- Samsung Electronics Co., Ltd. / Micron Technology, Inc. et al. v. Netlist, Inc.All claims unpatentablePTAB · Dec 5, 2023 · IPR2023-00405 · APJ Jon M Jurgovan · IPR · Final written decision
Claims 1–30 are unpatentable as obvious over Harris, the FBDIMM Standards, and Amidi; the Board did not reach the Spiers grounds.
RulingsFinal written decision- Expert testimonyPetitioner expert creditedOther
“the combination of Harris and FBDIMM Standards and relies on the Declaration of Dr. Andrew Wolfe (Ex. 1003) in support. Pet. 14–40. For the reasons that follow, we are persuaded that the evidence, including Dr. Wolfe’s testimony, supports Petitioner’s showing and establishes by a preponderance of the evidence that these claims are unpatentable.” slip op. at 17
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts a person of ordinary skill in the art “would have had an advanced degree in electrical or computer engineering, or a related field, and two years working or studying in the field of design or development of memory systems, or a bachelor’s degree in such engineering disciplines and at least three years working in the field.” Pet. 7–8 (citing Ex. 1003 ¶ 61). Petitioner contends that additional training can substitute for educational or research experience, and vice versa. Id. at 8. Petitioner asserts that such a hypothetical person would have been familiar with the JEDEC industry standards, and knowledgeable about the design and operation of standardized DRAM and SDRAM memory devices and memory modules and how they interacted with a memory controller and other parts of a computer system, including standard communication busses and protocols, such as PCI and SMBus busses and protocols. Id. Petitioner further contends that such “a hypothetical person would also have been familiar with the structure and operation of circuitry used to access and control computer memories, including sophisticated circuits such as ASICs, FPGAs, and CPLDs, and more low-level circuits such as tri-state buffers.” Id. Petitioner further asserts that such “a hypothetical person would further have been familiar with voltage supply requirements of such structures (e.g., memory modules, memory devices, memory controller, and associated access and control circuitry), including voltage conversion and voltage regulation circuitry.” Id. Patent Owner indicates “[f]or the purposes of this [Response], Patent Owner is applying the level of ordinary skill in the art proposed by Petitioner.” Resp. 2. The evidence that Petitioner presents mostly applies to the educational level and experience of workers in the field, but also touches upon other factors as well, including problems and solutions in the prior art and complexity of the technology. See Pet. 7–8. We find Petitioner’s proposal is consistent with the level of skill in the art reflected by the ’054 patent and the prior art of record, and, therefore, we adopt Petitioner’s proposed level of ordinary skill in the art, with the exception of the open-ended language “at least,” which introduces ambiguity and may encompass skill levels beyond ordinary.” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner
“The District Court’s Claim Construction Order (Ex. 2032) issued after our Institution Decision (Paper 11). Although Petitioner argued in the District Court litigation that the claim preambles were not limiting, Petitioner does not appear to maintain that argument here following the District Court’s determination that the preambles are limiting. Ex. 2032, 35. Since the term is recited in both the preambles and bodies of these claims, there is evidence that the inventors of the ’054 patent intended the term to limit the claim, as the District Court determined. See Catalina Mktg. Int’l., Inc. v. Coolsavings,com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (citing Bell Commc’ns Rsch., Inc. v. Vitalink Communications Corp., 55 F.3d 615, 620 (Fed. Cir. 1995) (“dependence on a particular disputed preamble phrase for antecedent basis may limit claim scope because it indicates a reliance on both the preamble and claim body to define the claimed invention.”)).” slip op. at 16
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“We agree with Petitioner’s contention that “memory module” is not limited to “main memory modules . . . designed to connect to the primary memory controller.” See Reply 2. The ’054 patent states In certain embodiments, the device contains a high density Flash memory with a low density DRAM, wherein the DRAM is used as a data buffer for read/write operation. The Flash serves as the main memory. Ex. 1001, 11:3–6 (emphases added). This is the only mention of “main memory” in the ’054 patent. That the Flash memory serves as “main memory” in “certain embodiments” implies that there may be other embodiments in which this is not the case. Accordingly, we agree with Petitioner that the term “memory module” is not limited to “main memory modules . . . designed to connect to the primary memory controller.” We agree with Patent Owner that the “memory module” includes structure to connect with a “host system” including its memory controller. See, e.g., Ex. 1001, code (57), 12:52–59. The claims do not mention a “memory controller,” but they do mention that the “memory module” has an “interface” to connect with a “host system.” Ex. 1001, 38:20–25 (claim 1), 39:63–65 (claim 16), 41:6–8 (claim 24). That the “memory module” has structure for connecting to the host system’s memory controller may thus be implied from the claims. We agree with Petitioner that the District Court’s determination was that the preambles (presumably of claims 1, 4, 6, 11, 16 and 25) are limiting. Ex. 2032, 35. To the extent that the District Court’s determination construed “memory module” to include structure necessary to connect to a memory controller, our construction of “memory module” is consistent.” slip op. at 16
Patent outcomesUS 11,232,054 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,232,054 - Samsung Electronics Co., Ltd. / Micron Technology, Inc. et al. v. Netlist, Inc.All claims unpatentablePTAB · Dec 5, 2023 · IPR2022-00999 · APJ Jon M Jurgovan · IPR · Final written decision
Claims 1–30 are unpatentable as obvious over Harris, the FBDIMM Standards, and Amidi, with Hajeck also supporting Ground 3; Grounds 4 and 5 were not reached.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“art include “(1) the educational level of the inventor; (2) type of problems encountered in the art; (3) prior art solutions to those problems; (4) rapidity with which innovations are made; (5) sophistication of the technology; and (6) educational level of active workers in the field.” Envtl. Designs, Ltd. v. Union Oil Co. of Cal., 713 F.2d 693, 696 (Fed. Cir. 1983) (citing Orthopedic Equip. Co. v. All Orthopedic Appliances, Inc., 707 F.2d 1376, 1381–82 (Fed. Cir. 1983)). “Not all such factors may be present in every case, and one or more of these or other factors may predominate in a particular case.” Id. at 696–97. The prior art may reflect an appropriate level of skill. