• Western Digital Corporation / Western Digital Technologies, Inc. et al. v. Martin KusterSome claims unpatentable
  PTAB · Feb 10, 2022 · IPR2020-01391 · APJ Thomas L Giannetti · IPR · Final written decision

  Claims 11, 12, and 14–19 are unpatentable: claims 11 and 12 are anticipated by Hsiao, and claims 11 and 14–19 are obvious over He and Cheng or He, Cheng, and Hiller.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner’s proposed level of ordinary skill does not differ materially from that presented by Mr. Welch. Both require a bachelor’s degree in many of the same fields and roughly one to two years of experience with USB protocols or USB product development. The arguments presented by Petitioner and Patent Owner do not indicate that the outcome of this case would change depending on the level of ordinary skill in the art. We, therefore, adopt Petitioner’s description, which we determine to be consistent with the level of skill reflected in the asserted prior art references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). We note, however, that we would reach the same conclusions under either proposed level of ordinary skill.” slip op. at 8

  • BurdenDecided for patent owner

    “Proof of conception must be by “corroborating evidence which shows that the inventor disclosed to others his ‘completed thought expressed in such clear terms as to enable those skilled in the art’ to make the invention.” Coleman v. Dines, 754 F.2d 353, 359 (Fed. Cir. 1985) (citing Field v. Knowles, 183 F.2d 593, 601 (CCPA 1950)); see also Mahurkar v. C.R. Bard, Inc., 79 F.3d 1572, 1577 (Fed. Cir. 1996) (corroboration requirement “arose out of a concern that inventors testifying in patent infringement cases would be tempted to remember facts favorable to their case by the lure of protecting their patent or defeating another’s patent”). Similarly, an inventor’s testimony alone is insufficient to establish an earlier reduction to practice. Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1169–71 (Fed. Cir. 2006). Instead, a party seeking to prove an actual reduction to practice must proffer evidence corroborating that testimony. Id. at 1170. The sufficiency of corroboration is determined according to a “rule of reason.” Price v. Symsek, 988 F.2d 1187, 1195 (Fed. Cir. 1993). This, however, does not dispense with the requirement that some independent evidence provide corroboration. Coleman, 754 F.2d at 360. The requirement of “independent” corroboration requires evidence other than the inventor’s testimony. In re NTP, Inc., 654 F.3d 1279, 1291–92 (Fed. Cir. 2011). 3. Discussion We find that Patent Owner has not met its burden of establishing that Mr. Kuster conceived and reduced to practice his invention prior to the filing dates of Hsiao or He. By itself, Mr. Kuster’s testimony is insufficient to establish that he reduced his invention to practice prior to the November 23, 2010, filing date or Hsiao or the June 2, 2010, filing date of He. “Throughout the history of the determination of patent rights, oral testimony by an alleged inventor asserting priority over a patentee’s rights is regarded with skepticism, and as a result, such inventor testimony must be supported by some type of corroborating evidence.” Woodland Tr. v. Flowertree Nursery, Inc., 148 F.3d 1368, 1371 (Fed. Cir. 1998) (quoting Price, 988 F.2d at 1194). Patent Owner has failed to provide sufficient independent evidence corroborating Mr. Kuster’s testimony.” slip op. at 20

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

    “We do not agree with this argument. “The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art.” MCM Portfolio LLC v. Hewlett-Packard Co., 812 F.3d 1284, 1294 (Fed. Cir. 2015) (quoting In re Keller, 642 F.2d 413, 425 (CCPA 1981)). Moreover, “[a] person of ordinary skill is also a person of ordinary creativity, not an automaton,” so the fact that it would take some creativity to carry out the combination does not defeat a finding of obviousness. KSR, 550 U.S. at 421; see also ClassCo, Inc. v. Apple, Inc., 838 F.3d 1214, 1219 (Fed. Cir. 2016) (“The rationale of KSR does not support [the] theory that a person of ordinary skill can only perform combinations of a puzzle element A with a perfectly fitting puzzle element B.”). We find there is support for making this combination of He and Cheng in the testimony of Dr. Baker that addition of a controller is “conventional” in USB flash drives. Baker Decl. ¶ 167. We find that for the reasons given by Dr. Baker, a person of ordinary skill would have added a controller to He. We determine that the combination of He and Cheng teaches each limitation of claim 11. We address Patent Owner’s argument that there are objective indicia of obviousness, infra. We conclude that Petitioner has demonstrated that claim 11 would have been obvious over He and Cheng.” slip op. at 37

  • Obviousness (§103) › Objective indicia / secondary considerations › Long-felt need / failure of othersDecided for patent owner

