• Tesla, Inc. v. Autonomous Devices, LLCSome claims unpatentable
  PTAB · Jan 6, 2025 · IPR2023-01169 · APJ Barbara A Parvis · IPR · Final written decision

  Claims 1, 2, and 4–20 are unpatentable over Thomas; claim 3 is not shown unpatentable. Substitute claims 22–36 are unpatentable, and substitute claim 21 is not reached.

  RulingsFinal written decision

  • BurdenFwd mixedMixed

    “g) Conclusion—Claim 1 Based on the arguments and evidence of record, we determine that” slip op. at 28

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

    “g) Conclusion—Claim 1 Based on the arguments and evidence of record, we determine that” slip op. at 28

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

    “with the computer program 110.” Ex. 1005, 3:54–55. Thomas describes that (1) the “collected data is then stored in the database 130,” (2) the collected “data is stored in a data structure, generally referred to as a user’s profile,” and (3) the collected “data is logically linked to an event, or situation, that initiated the user’s input.” Id. at 3:56–61. Thomas describes creating or establishing a user profile by simulator 120 recording “the user’s decision/input” and storing “the user’s input in the field or sub-profile associated with the particular situation and/or event.” Id. at 4:67–5:5, Fig. 6. Patent Owner does not dispute Petitioner’s showing for element [1.3]. Also, contrary to Patent Owner’s arguments, we must consider what Thomas discloses rather than whether Thomas uses the exact claim term “instruction sets.” Cf. Gleave, 560 F.3d at 1334 (a reference does not have to satisfy an ipsis verbis test to disclose a claimed element). For these reasons, we are not persuaded by Patent Owner’s argument that Thomas does not “mention instruction sets” or “anything related to an instruction set.” PO Resp. 36–37; PO Sur-reply 17.” slip op. at 42

  • PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, deniedDenied

    “C. Indefiniteness Petitioner argues that proposed substitute claims 22–36 are indefinite.” slip op. at 72

  Patent outcomesUS 10,607,134 mixed
  § 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham · Nautilus
  Patents in suitUS 10,607,134
• Tesla, Inc. v. Autonomous Devices, LLCSome claims unpatentable
  PTAB · Jan 3, 2025 · IPR2023-01172 · APJ Robert J Weinschenk · IPR · Final written decision

  Claims 1–9, 11–14, 16–24, 26, 28, 29, and 31–34 are unpatentable as anticipated by Grotmol; claim 15 was not shown unpatentable because Grotmol does not disclose its required sequence.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art Petitioner argues that a person of ordinary skill in the art would have had “(1) a bachelor’s degree in electrical engineering, computer engineering, computer science, systems engineering, or equivalent course work with two to three years of work experience in computer vision, image/video processing, and/or machine learning; or (2) a master’s degree in electrical engineering, computer engineering, computer science, systems engineering, or equivalent course work with a focus in computer vision, image/video processing, and/or machine learning.” Pet. 3–4 (citing Ex. 1003 ¶ 41). Petitioner’s description of the level of ordinary skill in the art is supported by the testimony of Petitioner’s declarant, Dr. Jason Janet. Ex. 1003 ¶ 41. Patent Owner “adopts” Petitioner’s description of the level of ordinary skill in the art. PO Resp. 4–5. We also adopt Petitioner’s description for the purposes of this Decision.” slip op. at 5

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

    “The parties appear to agree that the term “connection” refers to a relationship, but dispute whether it includes a link. PO Resp. 7; Pet. Reply 23. We need not resolve this claim construction issue in order to resolve the parties’ disputes about the asserted ground of unpatentability. Specifically, as discussed below, even if we assume for the purposes of this Decision that the term “connection” means a “relationship that includes a link,” the asserted prior art still discloses the disputed claim limitation. See Section II.D.23.” slip op. at 6

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

    “We agree with Patent Owner that claim 15 requires modifying the first instruction set before determining the modified first instruction set based on an at least partial match between the new digital picture and the first digital picture. Claim 15 recites “modifying: the first one or more instruction sets” and “determining the modified the first one or more instruction sets . . . based on the at least partial match between the new one or more digital pictures and the first one or more digital pictures.” Ex. 1001, 162:65–163:15 (emphasis added). The phrase “the modified . . . instruction sets” in the determining limitation indicates an order because it refers back to the instruction sets modified in the modifying limitation. Id. Further, the phrase “based on the at least partial match” indicates that a partial match between the new picture and the first picture returns the modified first instruction set. Id. In order for a partial match to return the modified first instruction set, it is logical that the first instruction set previously was modified and correlated to the first picture. Id. Thus, claim 15 indicates that the modifying limitation is performed before the determining limitation. See Altiris, Inc. v. Symantec Corp., 318 F.3d 1363, 1369 (Fed. Cir. 2003) (“First, we look to the claim language to determine if, as a matter of logic or grammar, [the recited steps] must be performed in the order written.”).” slip op. at 8

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

    “3. Means-plus-function limitations Petitioner contends that the corresponding structure for the “means for receiving or generating a first one or more digital pictures,” the “means for receiving or generating a first one or more instruction sets for operating the first device,” and the “means for learning the first one or more digital pictures correlated with the first one or more instruction sets for operating the first device” in claim 34 is “one or more processor circuits.” Pet. 4 (citing Ex. 1001, 16:8–60). Patent Owner does not dispute Petitioner’s proposed construction. PO Resp. 11. We adopt Petitioner’s proposed construction for purposes of this Decision. D. Anticipation of Claims 1–9, 11–24, 26, 28, 29, and 31–34 by Grotmol Petitioner argues that claims 1–9, 11–24, 26, 28, 29, and 31–34 are” slip op. at 10

