- Medivis, Inc. v. Novarad Corp.No claims unpatentablePTAB · Mar 6, 2024 · IPR2023-00042 · APJ Scott Raevsky · IPR · Final written decision
Claims 1–6 and 11–20 were not shown unpatentable: Doo did not disclose the claimed volume, the Doo-Amira combination lacked a persuasive rationale, and the other references were not shown publicly accessible.
RulingsFinal written decision- Skill levelSkill level board ownDecided for petitioner
“We adopt Petitioner’s proposed level of skill, except that we excise part of Petitioner’s definition to produce the following modified version: a bachelor’s degree in computer science, electrical engineering, or a related field with several years of experience in the design, development, and study of augmented reality devices and . . . familiarity with conventional medical imaging data and visualization of data for medical procedures . . . . Our edit removes the alternative of “working with a team including someone with such familiarity” because one’s role in a team may be tangential to their personal experience with medical imaging. Regardless, had we adopted Petitioner’s original definition, our decision would not have changed.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“The parties propose constructions for the claim terms “three- dimensional (3D) data,” “inner layer(s) of the patient,” “confined within a virtual 3D shape,” and “being having.” Pet. 11–14; PO Resp. 11–18. We do not need to construe any of these claim terms in order to resolve the issues presented in this proceeding. See Realtime Data, LLC v. Iancu, 912 F.3d 1368 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 8
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“First, neither the Petition nor Dr. Kazanzides explains how Doo’s curved plane teaches the claimed “volume.” See Pet. 36–37; Ex. 1012 ¶¶ 74–75 (essentially repeating the Petition). The Petition merely asserts that Doo’s image in Figure 7 “is confined within the volume of the virtual 3D shape illustrated in Figure 9,” without explaining how the shape of Figure 9 has a “volume.” Pet. 37. The Reply does no better, asserting that “Doo’s shape 532 in Figure 9 and shape 432 in Figure 7 are virtual 3D shapes.” Reply 18. This statement is conclusory and does not explain how Doo’s “false 3D” shapes have volume. Petitioner further attempts to establish that Doo’s disclosure of Figure 9’s shape 532 as “mimic[ing] the surface curvature of the patient’s body” is evidence that Doo discloses a 3D shape. Id. (citing Ex. 1008 ¶ 76). This argument, however, is unpersuasive because it takes Doo’s statement out of context. Doo explains that Figure 9’s warped “two-dimensional image 532 . . . mimic[s] the surface curvature of the patient’s body,” not that it has volume. See Ex. 1008 ¶ 76 (emphasis added). In other words, even though Doo’s shape 532 of Figure 9, when projected on a patient’s body (as in Figure 7) may appear to a surgeon like a 9 Our Institution Decision did not rely on Petitioner’s theory based on Doo Figures 7–9. We discuss our Institution Decision’s reasoning below under Petitioner’s second theory based on Doo Figures 6 and 11. half-cylinder shape having a volume, Doo’s technique avoids rendering a 3D shape like a half-cylinder (hence calling these “false 3D shapes”) because it instead simulates the body’s curvature with a mere curved two-dimensional plane. Second, we find that Doo’s curved plane does not, in fact, have a volume.10 Instead, Doo’s curved plane is a 2D plane merely “wrapped around an axis.” See Ex. 1008 ¶¶ 75–76. As Patent Owner persuasively argued at the hearing, Doo’s curved plane is not “half of a cylinder. It’s just a wrapped piece of paper.” Tr. 33:14–15. Just as curving a piece of paper would not give the curved paper a half cylinder’s volume, neither does curving Doo’s flat 2D plane create a half cylinder with volume. Viewed another way, curving a 2D plane does not impart volume to the plane any more than curving a 1D line into a parabola would impart area to the 1D line.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“The U.S. Supreme Court has emphasized that “rejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” KSR, 550 U.S. at 418 (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). Petitioner’s argument fails this standard. Petitioner asserts a generic rationale that one of ordinary skill in the art would have applied Amira to Doo “to take advantage of the visualization technology disclosed in Amira (or any similar visualization software).” Pet. 41. But Petitioner’s assertion contains no explanation why one of ordinary skill would have taken advantage of Amira’s technology in the context of Doo. Petitioner’s rationale is so vague and broad that it could be applied to combine any two references because it merely asserts that one reference would “take advantage of the . . . technology disclosed in” another. See, e.g., In re Van Os, 844 F.3d 1359, 1361 (Fed. Cir. 2017) (explaining that “a finding that a combination of prior art would have been . . . ‘intuitive’ is no different than merely stating the combination ‘would have been obvious’”). This approach wholly misses KSR’s “articulated reasoning” standard. See KSR, 550 U.S. at 418. The Reply’s assertion that reducing a surgeon’s cognitive load in Doo “suggests an improvement on conventional medical imaging displays, such as disclosed in Amira,” fares no better. Reply 20. This assertion again fails to explain why one of ordinary skill