    “attorney argument, not evidence.” Pet. Reply 26. We agree. Patent Owner does not back up its argument with testimony or other credible evidence. To demonstrate long-felt need, a patentee must point to an “articulated identified problem and evidence of efforts to solve that problem” which were, before the invention, unsuccessful. Tex. Instruments v. Int’l Trade Comm’n, 988 F.2d 1165, 1178 (Fed. Cir. 1993). All Patent Owner proves, if anything, is that after the USB 3.0 specification issued, a number of companies rushed in to provide contacts that met the new standard. Patent Owner does not demonstrate that they failed where Mr. Kuster succeeded. In fact, there is no evidence that Mr. Kuster ever commercialized his invention.8 8 Victorinox never paid for the work Mr. Kuster did on the USB 3.0 memory device, and to Mr. Kuster’s knowledge, never marketed the product. Kuster Dep. 22:21–24:13. Patent Owner contends “Mr. Kuster’s invention filled the existing need for a durable yet slim USB flash drive compatible with USB 3.0 that was easy to manufacture.” PO Resp. 77. But instead of presenting independent evidence of failure of the others to solve known technical or manufacturing problems, Patent Owner relies on generalized statements concerning the need for USB 3.0 connectors and solutions by others that Patent Owner contends have not been successful. PO Resp. 74–77. We are not persuaded by Patent Owner’s argument that Mr. Kuster’s alleged invention filled a long-felt need where others failed.” slip op. at 29

  Patent outcomesUS 8,693,206 mixed
  § 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,693,206
• Apple Inc. v. Qualcomm IncorporatedSome claims unpatentable
  PTAB · Feb 24, 2020 · IPR2018-01282 · APJ Daniel N Fishman · IPR · Final written decision

  Claims 1–3, 6–10, 12–22, 25–30, 46, 47, and 49–53 are unpatentable over the stated grounds; claims 4, 5, 23, 24, and 48 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We discern no significant distinction between Dr. Allen’s definition of the level of ordinary skill and that of Patent Owner. In view of Patent Owner’s admission that any differences are not material to the issues we decide here, we discern no reason to depart from our definition of the level 5 Patent Owner does not present arguments or evidence of such secondary considerations in its briefs. Therefore, secondary considerations do not enter into our analysis. Inst. 10. Accordingly, we adopt Dr. Allen’s definition of the level of ordinary skill in the art and determine that a person of ordinary skill in the art at the time of the invention of the ’865 patent would have had a Bachelor of Science degree in either computer science or electrical engineering, together with at least two years of study in an advanced degree program in artificial intelligence, machine learning, or pattern recognition, or comparable work experience.” slip op. at 9

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

    “Second, we agree with Petitioner that Patent Owner’s proffered interpretation, requiring a “pattern” to include relationships between two or more such pairs, incorrectly excludes embodiments where a “pattern” may be identified by the value of only a single parameter. We find nothing in the intrinsic evidence that supports Patent Owner’s narrow interpretation. By contrast, Petitioner identifies support in the ’865 patent Specification referring to a “pattern” being represented by “one or more” values of parameters in support of its interpretation that encompasses a single parameter value representing a “pattern.” See Pet. 12 (citing Ex. 1001, 6:49–55, 9:63–67). Furthermore, Petitioner points to deposition testimony of Patent Owner’s expert (Dr. Villasenor) as extrinsic evidence to support the contention that a “pattern” encompasses the value of even a single parameter.” slip op. at 15

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

    “monitoring and detecting steps in the teachings of Louch. Having reviewed the parties’ arguments and supporting evidence in the complete trial record, we are persuaded Louch teaches the monitoring and detecting steps of claim 1 (as well as related recitations of claims 21 and 46). See Ex. 1011, 8:24–26 (“In some implementations, the process 400 can begin when input from one or more sensors on the mobile device are used to determine a current state of the mobile device ( 410).”), 8:33–35 (“the determining can include detecting and determining two or more different states based on inputs from two or more different sensors”), 8:55–57 (“[t]he states can be determined based on sensor inputs, as described in reference to FIGS. 1-4”); see also Ex. 1021 ¶ 119.” slip op. at 31

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

    “Petitioner argues Louch and Nadkarni are in the same field of endeavor, argues both Louch and Nadkarni are pertinent to the problem addressed by the ’865 patent, and articulates reasons for the proposed combination of Louch and Nadkarni. Pet. 41–45. Patent Owner does not dispute Petitioner’s reasons for combining the references. Having reviewed Petitioner’s arguments (Pet. 41–45), we are persuaded Petitioner has articulated a reason for combining Louch and Nadkarni based on rational underpinnings.” slip op. at 43

  Patent outcomesUS 8,768,865 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Alice · Phillips · KSR · Graham
  Patents in suitUS 8,768,865
• Apple Inc. v. Qualcomm IncorporatedSome claims unpatentable
  PTAB · Feb 24, 2020 · IPR2018-01281 · APJ Daniel N Fishman · IPR · Final written decision

  Claims 1–3, 5, 6, 8–22, 24, 25, 27–30, 46–49, and 51–53 are unpatentable; claims 4 and 23 are not shown unpatentable because Wang does not teach the claimed response between fixing and reduced parameters.

