• Ring LLC v. Skybell Technologies, Inc.All claims unpatentable
  PTAB · Jun 29, 2020 · IPR2019-00447 · APJ Daniel J Galligan · IPR · Final written decision

  Claims 1–4, 7–15, and 18–21 are unpatentable as obvious over Siminoff and Almomani, Siminoff, or Siminoff and Ring.com, as applicable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “ordinary skill in the art of the ’049 Patent would have had “a bachelor’s degree in Electrical Engineering, Computer Engineering, or Computer Science, or equivalent training, as well as at least one year of technical experience in the relevant field. Lack of work experience can be remedied by additional education or training, and vice versa.” Ex. 1003 ¶ 28, cited in Pet. 9. In the Decision on Institution, we agreed with this assessment, with the exception of the language “at least,” which introduces ambiguity. Dec. on Inst. 9–10. Patent Owner agrees with Petitioner’s proposed level of ordinary skill in the art. PO Resp. 5 (“For the purposes of this IPR proceeding, Patent Owner adopts Petitioner’s definition of level of ordinary skill.”). Based on the full trial record and in view of the parties’ agreement, we determine, consistent with the Decision on Institution, that a person of ordinary skill in the art would have had a bachelor’s degree in Electrical Engineering, Computer Engineering, or Computer Science, or equivalent training, as well as one year of technical experience in the relevant field. See Dec. on Inst. 9–10; Pet. 9; PO Resp. 5; Ex. 1003 ¶ 28; Ex. 2001 ¶ 28.” slip op. at 6

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Not reached

    “1. Live view mode Patent Owner argues that “live view mode,” as recited in independent claims 1 and 11, means a “mode by which live video and/or audio from the doorbell is transmitted to and displayed on the remote computing device.” PO Resp. 9 (citing Ex. 2001 ¶ 46). Petitioner disagrees with this construction. Pet. Reply 2–6. As explained below, we find the asserted prior art teaches a “live view mode” under Patent Owner’s proposed construction. Therefore, we apply Patent Owner’s construction in our patentability analysis below, and we need not resolve the parties’ dispute as to the meaning of “live view mode.” See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe 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 7

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

    “Ex. 1001, 11:52–58. Furthermore, “sleep mode” is described throughout the ’049 patent as a mode used to save power. Ex. 1001, 3:6–8, 3:56–57, 12:20– 26, 15:24–30, 17:16–30. Patent Owner’s proposed interpretation of “constant power” in claim 21 contradicts the entire purpose of a “sleep mode,” which is to save power. For this reason, we do not agree with Patent Owner’s construction.” slip op. at 9

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

    “Almomani’s teachings of remotely activating the doorbell camera “would frustrate Siminoff’s intended purpose of saving power by rendering the camera inoperable when motion is not detected.” PO Resp. 20 (citing Ex. 2001 ¶ 62). According to Patent Owner, in the proposed combination, “the low power consumption mode would not be used, and battery power would be wasted recording video for which there [is] no associated motion or activity.” PO Resp. 21 (citing Ex. 2001 ¶ 63). We disagree with these arguments because, as Petitioner correctly points out (Pet. 27), Siminoff discloses that an “activation trigger” for switching “from low-power mode to active mode” may include “a signal from [a] user at [a] remote communication device.” Ex. 1005, claim 1. Thus, Siminoff is not limited to exiting low power mode only upon motion detection. Rather, Siminoff expressly discloses exiting a low power mode based on a signal from a remote device. Almomani provides the express disclosure of using a mobile phone to activate a camera to stream live video, as discussed above, thereby supplying the details that Petitioner acknowledges are lacking in Siminoff. See Pet. 19 (“Siminoff lacks express details as to whether this activation signal [of Siminoff’s claim 1] also causes the camera to begin recording. Almomani, however, teaches that a user of an application on a mobile device may selectively activate a door-based camera and receive streaming video.”).” slip op. at 20

  Patent outcomesUS 9,743,049 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,743,049
• Ring LLC v. Skybell Technologies, Inc.All claims unpatentable
  PTAB · Jun 29, 2020 · IPR2019-00445 · APJ Daniel J Galligan · IPR · Final written decision

  Claims 12 and 18 are unpatentable: claim 12 as obvious over Tylicki and Claiborne, and claim 18 as anticipated by Tylicki and Claiborne.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Ex. 1003 ¶ 28, cited in Pet. 12–13. In the Decision on Institution, we agreed with this assessment, with the exception of the language “at least,” which introduces ambiguity. Dec. on Inst. 8. Patent Owner agrees with Petitioner’s proposed level of ordinary skill in the art. PO Resp. 8 (“For the purposes of this IPR proceeding, Patent Owner adopts Petitioner’s definition of level of ordinary skill.”). Based on the full trial record and in view of the parties’ agreement, we determine, consistent with the Decision on Institution, that a person of ordinary skill in the art would have had a bachelor’s degree in Electrical Engineering, Computer Engineering, or Computer Science, or equivalent training, as well as one year of technical experience in the field of embedded computing systems (including sensors and automation) and wireless networking. See Dec. on Inst. 8; Pet. 12–13; PO Resp. 8; Ex. 1003 ¶ 28; Ex. 2001 ¶¶ 33–34.” slip op. at 5