  Patent outcomesUS 11,055,583 mixed
  Claim construction§ 102 anticipation
  Patents in suitUS 11,055,583
• Qualcomm Incorporated / Zyxel Communications Corporation v. Unm Rainforest InnovationsAll claims unpatentable
  PTAB · Jul 15, 2022 · IPR2021-00377 · APJ Kristen L Droesch · IPR · Final written decision

  Claims 1, 2, and 11–13 are unpatentable over Hui; the contingent motion to amend is denied because substitute claims 29, 30, and 39–41 are unpatentable over Hui.

  RulingsFinal written decision

  • ExcludeMotion to exclude, deniedMotion to exclude, grantedMixed

    “A motion to exclude evidence must be filed to preserve a prior objection to evidence and must identify the objections in the record. 37 C.F.R. § 42.64(c). An objection to evidence submitted prior to the institution of the trial, including evidence submitted with a petition to institute inter partes review, must be filed within ten business days of the institution of the trial. 37 C.F.R. § 42.64(b)(1). Once a trial is instituted, any objection must be filed within five business days of the service of evidence to which the objection is directed. Id. The objection must identify 9 Patent Owner quotes Paper 26 which was expunged and replaced with Paper 36. See Ex. 3001. 10 Paper 30 was expunged and replaced with Paper 37. the grounds for the objection with sufficient particularity to allow for correction in the form of supplemental evidence. Id. An objection to deposition evidence “must be made during the deposition.” 37 C.F.R. § 42.64(a).” slip op. at 8

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

    “We agree with Petitioner’s arguments. Petitioner is correct that the ’204 Patent does not redefine compression to exclude quantization, or otherwise disavow the scope of “compression.” We also agree that compression is a broad and basic term that encompasses any form of compression. We agree, however, with Patent Owner that compression and quantization should not be interpreted as having the exact same meaning. Patent Owner’s arguments, however, focusing on the purposes of quantization and compression are misplaced. In cases where quantization results in a reduced data size, quantization can be encompassed by the term compression. We find that, consistent with the ’204 Patent Specification, the scope of the term “compress[ing]” may include quantization, so long as the quantization results in using fewer bits than the original digital representation, i.e., a reduction in data size. For the foregoing reasons, we decline to adopt Patent Owner’s proposal that “‘compress[ing] the estimated CSI,’ should be construed as plain and ordinary meaning, which excludes ‘quantizing the estimated CSI’ without further separately applied compression.” See PO Resp. 20; PO Sur-reply 9. As demonstrated in the analysis below, we need not provide an explicit claim construction for “compress[ing] the estimated CSI.” The ordinary and customary meaning applies to “compress[ing] the estimated CSI.”” slip op. at 30

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “B. Level of Ordinary Skill in the Art Petitioner asserts: As of 2008, a person of ordinary skill in the art (“POSA”) in the field of the ’204 patent would have had a Bachelor’s degree in electrical engineering, computer engineering, or a related field, and around two years of experience in the design or development of wireless communication systems, or the equivalent plus knowledge of [multiple-input, multiple-output (“MIMO”)] and [orthogonal frequency-division multiplexing (“OFDM”)]. Pet. 19 (citing Ex. 1002 ¶ 19). Patent Owner offers a slightly different description as follows: At the relevant time, a person of ordinary skill in the art in the technical field of the ’204 patent would have had at least a Bachelor’s Degree in electrical engineering, computer engineering, or a related field, and approximately one year of experience in the design or development of wireless communications systems or the equivalent, including knowledge of MIMO and OFDM. Id. (citing Ex. 2001 ¶ 31). We adopt Patent Owner’s definition of a person of ordinary skill in the art because it is consistent with the level of skill reflected by the ’204 Patent Specification and the asserted prior art, but our conclusions would be the same under Petitioner’s definition.” slip op. at 32

  • Expert testimonyPetitioner expert creditedOther

    “excluded under Federal Rules of Evidence 702 and 703. Rule “702 imposes a special obligation upon a trial judge to ‘ensure that any and all scientific testimony . . . is not only relevant, but reliable,’” which is a “basic gatekeeping obligation.” Kumho Tire Co. v. Carmichael, 526 U.S. 137, 147 (1999) (quoting Daubert v. Merrell Dow Pharm., Inc., 509 U.S. 579 (1993)). The policy considerations for excluding expert testimony, such as those implemented by Daubert’s gatekeeping framework, are less compelling in bench proceedings such as inter partes reviews than in jury trials because, unlike a lay jury, the Board has significant experience in evaluating expert testimony. Accordingly, the danger of prejudice in this proceeding would be considerably lower than in a lay jury trial and the wholesale exclusion of a witness’s declaration is rarely called for in a proceeding before the Board. Furthermore, Patent Owner’s arguments challenging the credibility of Dr. Roy go to the weight that should be given to Dr. Roy’s Declaration testimony, not the admissibility of the Declaration. In our patentability analysis that follows, we account for the evidence that Dr. Roy’s Declaration is substantially the same as Dr. Akl’s Declaration, the supporting evidence cited therein, as well as Dr. Roy’s deposition testimony in determining the appropriate weight to give Dr. Roy’s testimony when weighing the record evidence.” slip op. at 14

  Patent outcomesUS 8,249,204 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,249,204
• Apple Inc. v. Corephotonics, Ltd.Some claims unpatentable
  PTAB · Nov 2, 2021 · IPR2020-00878 · APJ Bryan F Moore · IPR · Final written decision

  Claims 1, 2, 4–6, 9–15, 17, 18, 20–23, and 25–29 are unpatentable; claims 3, 8, 16, 19, 24, and 30 were not shown unpatentable.

