceeding, Petitioner demonstrates a reasonable likelihood of showing claim 14 is anticipated by Thomas.” slip op. at 14
Claim construction§ 102 anticipationPatents in suitUS 7,843,148 - Stmicroelectronics, Inc. v. Monterey Research, LLCAll claims unpatentablePTAB · Jun 10, 2022 · IPR2021-00254 · APJ John F Horvath · IPR · Final written decision
Claims 1–19 are unpatentable: claims 1–16 over the Baek Application and claims 17–19 over Scheuerlein, by anticipation or obviousness.
RulingsFinal written decision- Skill levelSkill level board ownDecided for petitioner
“the time of the invention as someone that would have had “at least a master’s degree in electrical engineering, as well as coursework in or experience with circuits and semiconductor devices, solid state physics, and materials science.” Pet. 10 (citing Ex. 1002 ¶ 30). Patent Owner adopts that definition. PO Resp. 18. Previously, in our Institution Decision, we set forth a narrower definition for a person skilled in the art—one that required specific experience with resistive memory devices. Dec. Inst. 7. However, given the parties agreement, we adopt their agreed-to definition for purposes of this decision. In doing so, we note that our analysis below would not differ under either definition. Id.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for petitioner
“1. Selecting a level of current limit In our Institution Decision, we preliminarily construed the term “selecting a level of current limit” to mean “selecting . . . one or more levels of current limit.” Dec. Inst. 8. This is the meaning Petitioner ascribed to the term in the Petition. Pet. 32. Patent Owner accepts our preliminary construction for purposes of this proceeding. PO Resp. 19. We maintain that construction here.” slip op. at 8
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner
“plus-function limitations requiring construction under 35 U.S.C. § 112 ¶ 6. Dec. Inst. 9–11. We did so because they recite the term “means” and do not recite sufficient structure to overcome the presumption that § 112 ¶ 6 applies because the structures they do recite (i.e., first/second “current limiting structures”) are nonce terms that do not correspond to definite structures. Id. at 9–10 (quoting Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348, 1350 (Fed. Cir. 2015)). We further found the Specification linked several structures to the function performed by the “means” recited in these limitations, including current mirrors 110/120 and 170/180 shown in Figures 5/6 and 11/12, respectively. Id. at 10 (citing Ex. 1001, 3:58–61, 4:6–11, 4:20–24, 5:45–48, 6:4–9, 6:14–20, Figs. 5, 6, 11, 12). Therefore, we preliminarily construed these limitations to require “first/second current mirrors (and equivalents thereof) that limit the current through the resistive memory device when a potential is applied to switch the device from its programmed-to-erased and erased-to-programmed states.” Id. at 10–11. Our construction is consistent with Petitioner’s proposed construction of this term, and Petitioner does not dispute it. Pet. 10–12; Pet. Reply 1–31. For purposes of this proceeding, Patent Owner does not dispute that these limitations should be construed as means-plus-function limitations. PO Resp. 19–20. However, Patent Owner argues that because the Specification consistently identifies elements 110/120 and 170/180 as current sources/ limiters and occasionally as current mirrors, we should construe them as current sources/limiters/mirrors rather than as current mirrors.3 Id. 3 Patent Owner includes current mirrors 160 (Fig. 8) and 220 (Fig. 14) in its analysis. PO Resp. 19. We exclude these structures, however, because they limit current to read the resistance state of the memory device rather than to 110, 170, and 180 include “p channel transistors connected as a current mirror,” and “current source/limiter 120” includes “n channel transistors connected as a current mirror.” Ex. 1001, 3:58–61, 5:45–48, 6:14–20. Although the Specification later refers to each of these devices as simply “current source/limiters,” the only tangible “current source/limiters” disclosed in the Specification are current mirrors. Accordingly, for the reasons discussed above, we maintain our preliminary construction of the first/second current limiting structure limitations to mean “first/second current mirrors (and equivalents thereof) that limit the current through the resistive memory device when a potential is applied to switch the device from its programmed-to-erased and erased-to-programmed states.”” slip op. at 9
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“We find Petitioner has demonstrated the Baek Application discloses changing the state of a resistive memory device from one state to the other and back again by applying an electrical potential across two electrodes in the same direction for both changes-of-state. First, we note that claim 1 requires an active layer between first and second electrodes, but doesn’t require any spatial relationship (e.g., above/below or left/right) between the first and second electrodes. Ex. 1001, 9:6–8. Thus, Petitioner’s identification of the “upper” and “lower” electrodes in Figure 1 demonstrates that the Baek Application discloses the recited first and second electrodes. Pet. 46–47 (citing Ex. 1004 ¶ 6, Fig. 1). Second, although claim 1 requires applying a potential “from higher to lower potential in a direction from one electrode to the other” to change the resistive state from “one state to another” and to apply a potential in the same direction to change the resistive state “from said other state to said one state,” it doesn’t require the “one electrode” to be either the first or second electrode. Ex. 1001, 9:8–15. Thus, the higher potential can be applied to either electrode, i.e., to either the upper or lower electrodes in the Baek Application. The only limitation required by claim 1 is that the higher” slip op. at 15
Patent outcomesUS 7,495,951 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSRPatents in suitUS 7,495,951 - Mycroft Ai Inc. v. Voice Tech CorporationAll claims unpatentablePTAB · May 4, 2022 · IPR2020-01739 · APJ John F Horvath · IPR · Final written decision
Claims 2, 3, 6, 7, 11–14, 18, 19, 23–26, 30, and 31 are unpatentable as anticipated or obvious over McConnell, or obvious over McConnell and Roese.
