- Sandisk Corp. v. Netlist, Inc.All claims unpatentablePTAB · Sep 28, 2016 · IPR2015-01021 · APJ Bryan F Moore · IPR · Final written decision
Claims 1, 16, 17, 24, 30, and 31 are unpatentable as obvious over Takeda, JEDEC, and Connolly.
RulingsFinal written decision- Prior constructionPrior construction adoptedDecided for patent owner
“1. “Rank” In the Decision to Institute, we construed the term “rank” as “a block or area that is created using some or all of the memory chips on a memory module.” Dec. to Inst. 8–9. In their papers, neither party challenged our constructions of these claim terms. Thus, for the term “rank,” we see no reason to alter the construction of this claim term as set forth in the Decision to Institute as recited above, and we incorporate our previous analysis for purposes of this decision.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“2. All Other Claim Terms We determine that no explicit construction is necessary for any other terms in the challenged claims. B.” slip op. at 8
- Skill levelSkill level board ownOther
“would understand basic memory and data communication concepts, with a bachelor’s degree in any of electrical engineering, computer engineering, computer science, or related field. Course work for one of ordinary skill in the art would have included a course on computer organization, principles of digital design, or computer architecture. One of ordinary skill in the art would also have around one year of experience related to computer memory systems. For example, such experience may include experience in DRAM memory technology and related industry standards such as JEDEC standards for DRAM memories and memory modules. Ex. 1002 ¶ 53. Patent Owner’s Declarant, Carl Sechen, Ph.D. (“Dr. Sechen”), testifies that one of ordinary skill in the art at the time of the ’536 Patent would have had an undergraduate degree in electrical engineering or computer engineering, at least two years of professional experience in the design of memory systems, familiarity with the latest JEDEC standard specifications for memory devices and modules, and familiarity with the latest DRAM (dynamic random access memory) memory devices widely available in the market. Ex. 2001 ¶ 14. Dr. Sechen further testifies that a person of ordinary skill in the art would have design proficiency in memory modules comprising DDR memory technology, such as memory modules with JEDEC standard DDR SDRAM (synchronous DRAM) devices. Id. ¶ 15. Based on our review of the ’536 Patent and the types of problems and solutions described in the ’536 Patent and cited prior art, we conclude a person of ordinary skill in the art at the time of the ’536 Patent would have a Bachelor’s degree in electrical engineering, computer engineering, computer science, or related field, and at least one year of work experience, including familiarity with computer memory systems and related industry standards such as JEDEC standards for DRAM memories and memory modules. We further note that the applied prior art reflects the appropriate level of skill at the time of the claimed invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). D.” slip op. at 10
- Expert testimonyPetitioner expert creditedDecided for petitioner
“To testify as an expert under Federal Rule of Evidence 702, a person need not be a person of ordinary skill in the art, but rather must be “qualified in the pertinent art.” Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1363–64 (Fed. Cir. 2008); see SEB S.A. v. Montgomery Ward & Co., 594 F.3d 1360, 1372–73 (Fed. Cir. 2010) (upholding a district court’s ruling to allow an expert to provide testimony at trial because the expert “had sufficient relevant technical expertise” and the expert’s “knowledge, skill, experience, training [and] education . . . [wa]s likely to assist the trier of fact to understand the evidence”); Mytee Prods., Inc. v. Harris Research, Inc., 439 F. App’x 882, 886–87 (Fed. Cir. 2011) (non-precedential) (upholding admission of the testimony of an expert who “had experience relevant to the field of the invention,” despite admission that he was not a person of ordinary skill in the art). As noted above, Dr. Jagannathan has designed and implemented hardware virtual memory caches, and researched theoretical performance measures of various cache coherency protocols, and has experience in the design of memory systems. We find that Dr. Jagannathan is qualified sufficiently to testify about memory systems and memory modules. E.” slip op. at 12
Patent outcomesUS 8,081,536 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,081,536 - Sandisk Corp. v. Netlist, Inc.Some claims unpatentablePTAB · Sep 28, 2016 · IPR2015-01020 · APJ Peter P Chen · IPR · Final written decision
Claims 17, 22, 24, 26, and 33 are unpatentable as obvious over Takeda, JEDEC, and Connolly; claims 15, 16, 31, and 32 were not shown unpatentable over Takeda and JEDEC.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“We are unpersuaded by Patent Owner’s position. First, the claim language does not recite any physical or structural connection, rather, only “electrically coupling.” Pet. Reply 3, 8–9. In addition, the specification of the ’150 patent does not define explicitly the term “selectively electrically coupling.” Therefore, as in IPR2014-00882 and IPR2014-01011, we refer to its ordinary and customary meaning, as would be understood by one of ordinary skill in the art in the context of the entire disclosure. Translogic Tech., 504 F.3d at 1257. A technical dictionary, the IEEE Dictionary,4 defines “electrical coupling” as “[e]lectrical charges in conductors of a disturbed circuit formed by electrical induction.” Ex. 3001. The IEEE Dictionary explains that “[s]ince the ratio of a conductor’s electrostatic charge to the potential difference between conductors (required to maintain that charge) is the general definition of capacitance, electrical coupling is also called capacitive coupling.” Id. The IEEE Dictionary defines” slip op. at 9
- Skill levelSkill level board ownOther
“Based on our review of the ’150 patent and the types of problems and solutions described in the ’150 patent and cited prior art, we conclude a person of ordinary skill in the art at the time of the ’150 patent would have a Bachelor’s degree in electrical engineering, computer engineering, computer science, or related field, and at least one year of work experience, including familiarity with computer memory systems and related industry standards such as JEDEC standards for DRAM memories and memory modules. We further note that the applied prior art reflects the appropriate level of skill at the time of the claimed invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). D. Declarant Testimony” slip op. at 13
- Expert testimonyPetitioner expert creditedDecided for petitioner
