• Quasar Science LLC v. Colt International Clothing, Inc. D/B/A Colt LedNo claims unpatentable
  PTAB · Oct 7, 2024 · IPR2023-00614 · APJ Zhenyu Yang · IPR · Final written decision

  Claims 1–3, 6–18, 21–24, and 27–29 were not shown unpatentable under either § 103 ground because the evidence did not establish all limitations or a reason to combine the cited teachings.

  RulingsFinal written decision

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

    “Claim Construction In an inter partes review, we construe a claim term “using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. [§] 282(b).” 37 C.F.R. § 42.100(b) (2020). Under that standard, the words of a claim “are generally given their ordinary and customary meaning,” which is “the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention, i.e., as of the effective filing date of the patent application.” Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). The parties agree that, for purposes of this Decision, no claim term needs specific construction beyond its plain and ordinary meaning. Pet. 14; PO Resp. 10. Claim terms need only be construed to the extent necessary to resolve the controversy. Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011). On this record and for purposes of this Decision, we see no need to expressly construe any claim term.” slip op. at 8

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Here, Petitioner argues that a person of ordinary skill in the art (“POSITA”) would have had “at least a Bachelor of Science degree in electrical engineering, or a closely related field, along with at least two years of experience in the design of entertaining lighting systems, and the design and use of LEDs.” Pet. 14 (citing Ex. 1003 ¶ 32). Patent Owner argues that a POSITA would have had “2 to 4 years’ experience in electrical engineering/design of film and television lighting systems, including the design and use of LED lights, combined with two to three years of work experience as a set lighting technician in television and/or motion picture industry.” PO Resp. 9 (citing Ex. 2047 ¶¶ 16–17; Ex. 2100 ¶¶ 156–161). Patent Owner does not identify any specific instance in which the differences between the parties’ respective descriptions of the level of ordinary skill in the art impacts the analysis or conclusions of either party, or either party’s declarant, in this case. In fact, Patent Owner acknowledges that any differences between the parties’ respective descriptions do not impact the conclusions in this case. Id. (“Regardless of which definition of a POSITA is applied, the conclusion(s) would be the same.”). For purposes of this Decision, and to the extent necessary, we adopt Petitioner’s definition of a POSITA because it is consistent with the prior art’s demonstration of the skill level at the time of the invention.” slip op. at 9

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

    “would have been obvious to combine the cited teachings of Kit and Katzir. Petitioner argues that “Katzir further discloses daylight and tungsten temperature ranges within the claimed temperature ranges.” Pet. 24 (citing Ex. 1006 ¶¶ 53, 54, Figs. 5A, 5B). Petitioner relies on the Holmes Declaration to show that “[a] POSITA would have been motivated to look to Katzir to design an LED array to be retrofit in a fluorescent tube.” Id. at 19 (citing Ex. 1003 ¶ 102). Mr. Holmes testifies that [b]oth Kit and Katzir teach using LEDs of various colors in a fluorescent tube form factor, like a T8 or T12 fluorescent tube. Katzir also discloses various LED array layouts that a POSITA would have a looked to when designing an LED tube lighting like that disclosed in Kit. A POSITA would have had strong motivation to look to Katzir to design an LED array to be retrofit in a fluorescent tube form factor. Ex. 1003 ¶ 102 (internal citations omitted). As discussed above, however, the cited passages of Kit describe a light with LEDs that produces a single, consistent temperature of warm white, commercial white, or cool white. Ex. 1004, 3:28–36, 22:9–25. Neither Petitioner nor Mr. Holmes sufficiently explains why a POSITA would have modified Kit to include Katzir’s particular layout that includes both cool white LEDs and warm white LEDs. See Pet. 19, 24; Ex. 1003 ¶ 102; In re Nuvasive, Inc., 842 F.3d 1376, 1382 (Fed. Cir. 2016) (instructing that we must articulate a reason why a POSITA would combine the prior art references). We identified the aforementioned deficiencies for this asserted challenge in the Decision on Institution. DI 21–23. Petitioner did not address those deficiencies in the Reply. See generally Reply; Tr. 6:16–7:10. Thus, based on the entire record developed at trial, and for the foregoing reasons, Petitioner has not shown that claim 1 would have been obvious over Kit, Ianiro, Ducharme, and Katzir.” slip op. at 13

  • Expert testimonyPetitioner expert discountedOther

    “Petitioner asserts that Mr. Holmes cited Hasnain’s heat dissipation techniques. Reply 10 (citing Ex. 1003 ¶ 490; Ex. 1049 ¶¶ 41–49). Paragraph 490 of Exhibit 1003 relates to Ducharme, not Hasnain, and thus, does not support Petitioner’s argument. Although paragraphs 41 to 49 of Exhibit 1049 span more than seven pages, other than the single citation in the Reply, Petitioner does not discuss any of the testimony presented therein. We, thus, do not consider this portion of the Holmes Supplemental Declaration. See 37 C.F.R. §§ 42.6(a)(3). Furthermore, we would not be persuaded by Mr. Holmes’ testimony even if we considered it. For example, Mr. Holmes testifies that Hasnain’s heat-dissipating structure “a variety of heat dissipating techniques are disclosed by Hasnain, any one of which could readily be used in a T12 form factor LED light, as expressly recognized by Hasnain.” Ex. 1049 ¶ 46. We disagree with Mr. Holmes that Hasnain teaches enclosing its heat-dissipating structure in a fluorescent light tube. Hasnain teaches “a replacement LED light source for fluorescent tube 22 [that] plug[s] into the same connectors and operate[s] from the voltage patterns generated by the ballasts.” Ex. 1008, 3:23–26. Hasnain also teaches that “the replacement LED light source has a plurality of LEDs mounted on a heat-dissipating substrate that has a width that is less than or equal to the diameter of the fluorescent tube that the light source is designed to replace.” Id. at 5:52–56. Thus, Hasnain teaches that its LED light fits into, and connects with, an existing structure that previously held a fluorescent light tube. Id. at 2:50–56, 3:23–26, 4:58–64, 5:52–56, Figs. 1A, 4. As discussed above, however, Hasnain’s heat-dissipating structure is not enclosed in a tubular housing in order to dissipate heat to the surrounding air or via thermal contact with the existing structure that a fluorescent light tube is inserted into. Id. at 2:50–56, 4:23–28, 4:51–64, Figs. 1A, 3, 4.” slip op. at 22

