- Quest USA Corp. v. Popsockets LLCRehearing deniedPTAB · Oct 5, 2020 · IPR2018-00497 · APJ Christa P Zado · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving in place its final decision that claims 9–11, 16, and 17 are unpatentable as anticipated by Grinfas.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“Under 37 C.F.R. § 42.71(d), “[t]he burden of showing a decision should be modified lies with the party challenging the decision. The request 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.” For the reasons discussed below, we deny the Rehearing Request.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“We decline to reconsider our construction. In the Final Decision, we declined to use the phrase “pleated folds” in our construction—a phrase that is not used anywhere in the ’031 patent—and instead adopted the terminology actually used in the patent, i.e., hinges, flexural hinges, and flexural membranes. Final Dec. 21–22. We cited portions of the ’031 patent that use the term “accordion,” noting the patent consistently describes an “accordion” as having “flexural hinges or flexural membranes that include hinges that facilitate extending/expanding and collapsing the accordion.” Id. at 20 (citing Ex. 1001, 5:50–53, 5:56–67, 6:7–16). As discussed in the Final Decision, Patent Owner provided insufficient basis to “replace the term actually used in the Specification [to describe accordions] . . . with a term that is not used in the Specification.” Id. at 20–21. Consistent with the use of the term “accordion” in the ’031 patent, we interpreted “accordion” as “a structure that has hinges, such as flexural hinges or flexural membranes, that fold so as to facilitate extending/expanding and collapsing of the accordion.” Id. at 19. We are not persuaded we erred in adopting a construction that uses the phrase “flexural hinges or flexural membranes” rather than one that uses the phrase “pleated folds.” See id. at 19–24 (explaining that the intrinsic evidence supports our adopted construction of “accordion”).” slip op. at 4
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureInherency foundDecided for petitioner
“inherently discloses the recited use in the claim limitation “a securing element for attaching the socket to the back of the portable media player or portable media player case.” Req. Reh’g 4 (citing Final Dec. 59–60). Patent Owner suggests that we arrived at this conclusion based on our understanding that “Patent Owner did not dispute that this element is inherently disclosed.” Id. (citing Final Dec. 59–60).1 Contrary to Patent Owner’s suggestion, our finding that Grinfas provides inherent disclosure was not based on whether Patent Owner disputed this issue. Rather, it was based on the evidence and arguments provided by Petitioner. Final Dec. 60– 64. For example, we credited the testimony of Petitioner’s expert, Dr. Glenn E. Vallee, Ph.D., that the securing structures in Grinfas were inherently capable of attaching to the back of a telephone because it was supported by 1 We note that the cited portion of our Final Decision addressed whether certain elements in Grinfas (e.g., adhesive pad 46, fastenable straps 54, and attachment portion 92) are “securing elements”—i.e., whether they are securing or fastening—but it did not address whether Grinfas inherently discloses how such elements are used—i.e., whether they are inherently capable of fastening to the back of a portable media player. That issue is addressed at pages 62–68 of our Final Decision. the record. Final Dec. 63–64 (citing Ex. 1004 ¶ 67; Ex. 1005, 8:3–9, Figs. 4A–B). The Rehearing Request does not acknowledge or address the explanation provided in the Final Decision, much less identify what we might have misapprehended or overlooked in finding Dr. Vallee’s testimony to be credible and supported by the record. Req. Reh’g 4. For the foregoing reasons, Patent Owner has not shown that we misapprehended or overlooked any matter in finding Grinfas discloses a securing element inherently capable of being attached to the back of a portable media player.” slip op. at 9
- PTAB / AIA Trials › Constitutional / APA (Arthrex, Oil States, due process)Decided for petitioner