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001). Petitioner asserts a person of ordinary skill in the art “would have had an advanced degree in electrical or computer engineering, or a related field, and two years working or studying in the field of design or development of memory systems, or a bachelor’s degree in such engineering disciplines and at least three years working in the field.” Pet. 7–8 (citing Ex. 1003 ¶ 61). Petitioner contends that additional training can substitute for educational or research experience, and vice versa. Id. at 8. Petitioner asserts that such a hypothetical person would have been familiar with the JEDEC industry standards, and knowledgeable about the design and operation of standardized DRAM and SDRAM memory devices and memory modules and how they interacted with a memory controller and other parts of a computer system, including standard communication busses and protocols, such as PCI and SMBus busses and protocols. Id. Petitioner further contends that such “a hypothetical person would also have been familiar with the structure and operation of circuitry used to access and control computer memories, including sophisticated circuits such as ASICs, FPGAs, and CPLDs, and more low-level circuits such as tri-state buffers.” Id. Petitioner further asserts that such “a hypothetical person would further have been familiar with voltage supply requirements of such structures (e.g., memory modules, memory devices, memory controller, and associated access and control circuitry), including voltage conversion and voltage regulation circuitry.” Id. Patent Owner indicates “[f]or the purposes of this [Response], Patent Owner is applying the level of ordinary skill in the art proposed by Petitioner.” Resp. 2. The evidence that Petitioner presents mostly applies to the educational level and experience of workers in the field, but also touches upon other factors as well, including problems and solutions in the prior art and complexity of the technology. See Pet. 7–8. We find Petitioner’s proposal is consistent with the level of skill in the art reflected by the ’054 patent and the prior art of record, and, therefore, we adopt Petitioner’s proposed level of ordinary skill in the art, with the exception of the open-ended language “at least,” which introduces ambiguity and may encompass skill levels beyond ordinary.” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner
“The District Court’s Claim Construction Order (Ex. 2032) issued after our Institution Decision (Paper 11). Although Petitioner argued in the District Court litigation that the claim preambles were not limiting, Petitioner does not appear to maintain that argument here following the District Court’s determination that the preambles are limiting. Ex. 2032, 35. Since the term is recited in both the preambles and bodies of these claims, there is evidence that the inventors of the ’054 patent intended the term to limit the claim, as the District Court determined. See Catalina Mktg. Int’l., Inc. v. Coolsavings,com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (citing Bell Commc’ns Rsch., Inc. v. Vitalink Communications Corp., 55 F.3d 615, 620 (Fed. Cir. 1995) (“dependence on a particular disputed preamble phrase for antecedent basis may limit claim scope because it indicates a reliance on both the preamble and claim body to define the claimed invention.”)).” slip op. at 16
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“We agree with Patent Owner that the “memory module” includes structure to connect with a “host system” including its memory controller. See, e.g., Ex. 1001, code (57), 12:52–59. The claims do not mention a “memory controller,” but they do mention that the “memory module” has an “interface” to connect with a “host system.” Ex. 1001, 38:20–25 (claim 1), 39:63–65 (claim 16), 41:6–8 (claim 24). That the “memory module” has structure for connecting to the host system’s memory controller may thus be implied from the claims. We agree with Petitioner that the District Court’s determination was that the preambles (presumably of claims 1, 4, 6, 11, 16 and 25) are limiting. Ex. 2032, 35. To the extent that the District Court’s determination construed “memory module” to include structure necessary to connect to a memory controller, our construction of “memory module” is consistent.” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“conversion for double-rank DIMMs can be accommodated with a form factor design of approximately about one square inch (both sides of the printed circuit board).” Ex. 1023 ¶ 13. Thus, Harris indicates that the VRM circuitry to generate two regulated voltages can fit within this space. Patent Owner argues that Petitioner’s evidence shows that each ADP1821 converter package would be about 0.193 by 0.236 inches. Sur-Reply 12 (citing Ex. 1078, 20–23). This means three ADP1821 converters would occupy about 40% of the available space. Patent Owner does not demonstrate that the remaining 60% of available space would have been insufficient to accommodate the additional components required for three voltage converters. Id. at 12–13. In any case, we do not view Harris’s disclosure of “approximately about one square inch” to limit the applicability of its teachings to a person of ordinary skill in the art. In the same paragraph, Harris states that the form factor “may be suitably modified.” Ex. 1023 ¶ 13. Patent Owner further argues that “independent voltage sources for different voltages would require specific control circuitry to delay and more precisely control each voltage source’s ramping rate, adding complexity and cost without commensurate benefits.” Sur-Reply 14 (citing Ex. 2061 ¶ 90). However, Dr. Wolfe states that it is simpler to use multiple regulators for multiple voltages since a single regulator that generates multiple voltages is more complicated than multiple regulators. Ex. 2060, 53:16–54:14, 89:1–21, cited in Reply 14. Dr. Wolfe further indicates that buck converters can be in some applications “extremely small.” Ex. 2060, 89:11–15. Dr. Wolfe further testifies that multiple smaller converters may be less costly than a larger single converter because of component costs, separated spaces available for converters on circuit board, and other “ordinary engineering factors.” Id. at 45:21–46:10. Although Patent Owner may be correct that individual control of multiple voltage regulators would have required additional control circuitry, this does not meaningfully undermine the benefits that Petitioner mentions including permitting power sequencing, independent control of voltages, improved efficiency without generating excess heat or requiring cooling devices, and saving power. Pet. 29–30 (citing id. at 14–19; Ex. 1028, 17–20; Ex. 1026, 2–3, 9; Ex. 1028, 30–32; Ex. 1040, 1, 23–24 (Figs. 22–25); Ex. 1041, 1, 13; Ex. 1048, 3; Ex. 1058, 5; Ex. 1059, 5:23–30; Ex. 1062, 11, 13; Ex. 1064 ¶ 101; Ex. 1003 ¶¶ 240, 255). Dr. Wolfe testified that, in at least some circumstances, multiple converters may be less complicated, less costly, and take up less space. Ex. 2060, 45:21–46:10, 89:11–15. Patent Owner’s argument that a single converter generating multiple voltages would be better in some circumstances does not negate that Petitioner’s proposed use of multiple converters for multiple voltages would have been preferred in other circumstances that a person of ordinary skill in the art would have recognized. See Intel Corp. v. Qualcomm Inc., 21 F.4th 784, 800 (Fed. Cir. 2021) (“Our caselaw is clear. It’s not necessary to show that a combination is ‘the best option, only that it be a suitable option.’” quoting PAR Pharm., Inc. v. TWI Pharms., Inc., 773 F.3d 1186, 1197–98 (Fed. Cir. 2014)). Thus, Patent Owner’s argument does not undermine Petitioner’s showing of a motivation to combine Harris and the FBDIMM Standards.” slip op. at 25
Patent outcomesUS 11,232,054 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,232,054 - Google LLC v. Parus Holdings, Inc.All claims unpatentablePTAB · Nov 6, 2023 · IPR2022-00805 · APJ Patrick M Boucher · IPR · Final written decision
Claims 1–26 are unpatentable: claims 1–26 as obvious over Wise and Woods, claims 1–25 over Wise and Dasan, and claim 26 over Wise, Dasan, and Uppaluru.
