• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Cellect, LLCAll claims unpatentable
  PTAB · Aug 17, 2021 · IPR2020-00512 · APJ John R Kenny · IPR · Final written decision

  Claim 2 is unpatentable as obvious over Swift, Ricquier, and Suzuki; the Board did not reach the alternative ground involving Larson.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for petitioner

    “Neither party identifies any material differences between a skill level corresponding to approximately two years of professional experience in the field of imaging devices and approximately three years of professional experience in the field of visible optical imaging devices, or any difference in the field of imaging devices and the field of visible optical imaging devices. On this record, there is none. We determine that the level of ordinary skill in the art is at the level of one who would have had a Bachelor’s degree in Electrical Engineering, Physics, or a related field, and approximately two to three years of professional experience in the field of visible optical imaging devices.6 This definition is consistent with the prior art of record. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). 6 We do not adopt Petitioner’s inclusion of the qualifier “minimum,” to keep the specified level of skill more definite.” slip op. at 9

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

    “We also are guided by the principle that we only construe claim terms if, and to the extent that, it is necessary for this proceeding. See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe 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)). Neither party requests the construction of any claim term. Pet. 13; PO Resp. 12. Further, we do not find that any claim term requires express construction. III.” slip op. at 10

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedMixed

    “Dr. Neikirk’s testimony is rational, and we credit his testimony over the testimony of Patent Owner’s inventor, who provides no explanation as to why it was purportedly unexpected that, as compared to CCD devices, a CMOS imager with remotely located processing circuitry requires no RFI shielding. For the foregoing reasons, Patent Owner has not established that the alleged unexpected result would have been unexpected to an ordinarily skilled artisan. Further, even assuming the alleged unexpected result truly would have been unexpected to an ordinarily skilled artisan, Patent Owner has not shown sufficient nexus between the unexpected result and the claimed invention.” slip op. at 20

  • Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusNot shown unpatentable

    “Accordingly, there is no presumption of nexus, and Patent Owner has not separately proved the required nexus for the alleged licensing and commercial success. Thus, there is not a legally and factually sufficient connection between the evidence of licensing and the patented invention.” slip op. at 14

  Patent outcomesUS 9,186,052 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,186,052
• Amazon.Com, Inc. v. Customplay, LLCAll claims unpatentable
  PTAB · Mar 11, 2020 · IPR2018-01498 · APJ J John Lee · IPR · Final written decision

  Claims 4, 7–9, 12, 14, 16, 18, and 19 are unpatentable as obvious over the Bergen/Reimer and Armstrong grounds, with Abecassis for specified claims.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art would have had a bachelor’s degree in electrical engineering, computer engineering, or computer science, as well as three years of experience in the design of digital video systems. Pet. 9 (citing Ex. 1002 ¶¶ 24–26). Patent Owner does 2 U.S. Patent Application Publication No. 2007/0250901 A1, published Oct. 25, 2007 (Ex. 1004, “McIntire”). 3 U.S. Patent No. 6,965,890 B1, issued Nov. 15, 2005 (Ex. 1023, “Dey”). 4 U.S. Patent No. 6,038,367, issued Mar. 14, 2000 (Ex. 1024, “Abecassis”). 5 U.S. Patent No. 6,956,573 B1, issued Oct. 18, 2005 (Ex. 1028, “Bergen”). 6 U.S. Patent No. 5,696,905, issued Dec. 9, 1997 (Ex. 1005, “Reimer”). 7 U.S. Patent Application Publication No. 2007/0003223 A1, published Jan. 4, 2007 (Ex. 1021, “Armstrong”). not dispute Petitioner’s formulation of the level of skill in the art. Based on the information and testimony presented with the Petition, we adopt Petitioner’s formulation. B.” slip op. at 6

