• Asustek Computer, Inc. / Asus Computer International v. Avago Technologies General IP (Singapore) Pte. LtdRehearing granted
  PTAB · Mar 8, 2017 · IPR2016-00647 · APJ Glenn J Perry · IPR · Rehearing

  Granted petitioner’s request for reconsideration and added institution of the §102 Cioffi challenge to claims 8, 11, 12, 14, 15, 18, and 19.

  RulingsRehearing decision

  • RehearingRehearing, grantedGranted

    “III. CONCLUSIONS For the foregoing reasons, we are persuaded that our Decision to Institute overlooked or misapprehended the matters discussed in this Decision, and that the information presented in the Petition establishes that there is a reasonable likelihood that Petitioner would prevail with respect to its challenge as to the patentability of claims 8, 11, 12, 14, 15, 18, and 19 as being anticipated by Cioffi. The Board has not made a final determination on the patentability of any challenged claims or the construction of any claim terms. Our final decision will be based on the record as fully developed during trial.” slip op. at 5

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

    “Upon review on rehearing, we are persuaded the Petition demonstrates sufficiently for purposes of institution that data and synchronization signals are multiplexed and encoded by MUX & ENCODER 43 in Cioffi’s Figure 3. Multiplexed sub-symbols are passed to modulator 45, which incorporates an inverse fast Fourier transform (IFFT). Based on this understanding of Cioffi, the detailed reading of claims 8, 11, 12, 14, 15, 18, and 19 on Cioffi at Petition pages 35–53, supported by the Lyon Declaration (Ex. 1003), presents a reasonable likelihood of Petitioner prevailing as to this challenge. We, therefore, modify our Decision on Institution to include this challenge.” slip op. at 4

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

    “Upon review on rehearing, we are persuaded the Petition demonstrates sufficiently for purposes of institution that data and synchronization signals are multiplexed and encoded by MUX & ENCODER 43 in Cioffi’s Figure 3. Multiplexed sub-symbols are passed to modulator 45, which incorporates an inverse fast Fourier transform (IFFT). Based on this understanding of Cioffi, the detailed reading of claims 8, 11, 12, 14, 15, 18, and 19 on Cioffi at Petition pages 35–53, supported by the Lyon Declaration (Ex. 1003), presents a reasonable likelihood of Petitioner prevailing as to this challenge. We, therefore, modify our Decision on Institution to include this challenge.” slip op. at 4

  § 102 anticipation
  Patents in suitUS 6,430,148
• Duodecad It Services Luxembourg S.à.R.L. / Friendfinder Networks Inc. et al. v. Wag Acquisition, LLCSome claims unpatentable
  PTAB · Oct 20, 2016 · IPR2015-01036 · APJ Glenn J Perry · IPR · Final written decision

  Claims 1, 3, 4, 6, 8, 10, 11, 13, 15, 17, 18, and 20 are unpatentable as obvious; claims 7, 14, and 21 were not shown unpatentable because the references lack per-user server tracking.

  RulingsFinal written decision

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner

    “A given reference is publicly accessible upon a satisfactory showing that such document has been [1] disseminated, or [2] otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it. SRI Int’l, Inc. v. Internet Sec. Sys., Inc., 511 F.3d 1186, 1194–95 (Fed. Cir. 2008. Even though Chen issued prior to the USPTO PAIR system, Chen FH was and remains easily requisitioned by any interested person from the USPTO by making the appropriate request and paying the appropriate fee.” slip op. at 18