RulingsFinal written decision- Skill levelSkill level board ownDecided for patent owner
“The field of endeavor is determined “by reference to explanations of the invention’s subject matter in the patent application, including the embodiments, function, and structure of the claimed invention.” In re Bigio, 381 F.3d 1320, 1325–26 (Fed. Cir. 2004). The field, however, “is not limited to the specific point of novelty, the narrowest possible conception of the field, or the particular focus within a given field.” Unwired Planet, LLC v. Google Inc., 841 F.3d 995, 1001 (Fed. Cir. 2016). The ’348 patent broadly identifies its field of invention as “computer operating systems” and narrowly as “using voice commands from a mobile device to remotely access and control a computer.” Ex. 1001, 1:8–13. But the patent discloses the mobile device can be a “laptop” connected to the remote computer via a wired communication medium 114 and a cable or DSL modem. Id. at 2:41– 47, 3:5–8, 5:7–28, 7:60–9:67. We discern no difference between controlling a remote computer using voice commands received from a laptop connected to the remote computer via a modem and wired communications network or using voice commands received from a similarly connected and non-mobile desktop computer. Thus, we find the field of endeavor to be voice activated computing rather than voice activated computing using a mobile device. Given that field of endeavor and the level of skill in the art illustrated in the ’348 patent and the prior art of record, we find a person of ordinary skill in the art would have had a bachelor’s degree in electrical engineering, computer science, or a related field and approximately three years of work experience in voice activated computing. That said, our findings below do not depend on a precise definition of either the field of invention or the required level of experience in that field and would not have changed had we” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“demonstrate the unpatentability of certain claims over Balakrishnan and Wong because we questioned whether “Balakrishnan’s audio command interface decodes audio data into a command by outputting a phoneme network” as Petitioner contends. Dec. Inst. 38. Petitioner argues the term “command” has its plain and ordinary meaning and does not require express construction and that Balakrishnan’s “phoneme network is a command” under the plain and ordinary meaning of that term. Pet. Reply 3, 19. Patent predetermined type of computer operation that is defined by an instruction,” and Balakrishnan’s “phoneme network . . . does not disclose or teach a command.” PO Resp. 16, 43. We need not resolve this dispute or construe the meaning of the term “command” because we determine that all challenged claims are unpatentable over McConnell, either alone or in combination with Roese, and that determination does not depend on the meaning of the term “command.” See Nidec, 868 F.3d at 1017.” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“Upon consideration of all of the arguments and evidence provided by the parties, we maintain our preliminary finding that the term “audio command interface” has its plain and ordinary meaning and does not require express construction. We reject Patent Owner’s construction because neither the Specification nor prosecution history define or limit the meaning of an audio command interface. The Specification discloses audio command interface 108 is a component of “general purpose computer 104” that can be implemented as a combination of hardware and/or software, however, all components of a general-purpose computer can be implemented as a combination of hardware and/or software. Ex. 1001, 2:31–34, 2:48–55, Fig. 1. Thus, this portion of Patent Owner’s construction does not limit the plain and ordinary meaning of the term “audio command interface.”” slip op. at 12
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“We agree with Petitioner. McConnell discloses or teaches using a command file to “allow[] a user to input commands to the computer 100 and to cause the interface program 300 to interface with an appropriate component to carry out the command.” Ex. 1004 ¶ 57. The command file can link to a “grammar” containing commands that “the voice recognition software 310 should recognize.” Id. Interface program 300 can control which “grammars” are listened for and limit them to “a particular context in which the user is expected to issue a spoken command.” Id. ¶¶ 49, 79. We agree with Mr. McNair that to limit selected grammars to a particular context, such as a particular application, interface program 