• Disney Media & Entertainment Distribution LLC v. Digital Media Technology Holdings, LLCAll claims unpatentable
  PTAB · Aug 25, 2025 · IPR2024-00736 · APJ Lisa A Murray · IPR · Final written decision

  Claims 1, 4–7, and 9 are unpatentable as obvious over Garfinkle and Kosten; claim 11 is unpatentable as obvious over Garfinkle, Kosten, and Allen.

  RulingsFinal written decision

  • ExcludeMotion to exclude, grantedPetitioner expert discountedGranted

    “Our reviewing court has held that if a declarant fails to qualify as a person of ordinary skill in the art, then that person’s testimony regarding the knowledge or motivations of one of ordinary skill in the art is irrelevant as a matter of law. Kyocera Senco Indus. Tools Inc. v. International Trade Comm’n, 22 F.4th 1369, 1377–78 (Fed. Cir. 2022) (“To offer expert testimony from the perspective of a skilled artisan in a patent case—like for claim construction, validity, or infringement—a witness must at least have ordinary skill in the art. Without that skill, the witness’ opinions are neither relevant nor reliable.”). Mr. Daniels’ declaration consists of an analysis of the cited prior art in comparison to the challenged claims and a discussion of whether there would have been a 2 The motion does not seek to exclude the declaration of the named inventor of the ’725 patent, Nick Stiliadis. See Ex. 2109 (Stiliadis Declaration). motivation to combine the prior art. Ex. 2121 ¶¶ 4–20. Mr. Tulchin’s declaration addresses claim construction issues. Ex. 2131 ¶¶ 5–35. Each declarant, therefore, addresses issues that must be considered from the vantage point of a POSITA at the time of the invention, meaning a person with the level of ordinary skill defined in Section II.E.1 above. See Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc) (claim construction); KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007) (obviousness). If Mr. Daniels and Mr. Tulchin do not qualify as POSITAs, as Petitioner alleges, then their opinion testimony is inadmissible under Federal Rules of Evidence 702 (Testimony by Expert Witnesses). We find that there is insufficient evidence in the record to establish that Mr. Daniels qualifies as a POSITA in relation to the ’725 patent. Mr. Daniels has an undergraduate degree in engineering physics in addition to a law degree. Ex. 2121 ¶ 2. His declaration, however, does not establish that he also has “one year of experience related to marketing and distribution of multimedia material over a computer network, or the equivalent.” See Section II.E.1 above. Mr. Daniels characterizes his non-legal work experience as follows: The rest of my professional career has been spent working in my own companies in the research, development and prototyping/commercialization of a number of different technologies, principally including fishing rod technology, digital video file transport, storage and processing, LED-based light-emitting tapes, drone control systems, wearable medical related electronic devices and breath-based diagnostic devices. Ex. 2121 ¶ 3; see also Ex. 1023, 99 (Daniels Deposition) (describing work on “a suite of interactive television innovations,” including “the first working pause button”). None of the projects identified appears to relate to “marketing and distribution of multimedia material over a computer network.” Patent Owner argues that Mr. Daniels “was involved (at the time of the filing of the application which matured into the ’725 patent) in making inventions, that dealt with interactive television, video pause buttons and video file provision over the Internet.” Sur-Reply Br. 6. However, neither Mr. Daniels’ declaration nor his deposition testimony assert that he ever worked on “video file provision over the Internet,” let alone that he did so for one year or more. See Ex. 2121 ¶ 3; Ex. 1023, 98–100. We find that the evidence in the record is not sufficient for us to conclude that Mr. Daniels qualifies as one of ordinary skill in the art. We further find a lack of evidence establishing that Mr. Tulchin qualifies” slip op. at 9

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “In our Decision on Institution, we adopted the following definition of the level of skill for one of ordinary skill in the art: “a Bachelor of Science degree in electrical engineering, computer engineering, computer science, or a related field plus one year of experience related to marketing and distribution of multimedia material over a computer network, or the equivalent.” Dec. 9. Patent Owner’s proposed definition differs from the Board’s only in that it adds a Bachelor of Science in engineering physics to the list of degrees that one of ordinary skill in the art might possess. See id. We view engineering physics as being related to the fields of electrical engineering, computer engineering, and computer science. Accordingly, following a review of the full record, we view Patent Owner’s proposed definition in its Response as consistent with the ’725 patent and the asserted prior art, and we apply it in our analysis below.” slip op. at 8

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaning

    “When interpreting the meaning of a claim, “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Patent Owner has, briefly, proposed six claim terms for construction: exhibition; exhibitor; broadcast exhibitor; distribution; marketing; and storing. PO Resp. 10. The Petition states that “[t]o resolve the grounds presented herein, Petitioner does not believe that any term requires explicit construction.” Pet. 12. We see no reason why “exhibition” and “exhibitor” should be understood as having a meaning as narrow as Patent Owner proposes. “Exhibition” and “exhibitor” encompass more than just a showing by “one in the exhibition business” because the specification of the ’725 patent identifies certain “exhibitors” that are not “in the exhibition business”: e.g., a high school, libraries, and other non-profit organizations. Ex. 1001, 12:38–41 (“schools, libraries, and other non-profit organizations”), Fig. 1 (“high school”). The plain and ordinary meaning of “exhibitors” is at least broad enough to encompass the types of exhibitors identified in the specification: movie theaters, television stations, satellite television operators, cable television operators, and non-profit organizations such as high schools. Ex. 1001, 4:20–22, Fig. 1. We further determine that some of these exhibitor types, including at least satellite and cable television operators, are “broadcast exhibitors.” Moreover, we find that the plain and ordinary meaning of the term “distribution” is not so narrow as to be limited to “the business of marketing films and providing copies to venues,” as Patent Owner proposes. See PO Resp. 10 (emphasis added). The claimed invention is a “method of marketing and distributing multimedia,” which is not limited to films. We agree with Petitioner that the term is at least broad enough to encompass distribution of any type of multimedia to any type of exhibitor contemplated in the specification. See Ex. 1001, 1:20–25 (multimedia types); Reply Br. 6. Similarly, the plain and ordinary meanings of “marketing” and “storing” are not limited to Patent Owner’s specific examples: interesting individuals in seeing a film and saving to non-volatile storage, respectively. See PO Resp. 10; Tr. at 57:3–7. The invention is directed to marketing and distributing multimedia, not just films, Ex. 1001, 16:21, and while the Specification refers to storing multimedia on “hard drives,” id. at 4:35–37, 4:44–52, there is nothing in the Specification, claims, or prosecution history that would limit storage only to hard drives or other non-volatile storage. The intrinsic evidence suggests that the proper construction of each” slip op. at 14

