• Sandisk Corp. v. Netlist, Inc.All claims unpatentable
  PTAB · 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 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,081,536
• Sandisk Corp. v. Netlist, Inc.Some claims unpatentable
  PTAB · 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 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,881,150
• Mastercard International Inc. v. Leon StamblerAll claims unpatentable
  PTAB · 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 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 5,793,302
• Corelogic, Inc. v. Boundary Solutions, Inc.All claims unpatentable
  PTAB · May 19, 2016 · IPR2015-00226 · APJ Peter P Chen · IPR · Final written decision

  Claims 1–12, 14, 15, and 19–21 are unpatentable as obvious over the Harder-based grounds; the Kearney and ARC/INFO ground was not proven for claims 1–6 and 20–21.

  RulingsFinal written decision

  • BurdenFwd mixedUnpatentable

    “In summary, we agree with Petitioner’s contentions and find that Harder and Longley, once combined as proposed by Petitioner, teach or suggest the limitations of independent claim 1.” slip op. at 20

  • Skill levelSkill level board ownOther

    “C. 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 geographic information science, survey engineering, geomatics, or similar education, and two years of experience in a relevant field (e.g., land or geographic information science), or six years of experience in the relevant field.” Ex. 1006 (Declaration of Michael Goodchild), ¶ 11. Patent Owner has proposed that one of ordinary skill in the art would possess a “a Bachelor’s degree or higher in, GIS engineering with at least 5 years of academic or industry experience in GIS database design..” Ex. 2005 (Declaration of William Huxhold), ¶ 14. 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 11

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner

    “The disclosure of Longley and the knowledge of one skilled in the art would have motivated such a person to modify Harder’s system given that Harder discloses parcel-based searching and display functionalities for a jurisdiction (e.g., Ex. 1003, 21-25) and for multiple states (id., 49-51), and discloses that databases in GIS environments could span multiple jurisdictions (id.,7, 49- 51), and that Longley discloses configuring such databases to include data relating to different states and also discloses parcel based systems. Moreover, one skilled in the art would have been motivated to look to Longley to supplement the features of the systems and processes of Harder given they both describe[] features of ESRI systems. Ex. 1015, 170, 172; Ex. 1003. Thus, modifying Harder’s database in such a way would have been a common sense and predictable modification that was within the realm of knowledge of one skilled in the art at the time of the alleged invention. See KSR, 550 U.S. at 417; Ex. 1006, ¶¶ 35- 39. Pet. 18–19. The Petition continues:” slip op. at 20

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

  Patent outcomesUS 7,499,946 unpatentable
  § 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,499,946
• Corelogic, Inc. v. Boundary Solutions, Inc.All claims unpatentable
  PTAB · May 19, 2016 · IPR2015-00228 · APJ Peter P Chen · IPR · Final written decision

  Claims 1–12, 14, 15, and 19 are unpatentable: claims 1–10, 12, 14, 15, and 19 as obvious over Harder and Longley, and claim 11 over Harder, Longley, and Roy.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner

    “In our Decision to Institute, we construed “numerical jurisdictional identifier” to mean “a number that identifies a jurisdiction.” Dec. to Inst. 7– 8. We based our construction on the only appearance of “jurisdictional identifier” in the written description of the ’957 patent: FIG. 3 illustrates a USA County Boundary Map (USACM). This is a public domain boundary file of each and every of the 3140 counties within the United States. Each of these polygons is 8 geocoded with its county name and FIPS number, a numerical jurisdictional identifier, as illustrated in the figure. Ex. 1001, 8:48–53 (emphasis added).1 Patent Owner does not challenge our construction of “jurisdictional identifier” in its Patent Owner Response, see PO Resp. 7, nor does Petitioner challenge the construction in its Reply, see Reply 7. For this Final Written Decision, after considering the complete record, we maintain our construction of “numerical jurisdictional identifier” as “a number that identifies a jurisdiction.”” slip op. at 8