“To testify as an expert under Federal Rule of Evidence 702, a person need not be a person of ordinary skill in the art, but rather must be “qualified in the pertinent art.” Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1363–64 (Fed. Cir. 2008); see SEB S.A. v. Montgomery Ward & Co., 594 F.3d 1360, 1372–73 (Fed. Cir. 2010) (upholding a district court’s ruling to allow an expert to provide testimony at trial because the expert “had sufficient relevant technical expertise” and the expert’s “knowledge, skill, experience, training [and] education . . . [wa]s likely to assist the trier of fact to understand the evidence”); Mytee Prods., Inc. v. Harris Research, Inc., 439 F. App’x 882, 886–87 (Fed. Cir. 2011) (non-precedential) (upholding admission of the testimony of an expert who “had experience relevant to the field of the invention,” despite admission that he was not a person of ordinary skill in the art). As noted above, Dr. Jagannathan has designed and implemented hardware virtual memory caches, and researched theoretical performance measures of various cache coherency protocols, and has experience in the design of memory systems. We find that, although Dr. Jagannathan may be less experienced than Dr. Sechen in the area of memory module design, he is nonetheless qualified sufficiently to testify about memory systems and memory modules. E. Asserted Obviousness of Claims 15, 16, 31, and 32 in view of Takeda” slip op. at 14
- ExcludeMotion to exclude, deniedDenied
“We have reviewed the parties’ contentions on this issue, and exercise our discretion to determine that Petitioner’s Reply and the Jagannathan Supplemental Declaration will not be excluded. We find that, although they may be “inartfully” drafted, the first Jagannathan declaration and Petition sufficiently outlined Petitioner’s position on the function of the chip select signal, namely, that the chip select signal was not itself the logic signal enabling operation of bit-switches. We further find that Petitioner’s Reply and the Supplemental Jagannathan Declaration did not present an entirely new rationale of unpatentability based on Takeda, JEDEC, and Connolly. Cf. Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369–70 (Fed. Cir. 2016) (affirming Board’s exclusion of reply brief and declaration that changed unpatentability theory to “an entirely new rationale”). Moreover, there is no dispute that Patent Owner was aware of Petitioner’s position by no later than the Jagannathan deposition, which preceded Patent Owner’s Response by ten days. Patent Owner could have addressed Petitioner’s chip select signal contention, procedurally or substantively, in its Response, but chose to raise the issue only after Petitioner filed its Reply and Supplemental Jagannathan Declaration. Accordingly, Patent Owner had notice of Petitioner’s position and an opportunity to refute that position in its Response.” slip op. at 24
Patent outcomesUS 7,881,150 mixedClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,881,150 - PTAB · Aug 30, 2016 · IPR2014-01448 · APJ Debra K Stephens · IPR · Rehearing
The Board denied rehearing of its final written decision, leaving claims 1 and 7 unpatentable over He and Korodi under § 103.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“decision should be modified, and “[t]he 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, or a reply.” 37 C.F.R. § 42.71(d).” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73, concluding Petitioner had shown by a preponderance of the evidence that the challenged claims are unpatentable. Specifically, we determined Petitioner had established by a preponderance of the evidence claims 1 and 7 are unpatentable under 35 U.S.C. § 103(a) over He and Korodi (Final Dec. 11–25). In light of our determination that Petitioner had established by a preponderance of the evidence that claims 1 and 7 of the ’279 Patent are unpatentable under 35 U.S.C. § 103(a) as obvious over He and Korodi, we took no position on whether the same claims are also obvious over the combination of the teachings and suggestions of Gustafsson and He (id. at 25).” slip op. at 3
§ 103 obviousnessPatents in suitUS 7,671,279 - Mastercard International Inc. v. Leon StamblerAll claims unpatentablePTAB · Jul 6, 2016 · CBM2015-00044 · APJ Peter P Chen · CBM · Final written decision
Claims 51 and 53 are unpatentable as anticipated by Davies; claims 51, 53, 55, and 56 are unpatentable as obvious over Davies and Meyer; claim 55 over Davies and Nechvatal; and claim 56 over Davies, …
RulingsFinal written decision- Skill levelSkill level board ownOther
“F. Level of Ordinary Skill in the Art Petitioner’s proposal for the level of ordinary skill in the art is “at least a bachelors degree in computer programming and two years’ experience as a programmer or developer in the field of computer science, with a working understanding of cryptographic operations for transforming original input into a coded output using a known algorithm.” Pet. 14–15. Patent Owner has proposed similarly, that one of ordinary skill in the art would possess “(1) undergraduate education in mathematics, physics, computer science, electrical engineering or similar technical subject; and (2) either postgraduate education in networking, cryptography, or other discipline encompassing information theory, or equivalent experience with applications involving communication of financial, military, medical or similarly sensitive data over secure and non-secure networks.” Prelim. Resp. 30–31. We determine that an express definition of the level of ordinary skill is not required. The level of ordinary skill in the art can be reflected in the cited prior art references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“[T]he absence of specific findings on the level of skill in the art does not give rise to reversible error ‘where the prior art itself reflects an appropriate level and a need for testimony is not shown.’”) (internal quotations omitted); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). Therefore, we find the level of ordinary skill in the art to be reflected in the cited references.” slip op. at 16
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for petitioner
“1. “variable authentication number (VAN)” In the Decision to Institute, we construed the term “variable authentication number” or “VAN” as “a variable number resulting from a coding operation that can be used in verifying the identity of a party or the integrity of information or both.” Dec. to Inst. 8. See also Case IPR2014-00694, slip op. at 8–9 (PTAB Oct. 31, 2014) (Paper 10). Patent Owner “does not challenge this construction.” PO Resp. 16–17. Patent Owner asserts additional construction of the term is necessary for CBM standing issues, but does not elaborate further. PO Resp. 1. Patent Owner also argues we incorrectly applied the broadest reasonable interpretation to the term in the Decision to Institute. PO Resp. 9. The Decision to Institute noted that our review of the claims of the expired ’302 patent is similar to that of a district court’s review, In re Rambus, Inc., 694 F.3d 42, 46 (Fed. Cir. 2012); Phillips v. AWH Corp., 415 F.3d 1303, 1327 (Fed. Cir. 2005), but inadvertently mentioned the broadest reasonable interpretation standard in construing this term. Dec. to Inst. 7–8. We reaffirm our agreement with Patent Owner that the Phillips framework is applied to the expired ’302 patent. Our construction of “VAN” is the same under either claim construction standard. We reject Patent Owner’s undeveloped argument regarding standing, and maintain the construction of VAN from the Decision to Institute, as the ordinary and customary meaning of the term: “a variable number resulting from a coding operation that can be used in verifying the identity of a party or the integrity of information or both.”” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“2. Sequence of method steps: receiving, generating In the Decision to Institute, we agreed with Patent Owner and construed the sequence of method steps in independent claim 51 to mean that at least a portion of the receiving step must precede the generating step. Dec. to Inst. 8. See also Case IPR2014-00694, slip op. at 11–14 (PTAB Oct. 31, 2014) (Paper 10). We maintain that construction as the ordinary and customary meaning of the sequence of the receiving and generating method steps.” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner