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

    “Petitioner contends that a person of ordinary skill in the art would have been motivated to use Garfinkle’s video distribution system to implement Kosten’s distribution method to achieve the improvements described therein, such as: access to a large number of video products and advertising materials available at a centralized location (Ex-1007, 54; Ex-1005, 1:42–49, 1:54–2:12), improved advertising capabilities (Ex-1007, 54; Ex-1005, 1:42–49, 1:54–2:12), and improved distribution processes resulting in lower shipping and handling costs and labor intensity, improved security against piracy, wider and more flexible distribution capabilities, cost reductions for movie theaters, increased control over time and locations of exhibitions by studios and distributors, an ability to scale up or down distribution based on success in theaters, and an ability to track and monitor sales and marketing data (Ex-1007, 52, 54). Pet. 14 (citing Dystar Textilfarben v. C.H. Patrick, 464 F.3d 1356, 1368 (Fed. Cir. 2006) (A motivation to combine exists when the “improvement” results in a product or process that is “stronger, cheaper, cleaner, faster, lighter, smaller, more durable, or more efficient.”)). Petitioner further asserts that such a person would have had a reasonable expectation of success in achieving the objective of efficient content distribution through the proposed combination of Garfinkle and Kosten with no change in their respective functions because: (1) both are “from the same field and address the same well-known issues”; and (2) both references purport to achieve this objective in similar and predictable ways, “such as using the well-known teachings of digitizing content, correlating multimedia and associated advertising materials, and connecting multiple user sites to the central station through a public communications system.” Id. at 13, 16–17 (internal citations omitted) (citing Ex. 1005, 2:58–3:5, 3:32–49, 4:37–39; Ex. 1007, 54); Ex. 1002 ¶ 68. Patent Owner contends that there would have been no motivation to combine Kosten and Garfinkle because each represents a “complete solution[] to different file transport modes, Kosten involving simple file transmission to a theater and billboards, and Garfinkle involving file transmission to a [video-on-demand] user. Neither has a problem which is addressed by the other.” PO Resp. 33. Petitioner argues, however, and we agree, that “(1) a known technique can provide motivation to combine and (2) a known technique does not need to improve upon the primary reference—it just must be a ‘suitable option.’” Reply Br. 21 (citing Intel Corp. v. PACT XPP Schweiz AG, 61 F.4th 1373, 1380–81 (Fed. Cir. 2023)). Thus, it does not matter that Kosten and Garfinkle each represent a complete and functional solution to digitally transporting media files. If the references in the combination address a known problem, such as issues with multimedia distribution, see Pet. 13–14, and the proposed combination is a suitable solution, then there would have been a motivation to combine the two references. Moreover, Petitioner persuasively argues that by combining Kosten and Garfinkle, one of ordinary skill in the art would have been able to achieve benefits such as lower shipping and handling costs, improved security against piracy, wider and more flexible distribution capabilities, an ability to more easily scale distribution up or down as needed, among other benefits. Pet. 14. We find that these benefits would have provided a sufficient motivation to combine Garfinkle’s technical implementation of a distribution process for large multimedia files with Kosten’s proposed business application, “beaming” films directly to theaters via satellite. Patent Owner’s arguments to the contrary are without merit.” slip op. at 21

  Patent outcomesUS 7,574,725 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 7,574,725
• Inductev, Inc. v. Witricity CorporationAll claims unpatentable
  PTAB · Feb 13, 2025 · IPR2023-01182 · APJ Robert J Weinschenk · IPR · Final written decision

  Claim 16 was cancelled on Patent Owner’s motion; claim 17 was held unpatentable as obvious over Cook ’554 and over Lee and Cook ’523.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art Petitioner argues that a person of ordinary skill in the art would have had “at least a bachelor’s degree in electrical engineering (or equivalent) and at least two to three years of industry or equivalent research experience in the field of wireless energy transfer.” Pet. 7–8 (citing Ex. 1003 ¶¶ 37–41). Petitioner’s description of the level of ordinary skill in the art is supported 1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125 Stat. 284, 287–88 (2011), amended 35 U.S.C. § 103. Based on the effective filing date of the ’719 patent, we apply the pre-AIA version of § 103. by the testimony of Petitioner’s declarant, Dr. Mark Allen. Ex. 1003 ¶¶ 37– 41. Patent Owner does not dispute Petitioner’s description. PO Resp. 14. We adopt Petitioner’s description for purposes of this Decision.” slip op. at 5

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner

    “[i]t will be appreciated that a network of capacitors, as used herein, may in general refer to any circuit topology including one or more capacitors, including without limitation any of the circuits specifically disclosed herein using capacitors, or any other equivalent or different circuit structure(s), unless another meaning is explicitly provided or otherwise clear from the context. Id. at 52:32–38 (emphasis added). Thus, the ’719 patent expressly defines the phrase “a network of capacitors” as any circuit topology including one or more capacitors. Id.” slip op. at 7

