- Apple Inc. v. Zipit Wireless, Inc.All claims unpatentablePTAB · Apr 20, 2023 · IPR2021-01129 · APJ Trevor M Jefferson · IPR · Remand
Claims 1, 3–7, 10, 17, 21, 22, 28, 33–39, and 43–45 are unpatentable under § 103 over the three stated combinations of prior art.
RulingsRemand decision- RemandOther
“Following an oral hearing in the related cases, we issued an Adverse Judgment Order on December 13, 2022. Paper 14. The Director subsequently sua sponte issued an Order “vacat[ing] the Board’s adverse judgment[] and remand[ing] [the proceeding] back to the panel to either issue a show cause order clarifying whether Patent Owner is indeed abandoning the contest or to issue a final written decision addressing the patentability of the challenged claims.” Paper 15, 4 (Director’s decision Ordering Rehearing, Vacating Adverse Judgment, and Remanding to the Patent Trial and Appeal Board Panel for Further Proceeding Petitioner’s Reply). Pursuant to the Director’s order, we issue this Final Written Decision addressing the patentability of the challenged claims.” slip op. at 3
- Skill levelSkill level board ownDecided for petitioner
“Petitioner asserts the level of skill adopted in the Final Written Decision in IPR2019-01568, Google ’837 IPR at 8–9. See Pet 5 n.3;5 Ex. 1003 ¶¶ 37. Our prior decision in IPR2019-01568 found that A [person of ordinary skill in the art] has an accredited bachelor’s degree in computer science, electrical engineering, or a related discipline that included coverage of wireless communications and the use of communication protocols used for real-time communications, and also at least two years of industry experience. In lieu of specific academic training, a [person of ordinary skill in the art] may draw upon appropriate industry experience to meet the foregoing requirements. Google ’837 IPR at 8. We apply this level of skill in the present case.” slip op. at 11
- Prior constructionPrior construction adoptedDecided for petitioner
“We adopt the claim constructions determinations in IPR2019-01568 provided in the table below for the reasons discussed there. Claim Term IPR2019-01568 Construction “generating textual characters and “graphical symbols” refers to graphical symbols in response to “graphical emoticons;” phrase is manipulation of keys on a data given its “ordinary meaning in the entry device”” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“(Sidekick-I or Sidekick-II), and Brittan, to implement a mobile device in Heikes with connection to a LAN or WAN as disclosed in Jonker in accordance with the Heikes’ system. Pet. 16–20; Ex. 1003 ¶¶ 157–170; Ex. 1007 ¶¶ 2, 38, 45–47; Ex. 1005 ¶¶ 39–45, Fig. 1. Petitioner argues that both Hiekes and Jonker teach wireless communication and that it was “well known and common knowledge for wireless LANs to operate and be implemented in: (1) ad-hoc mode or (2) an ‘infrastructure mode.’” Pet. 17– 18; Ex. 1003 ¶¶ 161–162. Petitioner further asserts that an ordinarily skilled artisan would have utilized the Sidekick features of an integrated display and keyboard in the mobile device of Heikes which does not expressly teach how data is entered or displayed, finding it obvious to implement a well-known PDA device with IM capabilities to navigate and perform data entry. Pet. 20–22; Ex. 1003 ¶¶ 171–181. Petitioner argues that “[b]ased on Brittan, a POSITA would have found it obvious to modify the Heikes- Jonker-Sidekick device to enable a key/button on the device to be used to select/add a smiley into the IM conversation from a menu of smilies (as already disclosed and shown in Heikes . . . )” (Pet. 24–25) as it was well known to use buttons or related menus to select emoticon smilies (id. at 25). Petitioner further contends that configuring Heikes-Sidekick-Jonker’s device to implement Brittan’s teachings would have amounted to the use of a known technique to improve similar devices in the same way, and combining prior art elements according to known methods to yield predictable results—a device that enables pressing one or more buttons to select a smiley from a menu of smilies and providing the selected smiley for display in graphical form in the IM conversation. Pet. 26 (citing Ex. 1003 ¶¶ 195–196). In view of the full unrebutted record, Petitioner provides persuasive rationales by a preponderance of the evidence to combine the teachings of Heikes, Jonker, Sidekick (Sidekick-I or Sidekick-II), and Brittan.” slip op. at 17
Patent outcomesUS 7,894,837 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,894,837 - Apple Inc. v. Zipit Wireless, Inc.All claims unpatentablePTAB · Apr 20, 2023 · IPR2021-01126 · APJ Trevor M Jefferson · IPR · Remand
On remand, the Board held claims 22, 23, and 31–40 unpatentable as obvious under § 103 over the four instituted prior-art combinations.