“intended use of an invention is generally not treated as limiting the scope of the claim. Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003). However, “a preamble limits the invention if it recites essential structure or steps, or if it is ‘necessary to give life, meaning, and vitality’ to the claim.” Catalina Mktg. Int'l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (citing Pitney Bowes Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999). “The effect preamble language should be given can be resolved only on review of the entirety of the patent to gain an understanding of what the inventors actually invented and intended to encompass by the claim.” Corning Glass Works v. Sumitomo Elec. U.S.A., Inc., 868 F.2d 1251, 1257 (Fed. Cir. 1989). When the limitations in the body of the claim rely upon or derive essential structure from the preamble elements, e.g., the preamble serves as an antecedent basis for limitations in the claim, then the preamble acts as a necessary component of the claimed invention and is limiting. See Eaton Corp. v. Rockwell Int’l Corp., 323 F.3d 1332, 1339 (Fed. Cir. 2003). In this case, the preamble of independent claim 51 recites “a credential being previously issued,” and the limitations of the claim include “determining whether the at least a portion of the received funds transfer information is authentic by using the VAN and the credential information.” Ex. 1001, 33:18–19, 33:29–31. Thus, the preamble’s recitation of “a credential” is an antecedent basis for the recited “the credential information” in the “determining” step, and we determine that the preamble limits the scope of the challenged independent claim 51 and dependent claims 53, 55, and 56.” slip op. at 11
Patent outcomesUS 5,793,302 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 5,793,302 - Corelogic, Inc. v. Boundary Solutions, Inc.All claims unpatentablePTAB · May 19, 2016 · IPR2015-00222 · APJ Lynne E Pettigrew · IPR · Final written decision
Claims 1–23 are unpatentable: claims 9, 10, and 12–22 as obvious over Harder and Du; claims 1–8, 11, and 23 as obvious over Harder, Du, and MacDonald.
RulingsFinal written decision- Skill levelSkill level board ownDecided for petitioner
“We determine that an express definition of the level of ordinary skill is not required. The level of ordinary skill in the art can be reflected in the cited prior art references. See Okajima, 261 F.3d at 1355 (“[T]he absence of specific findings on the level of skill in the art does not give rise to reversible error where the prior art itself reflects an appropriate level and a need for testimony is not shown.” (internal quotations omitted)); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). In this case, we find the level of ordinary skill in the art to be reflected in the cited references.” slip op. at 14
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“We remain unpersuaded by BSI’s arguments. As we explained in the Institution Decision, although the ’352 patent describes assembling a national parcel-level map database from data provided by various sponsoring agencies, the claims themselves do not require assembling the multi-jurisdictional database using any specific method or obtaining the information in the database from any particular sources. Dec. 7 (citing Ex. 1001, 1:41–48, 4:8–11). Moreover, BSI’s reliance on the prosecution history of the ’957 patent does not support its position, as the claims at issue there did not recite a “multi-jurisdictional database.” See Ex. 2006, 132–37, 141, 193–200). For these reasons, we maintain our construction of “multi- jurisdictional database” as “a collection of data relating to two or more jurisdictions.”” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“success”9 in combining Harder and Du because Du would not be used to maintain data for jurisdictions with a large number of parcels, and the visibility of parcels would be diminished in a map with so many parcels. PO Resp. 38. We do not find this argument to be persuasive because, as CoreLogic notes, Du discloses that cells can correspond to different types of jurisdictions and that any geographic areas can be searched and displayed. See Reply 14 (citing Ex. 1018, Fig. 3, 3:21–32, 4:38–40, 6:31–38, 9:5–6, 9:16–44). BSI also argues that a county identified as a cell in Du would include a huge amount of parcel data, and data for the entire cell would be transmitted to a client computer in the system described in Du, thereby defeating a purpose of Du’s system—the speedy display of maps. PO Resp. 38–39. CoreLogic, however, relies on Du for teaching an index of 9 We understand BSI’s use of the phrase “reasonable likelihood of success” to be an argument that there would be no “reasonable expectation of success” in the combination of references, rather than a reference to the reasonable likelihood standard for instituting an inter partes review. jurisdictional identifiers used to search a portion of a multi-jurisdictional database, not the transmission of parcel data, and has shown sufficiently that a person of ordinary skill in the art would have combined Du’s teaching of an index with Harder’s system for retrieving and transmitting parcel boundary polygon map data. See Reply 15. We have reviewed the parties’ arguments and evidence on this issue, and we agree with and adopt CoreLogic’s reasoning for modifying Harder’s single-county example in view of Du to retrieve a jurisdictional identifier from an index and use it to search a portion of a multi-jurisdictional database for a selected parcel. In sum, we find that the combination of Harder and Du teaches or suggests the limitations of claim 9 and that CoreLogic has provided articulated reasoning supported by rational underpinnings for combining the references in the manner asserted. Therefore, we conclude CoreLogic has shown by a preponderance of the evidence that claim 9 would have been obvious over Harder and Du.” slip op. at 22
- ExcludeMotion to exclude, deniedDenied
“G. CoreLogic’s Motion to Exclude Evidence CoreLogic moves to exclude the redirect testimony of BSI’s expert, Mr. William Huxhold, on the ground that it was provided in response to leading questions. Mot. Excl. 1 (citing Ex. 1034, 150:6–153:8). The redirect testimony relates to a portion of Mr. Huxhold’s cross-examination testimony. Id. at 1–2 (citing Ex. 1034, 72:5–22). Because we do not rely on the cited redirect testimony or the cited cross-examination testimony, CoreLogic’s motion is dismissed as moot.” slip op. at 40
Patent outcomesUS 8,065,352 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,065,352 - Sandisk Corporation v. Netlist, Inc.Rehearing deniedPTAB · Apr 27, 2016 · IPR2014-00970 · APJ Linda M Gaudette · IPR · Rehearing
