- Hamamatsu Photonics K.K. v. Semicaps Pte Ltd.No claims unpatentablePTAB · Mar 18, 2019 · IPR2017-02112 · APJ Ken B Barrett · IPR · Final written decision
Claims 2, 3, and 8–20 were not shown unpatentable because Hamada did not disclose the claimed sampling and accumulation, the obviousness theories were insufficient, and Quah was not proven prior art.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“adequately address the pertinent issue—whether Petitioner’s proposed hypothetical person of ordinary skill in the art would lack the requisite experience and understanding of the art. Patent Owner does not identify adequately a substantive difference between Petitioner’s hypothetical person of ordinary skill in the art and Patent Owner’s. See PO Resp. 17–20. For example, Patent Owner does not argue that an electrical engineer or physicist with two years of experience utilizing electronic circuit testing equipment would lack adequate knowledge of the use of lasers in circuit testing. To the contrary, Patent Owner’s expert, Dr. Woods, “generally agree[s] with petitioner’s definition of a [person of ordinary skill in the art]”—including the type of education and level of experience—and testified that “[t]hese techniques [of OBIRCH and TIVA] were known and widely used around the time of the invention of the ’982 patent to determine the location of defects in a semiconductor device and would have been known to those of ordinary skill in the art.” Ex. 2029 ¶¶ 30–31. To the extent that Patent Owner’s proposed definition of the level of ordinary skill is more than merely an elaboration upon Petitioner’s, we find it to be directed to a super-expert in a very narrowly defined field and calculated to undermine Dr. Mercer’s credibility while simultaneously promoting the credentials of its own experts. We do not find this litigation-induced argument persuasive. We determine that the definition offered by Dr. Mercer comports with the qualifications a person would have needed to understand and implement the teachings of the ’982 patent and the prior art of record. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art itself may reflect an appropriate level of skill in the art). Accordingly, we apply Dr. Mercer’s definition of the level of ordinary skill in the art.” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“Thus, the parties agree that accumulating encompasses, at least, adding values together. This understanding is consistent with the specification’s discussion of accumulated samples. See, e.g., Ex. 1001, 8:20–29. Petitioner initially asserted, in the Petition, that “accumulating” should be construed to include the act of averaging. Pet. 4–5. In the Institution Decision, we declined to construe “accumulating” as necessarily including the act of averaging. Inst. Dec. 7–8. In its Reply, Petitioner no longer advocates this as a matter of claim construction. See Pet. Reply 6. As discussed below, the parties address the issue as a factual matter, and specifically as to whether a prior art reference’s use of the term “average” discloses “accumulating” within the meaning of the claims of the ’982 patent. We again, as we did in the Institution Decision, Inst. Dec. 8, construe the term “accumulating” merely as encompassing the process of addition.” slip op. at 12
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“We do not find Petitioner’s dictionary-based “[b]y definition” argument to be persuasive as it is disconnected from the technology at issue. We cannot find that a person of ordinary skill in the art would apply, in this context, a lay dictionary’s general definition and thereby understand Hamada to disclose determining a plurality of samples. We credit the opinion of Dr. Woods, containing persuasive reasoning, and find that Hamada’s use of the word “average” does not disclose “determining a plurality of samples,” as Petitioner contends. We now turn to Petitioner’s arguments that are more closely related to the technology.” slip op. at 21
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“In support of its case, Petitioner reasons that “a POSITA would have considered it obvious to have configured Hamada’s electrical current meter 6 to determine a plurality of samples of the response signal, and to have configured signal processing and display 9 to add up this plurality of samples, in order to optimize Hamada’s averaging process.” Pet. at 23 (emphasis added) (citing Ex. 1004 ¶ 24; Ex. 1014 ¶ 205). Neither Petitioner nor its expert elaborates on the conclusory assertion that performing the claimed determining and accumulating steps would have “optimize[d]” Hamada’s averaging process. Petitioner further reasons that: it would have been obvious for a POSITA at the time of the invention to have configured electrical current meter 6 and signal processing and display unit 9 to respectively measure and add multiple samples of the response signal to allow Hamada’s averaging process, in turn, to be performed on multiple samples. Id. at 24 (citing Ex. 1014 ¶ 206). This reasoning is circular in that it is, effectively, an assertion that it would have been obvious to perform operations on multiple samples in order to perform the process on multiple samples. We also have considered Petitioner’s arguments in the Petition that the “motivation” comes from the “teaching or suggestion” provided by the disclosure of “averaging,” along with Petitioner’s