• Cisco Systems, Inc. / Juniper Networks, Inc. v. Orckit CorporationSome claims unpatentable
  PTAB · Oct 22, 2024 · IPR2024-00034 · APJ Kristen L Droesch · IPR · Final written decision

  Claims 1–13 and 17–20 are unpatentable over the stated obviousness grounds; claims 14–16 are not shown unpatentable because the cited art does not teach logic configured to determine concurrent failure probability.

  RulingsFinal written decision

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

    “We decline to adopt Patent Owner’s implicit construction that would require “selecting an entity pair from” all of the entity pairs of “said plurality of transport entities.” Contrary to Patent Owner’s arguments addressing the claim language, the plain language of claim 1 does not require the selection to be from all of the entity pairs of the plurality of transport entities for which an overall cost has been determined. The plain language of claim 1 also does not preclude the selection to be from a subset of the entity pairs of the plurality of transport entities for which an overall cost has been determined. Rather, dependent claim 9, through its dependence on claims 1 and 4, explicitly allows for the selection to be from a subset of the entity pairs of the plurality of transport entities. Patent Owner’s arguments advocate for the importation of limitations from the ’821 Patent Specification into the claim––namely the disclosure that all entity pairs of transport entities examined in step 220 of Figure 2 are input to the entity pair selection step 230. See PO Sur-reply 4. It is well settled that it is improper to read an extraneous limitation into a claim from the specification. See e.g., Commark Comm’s Inc. v. Harris Corp., 156 F.2d 1182, 1186 (Fed. Cir. 1998); E.I. du Pont de Nemours & Co. v. Phillips Petroleum Co., 849 F.2d 1430, 1433 (Fed. Cir. 1988). An extraneous limitation is “a limitation read into a claim from the specification wholly apart from any need to interpret what the patentee meant by particular words or phrases in the claim.” E.I. du Pont de Nemours, 849 F.2d at 1433. Accordingly, we construe “selecting an entity pair from said plurality of transport entities based at least upon said overall cost” according to its plain meaning, the scope of which includes selecting an entity pair from all or a subset of the entity pairs of the plurality of transport entities for which an overall cost has been determined.” slip op. at 11

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

    “As demonstrated in the analysis below, we need not construe “working entity” and “protection entity” in order to resolve the controversy before us. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). Other Claim Terms and Phrases As demonstrated in our analysis below, we need not construe any other claim terms or phrases to resolve the controversy before us. See, e.g., Realtime, 912 F.3d 1368, 1375.” slip op. at 13

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner does not dispute Petitioner’s level of ordinary skill for purposes of this Patent Owner Response.” PO Resp. 25. We adopt Petitioner’s definition of a person of ordinary skill in the art because it is supported by declaration testimony and is consistent with the level of skill reflected by the ’821 Patent Specification and the asserted prior art. slip op. at 14

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

    “Based on the entire record and after having considered Petitioner’s citations to Doshi, Guichard, and Dr. Houh’s testimony (Ex. 1003) as well as Patent Owner’s citations to Doshi, Guichard and Mr. Gomez’s testimony, we are persuaded Petitioner sets forth sufficient articulated reasoning with rational underpinning to support the conclusion that it would have been obvious to one of ordinary skill in the art to combine the teachings of Doshi with Guichard’s teachings of reoptimization of a LSP path triggered by an network change. See Pet. 20–22, 40–45; KSR, 550 U.S. at 418. Petitioner asserts that “[t]he results of the combination would have been predictable and there would have been a reasonable expectation of success since Doshi and Guichard both address the same technology.” Pet. 22 (citing Ex. 1003 ¶¶ 63–65). According to Petitioner, “a POSITA would have had a reasonable expectation of success in reoptimizing Doshi’s LSP pair selection because Guichard provides significant implementation details, including when to trigger reoptimization evaluations and how to ‘avoid network instabilities.’” Pet. 22–23 (citing Ex. 1003 ¶¶ 63–65; Ex. 1006, 5). Petitioner asserts that a reasonable expectation of success is evidenced by other skilled artisans that reoptimized similar systems. See Pet. 23 (citing Ex. 1003 ¶¶ 63–65; Ex. 1009, 136; Ex. 1010, 1; Ex. 1023, 34; Ex. 1034 ¶¶ 27–33, claim 19; Ex. 1035 ¶ 24). In support, Petitioner contends that “the combination would be within a POSITA’s skillset since Doshi already sets forth the calculation and selection techniques that would be utilized during the reoptimization evaluation.” Id. (citing Ex. 1003 ¶¶ 63–65). According to Petitioner, “since Doshi is already ‘monitoring and updating . . . network topology’ . . . event-based reoptimization evaluation per Guichard, would be directly applicable.” Id. (citing Ex. 1003 ¶¶ 63–65; Ex. 1005 ¶¶ 270–281).” slip op. at 38

  Patent outcomesUS 8,830,821 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,830,821
• Cisco Systems, Inc. / Juniper Networks, Inc. v. Orckit CorporationSome claims unpatentable
  PTAB · Oct 22, 2024 · IPR2023-00402 · APJ Kristen L Droesch · IPR · Final written decision

  Claims 1–13 and 17–20 are unpatentable over the Doshi and Guichard grounds; claims 14–16 were not shown unpatentable over Doshi, Guichard, and Xu.

  RulingsFinal written decision

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

    “require “selecting an entity pair from” all of the entity pairs of “said plurality of transport entities.” Contrary to Patent Owner’s arguments addressing the claim language, the plain language of claim 1 does not require the selection to be from all of the entity pairs of the plurality of transport entities for which an overall cost has been determined. The plain language of claim 1 also does not preclude the selection to be from a subset of the entity pairs of the plurality of transport entities for which an overall cost has been determined. Rather, dependent claim 9, through its dependence on claims 1 and 4, explicitly allows for the selection to be from a subset of the entity pairs of the plurality of transport entities. Patent Owner’s arguments advocate for the importation of limitations from the ’821 Patent Specification into the claim––namely the disclosure that all entity pairs of transport entities examined in step 220 of Figure 2 are input to the entity pair selection step 230. See PO Sur-reply 4. It is well settled that it is improper to read an extraneous limitation into a claim from the specification. See e.g., Commark Comm’s Inc. v. Harris Corp., 156 F.2d 1182, 1186 (Fed. Cir. 1998); E.I. du Pont de Nemours & Co. v. Phillips Petroleum Co., 849 F.2d 1430, 1433 (Fed. Cir. 1988). An extraneous limitation is “a limitation read into a claim from the specification wholly apart from any need to interpret what the patentee meant by particular words or phrases in the claim.” E.I. du Pont de Nemours, 849 F.2d at 1433. Accordingly, we construe “selecting an entity pair from said plurality of transport entities based at least upon said overall cost” according to its plain meaning, the scope of which includes selecting an entity pair from all or a subset of the entity pairs of the plurality of transport entities for which an overall cost has been determined.” slip op. at 11