Denied SanDisk’s rehearing request; the Board maintained its findings that claims 2, 5, and 6 were not shown obvious over Huang and claims 17–19 and 35 were not shown anticipated by Averbuj.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW The party requesting rehearing has the burden of showing the decision should be modified, and “[t]he 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, or a reply.” 37 C.F.R. § 42.71(d).” slip op. at 3
- BurdenNot shown unpatentable
“20–21 (“Averbuj discloses that in BIST mode, the multiplexer 46 shown in Fig. 6 selectively inputs signals BIST_ADDR/CTRL (i.e., address and control signals from the control module) to the address and control port of the corresponding memory device 12.” (emphasis added)). In other words, the Petition is devoid of any discussion of BIST_EN in connection with the limitations of claims 17–19 and 35. See Pet. 19–21. Likewise, the Reply fails to contain any discussion of how the claim limitations are met by Averbuj’s use of the BIST_EN signal. See Reply 17. 37 C.F.R. § 42.22(a)(2) requires each petition to include “[a] full statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence including material facts, and the governing law, rules, and precedent.” Our discussion in the Final Decision of the patentability challenge as to claims 17–19 and 35 based on anticipation by Averbuj addresses Petitioner’s arguments in the Petition and Reply, which are limited to a contention that Averbuj’s multiplexer 46 is required to meet the “configured to selectively input” and “selectively inputs” limitations recited in claims 17–19 and 35. See Final Dec. 44–46 (citing Pet. 19–21; Reply 17). In arguing that we should have considered Dr. Alpert’s testimony that Averbuj’s sequencer, by generating a BIST_EN signal, is “configured to selectively input”/“selectively inputs” address and control signals to the memory modules, Petitioner attempts to improperly incorporate arguments into its Petition and Reply by reference to Dr. Alpert’s declaration testimony. See 37 C.F.R. § 42.6(a)(3) (“Arguments must not be incorporated by reference from one document into another document.”). In any event, we find the declaration testimony relied on by Petitioner in support of this Request (see Req. Reh’g 13) supports our determination that Petitioner failed to show, by a preponderance of the evidence, that Averbuj anticipates claims 17–19 and 35. Dr. Alpert testified that if the “configuration [to selectively input to the address and control ports] is determined to require the structure that performs the selection itself, then the disclosed control module also includes multiplexer 46 of memory interface 41.” Ex. 1007 ¶ 78 (emphasis added); see also id. ¶ 81 (identifying multiplexer 46 as the “DRAM controller which performs the selective inputting” as recited in claim 18). Petitioner did not explain (see Pet. 19–21; Reply 17) how Averbuj describes multiplexer 46 as being part of sequencer 8 (the alleged control module). See Final Dec. 45–46 (explaining that Petitioner has not addressed Patent Owner’s argument that the device that selectively inputs address and control signals to memory modules 12 is multiplexer 46 of memory interface 41 (the alleged data handler), not sequencer 8 (the alleged control module)). In sum, for the above reasons, we are not persuaded of error in our determination that Petitioner did not meet its burden to establish unpatentability of claims 17–19 and 35 under 35 U.S.C. § 102(b) based on Averbuj.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“Huang and Tsern, Petitioner relied on the declaration testimony of its expert, Dr. Donald Alpert (Ex. 1007). See, e.g., id. at 44 (citing Ex. 1007 ¶ 222 in support of its challenge as to claim 2). In concluding Petitioner had not demonstrated a reasonable likelihood it would prevail in showing that claims 2, 5, and 6 would have been obvious over Huang in view of Tsern, we said the following: Dr. Alpert’s opinion that a person of ordinary skill in the art would have been motivated to combine Huang and Tsern . . . is either unsupported or relies on disclosure in the ’434 patent Detailed Description. See, e.g., Ex. 1007 ¶¶ 193, 199, and 206. . . . [T]here is no evidence on this record that the cited portions of the ’434 patent are a description of prior art. Moreover, Dr. Alpert’s statements lack sufficient articulated reasoning with rational underpinning as to why an ordinary artisan at the time of the invention would have had a reason to combine the prior art elements in the manner required by the challenged claims.” slip op. at 4
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence including material facts, and the governing law, rules, and precedent.” Our discussion in the Final Decision of the patentability challenge as to claims 17–19 and 35 based on anticipation by Averbuj addresses Petitioner’s arguments in the Petition and Reply, which are limited to a contention that Averbuj’s multiplexer 46 is required to meet the “configured to selectively input” and “selectively inputs” limitations recited in claims 17–19 and 35. See Final Dec. 44–46 (citing Pet. 19–21; Reply 17). In arguing that we should have considered Dr. Alpert’s testimony that Averbuj’s sequencer, by generating a BIST_EN signal, is “configured to selectively input”/“selectively inputs” address and control signals to the memory modules, Petitioner attempts to improperly incorporate arguments into its Petition and Reply by reference to Dr. Alpert’s declaration testimony. See 37 C.F.R. § 42.6(a)(3) (“Arguments must not be incorporated by reference from one document into another document.”). In any event, we find the declaration testimony relied on by Petitioner in support of this Request (see Req. Reh’g 13) supports our determination that Petitioner failed to show, by a preponderance of the evidence, that Averbuj anticipates claims 17–19 and 35. Dr. Alpert testified that if the “configuration [to selectively input to the address and control ports] is determined to require the structure that performs the selection itself, then the disclosed control module also includes multiplexer 46 of memory interface 41.” Ex. 1007 ¶ 78 (emphasis added); see also id. ¶ 81 (identifying multiplexer 46 as the “DRAM controller which performs the selective inputting” as recited in claim 18). Petitioner did not explain (see Pet. 19–21; Reply 17) how Averbuj describes multiplexer 46 as being part of sequencer 8 (the alleged control module). See Final Dec. 45–46 (explaining that Petitioner has not addressed Patent Owner’s argument that the device that selectively inputs address and control signals to memory modules 12 is multiplexer 46 of memory interface 41 (the alleged data handler), not sequencer 8 (the alleged control module)). In sum, for the above reasons, we are not persuaded of error in our determination that Petitioner did not meet its burden to establish unpatentability of claims 17–19 and 35 under 35 U.S.C. § 102(b) based on Averbuj.” slip op. at 11
§ 102 anticipation§ 103 obviousnessPatents in suitUS 8,001,434 - Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. et al. v. Black Hills Media, LLCAll claims unpatentablePTAB · Oct 21, 2015 · IPR2014-00735 · APJ David C Mckone · IPR · Final written decision
Claims 1, 4, 7, 10, 13, 14, and 16–21 are unpatentable as obvious over Degnbol; claim 15 is unpatentable as obvious over Degnbol and DeLorme.