  Patent outcomesUS 10,566,895 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,566,895
• Quasar Science LLC v. Colt International Clothing, Inc. D/B/A Colt LedNo claims unpatentable
  PTAB · Oct 7, 2024 · IPR2023-00613 · APJ Robert J Weinschenk · IPR · Final written decision

  Claims 1–3, 6–14, 16–19, 21–24, and 26–31 were not shown unpatentable over either asserted obviousness combination.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedOther

    “Patent Owner does not identify any specific instance in which the differences between the parties’ respective descriptions of the level of ordinary skill in the art impacts the analysis or conclusions of either party, or either party’s declarant, in this case. See id. In fact, Patent Owner acknowledges that any differences between the parties’ respective descriptions do not impact the conclusions in this case. Id. at 9 (“Regardless of which definition . . . is applied, the conclusion(s) would be the same.”). Therefore, to the extent necessary, we adopt Petitioner’s description, which is supported by the testimony of Petitioner’s declarant, Mr. Fred Holmes, and is consistent with the asserted prior art. Ex. 1003 ¶ 32.” slip op. at 8

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

    “the same standard used in a civil action under 35 U.S.C. § 282(b), including construing the claim in accordance with the ordinary and customary meaning of the claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. 37 C.F.R. § 42.100(b). Neither party proposes an express construction for any claim terms. Pet. 13; PO Resp. 10. We determine that no claim terms require an express construction to resolve the parties’ disputes regarding the asserted grounds of unpatentability. See Sections II.D.1, II.E.1.” slip op. at 8

  • BurdenNot shown unpatentable

    “Thus, Petitioner’s assertion that Hasnain’s LED light emits at least 1000 lumens requires distributing LEDs on a heat-dissipating structure that transfers heat to the surrounding air or via thermal contact with another existing structure. Id. at 4:23–28, 4:51–5:6, Figs. 3, 4; see Ex. 2080 ¶¶ 49, 5 Figure 4 shows heat-dissipating structure 59, not heat-dissipating structure 47. Ex. 1008, Fig. 4. But Hasnain describes those structures similarly. Id. at 4:51–5:6. 66. Petitioner, though, does not explain how Hasnain’s heat-dissipating structure would work when combined with Ducharme’s tubular housing. See Pet. 62–63; Pet. Reply 10; Ex. 1003 ¶ 490; Ex. 1049 ¶¶ 41–49. In particular, Petitioner does not explain how Hasnain’s heat- dissipating structure would dissipate sufficient heat to the surrounding air when enclosed in Ducharme’s tubular housing. See id. Petitioner also does not explain how Hasnain’s heat-dissipating structure would dissipate sufficient heat via thermal contact with another existing structure when enclosed in Ducharme’s tubular housing. See id. Furthermore, Petitioner does not propose combining Ducharme and Hasnain so that Hasnain’s heatdissipating structure is in thermal contact with Ducharme’s tubular housing. See id. Thus, Petitioner does not show sufficiently how the proposed combination of Ducharme and Hasnain was supposed to work. See Personal Web Techs., LLC v. Apple, Inc., 848 F.3d 987, 994 (Fed. Cir. 2017) (“[T]he Board nowhere clearly explained, or cited evidence showing, how the combination of the two references was supposed to work.”).” slip op. at 20

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

    “person of ordinary skill in the art would have had reason to achieve high lumen output, we determine that Petitioner does not show sufficiently that a person of ordinary skill in the art would have had reason to combine the specific cited teachings of Ducharme and Hasnain.” slip op. at 17

  Patent outcomesUS 10,411,582 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,411,582
• Commscope, Inc. v. TQ Delta, LLCNo claims unpatentable
  PTAB · Nov 13, 2023 · IPR2022-01012 · APJ Kara L Szpondowski · IPR · Final written decision

  Claims 1–28 were not shown unpatentable under either § 103 ground because the petitioner did not adequately explain why a skilled artisan would combine the cited references.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “In our Institution Decision, we preliminarily adopted Petitioner’s unopposed7 proposed level of ordinary skill in the art. Inst. Dec. 12. In the Response, Patent Owner does not challenge Petitioner’s characterization of the level of ordinary skill in the art. Nothing in the full record persuades us that our preliminary finding as to the level of ordinary skill in the art was incorrect. Accordingly, we maintain our adoption of Petitioner’s proposed 7 Patent Owner did not challenge the proposed level of ordinary skill in the art in the Preliminary Response. level of ordinary skill in the art, as consistent with the level of ordinary skill in the art reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 9

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

    “ordinary meaning” and “[t]o the extent certain terms are subject to multiple interpretations, those questions do not affect the grounds advanced here.” Pet. 12 (citing Ex. 1003 ¶ 116). Patent Owner “does not believe that the Board[] needs to expressly construe any claim limitation to find that the claims have not been proven unpatentable.” Resp. 13–14. There are no claim terms in dispute, so we need not expressly construe any term for purposes of this Decision. See 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))).” slip op. at 10

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

    “header with a sequence number. See Pet. 31; Resp. 20–21. Petitioner asserts that a person of ordinary skill in the art would have been motivated to combine G993.2 with Fukushima “[to] provid[e] improvements” (Pet. 22), but does not further explain what improvement to G993.2’s would result from the combination. Rather, Petitioner describes these improvements as “use of . . . packets with message counts and/or sequence IDs,” (id.), which provides nothing more than a statement of what claim 1 recites and what Fukushima discloses without any explanation as to what improvement is provided to G993.2 or why the use of packets with sequence IDs would improve G993.2. Petitioner’s asserted rationale for combining the references includes additional generic statements, e.g., by referring to “predictable benefits,” “predictable results described above,” and “these predictable, beneficial results” which are never specifically explained. See Pet. 22–23 (emphasis added). For example, Petitioner does not articulate why Fukushima’s sequence numbers would be an improvement or beneficial to G993.2’s “packets.” We recognize that Petitioner does not need to show “improvement” in a “categorical sense,” and need only show that Fukushima’s sequence numbers were a “suitable option,” see Intel Corp. v. process depicted in Figure 9[-]1, that data that flows from that process is in fact the packet.” Tr. 12:9–14. PACT KPP Schwiez AG, 61 F. 4th 1373, 1381 (Fed. Cir. 2023), but in generically relying on “improvement” and “predictable, beneficial results” without further explanation, Petitioner has not established that Fukushima’s sequence numbers were a “suitable option” for G993.2’s “packets.” None of Petitioner’s assertions provide a sufficient reason that would have prompted a person of ordinary skill in the art to combine G993.2 with Fukushima as proposed. See KSR, 550 U.S. at 418 (in an obviousness analysis, one must “determine whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue”); In re Van Os, 844 F.3d 1359, 1361 (Fed. Cir. 2017) (stating that “a conclusory assertion with no explanation is inadequate to support a finding that there would have been a motivation to combine”). We, therefore, disagree with Petitioner that “Petitioner set forth numerous reasons a [person of ordinary skill in the art] would be motivated to combine” VDSL2, Mitlin, and Fukushima. Reply 20 (citing Ex. 1003 ¶¶ 140–148, 306–310); see also Reply 22–23.” slip op. at 25

