- PTAB · Oct 7, 2021 · IPR2021-00670 · APJ Joni Y Chang · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 14–38 were unpatentable under any asserted obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons stated below, we determine that Petitioner has not established a reasonable likelihood that it would prevail with respect to at least one claim. Accordingly, we do not institute an inter partes review.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“We are not persuaded that a “graphics controller” is merely a graphics interface in the context of the ’140 patent. As Patent Owner explains, “[t]he ‘graphics controller’ of the ’140 patent has graphics processing functionality, and is not just a connection to a separate component for processing graphics.” Prelim. Resp. 12 (emphasis added). Patent Owner’s declarant, Marc Levitt, Ph.D., testifies that a person of ordinary skill in the art would have recognized that a graphics interface is not a graphics controller because a graphics interface is “simply the interface for connecting an external graphics processor to the processor module” and the “graphics interface itself provides no actual graphics processing functionality.” Ex. 2001 ¶¶ 72−73. We credit Dr. Levitt’s testimony as it is consistent with the Specification and the general knowledge of an ordinarily skilled artisan. See, e.g., Ex. 1001, 19:10−13, Figs. 19, 20; Ex. 3001 (IEEE Dictionary), 3 (defining “interface” as “[a] hardware or software component” slip op. at 7
- Skill levelSkill level petitioner adoptedDecided for petitioner
“dispute the level of skill for a person of ordinary skill in the art.” Prelim. Resp. 4. For purposes of this Decision, we adopt the level of ordinary skill as articulated by Petitioner because, based on the current record, this proposal appears to be consistent with the ’140 patent, prior art of record, and the testimony of Dr. Edwards.” slip op. at 11
- Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner
“interface in the context of the ’140 patent. As Patent Owner explains, “[t]he ‘graphics controller’ of the ’140 patent has graphics processing functionality, and is not just a connection to a separate component for processing graphics.” Prelim. Resp. 12 (emphasis added). Patent Owner’s declarant, Marc Levitt, Ph.D., testifies that a person of ordinary skill in the art would have recognized that a graphics interface is not a graphics controller because a graphics interface is “simply the interface for connecting an external graphics processor to the processor module” and the “graphics interface itself provides no actual graphics processing functionality.” Ex. 2001 ¶¶ 72−73. We credit Dr. Levitt’s testimony as it is consistent with the Specification and the general knowledge of an ordinarily skilled artisan. See, e.g., Ex. 1001, 19:10−13, Figs. 19, 20; Ex. 3001 (IEEE Dictionary), 3 (defining “interface” as “[a] hardware or software component” slip op. at 7
Claim construction§ 103 obviousnesscites KSR · Graham - PTAB · Sep 27, 2021 · IPR2021-00701 · APJ Patrick M Boucher · IPR · Institution
The Board instituted IPR on claims 1, 3, 4, 6, and 10–18 on all petitioned grounds, finding a reasonable likelihood that at least one claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Applying the standard set forth in 35 U.S.C. § 314(a), which requires demonstration of a reasonable likelihood that Petitioner would prevail with respect to at least one challenged claim, we grant the Petition and institute an inter partes review. The Board has not made a final determination regarding the patentability of any claim.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner proposes that a person of ordinary skill in the art would [have] possess[ed] at least a bachelor’s degree in computer science or electrical engineering and 3-5 years of professional experience in computer networks, or a master’s or doctorate and 1-2 years of professional experience in computer networks. Additional education could substitute for professional experience, and vice versa. Such a person would have been familiar with computer networks and would have been aware of design trends relating to authentication, authorization, and accounting (AAA). Pet. 15–16 (citing Ex. 1003 ¶ 13). At this stage, Patent Owner neither challenges Petitioner’s proposal nor proposes its own specific articulation of a level of ordinary skill in the art. Because we find Petitioner’s proposal reasonable, consistent with the level of skill reflected by the prior art, and supported by the testimony of Dr. Goldschlag, we adopt it for purposes of this Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“used to construe the claim in a civil action under 35 U.S.C. 282(b), including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” 37 C.F.R. § 42.100(b) (2019); see Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). Although Petitioner notes certain constructions that it has proposed in district court, both