• Bank Of America, N.A. v. Nant Holdings IP, LLCNo claims unpatentable
  PTAB · Feb 2, 2023 · IPR2021-01333 · APJ Robert J Weinschenk · IPR · Final written decision

  Claims 18, 26, 27, 29, and 31 were not shown unpatentable because Ogasawara did not disclose claim 18’s determining limitation, and the obviousness grounds did not cure that deficiency.

  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 a “Bachelor of Science in Electrical Engineering, Computer Science, Computer Engineering, or equivalent, and one to two years of experience 1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125 Stat. 284, 287–88 (2011), amended 35 U.S.C. §§ 102, 103. Because the ’252 patent was filed before the effective date of the relevant amendment, the pre-AIA versions of §§ 102, 103 apply. working with image processing, image recognition, or a related field.” Pet. 17 (citing Ex. 1003 ¶ 43). Petitioner’s description of the level of ordinary skill in the art is supported by the testimony of Petitioner’s declarant, Dr. Jeffrey Rodriguez. Ex. 1003 ¶ 43. Patent Owner does not propose a description of the level of ordinary skill in the art or dispute Petitioner’s description. PO Resp. 15. We adopt Petitioner’s description, which is consistent with the level of ordinary skill in the art at the time of the invention as reflected in the asserted prior art.” slip op. at 5

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

    “C. Claim Construction In an inter partes review proceeding, a patent claim is construed using the same standard used in federal district court in a civil action under 35 U.S.C. § 282(b), including construing the claim in accordance with the ordinary and customary meaning of the claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. 37 C.F.R. § 42.100(b) (2020). Patent Owner proposes construing the term “the image” in all challenged claims to refer to “the same, single image.” PO Resp. 20. Based on this proposed construction, Patent Owner argues that the combination of Ogasawara and Bolle does not teach the limitations of claim 31. Id. at 59–60. As discussed below, for reasons unrelated to the term “the image,” Petitioner does not meet its burden to show that the challenged claims are unpatentable. See Sections II.D–II.F. Therefore, we determine that the term “the image” does not require an express construction to resolve the parties’ disputes regarding the asserted grounds of unpatentability.” slip op. at 6

  • BurdenNot shown unpatentable

    “Petitioner does not show persuasively that Ogasawara expressly or implicitly discloses the determining limitation of claim 18. The portions of Ogasawara cited by Petitioner indicate that Ogasawara’s computing platform invokes its recognition software to analyze image data without first determining if the image contains a recognizable symbol. See Pet. 23–25 (citing Ex. 1005, 18:11–58, 20:41–67, 21:15–20). Ogasawara discloses that the user of its device verifies that an image contains an entire symbol when capturing the image and before transmitting the image data to the computing platform. Ex. 1005, 20:47–51 (“While the consumer is scanning a particular bar code with the digital camera, . . . the consumer can visually verify that the entire image has been captured.”); see also id. at 20:41–47, 22:10–13, 22:59–63 (disclosing that a user captures an image of an item’s bar code by placing it within the image field of the digital camera). As a result, when Ogasawara’s computing platform receives the image data, it simply invokes recognition software to analyze the image data.2 Id. at 18:32–37, 21:17–20. For example, Ogasawara discloses that “[o]nce the bar code image has been captured, the program decodes the bar code image data . . . by operating on the bar code image with pattern recognition software.” Id. at 21:17–20; see also id. at 18:32–37 (“Once this information is received . . . , a character 2 In fact, Petitioner appears to acknowledge that Ogasawara’s device operates in this manner. Pet. 24–25 (“[o]nce the bar code image has been captured, the program decodes the bar code image data . . . with pattern recognition software.”). recognition and/or pattern recognition application routine can be invoked . . . to . . . decode the bar code.”). Thus, Ogasawara supports Patent Owner’s position that Ogasawara’s computing platform does not determine if an image contains a recognizable symbol before analyzing the image. Petitioner argues that the term “recognize” in Ogasawara discloses determining if an image contains a recognizable symbol, whereas the term “decode” discloses analyzing the symbol to extract information. Pet. Reply 6 (“capture, recognize and decode captured images.”). We disagree. Ogasawara uses both terms—recognize and decode—to describe analyzing image data to extract information. Ex. 1005, 18:32–37, 21:17–20. For example, Ogasawara discloses that its computing platform invokes recognition software “to either decode the bar code videographic data or to perform pattern recognition functions on a[n] icon-like patter[n].” Id. at 18:32–37 (emphases added); see also id. at 21:17–20 (“the program decodes the bar code image data . . . by operating on the bar code image with pattern recognition software”) (emphases added). Thus, Petitioner’s reliance on the term “recognize” does not show that Ogasawara discloses the determining limitation of claim 18. For the reasons discussed above, Petitioner does not show sufficiently” slip op. at 11

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

    “Petitioner does not show persuasively that Ogasawara expressly or implicitly discloses the determining limitation of claim 18. The portions of Ogasawara cited by Petitioner indicate that Ogasawara’s computing platform invokes its recognition software to analyze image data without first determining if the image contains a recognizable symbol. See Pet. 23–25 (citing Ex. 1005, 18:11–58, 20:41–67, 21:15–20). Ogasawara discloses that the user of its device verifies that an image contains an entire symbol when capturing the image and before transmitting the image data to the computing platform. Ex. 1005, 20:47–51 (“While the consumer is scanning a particular bar code with the digital camera, . . . the consumer can visually verify that the entire image has been captured.”); see also id. at 20:41–47, 22:10–13, 22:59–63 (disclosing that a user captures an image of an item’s bar code by placing it within the image field of the digital camera). As a result, when Ogasawara’s computing platform receives the image data, it simply invokes recognition software to analyze the image data.2 Id. at 18:32–37, 21:17–20. For example, Ogasawara discloses that “[o]nce the bar code image has been captured, the program decodes the bar code image data . . . by operating on the bar code image with pattern recognition software.” Id. at 21:17–20; see also id. at 18:32–37 (“Once this information is received . . . , a character 2 In fact, Petitioner appears to acknowledge that Ogasawara’s device operates in this manner. Pet. 24–25 (“[o]nce the bar code image has been captured, the program decodes the bar code image data . . . with pattern recognition software.”). recognition and/or pattern recognition application routine can be invoked . . . to . . . decode the bar code.”). Thus, Ogasawara supports Patent Owner’s position that Ogasawara’s computing platform does not determine if an image contains a recognizable symbol before analyzing the image. Petitioner argues that the term “recognize” in Ogasawara discloses determining if an image contains a recognizable symbol, whereas the term “decode” discloses analyzing the symbol to extract information. Pet. Reply 6 (“capture, recognize and decode captured images.”). We disagree. Ogasawara uses both terms—recognize and decode—to describe analyzing image data to extract information. Ex. 1005, 18:32–37, 21:17–20. For example, Ogasawara discloses that its computing platform invokes recognition software “to either decode the bar code videographic data or to perform pattern recognition functions on a[n] icon-like patter[n].” Id. at 18:32–37 (emphases added); see also id. at 21:17–20 (“the program decodes the bar code image data . . . by operating on the bar code image with pattern recognition software”) (emphases added). Thus, Petitioner’s reliance on the term “recognize” does not show that Ogasawara discloses the determining limitation of claim 18. For the reasons discussed above, Petitioner does not show sufficiently” slip op. at 11