  • Strike new argumentNew argument disregardedDecided for patent owner

    “At the hearing, Petitioner also relied on deposition testimony of Mr. McNair that G993.2 inherently discloses a sequence ID (Tr. 16:15–16), but this appears inconsistent with Petitioner’s position in the Reply, where “Petitioner describes the manner in which the ‘Sequence Identifier (SID)’ claim element is disclosed by Fukushima.” Reply 10. However, the testimony from Mr. McNair was cited in the Reply, stating that “VDSL2 ‘implicitly’ uses ‘some numbering of packets,’ such that there ‘has to be some kind of an indicator and the sequence number is one.’” Id. at 13 (citing Ex. 2020, 91:10–22); see also id. at 13–14 (citing Ex. 2020, 91:23–25 (Mr. McNair testifying that “there’s got to be some kind of marker, whether you call it a sequence number or you call it some other kind of marker….”)). This theory of inherency is not argued in the Petition, and is therefore a new theory raised for the first time in Petitioner’s Reply, so we will not consider it. See 37 C.F.R. § 42.23(b) (“A reply may only respond to arguments raised in the corresponding opposition, patent owner preliminary response, patent owner response, or decision on institution.”); Consolidated Trial Practice Guide 73-74 (Nov. 2019)12 (explaining that “‘[r]espond,’ in the context of 37 C.F.R. § 42.23(b), does not mean proceed in a new direction with a new approach as compared to the positions taken in a prior filing,”). However, even assuming this is not an improper new argument, Petitioner has not established that G993.2’s “packet” inherently teaches a header field comprises a sequence identifier (SID), or addressed how this might affect the combination with Fukushima. PAR Pharmaceutical, Inc. v. TWI Pharmaceuticals, Inc., 773 F.3d 1186, 1195–1196 (Fed. Cir. 2014) (“A party must . . . meet a high standard in order to rely on inherency . . . —the limitation at issue necessarily must be present, or the natural result of the combination of elements explicitly disclosed by the prior art.”). That is, we do not find that Mr. McNair’s testimony that “there has to be some kind of an indicator and the sequence number is one” supports that a sequence number is necessarily present in G993.2. Moreover, Petitioner’s inherency theory seems to be in tension with Petitioner’s contentions that the combination with Fukushima provides an improvement or benefit to G993.2.” slip op. at 28

  Patent outcomesUS 10,833,809 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,833,809
• Commscope, Inc. v. TQ Delta, LLCNo claims unpatentable
  PTAB · Nov 13, 2023 · IPR2022-00809 · APJ Kara L Szpondowski · IPR · Final written decision

  Claims 1–4, 6, 7, 9–12, 14, 15, 17–20, 22–24, 26, and 28 were not shown unpatentable under either § 103 ground because Petitioner did not establish motivation to combine.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner asserts a person of ordinary skill in the art would have possessed a Bachelor’s degree in electrical or computer engineering, or the equivalent, and at least 5–6 years of experience; a Master’s degree in electrical or computer engineering, or the equivalent, and at least 2–3 years of experience; or a Doctor of Philosophy (Ph.D.) in electrical or computer engineering, or the equivalent, with at least 1–2 years of experience. Pet. 10 (citing Ex. 1003 ¶¶ 31–33). In our Institution Decision, we preliminarily adopted Petitioner’s unopposed7 proposed level of ordinary skill in the art. Inst. Dec. 13. In the Response, Patent Owner does not challenge Petitioner’s characterization of the level of ordinary skill in the art. Nothing in the full record persuades us that our preliminary finding as to the level of ordinary skill in the art was incorrect. Accordingly, we maintain our adoption of Petitioner’s proposed level of ordinary skill in the art, as consistent with the level of ordinary skill in the art reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 9

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

    “Petitioner asserts that “claim terms should be given their plain and ordinary meaning” and “[t]o the extent certain terms are subject to multiple interpretations, those questions do not affect the grounds advanced here.” Pet. 11 (citing Ex. 1003 ¶¶ 18–24, 116–118). Patent Owner “does not believe that the Board[] needs to expressly construe any claim limitation to find that the claims have not been proven unpatentable.” Resp. 13–14. There are no claim terms in dispute, so we need not expressly construe any term for purposes of this Decision. See 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))).” slip op. at 10

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

    “Fukushima in the manner proposed.10 See Resp. 26; Sur-reply 17; see In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) (citing In re Gorman, 933 F.2d 982, 987 (Fed. Cir. 1991)) (“It is impermissible to use the claimed invention as an instruction manual or ‘template’ to piece together the teachings of the prior art so that the claimed invention is rendered obvious.”). Specifically, we determine that Petitioner has not provided sufficient rationale establishing why a person of ordinary skill in the art would have modified G993.2’s “packet”11 with Fukushima’s packet with a header including a sequence number. See KSR, 550 U.S. at 418 (establishing that an invention would have been obvious requires “a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does”) (emphasis added).” slip op. at 23

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “detail why a [person of ordinary skill in the art] would have recognized the value of modifying VDSL2 by the disclosures of Fukushima.” Reply 19 (Ex. 1003 ¶¶ 140–148, 301–305, 314); see also Reply 28. Mr. McNair’s testimony is not only largely repetitive of the Petition, but similarly does not (1) provide any explanation as to what “improvements,” “predictable benefits,” or “value,” arises from the combination, or (2) even directly address the combination of G993.2’s “packet” with Fukushima’s sequence number. Ex. 1003 ¶¶ 144, 145, 146; see ActiveVideo Networks, Inc. v. Verizon Comms., Inc., 694 F.3d 1312, 1328 (2012) (describing expert testimony that “motivation to combine would be because you wanted to build something better . . . a system that was more efficient, cheaper, or you wanted a system that had more features” as “generic and bears no relation to any specific combination of the prior art elements”).” slip op. at 25

  Patent outcomesUS 9,094,348 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,094,348
• Bank Of America, N.A. v. Nant Holdings IP, LLCNo claims unpatentable
  PTAB · Feb 2, 2023 · IPR2021-01333 · APJ Robert J Weinschenk · IPR · Final written decision

  Claims 18, 26, 27, 29, and 31 were not shown unpatentable because Ogasawara did not disclose claim 18’s determining limitation, and the obviousness grounds did not cure that deficiency.