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference is prior artDecided for petitioner

    “Patent Owner’s argument is unavailing. Even if Patent Owner is correct that elements E and F in Figure 4-12 of the Cook Provisional only represent the delivered power level (not the received power level), other portions of the Cook Provisional disclose tuning the resonant frequency of the resonant circuit based on the received power level. See Pet. Reply 5–6. In particular, the Cook Provisional states that “[t]he control system of the receiver is in charge of . . . antenna tuning control.” Ex. 1006, 31. The Cook Provisional also states that “[t]he receiver[’]s control system may determine the model parameters using specific measurements (e.g. antenna current and voltage, input power, etc.) and calibration routines.” Id. (emphasis added). Thus, the Cook Provisional discloses tuning the resonant frequency based on input power. Id.” slip op. at 10

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

    “D. Motion to Amend Patent Owner’s non-contingent Motion to Amend requests that we cancel claim 16. Mot. Amend 1. Petitioner does not oppose Patent Owner’s request. Id. We grant Patent Owner’s unopposed request to cancel claim 16, and, as a result, we do not reach the asserted grounds for claim 16.” slip op. at 8

  Patent outcomesUS 8,461,719 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,461,719
• Unified Patents, LLC v. Electronics And Telecommunications Research InstituteInstitution denied
  PTAB · Oct 20, 2021 · IPR2021-00827 · APJ Jameson Lee · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1 and 3 were unpatentable over either asserted obviousness combination.

  RulingsInstitution decision

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

    “presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Further, a decision to institute may not institute on fewer than all claims challenged in the petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018). We determine that Petitioner has not shown a reasonable likelihood of prevailing on any claim.” slip op. at 2

  • PTAB / AIA Trials › Real party in interest / privityNot reached

    “Patent Owner contends that the Petition fails to name all real parties- in-interest (“RPIs”) as required by 35 U.S.C. § 312(a)(2). Prelim. Resp. 72– Petitioner’s SEP Video Codec Zone members as RPIs. Id. Because we determine Petitioner has not demonstrated a reasonable likelihood of prevailing in establishing the unpatentability of any challenged claim, we do not reach this issue. C.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “On this record, we adopt Petitioner’s articulation of the level of ordinary skill, but delete the qualifier “at least” for the level of education and for the amount of experience, to keep the level from being vague and overbroad and extending into the level of an expert, and delete “or similar advanced post-graduate education in this area” also to keep the level from potentially extending into the realm of an expert. What remains appears consistent with what is reflected by the content of the applied prior art references. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill). For purposes of this Decision, we find the level of ordinary skill in the art corresponds to that of one who had, on or about April 9, 2010, the level of: (1) an undergraduate degree in electrical engineering or computer engineering or a closely related scientific field, such as physics or computer science; (2) a working knowledge of video coding techniques; and (3) two years of experience with video processing. B.” slip op. at 8

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

    “prediction value” Patent Owner asserts that “prediction value” should be construed to mean “a value generated in an intra-prediction process for determination of a prediction block.” Prelim. Resp. 8. We agree. Claims 1 and 3 each recite: when the intra-prediction for the current block is performed, the processor determines whether to apply a second filter to a prediction value of the current block . . . , and applies the second filter to the prediction value of the current block if, as a result of the determination, the second filter is determined to be applied Ex. 1001, 12:18–25, 12:46–53 (emphasis added). The language links “prediction value” to intra-prediction such that it is a predicted value generated inside an intra-prediction process performed on a current block to determine a prediction block for the current block. slip op. at 10

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,781,448
• General Plastic Industrial Co., Ltd. v. Canon Kabushiki KaishaRehearing denied
  PTAB · Sep 6, 2017 · IPR2016-01359 · APJ Sheila F Mcshane · IPR · Rehearing

  The Board denied rehearing of the institution denials in IPR2016-01357 through IPR2016-01361, finding no abuse of discretion or overlooked issue; it granted the request for an expanded panel.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “B. Requests for Rehearing A party requesting rehearing has the burden to show a decision should be modified by specifically identifying all matters the party believes were misapprehended or overlooked, and the place where each matter was addressed previously in a motion, opposition, or a reply. 37 C.F.R. § 42.71(d). When rehearing a decision on institution, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may arise if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000).” slip op. at 5

  • Other 314aInstitution denied discretionary otherDecided for patent owner

    “Our intent in formulating the factors was to take undue inequities and prejudices to Patent Owner into account. Thus, factor 3 is directed to Petitioner’s potential benefit from receiving and having the opportunity to study Patent Owner’s Preliminary Response, as well as our institution decisions on the first-filed petitions, prior to its filing of follow-on petitions. As discussed in our Decisions Denying Institution, we are concerned here by the shifts in the prior art asserted and the related arguments in follow-on petitions. See Dec. 11. Multiple, staggered petitions challenging the same patent and same claims raise the potential for abuse. The absence of any restrictions on follow-on petitions would allow petitioners the opportunity to strategically stage their prior art and arguments in multiple petitions, using our decisions as a roadmap, until a ground is found that results in the grant of review.14 All other factors aside, this is unfair to patent 14 The Board has addressed efficiency and potential prejudice induced by multiple petitions in multiple cases. See LG Electronics, slip op. at 12 (“The Board’s resources would be more fairly expended on first petitions rather than on a followon petition like the Petition in this case.”); Butamax Advanced Biofuels LLC v. Gevo, Case IPR2014-00581, slip op. at 12–13 (PTAB Oct. 14, 2014) (Paper 8) (“[T]he four obviousness grounds are ‘second bites at the apple,’ which use our prior decision as a roadmap to remedy Butamax’s prior, deficient challenge. owners and is an inefficient use of the inter partes review process and other post-grant review processes. Considering other factors (i.e., factors 2, 4, and 5) allows us to assess and weigh whether a petitioner should have or could have raised the new challenges earlier.” slip op. at 17

  • PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticDecided for patent owner

    “ii. Applying the Factors in These Cases As summarized above, supra Section II.B.2, we find that, in these cases, six of the seven factors weigh against institution. Petitioner disputes our findings on the issue of whether Petitioner “should have known” of the art asserted in the follow-on petitions under factor 2. We disagree with Petitioner’s characterization that invariably factor 2 could not be met because “patents or printed publications” necessarily “must be locatable by a reasonably diligent search.” Req. Reh’g 8. The relevant issue under factor 2 is not, as Petitioner has framed it, whether the prior art references relied on in the follow-on petitions constitute printed publications, but whether they could have been found with reasonable diligence. Thus, even for printed publications, a petitioner is free to explain why a reasonably diligent search could not have uncovered the newly applied prior art. See Apotex Inc. v. Wyeth LLC, IPR2015-00873, slip op. at 6 (Sept. 16, 2015) (Paper 8) (describing “[w]hat a petitioner ‘could have raised,’” as including “prior art which a skilled searcher conducting a diligent search reasonably could have been expected to discover.”). Here, the record is devoid of any explanation why Petitioner could not have found the newly asserted prior art in any earlier search(es) through the exercise of reasonable diligence.” slip op. at 19

  • PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted

    “panels to authorize, an expanded panel. See generally 35 U.S.C. § 6; 37 C.F.R. §§ 41.1–42.412; see also AOL Inc. v. Coho Licensing LLC, Case IPR2014-00771, slip op. at 2 (PTAB Mar. 24, 2015) (Paper 12) (“[P]arties are not permitted to request, and panels do not authorize, panel expansion.”). Our standard operating procedures, however, provide the Chief Judge with discretion to expand a panel to include more than three judges. PTAB SOP 1, 1–3 (§§ II, III) (Rev. 14); see id. at 1 (introductory language explaining that the Director has delegated to the Chief Judge the authority to designate panels under 35 U.S.C. § 6); see also In re Alappat, 33 F.3d 1526, 1532 (Fed. Cir. 1994) (providing that Congress “expressly granted the Commissioner the authority to designate expanded Board panels made up of more than three Board members.”). The Chief Judge may consider panel expansions upon a “suggestion” from a judge, panel, or party in a post-grant review. Id. at 3–4; see also Apple Inc. v. Rensselaer Polytechnic Inst., Case IPR2014-00319, slip op. at 2 n.1 (PTAB Dec. 12, 2014) (Paper 20) (expanded panel) (per curiam). The standard operating procedure exemplifies some of the reasons for which” slip op. at 4

  Claim constructionDiscretionary denial
  Patents in suitUS 8,909,094
• Smart Microwave Sensors GmbH v. Wavetronix LLCAll claims unpatentable
  PTAB · Jul 17, 2017 · IPR2016-00488 · APJ Daniel N Fishman · IPR · Final written decision

  Claims 9, 10, 12, 13, 22, 23, and 25 are unpatentable, including as anticipated by Boles or Farmer and obvious over combinations including Boles, Farmer, Herman, and others.

  RulingsFinal written decision

  • ExcludeMotion to exclude, grantedGranted

    “1. Exhibits 1002, 1008, 1009, and 1012 Patent Owner argues the date printed on each of Exhibits 1002, 1008, 1009, and 1012, is inadmissible hearsay under FRE 801 and 802 as out of court statement offered to prove that truth of the matter asserted—that each document was a printed publication as of the date printed on that document (i.e., that it was sufficiently publicly accessible). Paper 45, 2–3 (citing Standard Innovation Corp. v. Lelo, Inc., Case IPR2014-00148, Paper 41 (PTAB April 23, 2015)). As discussed supra, we agree with Patent Owner that the dates printed on these Exhibits are hearsay with no applicable exception. Thus, we grant Patent Owner’s motion requesting that we exclude the copyright notice date from each of Exhibits 1008, 1009, and 1012, and exclude the date of the EuMC conference on Exhibit 1002. However, we note that the documents per se are not excluded from the record as hearsay—only the date imprinted on each as proof of the printed publication status of each document. The underlying documents of these Exhibits are offered not to prove the publication dates thereof but, instead, are statements offered to demonstrate the knowledge of persons of ordinary skill in the art. Petitioner may rely on other evidence to establish the date of public accessibility of each of these documents, the analysis of which we have set forth supra. See Section II.B.1–4.” slip op. at 54

  • Skill levelNot reached
  • Expert testimonyPatent owner expert discountedDecided for patent owner

    “data about multiple vehicles on a particular section of roadway (PO Resp. 7– 8), Petitioner counters by identifying references in the field of traffic engineering that use mobile sensors (i.e., not at a fixed location) for acquiring “traffic data.” Pet. Reply 2 (citing Ex. 1031 ¶¶ 6, 22, 181–183). Referring to pages 7–13 of Exhibit 1031 (Texas Highway Operations Manual discussing “Vehicle-based Equipment”), Patent Owner’s expert testified, on cross-examination, as follows: Q In view of the paragraph, would it be accurate to note that one of ordinary skill in the art would understand that the equipment located in a vehicle can be used to measure the speed of the traffic stream? A It says that a vehicle-mounted radar unit can be used to measure the timing speed of other vehicles in the traffic stream. It does not say it is used to measure the traffic stream. Q I said measure the speed of the traffic. A Yes. This says it is measuring the speed of vehicles in the traffic stream. Q So one of ordinary skill in the art would understand that the equipment located in a vehicle can be used to measure the speed of vehicles in a traffic stream? A That is how it’s worded, the speed of other vehicles in the traffic stream. Ex. 1036, 98:21–99:13. In light of that testimony, we determine that Patent Owner’s expert testimony in support of their assertion is not credible.” slip op. at 14