“We did not provide an express construction of the term “accordion” in the Decision Instituting Inter Partes Review, finding that no terms required express construction at that time. Paper 8, 8 (“Inst. Dec.” or “Institution Decision”). However, we rejected Patent Owner’s preliminary proposal that an “accordion” must be a “structure with pleated folds so as to collapse like the bellows of a musical accordion,” explaining the ’031 patent describes accordions as having flexural hinges that allow the walls of the accordion to fold up generally in parallel to each other, rather than stacking on top of one another. Inst. Dec. 22–26. Citing numerous disclosures in the ’031 patent describing an “accordion” as a structure having flexural hinges, we preliminarily determined “the term ‘accordion’ includes structures that have flexural hinges.’” Id. at 24 (citing Ex. 1001, 1:45–48, 5:50–53, 6:7–31, Fig. 3A, Fig. 3B, Fig. 5). Accordingly, we determined on the preliminary record that the term “accordion” did not preclude the structure in Grinfas, which has flexural hinges that flex and fold. Id. at 24–25. Therefore, our Decision on Institution gave Patent Owner notice and the opportunity to address our interpretation of an “accordion” as including structures that have flexural hinges. Id. at 24. During trial, although Patent Owner maintained its position that “accordion” should be construed as having “pleated folds,” PO Resp. 5, Patent Owner agreed with our preliminary determination that the term “accordion” may include structures with flexural hinges, id. at 19–20. However, Patent Owner argued that not all structures with flexural hinges are “accordions,” because there were well-known non-accordion structures that have flexural hinges. Id. at 20. In accordance with Patent Owner’s argument that not all structures having flexural hinges are “accordions,” in the Final Decision we clarified that the flexural hinges fold “so as to facilitate extending/expanding and collapsing of the accordion.” Final Dec. 20, 22–23. This clarification did not violate the APA or due process because it did not alter any requirements in the claims, which recite that the accordion is capable of extending (i.e., extending/expanding) and retracting (i.e., collapsing). See Ex. 1001, 7:65–8:3 (claim 9). Moreover, the outcome of the Final Decision would have been the same regardless of the clarification that not all structures with flexural hinges are an “accordion.” The clarifying language in our construction in the Final Decision clarifies that structures not present in Grinfas would not meet our construction of “accordion.” Accordingly, had we not included the clarification, the outcome of our Final Decision would have been the same.” slip op. at 11
Claim construction§ 102 anticipationPatents in suitUS 8,560,031 - Donner Technology, LLC v. Pro Stage Gear, LLCRehearing grantedPTAB · Nov 9, 2018 · IPR2018-00708 · APJ John A Hudalla · IPR · Rehearing
The Board granted rehearing and instituted review of claims 9–13 and 22–30 on all petition grounds, finding a reasonable likelihood of prevailing on the asserted obviousness challenges.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“for an abuse of discretion. See 37 C.F.R. § 42.71(c). The party requesting rehearing has the burden of showing the decision should be modified, which” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“SCC-700 and Mullen teaches all the limitations of claim 9. Pet. 35–54. Petitioner has also provided a reason with a rational underpinning for combining Mullen with SCC-700. Id. at 43–44. Thus, Petitioner has established a reasonable likelihood that it would prevail in showing that the subject matter of claim 9 would have been obvious over the combination of SCC-700 and Mullen.” slip op. at 10
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“Institution, our determination that Mullen is nonanalogous art was based on defining the relevant problem as “guitar effects pedal mounting.” Dec. 20. Notwithstanding, Petitioner does present some evidence that a problem addressed by Mullen—namely, providing wiring channel space under shelf parts—is reasonably pertinent to a problem recognized in the ’023 patent— namely, providing an area for cable routing and placement in a pedal effects mounting board.” slip op. at 3
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedReference is prior artDecided for petitioner
“For purposes of this Decision, we determine that SCC-700 qualifies as prior art under § 102(b) based on Petitioner’s evidence of public dissemination of SCC-700 during the 1980s. See Pet. 20–23. The public dissemination of SCC-700 occurred more than one year before the earliest possible effective filing date of the challenged claims, which is September 7, 1999. Ex. 1001, [60].” slip op. at 7
§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSRPatents in suitUS 6,459,023 - Edwards Lifesciences Corporation v. Boston Scientific Scimed, Inc.Some claims unpatentablePTAB · Oct 31, 2018 · IPR2017-01281 · APJ James A Tartal · IPR · Final written decision
Claims 5, 6, 8–12, 14, 16, and 17 are unpatentable: claim 5 is anticipated by Dlugos; the remaining claims are obvious over the specified combinations.