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

    “Claim Construction For petitions filed before November 13, 2018, claim terms in an unexpired patent are given their broadest reasonable construction in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b) (2018); see Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016). Petitioner contends no express claim constructions are necessary to resolve the issues presented in the Petition. Pet. 10. Patent Owner contends the inventor acted as his own lexicographer in presenting a number of definitions in the Specification of the ’282 Patent, and asserts that these definitions should be used in this proceeding. PO Resp. 7–8. We determine that no claim terms of the challenged claims in the ’282 Patent require express construction. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only claim terms in controversy require express construction, and only to the extent necessary to resolve the controversy). To the extent any interpretation of claim language is necessary, we address those issues in the context of our unpatentability analysis below. C.” slip op. at 7

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

    “playing in response to the request for information.” Petitioner argues that a person of ordinary skill would have recognized that presenting results of a request/query could interfere with viewing the video, and, thus, pausing the video would have been obvious given that it would have been “trivial” for the artisan to implement such a “ubiquitous” feature. Pet. 51–52 (citing Ex. 1002 ¶ 148). Additionally, the Petition cites Reimer as teaching this limitation. Id. at 52. Specifically, Petitioner notes that Reimer teaches using the “Pause” button of a remote control to initiate a query. Id. (citing Ex. 1005, 16:7–14). According to Petitioner, a skilled artisan would have been motivated to combine this feature of Reimer with Bergen because the two references are directed to similar systems, and doing so would constitute the use of a known technique (pausing) to improve Bergen’s system in the same way it improves Reimer’s system. Id. (citing Ex. 1002 ¶¶ 151–152; KSR, 550 U.S. at 417). We agree with Petitioner’s analysis and find that the combination of Bergen and Reimer teaches each limitation of claim 12. Also, we find that Petitioner has articulated a sufficient rationale that would have motivated a person of ordinary skill to combine those teachings. Thus, Petitioner has established by a preponderance of the evidence that claim 12 is unpatentable as obvious over Bergen and Reimer.” slip op. at 20

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

    “(id.)—in other words, the user sees the depicted item in Frame A but, due to reaction time, does not transmit the request for supplemental content about the item until Frame B, which is later in time and which may not depict that item any longer. See id. ¶ 272. In McIntire’s system, the supplemental content would be mapped to both Frame A and Frame B so that when the system receives the request at Frame B, it nonetheless retrieves the supplemental content for the item depicted in Frame A because it was also mapped to Frame B. See id. ¶ 140. This enables the system to identify “one or more articles appearing in the media stream at or around the point in time at which” the user request was received, because the articles are mapped to identifiers representing multiple frames at or around the time the articles appeared. See id. ¶ 310 (emphasis added). But though Frame A and Frame B may be different segments with different segment identifiers, they are both mapped to the same supplemental content. See id. Thus, displaying that content may be considered displaying information associated with both identifiers, but it is the same information, whereas the challenged claims require the information to be different. Petitioner argues that McIntire teaches displaying different information by virtue of the fact that the two segment identifiers it relies on represent two different segments. Pet. Reply 5–6. As discussed above, however, McIntire describes mapping the identifiers to the same content, even when they represent different segments/frames. Next, Petitioner notes that the items depicted in the video change from segment to segment, which creates the user delay problem. Id. at 6. According to Petitioner, “the purpose of identifying additional frame identifiers ‘around’ the current location and retrieving supplemental content for multiple [identifiers] is to display different information associated with previously depicted items that are not depicted in later locations.” Id. Petitioner is correct that McIntire discloses displaying information associated with previously depicted items, which may be different than information associated with items depicted in the current segment (because the items are different). Still, Petitioner has not addressed how McIntire teaches also displaying the information associated with items depicted in the current segment contemporaneously. McIntire’s discussion of the user delay problem teaches that the user is requesting information regarding the previously depicted items, not both the previous items and the current items contemporaneously, due to reaction time. See Ex. 1004 ¶ 272. That is why McIntire describes mapping both the previous and current segment identifiers to the information about the previously depicted items, not the currently depicted items. See id. ¶ 140. Petitioner also contends that a person of ordinary skill in the art would have known about the user delay problem, and that artisans “were motivated to solve it by providing different supplemental content associated with video frames before the request location,” which was within an ordinary artisan’s skill. Pet. Reply 6–7. Essentially, Petitioner’s argument amounts to a contention that the background knowledge of a person of ordinary skill would have supplied this limitation even if it was not taught by McIntire. Such a theory is untimely and will not be considered because it was not advanced in the Petition. See Pet. 28–29; Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016).” slip op. at 44