  RulingsFinal written decision

  • BurdenMixed

    “35 U.S.C. § 6. This Final Written Decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73. For the reasons discussed herein, we determine that Petitioner has shown, by a preponderance of the evidence, that claims 1, 2, 4–6, 9–15, 17, 18, 20–23, and 25–29 of the ’897 patent are unpatentable and that Petitioner has not shown, by a preponderance of the evidence, that claims 3, 8, 16, 19, 24, and 30 of the ’897 patent are unpatentable.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “would include someone who had, at the priority date of the ’897 Patent, (i) a Bachelor’s degree in Physics, Optical Sciences, or equivalent training, as well as (ii) approximately three years of experience in designing multi-lens optical systems. Such a person would have had experience in analyzing, tolerancing, adjusting, and optimizing multi-lens systems for manufacturing, and would have been familiar with the specifications of lens systems and their fabrication. In addition, a POSITA [person of ordinary skill in the art] would have known how to use lens design software such as Code V, Oslo, or Zemax, and would have taken a lens design course. Pet. 6–7 (citing Ex. 1003 ¶¶ 19–20). Patent Owner applied the same level of skill for the purposes of this IPR. PO Resp. 14–15 (citing Ex. 2001 ¶ 19). 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). Therefore, for purposes of this Final Written Decision, we adopt Petitioner’s assessment of the level of skill in the art because it is consistent with the ’897 patent and the asserted prior art, and we apply it in our analysis below.” slip op. at 11

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

    “Patent Owner argues that no “dispute between the parties in this IPR depends on the construction of EFL, TTL, or of any other claim term [and] submits that the Board should refrain from construing any terms in the patent for the purposes of this proceeding.” PO Resp. 17. Petitioner does not respond to this argument. See generally Pet. Reply. We agree with Patent Owner. If we were to adopt either construction, it would not change the determination made in this Decision. Thus, we decline to construe any claim terms for purposes of this Final Written Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’”).” slip op. at 10

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

    “unpatentable under 35 U.S.C. § 102 as anticipated by Ogino. Pet. 10–40. Patent Owner does not present arguments related to this ground. See generally PO Resp. For the reasons that follow, we are persuaded that the evidence supports Petitioner’s arguments and thus, Petitioner establishes by a preponderance of the evidence that claims 1, 4, 9–15, 17, 20, and 25–29 are unpatentable under 35 U.S.C. § 102 as anticipated by Ogino.” slip op. at 17

  Patent outcomesUS 10,330,897 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,330,897
• Emerson Electric Co. v. Sipco, LLCSome claims unpatentable
  PTAB · Nov 28, 2018 · IPR2017-00359 · APJ Bryan F Moore · IPR · Final written decision

  Claims 32, 34, 37–38, 55–57, and 59 are unpatentable over Cunningham; claims 1, 3–8, 11–14, 24–31, 36, 42, 43, 46–49, 51–54, and 60–64 were not shown unpatentable.

  RulingsFinal written decision

  • BurdenNot shown unpatentable

    “This argument is conclusory and not supported by sufficient evidence. Moreover, the stated conclusion is vague with respect to the limitation at issue. Petitioner argues that “the node 18 must translate messages” (id. (emphasis added)), but does not explicitly argue that all three recited pieces of information—“the select information, the transmitter identification information, and transceiver identification information”—must be translated. Even assuming Mason’s node must translate all three recited pieces of information, Petitioner does not show that all such translated pieces of information must be further transmitted to the AMR server over the WAN. In particular, Petitioner does not show that transceiver identification information would have to be further transmitted.” slip op. at 21

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

    “Moreover, we agree with Petitioner that such a construction is “non- specific, vague and unhelpful” in the context of the ’692 patent. Reply. 16. Patent Owner’s construction limits “low power” to signals having a “limited transmission range,” but provides no guidance of what “limited” means, or what its boundaries might be. Petitioner argues correctly that Patent Owner’s construction fails to address questions its proposed construction raises, such as, what a ‘limited’ transmission range means and how ‘limited’ the range must be (i.e., what the range’s distance should be), whether the transmission range depends on the particular system or application, and whether other factors should be considered in determining whether the transmission range is limited.” slip op. at 14