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

    “We agree with Petitioner that independent claim 1’s affirmative recitation that “the chime that is . . . remotely located with respect to the doorbell” is conspicuously absent from independent claims 12, 18, and 23 and that its inclusion in claim 1 tends to show that “remotely located” is not an intrinsic feature of the claimed chime, as disclosed in the ’107 patent. See Pet. Reply 2. Otherwise, there would be no need to affirmatively recite this limitation in claim 1.” slip op. at 7

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

    “recites “sending a data file comprising information to the chime that is communicatively coupled to the communication device.” Unlike the limitation reciting “selecting the sound by a communication device,” the “sending” limitation does not require the recited “communication device” to send the data file comprising information to the chime. Nonetheless, we have reviewed Petitioner’s contentions, and we are persuaded it would have been obvious to download (i.e., send) the sound files from the cellular phone of Tylicki in view of Claiborne’s teachings of downloading audio files from a device such as a cellular phone to the chime. See Pet. 30–32; Ex. 1003, 49–51; Ex. 1006 ¶¶ 27, 41, Fig. 3. As Petitioner points out, “Tylicki does not specify which particular peripheral devices may be used to accomplish the task of downloading,” but Claiborne provides “an identified and predictable solution,” namely using a cellular phone to download files to the chime. Pet. 20 (citing Ex. 1003 ¶ 59). Tylicki identifies “cellular telephones” as examples of user interface devices that can connect to and configure various features of the chime system, including selecting which file to play. Ex. 1005 ¶¶ 18–19. Tylicki also discloses downloading sound files from peripheral devices to the chime system. Ex. 1005 ¶ 16. Tylicki does not state expressly that the peripheral devices that can be used for downloading files include cellular telephones. In view of Tylicki’s other disclosures of using cellular telephones as user interface devices to configure the system, we are persuaded by Petitioner’s contention that a person of ordinary skill in the art would have been motivated to use a cellular phone to send sound files to the chime, as disclosed in Claiborne. See Ex. 1003 ¶ 59 (Dr. Madisetti testifying that “an artisan looking to implement Tylicki’s door chime would have found a predictable solution in Claiborne. Claiborne teaches that a cellular phone was one such peripheral device known in the art to enable the downloading of sound files to a chime. . . . Claiborne’s teaching is just one example of the common practice of transferring files from a cellular phone to another device.”) (citing Ex. 1006 ¶ 27).” slip op. at 23

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

    “portion of a building” and “wherein the doorbell is located along an outside portion of the building.” Petitioner argues that a person of ordinary skill in the art would have found it obvious to place a chime inside a building and a doorbell outside a building because “the well-known purpose of a chime is to alert occupants of a building to the presence of a visitor at the door” and “the well-known purpose of a doorbell is to provide visitors a way to alert occupants to their presence outside.” Pet. 32–33, 35–37. We are persuaded by Petitioner’s contentions. We agree with Petitioner that “the well-known purpose of a doorbell is to provide visitors a way to alert occupants to their presence outside.” Pet. 36 (citing Ex. 1003, 58). Thus, we find a person of ordinary skill in the art would have understood that a doorbell is mounted outside, by a door for example. We also agree with Petitioner that “the well-known purpose of a chime is to alert occupants of a building to the presence of a visitor at the door.” Pet. 32–33 (citing Ex. 1005 ¶ 4). In view of this, Petitioner argues that “it would have been obvious to a person of ordinary skill in the art that Tylicki’s chime speaker may be mounted inside the business or large residential dwelling so as to alert various dwelling occupants to the presence of a visitor outside.” Pet. 33 (citing Ex. 1003, 52–53; Ex. 1006, claim 1). We are persuaded by this argument because it is generally known that a doorbell chime rings inside a building to provide notice to those inside of someone outside. See Ex. 1003, 52–53 (Dr. Madisetti testifying that a chime is placed inside to alert occupants).” slip op. at 25

  Patent outcomesUS 9,179,107 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,179,107
• Satco Products, Inc. v. Seoul Semiconductor Co, LtdInstitution denied
  PTAB · Jun 8, 2020 · IPR2020-00248 · APJ Jeffrey W Abraham · IPR · Institution

  The Board denied institution because the petition did not show a reasonable likelihood that Sanga anticipates claims 1, 3, 4, 9, 10, 12, 14, 18, 19, 21, or 22 or renders claims 3, 4, 9, …

  RulingsInstitution decision

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

    “review. 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2019). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless the Director determines . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.”” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art Petitioner contends that a person of ordinary skill in the art in the field of the ’210 patent would have had “a Ph.D. in chemical engineering, materials engineering, or electrical engineering (with a focus on semiconductor materials), or similar advanced postgraduate education in this area, as well as at least 2 years of experience relating to LED design and fabrication.” Pet. 7 (citing Ex. 1003 ¶¶ 23–27). Petitioner also contends that “[a] person with less education but more relevant practical experience, depending on the nature of that experience and degree of exposure to LED fabrication and design (including the involved materials, chemistry, and” slip op. at 6