  Patent outcomesUS 9,380,282 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,380,282
• Amazon.Com, Inc. v. Customplay, LLC.All claims unpatentable
  PTAB · Mar 5, 2020 · IPR2018-01497 · APJ John R Kenny · IPR · Final written decision

  Claims 2, 4, 6, 14, 16, and 19 are unpatentable on at least one §103 ground; claim 4 was not shown unpatentable over Rakib and Livesey.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Computer Engineering, or Computer Science, and at least three years of experience in the design of digital video systems. Pet. 11 (citing Ex. 1002 ¶¶ 24–26). Patent Owner does not dispute Petitioner’s formulation of the level of ordinary skill in the art. Based on the information and testimony presented in the Petition, we adopt Petitioner’s formulation.” slip op. at 8

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for patent owner

    “constructions for the terms “retrieve” and “item” for its showing of the asserted obviousness of claims 14 and 19. Inst. Dec. 11–12; see also Pet. 17, 26. Therefore, we construed “retrieve” and “item” as they are defined in the Specification. Specifically, we construed “retrieve” as comprising “obtain, acquire, procure, download, transfer, extract, and to come into possession by any means or methodology.” Inst. Dec. 12; see also 2 The Petition in this proceeding was filed on August 1, 2018. Ex. 1001, 15:4–8. And we construed “item” as “(i) items, products, objects, properties, acts, or information, whether or not they offer a commercial or purchase opportunity; (ii) items, products, objects, properties, acts, or information that constitute actual or potential product placements, whether prior to or after production of the video; (iii) product placements; and (iv) items, products, objects, properties, acts, or information, that offer informational or entertainment opportunities.” Inst. Dec. 12; see also Ex. 1001, 4:48–55. For our construction for “item,” we included the Specification’s definition of “product placement,” which is “(i) items, products, objects, properties, acts, or information that offer a commercial or purchase opportunity; (ii) items, products, objects, properties, acts, or information that constitute actual or potential product placements, whether prior to or after production of the video; and (iii) product placements.” Inst. Dec. 13; see also Ex. 1001, 4:55–61. Neither party objected to our preliminary constructions of these terms. PO Resp. 6; Pet. Reply, generally. We maintain these constructions and determine that we do not need to expressly construe any other claim term. See Vivid Techs., Inc. v. Am. Sci. & Eng'g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).” slip op. at 8

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “trial, we agree with Patent Owner and do not find that Rakib and Livesey teach or suggest the above limitation. Petitioner’s obviousness theory for this limitation rests on its arguments about what an ordinarily skilled artisan could have done. According to Petitioner, an ordinarily skilled artisan would have understood that a partial overlay could be used to display information. Then Petitioner argues what an ordinarily skilled artisan would have been motivated to do if the artisan decided to use a partial overlay. But Petitioner provides no persuasive evidence that an ordinarily skilled artisan would have been motivated to choose the partial overlay— the predicate act in Petitioner’s analysis. And obviousness cannot be established by merely proving what an ordinarily skilled artisan could have done. Personal Web Techs., LLC v. Apple, Inc., 848 F.3d 987, 993 (Fed. Cir. 2017); Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015). Further, Petitioner’s argument and Dr. Bovik’s testimony that the above limitation simply arranges old elements (requests for information and pausing control instructions), with each performing the same function it had been known to perform, and yields no more than predictable results, are conclusory. Pet. 80–81; Ex. 1002 ¶¶ 202–203. For that reason, we are not persuaded by that argument or that testimony.” slip op. at 69