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

    “We are not persuaded by Patent Owner’s argument that initially operating Chen in rush mode would cause unstable operation. The only evidence Patent Owner has presented is the declaration testimony of Dr. Mayer-Patel, which was weakened as a result of cross-examination.  For example, Dr. Mayer-Patel admitted that simply setting the water marks to different values would avoid the potential hysteresis instability. See Ex. 1016, pp. 64−66. Further, both Chen and Chen FH disclose that transmission starts in rush mode. Chen states: “transmission occurs in rush mode when the amount of data falls below the lower water mark, i.e., there is not enough data in the client agent packet buffer (33).” Ex. 1004, 6:43–45. Chen FH states at page 86 in the “open file” line: “read data from disk and rush them to CA” (emphasis added). We credit Dr. Polish’s testimony that “Chen and the Chen File History teach that the mode that is used at the start of transmission is the rush mode.” Ex. 1003 ¶ 58. Dr. Mayer-Patel was cross-examined regarding “thrashing.” When asked about setting gamma levels to achieve a stable system, Dr. Mayer- Patel answered that he would set the gammas to different levels for transitioning from rush to normal modes than for transitioning from normal to rush modes. Ex. 1016, 66:9–18; see Ex. 1005, 86–87 (discussing gamma values); Reply 14 n.2 (discussing hysteresis). Based on the testimony of Dr. Mayer-Patel and the evidence cited by Petitioner (Reply 14–15), we conclude that one of ordinary skill would have known how to set gamma levels defining mode transitions to provide the appropriate amount of hysteresis to prevent thrashing, e.g., in the manner that a thermostat hysteresis is set to avoid too rapid a cycling of a furnace. We find that if Chen were operated initially in “rush” mode, it would” slip op. at 29

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedMixed

    “We are not persuaded by Patent Owner’s argument that initially operating Chen in rush mode would cause unstable operation. The only evidence Patent Owner has presented is the declaration testimony of Dr. Mayer-Patel, which was weakened as a result of cross-examination.  For example, Dr. Mayer-Patel admitted that simply setting the water marks to different values would avoid the potential hysteresis instability. See Ex. 1016, pp. 64−66. Further, both Chen and Chen FH disclose that transmission starts in rush mode. Chen states: “transmission occurs in rush mode when the amount of data falls below the lower water mark, i.e., there is not enough data in the client agent packet buffer (33).” Ex. 1004, 6:43–45. Chen FH states at page 86 in the “open file” line: “read data from disk and rush them to CA” (emphasis added). We credit Dr. Polish’s testimony that “Chen and the Chen File History teach that the mode that is used at the start of transmission is the rush mode.” Ex. 1003 ¶ 58. Dr. Mayer-Patel was cross-examined regarding “thrashing.” When asked about setting gamma levels to achieve a stable system, Dr. Mayer- Patel answered that he would set the gammas to different levels for transitioning from rush to normal modes than for transitioning from normal to rush modes. Ex. 1016, 66:9–18; see Ex. 1005, 86–87 (discussing gamma values); Reply 14 n.2 (discussing hysteresis). Based on the testimony of Dr. Mayer-Patel and the evidence cited by Petitioner (Reply 14–15), we conclude that one of ordinary skill would have known how to set gamma levels defining mode transitions to provide the appropriate amount of hysteresis to prevent thrashing, e.g., in the manner that a thermostat hysteresis is set to avoid too rapid a cycling of a furnace.” slip op. at 29

  • Obviousness (§103) › KSR rationalesUnpatentableUnpatentable

    “We find that ISO-11172 would have been well known to those of ordinary skill. It was at the time of the ’839 patent already published and utilized. ISO-11172 demonstrates that it was known to encode frames at constant and variable bit rates. We are not persuaded that Chen’s focus on variable bit rates teaches away from the use of either constant or variable bit rates. The fact that a standard, published before Chen, describes the use of both in detail suggests that it was well known to those of ordinary skill in the art. We therefore conclude that Petitioner has established by a preponderance of evidence of record that Chen describes the constant bit rate feature of claims 3, 10 and 17. We find that Petitioner has produced sufficient evidence to establish that claims 3, 10, and 17 are unpatentable over Chen, Chen FH, and ISO-11172. See Pet. 38–39 (citing Ex. 1003 ¶¶ 68–70).” slip op. at 35

  Patent outcomesUS 8,364,839 mixed
  § 102 anticipation§ 103 obviousness
  Patents in suitUS 8,364,839
• Toshiba Corporation v. Optical Devices, LLCNo claims unpatentable
  PTAB · Mar 9, 2016 · IPR2014-01445 · APJ Erica A Franklin · IPR · Final written decision

  Claims 1–10 were not shown unpatentable: Baird did not disclose the required FES and TES determination, and the ST Datasheet was not established 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

