- Apple Inc. / HTC Corporation et al. v. Invt Spe LLCAll claims unpatentablePTAB · Feb 21, 2020 · IPR2018-01472 · APJ Thu A Dang · IPR · Final written decision
Claims 1–3, 5, 6, 12, 13, 15, and 16 are unpatentable under § 103 over Nakamura and Okumura, and independently over Bhagalia and Abe.
RulingsFinal written decision- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner
“With respect to claim 1, according to Petitioner, the claim includes “limitations in means-plus function format, which creates a rebuttable presumption that the [Applicant] intended to invoke § 112, ¶ 6.”2 Pet. 8–9; see also Altiris Inc. v. Symantec Corp., 318 F.3d 1363, 1375 (Fed. Cir. 2003). In the Decision on Institution, we addressed Petitioner’s proposed constructions of the means-plus-function (“MPF”) terms, and we determined that Petitioner had set forth proposed structures that support these limitations. Dec. on Inst. 9–12 (citing Pet. 9–11); see 37 C.F.R. § 42.104(b)(3). As we noted in the Decision on Institution, Petitioner’s constructions presume that the meaning of specific functions, such as “generating” a frame, for example, are generally known. Dec. on Inst. 10. Patent Owner 2 Applicant is Matsushita Electric Industrial Co., Ltd. 9 has not rebutted this presumption. Petitioner’s proposed constructions of the means-plus-function terms in the claims (Pet. 9–11) are as follows:” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“As for the other claim limitations of independent claims 1, 5, 12, and 15, and claims 2, 3, 6, 13, and 16 depending respectively therefrom, for the reasons set forth below, the explicit requirements set forth in claims themselves sufficiently limit the claims without requiring further construction. Thus, we determine that we need not further construe expressly any other claim terms to resolve the arguments before us. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (only claim terms that are in controversy need to be construed and only to the extent necessary to resolve the controversy); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. in the context of an inter partes review).” slip op. at 12
- Skill levelSkill level petitioner adoptedDecided for petitioner
“The parties propose similar levels of ordinary skill in the art and do not directly challenge the other’s proposal. We consider the level of ordinary skill in the art to be reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (holding 14 that absent evidence to the contrary, “the prior art itself [may] reflect[] an appropriate level” of ordinary skill in the art). In general, we agree with the areas of agreement in the parties’ proposals. Patent Owner has not explained sufficiently why researching or working particularly with “cellular radio communication systems” is necessary (PO Resp. 12), and so we adopt Petitioner’s proposed general experience of working with “digital communication systems or in network engineering” (Pet. 6), which comports with the level of ordinary skill in the art reflected in the prior art of record. Accordingly, we determine that a person of ordinary skill would have a Bachelor’s degree in electrical engineering or the equivalent plus three years of experience working with digital communication systems or in network engineering or a Master’s degree in electrical engineering with an emphasis on communication systems or the equivalent plus one year of experience working with digital communication systems or in network engineering.” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“original); also Pet. 24–25). Even Patent Owner concedes that Claim 12 of Nakamura discloses that “necessary signals could include ‘one or more’ of pilot signals, synchronization information, order number, and TPC information.” Sur-Reply 4 (citing 1004, 15:51–61). The Supreme Court has stated that the “combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR, 550 U.S. at 416; Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1161 (Fed. Cir. 2007) (quoting KSR, 550 U.S. at 416). According to Petitioner, “[t]he proposed modification to Nakamura would be straightforward, not requiring undue experimentation, and would produce predictable results.” Pet. 25. That is, “it would have been natural and an application of nothing more than ordinary skill and common sense.” Id. at 25–26. Here, the question is whether combining Okumura’s teaching of using both pilot and TPC symbols in the same necessary signal with Nakumura’s necessary signals comprising control data, such as pilot symbols and TPC symbols, was “uniquely challenging or difficult for one of ordinary skill in the art” or “represented an unobvious step over the prior art.” Leapfrog Enters, 485 F.3d at 1162 (citing KSR, 550 U.S. at 421). As Petitioner points out, Patent Owner’s Expert, “Dr. Vojcic admitted that no technical barriers would have prevented a POSITA from modifying the expressly disclosed embodiments of Nakamura to combine pilot and TPC symbols.” Reply 11 (citing Ex. 1016, 34:14–35:20). We view Petitioner’s combination as being akin to a simple substitution of Okumura’s use of both pilot and TPC 34 symbols in Nakamura’s necessary signals. Cf. KSR, 550 U.S. at 417 (indicating determining obviousness is easier when the claimed subject matter involves “a simple substitution for one known element for another or the mere application of a known technique to a piece of prior art ready for improvement.”). We are unpersuaded by Patent Owner’s contention that “[t]he Petition’s proposed combination of Nakamura and Okumura is guided by the ’563 patent and driven by hindsight.” PO Resp. 32. Rather, we agree with Petitioner that Nakamura and Okumura provide sufficient motivation for combining the references in the manner required by the claims. Pet. 24–25 (citing Ex. 1004, 15:53–61; Ex. 1005, 14, 18, Fig. 2; Ex. 1003 ¶¶ 53–54). First, although Patent Owner contends that “there is no discussion of the benefits gained by sending both pilot and power control symbols” (PO Resp. 32 (citing Pet. 21), we agree with Petitioner that Nakamura explains that pilot symbols permit ‘coherent detection with interpolation at a receiving side’ and that power control symbols permit ‘carrying out a transmission power control’” and this provides a reason one of ordinary skill in the art would make Petitioner’s proposed combination. Ex. 1004, 11:48–50 (“In this eighth embodiment, the necessary signal generation unit 10 includes pilot signals to be used in carrying out the coherent detection with interpolation at a receiving side”), 13:11–14 (“In this eleventh embodiment, the necessary signal generation unit 10 includes a transmission power control information which is necessary in carrying out a transmission power control.”); Pet. 21 (quoting Ex. 1004, 11:48–50, 13:11–14)). Thus, although Patent Owner contends that Nakamura “does not” slip op. at 34
Patent outcomesUS 6,466,563 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 6,466,563 - NEC Corporation / Nokia Corporation et al. v. Neptune Subsea IP LimitedAll claims unpatentablePTAB · Nov 25, 2019 · IPR2018-01157 · APJ Jason W Melvin · IPR · Final written decision
Claims 13–20 are unpatentable as obvious over Yamamoto and Nishimoto; the Chowdhury and Webb grounds, with or without Tanaka162, do not establish unpatentability.