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

    “As demonstrated in the analysis below, we need not construe “working entity” and “protection entity” in order to resolve the controversy before us. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). Other Claim Terms and Phrases As demonstrated in our analysis below, we need not construe any other claim terms or phrases to resolve the controversy before us. See, e.g., Realtime, 912 F.3d 1368, 1375.” slip op. at 13

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner does not dispute Petitioner’s level of ordinary skill for purposes of this Patent Owner Response.” PO Resp. 25. We adopt Petitioner’s definition of a person of ordinary skill in the art because it is supported by declaration testimony and is consistent with the level of skill reflected by the ’821 Patent Specification and the asserted prior art. slip op. at 14

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

    “Based on the entire record and after having considered Petitioner’s citations to Doshi, Guichard, and Dr. Houh’s testimony (Ex. 1003) as well as Patent Owner’s citations to Doshi, Guichard and Mr. Gomez’s testimony, we are persuaded Petitioner sets forth sufficient articulated reasoning with rational underpinning to support the conclusion that it would have been obvious to one of ordinary skill in the art to combine the teachings of Doshi with Guichard’s teachings of reoptimization of a LSP path triggered by an network change. See Pet. 20–22, 40–45; KSR, 550 U.S. at 418. Petitioner asserts that “[t]he results of the combination would have been predictable and there would have been a reasonable expectation of success since Doshi and Guichard both address the same technology.” Pet. 22 (citing Ex. 1003 ¶¶ 63–65). According to Petitioner, “a POSITA would have had a reasonable expectation of success in reoptimizing Doshi’s LSP pair selection because Guichard provides significant implementation details, including when to trigger reoptimization evaluations and how to ‘avoid network instabilities.’” Pet. 22–23 (citing Ex. 1003 ¶¶ 63–65; Ex. 1006, 5). Petitioner asserts that a reasonable expectation of success is evidenced by other skilled artisans that reoptimized similar systems. See Pet. 23 (citing Ex. 1003 ¶¶ 63–65; Ex. 1009, 136; Ex. 1010, 1; Ex. 1023, 34; Ex. 1034 ¶¶ 27–33, claim 19; Ex. 1035 ¶ 24). In support, Petitioner contends that “the combination would be within a POSITA’s skillset since Doshi already sets forth the calculation and selection techniques that would be utilized during the reoptimization evaluation.” Id. (citing Ex. 1003 ¶¶ 63–65). According to Petitioner, “since Doshi is already ‘monitoring and updating . . . network topology’ . . . event-based reoptimization evaluation per Guichard, would be directly applicable.” Id. (citing Ex. 1003 ¶¶ 63–65; Ex. 1005 ¶¶ 270–281).” slip op. at 38

  Patent outcomesUS 8,830,821 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,830,821
• Cisco Systems, Inc. v. Orckit CorporationSome claims unpatentable
  PTAB · Oct 8, 2024 · IPR2023-00714 · APJ Brent M Dougal · IPR · Final written decision

  Claims 1–5, 7–16, 18–22, and 24–26 are unpatentable as obvious over Vink and Patrick, with or without AAPA; claims 6, 17, and 23 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “understanding of a person of ordinary skill in the art at the time of the invention. Id. at 13, 17. Petitioner asserts that a person of ordinary skill in the art (“POSA” or “POSITA”) would have had a bachelor’s degree in computer science, computer engineering, electrical engineering, or equivalent training, or approximately two years of experience working in the field of information technology and networking . . . . Lack of professional experience can be substituted by additional education, and vice versa. Pet. 12 (citing Ex. 1003 ¶¶ 59–60). “Patent Owner does not dispute Petitioner’s proposed level of ordinary skill.” PO Resp. 19. We are persuaded that Petitioner’s proposal is consistent with the problems and solutions addressed in the ’904 patent and prior art of record. We adopt Petitioner’s definition of the level of skill for the purposes of this Decision.” slip op. at 6

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

    “Patent Owner argues “that ‘subscriber lines’ should be construed as ‘communication lines to users of subscription-based network services.’” Id. Petitioner does not dispute this construction directly, but rather argues that no construction is necessary. Reply 6. We determine that no terms need to be construed. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 7

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

    “Here however, we have found that it was known to connect LANs to external networks. See Ex. 1014, 6:23–28, Fig. 1; Ex. 1015, 1:6–9; Ex. 1016, 1:22–25; Ex. 1017, 1:7–11. We further agree with Petitioner’s uncontested point that “[t]echniques to further allow the communication system to access external networks by connecting the master to an external network were well-known in the art, as evidenced by Patrick and/or AAPA.” Pet. 24 (citing Ex. 1003 ¶¶ 74–88). The Petition focusses on combining the “communication systems” of Vink, Patrick and/or AAPA, as opposed to relying on a particular type of LAN. Thus, in contrast to Forest Lab’ys, we determine that the general or “generic” benefit of providing “access to a wider array of information,” where it was already known to provide external network access (e.g., the internet) to LANs,5 does provide a motivation to combine Vink and Patrick, with or without AAPA. See Intel Corp. v. Pact XPP Schweiz AG, 61 F.4th 1373, 1380–81 (Fed. Cir. 2023) (“There is a motivation to combine when a known 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.’” (quoting KSR, 550 U.S. at 417)).” slip op. at 20

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner

    “Patent Owner also argues that Vink “teaches against” hierarchical addressing because “doing so would eliminate the purported advantages associated with using a non-hierarchical system.” PO Resp. 36 (citing Ex. 2005 ¶ 69 (Patent Owner’s declarant making the same statement)). Patent Owner does not further discuss the reasoning behind this statement, identify the “purported advantages,” or even identify the relevant disclosure relied on in Vink. We decline to speculate as to Patent Owner’s position in this regard. We further note that “a given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate motivation to combine.” Medichem, S.A. v. Rolabo S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006).” slip op. at 19

  Patent outcomesUS 6,680,904 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,680,904
• Cisco Systems, Inc. / Dell Technologies Inc. et al. v. Corrigent CorporationSome claims unpatentable
  PTAB · Jul 3, 2024 · IPR2023-00169 · APJ Christopher L Ogden · IPR · Final written decision

  Claims 1–10, 12–22, and 24–30 are unpatentable as obvious under § 103(a); claims 11 and 23 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for patent owner

