- Micron Technology, Inc. v. Innovative Memory Systems, Inc.Some claims unpatentablePTAB · Apr 1, 2020 · IPR2016-00330 · APJ Kevin W Cherry · IPR · Remand
On remand, claims 21, 22, 27, 32, 33, and 38 remain unpatentable; claims 1, 2, 5, 6, 11, 12, 15, 23, 43, 44, 47, and 48 were not shown unpatentable because Tanaka lacks the required …
RulingsRemand decision- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Thus, the zones contain blocks that are already assigned for address translation. As discussed above, the properly construed remaining language in the claim then requires a controller that can adjust boundaries between zones of assigned blocks “such that blocks from one logical zone are shifted to another logical zone.” Id. Given this analysis and the Federal Circuit’s construction, we agree with Patent Owner that “adjusting blocks that are not yet assigned to logical zones to replace defective blocks that are already assigned to logical zones is not enough to satisfy the claim limitations.” PO Br. 2. Indeed, Federal Circuit noted that our original analysis found that “Tanaka discloses taking” slip op. at 13
- ExcludeMotion to exclude, deniedDenied
“A motion to exclude must explain why the evidence is not admissible (e.g., relevance or hearsay), but may not be used to challenge the sufficiency of the evidence to prove a particular fact. Office Patent Trial Practice Guide, 77 Fed. Reg. 48,765, 48,767 (Aug. 14, 2012). While a motion to exclude may raise issues related to admissibility of evidence, it is not an opportunity to file a sur-reply, and also is not a mechanism to argue that a reply contains new arguments or relies on evidence necessary to make out a prima facie case. Liberty Mut. Ins. Co. v. Progressive Cas. Ins. Co., CBM2013–00004, Paper 53, at 62 (PTAB Mar. 13, 2014) (Final Written Decision). Patent Owner’s Motion to Exclude contains such improper arguments, and is in the nature of a sur-reply. Moreover, for the reasons discussed above (see supra Section II.B.2), we find Petitioner’s arguments involving “spare” blocks unpersuasive. For these reasons, Patent Owner’s Motion to Exclude Paragraph 24 of Dr. Subramanian’s Reply Declaration as presenting new arguments is denied.” slip op. at 21
Patent outcomesUS 6,901,498 mixed§ 103 obviousnessPatents in suitUS 6,901,498 - Ebay Inc. / Alibaba.Com Hong Kong Ltd. et al. v. Global Equity Management (SA) Pty. Ltd.Rehearing grantedPTAB · Oct 12, 2018 · IPR2016-01828 · APJ Kevin C Trock · IPR · Rehearing
Rehearing was granted in part: review was instituted on all challenged claims and grounds, but claims 16 and 28 were not shown unpatentable because their scope could not be determined without speculation.
RulingsRehearing decision- RehearingRehearing, grantedGranted in part
“For the reasons explained below, we grant Patent Owner’s request for rehearing to the extent we (1) modify our Institution Decision to institute on all of the challenged claims, including claims 16 and 28, and all of the grounds presented in the Petition, including Ground 2; and (2) modify our Final Written Decision to include a determination with respect to claims 16 and 28. We deny, however, Patent Owner’s request for rehearing to the extent we decline to read claims 16 and 28 on the prior art.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“In SAS, the Supreme Court held that a decision to institute under 35 U.S.C. § 314 may not institute on less than all claims challenged in the petition. SAS Inst., Inc., 1348 at 1359–60. In our Institution Decision, we determined that Petitioner demonstrated a reasonable likelihood that it would establish that at least one of the challenged claims of the U.S. Patent No. 8,650,591 B2 is unpatentable. Inst. Dec. 23. Because of the Supreme Court’s ruling in SAS, we now modify our Institution Decision to institute on all of the challenged claims, including claims 16 and 28, and on all of the grounds presented in the Petition, including Ground 2, and we determine, in this Decision on Patent Owner’s Motion for Rehearing, whether claims 16 and 28 have been shown, by a preponderance of the evidence, to be unpatentable.” slip op. at 4
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“If our unpatentability analysis requires “considerable speculation as to the meaning and assumptions as to the scope” of the claims, In re Steele, 305 F.2d 859, 862 (CCPA 1962), the differences between the claimed invention and the prior art cannot be ascertained. See id.; see also BlackBerry Corp. v. MobileMedia Ideas, LLC, Case IPR2013-00036, slip op. at 19–20 (PTAB Mar. 7, 2014) (Paper 65) (citing Steele, 305 F.2d at 862–63 for the proposition that “the prior art grounds of unpatentability must fall, pro forma, because they are based on speculative assumption[s] as to the meaning of the claims” and reasoning that “an obviousness determination based on less than all of the claimed elements is speculative as to the meaning or scope of the claims”). In other words, “[w]ithout ascertaining the proper claim scope, we cannot conduct a necessary factual inquiry for determining obviousness—ascertaining differences between the claimed subject matter and the prior art.” Id. at 20 (citing Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966)).” slip op. at 6
- Prior constructionPrior construction adoptedDecided for patent owner