RulingsRemand decision- RemandOther
“Judgment Order on December 13, 2022. Paper 13. The Director subsequently sua sponte issued an Order “vacat[ing] the Board’s adverse judgment[] and remand[ing] [the proceeding] back to the panel to either issue a show cause order clarifying whether Patent Owner is indeed abandoning the contest or to issue a final written decision addressing the patentability of the challenged claims.” Paper 14, 4 (Director’s decision Ordering Rehearing, Vacating Adverse Judgment, and Remanding to the Patent Trial and Appeal Board Panel for Further Proceeding Petitioner’s Reply). Pursuant to the Director’s order, we issue this Final Written Decision addressing the patentability of the challenged claims.” slip op. at 3
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts the level of skill adopted in the Final Written Decision in IPR2019-01567, Google IPR at 8. See Pet. 9 n.3; Ex. 1003 ¶¶ 37–38. Our prior decision in IPR2019-01567 found that [a person of ordinary skill in the art] has an accredited bachelor’s degree in computer science, electrical engineering, or a related discipline that included coverage of wireless communications and the use of communication protocols used for real-time communications, and also at least two years of industry experience. In lieu of specific academic training, a [person of ordinary skill in the art] may draw upon appropriate industry experience to meet the foregoing requirements. Google IPR at 8. We apply this level of skill in the present case.” slip op. at 12
- Prior constructionPrior construction adoptedDecided for petitioner
“Petitioner offers no proposed claim constructions and applies the constructions determined by the Board in the IPR2019-01567 Final Written Decision. Pet. 6–7. We adopt the claim constructions determinations in IPR2019-01567 provided in the table below for the reasons discussed there. Claim Term IPR2019-01567 Construction “a data entry device of a handheld “a handheld terminal capable of terminal” (claim 20) data entry” “network connection” (claim 20) No construction required “graphical symbols” (claim 20)” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“skill in the art would have had reasons to combine VD, Sinivaara, Chiu, McCarty to implement Van Dok’s device as set forth in IPR2019-01567. Pet. 9 (citing Google IPR at 16–17). Thus, Petitioner reasserts the arguments presented in the Google IPR supporting the motivation to combination VD, Sinivaara, Chiu, and McCarty. Pet. 9–14; Ex. 1003 ¶¶ 522–522; Ex. 1049 ¶¶ 119–128. We agree and find that Petitioner provides persuasive argument and evidence supporting the combination of Van Dok’s instant messaging device with features from the Sidekick as asserted in the Google IPR (Pet. 29–35; Ex. 1003 ¶¶ 532–545) and in the alternative with Sidekick and Rucinski (Pet. 38–39; Ex. 1003 ¶¶ 546–560). In view of the final record here, Petitioner provides persuasive rationales by a preponderance of the evidence to combine the teachings of Van Dok, Sinivaara, Chiu, McCarthy, and (Sidekick I or Sidekick II); and Van Dok, Sinivaara, Chiu, McCarthy, (Sidekick I or Sidekick II), and Rucinski.” slip op. at 16
Patent outcomesUS 7,292,870 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,292,870 - Apple Inc. v. Zipit Wireless, Inc.All claims unpatentablePTAB · Apr 20, 2023 · IPR2021-01125 · APJ Trevor M Jefferson · IPR · Remand
Claims 2–4, 11–14, 22, 23, and 31–33 are unpatentable under § 103 based on the combinations of Heikes, Jonker, Sidekick, Brittan, and additional references.