  RulingsFinal written decision

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

    “Second, we agree with Petitioner that Patent Owner’s proffered interpretation, requiring a “pattern” to include relationships between two or more such pairs, incorrectly excludes embodiments where a “pattern” may be identified by the value of only a single parameter. We find nothing in the intrinsic evidence that supports Patent Owner’s narrow interpretation. By contrast, Petitioner identifies support in the ’865 patent Specification referring to a “pattern” being represented by “one or more” values of parameter value representing a “pattern.” See Pet. 11–12 (citing Ex. 1001, 6:49–55, 9:63–67). Furthermore, Petitioner points to deposition testimony of Patent Owner’s expert (Dr. Villasenor) as extrinsic evidence to support the contention that a “pattern” encompasses the value of even a single parameter.” slip op. at 15

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We discern no significant distinction between Dr. Allen’s definition of the level of ordinary skill and that of Patent Owner. In view of Patent Owner’s admission that any differences are not material to the issues we decide here, we discern no reason to depart from our definition of the level 5 Patent Owner does not present arguments or evidence of such secondary considerations in its briefs. Therefore, secondary considerations do not enter into our analysis. Inst. 10. Accordingly, we adopt Dr. Allen’s definition of the level of ordinary skill in the art and determine that a person of ordinary skill in the art at the time of the invention of the ’865 patent would have had a Bachelor of Science degree in either computer science or electrical engineering, together with at least two years of study in an advanced degree program in artificial intelligence, machine learning, or pattern recognition, or comparable work experience.” slip op. at 9

  • Expert testimonyPatent owner expert discountedDecided for patent owner

    “illustrated in Wang’s Table 1. In view of these numerous references to the exemplary user states and associated features illustrated in Wang’s Table 1, Patent Owner’s assertion, supported by Dr. Villasenor, that Wang does not use Table 1 to identify states is not credible. Based on Wang’s frequent by Petitioner (Pet. 17, 22–24), we determine that Wang’s implementation uses the states and features illustrated in Table 1 to recognize/identify a pattern as claimed (a particular set of feature values illustrated in Table 1), based on a condition (the corresponding present user state represented in Table 1).” slip op. at 39

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

    “illustrated in Wang’s Table 1. In view of these numerous references to the exemplary user states and associated features illustrated in Wang’s Table 1, Patent Owner’s assertion, supported by Dr. Villasenor, that Wang does not use Table 1 to identify states is not credible. Based on Wang’s frequent by Petitioner (Pet. 17, 22–24), we determine that Wang’s implementation uses the states and features illustrated in Table 1 to recognize/identify a pattern as claimed (a particular set of feature values illustrated in Table 1), based on a condition (the corresponding present user state represented in Table 1). It is true that there is no particular algorithm, program code, or data structure that discloses precisely how Table 1 is used. However, the claims do not require any particular data structure, algorithm, or programmed instructions. Claim 1 merely requires that the first pattern be identified “based, at least in part, on said at least one detected condition.” Wang’s frequent reference to the information illustrated in Table 1 and use of that information (feature values) to determine a user state sufficiently teaches the ordinarily skilled artisan the claimed identifying step, as discussed by Dr. Allen. See, e.g., Ex. 1003 ¶¶ 105–107. Accordingly, we find that Wang teaches the identifying step because Table 1 illustrates the exemplary states recognized (identified) by EEMSS along with the patterns (State Features) used to identify the states.” slip op. at 39

  Patent outcomesUS 8,768,865 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Alice · Phillips · KSR · Graham
  Patents in suitUS 8,768,865
• Intel Corporation v. Qualcomm, Inc.Some claims unpatentable
  PTAB · Feb 20, 2020 · IPR2018-01154 · APJ Trevor M Jefferson · IPR · Final written decision

  Claim 16 is unpatentable as obvious over Kwak; claims 15, 17–18, and 20 were not shown anticipated by Kwak, and claim 19 was not shown obvious over Kwak and Choi 2010.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Our Institution Decision adopted Petitioner’s proposed level of skill. Dec. on Inst. 11. Patent Owner does not dispute this issue. PO Resp. 11. We are persuaded by Petitioner’s definition of the level of ordinary skill in the art and we find the work experience is commensurate with the level of ordinary skill in the art. See In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). Here, the ’558 patent requires a degree of knowledge that is specific to mobile device architecture as well as transmission and power circuitry for radio frequency devices. See Pet. 36–37; Ex. 1201, Abstract, 1:7–9, 30–31.” slip op. at 7

  • Prior constructionTerm construed petitioner constructionPrior construction adoptedDecided for petitioner

    “1. “current sense amplifier” (claim 15) Petitioner offers a claim construction for “current sense amplifier” (claim 15) to mean an “amplifier that produces a voltage from a current,” which is based on the ALJ’s construction in the parallel ITC proceeding. Pet. 35–36 (citing Ex. 1223, 11–12). Petitioner argues that the ITC construction is consistent with the ’558 patent specification and the knowledge of a person of ordinary skill in the art. Pet. 35–36 (Ex. 1201, 4:64–66, 5:7–10, 5:18–20). Patent Owner argues that this term does not require construction, but does not contest Petitioner’s contention or our adoption of this construction in the Institution Decision. PO Resp. 10. Based on the full record and for the reasons given by the ALJ in the ITC proceeding (Ex. 1223, 11–12), we adopt the construction of “current sense amplifier” to mean an “amplifier that produces a voltage from a current.”” slip op. at 8