RulingsFinal written decision- ExcludeMotion to exclude, deniedDenied
“testified regarding Degnbol’s “incognito” mode. Ex. 1017, 215:22–218:22. Petitioner moves to exclude this redirect testimony as beyond the scope of Mr. Zatkovich’s Declaration (Ex. 2017) and Petitioner’s cross examination. Paper 43 (Mot. to Exclude), 1–3. Patent Owner does not cite to or rely on this testimony. Accordingly, we deny Petitioner’s Motion to Exclude as moot.” slip op. at 36
- Skill levelSkill level petitioner adoptedDecided for petitioner
“between the claimed subject matter and the prior art are “such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” We resolve the question of obviousness on the basis of underlying factual determinations, including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of skill in the art;4 and (4) objective evidence of 3 At the oral hearing, Patent Owner admitted that it did not include in its Response any patentability argument distinguishing the prior art under its proposed construction of “user sending status.” Tr. 13:7–14:16. Instead, Patent Owner points to the testimony of Mr. Zatkovich, which Patent Owner admits is not cited in its Response. Id. (citing Ex. 2017 ¶¶ 81–89). Even if we were to adopt Patent Owner’s proposed construction of “user sending status,” Patent Owner has waived any patentability arguments based thereon, as they were not raised in the Response. See, e.g., Paper 27 (Scheduling Order), 2–3 (“The patent owner is cautioned that any arguments for patentability not raised in the response will be deemed waived.”). 4 Petitioner, citing Dr. Heppe’s testimony, contends that a person of ordinary skill in the art “would typically have at least a Bachelor of Science degree in electrical engineering, computer engineering, computer science, or equivalent thereof, and one to two years of experience in the field of computer communications, telecommunications, and/or communications networking.” Pet. 6 (citing Ex. 1005 ¶ 3). Patent Owner neither contends that this is incorrect nor proposes an alternative. On the full record, we adopt Petitioner’s statement of the level of skill in the art. nonobviousness, i.e., secondary considerations.5 See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).” slip op. at 20
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“To the extent that Patent Owner’s characterization of the Specification’s description of “transmit status” is accurate, it is not consistent with how the term “user sending status” is used in claim 7. Specifically, claim 7 recites that “the central unit receives the user sending 2 The Specification generally uses the term “central server,” while the claims generally use the term “central unit.” The parties do not argue that these terms should be accorded different meanings. Reading the claims in light of the Specification, we understand these terms to be synonymous. status from the second mobile communications device and the information defining the locations of the first and the second mobile communications devices” and “if there is a match and depending upon the user sending status, effects the transmission to the first mobile communications device of locating information.” As Petitioner points out (Reply 18), claim 7 specifies that the central unit receives from the second mobile communications device both a user sending status and information defining location of the second mobile communications device. The user sending status is used by the central unit, along with the information defining the device’s location, to determine whether to send locating information to another device. Patent Owner’s proposed construction, and the explanation provided by Mr. Zatkovich, would exclude the second communications device from transmitting to the central server the very information specifically recited in claim 7. Because Mr. Zatkovich’s testimony, specifically his statement that “[t]he purpose of the user sending status in this example is to enable and disable the transmission of locating information from device 19 to the central server,” Ex. 2017 ¶ 56, is directly contradicted by the language of claim 7, the testimony lacks credibility. Moreover, as explained in the Decision to Institute (Dec. 11–12), the Specification describes embodiments in which the transmit status is transmitted to the central server and controls whether the central server transmits locating information to another device. Ex. 1007, 6:44–50, 8:1–7, 9:3–8, 10:50–59, 11:24–29. These passages provide additional support for Petitioner’s proposed construction of “user sending status.” Patent Owner’s proposed construction would exclude these embodiments.” slip op. at 17
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“We agree with Petitioner that the Specification describes examples of “locating information” that indicates that a mobile device is within a certain proximity but without specifying a specific location. Indeed, in this Figure 5 embodiment (Ex. 1007, 14:22–32), the term “locating information” is used to describe information that is not usable to arrive at a specific location. We conclude that a construction excluding such embodiments would be unreasonably narrow. See Epos Techs. Ltd. v. Pegasus Techs. Ltd., 766 F.3d 1338, 1347 (Fed. Cir. 2014) (“A claim construction that excludes a preferred embodiment is rarely, if ever correct and would require highly persuasive evidentiary support.” (internal quotation marks and citation omitted)). We note that Patent Owner does not offer persuasive evidence that the Specification defines “locating information” or excludes or disavows locating information that is not usable to arrive at a specific location. Patent Owner also argues that our construction “ignores the word ‘locating’” and “conflates the notions of ‘locating information’ and ‘proximity/profile data.’” PO Resp. 13. Patent Owner argues that proximity/profile data is distinct from locating information. Id. at 13–16. We agree with Patent Owner that locating information is distinct from proximity/profile data, but disagree that our construction conflates the two. According to the ’593 patent, in determining whether to send locating information, a central server evaluates profile data and proximity data to determine whether there is a match. Ex. 1007, 8:54–9:2. Locating information is not merely the profile and proximity data, nor is proximity/profile data sent to the mobile devices. Rather, the central server sends to a mobile device locating information that indicates to the mobile device that the profile and proximity data have been successfully matched. Id. at 9:3–8. Our construction of “locating information” is directed to the information transmitted by the central server, rather than the information received by the central server. As to reading the word “locating” out of “locating information,” Petitioner, in reliance on Dr. Heppe, argues that “information, sent as a consequence of a proximity test, is ‘locating information’ because information about a device’s proximity to known locations provides information about that device’s location.” Reply 3 (quoting Ex. 1014 ¶ 2). We credit Dr. Heppe’s testimony and agree with Petitioner. We conclude that our construction neither ignores “locating” nor conflates “locating information” with proximity/profile data.” slip op. at 12