RulingsRemand decision- RemandOther
“Following an oral hearing in the related cases, we issued an Adverse Judgment Order on December 13, 2022. Paper 14. The Director subsequently sua sponte issued an Order “vacat[ing] the Board’s adverse judgment[] and remand[ing] [the proceeding] back to the panel to either issue a show cause order clarifying whether Patent Owner is indeed abandoning the contest or to issue a final written decision addressing the patentability of the challenged claims.” Paper 15, 4 (Director’s decision Ordering Rehearing, Vacating Adverse Judgment, and Remanding to the Patent Trial and Appeal Board Panel for Further Proceeding Petitioner’s Reply). Pursuant to the Director’s order, we issue this Final Written Decision addressing the patentability of the challenged claims.” slip op. at 3
- Skill levelSkill level board ownDecided for petitioner
“Decision in IPR2019-01567, Google IPR at 8. See Pet. 4 n.2; Ex. 1003 ¶¶ 37–38. Our prior decision in IPR2019-01567 found that [a person of ordinary skill in the art] has an accredited bachelor’s degree in computer science, electrical engineering, or a related discipline that included coverage of wireless communications and the use of communication protocols used for real-time 3 Patent Owner did not provide any evidence or argument contesting Petitioner’s unpatentability arguments. Thus, Patent Owner presents no secondary considerations evidence. communications, and also at least two years of industry experience. In lieu of specific academic training, a [person of ordinary skill in the art] may draw upon appropriate industry experience to meet the foregoing requirements. Google IPR at 8. We apply this level of skill in the present case.” slip op. at 11
- Prior constructionPrior construction adoptedDecided for petitioner
“We adopt the claim constructions determinations in IPR2019-01567 provided in the table below in this Final Written Decision for the reasons discussed there.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“person of ordinary skill in the art would have been motivated to combine Heikes, Jonker, Sidekick (Sidekick-I or Sidekick-II), and Brittan, to implement a mobile device in Heikes with connection to a LAN or WAN as disclosed in Jonker in accordance with the Heikes’ system. Pet. 14–17; Ex. 1003 ¶¶ 152–160; Ex. 1007 ¶¶ 2, 38, 45–47; Ex. 1005 ¶¶ 39–45, Fig. 1. Apple argues that both Heikes and Jonker teach wireless communication and that it was “well known and common knowledge for wireless LANs (as described in Heikes) to operate and be implemented in either an ad-hoc mode or an infrastructure mode, in which a device connects to an access point associated with the LAN.” Pet. 17; see id. 17–18; Ex. 1003 ¶¶ 161– 166. Apple further asserts that an ordinarily skilled artisan would have utilized the Sidekick features of an integrated display and keyboard in the mobile device of Heikes which does not expressly teach how data is entered or displayed, finding it obvious to implement a well-known PDA device with IM capabilities and form to navigate and perform data entry. Pet. 18– 20; Ex. 1003 ¶¶ 167–177. Apple also argues that “based on Brittan, a POSITA would have found it obvious to modify the Heikes- Jonker- Sidekick device to enable a key/button on the device to be used to select/add a smiley into the IM conversation from a menu of smilies (as already disclosed and shown in Heikes . . . )” (Pet. 23), as it was well known to use buttons or related menus to select emoticon smilies (id. at 27). Petitioner argues that configuring Heikes-Sidekick-Jonker’s device to implement Brittan’s teachings would have amounted to the use of a known technique to improve similar devices in the same way, and combining prior art elements according to known methods to yield predictable results—a device that enables pressing one or more buttons to select a smiley from a menu of smilies and providing the selected smiley for display in graphical form in the IM conversation. Pet. 25 (citing Ex. 1003 ¶¶ 191–192). Finally, Apple argues that it would have been motivated to implement Sidekick’s teachings of displaying chat history and when the network connection is lost and re-connecting to the network after such a connection is lost. Pet. 25–28; Ex. 1003 ¶¶ 195–207. By a preponderance of the evidence, Apple provide persuasive rationales to combine the teachings of Heikes, Sidekick, Jonker, and Brittan as adding Sidekick’s well-known teachings amounted to using known techniques to improve similar devices in the same way, yielding predictable results for handheld IM devices that that lose connectivity. Pet. 27–28.” slip op. at 18
Patent outcomesUS 7,292,870 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,292,870 - Apple Inc. v. Zipit Wireless, Inc.All claims unpatentablePTAB · Apr 20, 2023 · IPR2021-01124 · APJ Trevor M Jefferson · IPR · Remand
Claims 1, 5–10, 17–19, and 36–40 are unpatentable as obvious over the stated combinations of Heikes, Jonker, Sidekick, Brittan, and, for claims 17–19 and 36–40, Capps.
RulingsRemand decision- RemandOther
“Following an oral hearing in the related cases, we issued an Adverse Judgment Order on December 13, 2022. Paper 13. The Director subsequently sua sponte issued an Order “vacat[ing] the Board’s adverse judgment[] and remand[ing] [the proceeding] back to the panel to either issue a show cause order clarifying whether Patent Owner is indeed abandoning the contest or to issue a final written decision addressing the patentability of the challenged claims.” Paper 14, 4 (Director’s decision Ordering Rehearing, Vacating Adverse Judgment, and Remanding to the Patent Trial and Appeal Board Panel for Further Proceeding Petitioner’s Reply). Pursuant to the Director’s order, we issue this Final Written Decision addressing the patentability of the challenged claims.” slip op. at 3
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts the level of skill adopted in the Final Written Decision in IPR2019-01567, Google IPR at 8. See Pet. 7 n.2; Ex. 1003 ¶¶ 37–38. Our prior decision in IPR2019-01567 found that [a person of ordinary skill in the art] has an accredited bachelor’s degree in computer science, electrical engineering, or a related discipline that included coverage of wireless communications and the use of communication protocols used for real-time communications, and also at least two years of industry experience. In lieu of specific academic training, a [person of ordinary skill in the art] may draw upon appropriate industry experience to meet the foregoing requirements. Google IPR at 8. We apply this level of skill in the present case.” slip op. at 12
- Prior constructionPrior construction adoptedDecided for petitioner
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“Finally, Petitioner argues that it would have been motivated to implement Sidekick’s teachings of displaying chat history and when the network connection is lost and re-connecting to the network after such a connection is lost. Pet. 28–32; Ex. 1003 ¶¶ 195–207. In view of the record here, Petitioner provides persuasive rationales by a preponderance of the evidence to combine the teachings of Heikes, Sidekick, Jonker, and Brittan, and adding Sidekick’s well-known teachings amounted to using known techniques to improve similar devices in the same way, yielding predictable results for handheld IM devices that lose connectivity. Pet. 30–32.” slip op. at 19
Patent outcomesUS 7,292,870 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,292,870 - Intel Corporation v. Qualcomm IncorporatedAll claims unpatentablePTAB · Mar 21, 2023 · IPR2018-01334 · APJ Daniel J Galligan · IPR · Remand
On remand, the Board held claims 1–9, 12, 16, and 17 unpatentable as obvious over the instituted prior-art combinations.