300 would have to remember a process executed by that application. Ex. 1003 ¶ 105. Moreover, we agree with Petitioner’s example showing how McConnell discloses or teaches the remembering limitation by selecting a grammar based on weather conditions. See Pet. 31; Pet. Reply 12–13. For example, McConnell obtains weather reports from the Internet and selects a grammar based on weather conditions. Ex. 1004 ¶¶ 47, 79. We agree with Mr. McNair that interface program 300 can use the selected grammar to recognize an audio command and select an application to execute a process in response to the command. Ex. 1003 ¶ 107. In recognizing the command, interface program 300 would have “remembered” the process that obtained was used to recognize the audio command.” slip op. at 32
Patent outcomesUS 9,794,348 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSRPatents in suitUS 9,794,348 - Analog Devices, Inc. v. Xilinx, Inc. And Xilinx Asia Pacific Pte. Ltd.All claims unpatentablePTAB · Apr 20, 2022 · IPR2020-01606 · APJ Daniel J Galligan · IPR · Final written decision
Claims 1–4, 6–18, and 20–22 and proposed substitute claims 23–38 are unpatentable; substitute claim 39 is not shown unpatentable and is allowed by the motion to amend.
RulingsFinal written decision- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“regular practice at the time to publish preliminary data sheets on our website, as set forth above with respect to the September 2000 Data Sheets. By contrast, data sheets marked ‘Advanced’ were kept for internal use.” Ex. 1023 ¶ 21; see also Ex. 1023 ¶ 15 (“It was Lucent’s regular practice to publish data sheets on its website, including preliminary data sheets, within a month of the date that appears on the data sheet. I was responsible for ensuring that the September 2000 Data Sheet was published to the website.”). Mr. Britton’s testimony, discussed above, shows that ORT8850 was a “preliminary” data sheet published on Lucent’s customer-facing web pages and that customers expected this document to be available. See Valve, 8 F.4th at 1374 (“We have previously held that where a publication’s purpose is ‘dialogue with the intended audience,’ that purpose indicates public accessibility.”). Accordingly, for the reasons discussed above, we deny Patent Owner’s motion to exclude Exhibit 1008 and Exhibit E and paragraph 15 (identifying Exhibit E) of the Britton declaration as hearsay or for lack of authentication.” slip op. at 16
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningNo construction neededOther
“For the foregoing reasons, we do not agree with Patent Owner’s” slip op. at 25
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“3. Claim 1 Independent claim 1, which is directed to “[a] high-speed receiver,” includes substantially the same subject matter as claim 15 and recites two additional limitations: “a receiver analog front-end biased in accordance with the common mode reference, wherein the receiver analog front-end is 16 Because we find that HFAN describes the “receiver termination network” recited in the preamble of claim 15, we need not decide whether the preamble is limiting. See PO Resp. 26 (arguing that the preamble of claim 15 is limiting). amplified high-speed data” and “a data recovery module operably coupled to recover data from the amplified high-speed data.” Petitioner explains how HFAN describes this subject matter. Pet. 36– 44. Petitioner argues that HFAN discloses “a receiver used in ‘high-speed communication systems,’” thereby describing the “high-speed receiver” of the preamble. Pet. 36–37 (quoting Ex. 1005, 1). For the “receiver analog front-end,” Petitioner argues that the LVPECL (low-voltage PECL) receiver receives and amplifies high-speed data. Pet. 41–42 (citing Ex. 1005, 8, Figs. 11, 16(a); Ex. 1003 ¶ 85). For the “data recovery module,” Petitioner argues that HFAN discloses using a MAX3675 chip as an LVPECL receiver, and Petitioner relies on the disclosure of a D flip-flop in DS_MAX3675 (which describes the MAX3675 chip) to show the “data recovery module.” Pet. 42–44 (citing Ex. 1005, 2, 10; Ex. 1003 ¶¶ 87–88; Ex. 1018, Fig. 1). Petitioner argues that reliance on DS_MAX3675 is appropriate in the anticipation analysis to show the details of the LVPECL receiver disclosed in HFAN. Pet. 42–43 (citing In re Baxter Travenol Labs., 952 F.2d 388 (Fed. Cir. 1991)). Other than its argument that the “receiver termination network” must be “on-chip,” which we address in the preceding section, Patent Owner does not set forth any additional arguments against Petitioner’s contentions that HFAN anticipated claim 1. We are persuaded by Petitioner’s contentions for claim 1, including its reliance on DS_MAX3675. Anticipation is established when “one skilled in the art would reasonably understand or infer from the prior art reference’s teaching that every claim [limitation] was disclosed in that single reference.” Akamai Techs., Inc. v. Cable & Wireless Internet Servs., Inc., 344 F.3d 1186, 1192–93 (Fed. Cir. 2003) (alteration in original) (quoting Dayco” slip op. at 35