    “Ex. 1001, 13:50–61. From this disclosure, we recognize that the Specification suggests that a DSP operates faster than a microprocessor and, in some embodiments, real time digital servo algorithms can be executed on a DSP. Id. at 53–55. The Specification, however, does not expressly define the term “digital signal processor.” We note the competing views of Dr. de Callafon, on behalf of Patent Owner, and Dr. Zech, on behalf of Petitioner. We also note issues regarding the testimony of each declarant. For example, in some respects, Dr. de Callafon bases his proposed construction of a DSP on features that he asserts one of ordinary skill in the art would have understood that “most DSP processors have,” as opposed to features that all DSP processors require. Ex. 2008 ¶ 21(a). Dr. Zech’s deposition testimony describing the design of a DSP, also relied upon by Patent Owner, is unreliable because Dr. Zech testified that he had “no expertise” as to design elements distinguishing a DSP from a general processor. See, e.g., Ex. 2001, 35:12–13, 44:12–14. As we seek to give the term “DSP” its ordinary and customary meaning, as would be understood by one of ordinary skill in the art at the time of the invention, we take into account the Microsoft and IBM dictionary definitions submitted by Patent Owner. We note that each of those dictionaries define a DSP as being designed for “high speed” manipulation of data/digital signals. Ex. 2002; Ex. 2003. Patent Owner, however, has not directed our attention to evidence establishing what “high speed” encompasses. We note also that only one of the submitted dictionary definitions additionally characterizes such digital signal manipulation as “real-time.” Id. at 2003. The Specification, however, discloses that only some embodiments can execute real time digital servo algorithms on a DSP. We determine that Patent Owner has not established persuasively that the broadest reasonable interpretation of a DSP requires “high speed” processing achieving this “real time” feature. Indeed, Patent Owner’s “basic” construction for a DSP does not include a requirement for “real time” processing. See PO Resp. 20 (providing a minimal definition for a DSP). Thus, we are persuaded that that the broadest reasonable intepretation of the term “digital signal processor,” consistent with the Specification, is “an integrated circuit structured and arranged for manipulation of digital signals in accordance with programmed commands, and in a manner that operates faster than a microprocessor.” Patent Owner’s proposal to characterize further an integrated circuit as “specialized” is not well taken. Indeed, we find that proposed modification to be superfluous in that our construction describes that the integrated circuit is structured and arranged to achieve a specific function, i.e., manipulation of digital signals and operating faster than a microprocessor. 2.” slip op. at 8

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

    “Patent Owner proposes constructions for additional claim phrases without providing any discussion or reference to the Specification in support of those proposed constructions. PO Resp. 12–13. Based on our analysis, we determine that no express claim construction is necessary for any remaining claim term. Thus, we are not persuaded to adopt those proposed constructions.” slip op. at 10

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner asserts that one of ordinary skill in the art at the time of the filing of the ’729 patent as having: (1) a Bachelor’s of Science Degree in Electrical Engineering, Mechanical Engineering, Physics or a related field and at least two years of additional experience in control system technology, optical disk servo technology, magnetic disk servo technology, or related technologies, either in industry or research[,] or (2) at least a Master’s of Science Degree in Electrical Engineering, Mechanical Engineering, Physics or a related field with coursework in control system technology, optical disk servo technology, magnetic disk servo technology, or related technologies. Pet. 36–37 (citing Ex. 1006 ¶¶ 65–66) (emphases added). Patent Owner asserts that one of ordinary skill in the art would have “a Bachelor of Science in Mechanical or Electrical Engineering and at least two years of experience in control systems technology.” PO Resp. 5 (citing Ex. 2008 ¶¶ 9–11) (emphasis added). Based on our consideration of the record, we find that the evidence as a whole supports Petitioner’s broader description of the level of ordinary skill in the art. Accordingly, we adopt Petitioner’s statement of the ordinary skill in the art.” slip op. at 11