  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 a “Bachelor of Science in Electrical Engineering, Computer Science, Computer Engineering, or equivalent, and one to two years of experience 1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125 Stat. 284, 287–88 (2011), amended 35 U.S.C. §§ 102, 103. Because the ’252 patent was filed before the effective date of the relevant amendment, the pre-AIA versions of §§ 102, 103 apply. working with image processing, image recognition, or a related field.” Pet. 17 (citing Ex. 1003 ¶ 43). Petitioner’s description of the level of ordinary skill in the art is supported by the testimony of Petitioner’s declarant, Dr. Jeffrey Rodriguez. Ex. 1003 ¶ 43. Patent Owner does not propose a description of the level of ordinary skill in the art or dispute Petitioner’s description. PO Resp. 15. We adopt Petitioner’s description, which is consistent with the level of ordinary skill in the art at the time of the invention as reflected in the asserted prior art.” slip op. at 5

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

    “C. Claim Construction In an inter partes review proceeding, a patent claim is construed using the same standard used in federal district court in a civil action under 35 U.S.C. § 282(b), including construing the claim in accordance with the ordinary and customary meaning of the claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. 37 C.F.R. § 42.100(b) (2020). Patent Owner proposes construing the term “the image” in all challenged claims to refer to “the same, single image.” PO Resp. 20. Based on this proposed construction, Patent Owner argues that the combination of Ogasawara and Bolle does not teach the limitations of claim 31. Id. at 59–60. As discussed below, for reasons unrelated to the term “the image,” Petitioner does not meet its burden to show that the challenged claims are unpatentable. See Sections II.D–II.F. Therefore, we determine that the term “the image” does not require an express construction to resolve the parties’ disputes regarding the asserted grounds of unpatentability.” slip op. at 6

  • BurdenNot shown unpatentable

    “Petitioner does not show persuasively that Ogasawara expressly or implicitly discloses the determining limitation of claim 18. The portions of Ogasawara cited by Petitioner indicate that Ogasawara’s computing platform invokes its recognition software to analyze image data without first determining if the image contains a recognizable symbol. See Pet. 23–25 (citing Ex. 1005, 18:11–58, 20:41–67, 21:15–20). Ogasawara discloses that the user of its device verifies that an image contains an entire symbol when capturing the image and before transmitting the image data to the computing platform. Ex. 1005, 20:47–51 (“While the consumer is scanning a particular bar code with the digital camera, . . . the consumer can visually verify that the entire image has been captured.”); see also id. at 20:41–47, 22:10–13, 22:59–63 (disclosing that a user captures an image of an item’s bar code by placing it within the image field of the digital camera). As a result, when Ogasawara’s computing platform receives the image data, it simply invokes recognition software to analyze the image data.2 Id. at 18:32–37, 21:17–20. For example, Ogasawara discloses that “[o]nce the bar code image has been captured, the program decodes the bar code image data . . . by operating on the bar code image with pattern recognition software.” Id. at 21:17–20; see also id. at 18:32–37 (“Once this information is received . . . , a character 2 In fact, Petitioner appears to acknowledge that Ogasawara’s device operates in this manner. Pet. 24–25 (“[o]nce the bar code image has been captured, the program decodes the bar code image data . . . with pattern recognition software.”). recognition and/or pattern recognition application routine can be invoked . . . to . . . decode the bar code.”). Thus, Ogasawara supports Patent Owner’s position that Ogasawara’s computing platform does not determine if an image contains a recognizable symbol before analyzing the image. Petitioner argues that the term “recognize” in Ogasawara discloses determining if an image contains a recognizable symbol, whereas the term “decode” discloses analyzing the symbol to extract information. Pet. Reply 6 (“capture, recognize and decode captured images.”). We disagree. Ogasawara uses both terms—recognize and decode—to describe analyzing image data to extract information. Ex. 1005, 18:32–37, 21:17–20. For example, Ogasawara discloses that its computing platform invokes recognition software “to either decode the bar code videographic data or to perform pattern recognition functions on a[n] icon-like patter[n].” Id. at 18:32–37 (emphases added); see also id. at 21:17–20 (“the program decodes the bar code image data . . . by operating on the bar code image with pattern recognition software”) (emphases added). Thus, Petitioner’s reliance on the term “recognize” does not show that Ogasawara discloses the determining limitation of claim 18. For the reasons discussed above, Petitioner does not show sufficiently” slip op. at 11

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

    “Petitioner does not show persuasively that Ogasawara expressly or implicitly discloses the determining limitation of claim 18. The portions of Ogasawara cited by Petitioner indicate that Ogasawara’s computing platform invokes its recognition software to analyze image data without first determining if the image contains a recognizable symbol. See Pet. 23–25 (citing Ex. 1005, 18:11–58, 20:41–67, 21:15–20). Ogasawara discloses that the user of its device verifies that an image contains an entire symbol when capturing the image and before transmitting the image data to the computing platform. Ex. 1005, 20:47–51 (“While the consumer is scanning a particular bar code with the digital camera, . . . the consumer can visually verify that the entire image has been captured.”); see also id. at 20:41–47, 22:10–13, 22:59–63 (disclosing that a user captures an image of an item’s bar code by placing it within the image field of the digital camera). As a result, when Ogasawara’s computing platform receives the image data, it simply invokes recognition software to analyze the image data.2 Id. at 18:32–37, 21:17–20. For example, Ogasawara discloses that “[o]nce the bar code image has been captured, the program decodes the bar code image data . . . by operating on the bar code image with pattern recognition software.” Id. at 21:17–20; see also id. at 18:32–37 (“Once this information is received . . . , a character 2 In fact, Petitioner appears to acknowledge that Ogasawara’s device operates in this manner. Pet. 24–25 (“[o]nce the bar code image has been captured, the program decodes the bar code image data . . . with pattern recognition software.”). recognition and/or pattern recognition application routine can be invoked . . . to . . . decode the bar code.”). Thus, Ogasawara supports Patent Owner’s position that Ogasawara’s computing platform does not determine if an image contains a recognizable symbol before analyzing the image. Petitioner argues that the term “recognize” in Ogasawara discloses determining if an image contains a recognizable symbol, whereas the term “decode” discloses analyzing the symbol to extract information. Pet. Reply 6 (“capture, recognize and decode captured images.”). We disagree. Ogasawara uses both terms—recognize and decode—to describe analyzing image data to extract information. Ex. 1005, 18:32–37, 21:17–20. For example, Ogasawara discloses that its computing platform invokes recognition software “to either decode the bar code videographic data or to perform pattern recognition functions on a[n] icon-like patter[n].” Id. at 18:32–37 (emphases added); see also id. at 21:17–20 (“the program decodes the bar code image data . . . by operating on the bar code image with pattern recognition software”) (emphases added). Thus, Petitioner’s reliance on the term “recognize” does not show that Ogasawara discloses the determining limitation of claim 18. For the reasons discussed above, Petitioner does not show sufficiently” slip op. at 11