in the art would have combined Amira with Doo. For instance, Petitioner provides no explanation as to how Amira’s display would further reduce cognitive load. See Reply 19–20 (only vaguely referring to Amira’s “[t]racking capabilities [that] allow for . . . interaction with the visualization” (Ex. 1005, 14, 26)). Not only that, but Doo itself presents a solution for the cognitive load problem. See Ex. 1008 ¶ 14 (“The present invention is particularly adapted to manage the multitude of medical images needed to be viewed by a surgeon during an operation so that a surgeon is not required to look away from the patient, so that the surgeon does not have to sustain heavy cognitive loading.”). Petitioner does not persuasively explain why one of ordinary skill in the art would turn to yet another reference (like Amira) for an additional solution, or even what that solution would be.” slip op. at 23
Patent outcomesUS 11,004,271 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSRPatents in suitUS 11,004,271 - Intel Corporation v. Parkervision, Inc.No claims unpatentablePTAB · Jan 21, 2022 · IPR2020-01302 · APJ Bart A Gerstenblith · IPR · Final written decision
Claims 1, 3, 4, 7, and 9–11 were not determined unpatentable because the asserted Larson and Larson–Butler grounds did not teach sampling.
RulingsFinal written decision- Skill levelSkill level board ownOther
“Neither party contends that the differences in proposals affect the outcome of this proceeding and we do not find that they do. Nonetheless, on the full record before us, we find that our identification of the level of ordinary skill in art from the Institution Decision as well as Patent Owner’s option (b) are supported by the prior art of record, the ’474 patent, and the opinions of Drs. Subramanian and Steer (which, as discussed above, recognize that additional work experience can compensate for the lack of a formal degree). Accordingly, we modify our preliminary finding to include the specifics from option (b) of Patent Owner’s proposal. Thus, we find that one of ordinary skill in the art would have at least a bachelor’s degree in electrical engineering or a related subject and two or more years of experience in the field of RF circuit design, or at least five years of work experience and training in the design and development of RF circuits and/or systems. We also find that less work experience may be compensated by a higher level of education, such as a master’s degree.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Because the parties agree that the claims remaining in the trial require “sampling” and also agree that the prior art asserted in this case does not teach “sampling” (as discussed further below), we need not construe these terms expressly to resolve the controversy before us. See Vivid Techs., 200 F.3d at 803. sampling Although claim 1 does not recite “sampling” expressly, the post- institution briefs make clear that the parties agree that claim 1 and its dependent claims require sampling. In particular, Patent Owner contends, (1) “the ’474 patent pertains to a technique called sampling, which involves the use of a ‘switch’” (PO Resp. 2); (2) “all of the challenged claims are directed to a sampling system and, in particular, an energy sampling system (also known as an energy transfer system)” (id.); and (3) “[t]he challenged claims only cover energy sampling and the use of switches” (id. at 20). In its Reply, although Petitioner disagrees with Patent Owner’s interpretation of the claims as limited to energy sampling (i.e., energy transfer systems) (Pet. Reply 3–7), Petitioner contends that based on its “subsequent analysis of [Patent Owner’s] foundational ’551 patent—one of the multiple patents which the ’474 patent incorporates by reference—[Petitioner] now agrees with [Patent Owner] that the claims cover only systems that down-convert by sampling.” Pet. Reply 2. Thus, at a minimum, the parties agree that the claims at issue in this proceeding require sampling.” slip op. at 13
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“Discussion As discussed above, the parties now agree that (1) the claims at issue in this proceeding require “sampling” and (2) Larson alone or in combination with Butler do not disclose “sampling” and do not otherwise render the claims unpatentable. See Pet. Reply 2 (stating Petitioner agrees that “the claims cover only systems that down-convert by sampling”), 13 (stating that Larson and Butler do not disclose “down-conversion by sampling” and therefore agreeing that “Larson and Butler do not invalidate those claims”); see Ex. 2031, 6:20–22 (Patent Owner explaining, that “as the Board is aware, both parties agree that sampling is in the claims, and the claims are not invalid in view of all the cited prior art” (capitalization altered)). As such, based on Petitioner’s explicit admissions, Petitioner has not established by a preponderance of the evidence that (1) Larson anticipates claims 1, 3, 4, and 9–11 or (2) the combination of Larson and Butler would have rendered the subject matter of claims 1, 3, 4, 7, and 9–11 obvious to one of ordinary skill in the art at the time of the invention.” slip op. at 19
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable
“Discussion As discussed above, the parties now agree that (1) the claims at issue in this proceeding require “sampling” and (2) Larson alone or in combination with Butler do not disclose “sampling” and do not otherwise render the claims unpatentable. See Pet. Reply 2 (stating Petitioner agrees that “the claims cover only systems that down-convert by sampling”), 13 (stating that Larson and Butler do not disclose “down-conversion by sampling” and therefore agreeing that “Larson and Butler do not invalidate those claims”); see Ex. 2031, 6:20–22 (Patent Owner explaining, that “as the Board is aware, both parties agree that sampling is in the claims, and the claims are not invalid in view of all the cited prior art” (capitalization altered)). As such, based on Petitioner’s explicit admissions, Petitioner has not established by a preponderance of the evidence that (1) Larson anticipates claims 1, 3, 4, and 9–11 or (2) the combination of Larson and Butler would have rendered the subject matter of claims 1, 3, 4, 7, and 9–11 obvious to one of ordinary skill in the art at the time of the invention.” slip op. at 19
Patent outcomesUS 7,539,474 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,539,474 - ZTE Corporation / ZTE (USA) Inc. v. Contentguard Holdings, Inc.No claims unpatentablePTAB · Jul 1, 2014 · IPR2013-00138 · APJ Michael R Zecher · IPR · Final written decision
ZTE did not prove claims 1–18, 20–38, and 40–56 unpatentable because neither Leroux nor EP ’139 disclosed the required repository behavioral integrity.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for patent owner
“the specification of the ’736 patent that allegedly support its proposed claim construction. Id. at 17–20 (citing Ex. 1001, 4:23–24, 6:65–7:2, 12:45–54, 13:51–53, 14:4–9, and 52:18–23). When instituting trial, we construed “repository” as “a trusted system which maintains physical, communications and behavioral integrity, and supports usage rights.” Dec. 13. For reasons discussed below, we adhere to the same interpretation for this final written decision. The specification provides a glossary that explicitly sets forth a definition for “repository.” For convenience, that glossary definition is reproduced below: Conceptually a set of functional specifications defining core functionality in the support of usage rights. A repository is a trusted system in that it maintains physical, communications and behavioral integrity. Ex. 1001, 52:20–23 (emphasis added). By setting forth the term in a glossary and using the verb “is” following “repository” in the second sentence, the specification sets forth an explicit definition of “repository” as “a trusted system in that it maintains physical, communications and behavioral integrity.” The first sentence also is relevant to the definition of “repository” because it specifies that the repository supports usage rights. Accordingly, we construe “repository” as “a trusted system which maintains physical, communications and behavioral integrity, and supports usage rights.”” slip op. at 12
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureNot shown unpatentableInherency not foundNot shown unpatentable
“based on anticipation by Leroux—not obviousness over Leroux. As such, the issue is not merely whether one with ordinary skill in the art would have recognized that Leroux’s identification and authentication procedures used to interrogate the right of access include using a digital certificate to authenticate the source of the software, but whether those procedures necessarily require a digital certificate. 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.’ In re Oelrich, 666 F.2d 578, 581–82 (CCPA 1981). Although Leroux’s identification and authentication procedures may include using a digital certificate to authenticate the source of the software, mere probabilities or possibilities fall short of demonstrating that those procedures necessarily require using a digital certificate. In our discussion of the construction of “behavioral integrity,” we were not persuaded by ContentGuard’s contention that a digital certificate is not required, or that anything which accomplishes a similar objective in substantially the same way is satisfactory.” slip op. at 30
- Expert testimonyPetitioner expert discountedPatent owner expert creditedMixed
“We do not credit the testimony of ContentGuard’s expert, Dr. Michael T. Goodrich, in paragraphs 40 and 41 of his Declaration (Ex. 2013). In those paragraphs, Dr. Goodrich attests that, in his opinion, a person of ordinary skill in the art in 1994 would have understood that the term “repository software” in the ’736 patent identifies and refers to the operating software of the repository, and not the software digital works the usage rights of which are controlled by the repository. Dr. Goodrich’s testimony is unpersuasive because it does not account for the disclosure of the specification, discussed above, which conveys that some repositories are rendering depositories that run and execute the software digital works the rights of which they control, such as a new version of a “player.”” slip op. at 21
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“based on anticipation by Leroux—not obviousness over Leroux. As such, the issue is not merely whether one with ordinary skill in the art would have recognized that Leroux’s identification and authentication procedures used to interrogate the right of access include using a digital certificate to authenticate the source of the software, but whether those procedures necessarily require a digital certificate. 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.’ In re Oelrich, 666 F.2d 578, 581–82 (CCPA 1981). Although Leroux’s identification and authentication procedures may include using a digital certificate to authenticate the source of the software, mere probabilities or possibilities fall short of demonstrating that those procedures necessarily require using a digital certificate. In our discussion of the construction of “behavioral integrity,” we were not persuaded by ContentGuard’s contention that a digital certificate is not required, or that anything which accomplishes a similar objective in substantially the same way is satisfactory.” slip op. at 30