    “Relying on Dr. Houh’s testimony, Petitioner argues that a person of ordinary skill in the art “would have had a working knowledge of the networking art that is pertinent to the ’431 patent, including network communications techniques and bandwidth management methodologies,” and “would have had a bachelor’s degree in computer science, computer engineering, electrical engineering, or an equivalent, and two years of professional experience relating to network communications including the use of logical topologies and bandwidth management. Lack of professional experience can be remedied by additional education, and vice versa.” Pet. 11 (citing Ex. 1003 ¶¶ 18–20). Patent Owner adopts Petitioner’s proposed definition of the level of ordinary skill. PO Resp. 3. Because Petitioner’s articulation of that level of skill is uncontested, supported by testimonial evidence, and appears consistent with the types of problems and solutions in the ’431 patent, we adopt it for this decision. See, e.g., Ex. 1001, 1:5–6:14.” slip op. at 8

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

    “We see no significant difference between Petitioner’s proposed construction of in response to as “using” and Patent Owner’s proposed construction as “using information from.” Thus, it does not appear that the construction of in response to is genuinely in controversy. Thus, we need not construe the term for this decision. Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (alteration in original) (quoting Vivid Techs., Inc. v. Am. Sci & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). To the extent that we need to interpret any other claim language, we address that language below in the context of the prior art.” slip op. at 11

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

    “Considering the evidence of record on both sides, we find Petitioner’s argument persuasive that Baker teaches a “mapping” as recited in limitation 1.4. Baker’s disclosure of a “mapping” is explicit. See, e.g., Ex. 1005 ¶ 69, 83. And the evidence shows that this mapping occurs “in advance of a communication,” and may, for example, take place in the head node as part of the Administer Ring routine. See, e.g., Ex. 1005 ¶¶ 51–56, 76. That intermediate rings are ultimately configured to simply forward traffic “according to preconfigured rules” (Ex. 1005 ¶ 87) rather than to perform more complicated routing has no pertinent bearing on the process corresponding to the recited “mapping” step, which occurs “in advance” of the communication and any such forwarding (id. ¶ 76).” slip op. at 26

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

    “allocating bandwidth as part of its resources and that, in light of Wright, a person of ordinary skill in the art would have had reason to make this allocation for each of the links in of the physical topology (see Ex. 1006 ¶ 18 (“bandwidth allocation at each link”)) using information from both (1) the bandwidth requirements of Baker’s logical connections and (2) the mapping between Baker’s logical and physical topologies. As Petitioner persuasively argues, we find that Wright’s teaching of further details on ensuring the availability of bandwidth, in a similar context, would have been sufficient motivation for a person of ordinary skill in the art to incorporate Wright’s teachings into Baker’s method. We also determine that whether Wright, itself, teaches a mapping step is not the determining factor because Petitioner relies on Baker, not Wright, for teaching mapping limitation 1.4. Nevertheless, Wright does teach allocating bandwidth using the same information that would be available as a result of Baker’s mapping, including the logical (“restricted”) topology and the physical links associated with that topology. In particular, we agree with Petitioner that a person of ordinary skill in the art would have understood that allocating bandwidth to the physical links (step 510 of Figure 5) requires knowing which physical links correspond to Wright’s restricted topology. See Pet. 36; Pet. Reply 22–23; Ex. 1007 ¶ 17; Ex. 1003 ¶¶ 94–96; Ex. 1036 ¶¶ 49–51. We also disagree with Patent Owner that Petitioner has failed to adequately explain how a person of ordinary skill in the art would have modified Baker’s method to apply Wright’s teachings on bandwidth allocation, such as how Baker’s head node N0 would have been modified. See PO Resp. 31–32. Based on the level of ordinary skill and the level of detail in Baker, Wright, and the ’431 patent, and crediting Dr. Houh’s testimony, we find Petitioner’s argument persuasive that such modification would have been within the capability of someone of ordinary skill in the art. See Pet. 17–20 (citing Ex. 1003 ¶¶ 42–46, 48). And we agree with Petitioner that modifying Baker with Wright’s teachings would have been “nothing more than the combination of known elements . . . according to known methods . . . to yield predictable results.” Pet. 20 (citing Ex. 1003 ¶ 47).” slip op. at 32

  Patent outcomesUS 7,330,431 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,330,431
• Arista Networks, Inc. v. Corrigent CorporationSome claims unpatentable
  PTAB · Jul 3, 2024 · IPR2023-00515 · APJ Christopher L Ogden · IPR · Final written decision

  Claims 1–10, 12–22, and 24–30 are unpatentable as obvious under § 103; claims 11 and 23 were not shown unpatentable.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “For reasons explained in the Petition and Petitioner’s Reply, we agree with Petitioner that the Baker–Wright–Holender ’699 combination teaches summing the two bandwidths determined in “allocating” steps 12.5 and 12.7 to determine a total allocation for each of the physical links—motivated by the known need to ensure that bandwidths do not exceed the available physical link capacity. We disagree with Patent Owner that Holender ’699’s discussion of summing is merely describing a physical constraint. Holender ’699 teaches normalizing the logical link capacities, which requires summing the logical link capacities. See Ex. 1007, 8:38–51. We credit Dr. Houh’s testimony that this “confirms that [Holender ’699’s] teachings about summing are not simply ‘explaining a physical constraint,’ but actually performed.” Ex. 1036 ¶ 61. Holender ’699 refers to capacities 𝐶𝐶𝑗𝑗 as “logical link capacities for each logical link j over all logical networks. Ex. 1007, 6:52–55. But when mapped to physical links, Holender ’699 denotes capacities 𝐶𝐶𝑘𝑘𝑘𝑘 as “capacities of the logical links [𝑙𝑙] that need capacity on the k:th physical link.” Ex. 1007, 8:38–43. In other words, they are the capacities, or bandwidths, allocated to each physical link 𝑘𝑘 for implementing associated logical link 𝑙𝑙. See also id. at 6:60–67 (describing a matrix designed to indicate “if logical link j needs capacity on the k:th physical link.”).” slip op. at 50

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Relying on Dr. Houh’s testimony, Petitioner argues that a person of ordinary skill in the art “would have had a working knowledge of the networking art that is pertinent to the ’431 patent, including network communications techniques and bandwidth management methodologies,” and “would have had a bachelor’s degree in computer science, computer engineering, electrical engineering, or an equivalent, and two years of professional experience relating to network communications including the use of logical topologies and bandwidth management. Lack of professional experience can be remedied by additional education, and vice versa.” Pet. 3 (citing Ex. 1003 ¶¶ 18–20). Patent Owner adopts Petitioner’s proposed definition of the level of ordinary skill. PO Resp. 3. Because Petitioner’s articulation of that level of skill is uncontested, supported by testimonial evidence, and appears consistent with the types of problems and solutions in the ’431 patent, we adopt it for this decision. See, e.g., Ex. 1001, 1:5–6:14.” slip op. at 8