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

    “standard set forth in Phillips v. AWH Corp., 415 F.3d 1303, 1312–17 (Fed. Cir. 2005) (en banc). 37 C.F.R. § 42.100(b). Under Phillips, claim terms are afforded “their ordinary and customary meaning.” Phillips, 415 F.3d at 1312. “[T]he ordinary and customary meaning of a claim term is the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention.” Id. at 1313. “Importantly, the person of ordinary skill in the art is deemed to read the claim term not only in the context of the particular claim in which the disputed term appears, but in the context of the entire patent, including the specification.” Id.” slip op. at 5

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

    “We agree with Patent Owner that Petitioner has failed to satisfy its burden of demonstrating that Sanga discloses a spacer layer having a bandgap smaller than the bandgap of the barrier layer, as claim 1 requires. In particular, we are not persuaded that Petitioner’s evidence regarding the bandgap of the In0.03Ga0.97N layer in n-side multilayer 10 is sufficient to demonstrate that Sanga discloses the bandgap limitation of the spacer layer, as recited in claim 1.” slip op. at 11

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips
  Patents in suitUS 9,716,210
• LG Electronics Inc. v. Uniloc 2017 LLCInstitution denied
  PTAB · Feb 27, 2020 · IPR2019-01519 · APJ Brent M Dougal · IPR · Institution

  Institution was denied because Petitioner did not show a reasonable likelihood of proving claims 1–11 unpatentable under the asserted grounds.

  RulingsInstitution decision

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

    “The standard for institution is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons described below, we conclude that Petitioner has not shown a reasonable likelihood it would prevail in establishing the unpatentability of at least one of the challenged claims. We, therefore, do not institute an inter partes review of the ’408 patent in this proceeding.” slip op. at 2

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

    “at a variable re-sampling rate defined at the receiving end,” we look to the related description in the ’408 patent. The ’408 patent acknowledges that it was known in the prior art for the control signal to “define a fixed re-sampling rate for resampling the image at the receiving end in order to achieve the required resolution-adaptation.” Ex. 1001, 1:31–33. The ’408 patent contrasts this “pre-defined” re-sampling rate with “a variable re-sampling rate defined at the receiving end.” Id. at 1:41, 2:28–29. The ’408 patent explains: The claimed variable re-sampling rate at the receiving end enables—in contrast to a fixed re-sampling rate provided by a broadcaster—an individual adaptation of the size of the image and in particular of the partition to be displayed to the actual size of the screen such that advantageously details remain within the displayed image as far as possible. Id. at 2:30–35.” slip op. at 16

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

    “In both grounds, Petitioner relies on the positions made under the previous ground for teaching “re-sampling said decoded image at a variable re-sampling rate defined at the receiving end.” See e.g., Pet. 55 (“For the reasons in Sections II.D and VI.A . . . .”). That is, Petitioner relies solely on Kitaura as disclosing this limitation for the reasons provided in the anticipation ground, and does not separately address this claim limitation for the obviousness grounds. For the reasons discussed above, we are not persuaded that the Petition has sufficiently shown how each element of the claims is disclosed by Kitaura. In addressing the combination of Kitaura and Kato, Petitioner does not rely on Kato in a manner that would remedy the deficiency in Petitioner’s reliance on Kitaura, as discussed above. Thus, we determine Petitioner has not demonstrated a reasonable likelihood of prevailing on its assertion that claims 1–11 are unpatentable over Kitaura or that claims 1–11 are unpatentable over the combination of Kitaura and Kato.” slip op. at 19

  § 102 anticipation§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 7,190,408
• Netflix, Inc. v. Realtime Adaptive Streaming LLCNo claims unpatentable
  PTAB · Jan 14, 2020 · IPR2018-01227 · APJ Gregg I Anderson · IPR · Final written decision

  Claims 1–19 were not determined unpatentable because Netflix failed to prove anticipation by Tian or obviousness over the asserted combinations.

  RulingsFinal written decision

  • Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner

    “multiple embodiments Petitioner cites to support the Petition or to find that they are combinable. Kennametal and Blue Calypso reach a different result from Net MoneyIN on distinguishable facts. Blue Calypso relied on “key factors” absent from Net MoneyIn, including expert testimony that a person of ordinary skill would have understood the reference to disclose “the ability to combine the tools to arrive at the invention recited.” Blue Calypso, 815 F.3d at 1343. No such expert testimony is present here. Kennametal held that a reference must be “sufficiently clear in disclosing the combinability” of elements “such that a skilled artisan would ‘at once envisage’ the claimed combination.” Chamberlain Grp., Inc. v. Techtronic Indus. Co., 935 F.3d 1341, 1350 (Fed. Cir. 2019). We find that Tian is not sufficiently clear that the artisan would at once envisage the combinability of the embodiments disclosed. Indeed, Tian is lengthy and unclear in its description of the various “embodiments,” “applications,” and “implementations.” We credit the Zeger Declaration testimony that Tian discloses multiple different systems “often in a very confusing and complicated manner.” See Ex. 2001 ¶¶ 75– embodiments disclosed in Tian is indeterminate but is a “large number.” Id. ¶ 74; see also Ex. 2002, 42:2–15 (Storer Deposition testimony that “Tian uses the word ‘embodiment’ in many places, in many different ways”). The Zeger testimony is not countered by any testimony from Dr. Storer from either of his declarations or in his deposition. Neither the First nor Second Storer Declaration discusses the embodiment issue at all. The Second Storer Declaration, submitted after the Zeger Declaration, makes no mention of Tian. There is no expert testimony supporting Petitioner’s position that the teachings are combinable. See Blue Calypso, 815 F.3d at 1343 (distinguishing over Net MoneyIn because of expert testimony). Petitioner’s showing requires combining multiple embodiments of Tian without any showing that they would have been combinable or that a person of ordinary skill would immediately envisage they would have been combinable. In sum, in light of Petitioner’s reliance on multiple embodiments of Tian, Petitioner has not established, by a preponderance of the evidence, that Tian anticipates claim 1. 3. “decoding only that part of the composite frame (FC) which contains” slip op. at 16