RulingsFinal written decision- Skill levelSkill level board ownDecided for petitioner
“Petitioner proposes that a person of ordinary skill in the art “would have had a Bachelor’s degree in electrical engineering, computer science or a related field, and at least two years of experience with voice interfaces and information processing.” Pet. 6–7. Petitioner adds that “[m]ore education could substitute for less experience, and vice versa.” Id. Mr. Lipoff supports this articulation, and Patent Owner makes the same proposal. See Ex. 1002 ¶ 77; PO Resp. 1. Because we find the parties’ agreed proposal reasonable, consistent with the level of skill reflected by the prior art, and supported by Mr. Lipoff’s testimony, we adopt it for this Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“used to construe the claim in a civil action under 35 U.S.C. 282(b), including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” 37 C.F.R. § 42.100(b) (2019); see Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). “Petitioner does not believe that any express constructions are necessary” to resolve the parties’ dispute, and Patent Owner agrees that “claim construction is unnecessary.” See Pet. 7; PO Resp. 1. On the record before us, we do not find it necessary to construe any term for this Decision. See 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))).” slip op. at 10
- Expert testimonyPatent owner expert discountedDecided for petitioner
“Mr. Occhiogrosso made similarly inconsistent statements on this point on cross-examination. For example, when asked whether the claim requires that the “content-descriptor file be a different file,” Mr. Occhiogrosso responded that “[i]n my opinion, there’s nothing inherent that says it has to be stored in the same physical data file on the same storage medium.” Ex. 1057, 68:11–23. But when asked, “Could the content-descriptor file be one of the web pages that make up a website?” he responded, “In my opinion, no.” Id. at 70:9–13. Notwithstanding such inconsistent statements, we find that, taken as a whole, Mr. Occhiogrosso’s testimony reflects an opinion contrary to that of Mr. Lipoff, namely the recited “content-descriptor file” must be a file separate and distinct from an HTML web page. The Federal Circuit has “viewed extrinsic evidence in general as less reliable than the patent and its prosecution history in determining how to read claim terms,” e.g., because expert testimony “is generated at the time of and for the purpose of litigation and thus can suffer from bias that is not present in intrinsic evidence.” Phillips, 415 F.3d at 1318. In this instance, although we discern certain (but contrary) positions in the experts’ opinions on this point, the inconsistencies in their cross-examination testimony limit our confidence in those opinions. We accordingly give greater weight to the intrinsic evidence, which more strongly supports Petitioner’s position. We accordingly determine that Petitioner’s showing with respect to this limitation is sufficient.” slip op. at 39
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“Patent Owner disputes Petitioner’s reasoning because Petitioner’s “motivation to combine argument is centered on the periodic retrieval of information from an information source (webpage) and not on an information source that is periodically updated,” as the claim recites. PO Resp. 24. Nevertheless, Patent Owner concedes that Petitioner “establishes . . . that the Wise website information sources are periodically updated,” which Petitioner correctly observes “is all that the claim requires.” Id.; Reply 9. Patent Owner reasons that there is no motivation to combine teachings from the two references because “the Wise system alone already provides the most up-to-date and complete information to the user.” PO Resp. 27. But the Federal Circuit has criticized such an argument as “reasoning [that] belies its conclusion”: “[t]hat [two prior art references] address the same problem and that [one of the references] was a known way to address that problem is precisely the reason that there’s a motivation to combine under KSR and [Federal Circuit] precedent.” Intel Corp. v. PACT XPP Schweiz AG, 61 F.4th 1373, 1380 (Fed. Cir. 2023) (quoted in Pet. 10– 11). This is the “known-technique” rationale, in which “[t]here is a motivation to combine when a known technique ‘has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way.” Id. at 1380–1381 (citing KSR, 550 U.S. at 417). Implementing periodic updating of information sources as taught by Dasan would be within the skill of an ordinary artisan to implement in Wise’s system. We accordingly determine that Petitioner articulates sufficient reasoning, supported by rational underpinning, to effect the combination it proposes and to meet the first aspect of the preamble.” slip op. at 19
Patent outcomesUS 9,769,314 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,769,314 - Universal Electronics, Inc. / Gemstar Technology (Qinzhou) Co. Ltd. et al. v. ROKU, Inc.Some claims unpatentablePTAB · Oct 23, 2023 · IPR2022-00818 · APJ Patrick M Boucher · IPR · Final written decision
Claims 1–5, 8–10, and 14 are unpatentable over RadioShack; claim 11 was not shown unpatentable over Wouters and Verzulli because the combination did not disclose the claimed combining and installing steps.
RulingsFinal written decision- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“disseminated to the interested public, ‘public accessibility’ has been called the touch-stone in determining whether a reference constitutes a ‘printed publication’ . . . .” Jazz Pharm., Inc. v. Amneal Pharm., LLC, 895 F.3d 1347, 1356 (Fed. Cir. 2018) (quoting In re Hall, 781 F.2d 897, 898–99 (Fed. Cir. 1986)). A reference is considered “publicly accessible” if it was “disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art, exercising reasonable diligence, can locate it.” Id. at 1355–56 (citing In re Wyer, 655 F.2d 221, 226 (CCPA 1981)). Petitioner treats this requirement as having two aspects, namely (1) whether a person of ordinary skill could reasonably have found RemoteCentral.com and (2) whether such a skilled artisan could reasonably have found RadioShack on RemoteCentral.com. Reply 8–13; see also Tr. 33:25–34:8 (Patent Owner asserting that there are two aspects to the analysis on public accessibility: “The first is whether a [person of ordinary skill in the art] would have known to arrive at the website containing the prior art reference. The second one is . . . , [a]ssuming the [person of ordinary skill in the art] would have done so, would the [person of ordinary skill in the art], exercising reasonable diligence, have located the prior art reference on the site? And these are separate and distinct requirements, and if you fail one of them, the document is not publicly accessible.”).” slip op. at 27
- Strike new argumentNew argument consideredDecided for petitioner