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

    “As we discussed in IPR2018-01152 and IPR2018-01153, and incorporate herein (1152 Final Dec. 12–21), the broadest reasonable interpretation is what would be understood by one of ordinary skill in the art in the context of the entire disclosure. See Translogic, 504 F.3d at 1257. The ’558 specification and the context of claims 6, 8, and 13 and the related language of claim 19 support that the amplifier must be able to receive both the boosted supply voltage and the first supply voltage (a selective boost) as recited in the claims. PO Resp. 35–38; Ex. 1201, 1:42–50, 5:31–49, 8:55– 62, 8:62–9:17, 9:21–36, 10:19–29, Figs. 3 and 5. In light of these findings, we do not agree with Petitioner’s arguments that the plain language of the claim 19 identifies two alternatives that need not both be present. Pet. Reply 3–4. We credit and find persuasive Patent Owner’s evidence that the ’558 specification, which provides context for the interpretation of an ordinarily skilled artisan, refers to the capability of receiving or operating on both voltages at the source (envelope amplifier). See PO Resp. 35–38.” slip op. at 10

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

    “On the full record, Petitioner has not provided sufficient or persuasive argument and evidence that Figure 6 is merely a more detailed implementation of Figure 5 such that a person of ordinary skill in the art would envision them as a single disclosure. Figure 6 specifically discusses a summing circuit operating on input current and offset current that differs from the voltage circuit signals shown in Figure 5. PO Sur-reply 13–14. We also note that feedforward node in Figure 6 differs from that shown in Figure 5. Indeed, Kwak expressly notes the differences and advantages between Figures 4 and 5 (showing summation of voltage signals) and Figure 6, which shows voltage signals converted into current signals before summation, stating that: In CMOS design, although three voltage signals can be added and then integrated as shown in Figs. 4 and 5, the simultaneous summation and integration of the signals at the node Vc, after the conversion of the three voltage signals into current ones, is advantageous, that is, the sensed output current of the linear amplifier, the feedforward current, and the high-frequency current through the ripple filter are added together and integrated at the node with the inverted polarity of the last one Ex. 1211, 2669. Kwak’s disclosure notes differences between the voltage signals of Figures 4 and 5 and the current conversion feedforward teachings shown in Figure 6. See id. On the full record, Petitioner has failed to persuasively establish that “a person of skill in the art, reading the reference, would ‘at once envisage’ the claimed arrangement or combination of elements” of claim 15 based on Kwak’s disclosures. See Microsoft Corp., 878 F.3d at 1068. Petitioner’s parallel citations to Figures 5 and 6 and joint discussion of the current summing and integration of Figure 6 and the voltage summing of Figures 5 (see Pet. 42–49), do not establish that Kwak shows the elements of the claim in an embodiment as arranged in the claims. Microsoft Corp., 878 F.3d at 1068–1069. Petitioner’s arguments and testimony evidence (Ex. 1203 ¶ 96; Pet. 44–45 (citing Ex. 1203 ¶¶ 94–96)) fail to address sufficiently the differences between Kwak’s Figures 5 and 6. For the reasons discussed above, Petitioner has not demonstrated by a preponderance of the evidence that Kwak anticipates independent claim 15 or dependent claims 17, 18, and 20.” slip op. at 19

  Patent outcomesUS 8,698,558 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,698,558
• Fitbit, Inc. / Wahoo Fitness LLC. v. Blackbird Tech, LLC D/B/A Blackbird Technologies, LLCSome claims unpatentable
  PTAB · Mar 12, 2019 · IPR2018-00275 · APJ Debra K Stephens · IPR · Final written decision

  Claims 2 and 5 were not shown unpatentable over Amano; claim 6 was shown unpatentable as obvious over Kato and Amano.

  RulingsFinal written decision

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

    “Under district court-type claim construction, claim terms are given their ordinary and customary meaning, as would be understood by a person of ordinary skill in the art, at the time of the invention, in light of the language of the claims, the specification, and the prosecution history of 8 record (Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc); see also In re Rambus Inc., 694 F.3d 42, 46 (Fed. Cir. 2012) (“While claims are generally given their broadest possible scope during prosecution, the Board’s review of the claims of an expired patent is similar to that of a district court’s review.”) (internal citation omitted)). “In determining the meaning of the disputed claim limitation, we look principally to the intrinsic evidence of record, examining the claim language itself, the written description, and the prosecution history, if in evidence” (DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing Phillips, 415 F.3d at 1312–17)). There is a “heavy presumption,” however, “that a claim term carries its ordinary and customary meaning” (CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002) (citation omitted)). We determine that no claim terms require express construction (see Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (Only terms which are in controversy need to be construed, and only to the extent necessary to resolve the controversy)).” slip op. at 8