Patent outcomesUS 6,618,593 unpatentableClaim construction§ 103 obviousnesscites GrahamPatents in suitUS 6,618,593 - Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. et al. v. Black Hills Media, LLCAll claims unpatentablePTAB · Oct 21, 2015 · IPR2015-00336 · APJ David C Mckone · IPR · Final written decision
Claims 1, 4, 7, 10, and 13–21 are unpatentable as obvious over Degnbol, with claim 15 also relying on DeLorme.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“We agree with Petitioner that the Specification describes examples of “locating information” that indicates that a mobile device is within a certain proximity but without specifying a specific location. Indeed, in this Figure 5 embodiment (Ex. 1007, 14:22–32), the term “locating information” is used to describe information that is not usable to arrive at a specific location. We conclude that a construction excluding such embodiments would be unreasonably narrow. See Epos Techs. Ltd. v. Pegasus Techs. Ltd., 766 F.3d 1338, 1347 (Fed. Cir. 2014) (“A claim construction that excludes a preferred embodiment is rarely, if ever correct and would require highly persuasive evidentiary support.” (internal quotation marks and citation omitted)). We note that Patent Owner does not offer persuasive evidence that the Specification defines “locating information” or excludes or disavows locating information that is not usable to arrive at a specific location.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“Neither party proposes a construction of “based upon the information defining the locations of the first and the second mobile communications devices.” Nevertheless, Patent Owner argues that “locating information” is further qualified by this claim language. PO Resp. 17. According to Patent Owner, in reliance on Mr. Zatkovich’s testimony, “[l]ocation information must include information about the locations of at least two devices.” Id. (citing Ex. 2017 ¶ 49). The plain language of the claims recites “based on,” rather than “includes.” Patent Owner does not persuasively argue that information “based on” the locations of two devices necessarily must include the two locations. Indeed, in the truck example Patent Owner cites (Id. at 6 (citing Ex. 1007, 11:46–57)), the information Patent Owner identifies as locating information is a transmission by the central server of a convenient meeting place, which, presumably, includes the location of neither truck. Mr. Zatkovich testifies that in instances such as textual directions and a video of the route to be travelled, “the ‘locating information’ is based on and derived from the locations of both devices.” Ex. 2017 ¶ 49. We agree. Nevertheless, information that indicates to a user that a second user is within a certain proximity of a first user also is based on and derived from the locations of both devices.” slip op. at 14
- Skill levelSkill level petitioner adoptedDecided for petitioner
“between the claimed subject matter and the prior art are “such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” We resolve the question of obviousness on the basis of underlying factual determinations, including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of skill in the art;4 and (4) objective evidence of 3 At the oral hearing, Patent Owner admitted that it did not include in its Response any patentability argument distinguishing the prior art under its proposed construction of “user sending status.” Tr. 13:7–14:16. Instead, Patent Owner points to the testimony of Mr. Zatkovich, which Patent Owner admits is not cited in its Response. Id. (citing Ex. 2017 ¶¶ 81–89). Even if we were to adopt Patent Owner’s proposed construction of “user sending status,” Patent Owner has waived any patentability arguments based thereon, as they were not raised in the Response. See, e.g., Paper 27 (Scheduling Order), 2–3 (“The patent owner is cautioned that any arguments for patentability not raised in the response will be deemed waived.”). 4 Petitioner, citing Dr. Heppe’s testimony, contends that a person of ordinary skill in the art “would typically have at least a Bachelor of Science degree in electrical engineering, computer engineering, computer science, or equivalent thereof, and one to two years of experience in the field of computer communications, telecommunications, and/or communications networking.” Pet. 6 (citing Ex. 1005 ¶ 3). Patent Owner neither contends that this is incorrect nor proposes an alternative. On the full record, we adopt Petitioner’s statement of the level of skill in the art. nonobviousness, i.e., secondary considerations.5 See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).” slip op. at 20
- Expert testimonyPetitioner expert creditedDecided for petitioner
“communications device transmitting data defining its own location, these systems mentioned in Degnbol know the positions of the network’s cellular tower and use this information to derive the location of a communications device. To summarize, Degnbol’s cellular tower infers the location of communications devices.” Ex. 2017 ¶ 63. We understand Mr. Zatkovich to be testifying that Degnbol’s reference to “GPS” is a reference to the GPS coordinates of the cellular towers, rather than the GPS coordinates of the mobile telephones. Mr. Zatkovich does not cite to evidence other than Degnbol in reaching this conclusion. In reply, Dr. Heppe testifies, “a person of ordinary skill would understand Degnbol to teach (among other things) a ‘mobile-based’ position determination method with GPS receivers in (or associated with) the mobile devices.” Ex. 1014 ¶ 15. Dr. Heppe also relies exclusively on Degnbol’s disclosure in reaching his conclusion. Patent Owner argues that Degnbol has no explicit disclosure of mobile devices including GPS transceivers and that Degnbol’s distinction between “network-based” and “mobile-based” position calculation is “cryptic.” PO Resp. 27–28. The logical reading of Degnbol’s disclosure is that mobile- based methods, such as tracking a mobile phone’s position through receipt of GPS information from the phone, are distinct from “network-based” techniques, such as triangulation. See, e.g., Ex. 1003, 5:7–9 (“several determination methods, such as triangulation methods, GPS . . .”). As Dr. Heppe points out (Ex. 1014 ¶ 15), Figure 1 of Degnbol depicts a wireless network receiving “position reports” from users. To the extent there is any ambiguity, this is persuasive evidence that Degnbol’s cellular phones transmit information about their positions, such as GPS coordinates, to a central server. In consideration of all of this evidence, we find that Degnbol teaches first and second mobile communications devices “for transmitting information defining a location of” each device.” slip op. at 26
Patent outcomesUS 6,618,593 unpatentableClaim construction§ 103 obviousnesscites GrahamPatents in suitUS 6,618,593 - Juniper Networks, Inc. v. Brixham Solutions, Ltd.All claims unpatentablePTAB · Jul 27, 2015 · IPR2014-00425 · APJ Peter P Chen · IPR · Final written decision
Claims 1–5, 8–11, 13–15, and 17 are unpatentable as obvious over either Hofmeister, RFC 3386, and Owens or Halabi, RFC 3386, and Owens.