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

    “Having considered the arguments and evidence, we are not persuaded that Petitioner has established by a preponderance of the evidence that Baird inherently discloses a DSP configured to determine a FES and a TES from digital signals received by the SCP. In particular, Petitioner’s primary contention with respect to inherency is that one of ordinary skill in the art would understand that Baird must determine a FES and TES in order for the SCP to operate focus and tracking control loops. Pet. Reply 14 (citing Ex. 1006 ¶ 82). However, neither Petitioner, nor Petitioner’s declarant, Dr. Zech, provides any explanation why that is true. When asked for an explanation during his deposition, Dr. Zech responded in a manner that relied upon a probability that Baird’s SCP determines FES and TES. For example, the following is an excerpt from Dr. Zech’s deposition: Q Can you explain to me why it is your opinion that it is inherent that a servo control processor in Baird determines a focus error signal and a tracking error signal? A Well, because the way he designed it, it does. And I can’t imagine why somebody, an engineer at Cirrus Logic, would swim against the current and 0 come up with something entirely new. The chip 1 surely would not sell. I know that from pretty broad experience in sales and marketing. Once you tell me optical disk drive -- I’ve explained to you the statistics of it -- 99 percent plus are probably using continuous composite servoing. When you use continuous composite servoing, you need to have a tracking error and a focus error signal. So it’s not much of a leap for me to conclude that that’s what’s going on here. Ex. 2001, 151:3–20 (emphases added). Dr. Zech’s deposition testimony describes what functions and systems optical disk drives “are probably using” and that “it’s not much of a leap” for him to conclude what is occuring in Baird with respect to whether error signals are determined Id.; see MEHL/Biophile Int’l. Corp., 192 F.3d at 1365 (inherency is not established by probabilities or possibilities). Moreover, both in his declaration and at the deposition, Dr. Zech bases his opinion regarding that issue on assumptions unsupported by evidence. See Office Patent Trial Practice Guide 77 Fed. Reg. 48,756, 48,763 (Aug. 14, 2012) (“Affidavits expressing an opinion of an expert must disclose the underlying facts or data upon which the opinion is based. . . . Opinions expressed without disclosing the underlying facts or data may be given little to no weight.”) (citations omitted). Thus, we do not afford Dr. Zech’s opinions persuasive weight.” slip op. at 20

  Patent outcomesUS 7,839,729 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 7,839,729
• Toshiba Corporation v. Optical Devices, LLCNo claims unpatentable
  PTAB · Mar 9, 2016 · IPR2014-01447 · APJ James B Arpin · IPR · Final written decision

  Claims 1–39 were not shown unpatentable: Baird did not necessarily disclose determining FES and TES, and the ST Datasheet was not established as publicly accessible prior art.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “that Petitioner has established by a preponderance of the evidence that Baird inherently discloses a DSP configured to determine a FES and a TES from digital signals received by the SCP. In particular, Petitioner’s primary contention with respect to inherency is that one of ordinary skill in the art would have understood that Baird must determine a FES and TES in order for the SCP to operate focus and tracking control loops. Pet. Reply 14 (citing Ex. 1006 ¶ 77). However, neither Petitioner nor Petitioner’s declarant, Dr. Zech, provides any explanation why that is so. When asked for an explanation during his deposition, Dr. Zech responded in a manner that relied upon a probability that Baird’s SCP determines FES and TES. In particular, the following is an excerpt from Dr. Zech’s deposition: Q Can you explain to me why it is your opinion that it is inherent that a servo control processor in Baird determines a focus error signal and a tracking error signal? A Well, because the way he designed it, it does. And I can’t imagine why somebody, an engineer at Cirrus Logic, would swim against the current and 0 come up with something entirely new. The chip 1 surely would not sell. I know that from pretty broad experience in sales and marketing. Once you tell me optical disk drive -- I’ve explained to you the statistics of it -- 99 percent plus are probably using continuous composite servoing. When you use continuous composite servoing, you need to have a tracking error and a focus error signal. So it’s not much of a leap for me to conclude that that’s what’s going on here. Ex. 2001, 151:3–20 (emphases added); see Tr. 100:13–101:2. Dr. Zech’s deposition testimony describes what functions and systems optical disk drives “are probably using” and that “it’s not much of a leap” for him to conclude what is occuring in Baird with respect to whether error signals are determined Ex. 2001, 151:15–18; see MEHL/Biophile Int’l. Corp. v. Milgraum, 192 F.3d 1362, 1365 (Fed. Cir. 1999) (inherency is not to be established by probabilities or possibilities). Moreover, both in his declaration and at the deposition, Dr. Zech bases his opinion regarding that issue on assumptions unsupported by evidence. See Office Patent Trial Practice Guide 77 Fed. Reg. 48, 756, 48,763 (Aug. 14, 2012) (“Affidavits expressing an opinion of an expert must disclose the underlying facts or data upon which the opinion is based. . . . Opinions expressed without disclosing the underlying facts or data may be given little to no weight.”) (citing Fed. R. Evid. 705; 37 C.F.R. § 42.65; Rohm & Haas Co. v. Brotech Corp., 127 F.3d 1089, 1092 (Fed. Cir. 1997)). Thus, we do not credit Dr. Zech’s unsupported opinions with persuasive weight.” slip op. at 29