RulingsRemand decision- RemandOther
“I. INTRODUCTION This case is on remand from the Court of Appeals for the Federal Circuit to address the patentability of claims 1–9, 12, 16, and 17 of U.S. Patent No. 8,838,949 B2 (“the ’949 patent,” Ex. 1001). See Intel Corp. v. Qualcomm Inc., 21 F.4th 801, 814 (Fed. Cir. 2021). For the reasons discussed below, we determine that Petitioner has proven by a preponderance of the evidence that claims 1–9, 12, 16, and 17 are unpatentable. See 35 U.S.C. § 316(e) (“In an inter partes review instituted under this chapter, the petitioner shall have the burden of proving a proposition of unpatentability by a preponderance of the evidence.”).” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for petitioner
“B. Claim Interpretation In this proceeding, we give the claims the broadest reasonable” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableUnpatentable
Patent outcomesUS 8,838,949 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,838,949 - Apple Inc. v. Zipit Wireless, Inc.All claims unpatentablePTAB · Dec 20, 2022 · IPR2021-01131 · APJ Trevor M Jefferson · IPR · Final written decision
Claims 13 and 17–19 are unpatentable under § 103 over the specified combinations of Van Dok, Sinivaara, Werndorfer, and the additional references.
RulingsFinal written decision- Expert testimonyPetitioner expert creditedDecided for petitioner
“Dr. Traynor obtained his undergraduate degree 1 year before the critical date he lacks the requisite 2 years of industry experience as of the critical date. Mot. 3–4. Our Consolidated Trial Practice Guide provides that “[a]n expert training, or education to testify in the form of an opinion.” Consolidated Trial Practice Guide 74 (Nov. 2019), https://www.uspto.gov/TrialPracticeGuideConsolidated 34 (citing Fed. R. Evid. 702). Further, the Trial Practice Guide also provides that “[a] person may not need to be a person of ordinary skill in the art in order to testify as an expert under Rule 702, but rather must be ‘qualified in the pertinent art.’” Id. (citing Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F. 3d 1356, 1363–1364 (Fed. Cir. 2008)). We find that Dr. Traynor is qualified in the pertinent art. Dr. Traynor received his Bachelor’s degree in Computer Science in May 2002, his Masters’ degree in Computer Science in May 2004, and his Ph.D. in Computer Science in 2008. Ex. 1003 ¶ 2; Ex. 1004, 5. He has served as a professor since 2008 and is currently a Professor in the Department of Computer and Information Science and Engineering at the University of Florida. Id. at ¶ 3. He has over 8 years of industry experience and has published 90 articles in the areas of information security, mobility, and networking. Ex. 1003 ¶¶ 6–7, 9–11, Ex. 1004 12–24, 31. We note that Patent Owner did not depose Dr. Traynor or ask him about his post undergraduate experience before the critical date.” slip op. at 32
- ExcludeMotion to exclude, deniedDenied
“1003 and Exhibit 1103, asserting that they are inadmissible based on FRE 702, 703, and 704, and improperly contain hearsay based on FRE 802, 803, 804, 805, 806, and 807. Mot. 2–3. Patent Owner’s contentions regarding admissibility of Dr. Traynor’s declarations and hearsay contained in the declarations all stem from Dr. Traynor’s alleged lack of industry experience sufficient to establish ordinary skill in the art as of the critical date of the ’837 patent. See Mot. 3–8; Opp. Reply 2–5. Petitioner opposes, arguing that (1) Dr. Traynor need not be a person of ordinary skill in the art as of the critical date (December 24, 2003); (2) Dr. Traynor is highly qualified in the pertinent art; and (3) Patent Owner’s objections to the declarations were not timely filed and lacked particularity. Opp. 1–2. We are not persuaded by Patent Owner’s arguments that because” slip op. at 32