RulingsFinal written decision- BurdenFwd all claims unpatentableDecided for petitioner
“III. CONCLUSION For the foregoing reasons, we determine Petitioner has shown by a preponderance of the evidence that each of claims 13–20 is unpatentable.” slip op. at 26
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“The parties submit and we agree that there is no need to construe any term to resolve the issues in this decision. See Pet. 7–9; PO Resp. 6; Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., 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
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“e. Summary For the reasons described above, we find that a person of ordinary skill in the art at the time of invention would have had reason to combine Yamamoto’s and Nishimoto’s teachings as asserted by Petitioner and that the combination teaches all of claim 13’s limitations. Accordingly, Petitioner has shown by a preponderance of the evidence that the subject matter of claim 13 would have been obvious over Yamamoto and Nishimoto.” slip op. at 21
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“tunable compensators is a contingent argument, applicable only if one reads claim 13 to require a certain transmission rate. PO Resp. 21–25. We do not read Petitioner’s argument as so constrained. Rather, we understand Petitioner to argue that a desire for higher transmission speeds would drive skilled artisans to use solutions such as Nishimoto’s tunable compensators, particularly in light of Nishimoto’s guidance regarding the ability to achieve high speeds with the system. See Pet. 21–23. In that regard, we agree with Petitioner that the increase in transmission rates from Yamamoto’s to Nishimoto’s disclosures would have given skilled artisans reason to consider Nishimoto’s teachings. Pet. Reply 16–18 (citing Ex. 1005 8:9–11; Ex. 1007, 12:37–39). As Petitioner points out, Nishimoto specifically discloses that higher-speed transmissions were more sensitive to dispersion. Pet. Reply 17 n.9. Thus, we find the desire for higher transmission speeds and the need for techniques such as taught by Nishimoto would have given skilled artisans reasons to combine Nishimoto’s disclosure regarding dispersion compensation with Yamamoto’s system to achieve Yamamoto’s goals regarding the dispersion maps for multiple channels. Further, Petitioner does not rest entirely on the desire for high-speed operation. Petitioner argues also that using Nishimoto’s adjustable compensators and feedback control would “yield an improved WDM system capable of automatic compensation for degradation of the optical signal waveform caused by both wavelength dispersion and polarization mode dispersion of the optical transmission path, resulting in further reduced size and cost.” Pet. 16 (citing Ex. 1003 ¶¶ 99, 101; Ex. 1007, 3:41–60, 4:3–58, Figs. 17, 20, 21), 29–30 (quoting Ex. 1007, Abstract, 3:37–40, 6:56–64, 7:53–56, 11:41–46, 17:53–55, 17:59–60; citing Ex. 1003 ¶¶ 114–115); accord id. at 14 (quoting Ex. 1007, 3:19–25). Patent Owner recognizes that basis for the combination but argues that the record lacks evidence to support Petitioner’s claim of reduced size and cost. PO Resp. 25–26. Patent Owner does not contest that the modification would give Yamamoto’s system the ability to automatically compensate for signal degradation from dispersion. Nishimoto discloses that as transmission speeds increase, “changes in wavelength dispersion characteristics due to temperature changes of optical fiber; and the influence by polarization mode dispersion” both “can not be neglected,” therefore requiring a system for automatically compensating for wavelength dispersion and polarization mode dispersion,” as taught by Nishimoto. Ex. 1007, 1:34–41. We find that a skilled artisan would have had reason to make the combination because the system would gain capability for automatic compensation. Regarding reduced size and cost resulting from the combination, Patent Owner does not provide any contrary evidence and we conclude that Nishimoto’s statements regarding the benefit of its invention also would have motivated skilled artisans to make the combination. See Ex. 1007, 3:17–26 (“to thereby provide a dispersion compensating apparatus of reduced sizes at a reduced cost”).” slip op. at 18
Patent outcomesUS 8,351,798 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,351,798 - HTC Corporation / HTC America, Inc. v. Invt Spe LLCInstitution deniedPTAB · Mar 5, 2019 · IPR2018-01556 · APJ Thu A Dang · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claim 4 was obvious over Padovani and Gils.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“B. Principles of Law In an inter partes review, “the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)); see also 37 C.F.R. § 42.104(b) (requiring a petition for inter partes review to identify how the challenged claim is to be construed and where each element of the claim is found in the prior art patents or printed publications relied on). Petitioner cannot satisfy its burden of proving obviousness by employing “mere conclusory statements.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016).” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“Although Petitioner contends “a POSITA would have been motivated to provide greater protection for the decimal integer portion (an error in which would be magnified versus an error in the decimal fraction portion)” in Padovani (Pet. 33), Petitioner does not identify any passage or combination of passages in Padovani that teaches or suggests providing, or even the need to provide, greater protection for one decimal portion than the other decimal portion, let alone by using “different coding schemes for the different parts.” Id. As Patent Owner asserts, “Padovani discloses using a single code to encode the DRC message[,]” and “does not teach using multiple codes to encode different portions of the DRC message.” Prelim. Resp. 14 (citing Ex. 1009, 45:20–22 (emphasis added)). We recognize that Petitioner’s Declarant, Dr. Min, testifies that, “by virtue of Padovani contemplating the use of an (n,k) coding scheme,” the POSITA “would have naturally sought out similar coding schemes [as those of Gils] to protect DRC messages.” See Pet. 41 (citing Ex. 1017 ¶ 156). Dr. Min further testifies that “a POSITA would have been motivated to provide greater protection for certain bits by selecting appropriate code words generated by one or more of the coding schemes contemplated by Gils,” and thus, use “different coding schemes for the different parts.” Ex. 1017 ¶ 132. Dr. Min’s testimony, however, does not address adequately why one of ordinary skill in the art would have used together different coding schemes from Gils, let alone a separate scheme for certain bits over the other bits. As Dr. Min testifies, “a single UEP coding scheme could also be used depending upon how a POSITA would have wanted to implement unequal error protection.” Ex. 1017 ¶ 132; see Pet. 33 (citing Ex. 1017 ¶ 132). As such, Dr. Min acknowledges that a single unequal error protection coding scheme could be used as well as applying different coding schemes to different parts of a message. Here, Dr. Min’s testimony that a single unequal error protection coding scheme could be used further undermines Petitioner’s position that one of ordinary skill in the art would have used the different coding schemes for different parts as set forth in Gils. Thus, Dr. Min’s testimony does not adequately explain why one of ordinary skill in the art would have applied different coding schemes from Gils to the DRC message of Padovani, much less in the manner proposed by Petitioner, of providing greater protection for the decimal integer portion than the decimal fraction portion, especially when Padovani discloses “using a single code to encode the DRC message.” See Prelim. Resp. 14 (citing Ex. 1009, 45:20–22).” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightNot shown unpatentableNot shown unpatentable
“Here, for these reasons discussed above, we conclude that Petitioner has not provided sufficient evidence from prior art references or Dr. Min’s declaration testimony to support its contention that one of ordinary skill in the art would have used Gils’s techniques to encode Padovani’s DRC message in the manner required by the claims—such that the most significant bit of the plurality of bits is encoded to be less susceptible to errors. Petitioner also has not demonstrated articulated reasoning with rational underpinning to support the legal conclusion of obviousness. See PAR Pharm., Inc. v. TWI Pharm., Inc., 773 F.3d 1186, 1193 (Fed. Cir. 2014). Instead, we conclude that Petitioner used improper hindsight to reconstruct the claimed subject matter by using the claims as a guide to combine the prior art references. Grain Processing Corp. v. Am. Maize- Prods. Co., 840 F.2d 902, 907 (Fed. Cir. 1988) (“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.’” (citation omitted)).” slip op. at 16
- Expert testimonyPetitioner expert discountedDecided for patent owner
“Moreover, Dr. Min’s contention that “[t]he nature of binary numbers (or other base-x number systems) means that the leftmost bit of any binary number is the most significant bit” (Ex. 1017 ¶ 154) is conclusory. As Patent Owner points out, “Dr Min’s declaration, however, merely repeats the allegations of the Petition without any explanation or citation to any supporting or corroborating evidence.” Prelim. Resp. 20 (citing Ex. 1017 ¶ 154). That is, “[t]here is no proffered evidence that it was well understood by a POSITA at the time that the leftmost bit in binary numbers, and specifically in the DRC message of Padovani, is the ‘most significant bit.’” Prelim. Resp. 20. For that reason, we give little weight to Dr. Min’s uncorroborated testimony that “the leftmost bit of any binary number is the most significant bit.” 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.”); In re Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) (“[T]he Board is entitled to weigh the declarations and conclude that the lack of factual corroboration warrants discounting the opinions expressed in the declarations[.]”).” slip op. at 15
§ 103 obviousnesscites KSRPatents in suitUS 7,206,587 - Apple Inc. / Zte(Usa) Inc. v. Invt Spe LLCInstitution deniedPTAB · Mar 5, 2019 · IPR2018-01474 · APJ Thu A Dang · IPR · Institution
The Board denied institution on claim 4 because Petitioner did not show a reasonable likelihood that Bender and Piret rendered it obvious; claim 3 had been statutorily disclaimed.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“For the foregoing reasons, Petitioner does not demonstrate a reasonable likelihood of prevailing in showing that claim 4 would have been obvious over Bender and Piret. See 35 U.S.C. § 316(e) (To prevail in an inter partes review that has been instituted, “the petitioner shall have the burden of proving a proposition of unpatentability by a preponderance of the evidence.”). III. CONCLUSION We conclude that Petitioner has not demonstrated a reasonable likelihood of prevailing with respect to at least one claim of the ’587 patent challenged in the Petition. IV. ORDER In consideration of the foregoing, it is hereby: ORDERED that the Petition is denied as to all challenged claims of the ’587 patent, and no trial is instituted.” slip op. at 17
