- Unified Patents Inc. v. Velos Media, LLCNo claims unpatentablePTAB · May 12, 2020 · IPR2019-00194 · APJ Jason W Melvin · IPR · Final written decision
Claims 1–3, 5, 13–15, and 17 were not shown unpatentable because the asserted grounds failed to establish the claimed scan passes or scan order.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“II. ANALYSIS A. LEVEL OF ORDINARY SKILL IN THE ART Petitioner asserts a person of ordinary skill in the art at the time of the application resulting in the ’449 patent “would have had at least the equivalent of a Bachelor’s degree in electrical engineering, computer engineering, or a related subject and two or more years of experience in the field of video coding.” Pet. 23–24. Patent Owner does not contest that definition of a skilled artisan or offer a different one. Petitioner’s definition is consistent with the descriptions in the ’449 patent and the asserted art, and we adopt it.” slip op. at 5
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Although Petitioner proposes a construction for “information indicating levels of significant coefficients” (Pet. 27), we determined in the Institution Decision that there was no need to construe the phrase. Inst. 5. Absent any indication from the parties why such a construction would impact our analysis, we reach that same conclusion here. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“the phrase “in a first scan pass” and shows the proper grammatical relationship. That limitation recites “coding information indicating levels . . . according to the scan order used for coding the information indicating significant coefficients in a second scan pass.” The phrase “in a second scan pass” serves not to frame the scan order—the scan order for coding level information must be the same as the scan order for coding significance information. Rather, “in a second scan pass” relates to the phrase “coding information”—no other understanding of “in a second scan pass” would make sense. For internal consistency, that same understanding must apply to the first limitation such that “in a first scan pass” frames the step of “coding information.” Thus, the claim language requires coding significance information in a first scan pass, and then coding level information in a second scan pass, where each scan pass uses the same scan order.” slip op. at 8
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“We find Cheon’s disclosure regarding a purported second scan is insufficient to carry Petitioner’s burden. The primary disclosure Petitioner relies on states only that “[l]evel information of an effective coefficient . . . is encoded after the significance map is encoded.” Ex. 1003 ¶ 175. That does not expressly state that a second scan is performed to encode the level information. Petitioner is left relying on a statement by its declarant that a person of skill would have understood to perform a second scan pass when encoding the level information. Pet. 61. But Petitioner’s declarant provides no explanation and instead simply makes the conclusion. Ex. 1002 ¶ 127. We do not afford significant weight to such a conclusory statement. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). We are left with the possibility that Cheon’s paragraph 175 discloses a second scan, but that does not persuade us that Cheon makes an adequate disclosure to teach a second scan. In this regard, we credit the testimony of Patent Owner’s declarant that skilled artisans would have understood Cheon’s paragraph 175 to teach a single scan pass. Ex. 2034 ¶¶ 158–159.” slip op. at 11
Patent outcomesUS 9,338,449 not shown unpatentableClaim construction§ 103 obviousnessPatents in suitUS 9,338,449 - Ericsson Inc. / Telefonaktiebolaget LM Ericsson v. Intellectual Ventures II LLCNo claims unpatentablePTAB · Feb 8, 2017 · IPR2015-01664 · APJ Justin Busch · IPR · Final written decision
The Board held claims 8–12 and 18–22 not shown unpatentable as obvious over Dulin, Yamaura, Zhuang, and Hwang because the combination did not teach the entire broadcast channel within the core-band.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Upon further review of the ’431 patent, particularly in view of Patent Owner’s arguments supported by Dr. Zeger’s testimony discussed above, we are persuaded that our preliminary partial construction was unreasonably broad to the extent that construction indicated the transmitting a broadcast channel limitation would be met by the transmission of a broadcast channel that is only partially within the core-band. Thus, we agree with Patent Owner that to show that the transmitting “a broadcast channel in an” OFDMA core-band limitation is met, Petitioner must demonstrate that the prior art teaches or suggests transmitting a broadcast channel, wherein the entire channel is contained within the core-band.” slip op. at 8
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“as calling signals) in a “broadcast burst” (including Yamaura’s BCH and FCH) using only a subset of the subcarriers near the center of the bandwidth that makes up the channel. Pet. 27–29, 36–37; PO Resp. 30; Ex. 1003, 1:65–67, 6:5–8, 20:65–67, 21:30–32, 24:6–14; Ex. 1012 ¶¶ 65–68. There is some ambiguity, however, regarding whether Yamaura transmits signals outside of its narrow band during the time slots assigned to the alleged broadcast channels BCH and FCH (e.g., SC1 and SC2 as depicted in Figure 17 of Yamaura). See Ex. 1003, 21:1–43, Fig. 17. After reviewing the relevant portions of Yamaura, we determine Petitioner has not demonstrated by a preponderance of the evidence that Yamaura transmits signals only in its narrow band during the BCH and FCH time slots for the reasons discussed below.” slip op. at 13
- Expert testimonyPetitioner expert creditedOther
“Petitioner argues there are no signals other than calling signals sent during BCH and FCH because “the whole broadcast burst is part of the calling signal.” Tr. 102:17–103:2. However, upon review of the complete record and in the context of Yamaura’s entire disclosure, we credit Dr. Haas’s testimony that Yamaura’s repeated references to calling signals being specific control signals or part of the control signals indicates that Yamaura transmits other control signals during the BCH and FCH time slots. PO Resp. 30–31; Ex. 2001 ¶ 107.” slip op. at 15
Patent outcomesUS 7,787,431 not shown unpatentableClaim construction§ 103 obviousnesscites PhillipsPatents in suitUS 7,787,431 - Oracle Corporation / Netapp Inc. et al. v. Crossroads Systems, Inc.No claims unpatentablePTAB · Jan 29, 2016 · IPR2015-00822 · APJ Kevin W Cherry · IPR · Final written decision
Claims 1, 2, 4–6, 11, 12, and 14 were not shown unpatentable as obvious over the stated combinations of Bergsten, Hirai, and Smith.
