- Unified Patents Inc. v. Sound View Innovations, LLCAll claims unpatentablePTAB · Sep 9, 2019 · IPR2018-00599 · APJ Debra K Stephens · IPR · Final written decision
Claims 3 and 9 are unpatentable under § 103 because the cited combinations teach the claimed limitations that the Board found limiting.
RulingsFinal written decision- Skill levelSkill level board ownDecided for petitioner
“Petitioner asserts that a person of ordinary skill in the art at the time of the invention would have had a bachelor’s degree in computer science, computer engineering, electrical engineering, or a related subject, and two or three years of work experience with network-based applications and/or multimedia applications. A lack of experience can be remedied with additional education (e.g., a Master’s degree), and likewise, a lack of education can be remedied with additional work experience (e.g., 6-7 years) (Pet. 7–8 (citing Ex. 1005 ¶ 38)). Patent Owner does not dispute the educational level or experiential aspects of Petitioner’s definition in its Response (see generally PO Resp.; Ex. 2002 ¶¶ 19–20). We note that the assessment appears consistent with the level of ordinary skill in the art at the time of the invention as reflected in the prior art in the instant proceeding (see Okajima, 261 F.3d at 1355). Based on our review of the ’074 Patent, the types of problems and solutions described in the ’074 Patent and cited prior art, and the testimony of Drs. Reddy and Jones (Ex. 1005 ¶ 38; Ex. 2002 ¶¶ 19–20), we determine a skilled artisan would have possessed a Bachelor of Science degree in Computer Science, Computer Engineering, Electrical Engineering, or an equivalent field, and two or three years of work experience with content delivery networks or applications or comparable education or work experience in the field.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther
“a. “helper server” The ’074 patent describes “helper server” in the following terms: “Helper Server (HS): a HS, also referred to as a helper, is one of a plurality of servers in the network that provide certain value-added services” (Ex. 1001, 4:11–13). Accordingly, we adopt this interpretation.” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“We agree with Petitioner that neither claim 3 nor claim 9 recites where the “receiving” step takes place and, in particular, neither claim recites “receiving said SM object” at the plurality of or one of the helper servers. [C]laim terms cannot be narrowed by reference to the written description or prosecution history unless the language of the claims invites reference to those sources. See, e.g., McCarty v. Lehigh Val. R.R., 160 U.S. 110, 116, 16 S. Ct. 240, (1895) (“[I]f we once begin to include elements not mentioned in the claim in order to limit such claim ..., we should never know where to stop.”); Renishaw [PLC v. Marposs Societa per Azioni], 158 F.3d 1243, 1249 [(Fed. Cir. 1998)]. In other words, there must be a textual reference in the actual language of the claim with which to associate a proffered claim construction (Johnson Worldwide Assocs., Inc. v. Zebco Corp., 175 F.3d 985, 989–90 (Fed. Cir. 1999)). Here, we do not find a textual reference in “receiving said SM object.” We determine that the inventors did not introduce their own lexicographic definition, i.e., defining the term “receiving said SM object” or “receiving.” Furthermore, we are not persuaded “the term or terms chosen by the patentee[s] so deprive the claim of clarity that there is no means by which the scope of the claim may be ascertained from the language used” (see id. at 990 (citations omitted)). Nor do the preambles of claim 3 and 9, respectively, provide any textual reference that “receiving said SM object” should be interpreted as “receiving said SM object at a helper server.” Thus, “[i]n this case, the [disputed term] has a clear and well-defined meaning. This term is not so amorphous that one of skill in the art can only reconcile the claim language with the inventor’s disclosure by recourse to the specification” (Comark Commc’ns, Inc. v. Harris Corp., 156 F.3d 1182, 1187 (Fed. Cir. 1998)).” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner
“We disagree with Patent Owner’s assessment of the preambles of claims 3 and 9. The preamble of claim 3 recites: A method for storing a streaming media (SM) object in a network having a content server which hosts SM objects for distribution over said network through a plurality of helper servers (HSs) to a plurality of clients, said SM object being comprised of a plurality of successive time-ordered chunks, wherein a chunk is further comprised of a discrete number of segments, each segment allocated to a respective disk block of said plurality of HSs, and the preamble of claim 9 recites: A method for managing storage of a streaming media (SM) object in a network having a content server which hosts SM objects for distribution over said network through a plurality of servers to a plurality of clients (Ex. 1001, Claims). Neither of the preambles recites that storage depends on the availability of disk space. Patent Owner additionally points to Reactive Surfaces Ltd., LLP v. Toyota Motor Corp., IPR2016-01914, Paper 64 at 11–14 (PTAB Mar. 1, 2018) (PO Resp. 10). Claim 1 of Reactive Surfaces recites:” slip op. at 20
Patent outcomesUS 9,462,074 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,462,074 - The Gillette Company / Fujitsu Semiconductor Limited et al. v. Zond, LLCAll claims unpatentablePTAB · Oct 1, 2015 · IPR2014-00580 · APJ Joni Y Chang · IPR · Final written decision
Claims 1–20 and 34–39 are unpatentable under § 103(a) over the five instituted grounds; the majority finds the Mozgrin Thesis publicly accessible, with a partial dissent on claim 2.