Patent outcomesUS 7,139,736 not shown unpatentableClaim construction§ 102 anticipationPatents in suitUS 7,139,736 - ZTE Corporation / ZTE (USA) Inc. v. Contentguard Holdings, Inc.No claims unpatentablePTAB · Jul 1, 2014 · IPR2013-00137 · APJ Michael W Kim · IPR · Final written decision
Claims 1–5, 9–11, 15–17, 19, 21–33, 37–38, 42–44, 46, 48–62, 66–67, 71–73, 75, and 77–84 were not shown unpatentable as anticipated by Leroux under § 102(e).
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for petitioner
“The specification provides a glossary which recites the following meaning for “repository”: Conceptually a set of functional specifications defining core functionality in the support of usage rights. A repository is a trusted system in that it maintains physical, communications and behavioral integrity. Ex. 1001, 50:47-51 (emphasis added). By setting forth the term in a glossary and using the verb “is” following “repository” in the second sentence, the specification sets forth an explicit definition of “repository” as “a trusted system in that it maintains physical, communications and behavioral integrity.” The first sentence is relevant also to the definition of “repository” because it specifies that the repository supports usage rights. Accordingly, we construe “repository” as “a trusted system which maintains physical, communications and behavioral integrity, and supports usage rights.”” slip op. at 8
- Expert testimonyPetitioner expert discountedMixed
“Ex. 1025, ¶ 25. We are not persuaded that Dr. Madisetti’s conclusion is credible, because, even though we agree with the underlying facts in the aforementioned portions of Leroux cited by Dr. Madisetti, those underlying facts do not support adequately his conclusion. In particular, Dr. Madisetti asserts that software uploaded to service center 1 from the vendor will include a digital certificate, so that later the software can be identified by microcomputer 2 running the identification and authorization procedures to load the software from the service center 1 to the microcomputer 2. However, these facts are inapposite to Dr. Madisetti’s conclusion for several reasons. First, there is no indication that only a vendor is capable of uploading software to service center 1. Leroux is silent as to whether software uploaded into service center 1 by a non-vendor requires a digital certificate. Behavioral integrity requires that all software uploaded to service center 1 include a digital certificate, whether from a vendor or a nonvendor. Second, just because the uploaded software includes a digital certificate does not indicate that the digital certificate is required to upload the software. In other words, there is no indication in Leroux that the digital certificate has any relationship to the uploading process, itself, when it is uploaded with the software into service center 1, as would be required for “behavioral integrity.”” slip op. at 28
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureNot shown unpatentableInherency not foundNot shown unpatentable
“As an initial matter, we note that the ground of unpatentability is based on anticipation by Leroux—not obviousness over Leroux. As such, the issue is not merely whether one with ordinary skill in the art would have recognized that Leroux’s identification and authentication procedures used to interrogate the right of access include using a digital certificate to authenticate the source of the software, but whether those procedures necessarily require a digital certificate. 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.’” In re Oelrich, 666 F.2d 578, 581-82 (CCPA 1981). Although Leroux’s identification and authentication procedures may include using a digital certificate to authenticate the source of the software, mere probabilities or possibilities fall short of demonstrating that those procedures necessarily require using a digital certificate. In our discussion of the construction of “behavioral integrity,” we were not persuaded by ContentGuard’s contention that a digital certificate is not required, or that anything which accomplishes a similar objective in substantially the same way is satisfactory.” slip op. at 25
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“removable carrier 4 does not constitute the “distributed repository,” as recited by each of independent claims 1, 29, and 58, because ZTE has not persuaded us that the identification and authentication procedures used to interrogate the right of access associated with the software stored on removable carrier 4 necessarily includes a digital certificate that authenticates the source of the software. In addition, Leroux’s database service center 1 does not constitute the “another distributed repository,” as recited by each of independent claims 1, 29, and 58, because ZTE has not persuaded us that a digital certificate is required necessarily to upload software from a software vendor into database service center 1. For the foregoing reasons, we conclude that ZTE has not demonstrated by a preponderance of the evidence that independent claims 1, 29, and 58 are anticipated by Leroux.” slip op. at 32