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

    “As we seek to give the term “digital signal processor” its ordinary and customary meaning, as would be understood by one of ordinary skill in the art at the time of the invention, we take into account the Microsoft and IBM dictionary definitions submitted by Patent Owner. Ex. 2002, 145; Ex. 2003, 198. We note that each of those dictionaries define a DSP as being designed for “high speed” manipulation of data/digital signals. Id. Patent Owner, however, has not directed our attention to evidence establishing what “high speed” encompasses. See Tr. 98:12–23; see also id. at 95:10–96:3 (Petitioner’s argument that speed governed by function). We also note one of the submitted dictionary definitions characterizes “high speed,” such that digital signal manipulation as “real-time.” Ex. 2003, 198. Another dictionary definition simply includes “high speed.” Ex. 2002, 145. However, the Specification discloses that only some embodiments can execute real time digital servo algorithms on a DSP. See Ex. 1001, col. 13, ll. 38–42. We determine that Patent Owner has not established persuasively that the broadest reasonable interpretation of a DSP requires “high speed” processing achieving this “real time” feature. Indeed, Patent Owner’s “basic” construction for a DSP does not include a requirement for “real time” processing. See PO Resp. 16 (providing a minimal definition for a DSP). We are persuaded, however, that the broadest reasonable interpretation of the term “digital signal processor,” consistent with the Specification and the ordinary and customary meaning of the term as understood at the time of the invention by a person of ordinary skill in the art, is “an integrated circuit structured and arranged for manipulation of digital signals in accordance with programmed commands, and in a manner that operates faster than a microprocessor.” We do not adopt Patent Owner’s proposal to characterize further an integrated circuit as “specialized.” We determine that proposed modification is superfluous in that our construction describes that the integrated circuit is structured and arranged to achieve a specific function, i.e., manipulation of digital signals and operation faster than a microprocessor. B.” slip op. at 15

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

    “To establish inherency, the extrinsic evidence must make clear that the missing descriptive matter is necessarily present in the thing described in the reference, and that it would be so recognized by persons of ordinary skill. Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient. PO Resp. 30–31 (quoting In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (emphasis added) (citations omitted)). Petitioner argues that, because Baird discloses that the servo control processor performs focus and tracking control loops (Ex. 1003, col. 5 l. 63–col. 6, l. 11), “it is necessarily the case that a focus error and tracking error signal are generated” in order to perform that function (Pet. 42–43). See Ex. 1006 ¶ 77; Tr. 20:21–23:5. According to Petitioner and, its declarant, Dr. Zech, one of ordinary skill in the art would” slip op. at 25

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

    “qualify as a prior art printed publication under 35 U.S.C. § 102, the reference must be shown to have been “sufficiently accessible to the public interested in the art” prior to the earliest effective filing date. In re Cronyn, 890 F.2d 1158, 1160 (Fed. Cir. 1989). “Because there are many ways in which a reference may be disseminated to the interested public, ‘public accessibility’ has been called the touchstone in determining whether a reference constitutes a ‘printed publication’ bar under 35 U.S.C. § 102(b).” In re Hall, 781 F.2d 897, 898–99 (Fed. Cir. 1986). A reference will be considered publicly accessible if it was “disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it.” Kyocera Wireless Corp. v. Int’l Trade Comm’n, 545 F.3d 1340, 1350 (Fed. Cir. 2008). Whether a reference qualifies as a printed publication is a legal conclusion based on underlying factual determinations. In re Lister, 583 F.3d 1307, 1311 (Fed. Cir. 2009). Blue Calypso, LLC v. Groupon, Inc., Dkt. Nos. 2015-1391, 2015-1393, 2015- 1394, slip op. at 28–29 (Fed. Cir. Mar. 1, 2016).” slip op. at 38