  Patent outcomesUS 7,899,252 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,899,252
• Ebay Inc. v. Masterobjects, Inc.No claims unpatentable
  PTAB · Jul 25, 2018 · IPR2017-00740 · APJ Christa P Zado · IPR · Final written decision

  Claims 1–3, 6, 7, 9, 12, 15–17, 21, 24–26, and 32–37 were not shown unpatentable because the petition did not establish the claimed usability test.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “skill in the art include, but are not limited to, the types of problems encountered in the art, the sophistication of the technology, and educational level of active workers in the field. In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995).” slip op. at 9

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

    “interpreted according to their “broadest reasonable construction in light of the specification of the patent” in which they appear. 37 C.F.R. § 42.100(b); see also Cuozzo Speed Techs., LLC, v. Lee, 136 S. Ct. 2131, 2141–46 (2016). We interpret claim terms using “the broadest reasonable meaning of the words in their ordinary usage as they would be understood by one of ordinary skill in the art, taking into account whatever enlightenment by way” slip op. at 10

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference is prior artDecided for petitioner

    “1. Overview of Kravets (Ex. 1003) Petitioner asserts Kravets is prior art under 35 U.S.C. § 102(e). Pet. 15. Patent Owner does not dispute Petitioner’s assertion that Kravets is prior art. Kravets issued from a patent application filed January 31, 2000. Ex. 1003, [22]. Based on the earliest possible priority date of the ’024 patent (see supra Section I.C), for purposes of this Final Written Decision, we conclude that Kravets is prior art to the ’024 patent under 35 U.S.C. § 102(e).” slip op. at 12

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

    “display to the user includes 1) PSS 40 identifying a first set of search terms, which preferably comprises 500 search terms, where the first n characters of each search term matches the n-character input string in the request (Ex. 1003, 6:17–36); and 2) PSS 40 selecting a second set of search terms, such as 6 terms, from the first set of search terms by selecting the 6 terms that have the highest value scores (Ex. 1003, 7:26–40). This disclosure does not describe a client object testing for usability by checking that a return message corresponds to the latest query. First, this disclosure relates to actions performed by the server, rather than the client. Id. at 6:17–36, 7:26–40 (describing PSS 40 performing this technique). But claim 1 requires the client object perform the test for usability. Ex. 1001, 32:2–3 (“the client object tests the usability of the results in the return message”) (emphasis added).” slip op. at 20

  Patent outcomesUS 8,539,024 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR
  Patents in suitUS 8,539,024
• Xactware Solutions, Inc. v. Pictometry International Corp.No claims unpatentable
  PTAB · Aug 28, 2017 · IPR2016-00593 · APJ Garth D Baer · IPR · Final written decision

  The Board held that claims 12–15, 21–23, 25–27, 33–38, 44, and 45 were not shown unpatentable because Pictometry was not established as a publicly accessible printed publication.

  RulingsFinal written decision

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

    “Version 2.7 (“EFS 2.7 User Guide,” “Pictometry,” or “User Guide”) and, as the name suggests, is a user guide for the Pictometry software product. See Ex. 1004, xiii. Patent Owner argues that Petitioner does not demonstrate that Pictometry is prior art. PO Resp. 5–10. In our Final Written Decision in IPR2016-00594, we considered substantively the same arguments and evidence Patent Owner and Petitioner raise in this case. See IPR2016-00594 FWD 17–29; compare IPR2016-00594 Paper 31, 13–20 with PO Resp. 6– 13; and compare IPR2016-00594 Paper 33, 3–9 with Reply 4–11. In IPR2016-00594, we found Pictometry’s limited dissemination to some governmental entities subject to licensing restrictions was not sufficient to show public dissemination or public accessibility. IPR2016-00594 FWD 17–29. We adopt that same finding here. For the reasons explained in IPR2016-00594, we find that Petitioner has not established by a preponderance of the evidence that Pictometry was publicly accessible so as to render it a printed publication under 35 U.S.C. §§ 102(b) and 311(b).” slip op. at 6

  • ExcludeMotion to exclude, grantedMotion to exclude, deniedGranted in part

    “substantively the same as the arguments made in IPR2016-00594. In IPR2016-00594, we denied Patent Owner’s motion to exclude Exhibit 1004 (Pictometry), Exhibit 1011 (a Merriam-Webster Dictionary Definition “database” copied from a web page), Exhibit 2010 (Cohasset Town Report 2008), 2011 (LARIAC1 Pictometry Training), Exhibit 2012 (LAR-IAC2 Product Guide), Exhibit 2020 (“GIS: Pictometry: Oblique Imagery training), Exhibit 2021 (“Pictometry License Guidelines”), and Exhibit 2022 (“Pictometry – April 19, 2007”). IPR2016-00594 FWD 5–17. We granted Patent Owner’s motion to exclude Exhibit 2013 (article titled “Los Angeles County Extends its License Agreement with Pictometry for New Oblique Aerial Photos”), Exhibit 2014 (“Pictometry Administrative Training”), Exhibit 2015 (“Information about TXWILM Administrative Training”), Exhibit 2016 (“Pictometry Administrative Training”), Exhibit 2019 (“GIS Working Group Meeting Minutes”), Exhibit 2023 (“Welcome to Your End User Training”), Exhibit 2024 (“Electronic Field Study Getting Started Guide”), Exhibit 2025 (“Pictometry Announces Technical Advancements for GIS Professionals1”), and Exhibit 2026 (“Pictometry Announces Technical Advancements for GIS Professionals2”). Id. We adopt the same findings and conclusions here. For the reasons explained in IPR2016-00594, we deny the motion to exclude Exhibits 1004, 1011, 2010, 2011, 2020, 2021, and 2022, but grant the motion to exclude Exhibits 2013, 2014, 2015, 2016, 2019, 2023, 2024, 2025, and 2026. See id.” slip op. at 5