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

    “necessary because the construction does not resolve any contested issues. Pet. Reply 8–10 (citing Ex. 1005 ¶¶ 16, 62; Ex. 1006 ¶¶ 5, 24; Ex. 1003 ¶ 96; Ex. 1036 ¶¶ 49–50). But if a construction is necessary, Petitioner argues that the we should construe in response to as “using,” consistent with how the claimed invention is described in the ’431 patent. Id. at 10–11 (citing Ex. 1001, 2:52–6:10, 8:52–9:2; Ex. 1036 ¶¶ 7–11). Petitioner disagrees that the term means “based on” because limitation 1.3 uses the phrase based on, suggesting that the applicant made a conscious decision to use different language in limitation 1.5. Id. at 11 (citing Ex. 1036 ¶ 11). Patent Owner responds that its two proposed constructions are synonymous, and argues that Petitioner agrees that in response to encompasses “using” or “using information from.” PO Sur-reply 8 (citing Ex. 1001, 2:22–26). Patent Owner contends that its proposed construction resolves a controversy because in Patent Owner’s view, the Baker–Wright combination does not use information from the recited mapping to allocate bandwidth. Id. at 9–12 (citing Ex. 1006 ¶¶ 5, 17, 24; Ex. 2009, 52–56; Ex. 2008 ¶¶ 62–76). Similarly, Patent Owner contends that Holender ’699 does not teach mapping. Id. at 12–13 (citing Ex. 1007, 3:15–17; Ex. 2008 ¶¶ 89–92). We see no significant difference between Petitioner’s proposed construction of in response to as “using” and Patent Owner’s proposed construction as “using information from.” Thus, it does not appear that the construction of in response to is in controversy. Thus, we need not construe the term for this decision. Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (alteration in original) (quoting Vivid Techs., Inc. v. Am. Sci & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). To the extent that we need to interpret any other claim language, we address that language below in the context of the prior art.” slip op. at 10

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

    “We find Petitioner’s arguments persuasive that Baker teaches allocating bandwidth as part of its resources and that, in light of Wright and Holender ’699, a person of ordinary skill in the art would have had reason to make this allocation for each of the links in of the physical topology (see Ex. 1006 ¶ 18 (“bandwidth allocation at each link”)) using information from both (1) the bandwidth requirements of Baker’s logical connections and (2) the mapping between Baker’s logical and physical topologies. As Petitioner persuasively argues, we find that Wright’s teaching of further details on ensuring the availability of bandwidth, in a similar context, would have been sufficient motivation for a person of ordinary skill in the art to incorporate Wright’s teachings into Baker’s method. Holender ’669 provides further supporting disclosure. We also determine that whether Wright, itself, teaches a mapping step is not the determining factor because Petitioner relies on Baker, not Wright, for teaching mapping limitation 1.4. Nevertheless, Wright does teach allocating bandwidth using the same information that would be available as a result of Baker’s mapping, including the logical (“restricted”) topology and the physical links associated with that topology. In particular, we agree with Petitioner that a person of ordinary skill in the art would have understood that allocating bandwidth to the physical links (step 510 of Figure 5) requires knowing which physical links correspond to Wright’s restricted topology. See Pet. 33; Pet. Reply 22–23; Ex. 1007 ¶ 17; Ex. 1003 ¶¶ 94–96; Ex. 1036 ¶¶ 49–51. We also disagree with Patent Owner that Petitioner has failed to adequately explain how a person of ordinary skill in the art would have modified Baker’s method to apply Wright’s teachings on bandwidth allocation, such as how Baker’s head node N0 would have been modified. See PO Resp. 31–32. Based on the level of ordinary skill and the level of detail in Baker, Wright, and the ’431 patent, and crediting Dr. Houh’s testimony, we find Petitioner’s argument persuasive that such modification would have been within the capability of someone of ordinary skill in the art. See Pet. 9–12 (citing Ex. 1003 ¶¶ 42–46, 48; Ex. 1021 ¶¶ 100–101). And we agree with Petitioner that modifying Baker with Wright’s teachings would have been “nothing more than the combination of known elements . . . according to known methods . . . to yield predictable results.” Pet. 11–12 (citing Ex. 1003 ¶ 47; Ex. 1021 ¶¶ 102–104).” slip op. at 34

  Patent outcomesUS 7,330,431 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,330,431
• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. et al. v. Smart Mobile Technologies LLCSome claims unpatentable
  PTAB · Dec 1, 2023 · IPR2022-01005 · APJ Hyun J Jung · IPR · Final written decision

  Claims 1–3 are unpatentable over Raleigh, Sainton, and Gernert; claims 4–16 are not shown unpatentable because the proposed combination lacks adequate support for the challenged limitations.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We preliminarily adopted Petitioner’s proposed level of ordinary skill in the art. Inst. Dec. 8. Patent Owner does not dispute Petitioner’s proposal and does not propose its own level of ordinary skill in the art. See generally PO Resp.; see also Ex. 2004 ¶ 21 (Patent Owner’s declarant accepting Petitioner’s proposed level of ordinary skill in the art). Based on the full record, we maintain and affirm that one of ordinary skill in the art “would have had a Bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field, and at least two years of experience related to the design or development of wireless communication systems, or the equivalent” and that “[a]dditional graduate education could substitute for professional experience, or significant experience in the field could substitute for formal education.” Pet. 2 (citing Ex. 1003 ¶¶ 27–28).” slip op. at 8

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner

    “The ’291 patent addresses a problem with a cellular telephone or mobile device and the objects of the ’291 patent are related to the cellular telephone or mobile device. See, e.g., Ex. 1001, 1:22–55, 2:53–58. Thus, “what the inventors actually invented and intended to encompass by the claim” was related to a cellular telephone or mobile device. The ’291 patent indicates that the “portable handheld mobile device with a plurality of antennas” of the preamble of claim 5 should be treated as a limitation. We also agree with Patent Owner that “the preamble is limiting because several limitations in claim 5’s body ‘rely upon and derive antecedent basis from the preamble,’” specifically “a communication system” and “a plurality of antennas.” PO Resp. 6. The body of claim 5 recites “the system” repeatedly, and “the system” relies upon and derives antecedent basis from the preamble. Ex. 1001, 12:40, 12:44, 12:48, 12:54. The body also recites “the plurality of antennas” that also relies upon and derives antecedent basis from the preamble. Id. at 12:46, 12:50. Because the preamble of claim 5 recites that the “communication system includ[es] one or more communication modules and processors for use in a portable handheld mobile device with a plurality of antennas,” the preamble “recites essential structures for the claimed system,” as argued by Patent Owner. PO Resp. 6–7.” slip op. at 10