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

    “Third, an ordinarily skilled artisan would have been motivated to modify Rangan’s apparatus to permit requests for additional information as taught by Rakib for the following reasons: (i) Rangan discloses providing a unique customized experience for numerous users, and an ordinarily skilled artisan would recognize this goal would be best accomplished by providing a portion of the related information and then allowing each user to decide what additional information should be disclosed; (ii) disclosing all information that users may be interested in would be onerous; (iii) Rangan suggests that the user would be able to branch to additional information after selecting the hotspot; and (iv) this modification would be a simple substitution of one known element for another known element to obtain predictable results. Ex. 1002 ¶¶ 71–80. We also find that an ordinarily skilled artisan would have a reasonable expectation of making such a modification. Id. ¶ 80. Fourth, we do not agree with Patent Owner that this modification would impermissibly change Rangan’s principle of operation. PO Resp. 24. The proposed combination would not require that any change in the basic operation of Rangan’s system because Rangan’s system already requests information. See supra Section III.A.2.f.; Ex. 1102 ¶¶ 39–40. The modification would simply involve making another request. Ex. 1102 ¶ 40. We also credit Dr. Bovik’s testimony that Rangan and Rakib do not have incompatible operating structures. Id.” slip op. at 35

  Patent outcomesUS 9,124,950 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,124,950
• Amazon.Com, Inc. v. Customplay, LLCAll claims unpatentable
  PTAB · Mar 4, 2020 · IPR2018-01496 · APJ J John Lee · IPR · Final written decision

  Claims 4–6 and 10–20 are unpatentable as obvious under the stated § 103(a) grounds; Patent Owner’s motion to exclude is denied.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art would have had a bachelor’s degree in electrical engineering, computer engineering, or computer science, as well as three years of experience in the design of digital video systems. Pet. 10–11 (citing Ex. 1002 ¶¶ 24–26). Patent Owner does not dispute Petitioner’s formulation of the level of ordinary skill in the art. Based on the information and testimony presented in the Petition, we adopt Petitioner’s formulation. B.” slip op. at 6

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

    “Claim Construction For petitions filed before November 13, 2018, claim terms in an unexpired patent are given their broadest reasonable construction in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b) (2018); see Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016). Petitioner contends no express claim constructions are necessary to resolve the issues presented in the Petition. Pet. 11. Patent Owner contends the inventor acted as his own lexicographer in presenting a number of definitions in the Specification of the ’346 Patent, and asserts that these definitions should be used in this proceeding. PO Resp. 16. We determine that no claim terms of the challenged claims in the ’346 Patent require express construction. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only claim terms in controversy require express construction, and only to the extent necessary to resolve the controversy). C.” slip op. at 6

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

    “retrieving supplemental content, including “an image of the actress” (visual depiction of the performer), based on a mapping (reference) that associated that content to the segment depicting that actress. See Ex. 1004 ¶ 278; Pet. 28–29. Petitioner asserts inter alia that a skilled artisan would have been motivated to combine these teachings with the system in Thomas because displaying an actor’s image, as taught in McIntire, would have been a well-known technique applied in a conventional fashion to the similar device taught in Thomas to yield predictable results. See Pet. 29–30 (citing Ex. 1002 ¶ 68; KSR, 550 U.S. at 417). In addition, the Petition notes that Thomas teaches displaying “actor information” such as “biographical information” and “[a]ny other suitable information relating to . . . the actor,” which would have suggested to a skilled artisan to include images of the actor. Id. at 30 (quoting Ex. 1003 ¶ 106); Ex. 1002 ¶ 68. This analysis is persuasive, and its supporting evidence is credible and convincing.” slip op. at 19