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

    “Notably, Petitioner says these contentions are “further evidence” but does not explain how this evidence is to be used to buttress Cunningham’s disclosure or how it is to be combined with Cunningham’s disclosure. Specifically, given the limited contentions in the Petition detailed above, Petitioner does not explain how Energy Management Services or the “routines” described in the Provisional send control signals from the computer to the actuator as required by the claims. For example, even if we to accept that the “Williams Network Control Center” creates control signals as required by the claim Petitioner has not explained how those signals are translated from network transfer protocol to RF signals and then translated to an analog signal that can be used at an actuator. Even though the ’978 Provisional is allegedly incorporated by reference, an obviousness determination still requires--“[w]hether a [obviousness challenge] is based on combining disclosures from multiple references, combining multiple embodiments from a single reference, or selecting from large lists of elements in a single reference[--] a motivation to make the combination and a reasonable expectation that such a combination would be successful, otherwise a skilled artisan would not arrive at the claimed combination.” In re Stepan Co., 868 F.3d 1342, 1346 n. 1 (Fed. Cir. 2017); c.f. Boston Sci. Scimed, Inc. v. Cordis Corp., 554 F.3d 982, 991 (Fed. Cir. 2009) (finding obviousness shown despite fact that “all of the limitations are found in two separate embodiments pictured side by side in the patent, not in one embodiment” because the party showed motivation to combine and reasonable likelihood of success). Additionally, “there must be evidence presented on the obviousness of the claim as a whole.” Circuit Check Inc. v. QXQ Inc., 795 F.3d 1331, 1337 (Fed. Cir. 2015) (citing KSR, 550 U.S. at 420, 127 S.Ct. 1727); see also Acorda Therapeutics, Inc. v. Roxane Labs., Inc., 903 F.3d 1310, 1352 (Fed. Cir. 2018) (“The determination of obviousness is made with respect to the subject matter as a whole, not separate pieces of the claim”). Here, the “routines” described in the ’978 Provisional work differently than the “utility prices” embodiment of Cunningham. Petitioner has not explained how those would work together to meet the claim limitations.” slip op. at 30

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

    “Patent Owner’s argument is inapposite, as it is premised on reading a limitation into the claims, namely that the information encoded in the RF signal must be translated in real time. Further, we agree with Petitioner, that even under such an erroneously narrow construction, Cunningham would meet the limitation. In that regard, Petitioner argues that, “although Cunningham discloses sending cumulative data readings, individual signals from the sensor are identified by the gateway and this information is then transmitted (with transmitter identification information) to a computer on the WAN.” Reply 6 (citing Ex. 1046 ¶¶31–32; Ex. 1004, 31:6–28). Petitioner argues, and we are persuaded, that “Cunningham explains that the ‘most current cumulative reading’ is the current absolute ‘reading’ (i.e., information signal) from the sensor (Ex. 1004, 13:44–46) and that two cumulative readings can be used to ‘interpolate’ and ‘recover’ a missed reading (i.e., a signal from the sensor).” Reply 7 (citing Ex. 1004, 13:44–56; 31:6–27; Pet. 75; Ex. 1002 ¶¶115, 152; Ex. 1046 ¶32). We are persuaded that Cunningham discloses this limitation. Lastly, claim 32 also recites “a computer configured to execute at least one computer program that formats and stores select information responsive to the electrical signal for retrieval upon demand from a remotely located device.” To meet this limitation, Petitioner accurately points out that “Cunningham discloses that[,] in response to receiving information from the sensor interface module through the data collection modules, the host module compiles the information into a user specified readable format and stores it for later retrieval upon demand from a customer computer or workstation.” Pet. 83 (citing Ex. 1004, 7:19–27, 44:12–41, 44:53–64, 46:44–61, 47:44–54, Ex. 1002 ¶¶138–140). Patent Owner does not contest that Cunningham discloses “a computer configured to execute at least one computer program that formats and stores select information responsive to the electrical signal for retrieval upon demand from a remotely located device.” See PO Resp. 22–29, 41–46. We are persuaded that Cunningham discloses this limitation. For the forgoing reasons, Petitioner has shown by a preponderance of” slip op. at 37

  Patent outcomesUS 6,437,692 mixed
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 6,437,692
• Amazon.Com, Inc. / Amazon Digital Services, Inc. et al. v. Uniloc Luxembourg S.A.Some claims unpatentable
  PTAB · Aug 1, 2018 · IPR2017-00948 · APJ David C Mckone · IPR · Final written decision

  Claims 1–8, 18–22, and 25 are unpatentable; claims 9–17, 23, and 24 are not unpatentable; substitute claims 26–28 are denied.

  RulingsFinal written decision

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

    “The “verify” limitation of claim 1 expressly recites a check based “at least in part on a device identity.” The specification describes such a check as occurring at steps 15 and 16, not step 13. Steps 15 and 16 check whether the device identity is on record and, in response to that check, allow a digital product to be used on a device (steps 17, 18) or start a process to authorize the device. Id. at 5:1–9, 5:13–18. Although steps 15 and 16 are not expressly described as a verification of validity, steps 15 and 16, not step 13, logically track and most closely align with the language of claim 1’s “verify” and “in response to” limitations. Thus, the specification supports Petitioner’s view that the “verify” limitation can encompass checking whether unique device information is reflected in a database as authorized for a license.” slip op. at 12