“addressed squarely by the principles set forth in Hulu, which addresses the standards at the institution stage and during the trial for evaluating evidence proffered to show asserted art qualifies as a printed publication. Specifically, after a petitioner has presented “evidence sufficient to establish a reasonable likelihood that the reference was publicly accessible before the critical date of the challenged patent,” such that trial is instituted, “some limited opportunities exist for the petitioner to present new evidence later.” Hulu at 13–14. These “limited opportunities” include “in a reply to the patent owner response,” provided that the additional evidence is “responsive to the prior briefing” and provided that the additional evidence does not require “completely reopen[ing] the record, by, for example, changing theories after filing a petition.” Id. at 14–15. Although Patent Owner contends that “[t]his is not an example of permissible rebuttal evidence, but rather a belated attempt to fill a gap in the evidence in the Petition,” we disagree. See Sur-reply 6. Rather, the 7 Patent Owner appears to refer incorrectly to Exhibit 1040 instead of Exhibit 1041 when identifying “articles allegedly referring to RemoteCentral.com.” See Sur-reply 5–6. progression within the instant proceeding comports well with the Hulu framework. During the preliminary proceeding, Petitioner came forth with “evidence sufficient to establish a reasonable likelihood that [RadioShack] was publicly accessible before the critical date of the challenged patent,” just as Hulu demands. Hulu at 13; Inst. Dec. 23 (“[W]e determine that Petitioner’s showing regarding public accessibility of RadioShack is sufficient under the standard we apply at this stage of the proceeding.”). Patent Owner challenges RadioShack’s status as a printed publication in its Response, just as Hulu contemplates. Hulu at 15; PO Resp. 28–41. And Petitioner submits additional evidence that replies to that challenge without changing its theory that RadioShack qualifies as a printed publication by virtue of its accessibility on the RemoteCentral.com web site and in light of date indicia on RadioShack itself.8 See Hulu at 15–16; Reply 7–13. Moreover, in determining that Petitioner’s additional evidence directed at RemoteCentral.com is properly considered, we are further mindful of the Federal Circuit’s endorsement that “the petitioner in an inter partes review proceeding may introduce new evidence after the petition stage if the evidence is a legitimate reply to evidence introduced by the patent owner.” Anacor Pharm., Inc. v. Iancu, 889 F.3d 1372, 1830–81 (Fed. 8 In its Reply, Petitioner also relies on evidence of publication of RadioShack on Radio Shack’s own public website and on “a third location,” hifi-remote.com. Reply 14. As we discuss below, we determine that the presence of RadioShack on RemoteCentral.com is sufficient to qualify RadioShack as a printed publication. We therefore do not reach the issue of whether presence on either the Radio Shack web site or on hifi-remote.com is an improper new theory raised by Petitioner in its Reply. See Tr. 8:13– 9:23 (Petitioner discussing whether reliance on hifi-remote.com presents a different theory than set forth in the Petition). Cir. 2018); see also Vidstream LLC v. Twitter, Inc., 981 F.3d 1060, 1065 (Fed. Cir. 2020) (“The Board denied VidStream’s Motion to Exclude, holding that it was appropriate to permit Twitter to respond to VidStream’s challenge [to the status of Bradford as a printed publication] by providing additional evidence to establish the Bradford publication date. We conclude that the Board acted appropriately, for the Board permitted both sides to provide evidence concerning the reference date of the Bradford book, in pursuit of the correct answer.”). We accordingly give due weight to Petitioner’s additional evidence of RadioShack’s accessibility on the RemoteCentral.com web site.” slip op. at 25
- ExcludeMotion to exclude, deniedDenied
“1 Patent Owner objected to Petitioner’s demonstrative slides 45 and 68 as presenting a new argument that was not previously made with respect to challenged claims 2 and 10. Paper 27; see Paper 26 (Petitioner’s demonstratives), 45, 68. At the oral hearing, we reserved ruling on the objections. Tr. 5:23–6:3. Both slides reproduce the same portions of Exhibits 1002 and 1025, with the statement that “A press and hold for an auto-scan or brand-scan is admitted prior art.” Paper 26, 45, 68. As explained below, we do not reach the predicate position upon which the objections are based. See Tr. 5:8–11 (Petitioner stating that “this Board only needs to resolve this objection if it accepts Roku’s claim construction argument that the claims cover a press and hold of a single button, but that they do not cover pressing multiple buttons to present that argument in the alternative. So, if you reject that argument, you don’t even have to resolve the objection.”). We accordingly dismiss the objections as moot.” slip op. at 2
- Skill levelSkill level patent owner adoptedDecided for patent owner
“We agree with this assessment, and the parties do not specifically advocate for one articulation over the other in this proceeding. See Pet. 8 (Petitioner asserting that “[t]he Challenged Claims are unpatentable under both proposed levels”); PO Resp. 5 (Patent Owner stating its “position that the challenged claims are unpatentable under either proposed level of ordinary skill”). We adopt Patent Owner’s proposed statement of the level of ordinary skill as advanced in the related ITC Investigation. But we note that we would reach the same ultimate conclusion that Petitioner shows, by a preponderance of the evidence, that all challenged claims are unpatentable were we to adopt Petitioner’s proposal instead.” slip op. at 12
Patent outcomesUS 8,378,875 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,378,875 - Samsung Electronics Co., Ltd / Micron Technology, Inc. et al. v. Netlist, Inc.All claims unpatentablePTAB · Oct 17, 2023 · IPR2022-00711 · APJ Daniel J Galligan · IPR · Final written decision
Claims 1–20 are unpatentable as obvious over Hiraishi and Butt, with Ellsberry or Kim added for certain dependent claims; the Tokuhiro grounds were not reached.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“have been someone with an advanced degree in electrical or computer engineering and at least two years of work experience in the field of memory module design and operation, or a bachelor’s degree in such engineering disciplines and at least three years of work experience in the field,” and would have had knowledge of various standards for memory, such as Joint Electron Devices Engineering Council (JEDEC) standards, and circuitry used in memories. Pet. 2–3 (citing Ex. 1003 ¶ 37). Patent Owner asserts that it is “applying the level of ordinary skill in the art proposed by Petitioner.” PO Resp. 11. We adopt Petitioner’s uncontested level of ordinary skill with the exception of the phrase “at least,” which introduces vagueness as to the amount of experience.” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“C. Claim Construction We agree with the parties that we need not construe expressly any claim terms to decide the issues before us. See Pet. 9; PO Resp. 11; see also Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy,” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“We disagree with Patent Owner’s arguments because, as Petitioner points out, the evidence shows that DDR3 devices do not always have edge-aligned data and strobes. See Pet. Reply 4. In particular, Patent Owner’s declarant Dr. Mangione-Smith testifies that the DDR3 standard allows a 200 picosecond maximum DQS-to-DQ skew, “which is a very tight tolerance considering the speed at which the memory devices are operating.” Ex. 2006 ¶¶ 122–125 (citing Ex. 1020, 164). During cross-examination of Dr. Mangione-Smith, Petitioner established that a 200 picosecond tolerance is actually a misalignment of over 28 degrees considering the 2.5 Pet. Reply 4 (discussing this testimony). Thus, the evidence shows that DDR3 data and strobes are not always edge-aligned. Patent Owner dismisses this, stating that “Petitioner’s argument is tantamount to saying that the JEDEC standard prescribes a tolerance for DQS/DQ skew that causes errors, which runs counter to the entire standard-setting process.” PO Sur-reply 3–4. On the contrary, we find that Petitioner’s showing underscores that Butt’s read training has direct applicability to a memory that may potentially skew by as much as 28 degrees. Butt explains that read training is used “to establish optimum DQS strobe settings” and thereby “enables a reliable data read operation for high speed applications.” Ex. 1029 ¶¶ 33, 36; see Pet. 44–47 (discussing this disclosure). As the Supreme Court has stated, “if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.” KSR, 550 U.S. at 417. “This is the so-called ‘known-technique’ rationale. And if there’s a known technique to address a known problem using ‘prior art elements according to their established functions,’ then there is a motivation to combine.” Intel Corp. v. PACT XPP Schweiz AG, 61 F.4th 1373, 1380 (Fed. Cir. 2023) (citing Intel Corp. v. Qualcomm Inc., 21 F.4th 784, 799–800 (Fed. Cir. 2021)). We find that Butt’s read training is such a known technique that would improve Hiraishi’s memory based on the benefits identified in Butt and discussed above, i.e., “establish[ing] optimum DQS strobe settings” to enable “reliable data read operation for high speed applications.” Ex. 1029 ¶¶ 33, 36. timing operation” to account for flight time differences between memory devices, pointing to Hiraishi’s retiming operation that is performed after the data are loaded in FIFO (Read) circuit 302. PO Resp. 45 (citing Ex. 1005 ¶ 130). But Petitioner’s obviousness contentions are based on adjusting the timing of strobes before the data are registered in (loaded into) FIFO (Read) circuit 302. See Pet. 35–37 (asserting that the delayed read strobe is “the DQS signal supplied to FIFO (Read) circuit 302,” which is then used to register the data in FIFO (Read) circuit 302). Thus, Patent Owner is pointing to an entirely different operation. Furthermore, even if Hiraishi discloses some mechanism to cope with misaligned data and strobes, we find that Butt’s technique is a “suitable option” in combination with Hiraishi. See Intel, 61 F.4th at 1381. Indeed, in such a case, Hiraishi and Butt “address the same problem,” and Butt’s read training “was a known way to address that problem[, which] is precisely the reason that there’s a motivation to combine under KSR and [Federal Circuit] precedent.” Intel, 61 F.4th at 1380. Thus, it is not necessary for Petitioner to “identify what details are allegedly missing from Hiraishi which are being provided by Butt,” as asserted by Patent Owner. See PO Resp. 44.” slip op. at 14
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“For the reasons discussed above and based on Petitioner’s contentions and evidence, we find that the combination of Hiraishi and Butt teaches “delay[ing] the first read strobe by a first predetermined amount to generate a first delayed read strobe,” “wherein the first predetermined amount is determined based at least on signals received by the first data buffer during one or more previous operations,” as well as the “sample” and “transmit” operations recited in claim 1. We also find, as discussed above, that a person of ordinary skill in the art would have combined the teachings of Hiraishi and Butt and would have had a reasonable expectation of success in arriving at the claimed invention. c) Conclusion for Claim 1 We conclude that the subject matter of claim 1 would have been obvious based on the combined teachings of Hiraishi and Butt.” slip op. at 19
Patent outcomesUS 10,860,506 unpatentableClaim construction§ 103 obviousnesscites KSRPatents in suitUS 10,860,506 - Snap Inc. v. You Map Inc.All claims unpatentablePTAB · Aug 31, 2023 · IPR2022-00568 · APJ Jason M Repko · IPR · Final written decision
Claims 1–20 are unpatentable as obvious over Feldman and Jackson, or Feldman, Jackson, and Rush; the contingent motion to amend is granted.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“had a bachelor’s degree in electrical engineering, computer science, or a related field, plus two years’ work or research experience with location-based content delivery and/or visualization.” Pet. 5 (citing Ex. 1003 ¶¶ 19– experience and vice versa.” Id. Patent Owner does not contest Petitioner’s proposed level of ordinary skill in the art. See PO Resp.; Sur-reply. Patent Owner’s expert, Dr. Shamos, testifies that he “generally agree[s]” with Petitioner’s proposed articulation, and provides substantially the same expression of the level of ordinary skill in the art. Shamos Decl. ¶¶ 30–31. In this Decision, we apply Petitioner’s proposed definition.” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“Although Patent Owner appears to argue that applying the preference factors to a general score does not encompass weighting the general score’s components (see, e.g., id. at 10–12; Sur-reply 13–16), this is not reflected in Patent Owner’s proposed construction (PO Resp. 12). Patent Owner’s construction provides no limitation on how the preference factors are applied to a general score. See id. To the extent Patent Owner argues that the phrase “applied to,” as recited in the claim, excludes such component-based weighting, we disagree. Rather, the record better aligns with Petitioner’s argument that “applied to” involves a linear combination of values, which could be the values of the general score’s components. See Pet. 30–31. Petitioner’s position is supported by the plain language of the claim, the ’727 patent’s discussion of weighted aggregation, and Mr. William’s testimony—all of which indicate that weighting the component scores is encompassed by claim 1. As for the plain language, the claim does not define how the factors are “applied to” the general score. Rather, the claim only recites that they are. In the context of the claim, the preference factors are applied to the general score. Patent Owner does not dispute this. PO Resp. 12. Claim 1 further recites that the customized score is based on the application of the preference factors to the general score. Ex. 1001, 23:14–27. We note that the generate the combined ranking, which is then used for the recited selection. Beyond that, the claim does not specify how the two rankings are used or how the combined ranking must be generated. Thus, under the claim’s plain language, the customized score can be used to rank the posts and is based on the general score. Id.” slip op. at 11
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“adequately supported. We find that Mr. William’s declaration is adequately supported. This is not case where an expert “does not disclose the underlying facts or data on which the opinion is based.” See 37 C.F.R. § 42.65(a). Rather, Mr. Williams adequately supports his testimony about the second preference factor with reasoning based on Jackson’s teachings about how the social-network distance is used to weight the global score. See, e.g., Williams Decl. ¶ 133 (citing Ex. 1006, Fig. 4A, 16:23–25, 58–60). weighting criteria can be used together. Id. ¶¶ 147–149 (citing Ex. 1006, 3:57–44:22, 5:53–58, 9:54–67, 13:17–22, 17:47–67). Mr. Williams’s analysis relies on Jackson’s discussion of using multiple factors to score a post. Ex. 1006, 17:47–55, cited in Williams Decl. ¶ 147; see also Pet. 42–43; Reply 9. Mr. Williams also cites Jackson’s discussion of how social-network distance and geographic distance can be used together. Williams Decl. ¶ 147 (citing Ex. 1006, 3:57–4:22). We agree with Petitioner that Jackson adequately supports this part of Mr. Williams’s analysis. Reply 7–9. Specifically, Jackson discloses that a determination may use social-network distance to “modify the criteria” that it uses to provide posts to users. Ex. 1006, 3:66–4:1, cited in Williams Decl. ¶ 147. Jackson further explains how geographic distance can be used in addition to other criteria: “Transmitting the post to the second computing device may be dependent upon determining that the criteria is met and determining that the posting location is within the threshold distance.” Id. at 4:19–22 (emphasis added), cited in Williams Decl. ¶ 147. This is consistent with Jackson’s teaching that a post may be recommended based on several factors and for several reasons. Id. at 17:47–67, cited in Williams Decl. ¶ 147. Also, Jackson explains how the global score, which Petitioner mapped to the recited “general score,” is used to generate a post’s score: “[A] particular post’s global score . . . is multiplied by, divided by, or summed with a distance between” a user and the post’s author. Id. at 9:54–67, cited in Williams Decl. ¶ 148. Jackson weights a post’s global score against a position of the posts author in a social graph. Id. at 9:25–53. Mr. Williams testifies that it is obvious and conventional to generate the modified scores embodiment. Williams Decl. ¶ 144. This is supported by Jackson. In another example cited by Petitioner, Jackson multiplies a post’s global score by a geographic distance to generate a personal score. Id. at 21:60–22:5, cited in Pet. 37, 39, 43. Thus, Petitioner has shown Jackson teaches or suggests applying two different sets of preference factors to a post’s global score. Pet. 41 (citing Williams Decl. ¶ 144). We disagree with Patent Owner’s argument that neither Petitioner nor” slip op. at 31
