• Apple, Inc. v. Realtime Data LLCAll claims unpatentable
  PTAB · Mar 16, 2018 · IPR2016-01738 · APJ Georgianna W Braden · IPR · Final written decision

  Claims 8–12, 14–22, 59–82, 101–104, 114, 115, and 117 are unpatentable as obvious; the motion to amend is granted for substitute claims 174–218.

  RulingsFinal written decision

  • PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, grantedGranted

    “substitute claims “without placing the burden of persuasion on the patent owner.” Aqua Products, 872 F.3d at 1328. Yet, Patent Owner’s proposed substitute claims still must meet the statutory requirements of 35 U.S.C. § 316(d) and the procedural requirements of 37 C.F.R. § 42.121. See also “Guidance on Motions to Amend in view of Aqua Products” (Nov. 21, 2017) (https://www.uspto.gov/sites/default/files/documents/guidance_ on_motions_to_amend_11_2017.pdf) (“Guidance”). Accordingly, Patent Owner must demonstrate (1) the amendment responds to a ground of unpatentability involved in the trial; (2) the amendment does not seek to enlarge the scope of the claims of the patent or introduce new subject matter; (3) the amendment proposes a reasonable number of substitute claims; and (4) the proposed claims are supported in the original disclosure. See 37 C.F.R. § 42.121.” slip op. at 51

  • ExcludeMotion to exclude, deniedDenied

    “substitute claims. Furthermore, Patent Owner’s arguments on this exhibits goes to the weight to be accorded to the evidence. The Board is capable of determining and assigning the appropriate weight to the evidence. For these reasons, we deny Patent Owner’s motion as to Exhibit 1043.” slip op. at 72

  • Strike new argumentOther

    “IV. CHALLENGE TO PETITIONER’S REPLY ARGUMENTS Patent Owner filed a list of alleged improper reply arguments (Paper 34) to which Petitioner filed a Reply (Paper 35). Patent Owner lists several portions of Petitioner’s Reply and evidence allegedly beyond the scope of what can be considered appropriate for a reply. See Paper 34. We have considered Patent Owner’s listing, but disagree that the cited portions of Petitioner’s Reply and reply evidence are beyond the scope of what is appropriate for a reply. Replies are a vehicle for responding to arguments raised in a corresponding patent owner response. Petitioner’s arguments and evidence that Patent Owner objects to are not beyond the proper scope of a reply; rather, we find that they fairly respond to Patent Owner’s arguments raised in Patent Owner’s Response. See Idemitsu Kosan Co. v. SFC LTD, 870 F.3d 1376, 1381: This back-and-forth shows that what Idemitsu characterizes as an argument raised “too late” is simply the by-product of one party necessarily getting the last word. If anything, Idemitsu is the party that first raised this issue, by arguing—at least implicitly—that Arkane teaches away from non-energy-gap combinations. SFC simply countered, as it was entitled to do. We also note for each of the items in Patent Owner’s list, Petitioner cites to pages in the Petition for support. See e.g., Paper 35, 2 (“Support for Petitioner’s argument can be found at, for example, pages 13–16 of the Petition.”), 4 (“Support for Petitioner’s argument can be found at, for example, pages 39–41 of the Petition.”); 5 (“Support for Petitioner’s argument can be found, for example, at pages 6–16, 28–29, and 32–34 of the Petition.”); 6 (“Support for Petitioner’s argument can be found, for example, at pages 11–16 of the Petition.”); 8 (“Support for Petitioner’s argument can be found, for example, at pages 11–16 of the Petition.”).” slip op. at 72

  • Expert testimonyPetitioner expert creditedOther

    “updating boot data lists by removing an association of control information that is associated with management information Table 3A. Specifically, we credit the testimony of Dr. Neuhauser, who explains how and why Sukegawa renders obvious updating a boot data list by disassociating non-accessed boot data from the boot data list. See Ex. 1003 ¶¶ 474–478 (citing Ex. 1005, 7:40–55). Dr. Neuhauser concludes an ordinarily skilled artisan “would have []found it obvious based on their knowledge of cache operation that upon the deletion of the non-accessed control information, or boot data, that management information table 3A is updated to reflect the deletion.” Ex. 1003 ¶ 474. Accordingly, we find Petitioner has established by a preponderance of the evidence that claims 20, 102, and 104 of the ’862 patent are unpatentable under 35 U.S.C. § 103(a) as obvious over Sukegawa and Dye.” slip op. at 42

  Patent outcomesUS 8,880,862 unpatentable
  Claim construction§ 103 obviousnesscites Markman · KSR · Graham
  Patents in suitUS 8,880,862
• Apple, Inc. v. Realtime Data LLCAll claims unpatentable
  PTAB · Mar 13, 2018 · IPR2016-01739 · APJ Georgianna W Braden · IPR · Final written decision

  Claims 5, 35–46, 97, 98, and 112 are unpatentable under § 103 over at least one instituted combination; claim 46 was not shown unpatentable over Settsu alone or with Zwiegincew.

  RulingsFinal written decision

  • BurdenFwd mixedUnpatentable

    “IV. CONCLUSION For the foregoing reasons, we conclude Petitioner has shown by a preponderance of the evidence that (1) Claims 5, 35–45, and 97 are unpatentable under 35 U.S.C. § 103(a) in view of Settsu; (2) Claims 5, 35– 45, 97, 98, and 112 as unpatentable under 35 U.S.C. § 103(a) in view of Settsu and Zwiegincew; (3) Claims 5, 35–46, and 97 as unpatentable under 35 U.S.C. § 103(a) in view of Settsu and Dye; and (4) Claims 5, 35–46, 97, 98, and 112 as unpatentable under 35 U.S.C. § 103(a) in view of Settsu, Zwiegincew, and Dye. V. ORDER Accordingly, it is ORDERED that, by a preponderance of the evidence, claims 5, 35–46, 97, 98, and 112 of the ’862 patent are unpatentable;” slip op. at 46