  • Skill levelSkill level petitioner adoptedOther

    “Petitioner alleges a person of ordinary skill in the art would have a bachelor’s degree in electrical engineering, computer science, or a similar field with at least two years of experience in data compression or a person with a master’s degree in electrical engineering, computer science, or a similar field with a specialization in data compression. Ex. 1003 at ¶60. A POSITA would also have had experience with video reproduction systems. Id. A person with less education but more relevant practical experience may also meet this standard. Id. Pet. 11. Patent Owner adopts Petitioner’s proposed level of ordinary skill. PO Resp. 10 (citing Ex. 2001 ¶ 29). We find Petitioner’s proposed level of ordinary skill is applicable to the ’298 patent.” slip op. at 21

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner

    “Neither party’s arguments require us to deviate from the plain and ordinary meaning of “determining the area.” We find that the plain and ordinary meaning of “determining the area” requires identifying one of two frames, the recited “said one image” of limitation 1.e. Once an image is identified, the Specification describes how to determine “the region occupied by one of the two stereoscopic images” and that metadata is used to “determine such areas.” Ex. 1001, 4:17–30; see also PO Resp. 52–53 (citing Ex. 2001 ¶¶ 129–130 (citing the Specification)).” slip op. at 25

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

    “multiple embodiments Petitioner cites to support the Petition or to find that they are combinable. Kennametal and Blue Calypso reach a different result from Net MoneyIN on distinguishable facts. Blue Calypso relied on “key factors” absent from Net MoneyIn, including expert testimony that a person of ordinary skill would have understood the reference to disclose “the ability to combine the tools to arrive at the invention recited.” Blue Calypso, 815 F.3d at 1343. No such expert testimony is present here. Kennametal held that a reference must be “sufficiently clear in disclosing the combinability” of elements “such that a skilled artisan would ‘at once envisage’ the claimed combination.” Chamberlain Grp., Inc. v. Techtronic Indus. Co., 935 F.3d 1341, 1350 (Fed. Cir. 2019). We find that Tian is not sufficiently clear that the artisan would at once envisage the combinability of the embodiments disclosed. Indeed, Tian is lengthy and unclear in its description of the various “embodiments,” “applications,” and “implementations.” We credit the Zeger Declaration testimony that Tian discloses multiple different systems “often in a very confusing and complicated manner.” See Ex. 2001 ¶¶ 75– embodiments disclosed in Tian is indeterminate but is a “large number.” Id. ¶ 74; see also Ex. 2002, 42:2–15 (Storer Deposition testimony that “Tian uses the word ‘embodiment’ in many places, in many different ways”). The Zeger testimony is not countered by any testimony from Dr. Storer from either of his declarations or in his deposition. Neither the First nor Second Storer Declaration discusses the embodiment issue at all. The Second Storer Declaration, submitted after the Zeger Declaration, makes no mention of Tian. There is no expert testimony supporting Petitioner’s position that the teachings are combinable. See Blue Calypso, 815 F.3d at 1343 (distinguishing over Net MoneyIn because of expert testimony). Petitioner’s showing requires combining multiple embodiments of Tian without any showing that they would have been combinable or that a person of ordinary skill would immediately envisage they would have been combinable. In sum, in light of Petitioner’s reliance on multiple embodiments of Tian, Petitioner has not established, by a preponderance of the evidence, that Tian anticipates claim 1. 3. “decoding only that part of the composite frame (FC) which contains” slip op. at 16

  Patent outcomesUS 9,578,298 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Graham
  Patents in suitUS 9,578,298
• RPX Corporation v. Publishing Technologies, LLCAll claims unpatentable
  PTAB · Jan 7, 2020 · IPR2018-01131 · APJ Kamran Jivani · IPR · Final written decision

  Claims 1, 5, 9–11, and 16–20 are unpatentable as anticipated by Underwood and/or obvious over Underwood or Austin, with claim 19 also obvious over combinations including Tsakiris.