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner

    “Patent Owner also proposes a construction for “national parcel map database comprising multiple jurisdictional databases which have been normalized to a common data protocol.” PO Resp. 7–15. Patent Owner’s proposal is 60 words long, and reads, “a database covering more than one state including multiple jurisdictional databases, wherein a jurisdictional database is a collection of data representing the boundaries of parcels from the jurisdiction, each of the jurisdictional databases having been received from a jurisdiction, and modified, transformed, amended or converted by a common set of one or more processes applied to all data and updates.” PO Resp. 8. Patent Owner had in its Preliminary Response proposed a different construction (“the database of individual land parcels having been 1 According to the ’957 patent, the Federal Information Processing Standards (“FIPS”) number “is used nationally to numerically identify specific county jurisdictions.” Ex. 1001, 7:27–30. 9 transformed by a set of one or more automated and/or semiautomated processes applied to data and data updates supplied by sponsoring jurisdictions using a set of rules or procedures”) for nearly the identical phrase (“multiple jurisdictional databases which have been normalized to a common data protocol”). Prelim. Resp. 15–17. We did not adopt Patent Owner’s proposed construction in our Decision to Institute, and we do not adopt its revised (and lengthier) construction in this Final Written Decision, for the reasons argued by Petitioner in its Reply (Reply 2–5) and also because the Patent Owner’s prolix proposed construction does not add clarity to the term. We decline to provide an express construction for this term or for any other terms in the claims other than discussed above.” slip op. at 9

  • Skill levelSkill level board ownOther

    “C. 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 geographic information science, survey engineering, geomatics, or similar education, and two years of experience in a relevant field (e.g., land or geographic information science), or six years of experience in the relevant field.” Ex. 1006 (Declaration of Michael Goodchild), ¶ 11. Patent Owner has proposed that one of ordinary skill in the art would possess a “a Bachelor’s degree or higher in, GIS engineering with at least 5 years of academic or industry experience in GIS database design.” Ex. 2004 (Declaration of William Huxhold), ¶ 13. 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 11

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

    “universal spatial protocol using SHP files (shapefiles) (Ex. 1001, 7:31–41), and Harder’s description of how its system’s datasets are “stored in the industry-standard shapefile (.shp) format” and how the system “converts the data into shapefiles.” Pet. Reply 9–11; Ex. 1003, 24, 106. Petitioner also notes that Patent Owner’s declarant acknowledged that assembling databases according to a standard protocol was in the prior art. Pet. Reply 11; Ex. 1034, 29:15–32:17, 32:18–40:22. We agree with Petitioner and find that Harder teaches or suggests databases that have been normalized to a common data protocol. Second, Patent Owner argues about the lack of disclosure of multiple jurisdictional databases. PO Resp. 28–29. Petitioner contends multiple jurisdictional databases are taught by both Harder and Longley, which explicitly discloses a “STATES table” that is a multi-state database. Pet. Reply 13; Ex. 1015, 229, Fig. 11.2. We agree with Petitioner and find that Harder and Longley teach or suggest multiple jurisdictional databases.” slip op. at 17

  Patent outcomesUS 7,092,957 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,092,957
• Sure-Fire Electrical Corporation v. Yongjiang Yin And Shenzhen El Lighting Co. Ltd.All claims unpatentable
  PTAB · Feb 22, 2016 · IPR2014-01448 · APJ Debra K Stephens · IPR · Final written decision

  Claims 1 and 7 are unpatentable as obvious over He and Korodi; the Board did not reach the Gustafsson and He ground.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner

    “its claims, but instead, recited only “emits.” Patent Owner has not proffered any evidence or argument as to why “emits and dies” used in the ’279 Patent Specification, would have been abbreviated to “emits” in recitation of the claims. Nor is the term “emits” defined explicitly in the ’279 Patent Specification. Thus, we begin with the assumption that the term “emits” does not include “and dies,” as that comports with the plain and ordinary meaning of the word “emits” Thus, taking the plain and ordinary meaning at the time of the invention, we interpret “emits light in sequence” as “throws off or gives off or out light in a continuous or connected series” and interpret “emits in sequence” as “throws off or gives off or out, in a continuous or connected series” (see e.g., Merriam-Webster’s Collegiate Dictionary 377, 1065 (10th ed. 2000)). Patent Owner has not proffered sufficient evidence or argument that “emits light in sequence” and “emits in sequence” should be read more narrowly than the plain and ordinary meaning as suggested by Patent Owner. Specifically, Patent Owner’s assertion that the Specification supports the proposed interpretation of “emits light in sequence” as “emits and dies light in sequence” is misplaced. The Specification of the ’279 Patent does not explicitly define “emits light in sequence” as “emits and dies light in sequence.” Nor is any explicit definition provided for “emits light in sequence” or “emits in sequence.” Patent Owner would have us import limitations disclosed in several of the embodiments, including Embodiment 1, to interpret “emits” as “emits and dies light in sequence” or “emits and” slip op. at 9

  • Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer not foundDecided for petitioner

    “Patent Owner additionally asserts “Patent Owner specifically disclaimed emission of light over the full length of the cable, but rather limited the patent to segment by segment illumination along the length of the cable,” thereby limiting the phrase “emits light in sequence” (PO Resp. 43). Patent Owner identified pages 9–10 of the Response to Office Action filed September 18, 2009 (Ex. 1002, 25–26), as providing this disclaimer (PO Resp. 48–49). However, we agree with Petitioner that the statements in the Response to Office Action do not disclaim subject matter, nor do these statements provide an explicit definition of “emits,” “emits light in sequence, and “emits in sequence.” Indeed, the discussion, limited to claim 7, discusses the object of the invention and distinguishes the invention as recited in claim 7 over the cited prior art, Baumberg et al. (US 5,869,930) (Resp. to OA 9–10). This discussion does not qualify as “clear and unmistakable” disavowing statements as required to meet the “demanding standard for finding a disclaimer.” Avid Tech., Inc. v. Harmonic, Inc., No. 2015-1246, 2016 WL 363410, at *4 (Fed. Cir. Jan. 29, 2016). We, therefore, determine the term “emits light in sequence” and “emits in sequence” used in the claims, should not be interpreted as “emits and dies light of each electroluminescent cored bar or cord in succession, one after the other,” but instead, should be interpreted giving the terms their ordinary and customary meaning as understood by an ordinarily skilled artisan at the time of the invention, in light of the Specification.” slip op. at 10

  • Obviousness (§103) › Analogous artAnalogous artDecided for petitioner

    “(PO Resp. 37–40). A reference qualifies as prior art for an obviousness determination under § 103 only when it is analogous to the claimed invention. Innovention Toys, LLC, v. MGA Entm’t, Inc., 637 F.3d 1314, 1322 (Fed. Cir. 2011); In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004); In re Clay, 966 F.2d 656, 658 (Fed. Cir. 1992). “Two separate tests define the scope of analogous prior art: (1) whether the art is from the same field of endeavor, regardless of the problem addressed and, (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved.” Bigio, 381 F.3d at 1325 (citations omitted).” slip op. at 18

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner

    “Nonetheless, we find Petitioner has articulated reasoning with a rational underpinning as to why an ordinarily skilled artisan would have been motivated to combine the teachings (Pet. 34–36; Ex. 1008 ¶¶ 98–104). Specifically, Petitioner contends an ordinarily skilled artisan would have been motivated to combine the teachings of He and Korodi because “such a modification is both a predictable variation and an incremental improvement” (Pet. 35). According to Petitioner, an ordinarily skilled artisan would have found it obvious and “straight-forward” to replace the aluminum core wire in He with a power cord to create an improved illuminated cable using electroluminescent wires that light in sequence (id. at 36). Petitioner further asserts combining the teachings would “involve the merger of familiar elements according to their established functions, known methods, and predictable results” (id.). We agree with the Petitioner that an ordinarily skilled artisan would have been motivated to replace the core wire at the center of He’s cable with a power cord as taught by Korodi to create an improved illuminated cable. We find the combination of He and Korodi unites old elements with no change in their respective functions. Indeed, we agree that combining the teachings would be a merger of familiar elements, Korodi’s power cord and He’s electroluminescent cable, that perform their ordinary functions to predictably result in the recited cable which includes a main power cord and a plurality of electroluminescent cords which emit light in sequence when the main cord and the driver are live. To be nonobvious, an improvement must be “more than the predictable use of prior art elements according to their established functions.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 417 (2007). Additionally, as further support, we credit Petitioner’s Declarant’s, Dr. Mark Horenstein’s, testimony that replacing the aluminum core wire in He for the power cord in Korodi would have been a merger of familiar elements according to their established functions, known methods, and predictable results that an ordinarily skilled artisan would have found obvious (Ex. 1008 ¶¶ 99, 102, 103).” slip op. at 20

  Patent outcomesUS 7,671,279 unpatentable
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 7,671,279
• Ericsson Inc. / Telefonaktiebolaget LM Ericsson v. Intellectual Ventures II LLCAll claims unpatentable
  PTAB · Jan 21, 2016 · IPR2014-01185 · APJ Peter P Chen · IPR · Final written decision

  Claims 1–10 and 17 are unpatentable: claims 1–3 and 5 as obvious over Schmidl and Arslan; claims 4 and 6–10 over those references and Kim; claim 17 over those references and Heiskala.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner

    “Our interpretation of the disputed term begins with the language of the claim. See Microsoft Corp. v. Proxyconn Inc., 789 F.3d 1292, 1299 (Fed. Cir. 2015). Claim 1 recites that pilot symbols are inserted “into data blocks.” We construe claim 1’s plain language using the plural form of “data blocks” to mean that pilot symbols may be inserted not only within a single data block, as Patent Owner contends, but also between one data block and another data block, as Petitioner contends. Claims should also be read in light of the specification and teachings in the underlying patent. Cuozzo, 793 F.3d at 1280; Microsoft, 789 F.3d at 11 1298. Here, the specification also uses the plural form of data blocks in explaining that “[t]ypically, pilot symbols may be inserted at any point in the data blocks.” Ex. 1001, 16:55–56, 7:28–29. There is no language in the specification disclaiming the insertion of pilot symbols between data blocks. We are persuaded that based on the claim’s usage of the plural “data blocks,” which is supported by the description in the specification, the broadest reasonable construction is “pilot/training symbol inserter configured to insert pilot symbols within, or between, one or more data blocks,” and accordingly, does not exclude the insertion of pilot symbols between two data blocks that are in a group of data blocks.” slip op. at 11

  • Skill levelSkill level board ownOther

    “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 13 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 13

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable

    “that “both Schmidl and Arslan are directed at improving synchronization between a wireless transmitter and a wireless receiver, and disclose frame structures including information for the same.” Pet. 16. In particular, Schmidl discloses an encoder that inserts training symbols in the frequency domain, to form training symbols in the time domain. Pet. Reply 13, 17 (citing Ex. 1036 ¶ 21); see Ex. 1002, 2:7–17. Arslan discloses a frame structure in the time domain containing pilot symbols interspersed among data symbols. Pet. Reply 16–17 (citing Ex. 1036 ¶¶ 20, 22). Petitioner further states: [I]t would have been obvious to use pilot symbols as separate time domain symbols for tracking time variations to calibrate or synchronize the receiver to the transmitter by using time-domain pilot symbols in Schmidl’s system. . . [citing to Supplemental Declaration of Dr. Zygmunt Haas ¶ 22.] As discussed above, Schmidl discloses inserting symbols in the frequency domain for an OFDM system, for calibration and synchronization. See id. It would have been obvious to create those time-domain pilot symbols in the same manner as the time-domain training symbols are created in Schmidl’s encoder – that is, by inserting blocks of known pilot symbols in the frequency domain that would result in time-domain pilot symbols. See id. It would be obvious to a POSA that the same circuitry in Schmidl’s encoder 14 used to insert training symbols would be used to insert pilot symbols, resulting in the claimed “pilot/training symbol inserter configured to insert pilot symbols into data blocks.” See id. Pet. Reply 17–18; see Pet. 16, 29–30.” slip op. at 22

  Patent outcomesUS 7,269,127 unpatentable
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 7,269,127
• Arista Networks, Inc. v. Cisco Systems, Inc.Institution denied
  PTAB · Oct 6, 2015 · IPR2015-00974 · APJ Matthew R Clements · IPR · Institution

  The Board denied institution on all challenged claims because Petitioner did not show a reasonable likelihood of proving unpatentability under the asserted anticipation and obviousness grounds.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “Systems, Inc. (“Patent Owner”) filed a Preliminary Response. Paper 6 (“Prelim. Resp.”). We have jurisdiction under 35 U.S.C. § 314, which provides that an inter partes review may be authorized only if “the information presented in the petition . . . and any [preliminary] response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a); 37 C.F.R. § 42.4(a). Upon consideration of the Petition and the Preliminary Response, we determine that the information presented by Petitioner does not establish that there is a reasonable likelihood that Petitioner would prevail in showing the unpatentability of any of the challenged claims 1–10, 12, 13, 15–28, 30, 31, 33–43, 45–49, 51–64, 66, 67, and 69–72 of the ’668 patent. Accordingly, pursuant to 35 U.S.C. § 314, we do not institute an inter partes review of claims 1–10, 12, 13, 15–28, 30, 31, 33–43, 45–49, 51–64, 66, 67, and 69–72 of the ’668 patent.” slip op. at 2