“least one partition of said at least one secondary storage device through said secondary storage partitions window,” “means for manipulating said at least one cabinet record through said cabinet visible partition window,” and “means for modifying said at least one cabinet record through said cabinet visible partition window.” Ex. 101, 9:66–10:25. In related litigation, the district court found in its claim construction opinion that the ’400 patent does not provide structure corresponding clearly to the functions of these limitations. Ex. 1010, 49–61. We have reviewed and considered the district court’s analysis and findings and we concur with the district court’s conclusion. We are unable to discern structure in the ’400 patent that corresponds clearly to the functions recited in the “means for” limitations of claim 16. Claim 28 recites similarly “program code for configuring said at least one partition of said at least one secondary storage device through a secondary storage partitions window,” “program code for manipulating said virtual cabinet record through said cabinet visible partition window,” and “program code for means for modifying said at least one cabinet record through said cabinet visible partition window.” Ex. 1001, 10:65–11:29. The district court also found that the ’400 patent did not provide structure corresponding clearly to the function of these limitations. Ex. 1010, 49–61. We have reviewed and considered the district court’s analysis and findings and we concur with the district court’s conclusion. We are unable to discern structure in the ’400 patent that corresponds clearly to the functions recited in the “program code for” limitations of claim 28.” slip op. at 5
Claim construction§ 103 obviousnesscites GrahamPatents in suitUS 6,690,400 - SK Hynix Inc. / SK Hynix America Inc. et al. v. Netlist, Inc.All claims unpatentablePTAB · Jul 5, 2018 · IPR2017-00692 · APJ Matthew R Clements · IPR · Final written decision
Claims 1–15 are unpatentable: claims 1–14 as anticipated by Best and obvious over Best, and claim 15 as obvious over Best, Mills, and Bonella.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for petitioner
“construction “requires two layers of IC packages, in which a first IC package (the Board’s ‘carrier’) contains one or more second IC packages (the Board’s memory chips).” PO Resp. 39. Petitioner counters that “[t]he Board’s construction does no such thing.” Pet. Reply 18–19. We agree with Petitioner. Patent Owner’s argument is predicated upon the erroneous assertion that “[e]ach memory chip in the Board’s ‘carrier’ requires a different IC package (i.e., a second IC package) that encloses at least one memory die.” PO Resp. 39. Each memory chip does not require its own integrated circuit package. On the contrary, it may be, as Best discloses, a die enclosed with another die in a single IC package. Having considered the arguments and evidence, we maintain our construction of “memory module” to mean “a carrier that contains one or more memory chips,” where “carrier” encompasses an integrated circuit package.” slip op. at 14
- Skill levelSkill level board ownOther
“Otherwise, we determine that no express finding on a specific corresponding level of technical education and experience is necessary. Here, the level of ordinary skill in the art is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 15
- Expert testimonyPetitioner expert creditedDecided for petitioner
“We have reviewed the arguments provided by Patent Owner and determine such arguments are insufficient to have Mr. Maltiel’s declaration excluded in its entirety. Rather, it is within our discretion to assign the appropriate weight to be accorded evidence. See 37 C.F.R. § 42.65(a); see also, e.g., Yorkey v. Diab, 601 F.3d 1279, 1284 (Fed. Cir. 2010) (holding the Board has discretion to give more weight to one item of evidence over another “unless no reasonable trier of fact could have done so”); In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) (“[T]he Board is entitled to weigh the declarations and conclude that the lack of factual corroboration warrants discounting the opinions expressed in the declarations.”); and Velander v. Garner, 348 F.3d 1359, 1371 (Fed. Cir. 2003) (“In giving more weight to prior publications than to subsequent conclusory statements by experts, the Board acted well within [its] discretion.”). Based on the record before us, we are not persuaded that we should give the entirety of Mr. Maltiel’s declaration no weight.” slip op. at 16
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“8–14. Pet. 30–37, 44–49. Notwithstanding Patent Owner’s arguments, which we have considered and which we address below, we are persuaded by Petitioner’s showing, which we adopt as our own findings and conclusions, that claims 1–14 are unpatentable under 35 U.S.C. § 102 as anticipated by Best.” slip op. at 24
Patent outcomesUS 8,874,831 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,874,831 - SK Hynix Inc. / SK Hynix America Inc. et al. v. Netlist, Inc.All claims unpatentablePTAB · Jul 5, 2018 · IPR2017-00561 · APJ Bryan F Moore · IPR · Final written decision
Claims 2–7 were held unpatentable as obvious over Averbuj and Tsern; trial as to claim 1 was terminated based on collateral estoppel.