  Patent outcomesUS 8,416,651 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,416,651
• K-40 Electronics, LLC v. Escort, Inc.Some claims unpatentable
  PTAB · Sep 29, 2014 · IPR2013-00240 · APJ Trenton A Ward · IPR · Final written decision

  Claims 1–6, 11–12, 15–18, 22–33, 41–72, and 74–85 are unpatentable; claims 36–38 were not shown unpatentable, because the prior art did not establish their continuous-signal location tracking limitation.

  RulingsFinal written decision

  • BurdenDecided for petitioner

    “In order to establish an actual reduction to practice, [a party] must establish three things: ‘(1) construct[ion of] an embodiment or perform[ance of] a process that met all the [claim] limitations [ ]; [ ](2) . . . determin[ation] that the invention would work for its intended purpose,’” and “(3) the existence of sufficient evidence to corroborate inventor testimony regarding these events.” Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1169 (Fed. Cir. 2006) (quoting Cooper v. Goldfarb, 154 F.3d 1321, 1327, 1330 (Fed. Cir. 1998)). “A ‘rule of reason’ analysis is applied to determine whether the inventor’s prior conception testimony has been corroborated.” Price v. Symsek, 988 F.2d 1187, 1195 (Fed. Cir. 1993). slip op. at 11

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

    “Here, the only evidence of the successful reduction to practice of the claimed invention for its intended purpose prior to January 27, 1998 is the testimony of the inventor, Mr. Orr. “It has long been the case that an inventor’s allegations of earlier invention alone are insufficient—an alleged date of invention must be corroborated.” In re NTP, Inc., 654 F.3d at 1291 (citing Medichem, 437 F.3d at 1170; Woodland Trust v. Flowertree Nursery, Inc., 148 F.3d 1368, 1371 (Fed. Cir. 1998)). We conclude that the record is lacking sufficient evidence corroborating Mr. Orr’s testimony, which alone is insufficient. In view of the foregoing, we determine that Patent Owner has failed to prove by a preponderance of the evidence its claim of reduction to practice of the claims 1–6, 15–16, 22–29, 33, 41–52, 54–66, 68–72, 75, 77–83, and 85 of the ’905 patent prior to January 27, 1998. Therefore, Hoffberg and Fleming, III are prior art to the ’905 patent.” slip op. at 17

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

    “forth in the challenged claims of related U.S. Patent No. 7,999,721 at issue in IPR2013–00203. For the same reasons set forth in the ’203 Decision at pages 6–8, we are not persuaded by Patent Owner’s argument that “correlates to a police signal” should be construed to mean an undefined determination made by comparing a received signal to the attributes of actual police signals. Accordingly, we construe “provide an alert if a received electromagnetic signal correlates to a police signal” as “provide an alert if a received electromagnetic signal correlates to one or more characteristics of a police signal.” 2. “position determining circuit” Claim 1 recites “a position determining circuit generating a location signal.” Ex. 1001, col. 25, l. 50 (emphasis added). Independent claims 43 and 68 provide similar recitations regarding a “position determining circuit.” Patent Owner proposes that “position determining circuit” should be construed to mean “a device for receiving information related to geographic locations.” PO Resp. 22. Patent Owner made similar arguments with respect to the “position determining circuit” set forth in the challenged claims of related U.S. Patent No. 7,999,721 at issue in IPR2013–00203. For the same reasons set forth in the ’203 Decision at pages 6–8, we determine that the “position determining circuit” must be involved in determining the position of the device, rather than merely receiving information related to geographic locations of the device, as proposed by Patent Owner. Accordingly, we construe “position determining circuit” as “a circuit for determining a position of a device.”” slip op. at 7