RulingsFinal written decision- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“In reply, Petitioner cites KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398 (2007), noting, “KSR set forth a number of ‘Exemplary Rationales’ that support an obviousness finding . . . . Many of these rationales apply here and support the obviousness of the claims.” Pet. Reply 6. Petitioner describes in detail why it would have been obvious to combine Hofmeister with RFC 3386 and Owens, under several rationales set forth in KSR: combining prior art elements according to known methods to yield predictable results; using known techniques to improve similar methods in the same way; applying known techniques to known methods ready for improvement to yield predictable results; and using teachings, suggestions, or motivations in the prior art to modify or combine references to arrive at the claimed invention. Pet. Reply 6–10. As Petitioner contends, it would have been a natural fit and a predictable step for a [person having ordinary skill in the art] to use the Setup/Holding priority described in Hofmeister to make preemption decisions during network failure . . . to take advantage of well-known protection mechanisms, such as those in RFC 3386/Owens. Pet. Reply 10–11. We determine that Petitioner has provided adequately articulated reasoning for combining Hofmeister, RFC 3386, and Owens, supported by rational underpinnings, that are reasonable. See KSR, 550 U.S. at 418. Thus, we conclude that Petitioner has proved by a preponderance of the evidence that claims 1–5, 8–11, 13–15, and 17 are obvious in view of Hofmeister, RFC 3386, and Owens.” slip op. at 13
- ExcludeMotion to exclude, deniedDenied
“Opp. to Mot. to Excl. 6–7. While we agree with Petitioner that Patent Owner’s motion is procedurally defective for the reasons argued by Petitioner, for purposes of this decision we also review Patent Owner’s substantive arguments, which we also determine to be lacking in merit. Patent Owner argues that Ex. 1003 and Ex. 1027 should be excluded due to the “general evasiveness” of Dr. Lavian and “interference of counsel.” Mot. to Exclude 1. Petitioner contends that Dr. Lavian’s responses were not evasive but were proper, and Petitioner’s objections to the “content” and “form” also were proper under 37 C.F.R. § 42.53(f)(8). Opp. 8–13. Patent Owner responds that it “seeks to exclude the entirety of Dr. Lavian’s declaration . . . because of the behavior of the witness and his counsel at the deposition.” PO Reply 1. We agree with Petitioner that Dr. Lavian’s responses were not “evasive.” For example, Patent Owner’s argument directs us to a specific portion of the deposition where Dr. Lavian was asked, “did you add that element, 584b?” Mot. to Exclude 2 (quoting Ex. 2003, 34:18). We agree with Petitioner that this “only concrete example of this supposed ‘evasiveness’ identified” by Patent Owner concerns not the ’652 patent being challenged herein, but rather, the patent at issue in IPR2014-00431. Opp. 11. Although Patent Owner states that “this type of evasiveness pervaded the entirety of the deposition,” (Mot. to Excl. 3), based on our review of Ex. 2003, we are persuaded that Dr. Lavian responded to Patent Owner’s questions to the best of his ability and was not “evasive.” We further agree with Petitioner that its deposition objections were proper. See 37 C.F.R. § 42.53(f)(8)(“Any objection to the content, form, or manner of taking the deposition, including the qualifications of the officer, is waived unless made on the record during the deposition and preserved in a timely filed motion to exclude.”). Based on our review of Ex. 2003, Petitioner’s objections were directed to the content, form, or manner of taking the deposition, and, therefore, were proper under 37 C.F.R. § 42.53(f)(8). We are also not persuaded that the alleged behavior of opposing counsel, alone or “in combination with the other occurrences at the deposition” (Mot. to Exclude 4), is a sufficient basis to exclude Ex. 1003 and Ex. 1027. Accordingly, we deny Patent Owner’s Motion. As noted in our Decision to Institute, however, we reiterate that we have not considered any of Petitioner’s arguments made solely by virtue of incorporation by reference from either of the Lavian declarations. See supra n.1; Dec. to Inst., 11–12 n.1.” slip op. at 19
- Skill levelSkill level board ownOther
“Bachelor’s in computer science, electrical engineering, or the equivalent; and at least 7 years of professional experience in network communications and Internet protocols, or an advanced degree and 4 years’ experience.” Pet. 14 (citing Ex. 1003 ¶ 46). Patent Owner does not propose a level of ordinary skill in the art. We determine that an express definition of the level of ordinary skill is not required. The level of ordinary skill in the art can be reflected in the cited prior art references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“[T]he absence of specific findings on the level of skill in the art does not give rise to reversible error where the prior art itself reflects an appropriate level and a need for testimony is not shown.”) (internal quotations omitted); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). Here, Patent Owner has not proposed a level of ordinary skill, and Petitioner has not provided a sufficient explanation as to how its specific proposal regarding the level of ordinary skill (for example, the importance of the inclusion of “at least”) affects the analysis in this case. Therefore, we find the level of ordinary skill in the art to be reflected in the cited references and we determine that no express statement of the level of ordinary skill in the art is required.” slip op. at 9
- Expert testimonyPatent owner expert discountedDecided for petitioner