RulingsFinal written decision- PTAB / AIA Trials › §315(e) estoppelEstoppel appliesDecided for petitioner
“Patent Owner asserts that “collateral estoppel does not apply to the application of the claim 1 limitations in assessing dependent claims 2–7.” Id. at 2. Patent Owner further asserts “[a] party seeking to apply collateral estoppel based on a prior action must show that (1) the identical issue was actually litigated; (2) the issue was actually decided in a final decision on the merits; (3) the issue was necessary to the final decision; and (4) the party being estopped was adequately represented in the prior action [i.e. “the United Access test”].” Id. at 2 (citing United Access Techs., LLC v. CenturyTel Broadband Services LLC, 778 F.3d 1327, 1331 (Fed. Cir. 2015)). We agree that this is the proper test to use to assess the applicability of collateral estoppel. Nevertheless, we note United Access applies collateral estoppel in a different context and suggests that issue preclusion can be applied in an obvoisness challenge, even if the final decision on the original issue was considered under an anticipation challenge. In particular, in United Access it was noted that “[i]ssue preclusion [traditionally called “collateral estoppel”3] applies to issues litigated in prior disputes . . . [and, thus, i]t thus makes no difference that the earlier no-damages-due-to-competition ruling arose in a case under the Truth in Negotiation Act and that this dispute arises under the False Claims Act and the common law.” United Access, 778 F.3d. at 726. The “issue” of whether Averbuj teaches the limitations of claim 1 is identical to the issue in and has been litigated in the ‘970 IPR which found that Averbuj anticipates the limitations of claim 1.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“1475, 1480 (Fed. Cir. 1994). Only those terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., 868 F.3d 1013, 1017 (Fed. Cir. 2017).” slip op. at 16
- Skill levelSkill level petitioner adoptedDecided for petitioner
“the ‘434 Patent would have been someone with “a Bachelor’s degree in electrical engineering, computer engineering, or in a related field and at least one year of work experience relating to memory systems, and would be familiar with the design of memory devices, memory modules, and BIST.” Pet. 9 (citing Ex. 1003 ¶ 51). Patent Owner asserts through its declarant: [A Person of ordinary skill in the art at the time of the invention would have been] working on the design of memory devices, would have at least a Bachelor of Science degree in Electrical and/or Computer Engineering, and at least five years of industry experience designing memory devices and controllers. Alternatively, one of ordinary skill in the art would have a Master of Science degree in Electrical and/or Computer Engineering, and at least three years of industry experience designing memory devices and controllers. Also alternatively, one of ordinary skill in the art would have a Doctorate degree in Electrical and/or Computer Engineering, and have at least one year of industry experience designing memory devices and controllers. I agree with Petitioner’s expert that the memory industry requires a POSITA with industry experience. Ex. 2010 ¶¶ 32–33. 16 Neither party has argued that the difference between the parties’ articulated level of skill should change the analysis as to patentability. Therefore, we adopt Petitioner’s articulation of the level of skill, above, and acknowledge that, commensurate with that articulation of the level of skill, the level of ordinary skill in the art is also reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 16
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed
“Pet. 41. In other words, Petitioner asserts that because a BIST unit can be incorporated into a chip mounted on a PCB and because memory module 12 is part of the BIST unit, memory unit 12 is mounted on a PCB. We disagree. Unlike claim 1, which simply requires the memory unit is “on” the PCB, claim 2 requires that the memory module be a “physically separate component” and “mounted” on the PCB. Petitioner has not shown sufficient support for its broad reading that a module which is a circuit embedded in a larger circuit included in a chip may be considered a physically separate component mounted on a PCB. Claims 3–7 depend from claim 2, and the Petition fails to provide additional prior art disclosures that cure the deficiency with respect to claim 2; that is, disclosure of separate components 22 mounted on a printed circuit board in Averbuj. Pet. 41–48. Thus, Petitioner has failed to establish, by a preponderance of the evidence, its assertion that claims 2–7 are anticipated by Averbuj.” slip op. at 22
Patent outcomesUS 8,001,434 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,001,434 - SK Hynix Inc. / SK Hynix America Inc. et al. v. Netlist, Inc.All claims unpatentablePTAB · Jul 5, 2018 · IPR2017-00562 · APJ Bryan F Moore · IPR · Final written decision
Claim 4 was held unpatentable as obvious over Averbuj and Tsern; the trial was terminated as to claim 1 based on collateral estoppel.
RulingsFinal written decision- Expert testimonyPetitioner expert discountedOther
“Active Video Networks, Inc. v. Verizon Commc’ns, Inc., 694 F.3d 1312, 1328 (Fed. Cir. 2012). The court noted that because the expert “failed to explain how specific references could be combined, which combination(s) of elements in specific references would yield a predictable result, or how any specific combination would operate or read on the asserted claims,” the expert’s testimony was conclusory and bore no relation to any specific combination of prior art elements. Id. at 1327. Although the declarant’s testimony here goes further than in Active Video, it fills in gaps about how the combination would be made with only conclusory testimony that appears to be tainted with hindsight.” slip op. at 26
- Skill levelSkill level petitioner adoptedDecided for petitioner
“C. Level of Skill Analysis Petitioner asserts “[a] a person of ordinary skill in the art at the time of the ‘501 Patent would have been someone with “a Bachelor’s degree in electrical engineering, computer engineering, or in a related field and at least one year of work experience relating to memory systems, and would be familiar with the design of memory devices, memory modules, and BIST” Pet. 6 (citing, inter alia, Ex. 1003 ¶ 51). Patent Owner asserts through its declarant: [A Person of ordinary skill in the art at the time of the invention would have been] working on the design of memory devices, would have at least a Bachelor of Science degree in Electrical and/or Computer Engineering, and at least five years of industry experience designing memory devices and controllers. Alternatively, one of ordinary skill in the art would have a Master of Science degree in Electrical and/or Computer Engineering, and at least three years of industry experience designing memory devices and controllers. Also alternatively, one of ordinary skill in the art would have a Doctorate degree in Electrical and/or Computer Engineering, and have at least one year of industry experience designing memory devices and controllers. I agree with Petitioner’s expert that the memory industry requires a POSITA with industry experience. Ex. 2010 ¶¶ 32–33. Neither party has argued that the difference between the parties’ articulated level of skill should change the analysis as to patentability. Therefore, we adopt Petitioner’s articulation of the level of skill, above, and acknowledge that, commensurate with that articulation of the level of skill, the level of ordinary skill in the art is also reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 15