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

    “such metadata from a service. Ex. 1006, 6:44–50. The Petition sets forth several reasons why a person of ordinary skill would have been motivated to combine these teachings, including that it constitutes a simple substitution of one known technique (Reimer’s request for actor information) for another similar technique (Clarke’s request for metadata) to obtain predictable results. Pet. 73–75 (citing KSR, 550 U.S. at 417). Although Patent Owner argues Clarke “teaches away” from the claimed user request and that the combination of Clarke and Reimer is based on impermissible hindsight, its positions are unpersuasive because they are conclusory and unsupported. PO Resp. 54–55. In particular, with regard to teaching away, Patent Owner fails to identify evidence indicating that a skilled artisan would have understood Clarke to “criticize, discredit, or otherwise discourage the solution claimed” in the ’346 Patent. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Based on the complete record, we find that this limitation is taught by the combination of Clarke and Reimer, and that an ordinary artisan would have been motivated to combine their teachings.” slip op. at 50

  Patent outcomesUS 8,494,346 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,494,346
• Kathrein USA, Inc. / T-Mobile US, Inc v. Fractus S.A.Institution denied
  PTAB · Oct 25, 2019 · IPR2019-00953 · APJ Jameson Lee · IPR · Institution

  The Board denied institution on all challenged claims because claim ambiguity prevented a reasonable likelihood determination on any asserted obviousness ground.

  RulingsInstitution decision

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

    “To institute an inter partes review, we must determine that the information presented in the Petition 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). For the reasons discussed below, we determine that Petitioner has not shown a reasonable likelihood that it would prevail in establishing unpatentability of any one of claims 1, 6, 7, 8, 11, 13, 14, 17, and 20 on any ground. Accordingly, the Petition is denied, and no inter partes review is instituted.” slip op. at 2

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

    “2. The Term Juxtaposition As discussed above, the district court construed “juxtaposition” as “interleaving.” Ex. 1176, 24. The district court did so largely on the basis that, on the record before the district court, it had not been shown that “juxtaposition” has any well-known meaning in the relevant art and because the Specification of the ’256 patent appears to use the terms “juxtaposition” and “interleaving” interchangeably. Id. at 15–24. The record before us similarly demonstrates no well-known meaning for “juxtaposition” in the relevant art, and neither party makes such a contention. Further, we also read the Specification as using the terms “juxtaposition” and “interleaving” interchangeably. For instance, the ’256 patent states “[t]he array configuration is described on a basis of the juxtaposition or interleaving of various conventional single-band arrays operating in the different bands of interest.” Ex, 1101, 1:28–30 (emphasis added). We find no portions of the Specification that make a distinction between “juxtaposition” and “interleaving.” Therefore, we agree with the district court’s construction of “juxtaposition” as “interleaving.” Ex. 1176, 24.” slip op. at 13

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

    “As noted above, we agree with the district court that the term “juxtaposition” means “interleaving.” The ’256 patent, however, does not define “interleave” or “interleaving.” We consult a technical dictionary, which defines “interleave” as follows: interleave (1) To arrange parts of one sequence of things or events so that they alternate with parts of one or more sequences of things or events and so that each sequence retains its identity; for example, to alternately perform the steps of two different tasks in order to achieve concurrent operation of the tasks. (C/C) [20], [85] (2) (software) To alternate the elements of one sequence with the elements of one or more other sequences so that each sequence retains its identity; for example, to alternatively perform the steps of two different tasks in order to achieve concurrent operation of tasks. (C) 610.12-1990. (3) To arrange parts of one sequence of things or events so that they alternate with parts of one or more sequences of the same nature such that each sequence retains its identity; [f]or example, to assign successive addresses to physically separated storage locations in such a way to reduce access time. (C) 610.10-1994w. IEEE 100: The Authoritative Dictionary of IEEE Standards Terms 577 (7th ed. 2000) (“IEEE Dictionary”) (Ex. 3002). The juxtaposition of two antenna arrays as shown in Figure 1 of the ’256 patent, i.e., columns 1a and 1b, which results in the positions of the elements in the multiband array shown in column 1c, however, is not consistent with the above-reproduced definition of “interleave.” In that regard, we again reproduce Figure 1 of the ’256 patent below:” slip op. at 14