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner

    “claim 1 is limiting, with Patent Owner arguing that it is and Petitioner arguing that it is not. Id. at 12–13. Patent Owner now argues that “[t]he preambles [of claims 1 and 22] expressly state that the claimed system and method are both directed to ‘adjusting’ the license in terms of its allowed copy count, which the preambles expressly define.” PO Resp. 9. We explained in the Institution Decision, however, that even if the preamble is limiting (e.g., by virtue of it providing antecedent basis (“at least one allowed copy count”) for “set the allowed copy count”), the language “[a] system for adjusting a license for a digital product over time” constitutes a 2 The preamble of claim 25 is not similar to that of claims 1 and 22, and Patent Owner does not propose an “adjusting” limitation for the language “in response to the device identity not being on the record, set the allowed copy count to a first upper limit for a first time period after an initial authorization of the digital product,” as recited in claim 25. statement of intended purpose and does not purport to modify any particular claim language, such as “set the allowed copy count.” Dec. 13–14. Patent Owner argues that our preliminary construction would vitiate the purpose of the preamble language and that, instead, “the claim limitations must be understood in light of the ‘adjusting’ context introduced in the preamble.” PO Resp. 9. However, “the mere fact that a structural term in the preamble is part of the claim does not mean that the preamble’s statement of purpose or other description is also part of the claim.” Marrin v. Griffin, 599 F.3d 1290, 1295 (Fed. Cir. 2010). Rather, the Federal Circuit has held that “a preamble is not limiting ‘where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention.’” Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (quoting Rowe v. Dror, 112 F.3d 473, 478 (Fed. Cir. 1997)). Thus, an intended purpose set forth in a claim preamble and the context that purpose might provide, without more, are not limiting. Moreover, as Petitioner points out, “the claimed invention could be used to adjust an allowed device limit, at least to a higher limit, thereby satisfying the intended purpose of the invention.” Reply 4.” slip op. at 14

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

    “On the complete record, we find that DeMello’s authentication, which checks a Passport ID and machine ID against stored records to authenticate a device, discloses executable code for the processor to “verify that a license data associated with the digital product is valid based at least in part on a device identity generated by sampling physical parameters of the given device,” as recited in claim 1 and similarly recited in claim 22.” slip op. at 29

  • Obviousness (§103) › KSR rationalesUnpatentableNot shown unpatentableMixed

    “The Federal Circuit has cautioned that “references to ‘common sense’—whether to supply a motivation to combine or a missing limitation—cannot be used as a wholesale substitute for reasoned analysis and evidentiary support, especially when dealing with a limitation missing from the prior art references specified.” Arendi S.A.R.L. v. Apple Inc., 832 F.3d 1355, 1362 (Fed. Cir. 2016). That is not the case here. As explained above, both the ’960 patent and DeMello describe precise numbers of days as arbitrary and that their respective inventions contemplate other numbers. We find that it would have been reasonable for the skilled artisan to have selected six days, as recited in claim 6, in light of DeMello’s disclosure.” slip op. at 45

  Patent outcomesUS 8,566,960 mixed
  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Alice · Bilski · Berkheimer · Graham
  Patents in suitUS 8,566,960
• National Oilwell Varco, L.P. v. Technical Industries, Inc.All claims unpatentable
  PTAB · Jul 18, 2018 · IPR2017-00699 · APJ Jacqueline T Harlow · IPR · Final written decision

  Claims 6 and 20 are unpatentable as anticipated by Assanelli; claims 4, 6, 9, 11, 14, 16, 18, and 20 are unpatentable over Kiefer and Assanelli; claims 6 and 20 are unpatentable over Lam and …

  RulingsFinal written decision

  • Adverse judgmentAdverse judgmentGranted

    “In addition, on April 5, Patent Owner filed a Request for Adverse Judgment seeking cancelation of claims 1–3, 5, 7, 8, 10, 12, 13, 15, 17, and 19 of the ’518 patent (Paper 44), which we granted (Paper 50). Claims 4, 6, 9, 11, 14, 16, 18, and 20 of the ’518 patent remain in trial. Id.” slip op. at 3

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “In view of the evidence described above, including the sophistication of the technology at issue, and the problems encountered and solutions disclosed in the prior art, we do not find persuasive either Mr. Webre’s or Mr. Sfeir’s opinions concerning the level of ordinary skill in the field. Mr. Webre’s opinion that a relevant skilled artisan would have been “a person that was exposed to tubular inspection methods and equipment that was in commercial use by providers of tubular inspection services or as a user of pipe inspection services” (Ex. 2002 ¶ 11) is based on the faulty premise that an ordinarily skilled artisan would have been one who uses tubular inspection techniques, rather than one who develops them. Furthermore, Dr. Webre’s opinion does not comport with the level of sophistication of the ’518 patent or the prior art, each of which addresses the development of improved methods of pipe inspection, not the rote use of commercially available products. Mr. Webre’s reference to the purported educational criteria for obtaining nondestructive testing certification does not cure the defects in his opinion, as Mr. Webre does not explain what such certification entails, or whether one so certified would be an artisan of” slip op. at 13