- Adverse judgmentAdverse judgmentOther
“We agree with Patent Owner. “A statutory disclaimer under 35 U.S.C. § 253 has the effect of canceling the claims from the patent and the patent is viewed as though the disclaimed claims had never existed in the patent.” Guinn v. Kopf, 96 F.3d 1419, 1422 (Fed. Cir. 1996) (citing Altoona Publix Theatres, Inc. v. Am. Tri–Ergon Corp., 294 U.S. 477 (1935)). An inter partes review cannot be instituted on claims that have been disclaimed and no longer exist. See 37 C.F.R. § 42.107(e) (“No inter partes review will be instituted based on disclaimed claims.”). This conclusion is consistent with other panel decisions addressing this issue. See, e.g., Intuitive Surgical, Inc. v. Ethicon LLC, Case IPR2018-00935, Paper 9, 9–10 (PTAB Dec. 7, 2018); Vestas-Am. Wind Tech. Inc. v. Gen. Elec. Co., Case IPR2018-01015, Paper 9, 12–14 (PTAB Nov. 14, 2018). Accordingly, we treat claim 3 as having never been part of the ’587 patent, and do not institute inter partes review on this claim. As discussed above, we regard claim 4 as the only challenged claim. See Sections I.A and I.E.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation not foundDecided for patent owner
“Accordingly, a plain reading of the reference does not support a finding that Bender teaches or suggests that the FEC scheme is used to encode the SNR itself. Therefore, we are not persuaded that Bender’s FEC description would have provided reason to look to Piret’s encoding techniques for encoding Bender’s “quality” information. That is, although we agree with the Petitioner that Piret teaches and suggests a method of encoding less significant bits differently from the more significant bits of each data word, wherein the most significant bit of the plurality of bits is encoded to be less susceptible to errors (Ex. 1005, 1:20–33), that alone is insufficient to support a conclusion of obviousness of providing an encoder that encodes Bender’s SNR “quality” information, as required by claim 4. That Piret discloses encoding transmitted information does not address the requirements set forth in KSR to provide articulated reasoning with rational underpinning to support the legal conclusion of obviousness. That is, the Petitioner’s obviousness position does not explain why a person of ordinary skill in the art would have encoded the SNR value in Bender, which may not even be transmitted, using Piret’s encoding method. Indeed, Petitioner does not direct us to persuasive evidence that encoding the SNR value would have been expected to provide any advantage, outside the teachings of the ’587 patent. Here, for these reasons discussed above, we conclude that Petitioner has not provided sufficient evidence from prior art references or Dr. Singer’s declaration testimony to support its contention that one of ordinary skill in the art would have used Piret’s techniques to encode Bender’s SNR values in the manner required by the claims—such that the most significant bit of the plurality of bits is encoded to be less susceptible to errors. Therefore, Petitioner has not demonstrated articulated reasoning with rational underpinning to support the legal conclusion of obviousness. See PAR Pharm., Inc. v. TWI Pharm., Inc., 773 F.3d 1186, 1193 (Fed. Cir. 2014). Instead, we conclude that Petitioner used improper hindsight to reconstruct the claimed subject matter by using the claims as a guide to combine the prior art references. Grain Processing Corp. v. Am. Maize-Prods. Co., 840 F.2d 902, 907 (Fed. Cir. 1988) (“Care must be taken to avoid hindsight reconstruction by using ‘the patent in suit as a guide through the maze of” slip op. at 15
- 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.” Id. In that regard, Petitioner’s Declarant, Dr. Singer, testifies that a person of ordinary skill in the art at the time of the ʼ587 Patent’s invention would have been a person having a Bachelor’s degree in electrical engineering or the equivalent plus three years of experience working with wireless communication systems or a Master’s degree in electrical engineering with an emphasis on communication systems or the equivalent plus one year of experience working with digital communication systems or in network engineering. Pet. 6; Ex. 1003 ¶ 39. At this juncture, Patent Owner does not dispute Dr. Singer’s assessment on the level of ordinary skill in the art. See generally Prelim. Resp. Based on the current record, we apply Dr. Singer’s assessment for purposes of this Decision. We also note that the prior art of record currently in the instant proceeding is consistent with this level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (holding that absent evidence to the contrary, “the prior art itself reflects an appropriate level” of ordinary skill in the art).” slip op. at 8
§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,206,587 - Comcast Cable Communications, LLC v. Rovi Guides, Inc.All claims unpatentablePTAB · Nov 6, 2018 · IPR2017-01150 · APJ Karl D Easthom · IPR · Final written decision
Claims 5–10, 15, 17, 18, 29, 31, 32, 34–38, and 41–48 are unpatentable as obvious over Young ’801, Young ’121, Strubbe, and Moro, Reiter, or Remillard.