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundReasonable expectation not foundNot shown unpatentable

    “Petitioner’s citations to the record do not explain or support why Raleigh’s remote unit 170a would have been “easily modified as a mobile wireless device, such as those shown in Sainton or other similar references.” Ex. 1003 ¶ 70; Ex. 1004, Fig. 4; Ex. 1005, Figs. 4A, 4B; Ex. 1008, 1:34–37, 6:38–53; Ex. 1010, 1:16–27; Ex. 1036 ¶¶ 11–20. would not have been “easily modified as a mobile wireless device.” See, e.g., Ex. 2007, 1 (stating that, for MIMO, “[t]here are numerous situations where this degree of hardware complexity is undesirable – this is especially important for the mobile station (MS)”); Ex. 2008, 68 (stating that “[t]he introduction of MIMO techniques into wireless communication systems introduces a number of implementation challenges” “[t]he greatest challenges, however, lie within the terminal where the size, power and cost constraints must be overcome,” and “[r]esearch initiatives must address the viability of terminals employing MIMO or diversity techniques, with particular emphasis being placed on maximizing the performance of the terminal antenna system in realistic macrocellular deployment scenarios and within the restricted form factors of future terminals such as laptops, PDAs and handsets”). Petitioner does not address directly Patent Owner’s evidence that shows technical difficulties of implementing a system such as Raleigh’s in a portable handheld mobile device with its practical limitations on size to accommodate an antenna array, power and battery capacity for all the components of Raleigh combined with Sainton, and required heat dissipation for the proposed combination. See generally Pet. Reply. In view of the full record that includes scant argument and evidence supporting Petitioner’s argument that Raleigh’s remote unit 170a would have been “easily modified as a mobile wireless device” and Patent Owner’s extensive argument and evidence to the contrary, Petitioner does not show by a preponderance that one of ordinary skill in the art would have had a reasonable expectation of success in implementing Raleigh’s remote unit as a portable handheld mobile device. Pet. 14–15; PO Resp. 15–23; Ex. 1003 ¶ 70; Ex. 1004, Fig. 4; Ex. 1005, Figs. 4A, 4B; Ex. 1008, 1:34–37, 6:38–53; 40:4–7, 63:6–11, 63:24–66:6, 70:11–19; Ex. 1036 ¶¶ 11–20; Ex. 2004 ¶¶ 47–63; Ex. 2007, 1; Ex. 2008, 11, 68; Ex. 2009, 187; Ex. 2010, 2; Ex. 2011, 297; Ex. 2012, 1; Ex. 2013, 1804; Ex. 2016, 277; Ex. 2017, 206. Additionally, based on the full record, Petitioner’s proposed level of ordinary skill in the art would have been insufficient for modifying Raleigh’s remote unit into a portable handheld mobile device in view of Patent Owner’s evidence of technical challenges and practical limitations. See generally Pet.; Pet. Reply.” slip op. at 31

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

    “obviousness] involves weighing of the fact findings to conclude whether the claimed combination would have been obvious to an ordinary artisan.” Arctic Cat Inc. v. Bombardier Recreational Prods. Inc., 876 F.3d 1350, 1361 (Fed. Cir. 2017). Above, based on full record before us, we provide our factual findings regarding (1) the level of ordinary skill in the art, (2) the scope and content of the prior art, (3) any differences between the claimed subject matter and the prior art, and (4) objective evidence of nonobviousness. is consistent with the prior art of record, (2) Raleigh, Sainton, and Gernert teach or suggest all the limitations of claim 1, (3) one of ordinary skill in the art would have combined these references with a reasonable expectation of success, and (4) no objective evidence of nonobviousness has been presented in relation to any challenged claim. Weighing these underlying factual determinations, Petitioner persuades us by a preponderance of the evidence that claim 1 of the ’291 patent is unpatentable over Raleigh, Sainton, and Gernert. Arctic Cat, 876 F.3d at 1361.” slip op. at 62

  Patent outcomesUS 9,084,291 mixed
  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 9,084,291
• Samsung Electronics Co., Ltd / Samsung Electronics America, Inc. v. Staton Techiya, LLCSome claims unpatentable
  PTAB · Jul 13, 2023 · IPR2022-00281 · APJ Nathan A Engels · IPR · Final written decision

  Claims 1–4, 6, 13, 14, 17–19, and 25–27 are unpatentable as obvious; the remaining challenged claims were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that a person of ordinary skill in the art at the time of the alleged invention would have had “a bachelor’s degree in electrical engineering, computer science, or a similar field and two years of experience in the design of digital audio systems and associated signal processing.” Pet. 7 (citing Ex. 1002 ¶ 22). Petitioner also states that a person of ordinary skill “could have also obtained similar knowledge and experience through other means.” Pet. 7. Patent Owner’s Response applies Petitioner’s level of ordinary skill. PO Resp. 17. We adopt Petitioner’s assessment of the level of ordinary skill, which is consistent with the level reflected in the ’244 patent and the prior art.” slip op. at 7

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner

    “As a general rule, ‘[u]nless the steps of a method [claim] actually recite an order, the steps are not ordinarily construed to require one.’” Mformation Techs., Inc. v. Research In Motion Ltd., 764 F.3d 1392, 1398 (Fed. Cir. 2014) (quoting Interactive Gift Express, Inc. v. Compuserve Inc., 256 F.3d 1323, 1342 (Fed. Cir. 2001)). “However, a claim ‘requires an ordering of steps when the claim language, as a matter of logic or grammar, requires that the steps be performed in the order written, or the specification directly or implicitly requires’ an order of steps.” Id. (quoting TALtech Ltd. v. Esquel Apparel, Inc., 279 F. App’x 974, 978 (Fed. Cir. 2008)). Our preliminary discussion in the Decision Granting Institution states that “logic dictates that a voice timer must be active before something can happen ‘during a voice timer,’” but the Decision Granting Institution notes that the claims can be read in different ways, e.g.: “(a) changing a mixing gain at some point in time while the voice timer is active, or (b) maintaining an adjusted mix throughout a voice timer ‘pending voice activity.’” Paper 13, 15. On the full record, we determine the latter reading is correct; the claims do not require performing the “activating/activate” step before the “adjusting/adjusts” step, nor that a singular act of “adjusting/adjusts” must occur “during” a voice timer. slip op. at 10