RulingsFinal written decision- BurdenMixed
“evidence discussed in the Petition, including the declaration of Mr. Trotta. For the reasons that follow, we determine that Petitioner has shown by a preponderance of the evidence that claim 5 is anticipated by Dlugos and would have been obvious over Dlugos and Eskaros; that claim 8 would have been obvious over Dlugos, Eskaros, and Hijlkema; that claims 6, 14, and 16 would have been obvious over Dlugos, Eskaros, and Forman; that claims 9, 10, and 12 would have been obvious over Dlugos, Eskaros, and Traxler; that claim 11 would have been obvious over Dlugos, Eskaros, Traxler, and Forman; and that claim 17 would have been obvious over Dlugos, Eskaros, Forman, and Becker.” slip op. at 24
- Expert testimonyPetitioner expert discountedOther
“shown that Dlugos necessarily teaches first and second cone regions of the balloon having at least one fold in the fully inflated state. Moreover, we find Mr. Trotta’s testimony in support of Petitioner’s contention insufficient. According to Mr. Trotta: When folds are welded down, as shown in the figure 3, it would necessarily result in folds remaining in the transition/cone regions of the balloon when the balloon is inflated, and even when fully inflated to the specifications on the label. Because the folds are captured within the welded region, even when the balloon is fully inflated, the pressure will distribute such that there is more pressure in the working region and less pressure at the transition regions. Thus, there is insufficient pressure in the transition cone regions for the folds to be completely removed. Ex. 1005 ¶ 119. Mr. Trotta cites no support for his opinions and offers no plausible explanation for why “pressure will distribute such that there is more pressure in the working region and less pressure at the transition regions,” rather than equal pressure throughout the interior space of a balloon. Nor are we persuaded that statements by the Examiner during prosecution identified by Petitioner, which Patent Owner contends were later abandoned by the Examiner, are sufficient to establish the inherency of the claimed feature. See Pet. 39–40; Prelim. Resp. 14–15. Petitioner has not shown by a preponderance of the evidence that Dlugos teaches “first and second cone regions of the balloon having at least one fold in the fully inflated state” because Petitioner has not shown that Dlugos necessarily teaches any cone region having at least one fold in the fully inflated state, much less both a first and a second cone region, in the absence of a persuasive showing that Dlugos teaches welding both ends of the balloon to the shaft.” slip op. at 40
- Skill levelSkill level petitioner adoptedDecided for petitioner
“of the claimed invention would have had either of the following qualifications: (1) “an undergraduate degree in mechanical manufacturing or material science engineering, as well as at least five years of experience in the industry working with catheters and balloons and the manufacturing of those devices; or without an undergraduate degree,” or (2) “ten years of working experience designing, manufacturing and/or overseeing the processes for designing and/or manufacturing the tools and/or the devices.” Pet. 14. Mr. Trotta supports Petitioner’s contention with regard to the level of ordinary skill in the art. Ex. 1005 ¶ 57. Patent Owner does not contest Petitioner’s asserted level of ordinary skill in the art. See Prelim. Resp. 6 n.3. Based on the evidence provided, including the prior art of record, we agree with Petitioner’s proposed level of ordinary skill and also find that the prior art of record further reflects the level of ordinary skill in the art. See also Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (noting that the prior art of record may reflect the level of ordinary skill in the art).” slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for patent owner
“For the following reasons, we find insufficiently supported and unreasonably broad Petitioner’s contention that “fold” broadly includes all “lobes,” “wraps,” “wrappings,” and “protrusions,” even if those terms appear in some context in patent applications incorporated by reference to the ’767 patent. Petitioner neither identifies precisely where that context can be found in the record of this proceeding nor offers any explanation of that context to demonstrate by a preponderance of the evidence that the term, reasonably construed in light of the Specification of the ’767 patent, defines “fold” as including all “lobes,” “wraps,” “wrappings,” and “protrusions.” The mere incorporation by reference of other applications into the Specification of the ’767, absent further persuasive explanation, does not sufficiently support the proposition that