RulingsFinal written decision- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“III. CONCLUSION For the foregoing reasons, Petitioner has shown, by a preponderance of the evidence, that the subject matter of claims 5–10, 15, 17, 18, 29, 31, 32, 34–38, and 41–48 would have been obvious over the combination of Young ’801, Young ’121, Strubbe, and either Moro (48Pet.), Reiter (49Pet.), or Remillard (50Pet.).” slip op. at 126
- ExcludeMotion to exclude, deniedDenied
“12. Motion to Exclude Patent Owner moves to exclude paragraphs 8, 24, 27–30, 32 and 38 of” slip op. at 123
Patent outcomesUS 6,418,556 unpatentable§ 103 obviousnesscites PhillipsPatents in suitUS 6,418,556 - Comcast Cable Communications, LLC v. Rovi Guides, Inc.All claims unpatentablePTAB · Nov 6, 2018 · IPR2017-01148 · APJ Karl D Easthom · IPR · Final written decision
Claims 5–10, 15, 17, 18, 29, 31, 32, 34–38, and 41–48 are unpatentable as obvious over the stated combinations in each of the three trials.
RulingsFinal written decision- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“of the evidence, that the subject matter of claims 5–10, 15, 17, 18, 29, 31, 32, 34–38, and 41–48 would have been obvious over the combination of Young ’801, Young ’121, Strubbe, and either Moro (48Pet.), Reiter (49Pet.), or Remillard (50Pet.). IV. ORDER ORDERED that 5–10, 15, 17, 18, 29, 31, 32, 34–38, and 41–48 of U.S. Patent No. 6,418,556 B1 are unpatentable as a result of each trial as a separate matter, IPR2017-01148, IPR2017-01149, and IPR2017-01150;” slip op. at 126
- ExcludeMotion to exclude, deniedDenied
“observations from that deposition or seek authorization to file a sur-reply. In view of these circumstances, we deny Patent Owner’s Motion to Exclude.” slip op. at 126
Patent outcomesUS 6,418,556 unpatentable§ 103 obviousnesscites PhillipsPatents in suitUS 6,418,556 - Comcast Cable Communications, LLC v. Rovi Guides, Inc.All claims unpatentablePTAB · Nov 6, 2018 · IPR2017-01151 · APJ Karl D Easthom · IPR · Final written decision
Claims 23 and 25–27 are unpatentable as obvious over Young ’801, Young ’121, Strubbe, and any one of Moro, Reiter, or Remillard.
RulingsFinal written decision- ExcludeMotion to exclude, deniedDenied
“would not have interpreted Young ’801’s system as restricted to a single page limited to time slots ranging from 11:00 am to 12:30 pm as depicted in Figure 6 of Young ’801. See Ex. 1720 ¶ 24 (describing Dr. Bovik’s restricted view of Young ’801 as unreasonable). This restricted reading of Young ’801 unreasonably constrains the use of the guide to 1.5 hours, something the Petitions do not do, contrary to Patent Owner’s arguments that the Reply shifts to new theories. See Rep. Opp. Mot. Exc. 2–5. To elaborate and address Patent Owner’s arguments and Dr. Bovik’s testimony, Mr. Wechselberger responds with a citation documenting well-known cursor navigation aspects of the same concept involved in spreadsheets (Ex. 1722) and elaborates about minimal program guide layout or format changes that go hand-in-hand with the Petitions’ assertions of guide size reduction. See Ex. 1720 ¶ 24; Opp. Mot. Exc. 9–11 (discussing Ex. 1720 ¶¶ 36–37, 129– 131, 136–137, 158), 11 (noting Dr. Bovik stated in his deposition “a user would have been ‘confined to the visible screen’”) (citing Ex. 1721, 56:16– 23, 108:25–109:8, 116:17–117:2; Ex. 2706 ¶¶ 51–52). In summary, the Petition cites to portions of Young ’801 that describe the page mode and generally advance the theory of moving a cursor across, upward, and to the right to obtain consecutively displayed and successive portions of schedule information, citing portions that describe new pages and cursor jumps. Petitioner did not create a new theory about how the page guide operates but responded to Patent Owner’s arguments. Patent Owner chose not to avail itself of the opportunity to depose Dr. Wechselberger about his second declaration and thereafter file observations from that deposition or seek authorization to file a sur-reply. In view of these circumstances, we deny Patent Owner’s Motion to Exclude.” slip op. at 92
- Skill levelSkill level petitioner adoptedDecided for petitioner
“materially similar description of a person of ordinary skill in the art. See PO Resp. 14–15 (citing Ex. 2706 ¶¶ 1–19). During the Oral Hearing, Patent Owner indicated any differences between Petitioner’s and Patent Owner’s descriptions do not create a dispositive issue. See Tr. 66:11–18. On this record, Petitioner’s description comports with the level of ordinary skill implied by the prior art references discussed further below. Accordingly, we adopt it.” slip op. at 38
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“8. Young ’801, Young ’121, Strubbe, and Moro Petitioner persuasively shows that claims 23 and 25–27 the” slip op. at 47
Patent outcomesUS 6,418,556 unpatentable§ 103 obviousnessPatents in suitUS 6,418,556 - Comcast Cable Communications, LLC v. Rovi Guides, Inc.Some claims unpatentablePTAB · Sep 10, 2018 · IPR2017-00934 · APJ Stacy B Margolies · IPR · Final written decision
Claims 1, 4–11, and 14–24 are unpatentable as obvious; claims 2, 3, 12, and 13 were not shown unpatentable.