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“2. Independent Claim 9 Independent claim 9 is directed to “[a] multi-gigabit transceiver” slip op. at 41
Patent outcomesUS 7,280,590 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,280,590 - Analog Devices, Inc. v. Xilinx, Inc. And Xilinx Asia Pacific Pte. Ltd.All claims unpatentablePTAB · Apr 14, 2022 · IPR2020-01625 · APJ Daniel J Galligan · IPR · Final written decision
Claims 1–4 are unpatentable as anticipated by Measor; claims 1–4, 7–10, and 13–16 are also unpatentable as obvious over Measor and Xcell.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art at the relevant time “would have had at least a bachelor’s degree in electrical engineering and 3-5 years of professional experience in high speed links, or a master’s degree and 1-2 years of professional experience in high speed links, or equivalent academic experience” and “would have been familiar with transceivers, serializers, deserializers, and would have been aware of design trends in these areas.” Pet. 5 (citing Ex. 1002 ¶¶ 18–20). Patent Owner does not specifically respond to Petitioner’s level of ordinary skill (see PO Resp.), but Patent Owner’s declarant, Dr. Ayman Fayed, “do[es] not object” to Petitioner’s proposal (Ex. 2001 ¶ 26). In the Institution Decision, we adopted Petitioner’s assessment of the level of skill in the art, with the exception of the open-ended phrase “at least,” which expands the range of experience indefinitely without an upper bound. Inst. Dec. 8–9. Based on the parties’ agreement on this issue, we maintain our determination from the Institution Decision and apply that level of ordinary skill in the analysis below.” slip op. at 5
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“do not recite that the “desired serial data output rate” must be obtained from among multiple potential data rates. The Specification of the ’251 patent uses the term “desired” in the same way as the claims and provides no elaboration requiring multiple potential data rates. Ex. 1001, 2:29–33, 8:58– 65, 9:7–20, Fig. 11. Patent Owner, however, argues that “programmability lies at the heart of the ’251 patent” and that, because the rate must be obtained and desired, it “must be both variable (i.e., there is more than one option) and selectable (i.e., the user can change it).” PO Resp. 7 (citing Ex. 1001, codes (54), (57), 10:13, 10:16, 10:26, 11:27, 11:29–30, 12:55, 13:1–2; Ex. 2005 ¶¶ 5–6, 8). As we stated in the Institution Decision, “[w]e agree that the ’251 patent focuses on programmability.” Inst. Dec. 12. But that does not necessarily confer some requirement for a programmable signal on the claims, as Patent Owner suggests. For example, Patent Owner argues that the ’251 patent’s disclosure of different data transmission standards that require different data rates “would have required a programmable mechanism by which to select and adjust the data rate output by the serializer.” PO Resp. 8 (citing Ex. 1001, 1:58–66; Ex. 2005 ¶ 9). Patent Owner also argues that “[t]he skilled artisan would have understood that ‘obtaining a desired serial data output rate’ requires a similar signal from which to ‘obtain,’ or receive, information comprising the desired rate.” Institution Decision, the ’251 patent does not illustrate or describe a “programmable signal.” Inst. Dec. 11–13. Thus, Patent Owner’s argument would have us import limitations into the claims that are not even disclosed in the Specification.” slip op. at 7
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)Not reached
“During the trial, the parties did not address the issue of whether the “module” claim recitations invoke § 112 ¶ 6. During oral argument, the parties confirmed that none of the parties’ arguments turns on whether or not the “module” limitations are means-plus-function limitations. Tr. 5:2–20. 5 As we also noted in the Institution Decision, “[i]t is not entirely clear what Patent Owner means by a ‘programmable signal.’ The ’251 patent refers to ‘control signals’ that ‘program’ particular devices (Ex. 1001, 3:28–31), which suggests that these signals are programming signals and that the devices that are programmed by these signals are programmable.” Inst. Dec. 13 n.8. We need not explore this issue, further, however, because we reject Patent Owner’s proposed construction. ¶ 6, the determination as to whether the claims are patentable or unpatentable would be the same based on the arguments of record before us. Accordingly, because there is no dispute between the parties the resolution of which turns on whether the “module” terms invoke § 112 ¶ 6, we need not resolve this issue to decide the patentability challenges before us. See, e.g., 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))).” slip op. at 11