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“We agree with Petitioner that Jackson adequately supports this part of Mr. Williams’s analysis. Reply 7–9. Specifically, Jackson discloses that a determination may use social-network distance to “modify the criteria” that it uses to provide posts to users. Ex. 1006, 3:66–4:1, cited in Williams Decl. ¶ 147. Jackson further explains how geographic distance can be used in addition to other criteria: “Transmitting the post to the second computing device may be dependent upon determining that the criteria is met and determining that the posting location is within the threshold distance.” Id. at 4:19–22 (emphasis added), cited in Williams Decl. ¶ 147. This is consistent with Jackson’s teaching that a post may be recommended based on several factors and for several reasons. Id. at 17:47–67, cited in Williams Decl. ¶ 147. Also, Jackson explains how the global score, which Petitioner mapped to the recited “general score,” is used to generate a post’s score: “[A] particular post’s global score . . . is multiplied by, divided by, or summed with a distance between” a user and the post’s author. Id. at 9:54–67, cited in Williams Decl. ¶ 148. Jackson weights a post’s global score against a position of the posts author in a social graph. Id. at 9:25–53. Mr. Williams testifies that it is obvious and conventional to generate the modified scores embodiment. Williams Decl. ¶ 144. This is supported by Jackson. In another example cited by Petitioner, Jackson multiplies a post’s global score by a geographic distance to generate a personal score. Id. at 21:60–22:5, cited in Pet. 37, 39, 43. Thus, Petitioner has shown Jackson teaches or suggests applying two different sets of preference factors to a post’s global score. Pet. 41 (citing Williams Decl. ¶ 144).” slip op. at 32
Patent outcomesUS 10,616,727 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSRPatents in suitUS 10,616,727 - Google LLC v. Parus Holdings, Inc.All claims unpatentablePTAB · Aug 1, 2023 · IPR2022-00358 · APJ Patrick M Boucher · IPR · Final written decision
Claims 1–15 are unpatentable under § 103 over Wise and Shaffer, with Burrows added for claims 3–15; the Board did not reach the Kovatch-based grounds.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner proposes that a person of ordinary skill in the art “would have had a Bachelor’s degree in electrical engineering, computer science or a related field, and at least two years of experience with voice interfaces and information processing.” Pet. 4–5. Petitioner adds that “[m]ore education could substitute for less experience, and vice versa.” Id. Mr. Lipoff supports this articulation, and neither Patent Owner nor Mr. Winters proposes any different articulation. See Ex. 1002 ¶ 74; Ex. 2063 ¶ 41 (Mr. Winters stating factors considered in defining a person of ordinary skill in the art, without stating the education or experience held by such a person). Because we find Petitioner’s proposal reasonable, uncontroverted, consistent with the level of skill reflected by the prior art, and supported by Mr. Lipoff’s testimony, we adopt it for purposes of this Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” 37 C.F.R. § 42.100(b) (2019); see Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). Neither party proposes any express construction of any term. Pet. 5 (“Petitioner does not believe that any express constructions are necessary to resolve the invalidity issues presented in this petition”); PO Resp. 1 (“Patent Owner believes that claim construction is unnecessary and all terms of the Challenged Claims should be given their plain and ordinary meanings.”). On the record before us, we do not find it necessary to construe any term for purposes of this Decision. See 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))).” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“Ex. 1001, 19:64–20:5. For this “sequential access” limitation, Petitioner relies on Shaffer’s disclosure of sequentially accessing websites according to a list, until a user is satisfied with what has been returned or the list is exhausted. Pet. 55–56. Supported by Mr. Lipoff’s testimony, Petitioner reasons that a person of ordinary skill in the art would combine Shaffer’s sequential access technique with Wise’s system “because it would have been beneficial to maximize the likelihood of finding the desired information more quickly and efficiently use computing resources, by searching in the most likely sources first, and proceeding through Wise’s index list until the user is satisfied or the list is exhausted.” Id. at 56 (citing Ex. 1002 ¶ 243). Patent Owner does not specifically dispute Petitioner’s reasons for effecting the combination of teachings from Wise and Shaffer, which we find sufficiently articulated and supported; instead, Patent Owner contends that the combination does not meet the sequential access limitation. See PO Resp. 78 (“Assuming, arguendo, this is a combination a [person of ordinary skill in the art] would consider, this combination does not disclose this claim limitation.”). Patent Owner makes two points in this respect. First, Patent Owner reiterates its contention, addressed above, that “Mr. Lipoff expressly does not rely on the Wise search index (option 1) for his opinion of the Wise disclosure of a plurality of websites.” PO Resp. 78. For the reasons we discuss in the preceding subsection, we agree with Petitioner that Patent Owner’s argument relies on “a misinterpretation of out-of-context deposition testimony.” Reply 6. As Petitioner adds, Wise discloses that an “index may be stored as one or more documents preferably in a hierarchical order” and “[t]he user may use the navigation commands to traverse the index and invoke a link to a source document.” Id. at 8; Ex. 1007, 10:7–10. Second, Patent Owner takes the position that the claim language precludes user interaction or instructions during the process of the sequential search. See PO Resp. 80. But Patent Owner provides insufficient evidentiary support for that position, and we agree with Petitioner that Patent Owner’s interpretation invokes a negative limitation that is unsupported by the plain and ordinary meaning of the claim language. See Reply 8. “While a negative limitation need not be recited in the specification in haec verba, there generally must be something in the specification that conveys to a skilled artisan that the inventor intended the exclusion.” Novartis Pharm. Corp. v. Accord Healthcare, Inc., 38 F.4th 1013, 1017 (Fed. Cir. 2022). In this instance, both parties and both experts agree that the specification of the ’941 patent is silent with respect to user participation during sequential access. PO Resp. 81 (Patent Owner asserting that “[t]he ’941 patent is silent as to the participation of a user in the sequential search process”); Ex. 2063 ¶” slip op. at 25