the term “fold” broadly encompasses, for example, any “protrusion.” Moreover, Petitioner provides no explanation for why “examples of methods of balloon folding” that “reference” the terms “lobes,” “wraps,” “wrappings,” and “protrusions” demonstrate that the meaning of “fold” encompasses those terms. Finally, the ’767 patent expressly states that the term “fold”’ includes “pleats, wings, and any similar structure.” Ex. 1001, 3:62–63. Petitioner, however, makes no persuasive showing supported by more than conclusory assertions that all “lobes,” “wraps,” “wrappings,” and “protrusions” constitute “similar structure” to folds, pleats, or wings. Accordingly, we find the term “fold” in the ’767 patent encompasses “pleats, wings, and any similar structure.” Thus, “fold” also encompasses lobes, wraps, wrappings, or protrusions (or any other feature) only to the extent such feature constitutes “similar structure” to folds, pleats, or wings.” slip op. at 14
Patent outcomesUS 7,828,767 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,828,767 - Tricklestar LLC v. Embertec Pty Ltd.All claims unpatentablePTAB · Dec 20, 2017 · IPR2016-01336 · APJ Stacy B Margolies · IPR · Final written decision
Claims 1–4, 7, and 9 are unpatentable as anticipated by EP ’379; claims 5 and 6 are unpatentable as obvious over EP ’379 and EP ’752.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“We determine that the level of ordinary skill proposed by Petitioner and Petitioner’s declarant is consistent with the challenged patent and the asserted prior art, and we therefore adopt that definition of the level of ordinary skill in the art for the purposes of the analysis below. See Ex. 1001, 1:14–15 (“The invention relates to aspects of the monitoring of electrical power supply to electrical equipment.”); Ex. 1002 ¶ 1 (“The present invention relates to a method and system to provide power saving for electronic devices while such devices are in the standby mode and are not in use, particularly for a setting accommodating multiple electronic devices especially in the end-user sector.”); Ex. 1003 ¶ 1 (“The present invention relates to an automatic means switch device used to disconnect a load from” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We determine that we do not need to expressly construe “input” (claim 1), “electrical input” (claim 9), “sensor” (claims 1 and 9), and “alert device” (claim 5) to determine whether Petitioner has shown by a preponderance of the evidence that claims 1–7 and 9 are unpatentable.” slip op. at 11
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference is prior artDecided for petitioner
“EP ’379 was published April 22, 2009. Ex. 1002, [43]. Because EP ’379 was published before the earliest possible invention date of record in this proceeding, Petitioner has shown by a preponderance of the evidence that EP ’379 is prior art to claims 1–4, 7, and 9 of the ’099 patent at least under 35 U.S.C. § 102(a).” slip op. at 16
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Pet. 16. As illustrated above, Petitioner adds red ovals around what it contends, and with which we agree, correspond to the claimed sensor and microprocessor: infrared receiver unit 10 and microprocessor 12. Id. EP ’379 discloses that infrared receiver unit 10 is coupled to microprocessor 12 and that the infrared receiver unit monitors wireless output signals from a remote control. Ex. 1002, Fig. 3, ¶¶ 24, 26. Specifically, EP ’379 discloses that “the signals of the remote controls of electronic devices connected to the subject controller [are] sensed, identified, and interpreted by the controller.” Id. ¶ 23; see also id. ¶ 26 (stating that “the remote control signals controlling the devices connected to the controller can also be sensed by the controller”). According to EP ’379, “[t]he controller unit identifies as to which electronic device’s remote control the user has depressed by means of the signal receiver (10) on itself.” Id. ¶ 24. EP ’379 also discloses that the microprocessor terminates power supplied to the external electrical device based upon the absence of detection of signals from the remote control. Id. ¶ 26. EP ’379 states the following: The controller can be set to a predetermined time period in order to save power, and if no signal is received within this time period from a remote control of any device connected to it, the controller can turn OFF such devices in turn or at the same time according to a predetermined power saving rule. Id. EP ’379 adds an example of a user setting the automatic turn-off period to three hours. Id. Under this example, according to EP ’379, “if the user does not depress any key on any remote control of any electronic device connected to the controller, or if no signal is sensed by the controller within three hours, the controller may power off the electronic devices connected to itself in sequence according to an automatic turning-off rule.” Id. In sum, Petitioner shows by a preponderance of the evidence that claim 1 is unpatentable as anticipated by EP ’379.” slip op. at 20