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts the level of skill adopted in the Final Written Decision in IPR2019-01568, Google ’837 IPR at 8–9. See Pet. 5 n.2; Ex. 1003 ¶¶ 37. Our prior decision in IPR2019-01568 found that [a person of ordinary skill in the art] has an accredited bachelor’s degree in computer science, electrical engineering, or a related discipline that included coverage of wireless communications and the use of communication protocols used for real-time communications, and also at least two years of industry experience. In lieu of specific academic training, a [person of ordinary skill in the art] may draw upon appropriate industry experience to meet the foregoing requirements. Google ’837 IPR at 8. Patent Owner does not challenge Petitioner’s statement. See PO Resp. We apply this level of skill in the present case.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We now consider claim construction issues only to the extent necessary to dispose of the instant unpatentability grounds. 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))). Petitioner offers no proposed claim constructions and apply the constructions determined by the Board in the IPR2019-01568 Final Written Decision. Pet. 5. Petitioner asserts that the remaining terms are given their “ordinary and customary meaning as understood by a Person of Ordinary Skill in the Art as of the Critical Date . . . and the prosecution history.” Id. at 5 (citing Ex. 1003 ¶¶ 73–74; 37 C.F.R. §42.100(b)). Patent Owner does not challenge Petitioner’s construction. PO Resp. 10–11 We adopt the claim constructions determinations in IPR2019-01568 provided in the table below. Claim Term IPR2019-01568 Construction “generating textual characters and “graphical symbols” refers to graphical symbols in response to “graphical emoticons;” phrase is manipulation of keys on a data given its “ordinary meaning in the entry device”” slip op. at 11
Patent outcomesUS 7,894,837 unpatentableClaim construction§ 103 obviousnesscites PhillipsPatents in suitUS 7,894,837 - Apple Inc. v. Zipit Wireless, Inc.Some claims unpatentablePTAB · Dec 20, 2022 · IPR2021-01130 · APJ Trevor M Jefferson · IPR · Final written decision
Claims 2, 13, 19, 23, 24, 27, 29–31, 46, and 48–50 are unpatentable as obvious; claims 40–42 were not shown unpatentable.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts the level of skill adopted in the Final Written Decision in IPR2019-01568, Google ’837 IPR at 8–9. See Pet 5 n.3;4 Ex. 1003 ¶¶ 37. Our prior decision in IPR2019-01568 found that A [person of ordinary skill in the art] has an accredited bachelor’s degree in computer science, electrical engineering, or a related discipline that included coverage of wireless communications and the use of communication protocols used for real-time communications, and also at least two years of industry experience. In lieu of specific academic training, a [person of ordinary skill in the art] may draw upon appropriate industry experience to meet the foregoing requirements. Google ’837 IPR at 8. Patent Owner does not challenge Petitioner’s statement. See PO Resp. We apply this level of skill in the present case.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther
“We now consider claim construction issues only to the extent necessary to dispose of the instant unpatentability grounds. 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))). Petitioner offers no proposed claim constructions and applies the constructions determined by the Board in the IPR2019-01568 Final Written Decision. Pet. 3. Petitioner asserts that the remaining terms are given their “ordinary and customary meaning as understood by a Person of Ordinary Skill in the Art as of the Critical Date . . . and the patent’s prosecution history.” Id. at 3–4 (citing Ex. 1003 ¶¶ 73–74; 37 C.F.R. §42.100(b)). Patent Owner does not challenge Petitioner’s construction. PO Resp. 10–11. We adopt the claim constructions determinations in IPR2019-01568 provided in the table below. Claim Term IPR2019-01568 Construction “generating textual characters and “graphical symbols” refers to graphical symbols in response to “graphical emoticons;” phrase is manipulation of keys on a data given its “ordinary meaning in the entry device”” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
Patent outcomesUS 7,894,837 mixedClaim construction§ 103 obviousnesscites PhillipsPatents in suitUS 7,894,837 - Apple Inc. v. Qualcomm IncorporatedAll claims unpatentablePTAB · Nov 10, 2022 · IPR2018-01315 · APJ Scott B Howard · IPR · Remand
Claims 1, 2, 5–9, 12, 13, and 16–22 are unpatentable as obvious over AAPA and Majcherczak, with Matthews added for claims 7, 16, and 22.