parties agree that no term requires construction to decide whether to institute an inter partes review in this proceeding. See Pet. 14 (Petitioner asserting that “[n]o term needs construction in this proceeding”); Prelim. Resp. 3 (“Patent Owner does not contend that any term requires construction for purposes of this Preliminary Response”). Because we also discern no term that requires construction to resolve the issues before us, we do not expressly construe any term for purposes of this Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe 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 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“restricts access to its network for clients that do not conform with the required security policy.” Pet. 37. Specifically, upon determining nonconformance, Herrmann’s policy server 460 “may restrict a session to limited access (e.g., a set of IP addresses) rather than deny access completely.” Id. (citing Ex. 1005 ¶ 78). In addition, Herrmann also teaches the use of EAP during both authentication and authorization, including an express extension “to support policy-based authentication systems.” Id. at 40 (citing Ex. 1005 ¶¶ 56, 58; Ex. 1003 ¶¶ 92–93). Although Herrmann does not expressly describe implementing restricted access in the context of a network of VLANs, Petitioner reasons that such would have been obvious in light of Krantz’s teaching of VLANs, particularly because Krantz specifically assigns a subset of VLANs as an isolated “sandbox” area. Id. at 37–38. Specifically, Petitioner reasons that a person of ordinary skill in the art “would have been motivated to segregate Herrmann’s sandbox area using at least one separate VLAN to improve network security,” and supports that reasoning with testimony by Dr. Goldschlag. Id. at 22 (citing Ex. 1003 ¶ 53). Petitioner also provides evidence that VLANs would have been recognized at the time of invention as a well-known technique for segregating network portions having different security needs. Id. at 23 (citing Ex. 1003 ¶ 54 (testimony of Dr. Goldschlag); Ex. 1031, Abstr. (IEEE 802.1Q standard)). In addition, Dr. Goldschlag testifies that a person of ordinary skill in the art would have been motivated to implement Herrmann’s network using VLANs “for improved scalability and network management.” Ex. 1003 ¶ 55. Furthermore, Petitioner identifies language in Krantz to support its contention that Krantz itself motivates the combination by teaching that VLANs were a known alternative to IP filtering for restricting network access. Pet. 24 (citing Ex. 1006 ¶ 32; Ex. 1003 ¶ 56). Patent Owner does not dispute Petitioner’s reasons for combining Herrmann and Krantz, and, on the record before us, we find that reasoning supported by a rational underpinning. We accordingly find that Petitioner makes a sufficient showing at this stage with respect to the “restricting” limitation of independent claims 1 and 13.” slip op. at 19
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,877,786 - PTAB · Sep 20, 2021 · IPR2021-00669 · APJ Thu A Dang · IPR · Institution
The Board denied institution on all challenged claims because Petitioner did not show a reasonable likelihood that any claim was unpatentable under the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Institution of an inter partes review may not be authorized “unless . . . the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Upon consideration of the Petition and the Preliminary Response, we are not persuaded Petitioner demonstrated a reasonable likelihood of prevailing in establishing unpatentability of the challenged claims of the ’654 patent. Accordingly, no trial is instituted.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“bit at a time on a single path.’” Prelim. Resp. 20 (quoting Ex. 2002, 11 (IEEE Dictionary) (defining “serial transmission”); citing Ex. 1001, 20:66−21:3 (“describing ‘bit based line’ ‘for transmitting serial bits’”); Ex. 2001 ¶ 76). Based on the evidence before us, we agree with Patent Owner’s proposed claim construction. Ex. 1001, 20:66−21:3; Ex. 2001 ¶ 76; Ex. 2002, 9, 11.” slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995)(quoting Custom Accessories, Inc. v. Jeffrey–Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986)). In that regard, relying on the declaration of Dr. Edwards, Petitioner contends that a person of ordinary skill in the art at the time of the ʼ654 patent’s invention would have had “at least a Master’s Degree in, or a related subject, or a Bachelor’s Degree in electrical engineering, computer science, or a related subject and three years of experience working with computer architecture, computer busses, and related technologies.” Pet. 9; Ex. 1003 ¶¶ 46–47.” slip op. at 18
- Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner
“teach the claimed “graphics controller,” citing Dr. Edwards’ testimony for support. Pet. 22−23 (citing Ex. 1004, 5:21–25, 23:54–57; Ex. 1003 ¶¶ 72– 73). However, as discussed above in our claim construction analysis, in the context of the ’654 patent, a “graphics controller” is a processing unit having graphics processing functionality (e.g., producing graphical video output), and thus, not merely a graphics interface. As Dr. Levitt testifies, a person of ordinary skill in the art would have recognized that a graphics interface is not a graphic controller, because “the graphics interface is simply the interface for connecting an external graphics processor to the processor module,” wherein “[t]he graphics interface itself provides no actual graphics processing functionality.” Ex. 2001 ¶ 72. We credit Dr. Levitt’s testimony as it is consistent with the Specification and the general knowledge of an 26 ordinarily skilled artisan. See, e.g., Ex. 1001, 7:4−17, 19:4−9, Figs. 3, 19, 20.” slip op. at 26
Claim construction§ 103 obviousnesscites KSR · Graham - PTAB · Sep 15, 2021 · IPR2021-00608 · APJ Thu A Dang · IPR · Institution
The Board denied institution under § 325(d), finding substantially the same arguments had been presented before and Petitioner failed to show material Office error.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“Under § 325(d), in “determining whether to institute [an inter partes review], the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” We determine whether to exercise our discretion to deny institution under 35 U.S.C. § 325(d) based on the framework set forth in Advanced Bionics, LLC v. Med-El Elektromedizinische Geräte GMBH, IPR2019-01469, Paper 6 (PTAB Feb. 13, 2020) (precedential). In Advanced Bionics, the Board applied a two-part framework in considering whether to exercise discretion to deny institution under § 325(d): “(1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of [the] first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims.” Advanced Bionics at 8. Only if the same or substantially the same art or arguments were previously presented to the Office do we then consider whether petitioner has demonstrated a material error by the Office. Id. at 10. “At bottom, this framework reflects a commitment to defer to previous Office evaluations of the evidence of record unless material error is shown.” Id. at 9.” slip op. at 9
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied 325dInstitution denied
“Institution of an inter partes review may not be authorized “unless . . . the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons stated below, we decline to institute an inter partes review of the challenged claims of the ’654 patent.” slip op. at 2
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not reached
“3. § 325(d) Conclusion For the foregoing reasons, we determine that the same or substantially the same arguments previously were presented to the Office and that Petitioner fails to show that the Examiner erred by not realizing that Chu ’330 and Chu ’886 qualify as 35 U.S.C. § 102(b) prior art and are material to the patentability of the ’654 Patent claims. Accordingly, we exercise our discretion not to institute inter partes review. Advanced Bionics at 8; see also Becton, Dickinson, Paper 8, 24. III. CONCLUSION For the foregoing reasons, we exercise our discretion under § 325(d) to deny institution of an inter partes review. 26 IV. ORDER Accordingly, it is ORDERED that the Petition is denied, and no trial is instituted.” slip op. at 26
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedDecided for patent owner
“Chu ’886 was not included in any of the applications in the ’654 patent priority chain before the amendments in the ’138 application, the earliest possible priority date for any of the ’654 patent claims relying on this subject matter for written description support under § 112, ¶ 1, is the filing date of the ’108 application, i.e., November 10, 2011, “the earliest possible priority date for any of the ’654 Patent claims relying on this subject matter.” Pet. 15−17. However, the amendments to the ’138 application were proper because, as discussed above, when claims were added to the ’138 application that transformed previously non-essential material into allegedly essential 25 material, Patent Owner submitted an amendment to explicitly set forth the material in the specification in accordance with the procedure set forth in 37 C.F.R. § 1.57(g) (2007) and MPEP § 608.01(p) (8th Ed. Rev. 8 July 2010). See Prelim. Resp. 28−33. Petitioner has not shown sufficiently that the ’777 patent and the applications in the ’654 patent priority chain did not properly incorporate by reference Chu ’330 and Chu ’886, or that the examiner erred in entering the amendments that added the subject matter from Chu ’886 to the ’138 application. As such, we are not persuaded by Petitioner’s argument that the earliest possible priority date for the challenged claims of the ’654 patent is November 10, 2011.” slip op. at 25