string of reasons from KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007). See Pet. 24, 43–44 (citing Ex. 1014 ¶¶ 206, 306). Petitioner does not develop adequately any of these reasons. An obviousness analysis requires more than “mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). In its Reply, Petitioner repackages its “[b]y definition” argument as purportedly an obviousness argument. Pet. Reply 19–20. Petitioner argues that, “to the extent that Hamada does not explicitly disclose this limitation, a POSITA would have considered the act of configuring Hamada to measure and add multiple samples to have been obvious because that is what the definition of ‘averaging’ requires.” Id. (citing Pet. 23–26; Ex. 1014 ¶¶ 204– 208). Although possibly an obviousness theory, this argument reads more like an assertion that the claimed determining and accumulating of a plurality of samples either is inherently or implicitly disclosed in Hamada (offered as an alternative if it is deemed not explicitly disclosed). Thus, Petitioner appears to take the position that the disputed limitation is not absent from Hamada, and Petitioner fails to explain why a person of ordinary skill would have seen a reason to modify Hamada. For the reasons discussed above, we do not find Petitioner’s “[b]y definition” argument persuasive in the anticipation context and, for those same reasons, do not find it persuasive when couched as an obviousness ground. We determine that Petitioner has failed to demonstrate that independent claim 1 would have been obvious over Hamada. Petitioner’s arguments as to dependent claims 2, 3, 8–16, 19, and 20 (Pet. 24–26, 44–45, 47) do not cure the underlying defect in its obviousness theory with regard to independent claim 1. Accordingly, Petitioner also has not demonstrated that those dependent claims would have been obvious over Hamada. F. The Remaining Obviousness Grounds Based on Hamada in Combination” slip op. at 29
Patent outcomesUS 7,623,982 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,623,982 - Hulu, LLC / Netflix, Inc. et al. v. CRFD Research, Inc.No claims unpatentablePTAB · Jun 1, 2016 · IPR2015-00259 · APJ Justin T Arbes · IPR · Final written decision
Claims 1–6, 8–11, 13–15, 17–20, 23–25, 29–31, 34–36, and 38–41 were not shown unpatentable because the prior art did not teach transmitting session history after discontinuing the session.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“Claim Term Interpretation “modality” a preferred mode of interaction “device profile” information pertaining to the operation of a device, such as the data format or modality of the device “in response to . . . in response to the second device being made activation of said active, such as by a user logging on to the second device” second device “session” a series of information transactions between communicating devices during a particular time period “discontinuing” terminating or otherwise stopping, with the ability to be resumed “discontinued” terminated or otherwise stopped, with the ability to be resumed “session transfer computer hardware and/or software that module” participates in the transfer of a session See Dec. on Inst. 6–9; DISH Network Corp. v. CRFD Research, Inc., Case IPR2015-00627, slip op. at 6–9 (PTAB June 3, 2015) (Paper 9); Unified Patents Inc. v. CRFD Research, Inc., Case IPR2015-00157, slip op. at 6–9 (PTAB Apr. 30, 2015) (Paper 8); Iron Dome LLC v. CRFD Research, Inc., Case IPR2015-00055, slip op. at 6–10 (PTAB Apr. 27, 2015) (Paper 10). The parties do not dispute these interpretations in their Patent Owner Response and Reply. We do not perceive any reason or evidence that compels any deviation from these interpretations. Accordingly, we adopt our previous analysis for purposes of this Decision.” slip op. at 7
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“Having reviewed all of the parties’ arguments and supporting evidence, we conclude that Petitioner has not shown, by a preponderance of the evidence, that Bates expressly or inherently discloses transmitting the session history “after said session is discontinued on said first device.” See Corning Glass Works v. Sumitomo Elec. U.S.A., Inc., 868 F.2d 1251, 1255–56 (Fed. Cir. 1989) (“Anticipation requires that every limitation of the claim in issue be disclosed, either expressly or under principles of inherency, in a single prior art reference.”). We begin by noting that there is nothing in Bates explicitly disclosing when the alleged “session” ends. Petitioner acknowledged this at the hearing. Tr. 42:5–8. Bates, however, does disclose what occurs during a “session.” The term “session” in the claims means a series of information transactions between communicating devices during a particular time period. See supra Section II.A. Bates uses the slightly different term “browsing session,” which it defines as the “period of time when the browser 240 is executing on a client computer 106 and a network connection exists between the client 106 and the network 104 allowing a user to traverse network addresses corresponding to the servers 108.” Ex. 1004, col. 4, ll. 61–67. Thus, the “browsing session” in Bates is the period of time when the browser program is “executing” on the client computer and the client computer has an open connection to the network servers with which it is communicating. During this time, the client computer in Bates generates browser information in response to user input (e.g., by creating a history of websites visited by the user). See id. at Abstract (“A first browser executing on a first computer generates browser information in response to user input.”), col. 9, ll. 17–46 (describing the generation and storage of browser information in buffer 242), col. 2, ll. 2–10 (reciting “generating the user-configured browser information during execution of a first network browser on a first computer in response to user-input commands”), claim 1 (same). Accordingly, the alleged “session” in Bates (i.e., the series of information transactions between communicating devices) occurs during the time period of what Bates refers to as the “browsing session.”” slip op. at 13