  RulingsFinal written decision

  • PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner

    “The Federal Circuit directs in Worlds: [A]n IPR petitioner’s initial identification of the real parties-in-interest should be accepted unless and until disputed by a patent owner. And although we disagree with treating this initial acceptance as a ‘rebuttable presumption’ that formally shifts a burden of production to the patent owner, we agree that a patent owner must produce some evidence to support its argument that a particular third party should be named a real party-in-interest. Worlds, Inc., 903 F.3d at 1242. We do not opine here on the amount of evidence sufficient under Worlds to support Patent Owner’s argument that Google should be named a real party-in-interest. Rather, assuming arguendo that Patent Owner has made that threshold showing by identifying a preexisting relationship between Petitioner and Google, the latter party of which undisputedly is subject to the Section 315(b) time bar with respect to the ’342 patent, we determine for the following reasons that Petitioner has adduced sufficient record evidence to show that Google is not a real party-in-interest to this proceeding.” slip op. at 12

  • PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner

    “Worlds, Inc., 903 F.3d at 1242. We do not opine here on the amount of evidence sufficient under Worlds to support Patent Owner’s argument that Google should be named a real party-in-interest. Rather, assuming arguendo that Patent Owner has made that threshold showing by identifying a preexisting relationship between Petitioner and Google, the latter party of which undisputedly is subject to the Section 315(b) time bar with respect to the ’342 patent, we determine for the following reasons that Petitioner has adduced sufficient record evidence to show that Google is not a real party-in-interest to this proceeding.” slip op. at 12

  • Prior constructionPrior construction adoptedDecided for patent owner

    “web site designed to be accessed by a mobile device.” PO Resp. 10. The United States District Court for the Southern District of New York adopted this construction during a claim construction hearing regarding U.S. Patent No. 7,599,983, of which the ’342 patent is a continuation. Ex. 2001, 57–58. Petitioner does not dispute the Patent Owner’s construction. Tr. 18:10–15 (stating Petitioner does not dispute application of the District Court’s constructions in this proceeding), 18:23–24 (addressing the District Court’s construction of the term “mobile web site”). Having reviewed the Specification of the ’342 patent, we find the District Court’s construction to be supported by the Specification. Based on the full record developed during this trial, we find no need to depart from the District Court’s construction, and therefore, adopt it as our own. Accordingly, we construe the term “mobile web site” as a web site designed to be accessed by a mobile device.” slip op. at 20

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner asserts that a person of ordinary skill in the art (“skilled artisan”) at the time of the invention would have attained “a bachelor’s degree in computer science, computer engineering, or a related field and two years of experience working in development of web-based content and/or applications.” Pet. 3–4 (citing Ex. 1002 ¶ 17). Petitioner adds that “[i]ndividuals with additional education or additional industry experience could be a [person of ordinary skill in the art] if the additional aspect Owner does not address the level of ordinary skill of a skilled artisan. See generally PO Resp. We regard Petitioner’s formulation of the level of skill as consistent with the prior art before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill). Thus, we adopt Petitioner’s proposal.” slip op. at 28

  Patent outcomesUS 7,908,342 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,908,342
• SPTS Technologies Ltd. v. Plasma-Therm LLCNo claims unpatentable
  PTAB · Aug 26, 2019 · IPR2018-00618 · APJ Elizabeth M Roesel · IPR · Final written decision

  Claims 1 and 2 were not shown unpatentable because Singh was not shown to be prior art; the Board did not reach the obviousness ground.

  RulingsFinal written decision

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

    “Petitioner proposes constructions for six claim terms. Pet. 32–38. Patent Owner contends that no claim term requires construction. PO Resp. 6–7. We determine that no claim term requires express construction for purposes of resolving the controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe 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)). B.” slip op. at 11

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “Level of Ordinary Skill in the Art In the Institution Decision, we adopted Patent Owner’s definition of a person of ordinary skill in the art (“POSITA”). Dec. 13. According to Patent Owner, a POSITA would have at least a Bachelor’s or Master’s degree in electrical engineering, chemical engineering, materials science, physics or chemistry, or a similar field, and at least three to four years of experience in process development or process engineering related to plasma etching. Alternatively, this person would have a Ph.D. in physics, chemistry, electrical engineering, materials science or a similar field. Prelim. Resp. 9. In the Institution Decision, we rejected Petitioner’s description of the field in which a POSITA would have had work experience as inconsistent with scope of technology described in the ’332 patent. Pet. 31; Dec. 12–13. Neither party challenges our determinations regarding the level of ordinary skill in the art, as set forth in the Institution Decision. Accordingly, in this final written decision, we continue to apply Patent Owner’s definition of a POSITA quoted above.” slip op. at 12

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner
  • Disclosure Requirements (§112) › Written description (Ariad)Written description adequateEntitled to earlier dateDecided for patent owner