  Patent outcomesUS 7,899,252 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,899,252
• Quectel Wireless Solutions Co. Ltd. v. Koninklijke Philips N.V.No claims unpatentable
  PTAB · Sep 8, 2022 · IPR2021-00560 · APJ Russell E Cass · IPR · Final written decision

  Claims 11–17 were not shown unpatentable under either obviousness ground because the evidence did not establish the claimed initial transmission of control information on the specified channels.

  RulingsFinal written decision

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

    “itself. Claim 11 states that, after the secondary station receives the acknowledgement, “control information is initially transmitted on an uplink control channel and a downlink control channel” between the primary station and secondary station. The use of the word “initially” here signifies something that occurs first, or at the beginning.3 Thus, saying that control information is “initially transmitted on an uplink control channel and a downlink control channel” signifies that control information is transmitted for the first time on those particular uplink and downlink control channels. Thus, the plain meaning of the claim language indicates that, after the secondary station receives the acknowledgement, control information is transmitted for the first time on the claimed “uplink control channel” and “downlink control channel” “between the primary station and said secondary station.”” slip op. at 10

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached

    “Based on the full trial record, we find that Petitioner has not proven by a preponderance of the evidence that Lomp discloses that “subsequent to a reception of the acknowledgment by said secondary station, control information is initially transmitted on an uplink control channel and a downlink control channel between the primary station and said secondary station,” as required by claim 11(c) and comparable language in claim 15. As noted in Section II.A above, we have construed this claim language to require that, subsequent to a reception of the acknowledgement by said secondary station, control information is transmitted for the first time on the particular claimed uplink and downlink control channels between the primary station and the secondary station. We first turn to Petitioner’s reliance on Lomp’s disclosure in column 59, lines 44–48 that the primary station (RCS) “instructs the SU through the assigned logical control channel and causes a second 64 kb/s duplex link to be established between the RCS modem and the SU.” Petitioner has not pointed to any disclosure in Lomp of when this “assigned logical control channel” is established or whether any information is transmitted on this control channel before the instruction from the RCS to cause a second 64 kb/s link to be established. Indeed, during the hearing, counsel for Petitioner acknowledged that “Lomp doesn’t specify when the assigned logical control channel is established,” and that it is not certain what might have occurred on those channels before the instruction that Petitioner points to as the “initial” transmission of control information. Tr. 10:4–5, 57:4–9; see id. at 19:24–20:2, 57:9–14. Additionally, when asked which of Lomp’s channels would be used to establish the 64 kb/s link, Dr. Ding testified at his deposition that his understanding “is that Lomp did not specify which channel will be providing the instruction” to establish that link. Ex. 2012, 64:8–14. In light of this testimony, we find insufficient evidence that Lomp teaches that the instruction on the “assigned logical control channels” to establish the 64 kb/s link, which Petitioner points to as the “initial” transmission of control information, would have been the first time that control information was transmitted on those “assigned logical control channels,” as the claims require.” slip op. at 24

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “Based on the full trial record, we find that Petitioner has not proven by a preponderance of the evidence that Lomp discloses that “subsequent to a reception of the acknowledgment by said secondary station, control information is initially transmitted on an uplink control channel and a downlink control channel between the primary station and said secondary station,” as required by claim 11(c) and comparable language in claim 15. As noted in Section II.A above, we have construed this claim language to require that, subsequent to a reception of the acknowledgement by said secondary station, control information is transmitted for the first time on the particular claimed uplink and downlink control channels between the primary station and the secondary station. We first turn to Petitioner’s reliance on Lomp’s disclosure in column 59, lines 44–48 that the primary station (RCS) “instructs the SU through the assigned logical control channel and causes a second 64 kb/s duplex link to be established between the RCS modem and the SU.” Petitioner has not pointed to any disclosure in Lomp of when this “assigned logical control channel” is established or whether any information is transmitted on this control channel before the instruction from the RCS to cause a second 64 kb/s link to be established. Indeed, during the hearing, counsel for Petitioner acknowledged that “Lomp doesn’t specify when the assigned logical control channel is established,” and that it is not certain what might have occurred on those channels before the instruction that Petitioner points to as the “initial” transmission of control information. Tr. 10:4–5, 57:4–9; see id. at 19:24–20:2, 57:9–14. Additionally, when asked which of Lomp’s channels would be used to establish the 64 kb/s link, Dr. Ding testified at his deposition that his understanding “is that Lomp did not specify which channel will be providing the instruction” to establish that link. Ex. 2012, 64:8–14. In light of this testimony, we find insufficient evidence that Lomp teaches that the instruction on the “assigned logical control channels” to establish the 64 kb/s link, which Petitioner points to as the “initial” transmission of control information, would have been the first time that control information was transmitted on those “assigned logical control channels,” as the claims require.” slip op. at 24