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “In view of the evidence described above, including the sophistication of the technology at issue, and the problems encountered and solutions disclosed in the prior art, we do not find persuasive either Mr. Webre’s or Mr. Sfeir’s opinions concerning the level of ordinary skill in the field. Mr. Webre’s opinion that a relevant skilled artisan would have been “a person that was exposed to tubular inspection methods and equipment that was in commercial use by providers of tubular inspection services or as a user of pipe inspection services” (Ex. 2002 ¶ 11) is based on the faulty premise that an ordinarily skilled artisan would have been one who uses tubular inspection techniques, rather than one who develops them. Furthermore, Dr. Webre’s opinion does not comport with the level of sophistication of the ’518 patent or the prior art, each of which addresses the development of improved methods of pipe inspection, not the rote use of commercially available products. Mr. Webre’s reference to the purported educational criteria for obtaining nondestructive testing certification does not cure the defects in his opinion, as Mr. Webre does not explain what such certification entails, or whether one so certified would be an artisan of 13 ordinary skill in the relevant field, i.e., the development of tubular inspection techniques. In addition, Mr. Webre’s unsupported, conclusory testimony that Assanelli was “inconsistent” with the “then-current industry standard” screening (Ex. 2002 ¶ 16) is unpersuasive, entitled to little weight (37 C.F.R. § 42.65(a)), and seemingly beyond the scope of his engagement to testify regarding the level of ordinary skill in the art at the time of invention of the ’518 patent (Ex. 2002 ¶¶ 1–2). Mr. Sfeir’s opinion, which expressly excludes those with “the education, training, experience or motivation to attempt to develop a new, allegedly better, way to calculate pipe collapse pressure” as ordinarily skilled artisans (Ex. 2003, 3) suffers from the same shortcomings as Mr. Webre’s opinions, in that it ignores the level of sophistication of the technology and prior art at issue. In addition, Mr. Sfeir does not provide evidentiary support for his opinions; as such, we give them little weight (37 C.F.R. § 42.65(a)).” slip op. at 13

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner

    “to . . . compute the effect of stressors on the wall of said tubular good” (Ex. 1001, 10:4–7), and that requirement is captured by our construction of that claim phrase to mean “causing a computer to use at least some of the information contained in the computer readable recording to compute the effect, on the strength of the tubular, of stressors applied to the tubular” 18 (Inst. Dec. 8). To the extent Patent Owner contends that the term “computer” should be understood in accordance with its plain and ordinary meaning, i.e., as referring to a device for performing calculations on data, we agree, and observe that such understanding is captured by our original construction. Accordingly, for the reasons above, as well as those set forth in the Decision to Institute (id.), we construe the phrase “causing a computer means to use at least some of the information contained in said computer readable recording to compute the effect of stressors on the wall of said tubular good” to mean “causing a computer to use at least some of the information contained in the computer readable recording to compute the effect, on the strength of the tubular, of stressors applied to the tubular.”” slip op. at 18

  Patent outcomesUS 7,401,518 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,401,518
• SK Hynix Inc. / SK Hynix America Inc. et al. v. Netlist, Inc.All claims unpatentable
  PTAB · Jul 5, 2018 · IPR2017-00561 · APJ Bryan F Moore · IPR · Final written decision

  Claims 2–7 were held unpatentable as obvious over Averbuj and Tsern; trial as to claim 1 was terminated based on collateral estoppel.

  RulingsFinal written decision

  • PTAB / AIA Trials › §315(e) estoppelEstoppel appliesDecided for petitioner

    “Patent Owner asserts that “collateral estoppel does not apply to the application of the claim 1 limitations in assessing dependent claims 2–7.” Id. at 2. Patent Owner further asserts “[a] party seeking to apply collateral estoppel based on a prior action must show that (1) the identical issue was actually litigated; (2) the issue was actually decided in a final decision on the merits; (3) the issue was necessary to the final decision; and (4) the party being estopped was adequately represented in the prior action [i.e. “the United Access test”].” Id. at 2 (citing United Access Techs., LLC v. CenturyTel Broadband Services LLC, 778 F.3d 1327, 1331 (Fed. Cir. 2015)). We agree that this is the proper test to use to assess the applicability of collateral estoppel. Nevertheless, we note United Access applies collateral estoppel in a different context and suggests that issue preclusion can be applied in an obvoisness challenge, even if the final decision on the original issue was considered under an anticipation challenge. In particular, in United Access it was noted that “[i]ssue preclusion [traditionally called “collateral estoppel”3] applies to issues litigated in prior disputes . . . [and, thus, i]t thus makes no difference that the earlier no-damages-due-to-competition ruling arose in a case under the Truth in Negotiation Act and that this dispute arises under the False Claims Act and the common law.” United Access, 778 F.3d. at 726. The “issue” of whether Averbuj teaches the limitations of claim 1 is identical to the issue in and has been litigated in the ‘970 IPR which found that Averbuj anticipates the limitations of claim 1.” slip op. at 10

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

    “1475, 1480 (Fed. Cir. 1994). Only those terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., 868 F.3d 1013, 1017 (Fed. Cir. 2017).” slip op. at 16

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “the ‘434 Patent would have been someone with “a Bachelor’s degree in electrical engineering, computer engineering, or in a related field and at least one year of work experience relating to memory systems, and would be familiar with the design of memory devices, memory modules, and BIST.” Pet. 9 (citing Ex. 1003 ¶ 51). Patent Owner asserts through its declarant: [A Person of ordinary skill in the art at the time of the invention would have been] working on the design of memory devices, would have at least a Bachelor of Science degree in Electrical and/or Computer Engineering, and at least five years of industry experience designing memory devices and controllers. Alternatively, one of ordinary skill in the art would have a Master of Science degree in Electrical and/or Computer Engineering, and at least three years of industry experience designing memory devices and controllers. Also alternatively, one of ordinary skill in the art would have a Doctorate degree in Electrical and/or Computer Engineering, and have at least one year of industry experience designing memory devices and controllers. I agree with Petitioner’s expert that the memory industry requires a POSITA with industry experience. Ex. 2010 ¶¶ 32–33. 16 Neither party has argued that the difference between the parties’ articulated level of skill should change the analysis as to patentability. Therefore, we adopt Petitioner’s articulation of the level of skill, above, and acknowledge that, commensurate with that articulation of the level of skill, the level of ordinary skill in the art is also reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 16