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

    “broadest reasonable construction in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b). Therefore, we consult the patent’s specification to help clarify the meaning of claim terms. Trading Techs. Int’l, Inc. v. eSpeed, Inc., 595 F.3d 1340, 1352 (Fed. Cir. 2010) (holding claims “must be read in view of the specification, of which they are a part” (quoting Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) (en banc), aff’d, 517 U.S. 370 (1996))). We must be careful, however, not to import improperly limitations into the claims or to read a particular embodiment appearing in the written description into the claim if the claim language is broader than the embodiment. In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). Given our mandate under 37 C.F.R. § 42.100(b) and the patent’s various descriptions of “boot data list,” we understand that the examples laid out in the specification are exemplary and are not to be read as limitations in the claims. Patent Owner’s proffered claim construction imports selected limitations from specific embodiments in the specification into the claim and provides an overly narrow interpretation of the claim term. Additionally, Patent Owner has not pointed to any definitions or disavowals in the specification or otherwise clearly explained why the specification’s disclosure of “boot data lists” should not guide our claim construction analysis. Thus, we are unpersuaded by Patent Owner’s contentions, which appear to be based on a narrow reading of the claim that is inconsistent with the broadest reasonable interpretation of the claims. Accordingly, we decline to adopt Patent Owner’s claim construction as it would limit unnecessarily the scope of the claims. Instead, we find the broadest reasonable construction of “boot data list” to encompass a “list of boot data.”” slip op. at 8

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “Patent Owner does not dispute Dr. Neuhauser’ testimony. See generally PO Resp. Patent Owner’s Declarant, Dr. Godmar Back (“Dr. Back”), however, provides his own assessment regarding a person of ordinary skill in the art relevant to the ’862 patent and agrees with Dr. Neuhauser’s testimony. Ex. 2008 ¶ 50. We do not observe a meaningful differences between the parties’ assessments of a person of ordinary skill in the art. We further note that either assessment appears consistent with the level of ordinary skill in the art at the time of the invention as reflected in the prior art in the instant proceeding. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Our analysis in this Decision is supported by either assessment. Based on our review of the ’862 patent, the types of problems and solutions described in the ’862 patent and cited prior art, and the testimony of Dr. Neuhauser and Dr. Back, we adopt and apply Dr. Back’s definition of a person of ordinary skill in the art at the time of the claimed invention for purposes of this Decision. D. Overview of the Asserted Prior Art” slip op. at 13

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “Settsu fails to teach “updating a boot list.” Rather, we agree with the testimony of Dr. Neuhauser regarding the similarities between Settsu’s OS and the functionality of the Windows 98 OS, and why a person of ordinary skill in the art would have considered updates to have occurred to the boot data lists in Settsu. See Ex. 1003 ¶ 117; Ex. 1003, 5:39–51, 13:55–65, 14:44–52, 16:7–17:62, Figs. 12, 20(ST213). Specifically, we determine that a person of ordinary skill in the art would have understood that OS modules, such as Settsu’s, would have required updates when new, updated code becomes available. See Ex. 1003 ¶ 117 (citing O’Reilly 110–112). We agree with Dr. Neuhauser that to accomplish these updates, a person of ordinary skill in the art would have understood that updates occur to boot data lists in Settsu; namely, updates to lists of boot data included within OS functional module files stored in boot device 3, as well as updates to lists of boot data, such as the function definition file 71 or the OS main body module 8. See id. Given the explicit teaching of Settsu and the credible testimony of Dr. Neuhauser regarding the state of the art and the knowledge of one of skill the art, we are unmoved by Patent Owner’s argument regarding the prosecution history of the ’862 patent or that the Examiner fully understood the implications of Settsu’s Figure 20. Accordingly, based on the entirety of the record and evidence, and crediting the testimony from Dr. Neuhauser (see Ex. 1003 ¶¶ 78, 116–118), we determine that “updating the boot data list” is taught or suggested by Settsu, and the subject matter of the claim as whole would have been obvious to a person of ordinary skill in art in view of Settsu.” slip op. at 22

  Patent outcomesUS 8,880,862 unpatentable
  Claim construction§ 103 obviousnesscites Markman · KSR · Graham
  Patents in suitUS 8,880,862
• Apple, Inc. v. Realtime Data LLCAll claims unpatentable
  PTAB · Mar 13, 2018 · IPR2016-01737 · APJ Georgianna W Braden · IPR · Final written decision

  Claims 1–4, 6, 7, 13, 23–34, 47–58, 83–96, 99, 100, 105–111, 113, and 116 are unpatentable as obvious; substitute claims 118–173 are allowed.

  RulingsFinal written decision

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

    “broadest reasonable construction in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b). Therefore, we consult the patent’s specification to help clarify the meaning of claim terms. Trading Techs. Int’l, Inc. v. eSpeed, Inc., 595 F.3d 1340, 1352 (Fed. Cir. 2010) (holding claims “must be read in view of the specification, of which they are a part” (quoting Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) (en banc), aff’d, 517 U.S. 370 (1996))). We must be careful, however, not to import improperly limitations into the claims or to read a particular embodiment appearing in the written description into the claim if the claim language is broader than the embodiment. In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). Given our mandate under 37 C.F.R. § 42.100(b) and the patent’s various descriptions of “boot data list,” we understand that the examples laid out in the specification are exemplary and are not to be read as limitations in the claims. Patent Owner’s proffered claim construction imports selected limitations from specific embodiments in the specification into the claim and provides an overly narrow interpretation of the claim term. Additionally, Patent Owner has not pointed to any definitions or disavowals in the specification or otherwise clearly explained why the specification’s disclosure of “boot data lists” should not guide our claim construction analysis. Thus, we are unpersuaded by Patent Owner’s contentions, which appear to be based on a narrow reading of the claim that is inconsistent with the broadest reasonable interpretation of the claims. Accordingly, we decline to adopt Patent Owner’s claim construction as it would limit unnecessarily the scope of the claims. Instead, we find the broadest reasonable construction of “boot data list” to encompass a “list of boot data.”” slip op. at 9

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “Patent Owner does not dispute Dr. Neuhauser’ testimony. See generally PO Resp. Patent Owner’s Declarant, Dr. Godmar Back (“Dr. Back”), however, provides his own assessment regarding a person of ordinary skill in the art relevant to the ’862 patent and agrees with Dr. Neuhauser’s testimony. Ex. 2008 ¶ 55. We do not observe a meaningful differences between the parties’ assessments of a person of ordinary skill in the art. We further note that either assessment appears consistent with the level of ordinary skill in the art at the time of the invention as reflected in the prior art in the instant proceeding. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Our analysis in this Decision is supported by either assessment. Based on our review of the ’862 patent, the types of problems and solutions described in the ’862 patent and cited prior art, and the testimony of Dr. Neuhauser and Dr. Back, we adopt and apply Dr. Back’s definition of a person of ordinary skill in the art at the time of the claimed invention for purposes of this Decision. D. Overview of the Asserted Prior Art” slip op. at 14