    “to a POSITA that the invention possessed by the inventors includes “the frame of the work piece having an exposed lower surface,” as recited in claim 1. Ex. 1001, 16:8–9. Our finding is supported by the following disclosures of the ’450 application and the corresponding disclosures of the ’119 parent application. Ex. 1008, 14 (“As is shown in Figure 3, the thinned substrate is then adhered to a thin tape (5) which in turn is mounted to a rigid frame (6).”); id. at 17 (“The transfer arm may support both the tape and frame or the frame alone.”); id. at 18 (“The lift mechanism touches the frame area and provides no point contact to the substrate.”); id. (“Figure 13 shows the lift mechanism contacting the frame from the underside.”); Ex. 1009, 18, 22, 24. Our finding is supported by the testimony of both parties’ experts concerning how a POSITA would have understood the disclosures of the priority applications. Ex. 2002 ¶¶ 53, 54; Ex. 2010, 41:24–42:20, 49:18– 50:4, 51:8–15, 59:21–61:2. Our finding is supported by Petitioner’s contentions and the testimony of both parties’ experts concerning conventional techniques for joining a tape to a frame known to a POSITA at the time the ’450 provisional application was filed. Pet. 65–66; Ex. 1013 ¶¶ 32, 125–127; Ex. 2002 ¶¶ 54, 55; Ex. 2009 ¶¶ 11–15; Ex. 2010, 13:13– 20, 16:1–6, 17:9–17, 23:8–24:16. Our finding is also supported by Dr. Spencer’s declaration testimony concerning the meaning of “a portion of the work piece overlapped by the frame” (Ex. 1013 ¶¶ 82, 83) and his admission that “the frame area” in the ’450 provisional application has the same meaning (Ex. 1028 ¶ 10). It is true that the drawings of the priority applications do not show the frame of the work piece as having an exposed lower surface. Nor do they show the frame as having flat edges or notches such that conventional methods for cutting the tape would leave portions exposed, i.e., not covered by tape. Nevertheless, in view of the record as a whole, including the parties’ and experts’ agreement that the frame of the work piece having an exposed lower surface is conventional, we are persuaded that the priority applications reasonably convey to a POSITA that this feature is part of the invention possessed by the inventors. Tr. 19:1–4; Pet. Reply 6; PO Resp. 14–17; Pet. 65–66; Ex. 1013 ¶¶ 125–127; Ex. 2002 ¶¶ 54, 55; Ex. 2009 ¶¶ 11–15; Ex. 2010, 23:8–24:16. See Hologic, 884 F.3d at 1362 (“The written description does not require that every claimed element be illustrated in the figures, particularly in predictable arts and where the element not depicted is conventional and not ‘necessary for the understanding of the subject matter sought to be patented.’” (quoting 35 U.S.C. § 113)).” slip op. at 38

  Patent outcomesUS 8,785,332 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites KSR · Graham
  Patents in suitUS 8,785,332
• Power Integrations, Inc. v. Semiconductor Components Industries, LLCSome claims unpatentable
  PTAB · May 23, 2019 · IPR2018-00180 · APJ Kamran Jivani · IPR · Final written decision

  Claims 4–7, 9–16, and 18 are unpatentable over Hwang or Hwang and Balakrishnan; claim 17 was not shown unpatentable over Hwang.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “Although the parties formulate slightly differently their respective assessments of the skill level, neither party disputes directly the other’s assessment nor makes any arguments related to the assessments. See generally Pet.; PO Resp. The ’221 patent states its disclosure “relates, in general, to integrated circuits and, more particularly, to power converter integrated circuits.” Ex. 1001, 1:9–11. In view of the foregoing, we adopt Patent Owner’s formulation of the level of ordinary skill in the art. Further, this level of ordinary skill is reflected by the prior art of record. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art itself can reflect the appropriate level of ordinary skill in the art).” slip op. at 8

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner

    “construction must begin with the words of the claims themselves.”); In re NTP, Inc., 654 F.3d 1279, 1288 (Fed. Cir. 2011) (citing Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc)) (“As with any claim construction analysis, we begin with the claim language.”). None of the challenged claims (nor even unchallenged claim 8) recites the claimed disabling or terminating occurs in response to the detect signal independent of other circuit conditions or in response only to the detect signal. See Ex. 1001, 12:5–14:36. For instance, independent claim 4 merely recites, “wherein the control circuit disables the switched drive control signal in response to the detect signal.” Id. at 12:49–51. Independent claim 7 similarly recites, “wherein the gating circuit disables the drive control signal in response to the detect signal.” Id. at 13:11–13. Independent claim 9 discloses only, “a first comparator . . . having an output for disabling the pulse generator.” Id. at 13:27–30. Finally, independent claim 15 requires, “comparing the error signal to a reference signal . . . to terminate the step of generating in response to the error signal.” Id. at 14:21–23. Therefore, the plain language of the challenged claims does not, standing alone, support adoption of Patent Owner’s proposed construction.” slip op. at 13