RulingsFinal written decision- Skill levelSkill level board ownDecided for petitioner
“B. Level of Ordinary Skill in the Art In determining whether an invention would have been obvious at the” slip op. at 8
- Expert testimonyPetitioner expert creditedDecided for petitioner
“shows the relation between the content being display and the current time, Petitioner shows that a person of ordinary skill in the art would have been motivated to incorporate Vallone’s teachings to improve the interface by making it visually intuitive and interactive. Ex. 1011 ¶¶ 158, 159, 171, 177, 178. Dr. Rhyne’s testimony is credible and persuasively supported by the teachings of the underlying references. See Ex. 1011 ¶¶ 158, 159, 171, 177, 178; Ex. 1002 ¶¶ 6, 7, 88, 142; Ex. 1003, Fig. 26, 1:44–49, 1:53–57, 18:32– 44, 19:1–3, 20:19–22. For example, as stated above, Vallone expressly discloses applying its interactive trick play bar more broadly to any device in which physical position in the material is readily ascertainable, such as a VCR. Ex. 1003, 20:19–22. In addition, Vallone describes the known problem of multimedia devices lacking interactivity and intuitive devices. Ex. 1003, 1:11–49. One of ordinary skill in the art would have been aware of this problem and motivated to improve Wood’s digital VCR accordingly. Ex. 1011 ¶¶ 158, 159, 171, 177, 178. In addition, as Dr. Rhyne explains, an ordinarily skilled artisan would have been motivated to combine the teachings of the references to provide a single consistent interface for the” slip op. at 22
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“shows the relation between the content being display and the current time, Petitioner shows that a person of ordinary skill in the art would have been motivated to incorporate Vallone’s teachings to improve the interface by making it visually intuitive and interactive. Ex. 1011 ¶¶ 158, 159, 171, 177, 178. Dr. Rhyne’s testimony is credible and persuasively supported by the teachings of the underlying references. See Ex. 1011 ¶¶ 158, 159, 171, 177, 178; Ex. 1002 ¶¶ 6, 7, 88, 142; Ex. 1003, Fig. 26, 1:44–49, 1:53–57, 18:32– 44, 19:1–3, 20:19–22. For example, as stated above, Vallone expressly discloses applying its interactive trick play bar more broadly to any device in which physical position in the material is readily ascertainable, such as a VCR. Ex. 1003, 20:19–22. In addition, Vallone describes the known problem of multimedia devices lacking interactivity and intuitive devices. Ex. 1003, 1:11–49. One of ordinary skill in the art would have been aware of this problem and motivated to improve Wood’s digital VCR accordingly. Ex. 1011 ¶¶ 158, 159, 171, 177, 178. In addition, as Dr. Rhyne explains, an ordinarily skilled artisan would have been motivated to combine the teachings of the references to provide a single consistent interface for the” slip op. at 22
Patent outcomesUS 8,768,147 mixed§ 103 obviousnesscites GrahamPatents in suitUS 8,768,147 - Tricklestar LLC v. Embertec Pty Ltd.All claims unpatentablePTAB · Dec 20, 2017 · IPR2016-01336 · APJ Stacy B Margolies · IPR · Final written decision
Claims 1–4, 7, and 9 are unpatentable as anticipated by EP ’379; claims 5 and 6 are unpatentable as obvious over EP ’379 and EP ’752.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“We determine that the level of ordinary skill proposed by Petitioner and Petitioner’s declarant is consistent with the challenged patent and the asserted prior art, and we therefore adopt that definition of the level of ordinary skill in the art for the purposes of the analysis below. See Ex. 1001, 1:14–15 (“The invention relates to aspects of the monitoring of electrical power supply to electrical equipment.”); Ex. 1002 ¶ 1 (“The present invention relates to a method and system to provide power saving for electronic devices while such devices are in the standby mode and are not in use, particularly for a setting accommodating multiple electronic devices especially in the end-user sector.”); Ex. 1003 ¶ 1 (“The present invention relates to an automatic means switch device used to disconnect a load from” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We determine that we do not need to expressly construe “input” (claim 1), “electrical input” (claim 9), “sensor” (claims 1 and 9), and “alert device” (claim 5) to determine whether Petitioner has shown by a preponderance of the evidence that claims 1–7 and 9 are unpatentable.” slip op. at 11
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference is prior artDecided for petitioner
“EP ’379 was published April 22, 2009. Ex. 1002, [43]. Because EP ’379 was published before the earliest possible invention date of record in this proceeding, Petitioner has shown by a preponderance of the evidence that EP ’379 is prior art to claims 1–4, 7, and 9 of the ’099 patent at least under 35 U.S.C. § 102(a).” slip op. at 16