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

    “Based on (1) the teachings of Dye that are directed to improved memory capacity and performance, specifically improved data density, efficiency, and bandwidth (Ex. 1008, at [57], 2:42–46), (2) the teachings of Dye ’284 directed to implementing Dye’s techniques to hard disk drives and flash memory, and (3) crediting of the persuasive testimony of Dr. Neuhauser demonstrating both the applicability of Dye to Sukegawa and explaining why a person of ordinary skill in the art would have combined the prior art teachings, we find Petitioner has articulated sufficient reasoning with rational underpinning to combine the references as asserted.” slip op. at 33

  • PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, grantedGranted

    “of right, but rather must be proposed as a part of a Motion to Amend. 35 U.S.C. § 316(d). The Board must assess the patentability of proposed substitute claims “without placing the burden of persuasion on the patent owner.” Aqua Products, 872 F.3d 1290. Yet, Patent Owner’s proposed substitute claims still must meet the statutory requirements of 35 U.S.C. § 316(d) and the procedural requirements of 37 C.F.R. § 42.121. See also “Guidance on Motions to Amend in view of Aqua Products” (Nov. 21, 2017) (https://www.uspto.gov/sites/default/files/documents/guidance_ on_motions_to_amend_11_2017.pdf) (“Guidance”). Accordingly, Patent Owner must demonstrate (1) the amendment responds to a ground of unpatentability involved in the trial; (2) the amendment does not seek to enlarge the scope of the claims of the patent or introduce new subject matter; (3) the amendment proposes a reasonable number of substitute claims; and (4) the proposed claims are supported in the original disclosure. See Guidance. For reasons set forth below, we determine Patent Owner has satisfied its burden with respect to the above-discussed requirements of 37 C.F.R. § 42.121. Patent Owner seeks to add fifty-five (55) substitute claims to replace the fifty-five (55) challenged claims found unpatentable, and each substitute claim adds limitations that purport to narrow the scope of the original claim it replaces. See Mot. 2–4, Claim Appendix, iii–xii. Patent Owner also identifies disclosures in the originally-filed application that fall within the scope of proposed substitute claims 118–173. Mot. 4–17 (citing Ex. 2010; Ex. 2017; Ex. 2022). Patent Owner further identifies support in the original specification for the limitation in substitute independent claims 118, 122, and 124 that the preloading may occur into volatile memory. Mot. 5–6 (citing Ex. 2017, 12:16–18 (“[T]he cache 13 may comprise volatile or non-volatile memory, or any combination thereof. Preferably, the cache 13 is implemented in SDRAM (static dynamic random access memory), 41:4– 9, 42:17–20, 43:13–14, Fig. 7B), 8–15.” According to the testimony of Dr. Back, a person of ordinary skill in the art would have understood that SDRAM is volatile memory. See Ex. 2022 ¶ 23. We note that further support for substitute claims 118–173 can be found in the original specification’s discussion of preloading portions of the computer operating system from the boot device (e.g., hard disk) into the onboard cache memory. Ex. 2017, 41:4–5. We, thus, find written description support for Patent Owner’s proposed substitute claims. Moreover, Patent Owner proposes a narrowing limitation in each proposed substitute claim in direct response to the grounds of unpatentability involved in this trial. Therefore, Patent Owner has satisfied the procedural” slip op. at 44

  Patent outcomesUS 8,880,862 unpatentable
  Claim construction§ 103 obviousnesscites Markman · KSR · Graham
  Patents in suitUS 8,880,862
• Apple, Inc. v. Realtime Data LLCAll claims unpatentable
  PTAB · Jan 17, 2018 · IPR2016-01365 · APJ Debra K Stephens · IPR · Final written decision

  Claims 1–31 are unpatentable as obvious over Sukegawa and Dye under § 103.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner asserts, through its declarant Dr. Neuhauser, one of ordinary skill would be a person with a Bachelor’s Degree in electrical engineering, computer engineering, or a related area of study. In addition, this person would have between three and five years of practical experience in the design and implementation of computer systems, such as personal computers. Alternatively, a person with a Master’s Degree in the area of electrical engineering, computer engineering, or a related area of study and somewhat less practical experience would be similarly qualified (Ex. 1003 ¶ 15). Patent Owner does not appear to dispute the educational level or experiential aspects of Petitioner’s definition, and indeed, Patent Owner’s declarant, Dr. Back, agrees with Dr. Neuhauser as to the level of ordinary skill in the art (Ex. 2003 ¶ 42). We agree with and adopt Petitioner’s assessment of a level of skill in the art. We note also that the applied prior art reflects the appropriate level of skill at the time of the claimed invention (see Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001)).” slip op. at 10

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

    “The prefix “pre” means “before,” but absent additional information, does not convey how long “before” is. As such, Patent Owner’s proposed interpretation is too narrow. For example, Dictionary of Computer and Internet Words defines “load” as “[t]o transfer a program from a storage device into a computer’s memory” (Ex. 2005, 3). The IEEE Standard Computer Dictionary defines “load” as “[t]o copy computer instructions or data from external storage to internal storage or from internal storage to registers” (Ex. 2006, 3–4; see Ex. 2008, 4). Indeed, none of the proffered definitions includes any time component for use of the loaded data. “Preloading,” thus, would be copying computer instructions or data from external storage to internal storage or from internal storage to registers before an unspecified event occurs.” slip op. at 16

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “technology (Ex. 1008, Abstract). In particular, Dye teaches Compression Enhanced Flash Memory controller (CEFMC) allow data to be stored in normal or compressed format or transmitted and stored on a medium in normal or compressed format (id. at 3:66–4:8, 7:35–43, 8:6–12). Dye ’284 teaches data may be stored in compressed form on non-volatile memory (Ex. 1009, 4:16–24) and that such data may include program data and operating system data (id. at 11:32–35, 38:30–42, Figs. 22, 23). As set forth by Petitioner’s declarant, Dr. Neuhauser, Dye ’284 “describes benefits of using compression in several types of computer system storage devices, including hard disks, such as Sukegawa’s HDD2, and flash memory devices, such as Sukegawa’s flash memory unit” (Ex. 1003 ¶ 62 (citing Ex. 1009, 4:16–24, 8:44–53, 11:28–37, 11:54–12:33; Ex. 1008, Abstract, 7:34–43)). We credit Dr. Neuhauser’s statement that Sukegawa’s HDD2 and flash memory unit 1 are “hard disks and flash memory,” respectively, as described in Dye ’284 (id.). We further credit Dr. Neuhauser’s statement that “[b]ased on the clear teachings of Dye with respect to the advantages of data compression, one of ordinary skill [would] have been motivated to apply Dye to the system of Sukegawa to obtain improved performance of [Sukegawa’s] Flash Memory Unit 1” (id. ¶ 67; see id. ¶¶ 119–121).” slip op. at 40