§ 102 anticipation§ 103 obviousnessDiscretionary denial - ROKU, Inc. v. Universal Electronics, Inc.Rehearing deniedPTAB · Aug 17, 2021 · IPR2019-01615 · APJ Sharon Fenick · IPR · Rehearing
The Board denied Roku’s rehearing request, leaving intact its determination that claims 1, 3, 5, and 7 were not shown unpatentable over Chardon.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. DISCUSSION On request for rehearing, “[t]he burden of showing a decision should be modified lies with the party challenging the decision.” 37 C.F.R. § 42.71(d). “The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, reply, or a sur-reply.” Id. We have reviewed Petitioner’s Request and carefully considered all of the arguments presented. We are not persuaded that we misapprehended or overlooked any arguments or evidence, and thus we decline to modify the Decision.” slip op. at 2
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“first communication method” and “second communication method” recited in claim 1 with Chardon’s “CEC command codes” and “IR command codes,” respectively, where Chardon’s command codes are stored in a database linked to the Extended Display Identification Data (EDID) for target devices. Dec. 20–21. We thus evaluated whether command codes in an EDID-linked database teach or suggest the claimed listing comprised of at least a first communication method and a second communication method, and determined that “the record falls short of providing evidence that one of ordinary skill in the art would have understood stored command codes to act as an identification of communication methods to be used.” Id. at 21–22. slip op. at 3
§ 103 obviousnessPatents in suitUS 9,716,853 - Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Cellect, LLCAll claims unpatentablePTAB · Aug 17, 2021 · IPR2020-00512 · APJ John R Kenny · IPR · Final written decision
Claim 2 is unpatentable as obvious over Swift, Ricquier, and Suzuki; the Board did not reach the alternative ground involving Larson.
RulingsFinal written decision- Skill levelSkill level board ownDecided for petitioner
“Neither party identifies any material differences between a skill level corresponding to approximately two years of professional experience in the field of imaging devices and approximately three years of professional experience in the field of visible optical imaging devices, or any difference in the field of imaging devices and the field of visible optical imaging devices. On this record, there is none. We determine that the level of ordinary skill in the art is at the level of one who would have had a Bachelor’s degree in Electrical Engineering, Physics, or a related field, and approximately two to three years of professional experience in the field of visible optical imaging devices.6 This definition is consistent with the prior art of record. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). 6 We do not adopt Petitioner’s inclusion of the qualifier “minimum,” to keep the specified level of skill more definite.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“We also are guided by the principle that we only construe claim terms if, and to the extent that, it is necessary for this proceeding. See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe 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)). Neither party requests the construction of any claim term. Pet. 13; PO Resp. 12. Further, we do not find that any claim term requires express construction. III.” slip op. at 10
- Expert testimonyPetitioner expert creditedPatent owner expert discountedMixed
“Dr. Neikirk’s testimony is rational, and we credit his testimony over the testimony of Patent Owner’s inventor, who provides no explanation as to why it was purportedly unexpected that, as compared to CCD devices, a CMOS imager with remotely located processing circuitry requires no RFI shielding. For the foregoing reasons, Patent Owner has not established that the alleged unexpected result would have been unexpected to an ordinarily skilled artisan. Further, even assuming the alleged unexpected result truly would have been unexpected to an ordinarily skilled artisan, Patent Owner has not shown sufficient nexus between the unexpected result and the claimed invention.” slip op. at 20
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusNot shown unpatentable
“Accordingly, there is no presumption of nexus, and Patent Owner has not separately proved the required nexus for the alleged licensing and commercial success. Thus, there is not a legally and factually sufficient connection between the evidence of licensing and the patented invention.” slip op. at 14
Patent outcomesUS 9,186,052 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,186,052 - Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Cellect, LLCAll claims unpatentablePTAB · Aug 17, 2021 · IPR2020-00475 · APJ John R Kenny · IPR · Final written decision
Claims 1, 3, and 7 are unpatentable as obvious over Wakabayashi, Ackland, and Suzuki or over Wakabayashi, Ricquier, and Dierickx.