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

    “Id. at 49:19–50:10. Given, at best, significant ambiguity as to whether the Specification and other evidence requires that “traffic data” must refer to “all or substantially all vehicles,” we are persuaded that such a requirement would not be proper under a broadest reasonable construction. Regarding Patent Owner’s assertion that “traffic data” is limited to data about multiple vehicles on a particular section of roadway (PO Resp. 7– 8), Petitioner counters by identifying references in the field of traffic engineering that use mobile sensors (i.e., not at a fixed location) for acquiring “traffic data.” Pet. Reply 2 (citing Ex. 1031 ¶¶ 6, 22, 181–183). Referring to pages 7–13 of Exhibit 1031 (Texas Highway Operations Manual discussing “Vehicle-based Equipment”), Patent Owner’s expert testified, on cross-examination, as follows: Q In view of the paragraph, would it be accurate to note that one of ordinary skill in the art would understand that the equipment located in a vehicle can be used to measure the speed of the traffic stream? A It says that a vehicle-mounted radar unit can be used to measure the timing speed of other vehicles in the traffic stream. It does not say it is used to measure the traffic stream. Q I said measure the speed of the traffic. A Yes. This says it is measuring the speed of vehicles in the traffic stream. Q So one of ordinary skill in the art would understand that the equipment located in a vehicle can be used to measure the speed of vehicles in a traffic stream? A That is how it’s worded, the speed of other vehicles in the traffic stream.” slip op. at 14

  Patent outcomesUS 6,693,557 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 6,693,557
• DISH Network L.L.C. v. TQ Beta, LLCNo claims unpatentable
  PTAB · Jan 30, 2017 · IPR2015-01791 · APJ John F Horvath · IPR · Final written decision

  The Board entered adverse judgment against claims 11, 14, and 15; petitioner did not show claim 13 unpatentable under any of the three instituted grounds.

  RulingsFinal written decision

  • Adverse judgmentAdverse judgmentGranted

    “The Board’s rules permit a party to “request judgment against itself at any time during a proceeding.” 37 C.F.R § 42.73(b). The Board construes a party’s “[a]bandonment of the contest,” as a request for adverse judgment. 37 C.F.R § 42.73(b)(3). Accordingly, we construe Patent Owner’s lack of response to Petitioner’s various challenges to claims 11, 14, and 15, Patent Owner’s offer to cancel claims 11, 14, and 15, and Patent Owner’s admission that it was “not contesting those claims,” to be an “abandonment of the contest,” and a request for adverse judgment. See PO Resp. 2 n.2; see also Tr. 24:12–18. The request for entry of adverse judgment on claims 11, 14, and 15 is granted, concurrently with entry of adverse judgment on these same claims in DISH Network L.L.C. et al. v. TQ Beta, LLC, Case IPR2015-01756 (PTAB) (Paper 31).” slip op. at 6

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

    “B. Claim Construction The Board interprets claims of an unexpired patent using the broadest reasonable construction in light of the specification of the patent in which they appear. See 37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC v. Lee, 136 S.Ct. 2131, 2142–46 (2016). Consistent with the rule of broadest reasonable interpretation, claim terms are generally given their ordinary and customary meaning, as would be understood by one of ordinary skill in the art in the context of the entire disclosure. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Only those terms which are in controversy need to be construed and only to the extent necessary to resolve the controversy. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). Petitioner asks us to construe the terms “delay between first time frame and second time frame,” “first geographic location,” and “second geographic location.” Pet. 12–14. Petitioner does not propose any constructions for these terms, but asks they be construed in the manner implied by Patent Owner’s infringement contentions in the District Court litigation. Id. In our Decision to Institute, we declined to expressly construe these claim terms, finding their meaning was readily understood by persons of ordinary skill in the art. Dec. Inst. 6. Neither Petitioner nor Patent Owner contests that decision. See PO Resp. 12–13; Pet. Reply passim. Based on the record developed during this proceeding, we find no need to expressly construe these claim terms.” slip op. at 5

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

    “Although we agree with Petitioner that the ’456 patent discloses “encoding the received signal” using a lossy encoding algorithm, using a lossy encoding algorithm to encode a signal does not identify the signal to which the encoding algorithm is applied. Claim 13 requires encoding the received television signal—using a lossy or lossless encoding algorithm— and Patent Owner persuasively argues that Monteiro’s Primary Servers 20, by compressing an extracted audio stream only, are not encoding the received television signal, which has both audio and video components. See PO. Resp. 16–17; Ex. 2003, 2180 (defining a “television signal” as “the visual and aural signals that are broadcast together in order to produce the picture and sound components of a television program.”) (emphasis added).” slip op. at 11