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “testimony from their respective declarants on whether one of ordinary skill in the art would understand “in response to” as requiring “independent of other circuit conditions.” Compare Reply 2–3 (citing Ex. 1016 ¶¶ 18–21, 26–30; Ex. 2003, 43:16–45:1) with PO Resp. 14–15, 17 (citing Ex. 2001 ¶¶ 42, 44–45.) and Sur-Reply 11–12 (citing Ex. 2001 ¶ 45). Patent Owner further directs our attention to a single sentence of deposition testimony in which Petitioner’s declarant Dr. Szepesi appears to agree with Patent Owner’s construction by stating, in the context of claim 9, that “the output signal of this first comparator disables the output pulses driving the gate of that independent of anything else.” PO Resp. 8 (citing Ex. 2003, 44:16– 45:1). Petitioner rebuts Patent Owner’s arguments by identifying additional deposition testimony and statements made in a second declaration offered by Dr. Szepesi opposing Patent Owner’s construction. Reply 2–3 (citing Ex. 1016 ¶¶ 18–21, 26–30; Ex. 2003, 43:16–45:1). For instance, immediately before the statement Patent Owner cites, Dr. Szepesi testified: Q: “So is it your opinion that an output for disabling the pulse generator must disable the pulse generator regardless of the other conditions in the circuit?” . . . A: “I don't understand your question. I said disabling the pulse generator means that the output of the pulse generator which is providing the pulses to the gate of the main switch, those pulses are disabled. That’s what it means in my opinion in this context.” Ex. 2003, 43:24–44:9. And, in his supplemental declaration, Dr. Szepesi states: As a first matter, I opined during my deposition that “an output disabling a pulse generator” means that “the output signal of this first comparator disables the output pulses driving the gate of that independent of anything else.” But, at the time of my deposition I had not done a focused claim construction analysis of the limitation “a first comparator […] having an output for disabling the pulse generator.” This is because I hadn’t anticipated there being a dispute relevant to the validity analysis in view of what I understood as the plain meaning of the language. Despite the quote that Patent Owner relied upon, I believe now that a POSITA would not understand the claim language to require the first comparator to disable the output pulses independent of anything else. This belief is consistent with my responses to the first two of three successive questions in which I was asked about “disabling the pulse generator.” It is my opinion that the operation of the disclosed embodiment requires the presence of other conditions precedent before the first comparator can disable the drive pulses and this requirement is not excluded by the claim language. Ex. 1016 ¶ 18 (emphasis added). Our reviewing court has made clear that extrinsic evidence “is generally of less significance than the intrinsic record” in matters of claim construction. Wi-LAN, Inc. v. Apple Inc., 811 F.3d 455, 462 (Fed. Cir. 2016) (citation omitted). Here, beyond competing declarant testimony, neither party has entered into the record extrinsic evidence, such as dictionary definitions or contemporaneous usage in the art, addressing the scope of “in response to.” Having considered the testimony upon which Patent Owner relies and weighing it against the claim language itself, the Specification’s disclosures set forth above, and the contrary testimony of Petitioner’s declarant, we find on balance that it does not warrant departing from the plain and ordinary meaning of “in response to” as Patent Owner urges. See In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (holding that an inventor may define specific terms used to describe invention, but must do so “with reasonable clarity, deliberateness, and precision”) (quoting Intellicall, Inc. v. Phonometrics, Inc., 952 F.2d 1384, 1387-88 (Fed. Cir. 1992)).” slip op. at 17

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

    “Claim 4 further recites, “a control circuit having an input coupled for receiving the detect signal, wherein the control circuit disables the switched drive control signal in response to the detect signal.” Patent Owner’s sole contention with respect to claim 4 is that “[t]he alleged detect signal in Hwang does not satisfy this limitation” because “unlike the ’221 patent, the alleged ‘control circuit’ does not disable the switched drive control signal ‘in response to the detect signal’ independent of other circuit conditions.” PO Resp. 15–16. As discussed above, we decline to import into claim 4 a requirement that the claimed disabling must occur independent of other circuit conditions. See supra Section III.C.1. Because Patent Owner’s argument relies on a claim construction that we rejected above, we are not persuaded that Hwang fails to meet the limitations of claim 4. Rather, having reviewed the evidence cited by Petitioner, we agree with Petitioner that Hwang discloses the limitations of independent claim 4, arranged as recited in the claim. Petitioner’s analysis, as supported by the Szepesi Declaration, further demonstrates where Petitioner contends each element of dependent claims 5 and 6 is disclosed in Hwang. Pet. 21–24. Patent Owner does not dispute Petitioner’s analysis beyond the argument raised with respect to claim 4. See PO Resp. 17. Having reviewed the evidence cited by Petitioner, we agree with Petitioner that Hwang discloses the limitations of dependent claims 5 and 6, arranged as recited in these claims, and we adopt that analysis as our own. Accordingly, for the foregoing reasons, we find Petitioner has shown by a preponderance of the evidence that Hwang anticipates claims 4–6.” slip op. at 25

  Patent outcomesUS 6,597,221 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 6,597,221
• Roland Corporation v. Inmusic Brands, Inc.Rehearing denied
  PTAB · Dec 20, 2018 · IPR2018-00335 · APJ Debra K Stephens · IPR · Rehearing

  The Board denied rehearing of its decision denying institution, finding no overlooked or misapprehended basis to show the claimed acoustic noise reducing cavity in the cited references or their combination.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. ANALYSIS A request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply” (37 C.F.R. § 42.71(d)). The party challenging a decision bears the burden of showing the decision should be modified (id.).” slip op. at 3