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

    “We are not persuaded by Patent Owner’s arguments because they are not commensurate with the scope of the claims. As discussed above, we construe the phrase “provide an alert if a received electromagnetic signal correlates to a police signal” as “provide an alert if a received electromagnetic signal correlates to one or more characteristics of a police signal.” The ’905 patent Specification describes that this correlation may be implemented based on “any of the techniques” described in the many patents incorporated by reference in the Specification. Ex. 1001, col. 8, ll. 50–56. Therefore, the correlate limitation recited in the independent claims can involve many prior art techniques, such as those disclosed in Hoffberg. For example, Petitioner argues that Hoffberg discloses the use of a “commercially available radar detector.” Pet. Reply 15 (citing Ex. 1002, col. 33, ll. 9–15). More particularly, Hoffberg discloses “an event sensor is provided, such as a police radar and laser speed detection system (e.g., “radar detector”)” to detect signals and determine whether they correlate to a law enforcement signal. Ex. 1002, col. 33, ll. 9–15. We determine, therefore, that Hoffberg discloses the claimed correlating limitation. Based on the evidence presented, we conclude that Petitioner has established by a preponderance of evidence that Hoffberg discloses all limitations of independent claims 1, 43, 54, 68, and 81. Patent Owner does not address dependent claims 2–4, 15, 17–18, 22–24, 28–29, 31–33, 41–42, 44–48, 53, 55–57, 59–60, 64–65, 67, 69–72, 76–80, and 82–84 with separate, specific arguments against the anticipation challenge based on Hoffberg. See PO Resp. 28–38. As to dependent claims 2–4, 15, 17–18, 22–24, 28–29, 31–33, 41–42, 44–48, 53, 55–57, 59–60, 64–65, 67, 69–72, 76–80, and 82–84, Petitioner provides sufficient evidence to show that Hoffberg discloses the additional recited limitations in those claims. Pet. 20–26, 28–32, 34–48. For example, Petitioner argues that the claim 15 limitation that the information associated with geographic locations includes information identifying rejectable signals at a geographic location is met by Hoffberg’s disclosure that “further information is also stored, such as a time of the event, its character or nature, and other quantitative or qualitative aspects.” Pet. 21 (quoting Ex. 1002, col. 18, l. 64–col. 19, l. 4 (emphasis omitted)). In a further example, Petitioner argues that the claim 28 requirement that the police warning receiver include “storage for vehicle history information identifying vehicle activities including geographic locations” is met by Hoffberg’s disclosure that the “memory stores information describing the event as well as the location of the event.” Pet. 29 (quoting Ex. 1002, col. 22, ll. 18–29 (emphasis omitted)).” slip op. at 20

  Patent outcomesUS 6,670,905 mixed
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 6,670,905
• Denso Corporation / Clarion Co. Ltd. v. Beacon Navigation GmbHAll claims unpatentable
  PTAB · Mar 14, 2014 · IPR2013-00026 · APJ Glenn J Perry · IPR · Final written decision

  Claims 2, 3, 5, 6, 11-13, and 18-20, and 22 are unpatentable, principally as anticipated by Geier, Anderson, and Endo; Maki also anticipates claim 6.

  RulingsFinal written decision

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

    “and have engaged in the strategic planning, preparation, and review of the present petition for inter partes review, thereby making them related parties in interest to this proceeding. Id. 5. Patent Owner further states: “It is also likely that other parties in the litigations regarding infringement of the ’111 patent are in privity with Denso and Clarion.” Id. 5. We disagree with Patent Owner’s conclusion. The only relationship alleged by Patent Owners between the named real parties-in-interest and the alleged real parties-in-interest not named is that of being co-defendants or concurrent defendants in related litigation. The mere fact that parties are co-defendants or concurrent defendants in litigation does not make them real parties-in-interest. See Office Patent Trial Practice Guide, 77 Fed. Reg. 48759. Patent Owner argues that the alleged additional real parties-in-interest have engaged in strategic planning, preparation, and review of the Petition. There is, however, no evidence that the alleged real parties-in-interest guide or otherwise control this inter parties review. See Office Patent Trial Practice Guide, 77 Fed. Reg. 48759. We are not persuaded that any real parties-in-interest have been omitted.” slip op. at 11