  Patent outcomesUS 8,823,732 not shown unpatentable
  § 102 anticipation
  Patents in suitUS 8,823,732
• 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
• Arista Networks, Inc. v. Cisco Systems, Inc.No claims unpatentable
  PTAB · May 25, 2017 · IPR2016-00306 · APJ Miriam L Quinn · IPR · Final written decision

  Claim 63 was not shown unpatentable because Spinney does not disclose performing the selecting and determining steps in parallel.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “First, we give no credit to Dr. Chao’s opinion in this regard because it is not supported by Spinney. Specifically, we give no weight to Dr. Chao’s opinion that “Spinney makes clear that the CAM lookup and the hashing function (i.e., the forwarding lookup) take place at the same time.” Ex. 1002 ¶ 53. Instead, we find that the parallel operations in Spinney are confined to (1) applying the hash function to the 48-bit address and (2) performing a CAM lookup of the same 48-bit address. For example, Spinney discloses in Figure 8 that incoming address field 85 is subjected to hash function 86 to produce another 48-bit value. See id. at Fig. 8, 15:21−24; 16:16−19 (“The 48-bit destination address 61 from an incoming packet is simultaneously subjected to the hash function 86 and a CAM match” (emphasis added)), 16:44−46 (“this compare in the CAM is done in parallel with the hash function” (emphasis added)). The application of the hash function and the performance of the hash lookup are two different operations that produce different results. The hash function application produces a hashed 48-bit value, while the hash lookup results in pointing to an entry in the translation table that includes the gigaheader information, for processing the packet. See id. at Fig. 8 (identifying hash function 86 applied to input address 85, resulting in hashed address 89); 15:60−63. Spinney further discloses that the hash lookup is performed only if a CAM match is not found and, therefore, must occur after the CAM lookup is performed. Id. at 16:20–26 (“[I]f a CAM match is found in CAM 23, an index into the translation table 94 is immediately generated as indicated by the line 100. If not, the 16-bit field 88 of the hashed address 87 is used to index into the hash table 89 . . . .” (emphasis added)).” slip op. at 14

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

    “is not supported by Spinney. Specifically, we give no weight to Dr. Chao’s opinion that “Spinney makes clear that the CAM lookup and the hashing function (i.e., the forwarding lookup) take place at the same time.” Ex. 1002 ¶ 53. Instead, we find that the parallel operations in Spinney are confined to (1) applying the hash function to the 48-bit address and (2) performing a CAM lookup of the same 48-bit address. For example, Spinney discloses in Figure 8 that incoming address field 85 is subjected to hash function 86 to produce another 48-bit value. See id. at Fig. 8, 15:21−24; 16:16−19 (“The 48-bit destination address 61 from an incoming packet is simultaneously subjected to the hash function 86 and a CAM match” (emphasis added)), 16:44−46 (“this compare in the CAM is done in parallel with the hash function” (emphasis added)). The application of the hash function and the performance of the hash lookup are two different operations that produce different results. The hash function application produces a hashed 48-bit value, while the hash lookup results in pointing to an entry in the translation table that includes the gigaheader information, for processing the packet. See id. at Fig. 8 (identifying hash function 86 applied to input address 85, resulting in hashed address 89); 15:60−63. Spinney further discloses that the hash lookup is performed only if a CAM match is not found and, therefore, must occur after the CAM lookup is performed. Id. at 16:20–26 (“[I]f a CAM match is found in CAM 23, an index into the translation table 94 is immediately generated as indicated by the line 100. If not, the 16-bit field 88 of the hashed address 87 is used to index into the hash table 89 . . . .” (emphasis added)).” slip op. at 14

  Patent outcomesUS 7,023,853 not shown unpatentable
  § 102 anticipation
  Patents in suitUS 7,023,853
• Broad Ocean Technologies, LLC v. Nidec Motor CorporationNo claims unpatentable
  PTAB · Dec 21, 2016 · IPR2015-01617 · APJ Patrick M Boucher · IPR · Final written decision

  Claims 7–13 were not shown unpatentable because Beifus did not disclose the claimed torque table with alternate torque settings.

  RulingsFinal written decision

  • BurdenNot shown unpatentable

    “Beifus states that Figure 6 “is a chart illustrating an induction motor speed-torque curve that is programmed into a memory of an ECM.” Ex. 1007 ¶ 11. Because “[a] claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference,” the dispositive issue in this proceeding is well defined: does Figure 6 (and related disclosure) of Beifus teach “selecting a torque table associated with the adjustment factor, the torque table including alternate torque settings,” as recited in independent claim 7? See Verdegaal Bros. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987).” slip op. at 9

  • Strike new argumentNew argument disregardedDecided for patent owner

    “reasoning of Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376 (Fed. Cir. 2015). Petitioner contends that “[u]pon reading Beifus, a person of ordinary skill would immediately recognize that the ECM control circuit could handle the torque values in two ways – storing a set of torque values in a memory or by calculating the torque values ‘on the fly.’” Reply 18. Kennametal explains that “a reference can anticipate a claim even if it ‘do[es] not expressly spell out’ all the limitations arranged or combined as in the claim, if a person of skill in the art, reading the reference, would ‘at once envisage’ the claimed arrangement or combination.” Kennametal at 1381 (citing In re Petering, 301 F.2d 676, 681 (CCPA 1962)). Petitioner did not raise the Kennametal theory of anticipation in its Petition, and the argument based on it in the Reply is, therefore, improper. 37 C.F.R. § 42.23(b) (“A reply may only respond to arguments raised in the corresponding opposition, patent owner preliminary response, or patent owner response.”) (emphasis added); CBS Interactive, Inc. v. Helferich Pat. Lic., LLC, Case IPR2013-00033, slip op. at 3 (PTAB Aug. 9, 2013) (Paper 79) (“Should there be improper arguments or evidence presented with a reply, the Board, exercising its discretion, may exclude the reply and related evidence in their entirety, or alternatively, decline to consider the improper arguments and/or related evidence.”). Although Patent Owner addressed this theory in its Response (PO Resp. 21–24), Patent Owner appears to have done so only prophylactically after the theory was raised by Petitioner in redirect examination of Dr. Sidman. See PO Resp. 21 (“During Dr. Sidman’s redirect examination by [Petitioner’s] counsel, he was asked the following leading question . . . .”) (“The Board should disregard any of this new evidence and argument if [Petitioner] intends to rely on it.”). Because this is a new argument, not raised in the Petition, we do not consider it.” slip op. at 18

  • Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner

    “the ambiguity when Figure 6 is actually described in detail in the specification.” Id. at 16. As Patent Owner asserts, “Beifus makes it clear that Figure 6 is a plot of values derived from key characteristics which are motor parameters of the emulated motor.” Id. (citing Ex. 1007 ¶ 36; Ex. 2002 ¶¶ 15–16, 31). This understanding of Beifus is confirmed by testimony of Patent Owner’s expert, Mark N. Horenstein, Ph.D. Ex. 2002 ¶¶ 15–16. Dr. Horenstein explains that a person of ordinary skill in the art would understand that the parameters stored in the ECM are key parameters used with the formula reproduced above to describe the torque-speed curve of the induction motor being emulated, namely the no-load speed, breakdown speed, and shape description number n. Id. ¶ 15. Dr. Horenstein further testifies that, “although square and diamond symbols appear along the curves in Figure 6, nowhere does Beifus describe the storing of these individual points.” Id. ¶ 16. Rather, Dr. Horenstein expresses his opinion that “a person of skill would understand these symbols to be included simply to identify which curve applies to Option 1 and which to Option 2 [i.e., different options for the induction motor breakdown speed], as indicated by the legend to the right of the plots.” Id. Petitioner challenged Dr. Horenstein’s opinion at his deposition, in part by comparing a drawing from one of Dr. Horenstein’s own patents that included a series of curves with data marked by different symbols: Q. So if a person of ordinary skill in the art looking at Figure 6 of the Beifus patent sees diamonds and squares, wouldn’t they come to an understanding that those are data points? A. I don’t think so. And the reason is that a formula is given that explains how the curves are computed. Figure 19 of [Dr. Horenstein’s patent], those are discretely measured points performed by experiment, and there really is no formula that applies to those curves per se, they’re just data points that have some scatter relative to each other and they happen to be connected by lines, but those lines do not represent a formula. Ex. 1013, 54:2–16. We disagree with Petitioner’s characterization of this testimony as explaining that “the reason a person of ordinary skill in the art would understand that the diamonds and squares appearing in Figure 19 of [Dr. Horenstein’s] patent are data points, as opposed to mere curve identifiers, is because the diamonds and squares are connected by lines.” Reply 15. Rather, Dr. Horenstein’s testimony makes clear that his opinion is grounded in Beifus’s disclosure of a formula that allows calculation of the illustrated points and that connection of data points measured by experiment with lines is incidental. Dr. Horenstein’s testimony is more persuasive than the testimony of Petitioner’s expert, Michael D. Sidman, Ph.D., on the identification of “key characteristic points” disclosed by Beifus. For example, Dr. Sidman appeared to suggest at his deposition that the entire speed-torque curve of Beifus’s Figure 6 is itself a “key characteristic point,” but qualified that position when challenged by Patent Owner. See Ex. 2001, 23:22–25:15. Nevertheless, Dr. Sidman agrees that (1) a curve can be generated from a mathematical formula and graphed (Ex. 2001, 30:8–11); (2) Beifus’s two formulas correspond to the formulas for “Option 1” and “Option 2” shown in Figure 6 (id. at 33:12–36:19); (3) operating speed, breakdown speed, no load speed, and shape-description number n are variables used in the formula disclosed by Beifus (id. at 22:23–23:10); (4) the calculation disclosed by Beifus could be performed on the fly in a motor controller (id. at 47:6–14); and (5) Beifus does not explicitly disclose that any precalculations are performed (id. at 43:1–23). These aspects of Dr. Sidman’s testimony are consistent with Patent Owner’s reading of Beifus.” slip op. at 13

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther

    “We see no compelling reason to modify these constructions based on the positions of the parties as developed during the trial, and adopt them for this Decision. With respect to the construction of “torque table,” Patent Owner asserts: If the Board’s construction means that the table need not be in any particular format in the memory, but the table must still store the alternative torque values required by the claim “in a memory connected to the motor,” then Patent Owner accepts this interpretation for the purposes of this proceeding. However, if the Board’s construction including reference to “a torque curve graphically representing a set of torque values” does not require the torque values shown on the curve to be stored in memory, it is erroneous. PO Resp. 9. We agree with Patent Owner’s position, namely that “[t]he broadest reasonable interpretation of ‘table’ still must require the torque values to be stored in the table.” Id. As Patent Owner points out, “[t]he only intrinsic evidence available in this proceeding demonstrates a ‘torque table’ stores alternative torque settings.” Id. In particular, the ’092 patent consistently uses “table” to refer to discrete data that are stored in a memory, such as in the “speed tables” described as alternatives to “torque tables.” See Ex. 1001, col. 11, ll. 5–24, col. 16, ll. 63–66 (“Instead of adjusting the torque as described above, the motor controller 18 could store a plurality of different torque or speed tables and select one of the torque/speed tables based on an input provided by the torque adjustment mechanism.”). This aspect of the construction of “torque table” is reflected in its reference to including a graphical representation of “a set” of torque values in a memory connected to a motor.” slip op. at 7

  Patent outcomesUS 7,990,092 not shown unpatentable
  Claim construction§ 102 anticipation
  Patents in suitUS 7,990,092
• Smart Modular Technologies Inc. v. Netlist, Inc.No claims unpatentable
  PTAB · Mar 9, 2016 · IPR2014-01374 · APJ Linda M Gaudette · IPR · Final written decision