RulingsRemand decision- RemandDecided for petitioner
“d. Our Analysis By statute, inter partes review proceedings can only be requested “on a ground that could be raised under section 102 or 103 and only on the basis of prior art consisting of patents or printed publications.” 35 U.S.C. § 311(b) (emphasis added); see also Qualcomm, 24 F.4th at 1374. Thus, the issue before us is whether AAPA improperly formed the “basis” of Petitioner’s challenge. See Qualcomm, 24 F.4th at 1376–77 (remanding to determine “whether AAPA improperly formed the ‘basis’ of Apple’s challenge”). The answer to this question is found in the Updated Guidance: “If an IPR petition relies on admissions in combination with reliance on one or more prior art patents or printed publications, those admissions do not form ‘the basis’ of the ground and must be considered by the Board in its patentability analysis.” Updated Guidance 4 (emphasis added). Because Petitioner’s grounds involve a combination of AAPA and prior art patent(s), AAPA does not form the basis of the ground. See Pet. 2 (setting forth the grounds); 1316 Pet. 2 (same). Instead, it is the prior art patents— Majcherczak and, when used, Matthews—that form the basis of the challenge and AAPA is simply being used to provide missing limitations. See MED-EL Elektromedizinische Geräte Ges.M.B.H. v. Advanced Bionics AG, IPR2020-01016, Paper 44 at 4 (PTAB Aug. 22, 2022) (Director Review Decision) (“As discussed above, the Petition relies on AAPA in combination with either Petersen, Zilberman and/or Saaski. Accordingly, AAPA “do[es] not form ‘the basis’ of the ground and must be considered by the Board in its patentability analysis.” (quoting Updated Guidance 4) (modifications in original)).” slip op. at 23
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Having considered the evidence presented, we conclude that, with the exception of the means-plus-function limitations, no express claim construction of any term is necessary. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating that “we need only construe those claim limitations ‘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))). With regard to the means-plus-function limitations, we are persuaded by Petitioner’s identification of both the function set forth in the claim and the structure in the written description that is linked to the function, and adopt them as our own. See 1316 Pet. 6–9.” slip op. at 15
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)Term construed petitioner constructionDecided for petitioner
“Use of the word means in a claim gives rise to a rebuttable presumption that 35 U.S.C. § 112, sixth paragraph, analysis applies to interpret the claim. Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015). Construing a means-plus-function claim term is a two-step process, wherein we first identify the claimed function and then determine what structure, if any, disclosed in the specification corresponds to the claimed function. Id. at 1348–51. Our rules specifically require that a petition for inter partes review identify how each challenged claim is to be construed, including identification of the corresponding structure for meansplus-function limitations. See 37 C.F.R. § 42.104(b)(3) (“Where the claim to be construed contains a means-plus-function . . . limitation as permitted under 35 U.S.C. 112[(6)], the construction of the claim must identify the specific portions of the specification that describe the structure, material, or acts corresponding to each claimed function.”).15 “[S]tructure disclosed in the specification is ‘corresponding’ structure only if the specification or prosecution history clearly links or associates that structure to the function recited in the claim.” Med. Instrumentation & Diagnostics Corp. v. Elekta 15 37 C.F.R. § 42.104(b)(3) refers to § 112(f). Section 4(c) of the AIA redesignated 35 U.S.C. § 112, sixth paragraph as 35 U.S.C. § 112(f). Because the ’674 patent has a filing date before the effective date of this provision of the AIA, we use the citation § 112, sixth paragraph.” slip op. at 14
- Skill levelSkill level patent owner adoptedDecided for patent owner
“In our Institution Decisions, “we adopt[ed] Dr. Horst’s definition of the level of ordinary skill in the art, with the exception of the language ‘at least.’” Inst. Dec. 13; 1316 Inst. Dec. 13. Patent Owner agrees with our formulation, see PO Resp. 9; 1316 PO Resp. 9, and Petitioner did not address it in its Reply. See generally Pet. Reply; 1316 Pet. Reply. Accordingly, we find on the record as a whole that a person of ordinary skill in the art would have an undergraduate degree in electrical engineering, or a related field, and three years of experience in circuit and system design. Additionally, a person of ordinary skill with less than the amount of experience noted above could have had a correspondingly greater amount of educational training such a graduate degree in a related field.” slip op. at 12
Patent outcomesUS 8,063,674 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,063,674 - Astronics Test Systems, Inc. v. Teradyne, Inc.All claims unpatentablePTAB · Jul 20, 2022 · IPR2021-00350 · APJ Debra K Stephens · IPR · Final written decision