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

    “Pet. 41. In other words, Petitioner asserts that because a BIST unit can be incorporated into a chip mounted on a PCB and because memory module 12 is part of the BIST unit, memory unit 12 is mounted on a PCB. We disagree. Unlike claim 1, which simply requires the memory unit is “on” the PCB, claim 2 requires that the memory module be a “physically separate component” and “mounted” on the PCB. Petitioner has not shown sufficient support for its broad reading that a module which is a circuit embedded in a larger circuit included in a chip may be considered a physically separate component mounted on a PCB. Claims 3–7 depend from claim 2, and the Petition fails to provide additional prior art disclosures that cure the deficiency with respect to claim 2; that is, disclosure of separate components 22 mounted on a printed circuit board in Averbuj. Pet. 41–48. Thus, Petitioner has failed to establish, by a preponderance of the evidence, its assertion that claims 2–7 are anticipated by Averbuj.” slip op. at 22

  Patent outcomesUS 8,001,434 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,001,434
• SK Hynix Inc. / SK Hynix America Inc. et al. v. Netlist, Inc.All claims unpatentable
  PTAB · Jul 5, 2018 · IPR2017-00562 · APJ Bryan F Moore · IPR · Final written decision

  Claim 4 was held unpatentable as obvious over Averbuj and Tsern; the trial was terminated as to claim 1 based on collateral estoppel.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert discountedOther

    “Active Video Networks, Inc. v. Verizon Commc’ns, Inc., 694 F.3d 1312, 1328 (Fed. Cir. 2012). The court noted that because the expert “failed to explain how specific references could be combined, which combination(s) of elements in specific references would yield a predictable result, or how any specific combination would operate or read on the asserted claims,” the expert’s testimony was conclusory and bore no relation to any specific combination of prior art elements. Id. at 1327. Although the declarant’s testimony here goes further than in Active Video, it fills in gaps about how the combination would be made with only conclusory testimony that appears to be tainted with hindsight.” slip op. at 26

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “C. Level of Skill Analysis Petitioner asserts “[a] a person of ordinary skill in the art at the time of the ‘501 Patent would have been someone with “a Bachelor’s degree in electrical engineering, computer engineering, or in a related field and at least one year of work experience relating to memory systems, and would be familiar with the design of memory devices, memory modules, and BIST” Pet. 6 (citing, inter alia, Ex. 1003 ¶ 51). Patent Owner asserts through its declarant: [A Person of ordinary skill in the art at the time of the invention would have been] working on the design of memory devices, would have at least a Bachelor of Science degree in Electrical and/or Computer Engineering, and at least five years of industry experience designing memory devices and controllers. Alternatively, one of ordinary skill in the art would have a Master of Science degree in Electrical and/or Computer Engineering, and at least three years of industry experience designing memory devices and controllers. Also alternatively, one of ordinary skill in the art would have a Doctorate degree in Electrical and/or Computer Engineering, and have at least one year of industry experience designing memory devices and controllers. I agree with Petitioner’s expert that the memory industry requires a POSITA with industry experience. Ex. 2010 ¶¶ 32–33. Neither party has argued that the difference between the parties’ articulated level of skill should change the analysis as to patentability. Therefore, we adopt Petitioner’s articulation of the level of skill, above, and acknowledge that, commensurate with that articulation of the level of skill, the level of ordinary skill in the art is also reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 15

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

    “a. Claim 1 Claim 1 is anticipated by Averbuj under the doctrine of collateral estoppel. See supra Section II. A. b. Claim 4 Claim 4 recites “[t]he memory system of claim 1, wherein the memory system comprises at least two physically separate integrated circuit packages, wherein each of the at least two physically separate integrated circuit packages comprises at least one data handler of the plurality of data handlers.” Petitioner asserts that Averbuj discloses that BIST units are “commonly incorporated into memory chips and other integrated circuits.” Ex. 1005 at ¶ [0003]. Because the memory interfaces are part of a BIST unit, Averbuj also discloses the memory interface (10, 41) is commonly incorporated into (memory or other) chips, or “integrated circuits.” Ex. 1012 at 98, 277; Ex. 1003 at ¶ 126. Averbuj further discloses that the device block (6) and the components contained therein, such as the sequencer (8) and the memory modules (12), are “distributed” and “located throughout an electronic device,” i.e., physically separated. See e.g., Ex. 1005 at ¶¶ [0013], [0015]; Ex. 1003 at ¶ 127. Since memory interfaces (10, 41) are also components of each device block (6), at a minimum, the different sets of memory interfaces (10, 41) belonging to different device blocks (6) must also be physically separated. Ex. 1003 at ¶ 127. Averbuj also discloses that the various integrated circuits or chips of an electronic device are “mounted on a circuit board,” indicating that the integrated circuits and chips comprising the electronic device are packaged integrated circuits or chips. Ex. 1005 at ¶ [0005]; Ex. 1016 at 1:15-27; Ex. 1003 at ¶ 128. Therefore, Averbuj discloses that the memory interfaces (each containing a “data handler”) of different device blocks (which comprise a “memory system”) must be distributed across “at least two physically separate integrated circuit packages.” Ex. 1003 at ¶ 129. Pet. 30–31. In other words, Petitioner asserts that because the sequencer can be” slip op. at 21