RulingsFinal written decision- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“This type of reasoning—where relevant parts of the reference are disregarded for the proposed combination without sufficient explanation of why a person of ordinary skill would do so—is precisely the type of hindsight reasoning that must be rejected. “Care must be taken to avoid hindsight reconstruction by using ‘the patent in suit as a guide through the maze of prior art references, combining the right references in the right way so as to achieve the result of the claims in suit.’” Grain Processing Corp. v. Am.–Maize Prods. Co., 840 F.2d 902, 907 (Fed. Cir. 1988) (quoting Orthopedic Equip. Co. v. United States, 702 F.2d 1005, 1012 (Fed. Cir. 1983)). We have been asked without sufficient justification to carve out and perhaps modify the access controls disclosed in Hirai and combine them with Bergsten to hold that the addition of a certain type of access controls to Bergsten would have been obvious. But “[t]his type of piecemeal analysis is precisely the kind of hindsight that the Board must not engage in.” In re NTP, Inc., 654 F.3d 1279, 1299 (Fed. Cir. 2011). Petitioners have not explained why a person of ordinary skill, without the claims in front of them, would have been motivated to take the access control table of Hirai and merge it with the alleged map of Bergsten in the manner that they have proposed. The only thing that Petitioners suggest is that a person of ordinary skill could have done it, but that is not the test of obviousness. See Belden, Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (“obviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention” (emphases in original)).” slip op. at 15
- ExcludeMotion to exclude, deniedOther
“III. PETITIONERS’ MOTION TO EXCLUDE We have reviewed Petitioners’ Motion to Exclude (Paper 59), Patent Owner’s Opposition to the Motion (Paper 64), and Petitioners’ Reply in support of the Motion (Paper 69). Petitioners move to exclude Exhibits 2035, 2036, 2044, 2045, and 2050. Because our decision does not rely on any of the challenged exhibits, we dismiss Petitioners’ Motion to Exclude Evidence as moot. IV. PATENT OWNER’S MOTION TO EXCLUDE We have reviewed Patent Owner’s Motion to Exclude (Paper 61), Petitioners’ Opposition to the Motion (Paper 65), and Patent Owner’s Reply in Support of the Motion (Paper 70). Patent Owner moves to exclude certain cross examination testimony of Dr. Levy and Exhibits 1009, 1224, 1225, and 1226. Paper 61. We did not rely on either the testimony to which Patent Owner objects or any of the exhibits identified in Patent Owner’s motion. Patent Owner also seeks to exclude Exhibit 1008 as having an improper certificate of translation. However, even considering this exhibit, we find for Patent Owner. Accordingly, for these reasons, we dismiss Patent Owner’s Motion to Exclude as moot.” slip op. at 16
Patent outcomesUS 6,425,035 not shown unpatentable§ 103 obviousnessPatents in suitUS 6,425,035 - Oracle Corporation / Netapp Inc. et al. v. Crossroads Systems, Inc.No claims unpatentablePTAB · Jan 28, 2016 · IPR2014-01197 · APJ Kevin W Cherry · IPR · Final written decision
Claims 1, 2, 4–6, 11, 12, and 14 were not shown unpatentable because Petitioners did not establish the proposed obviousness combinations.