  • Expert testimonyPatent owner expert creditedDecided for patent owner

    “Based on the full trial record, we find that Petitioner has not proven by a preponderance of the evidence that Lomp and Chen teach limitation 11(c) and the comparable limitation in claim 15. Petitioner’s arguments concerning Lomp are discussed above with respect to Ground 1. As to Chen, Petitioner identifies Chen’s feedback channels of the forward and reverse link as the claimed uplink and downlink control channels, but does not establish when control information is “initially transmitted” on those channels. Pet. 62 (citing Ex. 1003 ¶ 133). On the other hand, Dr. Lanning testifies that “[t]he control information that is exchanged in steps 330 and 350 of Chen is not the initial transmission of control information,” because “[s]uch initial control information would have been exchanged in Chen before the operation of Chen at the idle rate in step 310” in order to adjust the transmission power to an appropriate level for the idle rate. Ex. 2004 ¶ 276. We find Dr. Lanning’s testimony to be credible because it is consistent with Chen’s statement that “each base station must rapidly and accurately adjust the transmission power for the signals which it transmits to the mobile station,” and Chen’s description of a closed loop power control system for adjusting the transmission power by comparing measured power level against a threshold value, such that “if the power level is lower than desired, the base station increases the transmission power of its transmitted signals, otherwise the transmission power is decreased.” Ex. 1006, 1:56–59, 1:66–2:11; Ex. 2004 ¶¶ 191–193.” slip op. at 33

  Patent outcomesUS 7,089,028 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,089,028
• Ebay Inc. v. Masterobjects, Inc.No claims unpatentable
  PTAB · Jul 25, 2018 · IPR2017-00740 · APJ Christa P Zado · IPR · Final written decision

  Claims 1–3, 6, 7, 9, 12, 15–17, 21, 24–26, and 32–37 were not shown unpatentable because the petition did not establish the claimed usability test.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “skill in the art include, but are not limited to, the types of problems encountered in the art, the sophistication of the technology, and educational level of active workers in the field. In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995).” slip op. at 9

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

    “interpreted according to their “broadest reasonable construction in light of the specification of the patent” in which they appear. 37 C.F.R. § 42.100(b); see also Cuozzo Speed Techs., LLC, v. Lee, 136 S. Ct. 2131, 2141–46 (2016). We interpret claim terms using “the broadest reasonable meaning of the words in their ordinary usage as they would be understood by one of ordinary skill in the art, taking into account whatever enlightenment by way” slip op. at 10

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

    “1. Overview of Kravets (Ex. 1003) Petitioner asserts Kravets is prior art under 35 U.S.C. § 102(e). Pet. 15. Patent Owner does not dispute Petitioner’s assertion that Kravets is prior art. Kravets issued from a patent application filed January 31, 2000. Ex. 1003, [22]. Based on the earliest possible priority date of the ’024 patent (see supra Section I.C), for purposes of this Final Written Decision, we conclude that Kravets is prior art to the ’024 patent under 35 U.S.C. § 102(e).” slip op. at 12

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

    “display to the user includes 1) PSS 40 identifying a first set of search terms, which preferably comprises 500 search terms, where the first n characters of each search term matches the n-character input string in the request (Ex. 1003, 6:17–36); and 2) PSS 40 selecting a second set of search terms, such as 6 terms, from the first set of search terms by selecting the 6 terms that have the highest value scores (Ex. 1003, 7:26–40). This disclosure does not describe a client object testing for usability by checking that a return message corresponds to the latest query. First, this disclosure relates to actions performed by the server, rather than the client. Id. at 6:17–36, 7:26–40 (describing PSS 40 performing this technique). But claim 1 requires the client object perform the test for usability. Ex. 1001, 32:2–3 (“the client object tests the usability of the results in the return message”) (emphasis added).” slip op. at 20

  Patent outcomesUS 8,539,024 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR
  Patents in suitUS 8,539,024
• Henny Penny Corporation v. Frymaster L.L.C.No claims unpatentable
  PTAB · Dec 21, 2017 · IPR2016-01435 · APJ Bart A Gerstenblith · IPR · Final written decision

  Claims 1–3, 5–12, and 17–21, 23 were not proven unpatentable over Kauffman and Iwaguchi, with Howard for claims 18 and 20, because the motivation to combine was insufficiently shown.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Level of Ordinary Skill in the Art Petitioner proposes that the level of ordinary skill in the art at the time of the invention would have been a “Bachelors of Science degree in Biosystems & Agricultural Engineering (or equivalent) or other Engineering major with a minor in Food Science and Technology and have had one or more years’ experience in the field of research and development of foods.” Pet. 7 (citing Ex. 1011 ¶ 74). Patent Owner does not propose an explicit level of ordinary skill in the art in its Response. Dr. Keener, however, expressly adopts Petitioner’s proposed level of skill in the art. Ex. 2032 ¶ 63. Consistent with the level of ordinary skill in the art 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), we adopt Petitioner’s unopposed position as to the level of ordinary skill in the art.” slip op. at 13

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

    “means for re-circulating” In the Institution Decision, we preliminarily construed the claim term “means for re-circulating” as a means-plus-function limitation, invoking 35 U.S.C. § 112, ¶ 6. Id. at 17–18. We construed the function as “re-circulating said cooking oil” and identified the corresponding structure as “a pump and structural equivalents thereof.” Id. at 18–19. Neither party contests our construction of the term, and we maintain that construction here for the same reasons. slip op. at 7

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

    “We agree with Patent Owner that we need not expressly construe the term “adapter.” We reiterate the following from our Institution Decision: The term “adapter” appears in each claim of the ’691 patent. Neither party contends that the specification or prosecution history contains a lexicographic definition of the term, and neither party asserts that the specification or prosecution history contains a disclaimer of any portion of the plain and ordinary meaning of the term. From our review of the record, the structure and location of the adapter recited in the claims is provided by other claim language describing that (1) the adapter is located external to the fryer, (2) the sensor is disposed in the adapter, (3) the adapter is installed between two portions of the return pipe or drain pipe, and (4) the adapter has two opposite ends wherein one of the two ends is connected to one of the two portions of either the return pipe or the drain pipe and the other end is connected to the other portion of pipe.3 Inst. Dec. 9–10. In light of the above discussion, and because the focus of the parties’ dispute is not on the meaning of the term “adapter,” we decline to expressly construe the term further.” slip op. at 8