  • BurdenDenied

    “C.F.R. § 42.104(b)(3), the Petition must identify how to construe each challenged claim. In this case, the Petition does not address the issues discussed above sufficiently to eliminate uncertainty and speculation as to whether the claims read on the prior art.” slip op. at 21

  Claim constructioncites Phillips · Graham
  Patents in suitUS 8,228,256
• Kathrein USA, Inc. / T-Mobile US, Inc v. Fractus S.A.Institution denied
  PTAB · Oct 25, 2019 · IPR2019-00952 · APJ Jameson Lee · IPR · Institution

  The Board denied institution on all challenged claims because ambiguous claim language left it unable to assess the asserted grounds without speculation.

  RulingsInstitution decision

  • Other 314aInstitution denied discretionary otherInstitution denied

    “Because the claim language is ambiguous in numerous respects as discussed above, we have an inadequate basis to assess the merits of Petitioner’s alleged grounds of unpatentability. If the scope of the claims cannot be determined without undue speculation, as it is the case here, the differences between the claimed invention and the prior art cannot be ascertained. See BlackBerry Corp. v. MobileMedia Ideas, LLC, IPR2013- 00036, Paper 65 at 19–20 (PTAB Mar. 7, 2014) (citing In re Steele, 305 F.2d at 862–63 and reasoning that “the prior art grounds of unpatentability must fall, pro forma, because they are based on speculative assumption as to the meaning of the claims”). In other words, “[w]ithout ascertaining the proper claim scope, we cannot conduct a necessary factual inquiry for determining obviousness—ascertaining differences between the claimed subject matter and the prior art.” Id. at 20 (citing Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966)). Also, the difficulties and speculation we would encounter at trial if review is instituted, stemming from ambiguous claim language, substantially increase the resources and efforts required for reaching a resolution and thus weigh heavily against institution of review. In the circumstance here, reaching the merits of the alleged grounds of unpatentability, either before or after institution of review, involves substantial uncertainty and speculation. See In re Steele, 305 F.2d at 862– 63.” slip op. at 21

  • Prior constructionPrior construction adoptedDecided for patent owner

    “2. The Term Juxtaposition As discussed above, the district court construed “juxtaposition” as “interleaving.” Ex. 1076, 24. The district court did so largely on the basis that, on the record before the district court, it had not been shown that “juxtaposition” has any well-known meaning in the relevant art and because the Specification of the ’256 patent appears to use the terms “juxtaposition” and “interleaving” interchangeably. Id. at 15–24. The record before us similarly demonstrates no well-known meaning for “juxtaposition” in the relevant art, and neither party makes such a contention. Further, we also read the Specification as using the terms “juxtaposition” and “interleaving” interchangeably. For instance, the ’256 patent states “[t]he array configuration is described on a basis of the juxtaposition or interleaving of various conventional single-band arrays operating in the different bands of interest.” Ex, 1001, 1:28–30 (emphasis added). We find no portions of the Specification that make a distinction between “juxtaposition” and “interleaving.” Therefore, we agree with the district court’s construction of “juxtaposition” as “interleaving.” Ex. 1076, 24.” slip op. at 13

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Other

    “Only those claim terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011); Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). For purposes of this Decision, we only need to address construction of the recited juxtaposition of antenna arrays and the term “juxtaposition” itself.” slip op. at 10