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

    “In an inter partes review, Petitioner bears the burden of proof. See 35 U.S.C. § 316(e). Thus, Petitioner must “demonstrate both that a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation of success in doing so.” Intelligent Bio–Sys., Inc. v. Illumina Cambridge, Ltd., 821 F.3d 1359, 1367-68 (Fed. Cir. 2016) (internal quotations omitted). Petitioner argues one reason to combine Monteiro and Compton is because both references are directed “to giving a user greater control of the time and place for reproduction of audio or visual information as desired by a user.” Pet. 55 (emphasis added). The fact that two references are directed to solving the same problem is an indication that the references are analogous art that can be combined. See In re Clay, 966 F.2d 656, 658 (Fed. Cir. 1992). It is not, however, a reason, in itself, explaining why a person skilled in the art would have combined certain specific teachings of the references in a certain way. Even if it might have been obvious, given Monteiro’s teaching to provide audio and/or video communication services, to modify Monteiro’s processing of received television signals to encode and transmit the received signal’s audio and video components as taught by Compton, Petitioner did not make that argument and did not present the evidence in a manner supporting that theory. The Board does not “raise, address, and decide unpatentability theories never presented by the petitioner.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1381 (Fed. Cir. 2016). Instead, the Board’s decision is based “on arguments that were advanced by a party, and to which the opposing party was given a chance to respond.” Id. Moreover, Petitioner’s assertion that Monteiro is directed to giving users greater control of the time and place for reproduction of audio/video information is not supported by the evidence. In Monteiro, it is the distributor of audio/video information that chooses the distribution time, not Monteiro’s user. For example, Monteiro discloses real-time information can be delivered to any number of users because “the same information is being sent at approximately the same time to everyone who is enabled to receive the information.” Ex. 1016, 2:11–16 (emphasis added). Monteiro further discloses that users can “choose[] to tune in or tune out a particular [distribution] channel, but do[] not choose the time at which the channel distributes its information.” Id. at 2:20–22 (emphasis added). Thus, Monteiro does not allow the user to choose the time for video reproduction, and Petitioner fails to articulate a reason why a skilled artisan would have been motivated to modify Monteiro to include the elements of Compton that would have allowed the user to choose the time for video reproduction.” slip op. at 15

  Patent outcomesUS 7,203,456 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 7,203,456
• DISH Network L.L.C. v. TQ Beta, LLCAll claims unpatentable
  PTAB · Jan 30, 2017 · IPR2015-01756 · APJ John F Horvath · IPR · Final written decision

  The Board entered adverse judgment against claims 11, 14, and 15, and held claims 13 and 16 unpatentable as anticipated by and obvious over Compton; claim 13 was also obvious over Compton and Shteyn.

  RulingsFinal written decision

  • Adverse judgmentAdverse judgmentGranted

    “The Board’s rules permit a party to “request judgment against itself at any time during a proceeding.” 37 C.F.R § 42.73(b). The Board construes a party’s “[a]bandonment of the contest,” as a request for adverse judgment. 37 C.F.R § 42.73(b)(4). Accordingly, we construe Patent Owner’s lack of response to Petitioner’s various challenges to claims 11, 14, and 15, Patent Owner’s offer to cancel claims 11, 14, and 15, and Patent Owner’s admission that it was “not contesting those claims,” to be an “abandonment of the contest” and a request for adverse judgment as to those claims. See PO Resp. 2 n.2; see also Tr. 24:12–18. The request for entry of adverse judgment on claims 11, 14, and 15 is granted, concurrently with entry of adverse judgment on these same claims in DISH Network L.L.C. et al. v. TQ Beta, LLC, Case IPR2015-01791 (PTAB) (Paper 30).” slip op. at 8

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

    “B. Claim Construction The Board interprets claims of an unexpired patent using the broadest reasonable interpretation in light of the specification of the patent in which they appear. See 37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC, v. Lee, 136 S. Ct. 2131, 2142–46 (2016). Consistent with the rule of broadest reasonable interpretation, claim terms are generally given their ordinary and customary meaning, as would be understood by one of ordinary skill in the art in the context of the entire disclosure. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Only those terms which are in controversy need to be construed and only to the extent necessary to resolve the controversy. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). Petitioner asks us to construe the terms “delay between first time frame and second time frame,” “first geographic location,” and “second geographic location.” Pet. 11–13. Petitioner does not propose any constructions for these terms, but requests they be construed in the manner implied by Patent Owner’s infringement contentions in the District Court litigation. Id. In our Decision to Institute, we declined to expressly construe these claim terms, finding their meaning was readily understood by persons of ordinary skill in the art. Dec. Inst. 6. Neither Petitioner nor Patent Owner contests that decision. See PO Resp. 13–14; Pet. Reply passim. Based on the record developed during this proceeding, we find no need to expressly construe these claim terms.” slip op. at 6

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner

    “Petitioner further asks us to construe the terms “means for receiving a second broadcast via a world wide network,” “means for decoding the encoded signal,” “means . . . for storing the decoded signal,” and “means for reproducing the information.” Pet. 14–15. Petitioner argues these terms should be construed pursuant to 35 U.S.C. § 112 ¶ 6, and identifies the following as structures corresponding to the recited functions: (a) a network coupling system or adapter for the “means for receiving a second broadcast via a world wide network,” (b) a media player that includes an MPEG-compatible decoder for the “means for decoding the encoded signal,” (c) a semiconductor or magnetic based memory for the “means . . . for storing the decoded signal,” and (d) a display system, display, or speakers for the “means for reproducing the information.” Id. In our Decision to Institute, upon reviewing the Specification of the ’456 patent, we agreed with Petitioner’s proposed constructions for these terms, and adopted them as our own. Dec. Inst. 7. Neither Petitioner nor Patent Owner contests our constructions of these terms. See PO Resp. 14; Pet. Reply passim. Based on the record developed during this proceeding, we continue to apply these constructions.” slip op. at 6