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner asserts that a person of ordinary skill in the art at the time of the invention would have been [1] a person with a bachelor’s degree in mechanical engineering, electrical engineering, computer science, or a similar field with at least two years of experience in motion tracking, motion analysis, inertial sensing, or signal analysis, or [2] a person with a master’s degree in mechanical engineering, electrical engineering, computer science, or a similar field with a specialization in motion tracking, motion analysis, inertial sensing, or signal analysis or “[a] person with less education but more relevant practical experience. . . .” (Pet. 26–27 (citing Ex. 1005 ¶ 45–47)). Patent Owner does not dispute the educational level or experiential aspects of Petitioner’s definition in its Response (see generally PO Resp.). We note that the assessment appears consistent with the level of ordinary skill in the art at the time of the invention as reflected in the prior art in the instant proceeding (see Okajima at 1355). Based on our review of 12 the ’212 Patent, the types of problems and solutions described in the ’212 Patent and cited prior art, and the testimony of Dr. Choudhury and Dr. Michael Caloyannides, we adopt and apply Petitioner’s description of a skilled artisan as possessing (1) a bachelor’s degree in mechanical engineering, electrical engineering, computer science, or a similar field with at least two years of experience in motion tracking, motion analysis, inertial sensing, or signal analysis, or (2) a master’s degree in mechanical engineering, electrical engineering, computer science, or a similar field with a specialization in motion tracking, motion analysis, inertial sensing, or signal analysis, is supported by the current record.” slip op. at 12

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

    “Petitioner does not identify any disclosure in Amano that describes calculating pitch based on any distance. That pitch has a length/time measurement does not change the lack of disclosure of Amano of any counting of steps in determining the distance traveled. Indeed, Amano’s FFT processing merely determines when a step has occurred through identification of peak frequency of the second order harmonic wave component, to determine pitch; however, the FFT processing does not count steps to be used in further calculation.” slip op. at 20

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation foundNot shown unpatentable

    “We agree with Patent Owner that Amano does not disclose calculation of distance travelled, as recited in claims 2 and 5, as set forth above. Further, Petitioner has not persuaded us an ordinarily skilled artisan would have found it obvious to modify the FFT processing which identifies a peak frequency of a second harmonic to measure the pitch, to calculate a distance travelled as recited in claims 2 and 5 instead. Petitioner provides no additional discussion of this limitation in its Petition, instead relying on its anticipation arguments (Pet. 50–51). Thus, Petitioner has not articulated any reason why an ordinarily skilled artisan would have understood Amano to teach calculating a distance travelled.” slip op. at 25

  Patent outcomesUS 6,434,212 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 6,434,212
• Fitbit, Inc. / Wahoo Fitness LLC. v. Blackbird Tech, LLC D/B/A Blackbird Technologies, LLCSome claims unpatentable
  PTAB · Mar 11, 2019 · IPR2017-02012 · APJ Debra K Stephens · IPR · Final written decision

  Claims 2 and 5 were not shown unpatentable over Amano; claim 6 was shown unpatentable as obvious over Kato and Amano.

  RulingsFinal written decision

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

    “Under district court-type claim construction, claim terms are given their ordinary and customary meaning, as would be understood by a person of ordinary skill in the art, at the time of the invention, in light of the language of the claims, the specification, and the prosecution history of 8 record (Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc); see also In re Rambus Inc., 694 F.3d 42, 46 (Fed. Cir. 2012) (“While claims are generally given their broadest possible scope during prosecution, the Board’s review of the claims of an expired patent is similar to that of a district court’s review.”) (internal citation omitted)). “In determining the meaning of the disputed claim limitation, we look principally to the intrinsic evidence of record, examining the claim language itself, the written description, and the prosecution history, if in evidence” (DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing Phillips, 415 F.3d at 1312–17)). There is a “heavy presumption,” however, “that a claim term carries its ordinary and customary meaning” (CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002) (citation omitted)). We determine that no claim terms require express construction (see Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (Only terms which are in controversy need to be construed, and only to the extent necessary to resolve the controversy)).” slip op. at 8

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner asserts that a person of ordinary skill in the art at the time of the invention would have been [1] a person with a bachelor’s degree in mechanical engineering, electrical engineering, computer science, or a similar field with at least two years of experience in motion tracking, motion analysis, inertial sensing, or signal analysis, or [2] a person with a master’s degree in mechanical engineering, electrical engineering, computer science, or a similar field with a specialization in motion tracking, motion analysis, inertial sensing, or signal analysis or “[a] person with less education but more relevant practical experience. . . .” (Pet. 26–27 (citing Ex. 1005 ¶ 45–47)). Patent Owner does not dispute the educational level or experiential aspects of Petitioner’s definition in its Response (see generally PO Resp.). We note that the assessment appears consistent with the level of ordinary skill in the art at the time of the invention as reflected in the prior art in the instant proceeding (see Okajima at 1355). Based on our review of 12 the ’212 Patent, the types of problems and solutions described in the ’212 Patent and cited prior art, and the testimony of Dr. Choudhury and Dr. Michael Caloyannides, we adopt and apply Petitioner’s description of a skilled artisan as possessing (1) a bachelor’s degree in mechanical engineering, electrical engineering, computer science, or a similar field with at least two years of experience in motion tracking, motion analysis, inertial sensing, or signal analysis, or (2) a master’s degree in mechanical engineering, electrical engineering, computer science, or a similar field with a specialization in motion tracking, motion analysis, inertial sensing, or signal analysis, is supported by the current record.” slip op. at 12

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

    “Petitioner does not identify any disclosure in Amano that describes calculating pitch based on any distance. That pitch has a length/time measurement does not change the lack of disclosure of Amano of any counting of steps in determining the distance traveled. Indeed, Amano’s FFT processing merely determines when a step has occurred through identification of peak frequency of the second order harmonic wave component, to determine pitch; however, the FFT processing does not count steps to be used in further calculation.” slip op. at 20