- Strike new argumentNew argument disregardedDecided for petitioner
“Based on these facts, we find insufficient reason to exclude user interaction from the plain and ordinary meaning of the sequential access limitation. We thus determine that Shaffer—which clearly involves user interaction, see Ex. 1011, 6:3–29—meets the limitation. We also determine that Petitioner articulates sufficient reason, supported by rational underpinning, to achieve the combination of teachings it proposes. We accordingly determine that Petitioner makes a sufficient showing for the sequential access limitation. 5 In its Sur-reply, Patent Owner asserts that “[a]s discussed in the [Patent Owner Response], the ’941 specification teaches against the notion of user interaction in the claim limitations involving sequentially accessing.” Sur-Reply 6 (citing PO Resp. 80–81). We disagree with this characterization of the Patent Owner Response, and treat this assertion as a new argument impermissibly raised for the first time in the Sur-reply. See 37 C.F.R. § 42.23(b) (“A sur-reply may only respond to arguments raised in the corresponding reply”). Regardless, even if we considered this argument, we would find it unpersuasive. Based on our independent review of the specification of the ’941 patent, in agreement with both experts, and in agreement with other statements of both parties, we find the specification to be “silent” on user interaction. See also Tr. 48:25–49:23 (Patent Owner conceding at oral hearing that the specification “is silent” on this issue).” slip op. at 27
Patent outcomesUS 7,881,941 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,881,941 - Google LLC v. Parus Holdings, Inc.All claims unpatentablePTAB · Aug 1, 2023 · IPR2022-00523 · APJ Thu A Dang · IPR · Final written decision
Claims 1–15 are unpatentable: claims 1–2 as obvious over Wise and Shaffer, and claims 3–15 as obvious over Wise, Shaffer, and Burrows.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner, relying on the testimony of Mr. Lipoff, contends that a POSITA “would have had a Bachelor’s Degree in electrical engineering, computer science or a related field, and at least two years of experience with voice interfaces and information processing,” wherein “[m]ore education could substitute for less experience, and vice versa.” Pet. 4–5 (citing Ex. 1002 ¶¶ 40, 61–74). Patent Owner does not contest Petitioner’s proposal or offer an alternative. See generally PO Resp. 2 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125 Stat. 284, 287–88 (2011), amended 35 U.S.C. § 103. Because the ’402 patent was filed before March 16, 2013, the effective date of the relevant amendment, the pre-AIA version of § 103 applies. claimed invention because, based on the record, this proposal is consistent with the ’402 patent, the asserted prior art, and is supported by the testimony of Mr. Lipoff.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Neither Petitioner nor Patent Owner proposes any claim construction. See Pet. 5; See generally PO Resp. We do not perceive a need to construe any claim terms of the ’402 patent to resolve the disputed issues before us. See, e.g., Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need to be construed that are in controversy, and only to the extent necessary to resolve the controversy”))); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. in the context of an inter partes review).” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightDecided for petitioner
“While a negative limitation need not be recited in the specification in haec verba, there generally must be something in the specification that conveys to a skilled artisan that the inventor intended the exclusion.” Novartis Pharm. Corp. v. Accord Healthcare, Inc., 38 F.4th 1013, 1017 (Fed. Cir. 2022). Here, Patent Owner does not provide sufficient evidentiary support that conveys an intended exclusion of user interaction during sequential access. Instead, both parties and both experts merely point out that the specification of the ’402 patent is silent with respect to user participation during sequential access. PO Resp. 73 (Patent Owner asserting that “the ’402 patent is silent as to the participation of a user in the sequential search process”); Ex. 2063 ¶ 289 (Mr. Winters testifying that “there is no disclosure in the specification of the ’402 patent related to user interaction in the sequential search process”); Pet. Reply 5 (Petitioner asserting that Patent Owner is “[i]mporting a requirement that user interaction is precluded by the claims—a negative limitation, when the specification is wholly silent on it”); Ex. 2061, 107:15–22 (Mr. Lipoff agreeing that “there’s no specific mention of the user interacting” in the portion of the specification related to “the sequential search”). As the Federal Circuit explained in Novartis, silence is not sufficient support for a negative limitation. See Novartis, 38 F.4th at 1017. interaction from the plain and ordinary meaning of the sequential access limitation. Instead, we are persuaded by Petitioner’s reliance on Shaffer for disclosing the sequential access limitation as recited. See Ex. 1011, 6:3–29. In particular, Shaffer discloses determining whether a system is at the end of a list of sites to visit, and sequentially visiting the sites until the user is satisfied. Ex. 1011, 6:3–29. Furthermore, Wise’s system accesses web pages relating to a subject phrase to retrieve user-requested information. Ex. 1007, 6:31–49. We credit the supporting testimony of Mr. Lipoff, which is consistent with the teachings of Wise and Shaffer, in which he testified that a POSITA would have been motivated to modify Wise’s system that accesses websites to retrieve user-requested information based on Shaffer, resulting in a system that accesses websites sequentially/subsequently until information is found. See Ex. 1002 ¶ 200. We disagree with Patent Owner that the ’402 patent’s specification “teaches against the notion of user interaction in the claimed ‘sequentially accessing’ operation,” which “is time consuming and inefficient.” PO Resp. 73–75. A given course of action often has simultaneous advantages and disadvantages, which “does not necessarily obviate motivation to combine.” Allied Erecting v. Genesis Attachments, 825 F.3d 1373, 1381 (Fed. Cir. 2016). Here, Petitioner has articulated sufficient reason, supported by rational underpinning, to effect the combination of teachings it proposes. We credit Petitioner’s contention, which is supported by Mr. Lipoff’s testimony, that a POSITA would have been motivated “to apply Shaffer’s sequential search technique when retrieving information from websites in Wise’s ranked index” in order to “maximize the likelihood of finding the desired information and efficiently use computing resources by searching in slip op. at 24
Patent outcomesUS 8,185,402 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,185,402 - T-Mobile USA, Inc. v. Traxcell Technologies, LLCAll claims unpatentablePTAB · May 15, 2023 · IPR2022-00669 · APJ Norman H Beamer · IPR · Final written decision