RulingsFinal written decision- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“Subsequent to institution, we granted the Motion for Joinder filed by Taiwan Semiconductor Manufacturing Company, Ltd., TSMC North America Corp. (collectively, “TSMC”), Fujitsu Semiconductor Limited, and Fujitsu Semiconductor America, Inc. (collectively, “Fujitsu”), joining Case IPR2014-01479 with the instant trial (Paper 20), and also granted a Joint Motion to Terminate with respect to TSMC (Paper 37).2 Zond filed a Response (Paper 32 (“PO Resp.”)), and Gillette filed a Reply (Paper 39 (“Reply”)). Oral hearing3 was held on June 16, 2015, and a transcript of the hearing was entered into the record. Paper 47 (“Tr.”).” slip op. at 2
- Skill levelOther
“B. Principles of Law A patent claim is unpatentable under 35 U.S.C. § 103(a) if the differences between the claimed subject matter and the prior art are such that the subject matter, as a whole, would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of ordinary skill in the art; and (4) objective evidence of nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). In that regard, an obviousness analysis “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR, 550 U.S. at 418; Translogic, 504 F.3d at 1262. The level of ordinary skill in the art is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“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 In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1275–79 (Fed. Cir. 2015) (“Congress implicitly approved the broadest reasonable interpretation standard in enacting the AIA,”6 and “the standard was properly adopted by PTO regulation.”). Claim terms are given their ordinary and customary meaning as would be understood by one of ordinary skill in the art in the context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). An inventor may rebut that presumption by providing a” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“We are not persuaded by Zond’s arguments, as they narrowly focus on Mozgrin’s regime 3, and fail to consider Mozgrin’s regime 2 that is dedicated to sputtering. It is well-settled that, when evaluating claims for obviousness, “the prior art as a whole must be considered.” In re Hedges, 783 F.2d 1038, 1041 (Fed. Cir. 1986). As Gillette points out (Pet. 13–14), Mozgrin explicitly states that, in regime 2, the voltage pulse that generates a strongly-ionized plasma from the weakly-ionized plasma is appropriate for sputtering. Ex. 1002, 402, 406, 409 (“The implementation of the high-current magnetron discharge (regime 2) in sputtering . . . provides an enhancement in . . . plasma density (exceeding 2 x 1013 cm-3).”), Figs. 1, 3). Mozgrin also discloses specific process parameter ranges that are more efficient for sputtering in regime 2. Id. Therefore, contrary to Zond’s assertion that Mozgrin’s voltage pulse creates a direct transition to regime 3, one of ordinary skill in the art reading Mozgrin would have been able to select the pulse characteristics and parameter ranges to generate a strongly-ionized plasma in regime 2 that is dedicated to sputtering. Upon consideration of Mozgrin and Fortov, as a whole, we do not share Zond’s view that there are contradictory teachings between Mozgrin and Fortov that would dissuade one of ordinary skill in the art from combining the prior art teachings to achieve Fortov’s non-linear increase in sputtering yield.” slip op. at 25
Patent outcomesUS 6,896,773 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,896,773 - Fujitsu Semiconductor Limited / Fujitsu Semiconductor America, Inc. et al. v. Zond, LLCAll claims unpatentablePTAB · Sep 28, 2015 · IPR2014-01057 · APJ Kevin F Turner · IPR · Final written decision
Claims 2, 11, 13, 14, and 16 are unpatentable under § 103(a) over the asserted combinations of Wang, Lantsman, and the applicable additional reference.