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “2 Petitioner asserts that the level of ordinary skill in the art corresponds to that of one who had (1) “an accredited Master’s degree in electrical engineering, applied physics, or any similar course of study, and a few years of experience related to the design and/or application of antennas,” or (2) “a doctorate in electrical engineering, applied physics, or any similar course of study, with knowledge of electromagnetic theory as applied to design and/or application of antennas.” Pet. 29. Patent Owner adopts for Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340, 51,358 (Oct. 11, 2018) (amending 37 C.F.R. § 42.100(b) effective November 13, 2018) (now codified at 37 C.F.R. § 42.100(b) (2019)). The Petition here was filed on April 9, 2019. Paper 3. So we apply the claim construction standard from Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc) (“the Phillips standard”). Claim terms are generally given their ordinary and customary meaning as would be understood by one with ordinary skill in the art in the context of the specification, the prosecution history, other claims, and even extrinsic evidence including expert and inventor testimony, dictionaries, and learned treatises, although extrinsic evidence is less significant than the intrinsic record. Phillips, 415 F.3d at 1312–1317. Usually, the specification is dispositive, and it is the single best guide to the meaning of a disputed term. Id. at 1315. The specification may reveal a special definition given to a claim term by the patentee, or the specification may reveal an intentional disclaimer or disavowal of claim scope by the inventor. Id. at 1316. If an inventor acts as his or her own lexicographer, the definition must be set forth in the specification with reasonable clarity, deliberateness, and precision. Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1249 (Fed. Cir. 1998). The disavowal, if any, can be effectuated by Petitioner’s articulation of the level of ordinary skill. Prelim. Resp. 14. On this record, we have no basis to question Petitioner’s articulation. Thus, we adopt the level of ordinary skill as articulated by Petitioner.” slip op. at 8

  Claim constructionDiscretionary denialcites Phillips · Graham
  Patents in suitUS 8,228,256
• Blasters, Inc v. Waterblasting, LLCSome claims unpatentable
  PTAB · Jul 16, 2019 · IPR2018-00504 · APJ John R Kenny · IPR · Final written decision

  Claims 1–4 and 10 are unpatentable as obvious over Clemons and NLB; claims 5 and 6 were not shown unpatentable over the asserted combinations.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “Both Mr. Boos’s and Dr. King’s assessments appear 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). Further, neither expert has testified, and neither party has argued, that the difference in the experts’ assessments would affect the analysis of any asserted ground. Under the circumstances, we adopt Dr. King’s assessment due to its greater specificity. We, however, determine the differences between the experts’ assessments would not affect our analysis; we would reach the same conclusions using either assessment.” slip op. at 8

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

    “Petitioner’s proposed construction for “articulating link.” In this proceeding, we construe a claim term to have its broadest reasonable construction. Petitioner’s proposed construction, which is broader than Patent Owner’s proposal, is reasonable in light of the Specification. The only non-testimonial evidence in the record for the ordinary meanings of the terms “articulating” and “link” are the dictionary definitions provided by Petitioner (Ex. 1012, 1015), and those dictionary definitions support Petitioner’s proposed construction. The 1999 edition of the Chambers Dictionary of Science and Technology provides an engineering definition for “articulation,” which is “[t]he connection of two parts in such a way (usually by a pin joint) as to permit relative movement.” Ex. 1015. The 2004 edition of the Merriam-Webster Dictionary defines “link” as “a connecting structure.” Ex. 1012. Mr. Boos testifies, and we agree, that these definitions are evidence that an ordinarily skilled artisan would have understood the ordinary meaning of “articulating link” to be “a connecting structure that connects two parts in such a way as to permit relative movement.” Ex. 1009 ¶ 9. Further, Petitioner’s proposed construction is consistent with the disclosure of an articulating link in the Specification, which describes articulating link 31 as connecting blast head 23 and tractor 20, and permitting relative movement between those parts. Ex. 1001, 4:11–14 (“horizontal movement” and “vertical movement”). In addition, we determine that Patent Owner’s proposed construction is not a reasonable construction in light of the Specification. Neither Patent Owner nor Dr. King directs us to any portion of the Specification that expressly defines the term “articulating link.” Instead, the cited portions of the Specification describe what one exemplary articulating link, link 31, does. For example, a cited portion of the Specification describes that articulating link 31 is capable of horizontal and vertical movement and has a rotatable connection with arms 37, 38, 44, and 45. Ex. 1001, 4:11–43 (cited by Ex. 2012 ¶ 40). Nowhere does the Specification, however, indicate that all articulating links must have such a capacity and such a connection. See id. Instead, the Specification merely discloses that this particular exemplary articulating link has these features. Id. In the absence of an explicit or implicit definition, we cannot read limitations from the Specification into the claims. Comark Commc’ns, Inc. v. Harris Corp., 156 F.3d 1182, 1186 (Fed.” slip op. at 15