Patent outcomesUS 6,963,859 not shown unpatentableClaim construction§ 102 anticipationPatents in suitUS 6,963,859 - ZTE Corporation / ZTE (USA) Inc. v. Contentguard Holdings, Inc.No claims unpatentablePTAB · Jul 1, 2014 · IPR2013-00133 · APJ Michael R Zecher · IPR · Final written decision
ZTE did not prove claims 1–25 unpatentable because EP ’139 did not disclose a digital certificate required for the claimed repository’s behavioral integrity.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for patent owner
“The specification provides a glossary that explicitly sets forth a definition for “repository.” For convenience, that glossary definition is reproduced below: Conceptually a set of functional specifications defining core functionality in the support of usage rights. A repository is a trusted system in that it maintains physical, communications and behavioral integrity. Ex. 1001, 51:34–37 (emphasis added). By setting forth the term in a glossary and using the verb “is” following “repository” in the second sentence, the specification sets forth an explicit definition of “repository” as “a trusted system in that it maintains physical, communications and behavioral integrity.” The first sentence also is relevant to the definition of “repository” because it specifies that the repository supports usage rights. Accordingly, we construe “repository” as “a trusted system which maintains physical, communications and behavioral integrity, and supports usage rights.”” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“Physical integrity refers to the integrity of the physical devices themselves. Physical integrity applies both to the repositories and to the protected digital works. Thus, the higher security classes of repositories themselves may have sensors that detect when tampering is attempted on their secure cases. In addition to protection of the repository itself, the repository design protects access to the content of digital works. In contrast with the design of conventional magnetic and optical devices-such as floppy disks, CD-ROMs, and videotapes-repositories never allow non-trusted systems to access the works directly. A maker of generic computer systems cannot guarantee that their platform will not be used to make unauthorized copies. The manufacturer provides generic capabilities for reading and writing information, and the general nature of the functionality of the general computing device depends on it. Thus, a copy program can copy arbitrary data. This copying issue is not limited to general purpose computers. It also arises for the unauthorized duplication of entertainment “software” such as video and audio recordings by magnetic recorders. Again, the functionality of the recorders depends on their ability to copy and they have no means to check whether a copy is authorized. In contrast, repositories prevent access to the raw data by general devices and can test explicit rights and conditions before copying or otherwise granting access. Information is only accessed by protocol between trusted repositories. Ex. 1001, 12:1–26 (emphases added).” slip op. at 10
- Expert testimonyPatent owner expert discountedPatent owner expert creditedMixed
“We do not credit the testimony of ContentGuard’s expert, Dr. Michael T. Goodrich, in paragraph 48 of his Declaration (Ex. 2013). In that paragraph, Dr. Goodrich attests that, in his opinion, a person of ordinary skill in the art in 1994 would have understood that the term “repository software” in the ’072 patent identifies and refers to the operating software of the repository, and not the software digital works, the usage rights of which are controlled by the repository. Dr. Goodrich’s testimony is unpersuasive because it does not account for the disclosure of the specification, discussed above, which conveys that some repositories are rendering depositories that run and execute the software digital works the rights of which they control, such as a new version of a “player.”” slip op. at 18
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“1. Principles of Law To establish anticipation under § 102(b), “all of the elements and limitations of the claim must be shown in a single prior reference, arranged as in the claim.” Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001). “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.” Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628, 631 (Fed. Cir. 1987). We analyze the ground of unpatentability based on anticipation by EP ’139 with the principles stated above in mind.” slip op. at 22
Patent outcomesUS 7,523,072 not shown unpatentableClaim construction§ 102 anticipationPatents in suitUS 7,523,072 - ZTE Corporation / ZTE (USA) Inc. v. Contentguard Holdings, Inc.No claims unpatentablePTAB · Jun 26, 2014 · IPR2013-00139 · APJ Jameson Lee · IPR · Final written decision
ZTE did not prove claims 18-21, 25-28, and 31-36 unpatentable because EP ’139 did not disclose the claimed receiving step.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for patent owner