  Claims 1, 2, 4–6, 9–11, 14–17, and 20 were not shown unpatentable under § 102(b) over Averbuj because its BIST controller did not generate the claimed address signals.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedPetitioner expert creditedDecided for petitioner

    “Sechen believes a person of ordinary skill in the art would have additional experience, education, or a combination of the two, beyond that proposed by Dr. Bagherzadeh. Both experts have been employed as professors since the mid 1980s. Dr. Bagherzadeh also has some experience working with engineers in the industry by virtue of his employment with AT&T Bell Labs from 1980–1984 (Ex. 1009 ¶ 6; id. Appx. A). Both experts were awarded bachelors and masters degrees in electrical engineering. Dr. Bagherzadeh was awarded a doctorate in computer engineering, while Dr. Sechen was awarded a doctorate in electrical engineering. Based on a comparison of Dr. Bagherzadeh’s and Dr. Sechen’s declarations (Exs. 1009, 2019), we find Dr. Bagherzadeh has a broader range of educational and work experience, and, therefore, accord greater weight to his opinion as to the level of ordinary skill in the art. Dr. Bagherzadeh’s opinion is consistent with our finding as to the level of ordinary skill in the art in our Final Written Decision in IPR-971. We, therefore, adopt our finding in IPR-971 as to the level of ordinary skill in the art: [A] person of ordinary skill in the art at the time of the ’501 patent would have 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.” slip op. at 10

  • Expert testimonyPetitioner expert discountedMixed

    “We are not persuaded by Dr. Bagherzadeh’s testimony because it is devoid of specific facts and analysis as to what led him to conclude that a person of ordinary skill in the art would interpret the claim term “generate” in the manner Petitioner proposes. See id. Dr. Bagherzadeh does not explain how the IEEE definition supports an interpretation of generate as “cause or initiate transmission,” terms that do not appear in the IEEE definition. See id. Nor does Dr. Bagherzadeh identify other extrinsic evidence which he believes to be consistent with an interpretation of “generate” as meaning “cause or initiate transmission.” See id. Likewise, Dr. Bagherzadeh has not explained why he believes the ’501 patent “describe[s] generating as initiating or transmitting” (Ex. 1009 ¶ 28), as these terms do not appear in the cited portions of the ’501 patent. See Ex. 1008, 6:8–10, 11:4–11:6, 6:19–22.1 Accordingly, Dr. Bagherzadeh’s testimony does not persuade us to accept Petitioner’s interpretation of “generate” as meaning “cause.”” slip op. at 15

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

    “We are not persuaded by Dr. Bagherzadeh’s testimony because it is devoid of specific facts and analysis as to what led him to conclude that a person of ordinary skill in the art would interpret the claim term “generate” in the manner Petitioner proposes. See id. Dr. Bagherzadeh does not explain how the IEEE definition supports an interpretation of generate as “cause or initiate transmission,” terms that do not appear in the IEEE definition. See id. Nor does Dr. Bagherzadeh identify other extrinsic evidence which he believes to be consistent with an interpretation of “generate” as meaning “cause or initiate transmission.” See id. Likewise, Dr. Bagherzadeh has not explained why he believes the ’501 patent “describe[s] generating as initiating or transmitting” (Ex. 1009 ¶ 28), as these terms do not appear in the cited portions of the ’501 patent. See Ex. 1008, 6:8–10, 11:4–11:6, 6:19–22.1 Accordingly, Dr. Bagherzadeh’s testimony does not persuade us to accept Petitioner’s interpretation of “generate” as meaning “cause.”” slip op. at 15

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

    “arranged” or “prepared.” Reply 9–10. Responsive to this Board panel’s questioning during the oral hearing, however, Petitioner agreed that “designed to, adapted to, or arranged to” was an acceptable definition for the claim term “configured to.” See Tr. 22:7–17. Patent Owner contends the phrase “configured to generate” should be construed as “programmed to generate.” PO Resp. 9. Patent Owner does not propose a separate construction for the term “configured.” See generally id. at 9–17. In support of its proposed construction, Patent Owner relies on language in the ’501 patent and the testimony of its expert, Dr. Sechen. See id. Dr. Sechen testifies as to the meaning of “configured to generate,” but does not provide a separate discussion of the meaning of “configured to” outside the context of “configured to generate.” See Ex. 2019 ¶¶ 42–57. As explained in our Final Decision in IPR-971, the term “configured to” is used in the ’501 patent in conjunction with numerous terms, such as “provide” and “selectively input,” and there is a presumption that the term “configured to” should carry the same meaning in each instance. See IPR- 971 FWD, 18–19. The evidence relied on by Patent Owner in support of its proposed construction of the term “configured to” in the present inter partes review does not differ materially from the evidence relied upon by Patent Owner in IPR-971. Compare PO Resp. 9–17 with IPR-971, Paper 19, 14– 19. Accordingly, we determine the broadest reasonable construction of “configured to” is “designed to, adapted to, or arranged to” for the reasons stated above and in our Final Written Decision in IPR-971. We adopt and incorporate by reference our analysis and construction of the term “configured to” in our Final Written Decision in IPR-971 (IPR-971 FWD, 18–22). slip op. at 18

  Patent outcomesUS 8,359,501 not shown unpatentable
  Claim construction§ 102 anticipation
  Patents in suitUS 8,359,501
• Smart Modular Technologies Inc. v. Netlist, Inc.No claims unpatentable
  PTAB · Mar 9, 2016 · IPR2014-01372 · APJ Linda M Gaudette · IPR · Final written decision

  The Board held claims 1–4, 14–20, 27, and 29 not unpatentable because Averbuj did not disclose a control module configured to generate the claimed address signals.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Based on a comparison of Dr. Bagherzadeh’s and Dr. Sechen’s declarations (Exs. 1009, 2019), we find Dr. Bagherzadeh has a broader range of educational and work experience, and, therefore, accord greater weight to his opinion as to the level of ordinary skill in the art. Dr. Bagherzadeh’s opinion is consistent with our finding as to the level of ordinary skill in the art in our Final Written Decision in IPR-970. We, therefore, adopt our finding in IPR-970 as to the level of ordinary skill in the art: [A] person of ordinary skill in the art at the time of the ’434 patent would have 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. IPR-970 FWD, 10–11 (noting that our finding was “based on our review of the ’434 patent and the types of problems and solutions described in the ’434 patent and cited prior art”).” slip op. at 10