Claims 1–30 are unpatentable under § 103(a) over the six asserted combinations of Bruce and Hancock with Meadows, Knockeart, and/or Moles.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Either proposal is consistent with the level of ordinary skill in the art reflected by the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). On this record, the level of ordinary skill is neither in dispute nor dispositive of any challenge. For purposes of this Decision, we apply Petitioner’s articulation, although the conclusions reached in the decision would be the same even if Patent Owner’s proposal was adopted.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Claim terms need only be construed 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). Petitioner states, “[n]o claim term requires express construction.” Pet. 11. Patent Owner does not propose any claim constructions. PO Resp. 3–4. For purposes of this Decision, we do not construe any claim terms. D.” slip op. at 10
- Expert testimonyPetitioner expert creditedDecided for petitioner
“not a communications device is a mobile wireless communications device, the reference states that the system can be used with a “landline or a mobile cellular telephone subscriber.” Ex. 1006, 3:49; see also Ex. 1006, 5:58–60 (“[t]elephone calls are primarily originated from either traditional fixed location landline telephones or mobile wireless telephones”); Ex. 1006, 5:66–6:3 (“[t]o identify the geographical location of the caller . . . several 6 Patent Owner argues that Hancock does not teach this claim requirement, and we have previously found that Hancock does not so teach. PO Resp. 15 (citing Van Essen Decl. ¶ 56); Google LLC v. Traxcell Techs., LLC, IPR2021-01004, Paper 7 at 18 (PTAB Dec. 7, 2021). techniques can be used depending on the particular telephone (i.e., landline or mobile telephone) originating the call”). The same system is used in Bruce for both fixed and mobile devices, and the same telephone number (411) is used whether fixed or mobile. Reply 7 (citing Ex. 1006, Fig. 1, 3:63–66, 5:56–58, 5:63–67; Braasch Decl. ¶ 60). We are persuaded by Petitioner’s reliance on a patent to Karp, et al. as background art, to confirm that it was well known that the phone number of a caller is used to identify whether or not a call is on a mobile phone, and that the use of Automatic Number Identification (ANI) is not limited to fixed landlines. Pet. 24 (citing Ex. 1009, Fig. 11B, 12:20–22; Braasch Decl. ¶ 70); Reply 8–9 (citing Ex. 1009, 1:39–44, 12:24–27).7 The record further includes support for Petitioner’s contention in the form of declarant testimony that explains, “[a] POSITA would have recognized that to select an appropriate location system 17 for a communication received over a landline or wireless network, the switch 16 or the location system 17 would first identify whether a request was made from a landline or a wireless device.” Braasch Decl. ¶ 70 (cited in the Petition at page 24); see also id. ¶ 71 (explaining that the determination would be made even if the incoming call uses a landline or a modem). We are persuaded by this evidence and credit the Braasch testimony in this regard.” slip op. at 19
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“We have considered Petitioner’s arguments and evidence summarized above (which we adopt) and determine that Petitioner has provided sufficiently articulated reasoning with rational underpinnings for the proffered combination of Bruce and Hancock, and the preponderance of the evidence establishes that a person of ordinary skill would have been motivated to make that combination.” slip op. at 15
Patent outcomesUS 9,918,196 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,918,196 - T-Mobile USA, Inc. v. Traxcell Technologies, LLCAll claims unpatentablePTAB · May 15, 2023 · IPR2021-01552 · APJ Norman H Beamer · IPR · Final written decision
Claims 1–30 are unpatentable under § 103(a) over the six combinations of references listed in the decision.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Either proposal is consistent with the level of ordinary skill in the art reflected by the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). On this record, the level of ordinary skill is neither in dispute nor dispositive of any challenge. For purposes of this Decision, we apply Petitioner’s articulation, although the conclusions reached in the decision would be the same even if Patent Owner’s proposal was adopted.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Claim terms need only be construed 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). Petitioner states, “[n]o claim term requires express construction.” Pet. 11. Patent Owner does not propose any claim constructions. PO Resp. 3–4. For purposes of this Decision, we do not construe any claim terms. D.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“3. The Combination of Bruce and Hancock Petitioner argues that one of ordinary skill would have been motivated to combine the geographic location-based systems of Bruce and Hancock, resulting in a combination that would have rendered obvious, for example, independent claim 1. Pet. 14–19. Petitioner first argues that one of ordinary skill would have been motivated to add to the Bruce system, the capability of accessing routing information via the Internet, as disclosed in Hancock. Pet. 15–17. Petitioner cites the fact that one embodiment of Bruce uses a computer with a modem to allow a user to obtain directions from the system, and that providing such access via the Internet, as disclosed in Hancock, would have provided well-known advantages of higher data rates, storage capacity, and additional Internet services. Id. (citing Ex. 1005, 1:38–40; Ex. 1008, 42:38–42; Ex. 1011, 24:16–19, 25:1–7, 27:39–67, 32:32–41; Braasch Decl. ¶¶ 46–49). Petitioner also argues that one of ordinary skill would have been motivated to improve Bruce by providing more flexibility and variety in the ways for entering a destination, for which directions are requested, as disclosed in Hancock. Pet. 17–18. For example, Hancock discloses the ability to enter the names of businesses, to specify specific distances to destinations, and to use menus of possible destination locations. Id. (citing Ex. 1006, 2:40–43, 8:2–3; Ex. 1011, 8:66–9:3, 13:7–15, 28:49–29:1, 30:12– 14; Braasch Decl. ¶¶ 50–51). Petitioner further argues that one of ordinary skill would have been motivated to improve Bruce by using Hancock’s improved methods of formatting requests for directions via the use of data packets. Pet. 18–19 (citing Ex. 1011, 27:27–39, 27:64–67, 28:58–65; Braasch Decl. ¶¶ 52–54). Patent Owner does not specifically respond to these arguments. See generally PO Resp. We have considered Petitioner’s arguments and evidence summarized” slip op. at 14
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“As to the above claims, Patent Owner repeats its arguments with respect to claim 1 (which, as discussed above, are not persuasive), and submits additional arguments directed to claims 5, 10, and 11. PO Resp. 21–23. In regard to claim 5, Patent Owner argues that “PSTN” in the claims means “a plurality of PSTNs which service to provide location of fixed location phones,” and that Bruce provides only one PSTN. Id. at 22 (citing Van Essen Decl. ¶ 83). This argument is unpersuasive as not commensurate with the scope of the claim. Reply 15. For claims 10 and 11, Patent Owner argues that the disclosure in Bruce providing for searches for establishments “in the proximity of the caller” is not a teaching of searches for nearby businesses because “[t]he caller is distinct from ‘business.’” Id. at 23 (citing Van Essen Decl. ¶¶ 85–86) (emphasis omitted). We are unpersuaded by this argument, because a nearby business is within the proximity of a caller. Reply 16. We have considered Petitioner’s arguments and evidence summarized above (which we adopt) and we determine that Petitioner has proved by a preponderance of the evidence that claims 4, 5, 7, 8, 10, and 11 are unpatentable under 35 U.S.C. § 103(a) over the combination of Bruce and Hancock.” slip op. at 25
Patent outcomesUS 9,918,196 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,918,196
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.