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed
“a. Claim 1 Claim 1 is anticipated by Averbuj under the doctrine of collateral estoppel. See supra Section II. A. b. Claim 4 Claim 4 recites “[t]he memory system of claim 1, wherein the memory system comprises at least two physically separate integrated circuit packages, wherein each of the at least two physically separate integrated circuit packages comprises at least one data handler of the plurality of data handlers.” Petitioner asserts that Averbuj discloses that BIST units are “commonly incorporated into memory chips and other integrated circuits.” Ex. 1005 at ¶ [0003]. Because the memory interfaces are part of a BIST unit, Averbuj also discloses the memory interface (10, 41) is commonly incorporated into (memory or other) chips, or “integrated circuits.” Ex. 1012 at 98, 277; Ex. 1003 at ¶ 126. Averbuj further discloses that the device block (6) and the components contained therein, such as the sequencer (8) and the memory modules (12), are “distributed” and “located throughout an electronic device,” i.e., physically separated. See e.g., Ex. 1005 at ¶¶ [0013], [0015]; Ex. 1003 at ¶ 127. Since memory interfaces (10, 41) are also components of each device block (6), at a minimum, the different sets of memory interfaces (10, 41) belonging to different device blocks (6) must also be physically separated. Ex. 1003 at ¶ 127. Averbuj also discloses that the various integrated circuits or chips of an electronic device are “mounted on a circuit board,” indicating that the integrated circuits and chips comprising the electronic device are packaged integrated circuits or chips. Ex. 1005 at ¶ [0005]; Ex. 1016 at 1:15-27; Ex. 1003 at ¶ 128. Therefore, Averbuj discloses that the memory interfaces (each containing a “data handler”) of different device blocks (which comprise a “memory system”) must be distributed across “at least two physically separate integrated circuit packages.” Ex. 1003 at ¶ 129. Pet. 30–31. In other words, Petitioner asserts that because the sequencer can be” slip op. at 21
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed
“There must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” Innogenetics, N.V. v. Abbott Labs., 512 F.3d 1363, 1373 (Fed. Cir. 2008) (internal quotations omitted) (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). For example, in ActiveVideo Networks, Inc. v. Verizon, our reviewing court 7 Patent Owner chose not to request additional briefing to address this ground and arguments in the Preliminary Response are generally waived (Paper 8, 2–3), however, we acknowledge these arguments due to the unusual circumstance created by the Supreme Court’s decision in SAS and to explain the background in the context of Patent Owners’ Motion to Strike. held that the following expert testimony on the motivation to combine was deficient as a matter of law: [Y]ou wanted to build something better. You wanted a system that was more efficient, cheaper, or you wanted a system that had more features, makes it more attractive to your customers, because by combining these two things you could do something new that hadn’t been able to do before. Active Video Networks, Inc. v. Verizon Commc’ns, Inc., 694 F.3d 1312, 1328 (Fed. Cir. 2012). The court noted that because the expert “failed to explain how specific references could be combined, which combination(s) of elements in specific references would yield a predictable result, or how any specific combination would operate or read on the asserted claims,” the expert’s testimony was conclusory and bore no relation to any specific combination of prior art elements. Id. at 1327. Although the declarant’s testimony here goes further than in Active Video, it fills in gaps about how the combination would be made with only conclusory testimony that appears to be tainted with hindsight. As to other of Petitioner’s arguments supported by its declarant, we find those to employ hindsight to piece together the device as claimed. The expert provides a host of rationales for separating the components of Averbuj into separate ICs including structures of Tsern (Ex. 1003 ¶ 143) and other secondary references. We acknowledge that Tsern contains structures that suggest the claimed configuration of the data handlers, but in this ground Petitioner does not assert Tsern as a reference, rather simply as evidence of the knowledge of one of skill in the art. Pet. 34–38. Relying on knowledge in the art does not obviate the need to prove a reference is prior art as of the critical date and show a motivation to combine existing slip op. at 25
Patent outcomesUS 8,359,501 unpatentable§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,359,501 - SK Hynix Inc. / SK Hynix America Inc. et al. v. Netlist, Inc.All claims unpatentablePTAB · Jul 5, 2018 · IPR2017-00577 · APJ Bryan F Moore · IPR · Final written decision
Claims 1–3, 7, 8, and 10–12 are unpatentable as obvious over Halbert and Amidi; the other asserted grounds did not establish unpatentability.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Neither party has argued that the difference between the parties’ articulated level of skill should change the analysis as to patentability. Therefore, we adopt Petitioner’s articulation of the level of skill and acknowledge that the level of ordinary skill in the art is also reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. 10 Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“C. Claim Construction Analysis We determine that it is not necessary to provide an express interpretation of any term of the claims.” slip op. at 11
- BurdenNot shown unpatentable
“written to or read from simultaneously. Pet. 37–41. In particular, Petitioner asserts that Halbert’s directing of data, during a write operation, from the system memory data bus to registers 126 and 128 in successive clock cycles means that data being received by the memory devices corresponding to registers 126 and 128, respectively (e.g., ranks 140 and 142, respectively), occurs in successive clock cycles. Thus, according to Petitioner, “those memory devices associated with register 126 (i.e. Rank 140) receive data transmission from the system memory controller in the first clock cycle, but not in the second clock cycle . . . [and] those memory devices associated with register 128 (i.e., Rank 142) receive data transmissions from the system memory controller in the second clock cycle, but not in the first clock cycle.” Id. at 38. Therefore, according to Petitioner, Halbert does not, and cannot, write to the memory devices in ranks 140 and 142 simultaneously, because the memory devices in ranks 140 and 142 do not receive data concurrently. Id. In its Preliminary Response, Patent Owner asserts8 while data is sequentially latched onto registers 126 and 128, that data is then concurrently, not sequentially, written to memory device array 140/142—such operation is illustrated in Fig. 4, 8 Patent Owner chose not to request additional briefing to address this ground and arguments in the Preliminary Response are generally waived (Paper 8, 2–3), however, we acknowledge these arguments due to the unusual circumstance created by the Supreme Court’s decision in SAS. 15 above. Thus, all of Halbert’s memory devices are selected or enabled concurrently such that Halbert can write to all of its memory devices simultaneously. This is not, and is exactly counter to, the Petitioner’s assertions that the memory devices in ranks 140 and 142 receive—and thus, store—data sequentially. Prelim. Resp. 27–28. We agree. Petitioner has not explained how latching data to registers 126 and 128 is data transmission between a memory controller and a memory module when registers 126 and 128 are outside of the memory module. Moreover, Petitioner’s arguments and evidence with respect to claims 2, 3, 7, 8, and 10–12 do not cure this deficiency.” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“Based on Petitioner’s citations to specific prior art disclosures and supporting evidence, we are persuaded that Petitioner sets forth sufficient articulated reasoning with rational underpinning to support the legal conclusion that it would have been obvious to modify the teachings of Halbert with Amidi’s teachings to include rank select functionality. Pet. 64– 66. For example, Petitioner asserts: 19 To employ this chip select functionality of Amidi in the system of Halbert would have been only the arrangement old elements with each performing the same function it had been known to perform and yielding no more than one would expect from such an arrangement, i.e., the predictable result of operating each rank at desired times, and well within the level of ordinary skill to achieve. EX1003 ¶¶175-176. Moreover, a person of ordinary skill in the art would have been motivated to use the chip select functionality of Amidi in the system of Halbert to permit the use of lower density, and therefore cheaper and more readily available, memory in the system of Halbert, while using the existing address and data signal lines of Halbert. EX1019, ¶[0008]; see also id., ¶¶ [0002- 0012]; EX1003 ¶177. A skilled artisan would also have been motivated to include such prior art chip selection signals in Halbert in order to follow the traditional design of memory ranks including the use of traditional memory devices and the traditional address signals, as Halbert explains. EX1005, 3:55-57; EX1003 ¶178. Furthermore, Halbert suggests such a use by disclosing that “[m]any other variations on the illustrated embodiments are possible. For instance, . . . [t]he illustrated examples also show two ranks of memory, but other numbers of ranks are also possible.” EX1005, 9:20-26. Skilled artisans at the time would have understood that, in case the number of ranks is increased, chip/bank select signals would need to be used to activate some but not all of the ranks. See, e.g., EX1019 at FIGS. 5, 6A-6B (showing logic circuitry to generate chip select signals for” slip op. at 19
Patent outcomesUS 8,516,185 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,516,185 - EMC Corporation v. Actividentity, Inc.All claims unpatentablePTAB · Jul 2, 2018 · IPR2017-00338 · APJ Kevin C Trock · IPR · Final written decision
Claims 1, 3, 5, 7–9, 11, 13, 15, 16, and 19 are unpatentable as anticipated by Wood and obvious over Wood combined with Neuman IETF.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“Exclusive Licensee’s Response does not appear to identify or provide any assessment of the level of skill possessed by an ordinary artisan in the field of the claimed invention at the time of filing. Exclusive Licensee’s declarant, Dr. David Goldschlag, however, testifies that a person of ordinary skill in the art would have had a bachelor’s degree in electrical engineering, computer engineering, computer science, or equivalent field with three or four years of academic or industry experience in communications. This assessment would include a person with a master’s degree in the aforementioned fields with coursework in computer network security and one or two years of experience in communications. Ex. 2007 ¶ 20. We find that a person of ordinary skill in the art in the field of the ’685 patent is a person who has a bachelor’s degree in computer science, computer engineering, electrical engineering, or equivalent field and 3–4 years of professional or academic experience in computer systems, network security, or network communications, or a master’s or doctorate degree and 1–2 years of professional experience in computer systems, network security, or network communications, or equivalent academic experience. C. Prior Art References and Alleged Grounds of Unpatentability” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“The ’685 patent does not define expressly the term “security policy.” Petitioner’s proffered construction, that a “security policy” is “rules specifying conditions for accessing a secure resource,” is generally consistent with the use of the term in the Specification, including the claims. For example, the Specification explains “[i]n dependence upon the security policy . . . an authorization method . . . is selected.” Ex. 1001, 7:50–54. The Specification also explains, “the authorization method is varied because a security policy . . . is different.” Id. at 6:3–7. The Specification provides some examples of the parameters or conditions that a security policy considers. For instance, a security policy may consider the requested time of access, and may indicate that no access is provided between the hours of midnight and 6:00 a.m. Ex. 1001, 7:55–58. The Specification indicates that a security policy may vary based on the location of the user requesting access. Id. at 9:55–62. The Specification also indicates a security policy may require the use of different user authentication devices. Id. at 8:23–45, 9:8–15, 9:28–37; Ex. 1002 ¶ 42. Therefore, we determine that the broadest reasonable interpretation of the claim term “security policy” consistent with its use in the ’685 patent is “a rule or set of rules specifying conditions for accessing a secure resource.”” slip op. at 7