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

    “We do not need to provide a different construction because Patent Owner does not dispute that NLB discloses a cleaning system. Therefore, any dispute between the parties that could exist regarding the meaning of the term “cleaning system” is not material to any patentability issue we need to decide. 3. Disputes that Concern Only Petitioner’s Alternative Arguments The parties propose differing constructions for the terms “hard surface,” “high pressure,” “blast head,” “coatings,” and “high power vacuum pump.” Compare Pet. 13–17, with PO Resp. 7–9. The differences in the parties’ constructions for these terms are material only to Petitioner’s alternative arguments that the asserted references without NLB would disclose the recited “hard surface,” “high pressure,” “blast head,” “coatings,” and “high power vacuum pump.” Because we do not need to address those alternative arguments in this Decision, we do not need to construe these terms, as we explain in more detail below. First, Petitioner proposes construing “hard surface,” recited in claims 1 and 4, as “any surface having rigidity sufficient to support the weight of a vehicle carrying the blast head.” Pet. 13. Patent Owner proposes construing the term as “the surface of a material that is hard enough to withstand high-pressure water blasting without disintegrating, for instance paving material in common use for road, parking lot, and airport runway surfaces such as asphalt or concrete.” PO Resp. 8–9. The differences between these proposed claim constructions are material only to Petitioner’s alternative arguments that the asserted references without NLB would disclose a hard surface. Under both parties’ constructions, NLB’s roads, concrete, and asphalt are “hard surfaces,” which neither party has disputed. Ex. 1006, 2. Therefore, we do not need to construe “hard surface.”” slip op. at 19

  • Expert testimonyPetitioner expert discountedMixed

    “After evaluating the parties’ arguments and evidence, we agree with Patent Owner that Mr. Boos is an interested witness because of his positions with and his equity stake in Petitioner, and in evaluating his testimony, we consider his status as an interested witness in determining the probative weight of his opinions. For example, when Mr. Boos’s testimony is not sufficiently corroborated by objective evidence, we attribute little or no weight to his testimony due to that interest. When Mr. Boos’s testimony is sufficiently corroborated by objective evidence, however, we do not so discount his testimony. We do not agree with Petitioner’s suggestion that Patent Owner had to prove that Mr. Boos’s interest influenced his testimony for us to take into account that interest. Patent Owner established Mr. Boos’s interest. Therefore, we consider that interest when evaluating Mr. Boos’s testimony. Ethicon, 135 F.3d at 1465. We are not persuaded by Patent Owner’s other arguments for discounting Mr. Boos’s testimony. First, we do not read the testimony of Mr. Boos cited by Patent Owner as demonstrating that Petitioner’s attorneys, rather than Mr. Boos, were responsible for the technical opinions provided in his declarations. Ex. 1023, 16:10–18:3. Mr. Boos describes the preparation of his declaration as a collaboration with Petitioner’s attorneys. Id. Mr. Boos clarified that Petitioner’s attorneys helped with the legal parts of the declarations, but that Mr. Boos wrote the technical conclusions in his declaration. Id. at 240:24–241:23. Second, Mr. Boos articulated a motivation for combining references. See, e.g., Ex. 1009 ¶¶ 142–147.” slip op. at 23

  Patent outcomesUS 7,255,116 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,255,116

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