Patent outcomesUS 9,106,099 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,106,099 - TCL Corporation / TCL Communication Technology Holdings, Ltd. et al. v. Telefonaktiebolaget L. M. EricssonAll claims unpatentablePTAB · Jan 31, 2017 · IPR2015-01650 · APJ Stacy B Margolies · IPR · Final written decision
Claims 1–3, 8, 9, 11, 12, and 15–19 are unpatentable as anticipated by King; claim 10 is unpatentable as obvious over King and Gilbert.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not challenge Dr. Goldberg’s testimony regarding the level of skill in the art. See generally PO Resp. However, Mr. Blackburn, Patent Owner’s declarant, opines that a person of ordinary skill in the art would probably have had a graduate degree in computer engineering, electrical engineering, applied physics, or a related field, and at least three years’ experience in the design and development of GPS or cellular location services, systems, and/or devices or (2) a Bachelor’s degree in computer engineering, electrical engineering, applied physics, or a related field, and at least five years’ experience in the design, analysis, and/or development of GPS, cellular and PSTN location services, systems, and/or devices. Ex. 2004 ¶ 11 (emphases added). As illustrated by the emphasized words above, Mr. Blackburn’s proposed level of ordinary skill differs slightly from Dr. Goldberg’s. Patent Owner, however, does not cite the above testimony in its Patent Owner Response. Nor does Patent Owner or Mr. Blackburn explain the reason for including cellular and PSTN location services, or for adding analysis as an alternative in the description of experience in the field. See generally PO Resp. We determine that the level of ordinary skill proposed by Petitioners’ declarant is consistent with the challenged patent and the asserted prior art, and we therefore adopt Dr. Goldberg’s definition of the level of ordinary skill in the art for the purposes of the analysis below. However, our analysis would not differ if we were to adopt Mr. Blackburn’s definition.” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“Petitioners’ proposed construction of “quality of service,” on the other hand, is consistent with the ’815 patent specification. The specification, for example, describes evaluating criteria such as “accuracy,” “time-to-first-fix” and “sensitivity.” Ex. 1001, 6:9–24. The specification also gives the following examples of quality of service: “Most accurate,” “Fastest,” and “Least Expensive.” Id. at 5:33–36. Moreover, Petitioners’ declarant, Dr. Goldberg, persuasively testifies that the attributes of accuracy, time-to-first-fix (TTFF), sensitivity, speed, and cost are all indications of a grade or level of performance that is to be associated with the computed position estimate. Ex. 1051 ¶ 155. Petitioners’ proposed construction also is supported by the applicant’s statements during prosecution of the ’815 patent and a description of quality of service in a prior art reference as referring to, for example, accuracy, periodicity, and response time. See Pet. 19–20 (citing Ex. 1002, 50; Ex. 1005, 5; Ex. 1051 ¶¶ 155–157). Patent Owner does not challenge Petitioners’ proposed construction of the shorter phrase “quality of service.” See PO Resp. 10–20. We determine that the common term “desired”—for which there is no special definition or disavowal in the specification—need not be expressly construed. See Pet. Reply 3–4. For the foregoing reasons, the broadest reasonable interpretation of “determining a desired quality of service,” as recited in claim 1, and “determine a desired quality of service,” as recited in claim 17, is not limited to “ascertaining a quality of service associated with a computed position estimate as a function of any user- or position application-selectable input related to quality of service,” as proposed by Patent Owner. We also determine that, contrary to Patent Owner’s unsupported argument, the desired QoS may be received from the cellular network. Moreover, for the reasons explained above, we determine that the broadest reasonable interpretation of “quality of service” is “an indication of grade or level of performance associated with a computed position estimate.”” slip op. at 19