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “We agree with Patent Owner that Amano does not disclose calculation of distance travelled, as recited in claims 2 and 5, as set forth above. Further, Petitioner has not persuaded us an ordinarily skilled artisan would have found it obvious to modify the FFT processing which identifies a peak frequency of a second harmonic to measure the pitch, to calculate a distance travelled as recited in claims 2 and 5 instead. Petitioner provides no additional discussion of this limitation in its Petition, instead relying on its anticipation arguments (Pet. 50–51). Thus, Petitioner has not articulated any reason why an ordinarily skilled artisan would have understood Amano to teach calculating a distance travelled.” slip op. at 25

  Patent outcomesUS 6,434,212 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 6,434,212
• Flir Systems, Inc. / Flir Maritime US, Inc. (F/K/A Raymarine, Inc.) v. Garmin Switzerland GmbHSome claims unpatentable
  PTAB · Jul 10, 2018 · IPR2017-00946 · APJ Scott B Howard · IPR · Final written decision

  Claims 28, 29, and 45 were held unpatentable; claims 1–7, 12–23, 25–27, and 41–44 were not shown unpatentable. Substitute claims 73 and 74 were allowed.

  RulingsFinal written decision

  • BurdenFwd mixedMixed

    “C. Legal Principles 1. Anticipation A patent claim is unpatentable under 35 U.S.C. § 102 if “the four corners of a single, prior art document describe every element of the claimed invention, either expressly or inherently, such that a person of ordinary skill in the art could practice the invention without undue experimentation.” Advanced Display Sys., Inc. v. Kent State Univ., 212 F.3d 1272, 1282 (Fed. Cir. 2000). “A single prior art reference may anticipate without disclosing a feature of the claimed invention if such feature is necessarily present, or inherent, in that reference.” Allergan, Inc. v. Apotex Inc., 754 F.3d 952, 958 (citing Schering Corp. v. Geneva Pharm., 339 F.3d 1373, 1377 (Fed. Cir. 2003)). Moreover, the reference must also “disclose[] within the four corners of the document not only all of the limitations claimed but also all of the limitations arranged or combined in the same way as recited in the claim.” Net MoneyIN, Inc. v. Verisign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008). However, “the reference need not satisfy an ipsissimis verbis test.” In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009). We analyze the ground based on anticipation in accordance with the above-stated principles.” slip op. at 22

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

    “and agree with Patent Owner that the terms “re-routing the course” and “re-route the course” mean “to change at least a portion of the route of the course relative to a previous routing.” That is, there must be a first routing of a course and that routing must be changed by performance of the marine route calculation algorithm to avoid preselected conditions by identifying one or more non-user selected waypoints. The construction is consistent with the words of the claims. The claims do not merely require routing a course, but “re-routing the course.” The ordinary meaning of the prefix “re” is that something is being done again. See Tr. 18 (Petitioner agreeing that “if you put R-E in front of a word, normally that means it’s occurring a second time”). Although the claims do not explicitly recite both an original “routing” of a course that is changed by “re-routing the course,” the original “routing” is implicitly required by the use of the prefix “re.” See Tr. 34 (Patent Owner agreeing that although the claims do not explicitly require an initial routing, the initial routing is implicit in the use of “re-routing”), 44–45 (Petitioner agreeing that “re-routing” ordinarily implies an initial routing).” slip op. at 10

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

    “proposed construction of “course” as “the path of intended travel of a craft with respect to the earth.” Instead, we need only focus on the words recited in the claim. Claim 1, which is representative, recites that performing the marine route calculation algorithm to “route a course between a first location and the potential waypoint avoiding the preselected conditions,” where such performance includes “identifying one or more non-user selected waypoints.” Ex. 1001, claim 1. The other independent claims recite similar limitations. See Ex. 1001, claims 12, 20, 27. Based on the limitation recited in the claim, the broadest reasonable interpretation of routing a “course” encompasses the identification of one or more non-user selected waypoints between a first location and a potential waypoint. No further construction is necessary for purposes of this Decision.” slip op. at 17

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We are persuaded by Petitioner’s argument that the person of ordinary skill in the art need not have first-hand experience with marine navigation devices and systems. Pet. Reply 25–26. The ’703 patent explicitly defines “marine navigation” broadly, noting that “the use of the word ‘marine’ in the embodiments of the present invention (including the claims) could be replaced with the phrase ‘non-street based.’” Ex. 1001, 1:57–67 (emphasis added). Such non-street based navigation is broad enough to encompass avionic navigation. See Pet. Reply 25–26; cf. Ex. 1003, 4–7 (demonstrating Dr. Braasch’s experience in avionic navigation). We find that Petitioner’s definition is supported by the testimony of its expert, Dr. Braasch, and, for the reasons stated above, we are not persuaded that the person of ordinary skill in the art necessarily would have had first-hand experience in marine—as opposed to non-street based— navigation. We, therefore, determine, based on the complete record, that Petitioner’s proposed definition correctly states the level of ordinary skill in the art, and we apply it for purposes of this Decision.7, 8” slip op. at 24

  Patent outcomesUS 7,268,703 mixed
  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham
  Patents in suitUS 7,268,703
• Marvell Semiconductor, Inc. v. Intellectual Ventures I LLCSome claims unpatentable
  PTAB · Nov 30, 2015 · IPR2014-00553 · APJ Patrick M Boucher · IPR · Final written decision

  Claims 1–3, 5–10, 13, 18, and 23 are unpatentable under § 103; claims 4, 11–12, 14–17, and 19–22 were not shown unpatentable.