“Patent Owner further contends there would have been no motivation to combine Hofmeister with RFC 3386 and Owens. PO Resp. 5–6. Patent Owner’s support for its arguments is the Declaration of Dr. George N. Rouskas, to which we accord little weight because his testimony is conclusory and unsupported by evidentiary explanations. See 37 C.F.R. § 42.65(a). At the oral hearing, Patent Owner’s counsel stated that “we heard [Petitioner’s] presentation about all this prior art out there that talks about preempting network traffic, and it’s legion. . . . And yes, it’s true, again, as with the other references, this is a concept that people would have known reading all of these references, prioritizing, working traffic under normal operating conditions.” Tr. 18:1–2, 28:11–14. Thus, Patent Owner concedes the existence of references disclosing the recited limitations in the challenged claims, but nevertheless argues that there is not any motivation to combine such references.” slip op. at 13
Patent outcomesUS 7,940,652 unpatentable§ 103 obviousnesscites KSRPatents in suitUS 7,940,652 - Juniper Networks, Inc. v. Brixham Solutions Ltd.All claims unpatentablePTAB · Jul 27, 2015 · IPR2014-00431 · APJ Kalyan K Deshpande · IPR · Final written decision
Claims 5, 6, 14, and 15 are unpatentable as obvious over Bell, Sierra-1, Sierra-2, and Sierra-3.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“Transfer Mode (“ATM”), and Internet Protocol (“IP”) based services.” Ex. 1001, 5:54–58. Also, the ’895 patent describes that “[e]fficiency is greatly increased when each processing engine supports all protocols used in switch 90 at the OSI model layers supported by the processing engines.” Id. at 14:50–52. The ’895 patent further describes an embodiment that includes the link interfaces and processing engines coupled to a control bus, where the control bus “is a 100 Base- T Ethernet communications link . . . [that] employs the 100 Base-T Ethernet protocols for carrying and formatting data,” and in another embodiment the control bus “is a star-like switched Ethernet network.” Id. at 17:23–38. We agree with Petitioner’s construction of this limitation, to mean “two or more of ‘Ethernet, ATM, Frame Relay’ [that] constitute a first and second protocol within a layer,” is consistent with the specification that describes the network switch to provide “Frame Relay, Gigabit Ethernet, Asynchronous Transfer Mode (‘ATM’), and Internet Protocol (‘IP’) based services.” Pet. 25; Ex. 1001, 5:54–58. This construction is also consistent with the construction proffered by Patent Owner, requiring that “a processing engine must be capable of processing data according to at least two of the afore-referenced protocols.” PO Resp. 2. Accordingly, we agree with Petitioner that, under the broadest reasonable construction, the “multiprotocol” limitation means “two or more of ‘Ethernet, ATM, Frame Relay’ that constitute a first and second protocol within a layer” and we further agree with Patent Owner that a “processing engine” is capable of processing data according to at least two of the afore-referenced protocols.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“except for the limitation that the switch is configured to “map data from multiple link interfaces in said plurality of link interfaces to a first processing engine in said plurality of processing engines.” Pet. 28. Petitioner further contends that if Bell does not explicitly or inherently disclose the switch is configured to “map data from multiple link interfaces in said plurality of link interfaces to a first processing engine in said plurality of processing engines,” then Sierra-1, Sierra-2, and Sierra-3 disclose this limitation. Pet. 29–30. Petitioner specifically argues that Sierra-1 discloses flexible data transmissions that allows for time slots of data to be mapped from any port card to any forwarding card and Sierra-2 discloses a “‘connection map’ that is used to map data from the link interfaces to the processing engines.” Pet. 29–30 (citing Ex. 1006, 14, Fig. 2; Ex. 1005, 29–30). Sierra-1 further discloses multicast is supported as an output and can sample data from any input. Ex. 1006, 14, Fig. 2. Petitioner argues that it would have been obvious to combine Sierra-1, Sierra-2, and Sierra-3 with the Bell architecture, because Bell specifically mentions the use of Sierra’s cross-connection component. Pet. 30–31 (citing Ex. 1003 ¶ 261); Ex. 1004, 51:56–65.” slip op. at 12
- ExcludeMotion to exclude, deniedDenied
“Although we agree with Petitioner that Patent Owner’s motion is procedurally defective for the reasons argued by Petitioner (see Opp. 4–6), we also agree with Petitioner that Dr. Lavian’s responses were not “evasive” and highlight this argument for emphasis. For example, Patent Owner’s argument directs us to specific portion of the deposition where Dr. Lavian was asked “did you add that element, 548b?” Supp. Mot. to Exclude 2 (quoting Ex. 2002, 34:18). We agree with Petitioner that Dr. Lavian answered this question to the best of Dr. Lavian’s ability. Opp. 13 (citing Ex. 2002, 34:20–35:2). Furthermore, Patent Owner was able to rephrase the same question and elicit an additional response that Patent Owner did not determine to be “evasive.” See Ex. 2002, 36:6–20. Although Patent Owner directs us to an additional example where Dr. Lavian was allegedly “evasive” and generally concludes that “this type of evasiveness pervaded the entirety of the deposition,” based on our review of Ex. 2002, Patent Owner has not persuaded us that Dr. Lavian did not respond to the questions to the best of his ability. We further agree with Petitioner that Petitioner’s objections were proper. See 37 C.F.R. § 42.53(f)(8) (“Any objection to the content, form, or manner of taking the deposition, including the qualifications of the offier, is waived unless made on the record during the deposition and preserved in a timely filed motion to exclude.”). Based on our review of Ex. 2002, Petitioner’s objections were directed to the content, form, or manner of taking the deposition, and, therefore, were proper under 37 C.F.R. § 42.53(f)(8). We are also not persuaded that the behavior of opposing counsel, alone or “in combination with the occurences at the deposition” (Supp. Mot. to Exclude 4) is a sufficient basis to exclude Exhibit 1003 or Exhibit 1020. Such a remedy is incongruous and disproportional to any alleged harm suffered by Patent Owner during deposition. Accordingly, Patent Owner’s Motion to Exclude Exhibit 1003 and Exhibit 1020 is denied.” slip op. at 15
Patent outcomesUS 7,535,895 unpatentableClaim construction§ 103 obviousnessPatents in suitUS 7,535,895
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.