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “Compton fails to disclose encoding the same signal that was originally broadcast and received in a first location. . . . Instead, Compton discloses that what is encoded (specific clips out of an entire newscast) is very different from what was originally broadcast.” PO Resp. 21–22. According to Patent Owner, “there is no express disclosure in Compton of encoding the same signal that was received and then transmitting an encoded version of the received signal.” Id. at 24. Patent Owner further argues that Compton requires using edit decision lists to edit and segment the received signal, and therefore specifically teaches “to not encode and transmit the same signal that was received.” Id. at 23–24. We are not persuaded by Patent Owner’s arguments. frame, transmitting the signal to the second location, and receiving and decoding the signal at the second location in the second time frame. Although Compton’s system is capable of receiving multi-segmented CNN NEWSROOM broadcasts and encoding only segments of those broadcasts, Compton’s system is not so limited. See Pet. Reply 7–8. Significantly, Compton’s system specifies neither the content nor the segmentation of received CNN NEWSROOM broadcasts. For example, Compton discloses the CNN NEWSROOM broadcast is a daily 15 minute broadcast of arbitrary composition that “generally consists of 3–5 segments of 2–5 minutes each.” Ex. 1004, 11 (emphasis added). Consequently, Compton’s system does not depend on receiving CNN NEWSROOM broadcasts having any particular or well-defined segmentation. Instead, the system is configurable to receive and encode CNN NEWSROOM broadcasts of arbitrary segmentation, including broadcasts containing a single 15 minute segment. This flexibility is provided by the edit decision list, which can contain an arbitrary number of start and stop time codes to segment and encode whatever arbitrary number of CNN NEWSROOM program segments are received in a given day’s broadcast. Pet. Reply 8–9; Ex. 1004, 20–21. These start and stop time codes are received from CNN prior to the broadcast, and entered into the edit decision list. Ex. 1004, 20–21. slip op. at 15

  Patent outcomesUS 7,203,456 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR
  Patents in suitUS 7,203,456
• Apple Inc. / ZTE Corporation And ZTE (USA) Inc. v. E-Watch, Inc.Some claims unpatentable
  PTAB · May 6, 2016 · IPR2015-01366 · APJ Jameson Lee · IPR · Final written decision

  Claims 12–14 are unpatentable as obvious over McNelley and Umezawa; claims 1–8 were not shown unpatentable because the claimed user interface was not established.

  RulingsFinal written decision

  • BurdenFwd mixedMixed

    “3. Claims 1, 6, and 12 With respect to claims 1 and 6, as explained below, Petitioner has not established the unpatentability of either claim by a preponderance of the evidence. With respect to claim 12, notwithstanding the arguments and evidence presented by Patent Owner, which are discussed below, we are persuaded by the arguments and evidence presented by Petitioners. Claim 12 has been shown as unpatentable by a preponderance of the evidence.” slip op. at 21

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

    “Id. at 8–10. Despite the representations made by Patent Owner regarding the exchanges between the Applicant and the Examiner during prosecution, we agree with Petitioners that Patent Owner’s proposed constructions for these terms are excessively narrow under the rule of broadest reasonable interpretation. The prosecution history recounted by Patent Owner above indicates that the articulated distinction from the Ida reference centers on Ida’s failure to describe displaying an image selected from within the memory. Whether Ida’s memory stores one image or a plurality of images was not of significance. Under this circumstance, it is not justifiable, under the rule of broadest reasonable interpretation, to require a selection from among a plurality of images stored in memory. The claims are broad enough to encompass storing just one image in memory and having that image selected for displaying and for transmission. The fact that the Specification of the ’871 patent discloses embodiments in which more than one images is stored in memory does not justify importing limitations from the Specification into the claims. See SuperGuide Corp., 358 F.3d at 875. We find no express definition in the Specification of the ’871 patent or in any of the prosecution history identified by Patent Owner, for the terms at issue here, much less one set forth with reasonable clarity, deliberateness, and precision. If a patentee desires to be his or her own lexicographer, the purported definition must be set forth in the specification or prosecution history. CCS Fitness, Inc., 288 F.3d at 1366. Such a definition must be set forth with reasonable clarity, deliberateness, and precision. Renishaw PLC, 158 F.3d at 1249; Paulsen, 30 F.3d at 1480. Patent Owner also identifies nothing in the Specification or prosecution history of the ’871 patent that constitutes a disclaimer or disavowal with regard to these terms that is sufficiently specific so as to require the storage of more than one image in the memory.” slip op. at 13

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

    “Patent Owner argues that “alphanumeric” means “consisting of both letters and numbers and often other symbols,” citing a dictionary definition (Ex. 2009). Id. at 26. The Specification of the ’871 patent does not contain any definition for the term “alphanumeric.” Dictionaries are a relevant source of information, but they are not controlling. We also are cognizant that there are numerous dictionaries and their entries for the same term are not necessarily the same. For example, in this instance, Petitioner has submitted two dictionary definitions for “alphanumeric” that are broader than that offered by Patent Owner: (1) “Consisting of letters or digits, or both, and sometimes including control characters, space characters, and other special characters” (Ex. 1015, 3); and (2) “[a]ny letter of the English alphabet, upper or lower case, or any of the decimal digits, 0 to 9” (Ex. 1016, 3). Reply 5. As discussed above, in this proceeding, we apply the broadest reasonable interpretation, to construe the meaning of claim terms. We note further that, as pointed out by Petitioner (Reply 5), even the definition offered by Patent Owner indicates that an alphanumeric character is a character in an alphanumeric system. Ex. 2009. That would mean although a character cannot be both a letter and a numeral, it still can be an alphanumeric character. Applying the rule of broadest reasonable interpretation, we agree with Petitioner that “alphanumeric” is sufficiently broad to encompass each of these three cases: all numerals, all letters, or a combination of numerals and letters. Patent Owner’s argument to the contrary is unpersuasive, and rejected.” slip op. at 33