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Exclusive Licensee’s arguments, however, are unavailing. Wood’s Figure 4 and the accompanying text demonstrate that Wood discloses recording (encoding) the received user identification data. Figure 4 of Wood, shown below, illustrates relations between login credentials, session credentials and a cookie encoding of a session token. Ex. 1011, 4:15–16. Figure 4 of Wood shown above, annotated by Petitioner, shows the encoding of login credentials. As Wood explains, [t]ypically, login credentials encoded in login credentials structure 410 are obtained from a principal via browser client and serve as evidence that the principal (e.g., a human user) is entitled to a particular identity. Accordingly, login credentials structure 410 encodes a userId and a domainId within which the userId should uniquely correspond to a principal. Specific login credentials, e.g., a password, a certificate, results of a biometric process, a response to an Enigma challenge or results of a smart card interrogation, etc. are encoded in login credentials structure 410, as a tagged value. . . . Of note, principal ids, authorizations and other contents encoded in the session credential may be read by components of the security architecture, . . . security architectures employing facilities described herein ensure that information contained in the session credential is provably constant once set by an authentication service. . . . . . . . Referring again to session credentials structure 420, a session id, a principal id, a trust level, group ids, a creation time and an expiration time are encoded in both in encrypted portion 421 and clear text portion 422. The session id is a unique identifier for a persistent session maintained by the security architecture. . . . Principal id encodes an identifier for a principal to which the security architecture has resolved login credentials. For example, a login credential including a username jdoe and a password corresponding to jdoe may be resolved by the security architecture to a unique principal id associated with John. Q. Doe of the shipping and receiving department, having an employee badge number of 12345, etc.” slip op. at 26
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“Exclusive Licensee appears to conflate Petitioner’s arguments. Petitioner first argues that it would have required no more than routine skill in the art to combine the teachings of Wood and Neuman IETF, because Neuman IETF’s framework was designed expressly to be adapted for integration with many different types of systems for authorizing users to access resources. Pet. 62. Petitioner then argues that a person of ordinary skill would have had reason to do so because he would have readily recognized that the risk associated with access requests differ with time, location, and/or type of communication link. Id. at 65. Petitioner argues that a person of ordinary skill would have understood that by taking these factors into account, an access control system can achieve more fine-grained access control that can be tailored according to different circumstances. Id. Petitioner points out that Wood describes such a rationale. Id. (citing Ex. 1011, 2:49–55; Ex. 1002 ¶ 154). Petitioner, therefore, provides a rational basis to combine Wood and Neuman IETF along with sufficient reason to do so. Whether Neuman IETF expressly uses the word “risk” is of no moment, as long as a person of ordinary skill in the art would have appreciated the benefits of combining the teachings of Wood and Neuman IETF and would have had reason and the ability to do so. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 417 (2007) (“[I]f a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.”). d. Conclusion on Claims 1, 9, and 19 We find, on the basis of the evidence and explanation provided by Petitioner, that the combination of Wood and Neuman IETF teaches or suggests the recited limitation “determining a security policy from a plurality of predetermined security policies based on previously stored policy data and the received indication of the type of communication link between the workstation and the security server, the geographic location of the workstation, or the time of access of the workstation” of independent claim 1, and similarly recited limitations of independent claims 9 and 19. For the reasons stated above, we are persuaded that Petitioner has shown by a preponderance of the evidence that the combination of the teachings of Wood and Neuman IETF teaches or suggests all of the limitations recited by independent claims 1, 9, and 19 and that a person of ordinary skill in the art at the time of invention would have had reason to combine the teachings of the references.” slip op. at 43
Patent outcomesUS 9,098,685 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 9,098,685 - Apple Inc. / Fitbit, Inc. v. Valencell, Inc.All claims unpatentablePTAB · Jun 5, 2018 · IPR2017-00321 · APJ James B Arpin · IPR · Final written decision
Claims 14–21 are unpatentable as obvious; the Board denied the contingent motion to amend substitute claims 22–29.
RulingsFinal written decision- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“review of claims 14–21 (“the challenged claims”) of U.S. Patent No. 8,923,941 B2 (Ex. 1001, “the ’941 patent”) under 35 U.S.C. §§ 311– 319. Paper 2 (“Pet.”). Valencell, Inc. (“Patent Owner”) filed a Preliminary Response. Paper 6 (“Prelim. Resp.”). We instituted the instant inter partes review as to the challenged claims.2 Paper 11 (“Inst. Dec.”). Fitbit, Inc. (also “Petitioner”) filed a corresponding Petition (IPR2017-01556, Paper 2), accompanied by a Motion for Joinder (IPR2017-01556, Paper 3), challenging claims 14–21 of the ’941 patent, and we granted the Motion for Joinder and instituted review of the challenged claims based on the corresponding Petition (IPR2017-01556, Paper 9).” slip op. at 2
- BurdenFwd all claims unpatentableUnpatentable
“A patent claim is unpatentable under 35 U.S.C. § 103(a) if the differences 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.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved 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;5 and (4), when in evidence, objective evidence of nonobviousness, i.e., secondary considerations.6 Graham v. 5 Petitioner proposes an assessment of the level of ordinary skill in the art. Pet. 11; see Ex. 1003 ¶ 54. Petitioner’s declarant, Dr. Sarrafzadeh, and Patent Owner’s declarant, Dr. Pollonini, exceeds this assessed level. Ex. 1004; Ex. 2010 ¶¶ 6–11. Patent Owner does not contest Petitioner’s assessment or propose an alternative assessment. See MTA 11. To the extent necessary, we adopt Petitioner’s assessment. 6 In the instituted proceeding, Patent Owner does not raise arguments or present evidence based on the presence of such objective evidence of nonobviousness. See In re Applied Materials, 692 F.3d 1289, 1299 (Fed. Cir. 2012) (“The party seeking the patent bears the burden to overcome the prima facie case of obviousness with evidence of secondary considerations, such as commercial success.”); Medtronic, Inc. v. Nuvasive, Inc., Case IPR2014-00087, 2015 WL 1546574, at *11 (PTAB 2015) (“Although it is Patent Owner's burden to introduce evidence supporting such objective indicia, see In re Huang, 100 F.3d 135, 139 (Fed. Cir. 1996), the ultimate burden of persuasion never shifts to Patent Owner, see 35 U.S.C. § 316(e).”), aff’d, In re Nuvasive, Inc., 689 Fed. Appx. 954 (Fed. Cir. 2017); but see Prelim. Resp. 4–6. Therefore, this factor does not play into our analysis of Petitioner’s challenges to any claim on any ground. John Deere Co., 383 U.S. 1, 17–18 (1966). Nevertheless, the Supreme Court cautions us against “the temptation to read into the prior art the teachings of the invention in issue.” Graham, 383 U.S. at 36.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionDecided for patent owner