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“As discussed above in § II.B.1, we do not agree with Patent Owner’s proposed construction of this claim limitation. For the reasons explained below, Petitioner’s contentions for this limitation are persuasive. of 2.5 Gbps. Ex. 1003 ¶¶ 33, 37, Fig. 3. In the “exemplary circuit” of Figure 3, a 1.25 GHz clock is used to produce data at 2.5 Gbps, which Measor characterizes as “a desired rate for conversion.” Ex. 1003 ¶¶ 31, 36– 37, Fig. 3. Measor’s disclosure of using a clock that is half the desired serial output data rate mirrors the ’251 patent’s own disclosure in Figure 5 highlighted by Patent Owner. See PO Resp. 5–6 (citing Ex. 1001, Figs. 5, 10). According to Patent Owner, “[t]he programmable clock divider circuitry in Figure 5 receives a data width indication 92 and an intermediate data clock 108 and generates a set of four timing signals (CLK3, CLK2, CLK1, and CLK0),” which “correspond to a multiple state control sequence for converting parallel data into serial data in Figure 10.” PO Resp. 5–6. The ’251 patent explains that, for an exemplary “20 bit parallel input data to a 5 Gbps serial data stream, the serial data clock 110 is established to be 5 GHz. The clock divider 92 is a divide by two module such that the intermediate data clock 108 is 2.5 GHz.” Ex. 1001, 5:37–40. In the ’251 patent, therefore, the clock input to the circuit that produces the multiple state control sequence is half the rate of the desired serial output data rate, just as in Measor. Thus, we find that Measor describes “obtaining a desired serial data output rate.”” slip op. at 16
Patent outcomesUS 7,116,251 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 7,116,251 - Analog Devices, Inc. v. Xilinx, Inc. And Xilinx Asia Pacific Pte. Ltd.Some claims unpatentablePTAB · Apr 5, 2022 · IPR2020-01597 · APJ Russell E Cass · IPR · Final written decision
Claims 1–5, 12, and 13 are unpatentable; claim 6 was not shown unpatentable because Young does not disclose claim 5’s flip-flop limitation.
RulingsFinal written decision- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyDecided for patent owner
“claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. § 282(b).” 37 C.F.R. § 42.100(b) (2019). In our Institution Decision, we agreed with Patent Owner that the phrase “modules for implementing tasks, the module being reconfigurable” in independent claims 1 and 5 was not a “means-plus-function” limitation that must be construed under 35 U.S.C. § 112, paragraph 6. Inst. Dec. 15–18. We also construed the term “module” as “logic configured to perform a task that can receive and/or transmit communication signals.” Id. at 21. In doing so, we rejected Patent Owner’s argument that “‘reconfigurable modules” are not “logic that ‘may be programmed or reconfigured’ to implement tasks,” but rather “are circuits that have already been programmed to implement tasks and can then be updated.” Id. at 18–21 (quoting Prelim. Resp. 9). In its Patent Owner Response, Patent Owner included a footnote stating that it “maintains that this limitation should be construed to require that existing modules be updatable.” PO Resp. 12, n.1. Patent Owner, however, does not provide additional elaboration or set forth arguments explaining why the reasoning in our Institution Decision is in error. See id. (“For the remainder of this Petition, however, [Patent Owner] assumes that the Board’s broader construction is correct.”). Based on the complete record, we adhere to the interpretation set forth in our Institution Decision for the reasons discussed therein. See Inst. Dec. 18–21.” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. § 282(b).” 