Claims 1–8 are unpatentable as obvious over Schinabeck; the Board did not reach the Miyamoto and Frame grounds.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“In our Institution Decision, we adopted Petitioner’s definition of the level of ordinary skill in the art with minor modification (Dec. 8–9; see Pet. 20). In particular, we removed the qualifier “at least” from the education level and from the experience level, because the qualifier introduces ambiguity. Patent Owner does not dispute this determination of the level of a person of ordinary skill in the art at the time of the invention (PO Resp. 8). Thus, we determine an ordinarily skilled artisan at the time of the invention would have had (i) a bachelor’s degree in electrical engineering, computer engineering, or a related field and (ii) one year of experience with testing of electronic equipment. We determine this asserted level of skill comports with the qualifications a person would have needed to understand and implement the teachings of the ’479 Patent and the prior art of record (cf. Okajima, 261 F.3d at 1355 (the prior art itself may reflect an appropriate level of skill in the art)).” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner
“execute a user program, the test equipment comprising” is the preamble and that it is limiting (Ex. 1003, 13:57–58; PO Resp. 9). In particular, Patent Owner contends, “the preamble of claim 1 [is] limiting because it serves as antecedent basis for multiple terms in the body of the claim, and it supplies ‘essential structure’ of the claimed invention” (PO Resp. 9). Petitioner does not address this contention (see Pet. Reply 4–5). We agree with Patent Owner that the preamble is limiting because the body of the claim refers to the user program as well as the automatic test equipment (Ex. 1003, 13:57–58, 14:14–17; see Catalina Mktg. Int'l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) ([D]ependence 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”)). Patent Owner asserts the following limitation, “a channel circuit having a signal connection point adapted to be coupled to a signal line of a unit under test to receive an input signal having a value” (Ex. 1003, 13:58–61), “although formatted within the same paragraph as the preamble[,] is not actually part of the preamble, but rather part of the body of the claim” (PO Resp. 10). However, further in its argument, Patent Owner flips its statement in arguing “input signal having a value” and contends this is a “requirement[] of the preamble” (id. at 11). Petitioner’s contentions are only directed to the limitation (Pet. Reply 4–5).” slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“Initially, we note the claim recites “a channel circuit having a signal connection point adapted to be coupled to a signal line of a unit under test to receive an input signal having a value” (Ex. 1003, 13:58–61), Thus, due to the recitation, we determine the input signal could be either that the signal connection point receives an input signal or the channel circuit receives an input signal (id.). The next limitation recites the comparison sub-circuit has “a signal input . . . wherein each of the comparison sub-circuits is adapted to produce a comparison output signal at the comparison output having a value input signal” (id. at 13:62–14:3). The claim does not recite that the “signal input” receives “the input signal.” Nevertheless, in light of the claim language and the Specification and because Petitioner has contended both interpretations are shown, we interpret the recited “input signal” as the signal received from the UUT. The portion of the ’479 Patent describing, in part, Figure 1, cited by Patent Owner discloses ATE 139 includes multiple instruments that may generate and measure signals. A host computer 120 executes a software program that controls operation of each of the instruments. Host computer 120 may be programmed to analyze these outputs to determine whether the system under test 189 is operating properly. Such programming is traditionally a part of a user program and drives programmed values and compares measured values to expected values on one or more signal lines connected to the UUT. These steps may be programmed for multiple lines for multiple test cycles (Ex. 1003, 3:32–51; PO Sur-reply 3). The ’479 Patent further describes an “ATE . . . provide[s] stimulus to . . . the UUT and then measure[s] the output to determine if the UUT has performed to its specifications” (Ex. 1003, 1:30–33; PO Sur-reply 3). Thus, these descriptions support both interpretations. Nevertheless, the ’479 Patent describes a signal being supplied and compared to expected values. Accordingly, we interpret “an input signal” as being the signal received from a unit under test (UUT).” slip op. at 14
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“We determine Schinabeck teaches the structure of the comparison sub-circuits recited in claim element 1a. Indeed, given that switches and comparators were known (Tr. 35:5–8; Ex. 1026, 17:17–18:8, 30:16–22), we determine switching certain switches on or off is a switch performing the same function it had been known to perform, yielding no more than one would expect from such an element (KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007)). Thus, turning switches off or on in Schinabeck’s circuitry, would not have been “uniquely challenging or difficult for one of ordinary skill in the art” or “represented an unobvious step over the prior art” (see Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418-19)). A skilled artisan is “a person of ordinary creativity, not an automaton” (see KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 420-21 (2007)). An ordinarily skilled artisan “must be presumed to know something” about the art “apart from what the references disclose” (In re Jacoby, 309 F.2d 513, 516 (CCPA 1962)). We further credit Dr. Wicker that an ordinarily skilled artisan “would have understood that switch K3a can be opened or closed depending upon the desired test set-up” and “by definition, switches are controlled to be open or closed” (Ex. 1001 ¶ 90). And again, Schinabeck contemplates use of the circuitry as recited, as described in claim 10 discussed supra. We thus are persuaded that Schinabeck teaches or at least suggests limitation 1a). We are also not persuaded Petitioner used impermissible hindsight reconstruction as the circuitry elements in Schinabeck are being used as was known to be used for the purpose of “monitoring response signals during automated testing of any other circuit elements –– Petitioner is relying on closing switches in the disclosed circuity of Schinabeck (Pet. 25–27). Additionally, Schinabeck discloses coupling comparison circuits to the same response signal (Ex. 1008, 11:49–53, 12:56–13:7, 4:49–66 and thus, Patent Owner’s contention that this grouping is “not any ‘desired’ configuration for functional or parametric testing” in Schinabeck is not supported by Schinabeck’s disclosure.” slip op. at 31