“6. “PPG sensor” (claims 14–21) In the Institution Decision, we adopted Patent Owner’s proposed construction of the term “PPG sensor” as the broadest reasonable interpretation of the term. Id. at 10–11. In the Patent Owner Response, Patent Owner proposes a slight modification to this interpretation (PO Resp. 9), to which Petitioner does not object (see Reply 1–4). Patent Owner now contends that the broadest reasonable interpretation of the term “PPG sensor” is “an optical sensor which obtains a plethysmogram that results from blood flow modulations caused by the subject’s heartbeat.” PO Resp. 9 (emphasis added); see Ex. 2005, 1. We agree that the term should include express reference to “an optical sensor,” rather than merely to “an optically obtained plethysmogram.” Inst. Dec. 10; see Ex. 1001, 1:64–2:6. We determine that our previous construction, as modified by Patent Owner, is the broadest reasonable interpretation of this term.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“have had reason to combine the teachings of Kosuda and Maekawa in the manner proffered by Petitioner. Initially, we note that although Patent Owner has suggested an alternative solution to the signal-to-noise problem, neither Patent Owner nor its declarant provides support for their contention that the alternative solution is superior to that taught by the combination of the teachings of Kosuda and Maekawa. See PO Resp. 24; Ex. 2010 ¶ 90. But even if it had, as Petitioner notes, “the law does not require that a particular combination be the preferred, or the most desirable, combination described in the prior art in order to provide motivation for the claimed invention.” Reply 8; see In re Fulton, 391 F.3d 1195, 1200 (Fed. Cir. 2004) (“The question is whether there is something in the prior art as a whole to suggest the desirability, and thus the obviousness, of making the combination, not whether there is something in the prior art as a whole to suggest that the combination is the most desirable combination available.” (emphasis added)). Thus, the existence of potentially superior alternatives does not negate the combination of teachings proposed by Petitioner. Accordingly, we are persuaded that Petitioner demonstrates sufficiently that a person of ordinary skill in the art would have had reason for combining the teachings of Kosuda and Maekawa to achieve the device recited in claim 14 of the ’941 patent.” slip op. at 29
Patent outcomesUS 8,923,941 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,923,941 - Inauth, Inc. v. Msignia, Inc.Institution deniedPTAB · May 10, 2018 · IPR2018-00150 · APJ James B Arpin · IPR · Institution
The Board denied institution on claims 1–25 because Petitioner did not show a reasonable likelihood that any challenged claim was unpatentable over the asserted grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros. v. Union Oil Co., 814 F.2d 628, 631 (Fed. Cir. 1987). The elements must be arranged as required by the claim, but this is not an ipsissimis verbis test. See In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). Moreover, “it is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom.” Application of Preda, 401 F.2d 825, 826 (CCPA 1968). Nevertheless, unless a reference discloses within the four corners of the document not only all of the limitations claimed but also all of the limitations arranged or combined in the same way as recited in the claim, it cannot be said to prove prior invention of the thing claimed, and thus, cannot anticipate under 35 U.S.C. § 102. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008) (emphasis added); accord In re Arkley, 455 F.2d 586 (CCPA 1972). slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“Petitioner and Patent Owner agree that only the term: “generating a challenge” recited in each independent claim requires express construction. Pet. 13; Prelim. Resp. 4–5; see Paper 11. Moreover, Petitioner and Patent Owner agree that “generating a challenge” should be construed as “generating a request for information.” Pet. 13; Prelim. Resp. 4. Nevertheless, Patent Owner further clarifies that the “challenge” is a challenge to the computer that is to be authenticated. Prelim. Resp. 4. We believe that this clarification is apparent from the context in which the construed term is used in the independent claims. See Pet. 13 (“As used in the specification, the challenge is a request to the computer to provide information based on selected minutia.”). On this record and for purposes of this Decision, we adopt the parties’ agreed upon construction, in view of Patent Owner’s clarification that the challenge is to the computer seeking authentication, as the broadest reasonable interpretation of this term.” slip op. at 10
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)
“A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros. v. Union Oil Co., 814 F.2d 628, 631 (Fed. Cir. 1987). The elements must be arranged as required by the claim, but this is not an ipsissimis verbis test. See In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). Moreover, “it is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom.” Application of Preda, 401 F.2d 825, 826 (CCPA 1968). Nevertheless, unless a reference discloses within the four corners of the document not only all of the limitations claimed but also all of the limitations arranged or combined in the same way as recited in the claim, it cannot be said to prove prior invention of the thing claimed, and thus, cannot anticipate under 35 U.S.C. § 102. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008) (emphasis added); accord In re Arkley, 455 F.2d 586 (CCPA 1972). slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of success
“With respect to Claims 1, 24, and 25, to the extent Patent Owner contends that Etchegoyen does not anticipate because it does not disclose a single embodiment that uses both the request/response protocol (i.e., challenge/response protocol) to obtain a fingerprint and the typical-upgrade ratio to analyze the fingerprint, it would have been obvious to a [person of ordinary skill in the art] to modify the embodiments disclosed to include both aspects. Id. at 37 (citing Ex. 1003 ¶ 151). Patent Owner contends, however, that Etchegoyen fails to disclose the limitations of claim 1 relating to “anticipated changes” including “storing information associated with one or more identities, wherein the information stored for an identity includes (a) data values associated with that identity; and (b) information regarding anticipated changes to one or more of the stored data values associated with that identity” and “determining whether the response is allowable, wherein such determining comprises using the stored information regarding anticipated changes to the stored data values associated with the identity to determine whether a data value used to form the response is based on an acceptable change to a corresponding stored data value.” Prelim. Resp. 7– 11. For the reasons discussed below, we are not persuaded that Petitioner has shown a reasonable likelihood of prevailing in its assertion that Etchegoyen discloses each and every element or teaches or suggests all of the limitations recited in independent claims 1, 24, and 25.” slip op. at 18
Claim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 9,559,852 - Superior Communications, Inc. v. Voltstar Technologies, Inc.All claims unpatentablePTAB · Apr 20, 2018 · IPR2017-00067 · APJ Christa P Zado · IPR · Final written decision
Claims 4, 11, 12, 16–18, and 20–22 are unpatentable under § 103 as obvious over the stated combinations of prior art.