37 C.F.R. § 42.100(b) (2019). In our Institution Decision, we agreed with Patent Owner that the phrase “modules for implementing tasks, the module being reconfigurable” in independent claims 1 and 5 was not a “means-plus-function” limitation that must be construed under 35 U.S.C. § 112, paragraph 6. Inst. Dec. 15–18. We also construed the term “module” as “logic configured to perform a task that can receive and/or transmit communication signals.” Id. at 21. In doing so, we rejected Patent Owner’s argument that “‘reconfigurable modules” are not “logic that ‘may be programmed or reconfigured’ to implement tasks,” but rather “are circuits that have already been programmed to implement tasks and can then be updated.” Id. at 18–21 (quoting Prelim. Resp. 9). In its Patent Owner Response, Patent Owner included a footnote stating that it “maintains that this limitation should be construed to require that existing modules be updatable.” PO Resp. 12, n.1. Patent Owner, however, does not provide additional elaboration or set forth arguments explaining why the reasoning in our Institution Decision is in error. See id. (“For the remainder of this Petition, however, [Patent Owner] assumes that the Board’s broader construction is correct.”). Based on the complete record, we adhere to the interpretation set forth in our Institution Decision for the reasons discussed therein. See Inst. Dec. 18–21.” slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“In its Preliminary Response, Patent Owner stated that it did not object to Petitioner’s proposed level of ordinary skill in the art. Prelim. Resp. 7. In our Institution Decision, we adopted Petitioner’s assessment of the level of skill in the art with the exception of the open-ended phrase “at least,” finding that this level of skill is consistent with the ’184 patent and the asserted prior art of record. Inst. Dec. 23. In its Response, Patent Owner states that it “does not object to the” level of skill in the art in the Institution Decision. PO Resp. 11–12 (citing Inst. Dec. 23); see also Ex. 2012 ¶ 57 (Dr. Brogioli’s testimony that he does “not object to the Board’s finding in the Institution Decision on the level of skill in the art.”). Based on the complete record, we adhere to the level of ordinary skill adopted in our Institution Decision. Inst. Dec. 23.” slip op. at 12
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“We do not agree with Patent Owner’s argument that Eggers is deficient because it “does not disclose the existence of reconfiguration data for the Shift Register and Output Connections modules or any means of generating such data.” PO Resp. 13. Claim 1 does not require “reconfiguration data” or a configuration memory, and thus Eggers need not expressly disclose such data or memory to anticipate. To the extent Patent Owner argues that configuration data is necessary for a reconfigurable module, the evidence indicates that one of ordinary skill would have understood that such data would be used in the modules of Eggers. In this regard, Dr. Nelson testifies that one of ordinary skill in the art “would understand that the AT6000 device is not sold ‘out-of-the-box’ with a shift register and output connections modules pre-configured” and that “Eggers necessarily had to reconfigure the AT6000 from its default state to implement these modules,” which would require reconfiguration data. Ex. 1033 ¶ 12. Indeed, Patent Owner acknowledges that the AT600 is necessarily loaded with configuration data to configure the shift register and output connections modules on startup. PO Sur-reply 3. We also do not agree with Patent Owner’s argument that the configuration data for the shift register and output connections modules is not “reconfiguration” data because “[t]he ’184 patent establishes that ‘reconfiguration’ refers to reprogramming after startup, not programming on startup.” PO Sur-reply 3. As noted above, claim 1 does not require “reconfiguration data;” it only requires “modules” that are “reconfigurable.” Ex. 1001, 10:20–21. We therefore need not enter into a debate about the precise definition of “reconfiguration data” because the evidence shows that Eggers discloses modules that are reconfigurable, as claim 1 requires. As discussed above, one of ordinary skill would have understood that Eggers’s shift register and output connections modules are “reconfigurable” because they are created with reconfigurable logic in the Atmel AT6000. Ex. 1002 ¶¶ 92–93. Consequently, Petitioner has shown by a preponderance of the evidence that Eggers discloses limitation 1[a].” slip op. at 21
Patent outcomesUS 7,224,184 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,224,184 - Analog Devices, Inc. v. Xilinx, Inc. And Xilinx Asia Pacific Pte. Ltd.Some claims unpatentablePTAB · Apr 1, 2022 · IPR2020-01531 · APJ John F Horvath · IPR · Final written decision
Claims 1–3, 7–9, 13–17, and 19 are unpatentable as anticipated by Xia; claims 12 and 18 were not shown unpatentable over Xia or Iwata.