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

    “combination of Sukegawa and Dye teaches the disputed limitation. “‘To incorporate material by reference, the host document must identify with detailed particularity what specific material it incorporates and clearly indicate where that material is found in the various documents’” (Apple Inc. v. International Trade Comm’n, 725 F.3d 1356, 1362 (Fed. Cir. 2013)). The host document must “[cite the] material in a manner that makes clear that the material is effectively part of the host document as if it were explicitly contained therein” (Advanced Display Sys. Inc. v. Kent State Univ., 212 F.3d 1272, 1282 (Fed.Cir.2000)). Here, unlike in the cases cited by Patent Owner (PO Resp. 46, n.138), Dye specifically states the U.S. patent application (now Dye ’284) is “incorporated by reference in its entirety as though fully and completely set forth herein” (Ex. 1008, 6:3–9). Indeed, as noted by Petitioner (Pet. Reply 24–25), the specific material to be incorporated is identified with detailed particularity: U.S. patent application Ser. No. 09/239,659 titled “Bandwidth Reducing Memory Controller Including Scalable Embedded Parallel Data Compression and Decompression Engines[,]” which was filed on Jan. 29, 1999 (5143-01700), is hereby incorporated by reference in its entirety as though fully and completely set forth herein (Ex. 1008, 6:3–9). Dye additionally refers to specific features of Dye ’284 (id. at 3:66–4:19). Thus, Dye cited Dye ’284 in a manner that makes clear that Dye ’284 is effectively part of Dye, as if it were explicitly therein, and accordingly, Dye properly incorporates Dye ’284 by reference. We further note that Dye is a continuation-in-part of Dye ’284 and thus, has a significant amount of overlapping disclosure (id. at 1:9–13, [63]). Petitioner relies on the combination of Sukegawa’s HDD2 (boot drive) and Dye’s teaching of compressed data on the boot device (Pet. 33– 35). Petitioner asserts because “‘the storage area of the flash memory is limited’ in Sukegawa, a [person of ordinary skill in the art] would have appreciated how compression would have improved storage capacity of Sukegawa’s flash memory unit 1, as well as speed of data access” (Pet. 10 (citing Ex. 1003 ¶ 241; Ex. 1005, 2:28–29)). According to Petitioner, “a [person of ordinary skill in the art] would have been motivated to modify Sukegawa to increase the effective density and read access rate of the non-volatile storage devices in Sukegawa’s system, and to thereby achieve further reduction in the time required for booting up” (Pet. 34 (citing Ex. 1003 ¶¶ 118–121)). Petitioner points to Dye as explaining “how compression ‘improves system wide memory density and data bandwidth” and “allows lower cost systems due to smaller data storage” and “reduced bandwidth requirements’” (Pet. Reply 26 (citing Ex. 1008, Abstract)(emphasis omitted)). Petitioner further asserts Dye renders compression on Sukegawa’s hard disk drive obvious (Pet. 33–34 (citing Ex. 1008, Abstract, 2:42–4:55, 7:34–9:5, 10:19–41); Pet. Reply 27 (citing Ex. 1008, Abstract, 2:42–4:55, 7:34–9:5, 10:19–41)). Petitioner additionally contends “Dye ’284 [] describes the use of a controller including ‘the compression/decompression engine’ to compress the same types of data that are stored in Sukegawa’s HDD2 and flash memory unit 1: namely, ‘application data’ and ‘operating system data’” (Pet. 14 (citing Ex. 1009 11:32–35, 38:29–39:44, FIGS. 22, 23)). Therefore, Petitioner asserts “a [person of ordinary skill in the art] would have been motivated by Dye to store Sukegawa’s control information (e.g., OS/AP) on HDD2 in compressed form and load the compressed control information from the HDD2 into Sukegawa’s flash memory unit 1 as compressed data (Pet. 34 (citing Ex. 1003 ¶ 120)). Dye teaches use of parallel compression and decompression technology (Ex. 1008, Abstract). In particular, Dye teaches Compression Enhanced Flash Memory controller (CEFMC) allow data to be stored in normal or compressed format or transmitted and stored on a medium in normal or compressed format (id. at 3:66–4:8, 7:35–43, 8:6–12). Dye ’284 teaches data may be stored in compressed form on non-volatile memory (Ex. 1009, 4:16–24) and that such data may include program data and operating system data (id. at 11:32–35, 38:30–42, Figs. 22, 23). As set forth by Petitioner’s declarant, Dr. Neuhauser, Dye ’284 “describes benefits of using compression in several types of computer system storage devices, including hard disks, such as Sukegawa’s HDD2, and flash memory devices, such as Sukegawa’s flash memory unit” (Ex. 1003 ¶ 62 (citing Ex. 1009, 4:16–24, 8:44–53, 11:28–37, 11:54–12:33; Ex. 1008, Abstract, 7:34–43)). We credit Dr. Neuhauser’s statement that Sukegawa’s HDD2 and flash memory unit 1 are “hard disks and flash memory,” respectively, as described in Dye ’284 (id.). We further credit Dr. Neuhauser’s statement that “[b]ased on the clear teachings of Dye with respect to the advantages of data compression, one of ordinary skill [would] have been motivated to apply Dye to the system of Sukegawa to obtain improved performance of [Sukegawa’s] Flash Memory Unit 1” (id. ¶ 67; see id. ¶¶ 119–121). Furthermore, Petitioner is not relying on incorporation of Dye’s controller, but rather on Dye’s data compression/decompression and storage of compressed/decompressed data (Pet. 33–35).” slip op. at 38

  Patent outcomesUS 7,181,608 unpatentable
  Claim construction§ 103 obviousnesscites Graham
  Patents in suitUS 7,181,608
• Facebook, Inc. v. Sound View Innovations, LLCRehearing denied
  PTAB · Oct 19, 2017 · IPR2017-00985 · APJ James B Arpin · IPR · Rehearing