Patent outcomesUS 7,395,479 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,395,479 - PTAB · Apr 19, 2022 · IPR2022-00035 · APJ Debra K Stephens · IPR · Institution
The Board instituted inter partes review of claim 1 on both § 103 grounds, finding a reasonable likelihood that Petitioner would show the claim unpatentable over each asserted combination.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“(Pet. 11). Generally, Patent Owner contends that the Petition should be denied (see Prelim. Resp.). Based on our review of the record, we conclude that Petitioner is reasonably likely to prevail in demonstrating that at least one of the challenged claims is not patentable.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that a person of ordinary skill in the art (“POSITA”) in July 2003 would have had a working knowledge of the network communications art that is pertinent to the ’066 Patent, including network security. A POSITA would have had a bachelor’s degree in computer science, computer engineering, or an equivalent, and two years of professional experience relating to network communications. Lack of professional experience can be remedied by additional education, and vice versa (Pet. 9 (citing Ex. 1003 ¶¶ 17–19)). Patent Owner agrees with Petitioner’s assertion and further asserts a “higher level of education (e.g., a Master’s degree) may make up for less work experience, and additional work experience may make up for less education” (Prelim. Resp. 14 (citing Ex. 2001 ¶¶ 14–22)).” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“We disagree with Patent Owner’s construction. Patent Owner’s arguments ignore significant claim language of claim 1 that contradicts Patent Owner’s proposed construction, instead focusing on tying to equate broad, ordinary terms — “utilization” with “applying” and “across” with “to” (see id. at 16–21). In particular, Patent Owner ignores the portion of the limitation which recites “cause utilization of different occurrence mitigation actions of diverse occurrence mitigation types, including a firewall-based occurrence mitigation type and a other occurrence mitigation type, across the plurality of devices” (emphasis added). To aid in understanding the meaning of “a firewall-based occurrence mitigation type,” we turn to the disclosure of the ’066 Patent (see Ex. 1001). The ’066 Patent includes a detailed disclosure which contradicts Patent Owner’s argument that the limitation at issue excludes mitigation actions of a network defense system providing firewall functionality.” slip op. at 16
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“intrusion functionality 116 detects . . .an attempt from outside the network 14 to exploit [a] noted vulnerability (for example, a certain IP address is noted as being a source of traffic relating to the IIS buffer overflow vulnerability as detected by the code red signature)” (Ex. 1005, 14:59–64; see Pet. 37). Willebeek-LeMair further teaches, in step 312, “[t]his is reported back to the agent 126” which “responds in step 314 by reporting . . . that an attempt to exploit has occurred” (Ex. 1005 14:64–67; see Pet. 37). Willebeek-LeMair discloses the agent 126 additionally “instructs the firewalling functionality 118 in step 316 to drop the packet traffic relating to the attempted exploitation” and “in step 318 instruct[s] the firewall to block all traffic originating from the noted IP address of the attacker” (Ex. 1005 14:67–15:6, 1:7–10; see Pet. 37). Thus, because Willebeek-LeMair discloses a firewalling functionality, at this juncture, we determine Willebeek-LeMair teaches the recited “firewall-based occurrence mitigation type.” Additionally, because Willebeek-LeMair discloses instructing the firewall to block all traffic from the attacker (an occurrence mitigation action), based on the record before us, we determine Willebeek-LeMair teaches the recited “firewall-based occurrence mitigation type,” as recited in claim 1. and specifically, “a terminate action [ ] taken by the intrusion detector functionality 116 to terminate any session associated with a possible attack” (Ex. 1005, 12:40–43; see Pet. 38). Willebeek-LeMair also teaches the intrusion detector functionality generates alerts from its analysis of the network traffic content (Ex. 1005, 9:34–27, 1:7–10; see Pet. 38). Based on the record before us, we determine this intrusion detector functionality is an occurrence mitigation action that is different than the firewall-based occurrence mitigation type. Accordingly, based on the record before us, we determine Willebeek-LeMair teaches the recited “a other occurrence mitigation type,” as recited in claim 1. In combination of these two functionalities, we determine on the current record, Willebeek-LeMair teaches the recited “cause utilization of different occurrence mitigation actions of diverse occurrence mitigation types, including a firewall-base occurrence mitigation type and a other occurrence mitigation type” (see Pet. 38 (citing Ex. 1003 ¶ 97)).” slip op. at 26
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,893,066
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.