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“mobile terminal “determining” a “desired” quality of service because, in King, the mobile station receives a QoS parameter from the network are based on Patent Owner’s proposed construction, which we do not adopt. See supra Section II.C. As explained in the claim construction section above, Patent Owner’s proposal to limit “determining a desired quality of service” to “ascertaining a quality of service associated with a computed position estimate as a function of any user- or position application-selectable input related to quality of service” unreasonably limits the claim to one embodiment in the specification. See supra Section II.C. Moreover, as explained above, Patent Owner’s claim construction argument that the desired QoS is not sent from the cellular network to the mobile terminal is unreasonably narrow in light of express disclosures in the ’815 patent specification that determining a desired quality of service includes receiving a specified quality of service from a source external to the mobile terminal. See id. Thus, Patent Owner’s arguments distinguishing King because King’s mobile terminal receives a QoS from the cellular network, and that King’s mobile terminal does not determine the desired QoS, rest on a proposed claim construction which we do not adopt. Patent Owner’s remaining arguments distinguishing King are based on requirements not recited in the claim—that the quality of service be chosen by a user or a positioning application, and that the quality of service be an input which can prioritize criteria according the user or positioning application’s preference. The disputed limitation merely recites “determining a desired quality of service” without specifying the source of desired quality of service or requiring multiple options for prioritizing criteria (such as the options of most accurate, fastest, or least expensive). Although one embodiment in the ’815 patent specification is providing a user with the ability to select from a number of options, claim 1 is not specific to that embodiment. Indeed, as explained above, claim 1 at least encompasses the subject matter of dependent claims 8, 9, and 10, and only claim 10 is directed to prompting a user to input the desired quality of service. And, claim 10 is not limited to a “selectable input” and does not require input which can prioritize criteria according the user or positioning application’s preference. In sum, Patent Owner’s arguments that King does not disclose “determining a desired quality of service” are based on an unreasonably narrow reading of this claim limitation. Accordingly, for the above reasons, we determine that Petitioners have shown that King discloses “determining a desired quality of service,” as recited in claim 1.” slip op. at 31
- Expert testimonyPetitioner expert creditedDecided for petitioner
“We also credit and find persuasive, as supported by King, Dr. Goldberg’s testimony (i) that the features on which Petitioners rely are all applicable to assisted GPS; (ii) that the use of DGPS data does not exclude the use of other aiding data such as ephemeris data; and (iii) that an ordinarily skilled artisan would have recognized that King’s embedded algorithm could be used with the steps illustrated in Figures 5, 9A, and 9B of King. Ex. 1056 ¶¶ 32–34. Indeed, the final point is corroborated by the claims of King, which illustrate that the embedded algorithm is one way of computing the predicted accuracy per step 608 of Figure 9A. Specifically, claim 1 of King recites a method for determining a location of the mobile radio handset that includes receiving a point-to-point ephemeris message that includes ephemeris data, receiving a point-to-point differential correction message that includes differential correction data, and determining a prediction of an accuracy of the computed location. Ex. 1026, 28:17–46. According to King, Figures 9A and 9B “are a flowchart of the operation of the handset . . . for request/receive and point-to-point delivery of ephemeris and differential correction data in accordance with the preferred embodiment of the present invention.” Id. at 4:20–24. Claim 3 of King depends from claim 1 and recites that the step of determining a prediction of the accuracy comprises determining a prediction based on covariance information derived by a Weighted Least Square fixing method. Id. at 28:53–58. King discloses a Weighted Least Square fixing method only in connection with the embedded algorithm. See id. at 22:53–24:35.” slip op. at 39
Patent outcomesUS 6,535,815 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,535,815 - TCL Corporation / TCL Communication Technology Holdings, Ltd. et al. v. Telefonaktiebolaget LM EricssonAll claims unpatentablePTAB · Jan 24, 2017 · IPR2015-01584 · APJ Barbara A Benoit · IPR · Final written decision
Claims 13, 15, 16, and 18 are unpatentable as obvious over Jentschel and JP947; additional obviousness grounds also establish unpatentability.