RulingsFinal written decision- PTAB / AIA Trials › §315(e) estoppelEstoppel does not applyDecided for petitioner
“The petitioner in an inter partes review of a claim in a patent under this chapter that results in a final written decision under section 318(a), or the real party in interest or privy of the petitioner, may not request or maintain a proceeding before the Office with respect to that claim on any ground that the petitioner raised or reasonably could have raised during that inter partes review. (Emphasis added). The language of the statute makes clear § 315(e) applies to grounds the petitioner raised or reasonably could have raised during an “inter partes review . . . that results in a final written decision under 35 U.S.C. § 318(a).” The statute does not refer to grounds that were raised or reasonably could have been raised during reexamination. Because the prior proceeding was a reexamination proceeding under pre-AIA 35 U.S.C. § 311, not an inter partes review under post-AIA 35 U.S.C. § 311, and did not result in a final written decision under § 318(a), Petitioner is not estopped under § 315(e) from bringing this inter partes review.” slip op. at 13
- PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner
“Section 315(b) provides that: An inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent. 35 U.S.C. § 315(b). Patent Owner alleges a privy of Petitioner, AT&T,10 was served with a complaint on or about February 29, 2012 and Petitioner was served with a complaint on or about February 1, 2013. PO Resp., 9; see also Prelim. Resp. 8. Petitioner does not dispute that it was served with a complaint alleging infringement of the ’833 patent more than one year prior to filing the Petition in the instant proceeding. Pet. 3–5. Petitioner argues, however, that the instant proceeding is not barred under § 315(b) because the district court action resulting from the earlier-filed complaint was dismissed without prejudice pursuant to Federal Rule of Civil Procedure 41(a), leaving the parties “as though the action had never been brought.” Pet. 5 (citing Ariosa Diagnostics v. Isis Innovation Ltd., Case IPR2012-00022, slip op. at 17 (PTAB Sept. 2, 2014) (Paper 166)); see also Ex. 1008 (dismissal order). As we have noted in previous Board decisions, the “Federal Circuit has consistently interpreted the effect of such dismissals as leaving the parties as though the action had never been brought.” Oracle v. Click-to-call, Case IPR2013-00312, slip op. at 17 (PTAB Oct. 30, 2013) (Paper 26) (precedential); Macauto U.S.A. v. Bos GmbH & KG, Case IPR2012-00004, 10 Patent Owner adduces insufficient evidence that AT&T is a privy of Petitioner. In any event, the action against AT&T was consolidated with the action against Petitioner (PO Resp.), and both actions were dismissed, in a single consolidated order, without prejudice (Ex. 1008). slip op. at 15 (PTAB Jan. 24, 2013) (Paper 18) (citing Graves v. Principi, 294 F.3d 1350, 1356 (Fed. Cir. 2002); Bonneville Assocs., Ltd. P’ship v. Baram, 165 F.3d 1360, 1364 (Fed. Cir. 1999)). Because the effect of a voluntary dismissal without prejudice is to render the prior action a nullity, such action does not give rise to a statutory bar under 35 U.S.C. § 315(b).” slip op. at 15
- ExcludeMotion to exclude, deniedDenied
“J. Patent Owner’s Motion to Exclude Patent Owner filed a Motion to Exclude Evidence (Paper 29), Petitioner filed an opposition thereto (Paper 32), and Patent Owner filed a reply (Paper 33). Patent Owner seeks to exclude paragraphs 4–13 of the Declaration of Andrew S. Flior (Ex. 1018, “the Flior Declaration”), which relate to prior art searches relating to the ’833 patent obtained by Mr. Flior’s law firm. This evidence relates to arguments we need not, and do not, address regarding whether Petitioner is estopped under 35 U.S.C. § 315(e) from bringing this inter partes review. See supra Section II.D. Because we do not rely on, or reference, paragraphs 4–13 of the Flior Declaration in our Final Written Decision, Patent Owner’s Motion to Exclude Evidence is dismissed as moot.” slip op. at 65
- Skill levelSkill level petitioner adoptedDecided for petitioner
“For purposes of our determination below, we determine the level of ordinary skill in the art with respect to the ’833 patent is consistent with the assessment provided by Dr. Horenstein, which Patent Owner does not dispute. Accordingly, we adopt the level of ordinary skill in the art asserted by Petitioner. Also, we are guided by the level of ordinary skill in the art reflected by the prior art of record. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 8
Patent outcomesUS 7,910,833 unpatentable§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,910,833
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.