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “We are not persuaded by Dr. Bagherzadeh’s testimony because it is devoid of specific facts and analysis as to what led him to conclude that a person of ordinary skill in the art would interpret the claim term “generate” in the manner Petitioner proposes. See id. Dr. Bagherzadeh does not explain how the IEEE definition supports an interpretation of generate as “cause or initiate transmission,” terms that do not appear in the IEEE definition. See id. Nor does Dr. Bagherzadeh identify other extrinsic evidence which he believes to be consistent with an interpretation of “generate” as meaning “cause or initiate transmission.” See id. Likewise, Dr. Bagherzadeh has not explained why he believes the ’434 patent “describe[s] generating as initiating or transmitting” (Ex. 1009 ¶ 28), as these terms do not appear in the cited portions of the ’434 patent. See Ex. 1008, 6:3–5, 10:67–11:2, 6:14–17. Accordingly, Dr. Bagherzadeh’s testimony does not persuade us to accept Petitioner’s interpretation of “generate” as meaning “cause.”” slip op. at 15

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

    “supports a finding that a customary meaning of “generate” to one of ordinary skill in the art is “cause.”1 We, therefore, determine the broadest reasonable 1 Petitioner relies on Webster’s II, for a definition of “cause.” See Reply 4, 6–8 (citing Ex. 1032, 3). Having determined the broadest reasonable interpretation of “generate” does not encompass “cause,” we do not find this evidence relevant to our claim construction analysis. construction of “generate” is “produce” for the reasons stated above and in our Final Written Decision in IPR-970. We adopt and incorporate by reference our analysis and construction of the term “generate” in our Final Written Decision in IPR-970 (IPR-970 FWD, 24–33).” slip op. at 16

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

    “Moreover, the evidence in this proceeding fails to support a finding that Averbuj’s BIST controller 4 is configured to generate address signals for testing the memory devices in the manner claimed. In Averbuj, the algorithms (i.e., CMD_DATA containing OP CODE such as SET ADDRESS (see Ex. 1011, 4:4–12, 5:19–21, Table 1)) communicated to sequencers 8 are either received by user interface 22 via external input (id. at 5:41–43) or generated by another component (i.e., a component that is not part of BIST controller 4 circuitry) and stored in algorithm memory 20 (see Ex. 2012, 30:23–24, 41:1–4, 54:21–22, 55:6–25, 55:20–56:9 (wherein Dr. Bagherzadeh testifies that OP CODE residing in the algorithm memory of BIST controller 4 are generated by hand or by a tool, e.g., a compiler, and that “99 percent of the designs or chips do not have a compiler on-board”)). Multiplexer 24 selects one of the algorithms (i.e., CMD_DATA) and BIST controller 4 provides to sequencers 8 the same CMD_DATA (e.g., address signals) without transformation or modification. See Ex. 1011, 4:4–12, 5:16–21; Ex. 2012, 54:8–13 (“Averbuj Figure 2, without consideration of any other disclosure in Averbuj, illustrates that a multiplexer selects an input from the algorithm memory and the output [] reflect[s] what’s in the input, based on the selection.”). Based on our interpretation of the terms “configured to” and “generate,” as discussed above, the claim recitation “a control module configured to generate address . . . signals for testing the memory devices” (claims 1, 20, and 29) does not read on Averbuj’s BIST controller 4, because the SET ADDRESS signal output by BIST controller 4 is produced by a component external to BIST controller 4, and merely selected by multiplexer 24 and provided to sequencers 8 without transformation or modification by BIST controller 4. In sum, after considering the parties’ arguments and evidence, we determine Petitioner has not shown, by a preponderance of the evidence, that Averbuj discloses “a control module configured to generate address . . . signals for testing the memory devices” as recited in independent claims 1, 20, and 29. Petitioner does not correct this deficiency in its challenges as to dependent claims 2–4, 14–19, and 27. See Pet. 32–39; 35 U.S.C. § 112, ¶ 4 (“A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.”). Because Petitioner has not identified in Averbuj a teaching of each and every limitation recited in claims 1–4, 14–20, 27, and 29, Petitioner has not met its burden to show these claims are unpatentable under 35 U.S.C. § 102(b) as anticipated by Averbuj.” slip op. at 30

  Patent outcomesUS 8,001,434 not shown unpatentable
  Claim construction§ 102 anticipation
  Patents in suitUS 8,001,434
• EMC Corporation v. Acqis LLCNo claims unpatentable
  PTAB · Mar 8, 2016 · IPR2014-01469 · APJ Robert J Weinschenk · IPR · Final written decision

  Claims 24 and 31–33 were not shown unpatentable because Petitioner failed to prove obviousness over either asserted reference combination, including failure to establish Bogaerts as prior art.

  RulingsFinal written decision

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

    “Interconnect (PCI) bus transaction” to mean “a data signal communication with an interconnected peripheral component.” Pet. 13. Patent Owner agrees with the construction in the Decision on Institution that the claim term “Peripheral Component Interconnect (PCI) bus transaction” means “Peripheral Component Interconnect (PCI) industry standard bus transaction.” PO Resp. 21–22. We see no reason now to deviate from the construction in the Decision on Institution. The evidence indicates that the term “Peripheral Component Interconnect (PCI) bus transaction” refers to a particular industry standard, not just any communication with an interconnected peripheral component. Industry literature and dictionaries use the proper noun “Peripheral Component Interconnect” and the abbreviation “PCI” to refer to a particular industry specification for a local bus. See, e.g., Ex. 2001, 1; Ex. 2002, 6–7; Ex. 2003, 7–8. The challenged claims recite “Peripheral Component Interconnect” as a proper noun and abbreviate it as “PCI,” indicating that the challenged claims use those terms consistent with the understood industry meaning. Ex. 1001, col. 27, ll. 24–25, col. 28, ll. 35–36; see Azure Networks, LLC v. CSR PLC, 771 F.3d 1336, 1348 (Fed. Cir. 2014). The written description similarly uses the abbreviation “PCI” to refer to a particular industry standard, and uses the common noun “peripheral bus” to refer to a generic peripheral bus. Compare Ex. 1001, col. 19, ll. 31–33 (“the present invention may interface two PCI or PCI-like buses”), with id. at col. 7, ll. 4–6 (“Additionally, the host controller is coupled to a clock control logic, a configuration signal, and a peripheral bus.”) (emphasis added). Petitioner and Petitioner’s declarant, Mr. Bruce Young, acknowledge that the term “Peripheral Component Interconnect (PCI)” refers to an industry standard. Ex. 1003 ¶ 58; Ex. 2006, 1, 3; Ex. 2031, 16:8–12. The evidence Petitioner identifies in support of its proposed construction is the claim construction order issued in ACQIS LLC v. Appro International, Inc., No. 6:09-cv-00148 (E.D. Tex. Feb. 3, 2011). Pet. 12–13 (citing Ex. 1013). In that case, though, the parties did not appear to dispute that the term “Peripheral Component Interconnect (PCI)” refers to an industry standard. See Ex. 1013, 7 (“The parties’ primary dispute is whether the term is limited to the conventional, parallel PCI Local Bus, and, therefore excludes PCI Express bus architecture and bus transaction protocol.”). Moreover, the district court subsequently reconsidered its construction and clarified that the term “PCI bus transaction” refers to a PCI industry standard bus transaction. Ex. 1030, 8–10. Therefore, we construe the claim term “Peripheral Component Interconnect (PCI) bus transaction” to mean “Peripheral Component Interconnect (PCI) industry standard bus transaction,” and we construe the claim term “PCI bus transaction” to mean “PCI industry standard bus transaction.”” slip op. at 6