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

    “based on Kvaløy’s additional teachings of a protective earplug that protects a user’s hearing by sealing a user’s outer ear canal while allowing selected sounds to pass through. Pet. 29–30 (citing Ex. 1009 1:39–44, 3:40–46, 3:50–52, 4:22–26, 4:38–41, Fig. 1; Ex. 1002 ¶¶ 143–156). Petitioner also contends a person of ordinary skill would have been motivated to combine the teachings of Rosenberg and Kvaløy because, among other things, the references teach similar devices designed to protect users’ hearing and employing Kvaløy’s sealing section to provide full sound isolation in Rosenberg’s device would have improved Rosenberg’s hearing protection. Pet. 31–32. Patent Owner does not separately address or rebut Petitioner’s contentions for claim 4. We agree with Petitioner that the cited portions of Kvaløy satisfy claim 4, and we determine Petitioner has adequately articulated reasons a person of ordinary skill would have been motivated to combine the teachings of Rosenberg and Kvaløy, including to improve the hearing protection of Rosenberg’s device with the Kvaløy’s teachings of a sealing section. Accordingly, we determine Petitioner has proven by a preponderance of the evidence that claim 4 would have been obvious in view of the combined teachings of Rosenberg and Kvaløy.” slip op. at 27

  • Obviousness (§103) › Analogous artNot shown unpatentableNon analogous artNot shown unpatentable

    “First, we determine Petitioner forfeited these arguments by failing to show in the Petition that Olwal qualifies as analogous art. Even if these arguments were timely, Petitioner’s arguments are unpersuasive because Olwal describes a user interface for use with a desktop computer, which is well removed from the relevant field of endeavor, and Petitioner has not adequately established that Olwal’s teachings are reasonably pertinent to the problems with which the inventor of the ’244 patent was involved. Accordingly, we determine Petitioner has not shown by a preponderance of the evidence that claim 15 is unpatentable in view of Rosenberg, Park, and Olwal.” slip op. at 35

  Patent outcomesUS 9,270,244 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,270,244
• Samsung Electronics Co., Ltd / Samsung Electronics America, Inc. v. Staton Techiya, LLCSome claims unpatentable
  PTAB · Jul 7, 2023 · IPR2022-00302 · APJ Russell E Cass · IPR · Final written decision

  Claims 1–11 are unpatentable as obvious; claims 12–20 were not shown unpatentable, principally because the Allen–Victorian and Ryan-based combinations failed on disputed limitations.

  RulingsFinal written decision

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

    “reciting “a processor operatively coupled to evaluate a seal quality of the earpiece based on seal quality measurements made while driving or exciting a signal into the speaker located in the earpiece.” To construe this phrase, we start with the claim language itself. The claim language requires that the “processor” is operatively coupled “to evaluate a seal quality of the earpiece,” indicating that the processor evaluates seal quality. The claim also states that this evaluation is performed “based on seal quality measurements made while driving or exciting a signal into the speaker located in the earpiece,” indicating that the processor uses seal quality measurements to evaluate seal quality. The phrase “while driving or exciting a signal into the speaker located in the earpiece” modifies “seal quality measurements made,” indicating the timing of when the seal quality measurements are made, namely while (at the same time as) a signal is driven or excited into the speaker. This “while driving or exciting . . .” clause does not specify what component performs the “driving or exciting a signal into the speaker located into the earpiece.” Significantly, although the claim language states that the processor “evaluate[s] seal quality,” it does not state that the processor drives or excites the signal into the speaker. Had the applicant wanted to limit the claim in that manner, it could have drafted it to specify that the seal quality measurements are made “while the processor is driving or exciting a signal into the speaker.” The applicant, however, did not do so. Indeed, elsewhere in the claim, the language clearly specifies that certain functions are carried out by the processor, for example: • “a processor operatively coupled to evaluate a seal quality of the earpiece” (claim [1b]); • “the processor is configured to generate a visual or audio message identifying whether the at least one earpiece is properly sealed” (claim [1c]); • “the processor by way of the speaker and microphone adjusts the audio” (claim 3); • “the processor measures differences in a further sound pressure level between an ambient microphone and the [earpiece] microphone, and determines a sealing profile of the ear canal” (claim 4); • “the processor determines whether the earpiece is properly inserted . . . and generates the visual or audio message identifying compliance” (claim 5); • “the processor by way of the speaker and microphone in the earpiece performs in-situ measurement of a user’s ear anatomy” (claim 6); and • “the processor monitors changes in the ECTF to determine a sealing level of the earpiece” (claim 7). Ex. 1001, 13:25–67. Claim 1, however, does not include any comparable language specifying that the processor performs the “driving or exciting a signal into the speaker located in the earpiece.” Therefore, we find that the plain and ordinary meaning of claim 1’s language does not require that the processor itself must drive or excite a signal into the speaker.” slip op. at 19

  • Skill levelSkill level petitioner adoptedOther

    “Petitioner contends that a person of ordinary skill in the art at the time of the alleged invention would have had “a bachelor’s degree in electrical engineering, computer science, audio engineering or a similar field and two years of experience in hearing instruments such as earphones, hearing aids and/or hearing protectors.” Pet. 9 (citing Ex. 1002 ¶ 22). Petitioner further states that the person of ordinary skill “could have also obtained similar knowledge and experience through other means.” Id. Patent Owner “applies the level of ordinary skill in the art that is proposed by Petitioners.” PO Resp. 13. We adopt Petitioner’s assessment of the level of ordinary skill in the art, which is supported by the ’424 patent and the asserted prior art.” slip op. at 10

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “We do not agree with Dr. Struck’s testimony that “[a] person of ordinary skill in the art would understand that the processor performs the ‘driving or exciting’ of the signal to the speaker” and “would not even consider any other component mentioned in claim 1 as a candidate to perform the driving or exciting.” See Ex. 2006 ¶ 46. Dr. Struck does not discuss the grammar and structure of the claim language, including the fact that the phrase “while driving or exciting a signal into the speaker” modifies “seal quality measurements” and indicates the timing of when the seal quality measurements are made (while (at the same time as) a signal is driven or excited into the speaker). See id. Dr. Struck also does not discuss the fact that claim 1 recites that the processor “evaluate[s] a seal quality of the earpiece” but does not say that the same processor “driv[es] or excit[es] a signal into the speaker located into the earpiece, instead leaving the subject of what component performs the “driving or exciting” unspecified. See id. Indeed, Dr. Struck acknowledged at his deposition that his declaration lacks an “analysis of the grammar used in the limitation of [c]laim 1” at issue here. Ex. 1027, 20:4–15. Additionally, Dr. Struck appears to assume that the “driving or exciting” must be performed by some “other component mentioned in claim 1,” but there is no requirement that the claim must specify a particular component for carrying out this function. See Ex. 2006 ¶ 46.” slip op. at 21