  The Board denied rehearing and left institution denied for claims 1–3 because the petition lacked required means-plus-function constructions under the adopted claim-construction standard.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. STANDARD OF REVIEW Under 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” An abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus. Inc. v. Celanese Polymer Specialties Co. Inc., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted). The request must identify, with specificity, all matters that the moving party believes the Board misapprehended or overlooked. 37 C.F.R. § 42.71(d).” slip op. at 3

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)Not reached

    “Under our Rules setting forth the requirements for the content of the petition, “[w]here the claim to be construed contains a means-plus-function . . . limitation as permitted under 35 U.S.C. [§ 112, ¶ 6], the construction of the claim must identify the specific portions of the specification that describe the structure, material, or acts corresponding to each claimed function.” 37 C.F.R. § 42.104(b)(3) (emphasis added); see Inst. Dec. 13. Thus, where the challenged claim contains a means-plus-function limitation, the petition must provide a means-plus-function construction for that limitation. Consequently, it was not our task to determine first whether the word “controller” is a nonce word potentially subjecting the claim terms to treatment under 35 U.S.C. § 112, ¶ 6, and only then to receive arguments from Petitioner on their construction. See Reh’g Req. 4 (“Without a predicate finding that § 112, ¶ 6 applies, the Petition’s silence on the identity of a ‘corresponding structure’ had no relevance to the issue of claim construction.” (emphasis added)). Our Rules do not require such a “predicate finding,” and we made no such finding regarding the construction of the “controller” terms. See Inst. Dec. 11 (“For the reasons set forth below, we do not need to construe this claim term or determine its definiteness.”). In the absence of arguments under the appropriate standard from at least Petitioner during the Preliminary Proceeding, we have no basis for construing the “controller” terms. See id. at 13–14 (“The analysis of Petitioner’s arguments regarding claims 1–3 begins and ends with Petitioner’s failure to provide constructions of the claim terms including “controller” under 35 U.S.C. § 112, ¶ 6, and we cannot evaluate Petitioner’s asserted ground with respect to claims 1–3 in the absence of such constructions.”).” slip op. at 6

  • BurdenDecided for patent owner

    “Under our Rules setting forth the requirements for the content of the petition, “[w]here the claim to be construed contains a means-plus-function . . . limitation as permitted under 35 U.S.C. [§ 112, ¶ 6], the construction of the claim must identify the specific portions of the specification that describe the structure, material, or acts corresponding to each claimed function.” 37 C.F.R. § 42.104(b)(3) (emphasis added); see Inst. Dec. 13. Thus, where the challenged claim contains a means-plus-function limitation, the petition must provide a means-plus-function construction for that limitation. Consequently, it was not our task to determine first whether the word “controller” is a nonce word potentially subjecting the claim terms to treatment under 35 U.S.C. § 112, ¶ 6, and only then to receive arguments from Petitioner on their construction. See Reh’g Req. 4 (“Without a predicate finding that § 112, ¶ 6 applies, the Petition’s silence on the identity of a ‘corresponding structure’ had no relevance to the issue of claim construction.” (emphasis added)). Our Rules do not require such a “predicate finding,” and we made no such finding regarding the construction of the “controller” terms. See Inst. Dec. 11 (“For the reasons set forth below, we do not need to construe this claim term or determine its definiteness.”). In the absence of arguments under the appropriate standard from at least Petitioner during the Preliminary Proceeding, we have no basis for construing the “controller” terms. See id. at 13–14 (“The analysis of Petitioner’s arguments regarding claims 1–3 begins and ends with Petitioner’s failure to provide constructions of the claim terms including “controller” under 35 U.S.C. § 112, ¶ 6, and we cannot evaluate Petitioner’s asserted ground with respect to claims 1–3 in the absence of such constructions.”). It was Petitioner’s task to determine the necessary claim term constructions to support its request for inter partes review and to present those constructions as part of its Petition. Petitioner failed to do that here with respect to the “controller” terms. Thus, contrary to Petitioner’s assertion, we did not misapply the law governing interpretation of means- plus-function claim limitations; rather, due to the lack of any arguments or evidence from Petitioner, we did not and could not apply it at all. Consequently, we deny Petitioner’s request that we reconsider our Institution Decision and institute inter partes review of claims 1–3 of the ’371 patent.” slip op. at 6

  • Strike new argumentNew argument disregardedDecided for patent owner

    “It is hard to see where efficiency is achieved by having two tribunals simultaneously consider different claim constructions under the same standard.4 Nevertheless, we cannot find where Petitioner made this argument in its Petition or its Reply, nor does Petitioner identify where it previously raised this argument. See id. at 7–8; see also 37 C.F.R. § 42.71(d) (“The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.”). It goes without saying that we could not have overlooked or misunderstood an argument not made, and it is not an abuse of discretion not to consider such an argument.” slip op. at 11

  Claim construction
  Patents in suitUS 6,125,371
• Amazon.Com, Inc. / Blizzard Entertainment, Inc. v. Ac Technologies S.A.Some claims unpatentable
  PTAB · Mar 6, 2017 · IPR2015-01802 · APJ Matthew R Clements · IPR · Final written decision

  Claims 1, 3, 5, and 7–15 are unpatentable as anticipated by Rabinovich; Petitioner did not prove claims 1–15 obvious over Rabinovich.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedPetitioner expert creditedDecided for petitioner

    “Electrical Engineering, and two to three years of experience working in the field, or an equivalent level of experience.” Ex. 1005 ¶ 17; Pet. 16. Patent Owner does not challenge this definition or present its own. Accordingly, we credit the testimony of Dr. Ratner regarding the level of ordinary skill in the art, and find that a person of ordinary skill in the art would have had an undergraduate degree in Computer Science or a related field, such as Electrical Engineering, and two to three years of experience working in the field, or an equivalent level of experience. This level of ordinary skill is reflected not only by the information presented by the parties, but also by the prior art of record. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art itself can reflect the appropriate level of ordinary skill in the art).” slip op. at 9