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

    “Horst outputs address and data bits of a PCI bus transaction in serial form over the TNet links. Pet. 31–34. Petitioner’s argument is not persuasive. The TNet processor interface in Horst translates a CPU transaction into a TNet transaction. Ex. 1009, 5 (“The interface to the destination CPU or I/O device provides mapping and validation hardware translating this virtual TNet address to the appropriate physical memory address.”), Figs. 5, 7; Ex. 2021 ¶ 94 (“The TNet Processor Interface generates TNet transactions from CPU front-side bus transactions.”). The TNet processor interface then encodes the TNet transaction using an 8B/9B encoder so that it can be output over the 9-bit serial TNet links. Ex. 1003 ¶¶ 48, 146; Ex. 1009, 3, Figs. 3, 4 (showing “8B/9B encoder”), Table 1; Ex. 2021 ¶ 105. Petitioner does not identify persuasive evidence indicating that either the CPU transaction or the TNet transaction is a PCI industry standard bus transaction. Pet. 31–34 (citing Ex. 1009, 3–8, Figs. 2, 3, 5, 7–9, Table 1; Ex. 1003 ¶¶ 159[24C(i)], 159[24C(iv)], 159[24C(v)], 159[31B(i)], 159[31B(iii)]); Ex. 2021 ¶ 129. Thus, the evidence identified in the Petition does not indicate that the information output by the TNet processor interface over the TNet links includes address and data bits of a PCI industry standard bus transaction in serial form. Petitioner points out that, after a TNet transaction is communicated over the TNet links, a TNet bus interface in the console may use information in the TNet transaction to create a PCI industry standard bus transaction if a particular I/O device is connected to a PCI bus. Pet. 31–32 (citing Ex. 1009, 7, Fig. 8). But claims 24 and 31 require more than just communicating information over serial channels that subsequently might be used in the console to create a PCI industry standard bus transaction. Claims 24 and 31, when read in light of the specification, require that the information actually communicated over the serial channels includes address and data bits of a PCI industry standard bus transaction in serial form. Ex. 1001, col. 20, ll. 60–65, col. 21, ll. 15–21, col. 27, ll. 34–38, col. 28, ll. 34–39; Ex. 2022, 15:12–16:2, 22:11–16. As discussed above, the evidence identified in the Petition does not indicate that the information output by the TNet processor interface over the TNet links includes address and data bits of a PCI industry standard bus transaction in serial form.” slip op. at 11

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedDecided for patent owner

    “The evidence identified by Patent Owner indicates that the date “2 October 1996” on Bogaerts is when it was submitted to the CERN/LHCC committee. Ex. 2021 ¶¶ 170, 171, 173; Ex. 2026, 12. Although it is possible that Bogaerts was available in the CERN Library at or around the same time, Petitioner has not shown that by a preponderance of the evidence. For example, Petitioner does not cite persuasive evidence indicating that the “Submitted by 2 Oct 1996” entry in the CERN Document Server record means that Bogaerts was available in the CERN Library on that date. Tr. 23:1–12, 25:5–25; Pet. Reply 21–25. In addition, Petitioner acknowledges that the CERN Document Server record itself was not created until December 18, 2014. Tr. 25:5–25; Ex. 2011, 439. Therefore, Petitioner has not shown sufficiently that Bogaerts is a prior art printed publication based on its availability in the CERN Library.” slip op. at 17

  • ExcludeMotion to exclude, deniedDenied

    “should be excluded for lack of authentication under Fed. R. Evid. 901. PO Mot. 2–6. Federal Rule of Evidence 901 requires that the proponent produce evidence sufficient to support a finding that an item is what the proponent claims it is. Here, Patent Owner does not dispute that Exhibit 1011 is what Petitioner claims it is, namely a reference entitled “RD24 Status Report: Application of the Scalable Coherent Interface to Data Acquisition at LHC.” Id. What Patent Owner disputes is whether Petitioner has shown by a preponderance of the evidence that Bogaerts is prior art with respect to the ’814 patent. Id. Patent Owner attempts to characterize this dispute as a question of authentication, arguing that Petitioner has not produced “evidence that [Exhibit 1011] is a true and correct copy of a publication that was publicly available as of the date asserted by Petitioner.” Id. at 3. But this is a question of sufficiency of proof, not admissibility. Therefore, Patent Owner’s Motion to Exclude Exhibit 1011 is denied.” slip op. at 20

  Patent outcomesUS RE42,814 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
• Amazon.Com, Inc. / HTC Corporation et al. v. Cellular Communications Equipment, LLCNo claims unpatentable
  PTAB · Jan 6, 2016 · IPR2014-01134 · APJ Robert J Weinschenk · IPR · Final written decision

  Claims 1, 6, 9, 14, 18, and 19 were not shown unpatentable because Baker did not anticipate them and Reed with Baker or Love did not establish obviousness.