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

    “There must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” Innogenetics, N.V. v. Abbott Labs., 512 F.3d 1363, 1373 (Fed. Cir. 2008) (internal quotations omitted) (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). For example, in ActiveVideo Networks, Inc. v. Verizon, our reviewing court 7 Patent Owner chose not to request additional briefing to address this ground and arguments in the Preliminary Response are generally waived (Paper 8, 2–3), however, we acknowledge these arguments due to the unusual circumstance created by the Supreme Court’s decision in SAS and to explain the background in the context of Patent Owners’ Motion to Strike. held that the following expert testimony on the motivation to combine was deficient as a matter of law: [Y]ou wanted to build something better. You wanted a system that was more efficient, cheaper, or you wanted a system that had more features, makes it more attractive to your customers, because by combining these two things you could do something new that hadn’t been able to do before. Active Video Networks, Inc. v. Verizon Commc’ns, Inc., 694 F.3d 1312, 1328 (Fed. Cir. 2012). The court noted that because the expert “failed to explain how specific references could be combined, which combination(s) of elements in specific references would yield a predictable result, or how any specific combination would operate or read on the asserted claims,” the expert’s testimony was conclusory and bore no relation to any specific combination of prior art elements. Id. at 1327. Although the declarant’s testimony here goes further than in Active Video, it fills in gaps about how the combination would be made with only conclusory testimony that appears to be tainted with hindsight. As to other of Petitioner’s arguments supported by its declarant, we find those to employ hindsight to piece together the device as claimed. The expert provides a host of rationales for separating the components of Averbuj into separate ICs including structures of Tsern (Ex. 1003 ¶ 143) and other secondary references. We acknowledge that Tsern contains structures that suggest the claimed configuration of the data handlers, but in this ground Petitioner does not assert Tsern as a reference, rather simply as evidence of the knowledge of one of skill in the art. Pet. 34–38. Relying on knowledge in the art does not obviate the need to prove a reference is prior art as of the critical date and show a motivation to combine existing slip op. at 25

  Patent outcomesUS 8,359,501 unpatentable
  § 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,359,501
• Xactware Solutions, Inc. v. Pictometry International Corp.No claims unpatentable
  PTAB · Aug 24, 2017 · IPR2016-00594 · APJ Bryan F Moore · IPR · Final written decision

  Petitioner did not prove claims 1–10 and 13–20 unpatentable because it failed to establish that Pictometry was a publicly accessible printed publication.

  RulingsFinal written decision

  • ExcludeMixed

    “Mot. Reply 3. Given the sequence of events, there is no prejudice to Petitioner, who introduced these documents and was served objections at an early stage. Patent Owner apparently cited to the documents in its Patent Owner Response to preserve the right to substantively respond to these documents rather than wait to see if they were presented in Petitioner’s Reply. Pursuant to our discretion under 37 C.F.R. § 42.5(c)(3), we do not dismiss Patent Owner’s Motion to Exclude due to allegedly untimely filed objections.” slip op. at 6

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable

    “are also prohibited. Id. The MAPC Agreement states under “Confidentiality of Licensed Products” that the Licensed Products are commercially valuable, proprietary products owned by Pictometry and are treated by Pictometry as confidential and contain substantial trade secrets of Pictometry. Ex. 2009, 16, Article 8.4. The licensee agrees that it will not disclose, provide a copy of, or disseminate the Licensed Products and that its personnel will protect the Licensed Products from unauthorized use, disclosure, copying, and dissemination, and that access to the Licensed Products and each part thereof will be strictly limited. Id. We acknowledge that these represent significant limitations on the dissemination of the User Guide.” slip op. at 21

  • BurdenDecided for patent owner

    “involving the EFS software and provides no evidence that the EFS software and the EFS 2.7 User Guide were actually maintained confidential by the parties of the MAPC Agreement, or that the EFS software and the EFS 2.7 User Guide were inaccessible to those of ordinary skill in the art.” Reply 9. However, this improperly puts the burden to disprove public accessibility on Patent Owner. Although Patent Owner challenges whether Pictometry is a printed publication, the burden remains on Petitioner to demonstrate unpatentability. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (citing Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1326–27 (Fed. Cir. 2008)) (discussing the burden of proof in an inter partes review). Petitioner must demonstrate by a preponderance of the evidence that the challenged claims are unpatentable, and one aspect of such a showing is that the references relied upon are patents or printed publications. See 35 U.S.C. §§ 311(b) 316(e).” slip op. at 22

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

    “preponderance of the evidence that Pictometry was publicly accessible so as to render it a printed publication under 35 U.S.C. § 102(b). C. Anticipation of Claims by Pictometry Petitioner asserts that claims 1–10 and 13–20 are unpatentable under 35 U.S.C. § 102(b) as anticipated by Pictometry. Pet. 16. As noted above, we determine that Petitioner has not shown that Pictometry is a printed publication under 35 U.S.C. § 102(b). Thus, Petitioner has not established by a preponderance of the evidence that that claims 1–10 and 13–20 are unpatentable under 35 U.S.C. § 102(b) as anticipated by Pictometry.” slip op. at 29

  Patent outcomesUS 8,542,880 not shown unpatentable
  § 102 anticipation
  Patents in suitUS 8,542,880

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.