RulingsFinal written decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“North America Corporation (collectively, “TSMC”) filed a Petition requesting an inter partes review of claims 2, 11, 13, 14, and 16 of U.S. Patent No. 6,853,142 B2 (Ex. 1101, “the ’142 Patent”). Paper 2 (“Pet.”). Patent Owner Zond, LLC (“Zond”) filed a Preliminary Response. Paper 8 (“Prelim. Resp.”). We instituted the instant trial on October 20, 2014, pursuant to 35 U.S.C. § 314. Paper 9 (“Dec.”).” slip op. at 2
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“Subsequent to institution, we granted the revised Motions for Joinder filed by other Petitioners (collectively, “GlobalFoundries”) listed in the Caption above, joining Cases IPR2014-00863, IPR2014-01013, and IPR2014-01057 with the instant trial (Papers 12–14), and also granted a Joint Motion to Terminate with respect to TSMC (Paper 32). Zond filed a Response (Paper 26 (“PO Resp.”)), and GlobalFoundries filed a Reply (Paper 39 (“Reply”)). Oral hearing2 was held on June 12, 2015, and a transcript of the hearing was entered into the record. Paper 46 (“Tr.”).” slip op. at 2
- Skill levelOther
“B. Principles of Law A patent claim is unpatentable under 35 U.S.C. § 103(a) if the differences between the claimed subject matter and the prior art are such that the subject matter, as a whole, would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of ordinary skill in the art; and (4) objective evidence of nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). In that regard, an obviousness analysis “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR, 550 U.S. at 418; Translogic, 504 F.3d at 1259. The level of ordinary skill in the art is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). We analyze the asserted grounds of unpatentability in accordance with the above-stated principles.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionDecided for patent owner
“plasma to generate a strongly-ionized plasma,” with independent claim 10 reciting a similar limitation. All of the challenged claims depend from claim 1 or 10. During the pre-trial stage of this proceeding, the parties submitted their constructions for the claim terms “a weakly-ionized plasma” and “a strongly-ionized plasma.” Pet. 14–15; Prelim. Resp. 20–22. In our Decision on Institution, we adopted Zond’s proposed constructions, in light of the Specification, as the broadest reasonable interpretation. Dec. 8–10. Upon review of the parties’ explanations and supporting evidence before us, we discern no reason to modify our claim constructions set forth in the Decision on Institution with respect to these claim terms. Id. Therefore, for purposes of this Final Written Decision, we construe, in light of the Specification, the claim term “a weakly-ionized plasma” as “a plasma with a relatively low peak density of ions,” the claim term “a strongly-ionized plasma” as “a plasma with a relatively high peak density of ions.”” slip op. at 7
Patent outcomesUS 6,853,142 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,853,142 - Globalfoundries U.S., Inc. / Globalfoundries Dresden Module One LLC & Co. KG et al. v. Zond, LLCAll claims unpatentablePTAB · Sep 23, 2015 · IPR2014-01099 · APJ Jennifer Meyer Chagnon · IPR · Final written decision
Claims 1–11 and 33 are unpatentable as anticipated by Wang under 35 U.S.C. § 102.
RulingsFinal written decision- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“Subsequent to institution, we granted a revised Motion for Joinder filed by The Gillette Company (“Gillette”), joining Case IPR2014-00972 2 U.S. Patent No. 6,413,382 B1, issued July 2, 2002 (Ex. 1004, “Wang”). with the instant trial (Paper 12).3 Patent Owner filed a Patent Owner Response (Paper 24, “PO Resp.”), along with a Declaration of Larry D. Hartsough, Ph.D. (Ex. 2004) to support its positions. Petitioner filed a Reply (Paper 30, “Reply”) to the Patent Owner Response, along with a supplemental Declaration of Dr. Kortshagen (Ex. 1025). An oral hearing4 was held on June 12, 2015. A transcript of the hearing is included in the record. Paper 39.” slip op. at 2
- Skill levelOther