  RulingsFinal written decision

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

    “Whether a party is a real party in interest is a “highly fact-dependent question” that is evaluated “on a case-by-case basis.” Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,759–60 (Aug. 14, 2012). Some of the common considerations for determining whether a party is a real party in interest include whether the party funds, directs, or controls the petition or proceeding. Id. at 48,760. Here, Patent Owner does not identify any evidence indicating that HTC America funds, directs, controls, or otherwise is involved in this petition or proceeding. Patent Owner’s argument that HTC America and HTC Corporation acted jointly in other cases and that HTC America is named as a real party in interest in other cases does not indicate that HTC America is a real party in interest in this case. Similarly, Patent Owner’s argument that an employee of HTC America is identified on the power of attorney for HTC Corporation in IPR2014-01135 does not indicate that HTC America is a real party in interest in this case.3 Finally, Patent Owner’s argument that HTC America and HTC Corporation share counsel does not indicate that HTC America funds, directs, controls, or otherwise is involved in this case.” slip op. at 7

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

    “Patent Owner’s proposed interpretation is supported by the claim language and the specification. In the challenged claims, the disputed phrase “at a start of a message transmission using a first one of the codes” immediately follows the phrase “a total transmit power of the subscriber station for the codes.” Ex. 1001, col. 9, ll. 62–64, col. 10, ll. 38–40, col. 12, ll. 8–10. Further, the specification explains that a “transmit power difference” is a difference between “a first and a second transmit power.” Id. at col. 2, ll. 41–43. According to the specification, the first transmit power is “the total maximum transmit power of the subscriber station for the plurality of codes” (id. at col. 2, ll. 45–47), and “[t]he second of the two transmit powers is the total transmit power of the subscriber station for the plurality of codes at the start of a message transmission using a first of the codes” (id. at col. 2, ll. 59–61 (emphasis added)). Thus, the specification indicates that the phrase “at a start of a message transmission using a first one of the codes” modifies the total transmit power. Other portions of the specification also support Patent Owner’s interpretation. See, e.g., id. at col. 6, ll. 42–47 (“The transmit power difference . . . is required to exist between the total transmit power for the two codes DCH and EDCH at the start of the transmission of an EDCH message and the maximum transmit power for the two codes DCH and EDCH.” (emphasis added)), col. 8, ll. 51–63. Therefore, we determine that, when given the broadest reasonable interpretation, the phrase “at a start of a message transmission using a first one of the codes” in the challenged claims modifies the phrase “a total transmit power of the subscriber station for the codes.”” slip op. at 9

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

    “Petitioner does not identify any express disclosure in Baker indicating that the boundary of the frame or timeslot immediately preceding the ACK or NACK signal is the start of a message transmission. Pet. 23–26; Pet. Reply 9–10; Tr. 11:3–10. Petitioner instead argues that “an EDCH message as described in the ’174 patent can be a single frame,” and, thus, “maintaining a transmit power difference at a start of a frame (i.e., at a start of an EDCH message transmission) must be equivalent to maintaining a transmit power difference at a start of a message.” Pet. Reply 9; Tr. 13:15– 19. In other words, Petitioner argues that the start of a frame of an EDCH message inherently is the start of a message transmission.4 Petitioner’s argument is not persuasive. First, Petitioner only argues that the mobile station in the ’174 patent transmits an EDCH message. Pet. Reply 9. Petitioner does not argue or identify evidence indicating that the mobile station in Baker transmits an EDCH message. Id. at 9–10; Tr. 12:6– 4 Petitioner argued at the oral hearing that the term “message transmission” in the challenged claims refers to any frame in a message because the EDCH message described in the ’174 patent can be a single frame. Tr. 61:2–62:10. Petitioner’s argument is improper because it was presented for the first time at the oral hearing. See Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). Further, we are not persuaded that, because an EDCH message sometimes can be a single frame, the phrase “at a start of a message transmission” refers to the start of any frame in a message transmission. 16. Therefore, Petitioner’s argument that the start of a frame of an EDCH message inherently is the start of a message transmission does not demonstrate that the start of a frame in Baker inherently is the start of a message transmission. Tr. 12:6–16. Second, Petitioner does not identify evidence indicating that the start of a frame of an EDCH message necessarily is the start of a message transmission. Pet. Reply 9–10. Petitioner argues that an EDCH message can be a single frame, and, thus, the start of a frame of an EDCH message can be the start of a message transmission. Id. at 9; Ex. 1015 ¶ 11. However, the mere possibility that the start of a frame may correspond to the start of a message transmission is not sufficient to show that Baker anticipates the challenged claims. See In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (“Inherency . . . 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.”). Further, Petitioner acknowledges that a message transmission in Baker may include more than one frame, and, as a result, the start of a frame in Baker does not necessarily correspond to the start of a message transmission. Tr. 12:6–16, 16:19–19:13. Therefore, because Petitioner has not shown that Baker expressly or inherently discloses determining a transmit power difference between a maximum transmit power for the codes and a total transmit power for the codes at a start of a message transmission using a first one of the codes, Petitioner has not shown by a preponderance of the evidence that Baker anticipates claims 1, 6, 9, 14, 18, and 19.” slip op. at 12

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

    “As discussed above, Petitioner argues that Reed teaches a mobile station that can transmit two or more data streams. Pet. 28–29 (citing Ex. 1004, col. 4, ll. 14–21). The portion of Reed cited by Petitioner states that: If the mobile station desires to send two or more data streams (or hold voice and data connections at the same time), an addition [sic] degree of freedom allows the mobile station to deliberately increase the headroom on one of the data streams to de-prioritize that data stream. This would result in, for example, a longer time to transmit a text message from the mobile station but allow a digital picture to be transmitted at an optimum data rate. Ex. 1004, col. 4, ll. 14–21 (emphases added). This portion of Reed indicates that the headroom for one data stream can be adjusted independently of the headroom for the other data streams, and, thus, demonstrates that each data stream has its own headroom. Id.; Ex. 1003 ¶ 110; Ex. 2022 ¶¶ 100–101. As a result, assuming that each data stream in Reed is assigned a different code, Reed teaches determining a separate headroom for each code, not determining a single headroom for a plurality of codes. Ex. 1003 ¶ 110; Ex. 2022 ¶¶ 101–104.” slip op. at 16

  Patent outcomesUS 7,941,174 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,941,174

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.