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable

    “We also agree with Patent Owner that, in Petitioner’s proposed combination, the above rule that gates off the ear canal microphone would frustrate Allen’s purpose of comparing the signals from the inner and outer microphones to determine a reverse transfer function and perform a seal fit analysis. See PO Resp. 53–54; PO Sur-reply 13. In reaching this conclusion, we credit the testimony of Mr. Struck that “[w]hen this rule is in force, the Allen-Victorian combination would not be able to measure a reverse transfer function” and, accordingly, “would be incapable of performing the automatic adjustments that the Allen hearing aid can perform based on the reverse transfer function.” Ex. 2006 ¶ 114. Dr. Kyriakakis also confirmed at his deposition that, when this rule is in effect, Allen would not be able to use the reflectance method, which relies on signals from the inner and outer microphones: Q: So while the rule at Column 10, lines 19 through 22, of Victorian is being employed, Allen is not able to solve any of the problems that it solves by the reflectance method; is that correct? A: If Allen doesn’t have access to the signals, that is correct, to the two microphone signals. Ex. 2007, 63:16–23. We are not persuaded by Petitioner’s argument that Victorian’s VOX circuit would not interfere with Allen’s seal fit analysis, because Victorian states that gating off may cause microphone signals to be “blanked or substantially attenuated,” and “[s]ubstantial attenuation refers to an attenuation after which the attenuated sound does not cause any echo or tinging7 having an intolerable intensity.” See Pet. Reply 14–15 (citing Ex. 1013 ¶ 32; Ex. 1027, 120:1–8, 121:3–9). As noted above, the Petition relies on the embodiment of Victorian’s VOX that “prevents the remote sound from being detected by ear canal microphone 440,” rather than an embodiment that simply attenuates that sound. See Pet. 46; Ex. 1002 ¶ 152; Ex. 2007, 61:2–16. Petitioner’s shift to relying on a different embodiment of Victorian that “substantially attenuat[es]” the sound rather than blocking it is a new argument that is presented for the first time in Petitioner’s Reply, and we therefore need not consider it. See Patent Trial and Appeal Board Consolidated Trial Practice Guide (Nov. 2019), at 73 (“Petitioner may not submit new evidence or argument in reply that it could have presented earlier, e.g. to make out a prima facie case of unpatentability.”). 8 Moreover, 7 The quoted portion of Victorian refers to “tinging,” but this appears to be intended to refer to “ringing.” For example, the previous sentence states that “[b]lanking refers to a substantially complete blockage of a sound, or in other words, that a detected sound is practically ignored by processor 460 such that it does not cause any echo or ringing which is audible by an ear.” See Ex. 1013 ¶ 32 (emphasis added). 8 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.” slip op. at 52

  Patent outcomesUS 9,609,424 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,609,424
• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Staton Techiya, LLCSome claims unpatentable
  PTAB · Jun 14, 2023 · IPR2022-00282 · APJ George R Hoskins · IPR · Final written decision

  Claims 1–3, 6, 7, 9–14, and 17–20 are unpatentable; claims 4, 5, 8, 15, and 16 were not shown unpatentable, based on the stated anticipation and obviousness grounds.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “A. Level of Ordinary Skill in the Art Petitioner contends a person having ordinary skill in the art pertaining to the ’400 patent “would have had a bachelor’s degree in electrical engineering, computer science, or a similar field and two years of experience in the design of wireless earphones and associated signal processing.” Pet. 17; Ex. 1002 ¶¶ 17–18. “Patent Owner accepts the level of ordinary skill in the art that is proposed in the Petition.” PO Resp. 15; Ex. 2009 ¶¶ 9–10. We conclude Petitioner’s formulation of ordinary skill is consistent with the level of skill reflected in the ’400 patent and the prior art of record, and it is not disputed by Patent Owner. We, therefore, apply Petitioner’s formulation in our analysis below.” slip op. at 8

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

    “B. Claim Construction We interpret the ’400 patent claims “using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b).” 37 C.F.R. § 42.100(b). This “includ[es] construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” Id. The Petition asserts “no express constructions of the claims are necessary” in this proceeding, and “the claims should be given their plain and ordinary meaning.” Pet. 17–18; Ex. 1002 ¶ 74. The Patent Owner Response provides several claim constructions. See PO Resp. 15–19 (construing “sound signal” in claims 1, 14, and 18; “noise signal” in claims 14 and 18; and “envelope” in claims 8, 17 and 20); id. at 19–21 (construing “a background noise level” in claim 1); id. at 33–35 (construing “a background noise signal” in claims 14 and 18); id. at 35–38 (construing “mixing” in claims 4, 15, and 19). We discuss here Patent Owner’s claim constructions as they relate to independent claims 1, 14, and 18. We defer construction of dependent claims to later sections of this Decision.” slip op. at 9

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner

    “might support construing “a background noise level” in claim 1 to mean a single overall background noise level is the reasoning provided in the Patent Owner Response. However, the CUPP decision states: “We now make precedential the straightforward conclusion we drew in an earlier nonprecedential opinion: ‘[T]he Board is not required to accept a patent owner’s arguments as disclaimer when deciding the merits of those arguments.’” CUPP, 53 F.4th at 1383 (quoting VirnetX, 778 F. App’x at 910). Yet, Patent Owner is in effect asking us to do that here, given the procedural interplay of this proceeding and the District Court Litigation. For the foregoing reasons, we conclude the District Court Litigation does not provide a persuasive basis to adopt Patent Owner’s claim construction of “a background noise level” in this proceeding. c) Conclusion For the foregoing reasons, we construe “a background noise level” in” slip op. at 21

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed

    “based on the background noise level, to produce noise-reduced ambient sound signal 78. See Ex. 1005, Fig. 3. In particular, Alves discloses that, in an exemplary noise cancellation algorithm applied by noise reducer 76, “the average power of quasi-stationary background noise is tracked, and then a gain is decided accordingly and applied to the subband signals.” Id. ¶ 43 (emphasis added); accord id. ¶ 31.” slip op. at 38

  Patent outcomesUS 8,315,400 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,315,400
• Netflix, Inc. v. Avago Technologies International Sales Pte. LimitedSome claims unpatentable
  PTAB · Feb 22, 2023 · IPR2021-01343 · APJ Nathan A Engels · IPR · Final written decision

  Claims 1, 3–5, 7, 9, 10, 12, 14–16, and 18–20 are unpatentable as obvious over Baldwin; claims 6, 8, 11, and 17 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for petitioner