  • Strike new argumentNew argument disregardedDecided for patent owner

    “Differences Between the Prior Art and the Claims; Motivation to Modify We instituted Petitioner’s challenge of these claims, and those that depend therefrom, based on Petitioner’s position that Kauffman disclosed most of the elements of the independent claims with the exception of a sensor capable of measuring an electrical property that is indicative of total polar materials. See, e.g., Inst. Dec. 31. Thus, the theory of obviousness, as discussed above, relies upon substituting Iwaguchi’s sensor for Kauffman’s analyzer. See id. at 31 (“Petitioner provides a second argument that relies upon a modification to Kauffman’s system, in which Iwaguchi’s sensor is employed instead of Kauffman’s analyzer. Because Petitioner provides adequate support for this second position, we address Patent Owner’s arguments based on this proposed combination.”). Petitioner confirmed at the oral argument that its Petition proposed a theory in which Iwaguchi’s sensor is simply swapped for that of Kauffman’s and did not present a more general theory as to modifying Kauffman’s sensor per the teachings of Iwaguchi: JUDGE WEINSCHENK: Did you include both of those alternative theories in your petition or is that something that you’re – you’ve come up with now in the reply? MR. VAIDYA: It’s something that we -- again, in the reply, we wanted to make it very clear that we aren’t going on a 102 basis and we are -- and what -- I think what -- we did have that alternate in the reply, so the alternate -- and I can point to paragraphs if that helps. And so, the idea is again primarily we’re going with the idea of swapping sensors, but that it would be possible to modify the sensor in Kauffman. JUDGE GERSTENBLITH: Because in the petition, it was a swap of the sensors. MR. VAIDYA: That’s right. JUDGE GERSTENBLITH: And that’s what we instituted -- MR. VAIDYA: That’s correct. JUDGE GERSTENBLITH: -- based on. MR. VAIDYA: That’s correct. Tr. 13:21–14:12. We disregard Petitioner’s alternative position as it was an attempt to raise a new theory of unpatentability improperly for the first time in the Reply. See 37 C.F.R. § 42.23(b) (“All arguments for the relief requested in a motion must be made in the motion. A reply may only respond to arguments raised in the corresponding opposition, patent owner preliminary response, or patent owner response.”).” slip op. at 16

  Patent outcomesUS 8,497,691 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,497,691
• Broad Ocean Technologies, LLC v. Nidec Motor CorporationNo claims unpatentable
  PTAB · Dec 21, 2016 · IPR2015-01617 · APJ Patrick M Boucher · IPR · Final written decision

  Claims 7–13 were not shown unpatentable because Beifus did not disclose the claimed torque table with alternate torque settings.

  RulingsFinal written decision

  • BurdenNot shown unpatentable

    “Beifus states that Figure 6 “is a chart illustrating an induction motor speed-torque curve that is programmed into a memory of an ECM.” Ex. 1007 ¶ 11. Because “[a] claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference,” the dispositive issue in this proceeding is well defined: does Figure 6 (and related disclosure) of Beifus teach “selecting a torque table associated with the adjustment factor, the torque table including alternate torque settings,” as recited in independent claim 7? See Verdegaal Bros. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987).” slip op. at 9

  • Strike new argumentNew argument disregardedDecided for patent owner

    “reasoning of Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376 (Fed. Cir. 2015). Petitioner contends that “[u]pon reading Beifus, a person of ordinary skill would immediately recognize that the ECM control circuit could handle the torque values in two ways – storing a set of torque values in a memory or by calculating the torque values ‘on the fly.’” Reply 18. Kennametal explains that “a reference can anticipate a claim even if it ‘do[es] not expressly spell out’ all the limitations arranged or combined as in the claim, if a person of skill in the art, reading the reference, would ‘at once envisage’ the claimed arrangement or combination.” Kennametal at 1381 (citing In re Petering, 301 F.2d 676, 681 (CCPA 1962)). Petitioner did not raise the Kennametal theory of anticipation in its Petition, and the argument based on it in the Reply is, therefore, improper. 37 C.F.R. § 42.23(b) (“A reply may only respond to arguments raised in the corresponding opposition, patent owner preliminary response, or patent owner response.”) (emphasis added); CBS Interactive, Inc. v. Helferich Pat. Lic., LLC, Case IPR2013-00033, slip op. at 3 (PTAB Aug. 9, 2013) (Paper 79) (“Should there be improper arguments or evidence presented with a reply, the Board, exercising its discretion, may exclude the reply and related evidence in their entirety, or alternatively, decline to consider the improper arguments and/or related evidence.”). Although Patent Owner addressed this theory in its Response (PO Resp. 21–24), Patent Owner appears to have done so only prophylactically after the theory was raised by Petitioner in redirect examination of Dr. Sidman. See PO Resp. 21 (“During Dr. Sidman’s redirect examination by [Petitioner’s] counsel, he was asked the following leading question . . . .”) (“The Board should disregard any of this new evidence and argument if [Petitioner] intends to rely on it.”). Because this is a new argument, not raised in the Petition, we do not consider it.” slip op. at 18

  • Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner

    “the ambiguity when Figure 6 is actually described in detail in the specification.” Id. at 16. As Patent Owner asserts, “Beifus makes it clear that Figure 6 is a plot of values derived from key characteristics which are motor parameters of the emulated motor.” Id. (citing Ex. 1007 ¶ 36; Ex. 2002 ¶¶ 15–16, 31). This understanding of Beifus is confirmed by testimony of Patent Owner’s expert, Mark N. Horenstein, Ph.D. Ex. 2002 ¶¶ 15–16. Dr. Horenstein explains that a person of ordinary skill in the art would understand that the parameters stored in the ECM are key parameters used with the formula reproduced above to describe the torque-speed curve of the induction motor being emulated, namely the no-load speed, breakdown speed, and shape description number n. Id. ¶ 15. Dr. Horenstein further testifies that, “although square and diamond symbols appear along the curves in Figure 6, nowhere does Beifus describe the storing of these individual points.” Id. ¶ 16. Rather, Dr. Horenstein expresses his opinion that “a person of skill would understand these symbols to be included simply to identify which curve applies to Option 1 and which to Option 2 [i.e., different options for the induction motor breakdown speed], as indicated by the legend to the right of the plots.” Id. Petitioner challenged Dr. Horenstein’s opinion at his deposition, in part by comparing a drawing from one of Dr. Horenstein’s own patents that included a series of curves with data marked by different symbols: Q. So if a person of ordinary skill in the art looking at Figure 6 of the Beifus patent sees diamonds and squares, wouldn’t they come to an understanding that those are data points? A. I don’t think so. And the reason is that a formula is given that explains how the curves are computed. Figure 19 of [Dr. Horenstein’s patent], those are discretely measured points performed by experiment, and there really is no formula that applies to those curves per se, they’re just data points that have some scatter relative to each other and they happen to be connected by lines, but those lines do not represent a formula. Ex. 1013, 54:2–16. We disagree with Petitioner’s characterization of this testimony as explaining that “the reason a person of ordinary skill in the art would understand that the diamonds and squares appearing in Figure 19 of [Dr. Horenstein’s] patent are data points, as opposed to mere curve identifiers, is because the diamonds and squares are connected by lines.” Reply 15. Rather, Dr. Horenstein’s testimony makes clear that his opinion is grounded in Beifus’s disclosure of a formula that allows calculation of the illustrated points and that connection of data points measured by experiment with lines is incidental. Dr. Horenstein’s testimony is more persuasive than the testimony of Petitioner’s expert, Michael D. Sidman, Ph.D., on the identification of “key characteristic points” disclosed by Beifus. For example, Dr. Sidman appeared to suggest at his deposition that the entire speed-torque curve of Beifus’s Figure 6 is itself a “key characteristic point,” but qualified that position when challenged by Patent Owner. See Ex. 2001, 23:22–25:15. Nevertheless, Dr. Sidman agrees that (1) a curve can be generated from a mathematical formula and graphed (Ex. 2001, 30:8–11); (2) Beifus’s two formulas correspond to the formulas for “Option 1” and “Option 2” shown in Figure 6 (id. at 33:12–36:19); (3) operating speed, breakdown speed, no load speed, and shape-description number n are variables used in the formula disclosed by Beifus (id. at 22:23–23:10); (4) the calculation disclosed by Beifus could be performed on the fly in a motor controller (id. at 47:6–14); and (5) Beifus does not explicitly disclose that any precalculations are performed (id. at 43:1–23). These aspects of Dr. Sidman’s testimony are consistent with Patent Owner’s reading of Beifus.” slip op. at 13