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner

    “We agree with and adopt Petitioner’s reasoning and determine Rabinovich to be a printed publication. We credit the unrebutted testimony of Dr. Rabinovich regarding the consistency of his professional practice in 1998 for republication of his AT&T technical memoranda on a webpage that he managed on AT&T’s publicly accessible website. Furthermore, we find the December 1998 IEEE article corroborates the public availability of Rabinovich on that website, and would have been a roadmap, for one of ordinary skill in the art of data management and optimized access to data, to be guided to Rabinovich. See Reply 19–22. As Petitioner points out, Patent Owner’s own declarant states that Rabinovich and the December 1988 IEEE article “are ‘similar[]’ in that they both address ‘problems in network connectivity caused by multiple clients accessing servers.’ (Ex. 2006 at 12).” Id. at 21. Additionally, the passage in the December 1998 IEEE article that cites to Rabinovich refers to an algorithm in Rabinovich for optimizing access to data in order to increase performance. Id. Accordingly, we find that footnote 16 of the IEEE article, which contains the URL to Rabinovich, would have guided one of ordinary skill directly to Rabinovich. We are, therefore, persuaded, that Rabinovich is a printed publication under 35 U.S.C. § 102.” slip op. at 12

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable

    “object xs. Rabinovich defines cnt(s,xs) as the “total access count for xs,” which is equal to cnt(xs). Ex. 1006, 11. According to Dr. Ratner, “[t]he metric cnt(s,xs) measures the total number of times in that window that replica xs has been served to a client computer.” Ex. 1005 ¶ 253. As Patent Owner points out, Rabinovich teaches replicating object xs if the ratio of cnt(s,xs) over aff(xs) is greater than m, i.e., a non-zero value. PO Resp. 34; Ex. 1006, 12, Fig. 4. In view of this, we agree with Patent Owner that if cnt(s,xs) has a value of zero, meaning that object x has not been served to any client computer, then the ratio of cnt(s,xs) to aff(xs) will be zero, i.e., less than m, and Rabinovich will not carry out its replication step. This means that Rabinovich will not replicate object xs until xs has been accessed by a client computer at least once, such that the access count for xs is greater than zero. In this regard, we agree with Patent Owner that Rabinovich object xs is not “sen[t], from the at least one data storage device to the another data storage device . . . independently of an access of the at least one client computer” because Rabinovich teaches explicitly that object xs is not sent unless there has been at least one access from the client computer. We are not persuaded by Petitioner’s argument that Rabinovich” slip op. at 18

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

    “pieces” Claim 1 recites “each file including a plurality of individual pieces, the pieces containing parts of the files.” Ex. 1002, 25:67–26:1. The other independent claims recite limitations commensurate in scope. Neither party proposes explicitly a construction of the term “piece.” Petitioner argues that “files are inherently composed of pieces in the form of bits that make up bytes, the bytes themselves being pieces of the file.” Pet. 32. Patent Owner argues that construing “piece” to cover “bits and bytes” of a file “would read out the ‘pieces’ limitation from the claim entirely” (PO Resp. at 29–30) and that “one of ordinary skill in the art would not read the ‘pieces’ limitation of the claim to include bits and bytes” (id. at 30). The claims themselves define “piece” by requiring that a “file” have a “plurality of individual pieces,” but do not establish a lower bound—i.e., a minimum number of bits or bytes—to qualify as a “piece.” Patent Owner identifies no support in the ’680 patent for its contention that “piece” or “pieces” excludes a byte or bytes of a file, relying instead solely on the testimony of Dr. Paul S. Jacobs. Id. (citing Ex. 2006 ¶¶ 38, 39). We are not persuaded by Dr. Jacobs’s conclusory testimony. Because “piece” and “pieces” are limited by the claims only to being a subset of a file and because a byte or collection of bytes of a file is a subset of that file, we are persuaded that the broadest reasonable interpretation of “piece” and “pieces” in light of the Specification of the ’680 patent encompasses a byte or bytes. slip op. at 7

  Patent outcomesUS 7,904,680 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,904,680
• Great West Casualty Company / Bitco General Insurance Corporation et al. v. Intellectual Ventures II LLCAll claims unpatentable
  PTAB · Jan 17, 2017 · IPR2015-01707 · APJ Michael W Kim · IPR · Final written decision

  Claims 11–13 and 15–20 are unpatentable: claims 11, 12, and 16–20 as obvious over Payne, and claims 13 and 15 as obvious over Payne and Ackley.

  RulingsFinal written decision

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

    “guidance in resolving this disagreement. To that end, the relevant portion of independent claim 11 recites “at least one server operative to store one or more of: a) content, b) links to content.” As an initial matter, controlling precedent from our reviewing court instructs us that different claim terms are presumed to have different meanings. Applied Med. Res. Corp. v. U.S. Surgical Corp., 448 F.3d 1324, 1333 n.3 (Fed. Cir. 2006) (“[T]he use of two terms in a claim requires that they connote different meanings.”); CAE Screenplates Inc. v. Heinrich Fiedler GmbH & Co. KG, 224 F.3d 1308, 1317 (Fed. Cir. 2000) (“In the absence of . . . evidence to the contrary, we must presume that the use of these different terms in the claims connotes different meanings.”). Accordingly, on a high level, each of the following express claim terms are presumed to have different meanings: “content”; and, “links to content.”” slip op. at 8

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

    “We disagree with Patent Owner because Patent Owner’s assertions are misplaced. Most prominently, were O’Neil the only factual support for Patent Owner’s position, it may be persuasive. Petitioner’s proposed modification, however, relies not only on O’Neil, but also on Payne and the Declaration of Dr. Greenspun. Pet. 48–49 (citing Ex. 1003 ¶¶ 240, 241; Ex. 1006, 6:9–42, 8:38–53, 9:64–10:1, 5:16–25, and Fig. 5); see also Ex. 1003 ¶ 272. In short, we are persuaded that the following findings in Payne asserted by Petitioner are accurate, and that it supports adequately Petitioner’s proposed modification. The system of Payne already includes functionality requiring a user to log on to an account, Ex. 1006 at 6:9–42, 8:38–53, so it would have been trivial to place the log in functionality directly on the digital advertising documents, which are web pages, see id. at 9:64–10:1, 5:16–25, Fig. 5. Ex. 1003 at ¶ 240. When a patent simply arranges old elements, each performing the same function it had been known to perform and together yielding no more than one would expect from such an arrangement, the combination is obvious. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). Pet. 48; see also Reply 11–16. As counter-evidence, Patent Owner cites to paragraphs 46–48 of the Declaration of Dr. Papakonstantinou. Those paragraphs, however, suffer from the same logical flaw identified above.” slip op. at 23