RulingsFinal written decision- Expert testimonyPetitioner expert discountedDecided for patent owner
“We are persuaded by Patent Owner’s arguments that Petitioners and their Declarant, Dr. Chase, fail to account for the prior art as a whole and improperly pick and choose from the references in their reasoning to support their contention that the proposed combination of Bergsten and Hirai renders the claims obvious. To begin with, the Petition appears to implicitly assume, without any explanation, that Hirai’s access controls are NLLBP controls, but never provides any explanation for this assumption. Pet. 44–47. Even in their reply, Petitioners do not attempt to show that Hirai is directed to NLLBP access controls, but instead only argue that Hirai does not disclose high level controls. Pet. Reply 5. The only evidence Petitioners provide to support their contentions is the testimony of Dr. Chase. We are not persuaded by Petitioners’ contention and Dr. Chase’s testimony that Hirai is directed to block-level access controls. See Pet. Reply 5; Ex. 1010 ¶¶ 144– 46. As Patent Owner explains, looking at all of the access rights described in Hirai, the evidence suggests that these are high-level access controls rather than low level block permissions. Ex. 2053 ¶¶ 88–99. We find that the evidence supports Patent Owner’s contentions that all of the permissions described in Hirai are consistent with file system permissions, not block level permissions. See id. ¶¶ 89– 91; Ex. 2048, 28– 29 (describing permissions used in Network File System); Ex. 2057, at [15] (discussing UNIX file permissions); Ex. 2055 308:25–310:7 (explaining that read, write, create, and execute are standard file system permissions). We also agree with Patent Owner that, based on the record currently before us, a person of ordinary skill would not understand Hirai to disclose block level access controls. Ex. 2053 ¶ 92. Such a reading is most consistent with all of the disclosure of Hirai and unlike Dr. Chase’s reading, does not ignore or discount some of the permissions. Id. ¶ 97 (discussing Dr. Chase’s cross-examination testimony regarding the “create” permission).” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“This type of reasoning—where relevant parts of the reference are disregarded for the proposed combination without sufficient explanation of why a person of ordinary skill would do so—is precisely the type of hindsight reasoning that must be rejected. “Care must be taken to avoid hindsight reconstruction by using ‘the patent in suit as a guide through the maze of prior art references, combining the right references in the right way so as to achieve the result of the claims in suit.’” Grain Processing Corp. v. Am.–Maize Prods. Co., 840 F.2d 902, 907 (Fed. Cir. 1988) (quoting Orthopedic Equip. Co. v. United States, 702 F.2d 1005, 1012 (Fed. Cir. 1983)). We have been asked without sufficient justification to carve out and perhaps modify the access controls disclosed in Hirai and combine them with Bergsten to hold that the addition of a certain type of access controls to Bergsten would have been obvious. But “[t]his type of piecemeal analysis is precisely the kind of hindsight that the Board must not engage in.” In re NTP, Inc., 654 F.3d 1279, 1299 (Fed. Cir. 2011). Petitioners have not explained why a person of ordinary skill, without the claims in front of them, would have been motivated to take the access control table of Hirai and merge it with the alleged map of Bergsten in the manner that they have proposed. The only thing that Petitioners suggest is that a person of ordinary skill could have done it, but that is not the test of obviousness. See Belden, Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (“obviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention” (emphases in original)).” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightDecided for patent owner
“This type of reasoning—where relevant parts of the reference are disregarded for the proposed combination without sufficient explanation of why a person of ordinary skill would do so—is precisely the type of hindsight reasoning that must be rejected. “Care must be taken to avoid hindsight reconstruction by using ‘the patent in suit as a guide through the maze of prior art references, combining the right references in the right way so as to achieve the result of the claims in suit.’” Grain Processing Corp. v. Am.–Maize Prods. Co., 840 F.2d 902, 907 (Fed. Cir. 1988) (quoting Orthopedic Equip. Co. v. United States, 702 F.2d 1005, 1012 (Fed. Cir. 1983)). We have been asked without sufficient justification to carve out and perhaps modify the access controls disclosed in Hirai and combine them with Bergsten to hold that the addition of a certain type of access controls to Bergsten would have been obvious. But “[t]his type of piecemeal analysis is precisely the kind of hindsight that the Board must not engage in.” In re NTP, Inc., 654 F.3d 1279, 1299 (Fed. Cir. 2011). Petitioners have not explained why a person of ordinary skill, without the claims in front of them, would have been motivated to take the access control table of Hirai and merge it with the alleged map of Bergsten in the manner that they have proposed. The only thing that Petitioners suggest is that a person of ordinary skill could have done it, but that is not the test of obviousness. See Belden, Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (“obviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention” (emphases in original)).” slip op. at 15
- ExcludeOther
“III. PETITIONERS’ MOTION TO EXCLUDE We have reviewed Petitioners’ Motion to Exclude (Paper 59), Patent Owner’s Opposition to the Motion (Paper 64), and Petitioners’ Reply in support of the Motion (Paper 69). Petitioners move to exclude Exhibits 2035, 2036, 2044, 2045, and 2050. Because our decision does not rely on any of the challenged exhibits, we dismiss Petitioners’ Motion to Exclude Evidence as moot. IV. PATENT OWNER’S MOTION TO EXCLUDE We have reviewed Patent Owner’s Motion to Exclude (Paper 61), Petitioners’ Opposition to the Motion (Paper 65), and Patent Owner’s Reply in Support of the Motion (Paper 70). Patent Owner moves to exclude certain cross examination testimony of Dr. Levy and Exhibits 1009, 1224, 1225, and 1226. Paper 61. We did not rely on either the testimony to which Patent Owner objects or any of the exhibits identified in Patent Owner’s motion. Patent Owner also seeks to exclude Exhibit 1008 as having an improper certificate of translation. However, even considering this exhibit, we find for Patent Owner. Accordingly, for these reasons, we dismiss Patent Owner’s Motion to Exclude as moot.” slip op. at 16
Patent outcomesUS 6,425,035 not shown unpatentableClaim construction§ 103 obviousnessPatents in suitUS 6,425,035
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.