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Pet. 16. As illustrated above, Petitioner adds red ovals around what it contends, and with which we agree, correspond to the claimed sensor and microprocessor: infrared receiver unit 10 and microprocessor 12. Id. EP ’379 discloses that infrared receiver unit 10 is coupled to microprocessor 12 and that the infrared receiver unit monitors wireless output signals from a remote control. Ex. 1002, Fig. 3, ¶¶ 24, 26. Specifically, EP ’379 discloses that “the signals of the remote controls of electronic devices connected to the subject controller [are] sensed, identified, and interpreted by the controller.” Id. ¶ 23; see also id. ¶ 26 (stating that “the remote control signals controlling the devices connected to the controller can also be sensed by the controller”). According to EP ’379, “[t]he controller unit identifies as to which electronic device’s remote control the user has depressed by means of the signal receiver (10) on itself.” Id. ¶ 24. EP ’379 also discloses that the microprocessor terminates power supplied to the external electrical device based upon the absence of detection of signals from the remote control. Id. ¶ 26. EP ’379 states the following: The controller can be set to a predetermined time period in order to save power, and if no signal is received within this time period from a remote control of any device connected to it, the controller can turn OFF such devices in turn or at the same time according to a predetermined power saving rule. Id. EP ’379 adds an example of a user setting the automatic turn-off period to three hours. Id. Under this example, according to EP ’379, “if the user does not depress any key on any remote control of any electronic device connected to the controller, or if no signal is sensed by the controller within three hours, the controller may power off the electronic devices connected to itself in sequence according to an automatic turning-off rule.” Id. In sum, Petitioner shows by a preponderance of the evidence that claim 1 is unpatentable as anticipated by EP ’379.” slip op. at 20
Patent outcomesUS 9,106,099 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,106,099 - Securus Technologies, Inc. v. Global Tel*link CorporationNo claims unpatentablePTAB · Nov 16, 2017 · IPR2016-01123 · APJ Georgianna W Braden · IPR · Final written decision
Claims 1–11 were not shown unpatentable under either § 103 ground because Petitioner failed to explain adequately why or how a skilled artisan would combine the references.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Petitioner proposes constructions for the claim terms “continuous noise detection algorithm” and “power distribution filter algorithm.” Pet. 24–28. Patent Owner disputes Petitioner’s proposed constructions for these terms. Prelim. Resp. 8–11. After analyzing the claims and supporting specification of the ’726 patent, we determine that we need not provide express constructions for the disputed claim terms in order to reach our decision.” slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not dispute Dr. Williams’ testimony. See generally Prelim. Resp. Patent Owner’s Declarant, Dr. Leonard J. Forys (“Dr. Forys”), however, proffers his own assessment regarding a person of ordinary skill in the art relevant to the ’726 patent. According to Dr. Forys, one of ordinary skill in the art would have had “a B.S. degree in Electrical Engineering, Computer Science, or an equivalent field as well as at least 3–5 years of academic or industry experience in communications systems, or comparable industry experience.” Ex. 2002 ¶ 29. Dr. Forys does not address Dr. Williams’ testimony in this regard or otherwise indicate whether his analysis would change if Dr. Williams’ proffered level of ordinary were adopted. Id. We have reviewed the ’726 patent, the types of problems and solutions described in the ’726 patent and cited prior art, and the testimony of Dr. Williams and Dr. Forys (who mostly agree as to the level of skill of an ordinarily skill artisan). Based on our review, we adopt and apply Dr. Williams’s definition of a person of ordinary skill in the art at the time of the claimed invention for purposes of this Decision. In addition, our analysis would not change if Dr. Forys’ proffered level of ordinary skill were adopted.” slip op. at 14
- Expert testimonyPetitioner expert discountedDecided for patent owner
“time of the ’726 patent would likely understand the relationship between power and energy. We also agree that there is a relationship between power and energy, and that it is possible to derive information about one from the other. See Ex. 1012, 18:14–25:8; Ex. 2001, 25:10–27:14; Ex. 2005, 238. Based on the evidence of record, we do not agree, however, that power and energy “are essentially equivalent and can be used interchangeably” as asserted in the Petition. See id.; see Pet. 36 (citing Ex. 1009 ¶¶ 174–177). Nor do we agree one of ordinary skill in the art would have understood that the Gupta energy threshold is the same as the power level threshold disclosed in Li. See Ex. 1012, 18:14–25; Ex. 2001, 25:10–27:14; Ex. 2005, 238. Petitioner’s reliance on Dr. Williams’s testimony regarding Gupta’s disclosure that “[a] minimum energy threshold may be programmed to [the cadence tone’s] required power level for a valid signal on a line” is equally unpersuasive. Ex. 1009 ¶ 181 (citing Ex. 1004, 6:41–44). We are unpersuaded because neither Petitioner nor