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

    “Insofar as Patent Owner is asserting that Payne and Ackley are non- analogous art, we disagree. A reference is analogous art to the claimed invention if: (1) the reference is from the same field of endeavor as the claimed invention (even if it addresses a different problem); or (2) the reference is reasonably pertinent to the problem faced by the inventor (even if it is not in the same field of endeavor as the claimed invention). See In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). To that end, Payne discloses that it relates to the field of “user-interactive network sales systems for implementing an open marketplace for goods or services over computer networks such as the Internet.” Ex. 1006, 1:14–17. Ackley discloses that it relates to the field “computer-based systems and methods that enable sales transactions between third parties through a communications network, such as internet auctions and classified systems.” Ex. 1008, 1:21–25. We see little daylight between these two fields, especially given that Ackley’s use of the word “such as” with “internet auctions” indicates that such “internet auctions” are a non-limiting example, and, thus, do not materially limit Ackley’s field of endeavor.” slip op. at 28

  Patent outcomesUS 7,516,177 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,516,177
• Great West Casualty Company / Bitco General Insurance Corporation et al. v. Intellectual Ventures II LLCAll claims unpatentable
  PTAB · Jan 17, 2017 · IPR2015-01706 · APJ Michael W Kim · IPR · Final written decision

  Claims 11, 12, and 16–20 are unpatentable as obvious over MyLibrary.

  RulingsFinal written decision

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

    “In summary, we construe “content” as “electronic data embodying information for an individual or individuals,” and excluding “links to content,” but not excluding “content” associated with the “links to content.”5” slip op. at 16

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

    “written decision is issued shall be given its broadest reasonable construction in light of the specification of the patent in which it appears.” 37 C.F.R. § 42.100(b); see also Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2142 (2016) (Affirming that USPTO has statutory authority to construe claims according to 37 C.F.R. § 42.100(b).). When applying that standard, we interpret the claim language as it would be understood by one of ordinary skill in the art in light of the Specification. In re Suitco Surface, Inc., 603 F.3d 1255, 1260 (Fed. Cir. 2010). Thus, we generally give claim terms their ordinary and customary meaning. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007) (“The ordinary and customary meaning ‘is the meaning that the term would have to a person of ordinary skill in the art in question.’”). For the purposes of this decision, and on this record, we determine that most claim terms do not need express interpretation. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (Only those terms which are in controversy need to be construed, and only to the extent necessary to resolve the controversy.).” slip op. at 5

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

    “7. Conclusion We are persuaded that Petitioner has shown, by a preponderance of the evidence, that claims 11, 12, and 16–20 are unpatentable as obvious in view of MyLibrary. In addition to findings we make above in connection with our analysis of claims 11, 12, and 16–20 as obvious in view MyLibrary, we also adopt as our findings Petitioner’s positions as to how MyLibrary discloses each of the limitations of claims 11, 12, and 16–20. We further adopt as our own Petitioner’s rationales for modifying MyLibrary, as referenced above.” slip op. at 32

  Patent outcomesUS 7,516,177 unpatentable
  Claim construction§ 103 obviousnesscites Graham
  Patents in suitUS 7,516,177
• Commscope Technologies, LLC v. Communications Components Antenna Inc.Institution denied
  PTAB · Nov 3, 2016 · IPR2016-00999 · APJ Jeffrey S Smith · IPR · Institution

  The Board denied institution because the petition did not show a reasonable likelihood of proving claims 1–28 unpatentable, principally because Yea did not establish the claimed asymmetrical coverage areas.

  RulingsInstitution decision

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

    “partes review of claims 1–28 of U.S. Patent No. 8,311,582 B2 (Ex. 1001, “the ’582 patent”). Paper 1 (“Pet.”). Patent Owner, Communications Components Antenna Inc., filed a Preliminary Response. Paper 7 (“Prelim. Resp.”). Institution of an inter partes review is authorized by statute when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a); see 37 C.F.R. § 42.108. Upon consideration of the Petition and the Preliminary Response, we are not persuaded Petitioner has demonstrated a reasonable likelihood that it would prevail in establishing the unpatentability of claims 1–28 of the ’582 patent. Accordingly, we do not institute an inter partes review.” slip op. at 2

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

    “Petitioner’s proposed construction of this limitation is supported by the specification of the ’582 patent. The ’582 patent discloses replacing a single sector coverage area with sub-sector coverage areas, at least one of which is an asymmetrical coverage area. Ex. 1001, 3:16–18. The ’582 patent discloses that the use of asymmetrical coverage areas permits the total coverage area to closely approximate the symmetrical sector coverage area being replaced, without creating excessively large sub-sector handover zones or introducing sever degradation in network performance. Id. at 3:18–24. The ’582 patent discloses creating the asymmetrical coverage areas by replacing an existing antenna with an antenna that has substantially the same coverage area, but divides the coverage area into a plurality of separate asymmetrical beams or sub-sectors. Id. at 4:32–38. As disclosed by the ’582 patent, the replacement antenna produces a plurality of separate beams, each defining a new sub-sector with only a small overlapping area between them and which together provide substantially identical coverage to the sector supported by the original antenna, to upgrade the single sector to a plurality of sub-sectors without significantly affecting neighboring sites. Id. at 4:51–57. The replacement antenna introduces asymmetry into the generated beam pattern. Id. at 4:58–60. The introduction of asymmetrical beams by the replacement antenna allows close approximation of the coverage area of the conventional sector antenna being replaced. Id. at 5:61–64. For purposes of this Decision, we adopt Petitioner’s proposed construction of “a plurality of sub-sector coverage areas extending therefrom, at least one of which is asymmetrical,” as a plurality of replacement sub-sector beams, at least one of which has an asymmetrical shape, where asymmetry includes deliberate or inherent asymmetry as the broadest reasonable construction consistent with the specification.” slip op. at 8