- Strike new argumentNew argument disregardedOther
“that are procedurally improper and not entitled to consideration. Pursuant to 37 C.F.R. § 42.23(b), a reply “may only respond to arguments raised in the corresponding . . . patent owner response.” See also Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd., – F.3d –, 2016 WL 2620512, at *8–9 (Fed. Cir. May 9, 2016) (concluding that the Board did not abuse its discretion in refusing to consider reply brief arguments advocating a “new theory” of unpatentability under 37 C.F.R. § 42.23(b)); Apple Inc. v. e-Watch, Inc., Case IPR2015-00412, slip op. at 44 (PTAB May 6, 2016) (Paper 50) (“‘Respond,’ in the context of 37 C.F.R. § 42.23(b), does not mean embark in a new direction with a new approach as compared to the position originally taken in the Petition. Accepting such belatedly presented new arguments would be unjust to the Patent Owner and we decline to do so.”); Rules of Practice for Trials Before the Patent Trial and Appeal Board and Judicial Review of Patent Trial and Appeal Board Decisions; Final Rule, 77 Fed. Reg. 48,612, 48,620 (Aug. 14, 2012) (“Oppositions and replies may rely upon appropriate evidence to support the positions asserted. Reply evidence, however, must be responsive and not merely new evidence that could have been presented earlier to support the movant’s motion.”); Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,767 (Aug. 14, 2012) (“While replies can help crystalize issues for decision, a reply that raises a new issue or belatedly presents evidence will not be considered and may be returned. . . . Examples of indications that a new issue has been raised in a reply include new evidence necessary to make out a prima facie case for the patentability or unpatentability of an original or proposed substitute claim, and new evidence that could have been presented in a prior filing.”). First, Petitioner provides a lengthy explanation as to how a person of ordinary skill in the art would have understood Bates to operate based on the alleged timing of Microsoft Windows shutdown signals and the interaction between a browser application and email software. Reply 6–9. Petitioner’s explanation amounts to a new theory for why Bates allegedly discloses transmitting the session history “after said session is discontinued on said first device” that was not discussed in the Petition. See Pet. 20–24 (citing only Bates’s disclosure of the events “upon user request,” “at shutdown,” and “at idle period”); Tr. 9:1–4 (acknowledging that shutdown signals are not discussed in the Petition). Indeed, Petitioner does not cite in its Reply any testimony from Dr. Claypool’s declaration or other evidence submitted with the Petition, but rather relies solely on the cross-examination testimony of Patent Owner’s declarant, Dr. Mohapatra. See Pet. 20–24 (citing Ex. 1003); Reply 6–9 (citing Ex. 1018); Tr. 13:18–21.” slip op. at 18
- Skill levelSkill level board ownDecided for patent owner
“KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007) (quoting 35 U.S.C. § 103(a)). Petitioner argues that a person of ordinary skill in the art would have had “a Bachelor of Science in Computer Science, Computer Engineering, Electrical Engineering, or an equivalent field as well as at least two years of academic or industry experience in the software field,” citing the testimony of Dr. Claypool. Pet. 8 (citing Ex. 1003 ¶¶ 55–58). Dr. Mohapatra similarly testifies that a person of ordinary skill in the art would have had “a Bachelor of Science degree in computer science or computer engineering with approximately 2 years of practical work experience or post-graduate research in a field such as computer networking and/or distributed systems.” Ex. 2001 ¶ 11. Based on our review of the ’233 patent, the types of problems and solutions described in the ’233 patent and cited prior art, and the testimony of the parties’ declarants, we conclude that a person of ordinary skill in the art would have had a bachelor’s degree in computer science or computer engineering (or its equivalent), and at least two years of experience with computer networking, distributed systems, or similar fields. See, e.g., Ex. 1001, col. 1, ll. 5–67 (disclosing that “[t]he invention generally relates to session management in a distributed computer network,” and describing issues in the prior art when a user has “several communication-enabled devices” and wants to switch between them). We apply this level of ordinary skill in the art for purposes of this Decision.” slip op. at 21
Patent outcomesUS 7,191,233 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 7,191,233
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.