    “Petitioner contends a person of ordinary skill in the art at the time of the invention would have been a person with a “bachelor’s degree in electrical engineering, computer engineering, computer science, or a similar field with at least two years of experience in digital video signal processing or digital video streaming or had a master’s degree in electrical engineering, computer engineering, computer science, or a similar field with a specialization in digital video signal processing.” Pet. 15 (citing Ex. 1003 ¶¶ 37–39). Petitioner also states that a person of ordinary skill would have been able to, among other things, encode and decode digital video signals, packetize, multiplex, and demultiplex encoded digital video signals for transmission, and implement modulation and channel coding. Pet. 15–16 (citing Ex. 1003 ¶ 40). Patent Owner states that a person of ordinary skill would have had “a bachelor’s degree in Electrical Engineering, Computer Science, or a similar discipline, with one or two years of experience in this or a related field.” PO Resp. 13 (citing Ex. 2014 ¶ 20). Patent Owner states that its definition of a person of ordinary skill is similar to Petitioner’s definition and that any differences are not material. PO Resp. 13. We determine a person of ordinary skill would have had a bachelor’s degree in electrical engineering, computer engineering, computer science, or a similar field and two years of experience in digital video signal processing or digital video streaming, which is consistent with the parties’ arguments, the ’014 patent, and the prior art of record.” slip op. at 5

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

    “1. “video information” Petitioner contends a person of ordinary skill would have understood that “video information” means “digital video data.” Pet. 16. Patent Owner disagrees with Petitioner’s proposed construction and contends “video information” should be given its plain and ordinary meaning. PO Resp. 13. Patent Owner also states that the construction of “video information” is immaterial to this proceeding. PO Resp. 13. We do not discern a meaningful dispute between the parties regarding the meaning of “video information,” and we do not expressly interpret the term. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe only those terms that are in controversy, and only to the extent necessary to resolve the controversy.”) (internal quotation omitted).” slip op. at 6

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable

    “Among other problems with these arguments, it is not clear how or where Petitioner relies on the proposed combination to satisfy any specific claim limitations. Petitioner argues each of Cooper and Baldwin teaches each limitation of each independent claim, and Petitioner presents its combination of references separate from its comparisons of Cooper and Baldwin to the claims, without clearly stating how the references are to be combined or how those combined teachings satisfy particular limitations. Because Petitioner fails to identify its proposed combination with sufficient clarity, we are also not persuaded by Petitioner’s argument that a person of ordinary skill in the art would have been motivated to combine Cooper and Baldwin to yield the subject matter recited by the challenged claims. We also disagree with Petitioner’s argument that Realtime Data suggests that Petitioner does not need to show a motivation to combine. Reply 27–29 (citing Realtime Data, 912 F.3d at 1373–74). Unlike here, in Realtime Data, the secondary reference was cited for the “sole purpose” of confirming that an element was disclosed in the primary reference. Id. In this case, Petitioner proposes combining some teachings from each of Baldwin and Cooper. See Pet. 19–20; Reply 27. Accordingly, we determine Petitioner has not articulated an adequate rationale to combine the references to arrive at any particular challenged claim.” slip op. at 9

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

    “Patent Owner contends, and we agree, that Cooper does not teach that its receiver identifies which of two streams is expected to result in a lower latency, as required by limitation [1d]. PO Resp. 36–52. Where Cooper describes receiving a multiplexed composite signal, Cooper teaches always identifying the normal mode packet stream for decoding when it is available, without regard to latency, and identifying the robust mode packet stream for decoding only when the normal mode packet stream is not available, such as when normal mode packets are lost. E.g., Ex. 1004, 7:8–8:28. In fact, it would be inconsistent with Cooper’s teachings for the receiver to select the robust mode packet stream when the normal mode packet stream is available: Cooper teaches that “[u]nder normal conditions, the error signal is not active on the error signal line E. In response, the selector 230 couples the normal mode packet stream to the multi-standard decoder 240, and the multi-standard decoder 240 begins to generate the content representative signal from the normal mode packets . . . .” Ex. 1004, 7:32–37 (emphasis added). Although Cooper also teaches that its receiver can decode the robust mode packet stream to avoid “undue delay” “at the beginning of any broadcast or channel change,” we find that Cooper does so only when the normal mode packet stream is not available. Ex. 1004, 17:23–45; see also Ex. 1004, 3:1–3. Specifically, Cooper states that “at the beginning of any broadcast or channel change,” there is a period of time (i.e., Tadv ) when the receiver’s delay device 220 is being filled. Ex. 1004, 17:23–26 (emphasis added). Cooper explains that waiting until delay device 220 is full would cause “undue delay when a receiver is switched on or a channel is changed.” Ex. 1004, 17:26–30. To address this delay, Cooper’s receiver decodes the robust mode packet stream, which “is immediately available,” so that a video signal can be presented until “the normal mode packet stream becomes available,” at which point the receiver switches to decoding the normal mode packet stream. Ex. 1004, 17:30–42. Consequently, we find that Cooper teaches that, at a channel change, its receiver receives (and decodes) the robust mode packet stream until it receives the normal mode packet stream. We disagree with Petitioner’s contrary argument that Cooper’s receiver receives both streams in this situation (see Reply 4–16), and, at a minimum, Petitioner has not persuasively shown that Cooper teaches or suggests this (see Ex. 2015, 82:22–85:13 (describing different scenarios but acknowledging that “Cooper doesn’t really illuminate either of these”)). Further, Cooper’s description of Figure 3 is consistent with our understanding of Cooper description of a channel change. Specifically, that portion of Cooper states: Time t0 may represent the time when the receiver is turned on, or when a user specifies a new content source to receive. During the time, Tadv, between t0 and t4, robust mode packets “a” to “j” are loaded into the delay device 220, and normal mode packets, designated “0” through “9” are received. At time t4, the normal mode packet “A” becomes available from the demultiplexer 210 and delayed robust mode packet “a” becomes available from the delay device 220. Under normal conditions, . . . the selector 230 couples the normal mode packet stream to the multi-standard decoder 240, and the multi-standard decoder 240 begins to generate the content representative signal from the normal mode packets, as described above. This is illustrated by the cross hatching 301 in the normal mode packets “A” through “G”. Ex. 1004, 7:24–39. Cooper includes this description in order to explain its typical operation as well as to illustrate the relative timing of the robust mode packet stream and the normal mode packet stream. See Ex. 1004, 7:24–25, 7:40–8:28. This passage teaches that normal mode packets designated with capital letters (e.g., “A”) are displayed after time t4 under normal conditions; however, it does not address which (if any) packets are displayed between time t0 and time t4. As a result, we understand this passage of Cooper to indicate that “0” to “9” are simply placeholders, which” slip op. at 13

  Patent outcomesUS 8,646,014 mixed
  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 8,646,014

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.