RulingsFinal written decision- Skill levelSkill level board ownDecided for petitioner
“the time of the invention as someone who would have had “the equivalent of a Bachelor’s degree in electrical engineering and four or more years of experience in analog circuit design.” Pet. 6 (citing Ex. 1003 ¶ 23). In our Institution Decision, we identified a person having ordinary skill in the art at the time of the invention as someone with “a Bachelor’s degree in electrical engineering, or its equivalent, and four years of experience in analog 1 Petitioner also relies upon the Declarations of Un-Ku Moon, Ph.D. (Exs. 1003, 1031) and Sylvia Hall-Ellis, Ph.D. (Ex. 1022). Patent Owner relies on the Declaration of Dr. Marwan Hassoun (Ex. 2008). we maintain here. See PO Resp. 8; Pet. Reply 2–28.” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“Owner, we maintain our preliminary construction of the connection limitation. Claims 1 and 8 require a programmable interconnect circuit coupled between an I/O port and a plurality of ADCs that enables a connection of the ADCs to the I/O port. Ex. 1001, 14:21–26, 14:51–53, 14:57–62. Figure 9 of the ’071 patent illustrates such “a programmable interconnect circuit.” Id. at 9:20–21, Fig. 9. It can be “implemented as an ADC interface, or more particularly, the routing network 704 or 804.” Id. at 9:22–24. In Figure 10, routing network 804 “enables the coupling of the analog input signal at input/output port 604 to each of 8 ADC circuits 602.” Id. at 10:3–8, Fig. 10. In Figure 11, routing network 804 together with sampler 1102 “enable[s] t[he] routing of a sample of the analog input signal periodically change the routing of the sampled signal to a different ADC.” Id.at 10:60–11:2, Fig. 11. Thus, the programmable interconnect circuit or routing network 804 enables both direct and continuous connections between the I/O port and ADC circuits as shown in Figure 10, and indirect and periodic connections as shown in Figure 11. Accordingly, for the reasons discussed above, we find the connection limitation has its plain and ordinary meaning, which includes enabling both a direct and continuous connection of the I/O port to the plurality of ADCs and an indirect and periodic connection.” slip op. at 8
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed
“We agree with Patent Owner. First, as discussed above, claims 12 and 18 are directed to the embodiment of Figure 10 of the ’071 patent, while claims 13 and 19 are directed to the embodiment of Figure 11. The Specification makes this clear by using language similar to that in claims 12 and 18 to describe the Figure 10 embodiment, and using language similar to that in claims 13 and 19 to describe the Figure 11 embodiment. For example, the Specification contrasts “coupling the analog input signal to each analog-to-digital converter circuit of the plurality of analog-to-digital converter circuits” (the same language used in claim 18) with the “alternative[]” embodiment of “periodically coupling a sample of the analog input signal to an analog-to-digital converter circuit of the plurality of analog-to-digital converter circuits” (the same language used in claim 19). Ex. 1001, 2:50–59. Similarly, the Specification contrasts “rout[ing] the analog input signal to each of the ADC circuits 602 of a group of ADC circuits” (similar to the language of claim 12) as shown in Figure 10 with input signal to a selected ADC circuit 606” (similar to the language of claim 13) as shown in Figure 11. Id. at 10:56–66. Based on these disclosures, we find that one of ordinary skill in the art would have understood the language of claims 12 and 18 to require routing the analog input signal received at the input/output port to each analog-to-digital converter without the use of a sampler, as shown in the Figure 10 embodiment. The use of a sampler is covered by claims 13 and 19, which cover the alternative Figure 11 embodiment.” slip op. at 26
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not reached
“E. Obviousness over Iwata and Hsueh Petitioner argues claim 2, which depends from claim 1, would have been obvious over the combination of Iwata and Hsueh. See Pet. 100–102. Patent Owner disagrees. See PO Resp. 53. As discussed in § II.C.4, supra, Petitioner has demonstrated by a preponderance of evidence that claim 2 is anticipated by Xia. Therefore, we need not consider whether Petitioner has also demonstrated that claim 2 would have been obvious over the combination of Iwata and Hsueh. See Beloit, 742 F.2d at 1423.” slip op. at 36
Patent outcomesUS 8,548,071 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites PhillipsPatents in suitUS 8,548,071
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.