“The specification provides a glossary which recites the following meaning for “repository”: Conceptually a set of functional specifications defining core functionality in the support of usage rights. A repository is a trusted system in that it maintains physical, communications and behavioral integrity. Ex. 1001, 52:1-6 (emphasis added). By setting forth the term in a glossary and using the verb “is” following “repository” in the second sentence, the specification sets forth an explicit definition of “repository” as “a trusted system in that it maintains physical, communications and behavioral integrity.” The first sentence is also relevant to the definition of “repository” because it specifies that the repository supports usage rights. Accordingly, we construe “repository” as “a trusted system which maintains physical, communications and behavioral integrity, and supports usage rights.”” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“Physical integrity refers to the integrity of the physical devices themselves. Physical integrity applies both to the repositories and to the protected digital works. Thus, the higher security classes of repositories themselves may have sensors that detect when tampering is attempted on their secure cases. In addition to protection of the repository itself, the repository design protects access to the content of digital works. In contrast with the design of conventional magnetic and optical devices-such as floppy disks, CD-ROMs, and videotapes-repositories never allow non-trusted systems to access the works directly. A maker of generic computer systems cannot guarantee that their platform will not be used to make unauthorized copies. The manufacturer provides generic capabilities for reading and writing information, and the general nature of the functionality of the general computing device depends on it. Thus, a copy program can copy arbitrary data. This copying issue is not limited to general purpose computers. It also arises for the unauthorized duplication of entertainment “software” such as video and audio recordings by magnetic recorders. Again, the functionality of the recorders depends on their ability to copy and they have no means to check whether a copy is authorized. In contrast, repositories prevent access to the raw data by general devices and can test explicit rights and conditions before copying or otherwise granting access. Information is only accessed by protocol between trusted repositories. Ex. 1001, 12:35-61 (emphases added). Much of the above description makes use of permissive terms such as “may” and “can” and, thus, do not reflect or indicate a required limitation for physical integrity. The specification also appears to use the terms or phrases in each of the following three groups interchangeably: 1. data, content, digital work, information; 2. non-trusted system, general device; and 3. “never allow access” and “prevent access.” When referring to the relationship between the repository and data, the specification uses absolute terms such as “never” and “only.” In light of the foregoing, we construe “physical integrity” as “preventing access to information by a non-trusted system.”” slip op. at 11
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“We are unpersuaded by ZTE’s argument, and agree with ContentGuard. Although it is true that claim 18 does not require the authorization object to be “first” received in the repository when it is determined that a request for it should be granted, at least an instance of receiving, as an affirmative act, is necessary. In other words, if not being received for the first time, the authorization object must be received a second, third, or fourth time, and so forth. For an object that already is received, not receiving it another time does not meet the claimed “receiving” step. We agree with ContentGuard that, where coprocessor 20 is the repository and software decryption key AK is the authorization object, moving the key from one part of coprocessor 20 to another part of coprocessor 20 does not meet the requirement of “receiving” the authorization object when it is determined that a request for the object should be granted.” slip op. at 31
- Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner
“The reasoning of Dr. Madisetti is tenuous, as the issue is not whether, in some respect, a decryption key under certain overall operating conditions, can “serve as” or substitute for a digital certificate authenticating the source of a software, but whether a decryption key itself “is” a digital certificate. Dr. Madisetti’s testimony falls short of stating that decryption key AK would be referred to, or identified by, one with ordinary skill in the art as a digital certificate. As is evident from our discussion of the construction of “behavioral integrity,” we are unpersuaded by ContentGuard’s contention that a digital certificate is not required, and that anything which accomplishes a similar objective in some way is satisfactory. ZTE does not account adequately for the fact that, even if decryption of software with the decryption key AK is regarded as authentication of the source of the software, the decryption key, itself, does not authenticate anything. Rather, it has to be applied in a decryption step and it is that process which determines an ascertainable result for further evaluation. Thus, the decryption key is unlike a digital certificate which, by itself, authenticates the source of the software.” slip op. at 27
Patent outcomesUS 7,269,576 not shown unpatentableClaim construction§ 102 anticipationPatents in suitUS 7,269,576
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.