RulingsFinal written decision- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“separately proved the required nexus for the alleged licensing and commercial success. Accordingly, there is not a legally and factually sufficient connection between the evidence of licensing and the patented invention.” slip op. at 15
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“m. Summary For the foregoing reasons, after considering and balancing the” slip op. at 80
Patent outcomesUS 9,186,052 unpatentable§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,186,052 - ROKU, Inc. v. Universal Electronics, Inc.Rehearing deniedPTAB · May 13, 2021 · IPR2019-01595 · APJ Minn Chung · IPR · Rehearing
The Board denied rehearing of its decision denying institution on claims 1 and 2, finding no abuse of discretion on priority entitlement or motivation to combine Darbee and Golender.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW “The burden of showing a decision should be modified lies with the party challenging the decision,” and the challenging party “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed” in a 1 Petitioner also filed a request for the Precedential Opinion Panel (“POP”) to review the Decision (Paper 13 (Notification of Receipt of POP Request)), which the POP denied (Paper 14 (Order)). paper of record. 37 C.F.R. § 42.71(d). Because Petitioner seeks rehearing of our Decision denying institution of trial based on the Petition, it must show an abuse of discretion. See 37 C.F.R. § 42.71(c) (“When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.”). An abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus., Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988). Thus, a request for rehearing is not an opportunity merely to disagree with the Board’s assessment of the arguments or weighing of the evidence, or to present new arguments or evidence that could have been presented in the Petition.” slip op. at 2
- Disclosure Requirements (§112) › Written description (Ariad)Entitled to earlier dateDecided for patent owner
“issue upon which the priority determination turns—what the priority applications reasonably would have conveyed to a person of ordinary skill in the art—because Dr. Medvidovic did not provide any testimony on that issue. And we did not overlook or misapprehend any testimony of Dr. Medvidovic regarding what the priority applications reasonably would have conveyed to a person of ordinary skill in the art because we could not have overlooked or misapprehended any testimony that was not presented in the Medvidovic Declaration. As discussed above, Dr. Medvidovic’s testimony based on what is expressly disclosed in or necessarily follows from the disclosures of the priority applications was insufficient because Dr. Medvidovic did not explain adequately why the disclosures in the priority applications would not reasonably have conveyed to a person of ordinary skill in the art the subject matter of the User Action Limitation. Thus, Dr. Medvidovic’s testimony was insufficient to raise a genuine issue of material fact on the issue of what the priority applications reasonably would have conveyed to a person of ordinary skill in the art. Although Patent Owner’s declarant, Mr. Bear, provided detailed testimony and explanations regarding how a person of ordinary skill in the art would have understood the priority applications to describe the subject matter recited in the User Action Limitation (see Ex. 2001 ¶¶ 111–122, 126–127), Dr. Medvidovic did not provide adequate testimony or explanations to the contrary on the issue (see Ex. 1010 ¶¶ 53–63).” slip op. at 9
- Expert testimonyPetitioner expert discountedDecided for patent owner
“misapprehend or overlook 37 C.F.R. § 42.108(c). The mere fact that Dr. Medvidovic provided testimony different from the testimony of Mr. Bear does not by itself raise a genuine issue of material fact. See Mortgage Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1325–26 (Fed. Cir. 2016) (“The mere existence in the record of dueling expert testimony does not necessarily raise a genuine issue of material fact.”). As the Request acknowledges, Dr. Medvidovic in his Declaration (Ex. 1010, “Medvidovic Declaration”) testified that the subject matter of the User Action Limitation is “neither expressly disclosed [in] nor necessarily follows from” the descriptions in the priority applications about event journal data. Req. 3 (emphases added) (citing Ex. 1010 ¶¶ 57–62). As discussed above, however, the test for determining compliance with the written description requirement under 35 U.S.C. § 112 is whether the original disclosure of the earlier-filed application reasonably would have conveyed to a person of ordinary skill in the art that the inventor had possession of the claimed subject matter at the time of the earlier-filed application. Ariad Pharm., 598 F.3d at 1351. The record shows that Dr. Medvidovic did not provide any testimony in his Declaration as to what the disclosures in the priority applications reasonably would have conveyed to a person of ordinary skill in the art. See Ex. 1010 ¶¶ 53–63. Nor did Dr. Medvidovic explain adequately in his Declaration why the disclosures in the priority applications would not reasonably have conveyed to a person of ordinary skill in the art the subject matter of the User Action Limitation. See id.” slip op. at 8
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Under Petitioner’s definition of the level of ordinary skill in the art, however, “less education can be remedied with additional work experience (e.g., 5–6 years).” Pet. 7 (citing Ex. 1010 ¶¶ 64–67). As stated in the Bear Declaration, Mr. Bear’s work experience includes at least 9 years of computer software programming using a variety of coding languages, such as BASIC, Pascal, C, C++, and 68000 Assembly Language. See Ex. 2001 ¶¶ 10–12. Thus, Mr. Bear is qualified to testify from the perspective of a person of ordinary skill in the art under Petitioner’s definition of a person of ordinary skill in the art. As discussed in the Decision, although we did not find the parties’ proposals for the level of ordinary skill in the art to be materially different, to the extent the testimony from the parties’ declarants on the level of ordinary skill in the art raised a genuine issue of material fact, we adopted and applied Petitioner’s definition for purposes of the Decision, being mindful of the rule that “a genuine issue of material fact created by such testimonial evidence will be viewed in the light most favorable to the petitioner solely for purposes of deciding whether to institute an inter partes review.” Dec. 9 (citing 37 C.F.R. § 42.108(c)). Thus, the record shows that, under Petitioner’s definition of the level of ordinary skill in the art adopted in consideration of § 42.108(c), the Decision appropriately credited Mr. Bear’s testimony on what the priority applications reasonably would have conveyed to a person of ordinary skill in the art.” slip op. at 11
§ 103 obviousness§ 112 disclosurePatents in suitUS 8,015,446 - ROKU, Inc. v. Universal Electronics, Inc.No claims unpatentablePTAB · Apr 13, 2021 · IPR2019-01615 · APJ Sharon Fenick · IPR · Final written decision
Claims 1, 3, 5, and 7 were not shown unpatentable because the evidence did not establish that Chardon’s command-code database teaches the claimed listing of communication methods.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner argues that one of ordinary skill in the art would have had general knowledge of home theater systems, control of devices within the home theater systems, and remote control devices as of October 28, 2011. Further, a POSA would have had: (1) at least a bachelor’s degree in an electrical engineering, computer engineering, or equivalent coursework, and (2) at least one year of experience researching or developing structure and operating principles of common digital content reproduction and related appliances, contemporary television and home theater standards, and specifications of consumer digital reproducing devices of the time. Pet. 13. Patent Owner proposes a different standard: [A person of ordinary skill in the art] would have had a bachelor’s degree which involved software design and development coursework, for example, electrical engineering, computer engineering, computer science, cognitive science, industrial engineering, information systems, information studies, or a similar degree, and at least one year of work experience in software programming, development, or design of consumer applications. Additional education might substitute for some of the experience, and substantial experience might substitute for some of the educational background. PO Resp. 4–5 (internal citations omitted). The ’853 patent specifically relates to remote control devices, so we adopt Petitioner’s standard that includes general knowledge consistent with the