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“nor its expert witness, expressly challenged our claim constructions as to these terms (see, e.g., Ex. 2004 ¶ 21), Patent Owner improperly attempts to import extraneous limitations into the claim by arguing that a specific magnitude for the peak density of ions is required to disclose a strongly-ionized plasma, i.e., “equal to or greater than 1012 [cm-3]” (PO Resp. 3–4, 21). It is well settled that if a feature is not necessary to give meaning to a claim term, it would be “extraneous” and should not be read into the claim. Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1249 (Fed. Cir. 1998); E.I. du Pont de Nemours & Co. v. Phillips Petroleum Co., 849 F.2d 1430, 1433 (Fed. Cir. 1988). Patent Owner relies only on testimony from Petitioner’s declarant, Dr. Kortshagen, to support this construction requiring a specific magnitude for the peak density of ions. PO Resp. 3 (citing IPR2014-00818, Ex. 2010, 44:13–58:12). Patent Owner, however, does not direct us to where the Specification provides an explicit definition for this claim term, nor do we discern one. See Paulsen, 30 F.3d at 1480. Moreover, Patent Owner’s newly proposed construction, requiring a specific ion density range, would render at least the limitation recited in dependent claim 24 superfluous. Ex. 1001, 21:45–47 (Claim 24 states “[t]he method of claim 14 wherein the peak plasma density of the strongly-ionized plasma is greater than about 1012 cm-3.”). It is well settled that “claims are interpreted with an eye toward 7 giving effect to all terms in the claim.” Bicon, Inc. v. Straumann Co., 441 F.3d 945, 950 (Fed. Cir. 2006); see also Stumbo v. Eastman Outdoors, Inc., 508 F.3d 1358, 1362 (Fed. Cir. 2007) (denouncing claim constructions which render phrases in claims superfluous). Further, “[i]t is improper for courts to read into an independent claim a limitation explicitly set forth in another claim.” Envtl. Designs, Ltd. v. Union Oil Co. of Cal., 713 F.2d 698, 699 (Fed. Cir. 1983). For the foregoing reasons, we decline to adopt Patent Owner’s newly proposed construction that requires a specific ion density. Rather, upon consideration of the parties’ explanations and supporting evidence before us, we discern no reason to change our claim constructions set forth in the Institution Decision with respect to these claim terms, which adopted Patent Owner’s originally proposed constructions. Inst. Dec. 8. Therefore, we construe, in light of the Specification, the claim term “a weakly-ionized plasma” as “a plasma with a relatively low peak density of ions,” and the claim term “a strongly-ionized plasma” as “a plasma with a relatively high peak density of ions.”” slip op. at 7
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner
“Petitioner identifies two claim elements recited in claim 33 as means-plus-function elements, invoking 35 U.S.C. § 112, ¶ 66: “means for ionizing a feed gas” and “means for supplying an electrical pulse.” Pet. 13– 15. We agree that those claim elements are written in means-plus-function form and fall under 35 U.S.C. § 112, ¶ 6, because: (1) each claim element uses the term “means for”; (2) the term “means for” in each claim element is modified by functional language; and (3) the term “means for” is not modified by any structure recited in the claim to perform the claimed function. See Personalized Media Commc’ns LLC v. Int’l Trade Comm’n, 161 F.3d 696, 703–04 (Fed. Cir. 1998) (using the term “means for” in a claim creates a rebuttable presumption that the drafter intended to invoke § 112, ¶ 6); Sage Prods., Inc. v. Devon Indus., Inc., 126 F.3d 1420, 1427–28 (Fed. Cir. 1997) (the presumption is not rebutted if the term “means for” is 6 Section 4(c) of the Leahy-Smith America Invents Act (“AIA”) re-designated 35 U.S.C. § 112, ¶ 6, as 35 U.S.C. § 112(f). Pub. L. No. 112- 29, 125 Stat. 284, 296 (2011). Because the ’716 patent has a filing date before September 16, 2012 (effective date), we will refer to the pre-AIA version of § 112. 15 modified by functional language and is not modified by any structure recited in the claim to perform the claimed function); see also Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1349 (Fed. Cir. 2015) (confirming that “use of the word ‘means’ creates a presumption that § 112, ¶ 6 applies” (citing Personalized Media, 161 F.3d at 703)). The first step in construing a means-plus-function claim element is to identify the recited function in the claim element. Med. Instrumentation & Diagnostics Corp. v. Elekta AB, 344 F.3d 1205, 1210 (Fed. Cir. 2003). The second step is to look to the specification and identify the corresponding structure for that recited function. Id. A structure disclosed in the specification qualifies as “corresponding” structure only if the specification or prosecution history clearly links or associates that structure to the function recited in the claim. B. Braun Med., Inc. v. Abbott Labs., 124 F.3d 1419, 1424 (Fed. Cir. 1997). “While corresponding structure need not include all things necessary to enable the claimed invention to work, it must include all structure that actually performs the recited function.” Default Proof Credit Card Sys., Inc. v. Home Depot U.S.A., Inc., 412 F.3d 1291, 1298 (Fed. Cir. 2005).” slip op. at 15
Patent outcomesUS 7,604,716 unpatentableClaim construction§ 102 anticipationcites PhillipsPatents in suitUS 7,604,716
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.