Dr. Williams explains sufficiently how Gupta’s minimum energy threshold relates to a required power level or how it relates to Li’s power estimator and the purpose of Li’s power estimators. Given the lack of equivalence between power and energy, we find Petitioner fails to present sufficient evidence explaining why a person of ordinary skill in the art would have switched from detecting a power threshold, such as that described in Li and required by the challenged claims, to detecting an energy threshold as disclosed in McNitt and Gupta. Petitioner must articulate a reason why a person of ordinary skill in the art would combine the prior art references. Personal Web Techs. v. Apple, 848 F.3d 987, 991–92 (Fed. Cir. 2017); In re NuVasive, 842 F.3d 1376, 1382 (Fed. Cir. 2016); Metalcraft of Mayville, Inc. v. The Toro Company, 848 F.3d 1358, 1366 (Fed. Cir. 2017) (“[I]t is insufficient to simply conclude the [prior art] combination would have been obvious without identifying any reason why a person of skill in the art would have made the combination.”); 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”). Conclusory statements alone, even those provided by a declarant, are inadequate to demonstrate a rationale for why a person of ordinary skill in the art would combine the teachings from prior art references. NuVasive, 842 F.3d at 1383. Instead, Petitioner’s arguments must be supported by a “reasoned explanation.” Id. (citing In re Lee, 277 F.3d 1338, 1342, 1345 (Fed. Cir. 2002)). We understand that a person of ordinary skill is a person of ordinary creativity, not an automaton, but “[w]ithout any explanation as to how or why the references would be combined to arrive at the claimed invention, we are left with only hindsight bias that KSR warns against.” Metalcraft, 848 F.3d at 1367 (“‘[T]he obviousness analysis cannot be confined by a formalistic conception of the words teaching, suggestion, and motivation,’ we also recognize that we cannot allow hindsight bias to be the thread that stitches together prior art patches into something that is the claimed invention” (quoting KSR, 550 U.S. at 420–21)).” slip op. at 30
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundReasonable expectation not foundNot shown unpatentable
“Petitioner must articulate a reason why a person of ordinary skill in the art would combine the prior art references. Personal Web Techs. v. Apple, 848 F.3d 987, 991–92 (Fed. Cir. 2017); In re NuVasive, 842 F.3d 1376, 1382 (Fed. Cir. 2016); Metalcraft of Mayville, Inc. v. The Toro Company, 848 F.3d 1358, 1366 (Fed. Cir. 2017) (“[I]t is insufficient to simply conclude the [prior art] combination would have been obvious without identifying any reason why a person of skill in the art would have made the combination.”); 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”). Conclusory statements alone, even those provided by a declarant, are inadequate to demonstrate a rationale for why a person of ordinary skill in the art would combine the teachings from prior art references. NuVasive, 842 F.3d at 1383. Instead, Petitioner’s arguments must be supported by a “reasoned explanation.” Id. (citing In re Lee, 277 F.3d 1338, 1342, 1345 (Fed. Cir. 2002)). We understand that a person of ordinary skill is a person of ordinary creativity, not an automaton, but “[w]ithout any explanation as to how or why the references would be combined to arrive at the claimed invention, we are left with only hindsight bias that KSR warns against.” Metalcraft, 848 F.3d at 1367 (“‘[T]he obviousness analysis cannot be confined by a formalistic conception of the words teaching, suggestion, and motivation,’ we also recognize that we cannot allow hindsight bias to be the thread that stitches together prior art patches into something that is the claimed invention” (quoting KSR, 550 U.S. at 420–21)). We agree with Petitioner that the cited references do not need to be physically combinable to render claim 1 obvious. In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012) (“The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference.”); see also In re Etter, 756 F.2d 852, 859 (Fed. Cir. 1985) (en banc). Obviousness, however, “may not be established using hindsight or in view of the teachings or suggestions of the inventor.” Para-Ordnance Mfg. v. SGS Importers Int’l, 73 F.3d 1085, 1087 (Fed. Cir. 1995) (citing W.L. Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1551, 1553 (Fed. Cir. 1983)). Additionally, it is impermissible for Petitioner to “use the claimed invention as an instruction manual or ‘template’ to piece together the teachings of the prior art so that the claimed invention is rendered obvious.” In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) (citing In re Gorman, 933 F.2d 982, 987 (Fed. Cir. 1991)). Accordingly, Petitioner must set forth clearly in the Petition which references it is relying on for each specific limitation and how those combined teachings would render the challenged claims obvious. See 35 U.S.C. § 312(a)(3).” slip op. at 31
Patent outcomesUS 8,630,726 not shown unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,630,726
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.