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

    “It is well settled that a prior art reference may anticipate when the claim limitations not expressly found in that reference are nonetheless inherent in it. Under the principles of inherency, if the prior art necessarily functions in accordance with, or includes, the claimed limitations, it anticipates” (In re Cruciferous Sprout Litig., 301 F.3d 1343, 1349 (Fed. Cir. 2002) (citations and internal quotation marks omitted)). “[A]nticipation by inherent disclosure is appropriate only when the [single prior art] reference discloses prior art that must necessarily include the unstated limitation.” Transclean Corp. v. Bridgewood Servs., Inc., 290 F.3d 1364, 1373 (Fed. Cir. 2002) (citation omitted). “Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.” Cont'l Can Co. USA, Inc. v. Monsanto Co., 948 F.2d 1264, 1269 (Fed. Cir. 1991) (internal quotation marks and citations omitted). Rather, “[t]he inherent result must inevitably result from the disclosed steps....” In re Montgomery, 677 F.3d 1375, 1380 (Fed. Cir. 2012) slip op. at 3

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

    “As set forth above, we were not persuaded by Petitioner’s arguments that Puschner anticipated an acoustic noise reducing cavity. Moreover, as we stated in our Decision, Petitioner did not “identify where Yoshino ’117, directed to an ‘electronic percussion instrument and vibration detection apparatus,’ teaches or suggests the claimed ‘acoustic noise reducing cavity’” (Dec. 21). Petitioner provided no cites to Yoshino ’117 to support its assertion that Yoshino ’117 teaches “an acoustic noise reducing cavity in an electronic drum” in either the Petition or the Declaration of Dr. Paradiso with respect to this asserted ground (Pet. 19–20; Ex. 1002 ¶ 74). We also determined Petitioner had not proffered persuasive argument as to why an ordinarily skilled artisan would have found it obvious to combined the teachings (Dec. 21). Rather, Petitioner merely proffered the conclusory statement that “it would have been obvious” because of “a desire to reduce acoustic sound . . .” (Pet. 19–20) –– i.e., it would have been obvious to have the recited feature. Moreover, we determined Petitioner had not “explained how the teachings of Puschner’s and Yoshino ’117’s different structures would have been combined to teach the invention,” as recited in claim 15 (Dec. 21). Petitioner has not identified any matter that the Board misapprehended or overlooked, or identified where each matter was previously addressed, in the relevant portions of the Petition or cited evidence. Petitioner did not fully address how the references taught the limitation or the reasons for combining the teachings.” slip op. at 6

  § 102 anticipation§ 103 obviousness
  Patents in suitUS 9,424,827
• Unified Patents Inc. v. Intellectual Ventures II, LLCRehearing denied
  PTAB · Sep 27, 2018 · IPR2016-01404 · APJ Kamran Jivani · IPR · Rehearing

  The Board granted the motion to excuse late filing and denied rehearing, maintaining that claims 1, 2, 13, 14, 33, 34, 39, 46, and 48 were not shown unpatentable over Bensimon.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “The burden of showing a decision should be modified lies with the party challenging the decision . . .” who “must specifically identify all matters the party believes [we] misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” 37 C.F.R. § 42.71(d). Petitioner’s argument is predicated upon a mischaracterization of our factual findings. Petitioner asserts that we found Bensimon “taught all of the elements of the claim in ‘one possible mode of operation.’” Reh’g Req. 1 (citing Decision 17). We, however, made no such finding. The phrase that Petitioner attributes to us—namely, “one possible mode of operation”—does not appear anywhere in our Final Written Decision. Compare Reh’g Req. 1 (citing Decision 17) to Decision 17. Contrary to Petitioner’s assertions, we did not find “that Bensimon sometimes teaches all of the elements of the claim” nor did we find “that Bensimon discloses a ‘restricted-access mode’ by disclosing a ‘write protection’ mode.” Reh’g Req. 1–3 (citing Decision, 16–17). Rather, we found the exact opposite—that Bensimon fails to disclose the claimed restricted-access mode because, as claimed, that mode requires the absence of the claimed device-specific security information (i.e. the read/write password, or alternatively the combination of the read/write password and password-enabling flag). Decision 16–17 (citing Reply 16– 22) (“Petitioner identifies Bensimon’s read/write password, alone or in combination with the password-enabling flag, as the device-specific security information, yet Petitioner does not identify in Bensimon an explicit disclosure that Bensimon’s storage device operates in the claimed restricted-access mode when the read/write password is absent from the device.”) (bolding added; italics original). slip op. at 5

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

    “claim” nor did we find “that Bensimon discloses a ‘restricted-access mode’ by disclosing a ‘write protection’ mode.” Reh’g Req. 1–3 (citing Decision, 16–17). Rather, we found the exact opposite—that Bensimon fails to disclose the claimed restricted-access mode because, as claimed, that mode requires the absence of the claimed device-specific security information (i.e. the read/write password, or alternatively the combination of the read/write password and password-enabling flag). Decision 16–17 (citing Reply 16– 22) (“Petitioner identifies Bensimon’s read/write password, alone or in combination with the password-enabling flag, as the device-specific security information, yet Petitioner does not identify in Bensimon an explicit disclosure that Bensimon’s storage device operates in the claimed restricted-access mode when the read/write password is absent from the device.”) (bolding added; italics original).” slip op. at 6

  § 102 anticipation
  Patents in suitUS 6,968,459

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.