field of the invention, and, additionally, is consistent with the prior art presented. See Ex. 1001, 1:63– 2:3; Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“Petitioner proposes only one claim construction, for limitation [1.4], which specifies that the first and second communication methods are “for use in controlling each of at least a first functional operation and a second functional operation of the intended target appliance.” Pet. 14–17. In our Decision on Institution, we found that no specific construction was necessary. Dec. 17. Post-institution, the parties’ arguments did not involve the construction of this term, and no express construction is necessary for us to reach our conclusion. See PO Resp. 10 (Patent Owner stating that no construction is required). We determine that no specific construction is required to resolve the controversy before us, and thus decline to construe this limitation. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).” slip op. at 11
- BurdenNot shown unpatentable
“by a preponderance of the evidence that Chardon teaches or suggests a database (the “listing” of claim 1) that is “comprised of at least a first communication method and a second communication method different than the first communication method,” which methods are “used to transmit to the intended target appliance a command for controlling” a functional operation of a target appliance, as required by claim 1. We find that Petitioner has not sufficiently adduced that a database “comprised of” CEC and IR command codes would teach or suggest claim 1’s listing.” slip op. at 20
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“by a preponderance of the evidence that Chardon teaches or suggests a database (the “listing” of claim 1) that is “comprised of at least a first communication method and a second communication method different than the first communication method,” which methods are “used to transmit to the intended target appliance a command for controlling” a functional operation of a target appliance, as required by claim 1. We find that Petitioner has not sufficiently adduced that a database “comprised of” CEC and IR command codes would teach or suggest claim 1’s listing.” slip op. at 20
Patent outcomesUS 9,716,853 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 9,716,853 - Flex Logix Technologies Inc. v. Venkat KondaAll claims unpatentablePTAB · Mar 16, 2021 · PGR2019-00042 · APJ Norman H Beamer · PGR · Final written decision
Claims 1–7, 9–15, and 17–19 are unpatentable under §§ 102(a)(1) and 103; the revised motion to amend and motion to exclude are denied.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“We find Petitioner’s proposal consistent with the level of ordinary skill in the art reflected by the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). Therefore, for purposes of this Decision, we adopt Petitioner’s unopposed position as to the level of ordinary skill in the art.” slip op. at 16
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Because only those claim terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy, we do not expressly construe any claim term for purposes of this Decision. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017).” slip op. at 17
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Ex. 1001, 49:9–18. Petitioner argues, and we agree, that this language is non-limiting as reciting optional features that “may or may not” be present, and therefore irrelevant to the issue of anticipation.9 Pet. 54–57.” slip op. at 23
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“In light of these and other disclosures in Wong ’308, Petitioner argues that a POSITA would have been motivated to implement the switches of the ’756 PCT application using multiplexers. Pet. 102; Ex. 1002 ¶ 182. Patent Owner does not challenge this fact — the references to multiplexers (also referred to a “muxes”) in the ’342 patent suggest that Patent Owner would concede this point. E.g., Ex. 1001, 9:67, 14:33. Upon review of the record, we are persuaded that Petitioner has proved by a preponderance of the evidence that the combination of the ’724 provisional application and Wong ’308 renders claims 1–7, 9–15, and 17–19 obvious.” slip op. at 29
Patent outcomesUS 10,003,553 unpatentableClaim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites KSR · Graham · NautilusPatents in suitUS 10,003,553
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.