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

    “49 (Fed. Cir. 2005). There, the district court invalidated claims of the patent in suit on summary judgment based on the measured dimensions of a prior art patent figure. Id. at 1148. The Federal Circuit reversed, warning “that arguments based on drawings not explicitly made to scale in issued patents are unavailing.” Id. at 1149. Petitioner here does not identify any portion of Yea disclosing that Figures 4 and 8 are drawn accurately enough to determine an asymmetrical nature of the radiation patterns. Petitioner also fails to cite to any disclosure in Yea that identifies or describes an asymmetrical nature of the radiation patterns. Furthermore, Petitioner also has not explained why the shapes shown in the linear scale drawings of Figure 4 would show similar shapes when converted to a logarithmic scale. Additionally, Petitioner does not explain why the carrier to interference ratio shown in Figure 8 can be used to accurately measure antenna radiation beam patterns. We find Petitioner does not sufficiently establish that the plots shown in Figures 4 and 8 of Yea can be used to determine whether the antenna radiation beam pattern is asymmetrical. On the record before us, we determine the Petition and supporting evidence does not adequately establish a reasonable likelihood that Petitioner would prevail in showing that Yea anticipates independent claims 1, 13, and 20. b. Dependent Claims 2, 6, 7, 9, 11, 12, 14, 15, 18, 19, 21, 22, 24, and 27 Petitioner argues that Yea anticipates dependent claims 2, 6, 7, 9, 11, 12, 14, 15, 18, 19, 21, 22, 24, and 27. Pet. 47–53. In so arguing, Petitioner relies on Yea as disclosing the claimed asymmetrical coverage area. Id. Because we are not persuaded that Yea discloses this limitation, we are not persuaded that Petitioner establishes a reasonable likelihood of prevailing in showing that Yea anticipates dependent claims 2, 6, 7, 9, 11, 12, 14, 15, 18, 19, 21, 22, 24, and 27.” slip op. at 14

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

    “as well as testimony of both Mr. Collins and Mr. Cosgrove. Under Rule 37 C.F.R. § 42.108, any genuine issues of material fact created by the testimonial evidence should be viewed in light most favorable to the petitioner solely for purposes of deciding whether to institute an inter partes review. Even reviewing the testimony of Mr. Collins in the light most favorable to Petitioner, we determine Petitioner has established only that asymmetrical beams may be used in a planar array antenna, but not that a person of ordinary skill in the art would have understood steered beams of a planar array antenna are necessarily asymmetrical. Mr. Collins cites to Litva (Ex. 1009) and Wästberg (Ex. 1018) in stating that prior art steered beams of a planar array antenna can be asymmetrical beams. Ex. 1024 ¶ 179. We credit Patent Owner’s arguments and the testimony of Mr. Cosgrove to determine Petitioner does not sufficiently establish the likelihood that a person of ordinary skill in the art would have understood that steered beams of a planar array antenna are necessarily asymmetrical. Further, Petitioner fails to set forth a sufficient rationale for why a person of ordinary skill in the art would use the asymmetrical beams of the prior art with the disclosure of Yea. Pet. 39–40. On the record before us, we determine the Petition and supporting evidence does not adequately establish a reasonable likelihood that using asymmetrical beams in Yea would have been obvious. We therefore conclude that the information presented does not show a reasonable likelihood that Petitioner would prevail in showing the subject matter of claims 1, 2, 6, 7, 9, 11–15, 18–22, 24, and 27 would have been obvious over Yea, Metawave Website, Litva, and Wästberg.” slip op. at 22

  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 8,311,582
• Sandisk Corp. v. Netlist, Inc.All claims unpatentable
  PTAB · Sep 28, 2016 · IPR2015-01021 · APJ Bryan F Moore · IPR · Final written decision

  Claims 1, 16, 17, 24, 30, and 31 are unpatentable as obvious over Takeda, JEDEC, and Connolly.

  RulingsFinal written decision

  • Prior constructionPrior construction adoptedDecided for patent owner

    “1. “Rank” In the Decision to Institute, we construed the term “rank” as “a block or area that is created using some or all of the memory chips on a memory module.” Dec. to Inst. 8–9. In their papers, neither party challenged our constructions of these claim terms. Thus, for the term “rank,” we see no reason to alter the construction of this claim term as set forth in the Decision to Institute as recited above, and we incorporate our previous analysis for purposes of this decision.” slip op. at 8

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

    “2. All Other Claim Terms We determine that no explicit construction is necessary for any other terms in the challenged claims. B.” slip op. at 8

  • Skill levelSkill level board ownOther

    “would understand basic memory and data communication concepts, with a bachelor’s degree in any of electrical engineering, computer engineering, computer science, or related field. Course work for one of ordinary skill in the art would have included a course on computer organization, principles of digital design, or computer architecture. One of ordinary skill in the art would also have around one year of experience related to computer memory systems. For example, such experience may include experience in DRAM memory technology and related industry standards such as JEDEC standards for DRAM memories and memory modules. Ex. 1002 ¶ 53. Patent Owner’s Declarant, Carl Sechen, Ph.D. (“Dr. Sechen”), testifies that one of ordinary skill in the art at the time of the ’536 Patent would have had an undergraduate degree in electrical engineering or computer engineering, at least two years of professional experience in the design of memory systems, familiarity with the latest JEDEC standard specifications for memory devices and modules, and familiarity with the latest DRAM (dynamic random access memory) memory devices widely available in the market. Ex. 2001 ¶ 14. Dr. Sechen further testifies that a person of ordinary skill in the art would have design proficiency in memory modules comprising DDR memory technology, such as memory modules with JEDEC standard DDR SDRAM (synchronous DRAM) devices. Id. ¶ 15. Based on our review of the ’536 Patent and the types of problems and solutions described in the ’536 Patent and cited prior art, we conclude a person of ordinary skill in the art at the time of the ’536 Patent would have a Bachelor’s degree in electrical engineering, computer engineering, computer science, or related field, and at least one year of work experience, including familiarity with computer memory systems and related industry standards such as JEDEC standards for DRAM memories and memory modules. We further note that the applied prior art reflects the appropriate level of skill at the time of the claimed invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). D.” slip op. at 10

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “To testify as an expert under Federal Rule of Evidence 702, a person need not be a person of ordinary skill in the art, but rather must be “qualified in the pertinent art.” Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1363–64 (Fed. Cir. 2008); see SEB S.A. v. Montgomery Ward & Co., 594 F.3d 1360, 1372–73 (Fed. Cir. 2010) (upholding a district court’s ruling to allow an expert to provide testimony at trial because the expert “had sufficient relevant technical expertise” and the expert’s “knowledge, skill, experience, training [and] education . . . [wa]s likely to assist the trier of fact to understand the evidence”); Mytee Prods., Inc. v. Harris Research, Inc., 439 F. App’x 882, 886–87 (Fed. Cir. 2011) (non-precedential) (upholding admission of the testimony of an expert who “had experience relevant to the field of the invention,” despite admission that he was not a person of ordinary skill in the art). As noted above, Dr. Jagannathan has designed and implemented hardware virtual memory caches, and researched theoretical performance measures of various cache coherency protocols, and has experience in the design of memory systems. We find that Dr. Jagannathan is qualified sufficiently to testify about memory systems and memory modules. E.” slip op. at 12

  Patent outcomesUS 8,081,536 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,081,536

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.