  • Skill levelSkill level board ownDecided for patent owner

    “does not expressly set forth a definition. Patent Owner asserts: The technical art associated with the ’871 Patent relates to the field of integrating a camera together with a mobile phone to create a device capable of both audio and image communications on cellular networks. A person of ordinary skill in the relevant art (“POSITA”) of the ’871 Patent would have had at least a bachelor’s degree and/or relevant professional experience in electrical engineering, computer science, or a related field, and at least one year of experience related to the design of both cellular communications devices and digital imaging products. PO Resp. 3–4. We are not persuaded that one with ordinary skill in the art necessarily would have had experience in designing cellular communications devices. Based on the Specification of the ’871 patent, we determine that the invention is not about achieving improvements in cellular communication technology. Rather, it is necessary for one with ordinary skill in the art only to be familiar with what a cellular communication network required as an input source and what the expected format and/or protocol would be for sending and receiving information to and from the cellular network. It is noted that even Patent Owner’s stated definition does not require any actual experience in designing cellular communication devices, but just experience “related to” the design of cellular communication devices. Other than the foregoing, we determine that no express finding is necessary, on this record, and that the level of ordinary skill in the art is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 16

  Patent outcomesUS 7,365,871 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,365,871
• Apple Inc. / ZTE Corporation et al. v. E-Watch, Inc.Some claims unpatentable
  PTAB · May 6, 2016 · IPR2015-00412 · APJ Jameson Lee · IPR · Final written decision

  Claims 12–14 are unpatentable as obvious over McNelley and Umezawa; claims 1–8 were not shown unpatentable because the required user interface was not established.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for patent owner

    “The technical art associated with the ’871 Patent relates to the field of integrating a camera together with a mobile phone to create a device capable of both audio and image communications on cellular networks. A person of ordinary skill in the relevant art (“POSITA”) of the ’871 Patent would have had at least a bachelor’s degree and/or relevant professional experience in electrical engineering, computer science, or a related field, and at least one year of experience related to the design of both cellular communications devices and digital imaging products. PO Resp. 3–4. We are not persuaded that one with ordinary skill in the art necessarily would have had experience in designing cellular communications devices. Based on the Specification of the ’871 patent, we determine that the invention is not about achieving improvements in cellular communication technology. Rather, it is necessary for one with ordinary skill in the art only to be familiar with what a cellular communication network required as an input source and what the expected format and/or protocol would be for sending and receiving information to and from the cellular network. It is noted that even Patent Owner’s stated definition does not require any actual experience in designing cellular communication devices, but just experience “related to” the design of cellular communication devices. Other than the foregoing, we determine that no express finding is necessary, on this record, and that the level of ordinary skill in the art is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 16

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

    “The prosecution history recounted by Patent Owner above indicates that the articulated distinction from the Ida reference centers on Ida’s failure to describe displaying an image selected from within the memory. Whether Ida’s memory stores one image or a plurality of images was not of significance. Under this circumstance, it is not justifiable, under the rule of broadest reasonable interpretation, to require a selection from among a plurality of images stored in memory. The claims are broad enough to encompass storing just one image in memory and having that image selected for displaying and for transmission. The fact that the Specification of the ’871 patent discloses embodiments in which more than one images is stored in memory does not justify importing limitations from the Specification into the claims. See SuperGuide Corp., 358 F.3d at 875. We find no express definition in the Specification of the ’871 patent or in any of the prosecution history identified by Patent Owner, for the terms at issue here, much less one set forth with reasonable clarity, deliberateness, and precision. If a patentee desires to be his or her own lexicographer, the purported definition must be set forth in the specification or prosecution history. CCS Fitness, Inc., 288 F.3d at 1366. Such a definition must be set forth with reasonable clarity, deliberateness, and precision. Renishaw PLC, 158 F.3d at 1249; Paulsen, 30 F.3d at 1480. Patent Owner also identifies nothing in the Specification or prosecution history of the ’871 patent that constitutes a disclaimer or disavowal with regard to these terms that is sufficiently specific so as to require the storage of more than one image in the memory.” slip op. at 14

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

    “PO Resp. 34 (emphasis added). We see no reason to disparage the above-referenced reasoning of Petitioners as “boilerplate language” that “does little” to clarify why prior art teachings may be combined. To the contrary, the language conveys substantial meaning. The fact that Petitioners use the same reasoning multiple times does not, somehow, diminish its significance.” slip op. at 51

  • Strike new argumentNew argument disregardedDecided for patent owner

    “purported reasoning, i.e., that a user creating a video message recording for McNelley’s device used as an answering machine obviously would have selected the recorded video greeting for viewing to check if it is satisfactory for actual use, and thus any transmission of the recorded message upon actual use would have been a “subsequent” transmission as is required by claim 6. Tr. 73–75. The argument is inappropriate because it is a new argument raised for the first time at oral argument.4 It would be unjust to Patent Owner to consider it at this late stage, without Patent Owner having had a fair opportunity to respond. See Dell Inc. v. Acceleron, LLC, Nos. 2015-1513, -1514, 2016 WL 1019075, at *6–7 (Fed. Cir. March 15, 2016); CBS Interactive Inc. v. Helferich Patent Licensing, LLC, Case IPR2013- 00033, slip op. at 2–3 (PTAB October 23, 2013) (Paper 118) (discussing new argument and demonstrative exhibits at oral hearing). Thus, the argument is not considered. Moreover, the argument does not cure the deficiency that in the answering machine mode, neither dialing controls 186 nor telecamcorder controls 188 is used to cause transmission of the recorded message. During oral argument, counsel for Petitioners presents still another new reasoning, i.e., that if the answering machine answers two calls, then the second transmission would be subsequent to a first display. Tr. 75:16–23. The argument also is belatedly presented, for the first time at oral argument, and thus it is not considered. In any event, like the first new argument mentioned above, this new argument also does not cure the deficiency that in the answering machine mode, neither dialing controls 186 nor telecamcorder controls 188 is used to cause transmission of the recorded message.” slip op. at 40

  Patent outcomesUS 7,365,871 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,365,871

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.