  RulingsFinal written decision

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportReference is prior artPrinted publication establishedDecided for petitioner

    “A reference is established to be a “printed publication” “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.” In” slip op. at 8

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

    “the art “would have appreciated the benefit of including multi-carrier modulation in the Wu system” because “Wu itself references the 802.11a standard as a multi-carrier OFDM scheme that is able to achieve data rates that are faster than the 802.11b transmission rates used in the Wu system.” Id. at 48 (citing Ex. 1120 ¶¶ 43–47, 65–68; Ex. 1108, 411). Petitioner contends that [w]ith this motivation in mind a [person of ordinary skill in the art] would have recognized that adding the multi-carrier 802.11a modulation scheme to the modulation schemes already available in the Wu system would have been a simple addition, if a technique was available for using a channel estimate obtained from data modulated according to a single carrier modulation scheme for acquisition of data modulated according to a multi-carrier modulation scheme[,] and supports that contention with testimony by Dr. Almeroth. Id. at 48 (citing Ex. 1120 ¶¶ 43–47, 65–68). Petitioner identifies such a technique as disclosed by Böhnke. Id. at 49. Böhnke “relates to the mapping of data and pilot symbols in an OFDM-system.” Ex. 1113, col. 1, ll. 4–5. Figure 2 of Böhnke is reproduced below. Figure 2 illustrates a sequence that includes a first OFDM modulated signal S1, a midamble MA that can be OFDM modulated or single-carrier modulated, and a second OFDM symbol S2. Id. at col. 4, ll. 36–41. The midamble can be used for the transmission of pilot symbols, which “are necessary for a channel estimation such as to effect coherent detection of e.g. OFDM-modulated signals,” and such pilot symbols can be created by a single carrier modulation with a known training sequence. Id. col. 1, ll. 7–9, col. 5, ll. 45–49, col. 5, ll. 61–63. Böhnke, thus, uses the channel estimation obtained from the single-carrier training sequence to detect multi-carrier OFDM symbols by matching bandwidth and performing synchronization. Id. at col. 2, ll. 43–45, col. 2, ll. 61–62. Petitioner reasons that the Böhnke channel-estimation techniques “provide a way to combine a high-rate, multicarrier OFDM data transmission scheme with a single carrier training sequence” and that [w]ith this background, a [person of ordinary skill in the art] investigating options for including the multi-carrier 802.11a standard in the Wu system would have appreciated that Bohnke’s channel estimation techniques could be applied to Wu’s single-carrier 802.11b preamble and used for acquisition of data modulated according to multi-carrier 802.11a.” slip op. at 12

  • BurdenMixed

    “We agree with Patent Owner that Petitioner’s analysis of claim 22, which recites separate single-carrier and multi-carrier receivers, as well as a switch coupled to such receivers, is deficient. Petitioner’s assertion that claim 22 is unpatentable for “reasons similar to those explained in regards to claims 1-3 and 5” insufficiently addresses these limitations, which do not appear in claims 1–3 or 5. Pet. 58.” slip op. at 23

  Patent outcomesUS 6,754,195 mixed
  § 102 anticipation§ 103 obviousness
  Patents in suitUS 6,754,195
• Microsoft Corporation v. Enfish, LLCSome claims unpatentable
  PTAB · Mar 3, 2015 · IPR2013-00562 · APJ Scott A Daniels · IPR · Final written decision

  Claims 31, 41, and 42 are unpatentable: claim 31 is anticipated by Chang, and claims 41 and 42 are obvious over Chang with Webb and Chang with Horn, respectively.

  RulingsFinal written decision

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Decided for petitioner

    “implemented function is the algorithm disclosed in the specification.” Aristocrat Techs. Austl. Party Ltd. vs. Int’l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008) (quoting Harris Corp. v. Ericsson Inc., 417 F.3d 1241, 1249 (Fed. Cir. 2005)). Additionally, specific portions of the specification must clearly link or associate a computer program or algorithm to the function corresponding to the claimed means. See Medical Inst. and Diag. Corp. v. Elektra AB, 344 F.3d 1205, 1211 (Fed. Cir. 2003). For the reasons set forth below, we conclude that the four steps and other ’604 patent specification portions identified by Enfish do not describe an algorithm for the recited function of “configuring memory according to a logical table.” We further conclude that Enfish has not clearly linked or associated the recited function to the four steps or the other portions of the ’604 patent specification that Enfish identifies.” slip op. at 11

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

    “We determine that adopting Enfish’s proposed construction without further context would create ambiguity. Additionally, limitations are not to be read into the claims from embodiments in the specification. See In re Van Geuns, 988 F.2d 1181 at 1184. Furthermore, we agree with Microsoft that Enfish relies on insufficient extrinsic evidence for support, for example, that an OID is “immutable.” We also note that Enfish’s contentions are not commensurate with the scope of the claims because each of the independent claims recites that an OID is included “to identify” each logical row and each logical column, but does not recite using an OID to retrieve data from memory. We, therefore, determine that the construction of “OID” in the Decision to Institute should not be changed.” slip op. at 18