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

    “The ’111 patent does not provide a specific definition of the word “position.” It uses the word “position” in various ways and manners throughout the specification, not all of which refer to a position plotted or to be plotted on a map. For example, the patent states “[f]rom this information, the user computes the satellite's precise position and clock offset.” Ex. 1001, 1:38-40. (emphasis added). Here, the word “position” refers to the position of a satellite, not to the position of a GPS receiver being plotting on a map. The satellite’s position is never plotted on a map. Another example is found in the description of Figures 4A and 4C of the patent. That description uses “position” to refer to “raw data” that is not plotted on a map, but used as an intermediate value to calculate data that is plotted on a map. Another example is a portion of the specification that describes correcting bias errors in differential GPS: “A [r]eference [s]tation receiver measures ranges from all visible satellites to its surveyed position.” Ex. 1001, 4:59-61. (emphasis added). The surveyed position is a fixed position of a reference station, not the position of a GPS receiver being plotted on a map. Thus, within the four corners of the ’111 patent, we find uses of the word “position” that are outside of Patent Owner’s construction. Based on this intrinsic evidence alone, Patent Owner’s proposed construction is too narrow. Petitioner argues that claim 2 puts no further limitation on the term “position.” Pet. Reply 1. We agree. We construe the word “position” as referring to a location.7 Our construction does not require that “position” only refer to a location that is ultimately plotted on a map. For example, a “position” may be that of a GPS satellite or a location represented by a signal that is used in an intermediate calculation.” slip op. at 8

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

    “We are not persuaded by Petitioner’s argument that east and north displacements inherently are taught by Maki. Petitioner’s argument begins with the proposition that international regulations require airplane navigation to be referenced to the WGS-84 geodetic frame. Ex. 1017 ¶ 18. This may be so, but Maki does not describe guidance for an airplane. It describes guidance for a space vehicle. We find no mention of WGS-84 in Maki and we are not persuaded to infer that WGS-84 is utilized. As Petitioner argues, Maki describes a “velocity vector.” Patent Owner’s expert, Dr. Dafesh, agrees that a velocity vector can be expressed in components to the east and to the north, regardless of the direction in which it points. Ex. 1019, 128:25 to 129:3. Further, Dr. Dafesh, admits that “position” is “not limited to being relative to a geographical reference.” Ex. 1019, 74:22-75:4. However, there is no evidence presented demonstrating that the position vector is resolved into components at all, a precursor to resolving into “east” and “north” components. For this reason, we are not persuaded that Maki inherently teaches east and north displacements as claimed. Petitioner has not carried its burden with respect to anticipation by Maki of claim 2.” slip op. at 15

  • BurdenMixed

    “orthogonal axes accelerometer.” Patent Owner’s expert, Dr. Dafesh, states that Endo does not mention among its recitation of sensors an accelerometer. Ex. 2005 ¶ 26. We agree. Unlike Anderson, Endo does not disclose an accelerometer of any kind. According to Petitioner, the use of orthogonal axes accelerometers were well known automotive sensors to one having skill in the art at the time of Endo. Therefore, Petitioner argues, the claims represent a “predictable variation” of what is taught by Endo. Pet. Reply 15. That may be so. However, Petitioner’s challenge is based on anticipation, which requires the reference to disclose expressly or inherently all features of the claim. With respect to Anderson, we determined that explicit mention of an accelerometer infers to one of ordinary skill the use of an orthogonal axes accelerometer. However, in Endo there is no mention of an accelerometer. Furthermore, there is no persuasive evidence to suggest that as to Endo, the presence of an orthogonal axes accelerometer is inherent. Nor is there evidence to suggest that the use of an orthogonal axes accelerometer would have been inferred by one of ordinary skill at the time of the invention. Unlike Anderson, which described an accelerometer, Endo does not. As such, Petitioner has not met its burden in establishing slip op. at 36

  Patent outcomesUS 6,029,111 unpatentable
  Claim construction§ 102 anticipation
  Patents in suitUS 6,029,111

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.