RulingsFinal written decision- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“2. Analysis A central issue is whether Petitioner has met its burden to show by a preponderance of the evidence that Lawton discloses, either expressly or inherently, the recited step of “low pass filtering the in-phase received signal and the quadrature received signal in a low pass in-phase filter and a low pass quadrature filter, respectively,” as arranged in claim 13. Verdegaal Bros., 814 F.2d at 631. After introducing the claim limitation and repeating Dr. Razavi’s conclusion that Lawton discloses the limitation, Petitioner presents another annotation of Lawton’s Figure 9 (shown below on left)” slip op. at 40
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“2. Reason to Combine Jentschel and JP947 Our inquiry, however, continues because “[a] patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.” KSR, 550 U.S. at 418. Rather, “it can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does.” Id. In other words, “there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” Id. (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). In addition, “[c]are must be taken to avoid hindsight reconstruction by using ‘the patent in suit as a guide through the maze of prior art references, combining the right references in the right way so as to achieve the result of the claims in suit.’” Grain Processing” slip op. at 55
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“references could be physically combined but whether the claimed inventions are rendered obvious by the teachings of the prior art as a whole.”)). Furthermore, Patent Owner’s assertion regarding the teaching of Thomas does not negate JP947’s unambiguous teaching that the order of the bandpass filter and amplifier may be reversed. Thus, for these reasons, we do not agree with Patent Owner’s position that “the teachings of JP947 are nonanalogous because Jentschel performs band selection at RF, whereas JP947 performs channel selection at RF.” PO Resp. 61 (heading VIII.A.1); id. at 61–64.” slip op. at 61
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundMotivation foundDecided for petitioner
“Petitioner fails to provide the requisite articulated reasoning with some rational underpinning to support the legal conclusion of obviousness. PO Resp. 65–76 (citing Ex. 2022 ¶¶ 98, 128); see KSR, 500 U.S. at 418. More specifically, Patent Owner contends that (i) the benefits of Jentschel identified by Dr. Razavi do not apply to JP947’s direct conversion receiver, (ii) JP947’s architecture is incompatible with, and therefore, teaches away from, using a frequency divider, and (iii) Jentschel itself teaches away from the use of a frequency divider. PO Resp. 65–66; see id. at 65–76.” slip op. at 83
Patent outcomesUS 6,029,052 unpatentable§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 6,029,052 - TCL Corporation / TCL Communication Technology Holdings, Ltd. et al. v. Telefonaktiebolaget LM EricssonAll claims unpatentablePTAB · Jan 24, 2017 · IPR2015-01600 · APJ Barbara A Benoit · IPR · Final written decision
Claims 13, 15, 16, and 18 are unpatentable as obvious over Jentschel and JP947; claims 13, 15, and 16 over JP947 and JP755; and claim 18 over JP947, JP755, and Jentschel.
RulingsFinal written decision- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“preponderance of the evidence that Lawton discloses, either expressly or inherently, the recited step of “low pass filtering the in-phase received signal and the quadrature received signal in a low pass in-phase filter and a low pass quadrature filter, respectively,” as arranged in claim 13. Verdegaal Bros., 814 F.2d at 631. After introducing the claim limitation and repeating Dr. Razavi’s conclusion that Lawton discloses the limitation, Petitioner presents another annotation of Lawton’s Figure 9 (shown below on left) 40” slip op. at 40
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.” KSR, 550 U.S. at 418. Rather, “it can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does.” Id. In other words, “there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” Id. (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). In addition, “[c]are must be taken to avoid hindsight reconstruction by using ‘the patent in suit as a guide through the maze of prior art references, combining the right references in the right way so as to achieve the result of the claims in suit.’” Grain Processing” slip op. at 55
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“references could be physically combined but whether the claimed inventions are rendered obvious by the teachings of the prior art as a whole.”)). Furthermore, Patent Owner’s assertion regarding the teaching of Thomas does not negate JP947’s unambiguous teaching that the order of the bandpass filter and amplifier may be reversed. Thus, for these reasons, we do not agree with Patent Owner’s position that “the teachings of JP947 are nonanalogous because Jentschel performs band selection at RF, whereas JP947 performs channel selection at RF.” PO Resp. 61 (heading VIII.A.1); id. at 61–64.” slip op. at 61
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“determine that Jentschel’s discussion of advantages and disadvantages of using a frequency divider and Jentschel’s indication that another component is “suitable” does not rise to the level of teaching away from the use of frequency dividers. Nor does Jentschel’s indication that “high power demand [of frequency dividers] is disadvantageous” amount to a teaching away. Accordingly, we agree with Dr. Razavi that, although Jentschel 87 identifies advantages and disadvantages of using a frequency divider, Jentschel does not criticize, discredit or discourage the use of a frequency divider (Ex. 1308 ¶¶ 58–65). For these reasons, we determine that Petitioner provided sufficient articulated reasoning to support a conclusion of obviousness the combination of JP947, JP755, and Jentschel, as proposed by Petitioner.” slip op. at 87
Patent outcomesUS 6,029,052 unpatentable§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 6,029,052
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.