  • Expert testimonyPatent owner expert creditedPetitioner expert discountedOther

    “We give little weight to Dr. Hosking’s testimony with respect to the limitations in claim 34 because he does not provide an explanation or evidence as to why Dickerson’s synchronization of data in the same column across separate databases teaches reciprocal synchronization between columns in the same table. Dr. Hosking states that a person of skill in the art would be motivated to combine Chang and “the synchronization concept as taught in Dickerson in the case that similar elements were to be reciprocally synchronized.” Ex. 1022 ¶ 225. The premise of this argument is the assumption that Dickerson’s synchronization across separate databases is the same as synchronizing two logical columns reciprocally in the same database table. Dr. Hosking does not provide support for this assumption. This argument, therefore, does not sufficiently explain why mirroring data across separate databases leads to data synchronization between logical columns in the same table. Dr. Hosking’s testimony does not explain why, or how, one of ordinary skill in the art would use the database management disclosed by Chang in cooperation with the linked database elements between separate databases to achieve reciprocal synchronization “to achieve such coordination of the data” between logical columns in the same table. See id. at ¶¶ 283–294.” slip op. at 41

  • Skill levelOther

  Patent outcomesUS 6,151,604 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 6,151,604
• Microsoft Corporation v. Enfish, LLCSome claims unpatentable
  PTAB · Mar 2, 2015 · IPR2013-00561 · APJ Barbara A Parvis · IPR · Final written decision

  Claims 46 and 54 were held unpatentable; claims 55, 56, and 60 were not shown unpatentable; claims 16, 24–26, and 30 were terminated because their means-plus-function limitation lacked sufficient disclosed structure.

  RulingsFinal written decision

  • BurdenMixed

    “Microsoft has shown by a preponderance of the evidence that claims 46 and 54 of the ’775 patent are unpatentable. Microsoft has not shown that claims 55, 56, and 60 of the ’775 patent are unpatentable. For the reasons discussed below, we are unable to reach a determination on the alleged grounds of unpatentability over prior art for claims 16, 24–26 and 30. Accordingly, we terminate this proceeding with respect to claims 16, 24–26 and 30 under 37 C.F.R. § 42.72.” slip op. at 3

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Decided for petitioner

    “1249 (Fed. Cir. 2005)). Additionally, specific portions of the specification must clearly link or associate a computer program or algorithm to the function corresponding to the claimed means. See Medical Inst. & Diag. Corp. v. Elektra AB, 344 F.3d 1205, 1211 (Fed. Cir. 2003). For the reasons set forth below, we conclude that the four steps and other ’775 patent specification portions identified by Enfish do not describe an algorithm for the recited function of “configuring memory according to a logical table.” We further conclude that Enfish has not clearly linked or associated the recited function to the four steps or the portions of the ’775 patent specification that Enfish identifies.” slip op. at 10

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

    “We determine that Enfish’s proposed construction of OID introduces requirements beyond what is needed for an OID to identify data and retrieve data from memory. Enfish, for example, contends that “an OID is unique among all rows and columns of the logical table.” PO Resp. 29. Additionally, claims 46 and 54 recite that an OID is included “to identify” each attribute set and each record, but do not specifically recite using an OID to retrieve data from memory.” slip op. at 14

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

    “80, PG 453, 471, 481, 482, 484, Ex. 1219 ¶¶ 67–93, 119–131). For example, we are persuaded that Microsoft has shown by a preponderance of the evidence that Visual Basic discloses configuring memory according to a logical table, as recited in claim 54. In the cited portions above, Visual Basic discloses storing data in a computer formatted as a table object, which is “a logical representation of a physical table.” Ex. 1204, LR 558. The table object comprises “records (rows) and fields (columns).” Id. As an additional example, we are persuaded that Microsoft has shown by a preponderance of the evidence that Visual Basic discloses each record and each attribute set including an OID, as recited in claim 54. In the cited portions above, Visual Basic describes assigning a primary key and that “[a] table’s primary key is the determining factor when testing to see if the record is unique within the table.” Ex. 1204, PF 39. According to Visual Basic “[Visual Basic] creates an index on the primary key of the table and uses it to find records and to create joins between tables.” Id. Regarding each column including an OID, according to Visual Basic, “[e]ach Field in the Fields collection of a TableDef has a unique value in the OrdinalPosition property.” Id. at LR 425. Furthermore, we are persuaded that Microsoft has shown by a preponderance of the evidence that Visual Basic discloses indexing data stored in the table and a cell including a pointer to an index record, as recited in claim 54. In the cited portions above, Visual Basic discloses an index object used for creating indexes to “speed up the process of finding records.” Ex. 1204, LR 276; see also id. at PF 37, 38, PG 482. Visual Basic also discloses a cell pointing to an index object. Id. at LR 280, PG 484.” slip op. at 17

  Patent outcomesUS 6,163,775 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR
  Patents in suitUS 6,163,775

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.