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “interpreted according to their “broadest reasonable construction in light of the specification of the patent” in which they appear. 37 C.F.R. § 42.100(b); see also In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1278–79 (Fed. Cir. 2015). Applying that standard, we interpret the claim terms according to their ordinary and customary meaning in the context of the patent’s written description. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Petitioner proposes constructions for ten terms. Pet. 9–14. Patent Owner disputes some of those constructions and proposes an additional term for construction. Prelim. Resp. 9–19. For purposes of this Decision, we determine that we need not expressly construe any of the terms for which the parties have proposed constructions.” slip op. at 6

  • Skill levelOther

    “expressly disclose a limitation, may nevertheless anticipate if a person of ordinary skill in the art would understand the prior art to disclose the limitation and could combine the prior art description with his own knowledge to make the claimed invention. See Helifix Ltd. v. Blok-Lok, Ltd., 208 F.3d 1339, 1347 (Fed. Cir. 2000). After reviewing the arguments of the parties and the testimony of Dr. Lin, however, we are not persuaded that a person of ordinary skill in the art1 would understand the cited sentence in Amara as necessarily disclosing that the network interface ports of Amara’s internetworking device are configurable by its internal applications. Dr. Lin relies on pages 132 to 134 of Habraken, which is a textbook that describes, inter alia, configuring the interfaces of a Cisco router through a Setup dialog. While this passage describes configuring a port, it is not clear what aspect of the Cisco router is providing the Setup dialog. Nothing, for example, attributes the Setup dialog to “control plane processes” or “internal applications” or the like of the Cisco router. Even assuming that the Setup dialog is provided by an “internal application” of the Cisco router, 1 Petitioner asserts, and Patent Owner does not dispute, that a person of ordinary skill as of the critical date would have had a Master of Science Degree in an academic area emphasizing computer networking or, alternatively, a Bachelor Degree in an academic area emphasizing the design of electrical, computer, or software engineering and several years of experience in computer network engineering and the design of computer networks. Pet. 7. nothing in Habraken supports the determination that the network interface ports of all routers, such as the 3Com router described in Amara, are configurable by “internal applications” of that router. At best, Habraken establishes that a person of ordinary skill in the art at the time would have known that Cisco routers include a Setup dialog for configuring router interfaces. This is not sufficient, however, to persuade us that a person of ordinary skill in the art would have read Amara as necessarily disclosing that the network interface ports of the “device” are configurable by the internal applications.” slip op. at 11

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “We agree with Patent Owner that Amara’s express disclosure is not sufficient. Amara’s disclosure that internal applications control or configure the device only “typically” suggests that they do not necessarily serve that purpose and, therefore, that another component of device 100 may serve that purpose. Moreover, Amara’s disclosure that internal applications control or configure the “device” is not sufficiently specific as to whether the interface ports are an aspect of the device being controlled or configured by the internal applications. Our reviewing court has held that a prior art reference that does not expressly disclose a limitation, may nevertheless anticipate if a person of ordinary skill in the art would understand the prior art to disclose the limitation and could combine the prior art description with his own knowledge to make the claimed invention. See Helifix Ltd. v. Blok-Lok, Ltd., 208 F.3d 1339, 1347 (Fed. Cir. 2000). After reviewing the arguments of the parties and the testimony of Dr. Lin, however, we are not persuaded that a person of ordinary skill in the art1 would understand the cited sentence in Amara as necessarily disclosing that the network interface ports of Amara’s internetworking device are configurable by its internal applications. Dr. Lin relies on pages 132 to 134 of Habraken, which is a textbook that describes, inter alia, configuring the interfaces of a Cisco router through a Setup dialog. While this passage describes configuring a port, it is not clear what aspect of the Cisco router is providing the Setup dialog. Nothing, for example, attributes the Setup dialog to “control plane processes” or “internal applications” or the like of the Cisco router. Even assuming that the Setup dialog is provided by an “internal application” of the Cisco router, 1 Petitioner asserts, and Patent Owner does not dispute, that a person of ordinary skill as of the critical date would have had a Master of Science Degree in an academic area emphasizing computer networking or, alternatively, a Bachelor Degree in an academic area emphasizing the design of electrical, computer, or software engineering and several years of experience in computer network engineering and the design of computer networks. Pet. 7.” slip op. at 10

  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 7,224,668
• Juniper Networks, Inc. v. Brixham Solutions, Ltd.All claims unpatentable
  PTAB · 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 KSR
  Patents in suitUS 7,940,652
• Sure-Fire Electrical Corporation v. Yongjiang Yin And Shenzhen El Lighting Co. Ltd.Rehearing granted
  PTAB · Jun 1, 2015 · IPR2014-01448 · APJ Debra K Stephens · IPR · Rehearing

  Rehearing was granted for claims 1 and 7 under § 103 over He and Korodi, and denied for the He and Currie ground.

  RulingsRehearing decision

  • RehearingRehearing, grantedRehearing, deniedGranted in part

    “Therefore, we conclude that we did not abuse our discretion in declining to institute an inter partes review based the combination of He and Currie. Accordingly, we do not institute an inter partes review based on this ground. III. CONCLUSION For the foregoing reasons, on rehearing, based on our review of the record before us, we determine Petitioner has demonstrated a reasonable likelihood of prevailing on its assertion that the challenged claims are unpatentable based on the combination of He and Korodi. Therefore, we modify our Decision to institute an inter partes review of claims 1 and 7 for obviousness over He and Korodi. We determine, however, that we did not abuse our discretion in declining to institute review on the asserted ground based on He and Currie, and rehearing is denied as to that ground. At this stage in the proceeding, we have not made a final determination with respect to the patentability of the challenged claims, including the claim construction.” slip op. at 12

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “a reasonable likelihood that an ordinarily skilled artisan would have been motivated to combine the teachings of He and Korodi. Specifically, we determine, based on the current record, Petitioner has articulated reasoning with a rational underpinning as to why an ordinarily skilled artisan would have been motivated to combine the teachings. “‘[T]here must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness’ . . . [H]owever, the analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). We credit Dr. Horenstein’s testimony that an ordinarily skilled artisan would have found it obvious simply to replace the aluminum core wire in He with a power cord as taught by Korodi. Ex. 1008 ¶¶ 99, 102. We additionally are persuaded, on the record before us, that the combination of He and Korodi unites old elements with no change in their respective functions. See KSR, 550 U.S. at 415–16. To be nonobvious, an improvement must be “more than the predictable use of prior art elements according to their established functions.” Id. at 417. Indeed, we credit Dr. Horenstein’s testimony that replacing the aluminum core wire in He for the power cord in Korodi would have been a merger of familiar elements according to their established functions, known methods, and predictable results. Ex. 1008 ¶ 103.” slip op. at 10

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundOther

    “Based on the record before us, we are persuaded Petitioner has shown a reasonable likelihood that an ordinarily skilled artisan would have been motivated to combine the teachings of He and Korodi. Specifically, we determine, based on the current record, Petitioner has articulated reasoning with a rational underpinning as to why an ordinarily skilled artisan would have been motivated to combine the teachings. “‘[T]here must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness’ . . . [H]owever, the analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). We credit Dr. Horenstein’s testimony that an ordinarily skilled artisan would have found it obvious simply to replace the aluminum core wire in He with a power cord as taught by Korodi. Ex. 1008 ¶¶ 99, 102. We additionally are persuaded, on the record before us, that the combination of He and Korodi unites old elements with no change in their respective functions. See KSR, 550 U.S. at 415–16. To be nonobvious, an improvement must be “more than the predictable use of prior art elements according to their established functions.” Id. at 417. Indeed, we credit Dr. Horenstein’s testimony that replacing the aluminum core wire in He for the power cord in Korodi would have been a merger of familiar elements according to their established functions, known methods, and predictable results. Ex. 1008 ¶ 103. Accordingly, based on the record before us, we are persuaded the combination of He and Korodi is a proper combination.” slip op. at 10

  • Burden

    “With regard to the asserted ground of unpatentability of claims 1 and 7 for obviousness over He and Currie, Petitioner does not explain adequately the relative strengths or weaknesses of this ground and the grounds on which we have instituted. See Cisco Systems, Inc. v. Constellation Tech. LLC, Case IPR2014-01180, slip op. at 29–30 (PTAB Feb. 8, 2015) (Paper 8). The Currie reference has a filing date of September 24, 2004 and an issuance date of October 17, 2006. Thus, the Currie reference would not be prior art if Patent Owner were successful in establishing a conception date “at least as early as April 2004” and diligence from conception to reduction to practice. See Prelim. Resp. 11. Accordingly, the arguments presented in Petitioner’s Request for Rehearing do not apply to the combination of He and Currie. Therefore, we conclude that we did not abuse our discretion in declining to institute an inter partes review based the combination of He and Currie. Accordingly, we do not institute an inter partes review based on this ground.” slip op. at 11

  § 103 obviousnesscites KSR
  Patents in suitUS 7,671,279

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.