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther

    “We see no compelling reason to modify these constructions based on the positions of the parties as developed during the trial, and adopt them for this Decision. With respect to the construction of “torque table,” Patent Owner asserts: If the Board’s construction means that the table need not be in any particular format in the memory, but the table must still store the alternative torque values required by the claim “in a memory connected to the motor,” then Patent Owner accepts this interpretation for the purposes of this proceeding. However, if the Board’s construction including reference to “a torque curve graphically representing a set of torque values” does not require the torque values shown on the curve to be stored in memory, it is erroneous. PO Resp. 9. We agree with Patent Owner’s position, namely that “[t]he broadest reasonable interpretation of ‘table’ still must require the torque values to be stored in the table.” Id. As Patent Owner points out, “[t]he only intrinsic evidence available in this proceeding demonstrates a ‘torque table’ stores alternative torque settings.” Id. In particular, the ’092 patent consistently uses “table” to refer to discrete data that are stored in a memory, such as in the “speed tables” described as alternatives to “torque tables.” See Ex. 1001, col. 11, ll. 5–24, col. 16, ll. 63–66 (“Instead of adjusting the torque as described above, the motor controller 18 could store a plurality of different torque or speed tables and select one of the torque/speed tables based on an input provided by the torque adjustment mechanism.”). This aspect of the construction of “torque table” is reflected in its reference to including a graphical representation of “a set” of torque values in a memory connected to a motor.” slip op. at 7

  Patent outcomesUS 7,990,092 not shown unpatentable
  Claim construction§ 102 anticipation
  Patents in suitUS 7,990,092
• EMC Corporation v. Acqis LLCNo claims unpatentable
  PTAB · Mar 8, 2016 · IPR2014-01462 · APJ Robert J Weinschenk · IPR · Final written decision

  Claims 54 and 56–61 were not shown unpatentable because the evidence did not establish that the cited references rendered the claimed PCI transaction communication obvious.

  RulingsFinal written decision

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

    “construction in the Decision on Institution. The evidence indicates that the term “Peripheral Component Interconnect (PCI) bus transaction” refers to a particular industry standard, not just any communication with an interconnected peripheral component. Industry literature and dictionaries use the proper noun “Peripheral Component Interconnect” and the abbreviation “PCI” to refer to a particular industry specification for a local bus. See, e.g., Ex. 2001, 1; Ex. 2002, 6–7; Ex. 2003, 7–8. The challenged claims recite “Peripheral Component Interconnect” as a proper noun and abbreviate it as “PCI,” indicating that the challenged claims use those terms consistent with the understood industry meaning. Ex. 1001, col. 43, ll. 48–49, col. 44, l. 6; see Azure Networks, LLC v. CSR PLC, 771 F.3d 1336, 1348 (Fed. Cir. 2014). The written description similarly uses the abbreviation “PCI” to refer to a particular industry standard, and uses the common noun “peripheral bus” to refer to a generic peripheral bus. Compare Ex. 1001, col. 5, ll. 31–33 (“The present invention . . . interface[s] two PCI or PCI-like buses”), with id. at col. 10, ll. 53–55 (“Additionally, the peripheral controller is coupled to a clock control logic, a configuration signal, and a peripheral bus.”) (emphasis added).” slip op. at 6

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “obvious over Horst and LVDS Owner’s Manual; claims 56 and 59 would have been obvious over Horst, LVDS Owner’s Manual, and Pocrass; and claim 58 would have been obvious over Horst, LVDS Owner’s Manual, and Deters. Pet. 58–59. A claim is unpatentable as obvious under 35 U.S.C. § 103(a) if the differences between the claimed subject matter and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which the subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations, including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of ordinary skill in the art; and (4) any objective indicia of non-obviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). We have considered the parties’ arguments and supporting evidence, and we determine that Petitioner has not shown by a preponderance of the evidence that claims 54 and 56–61 would have been obvious over the cited references.” slip op. at 7

  • ExcludeMotion to exclude, deniedMixed

    “Owner argues that paragraphs 10–24 and 31–37 of Exhibit 1031 should be excluded as irrelevant and prejudicial because Petitioner relies on those paragraphs to support improper arguments in the Reply. PO Mot. 8. Petitioner argues in the Reply that the TNet transaction in Horst includes PCI address bits, and that claim 54 only requires communicating two bits of a PCI bus transaction. PO Mot. 1. Patent Owner contends that both arguments exceed the scope of a proper reply, as set forth in 37 C.F.R. § 42.23(b), and that the portions of Exhibit 1031 that Petitioner relies upon to support those arguments should be excluded as irrelevant and prejudicial. PO Mot. 2–4, 6, 7. Patent Owner’s argument is not persuasive. Patent Owner argues in the Response that the TNet transaction in Horst does not include PCI address bits. PO Resp. 27–29. As such, Petitioner’s argument in the Reply that the TNet transaction includes PCI address bits is responsive to an argument raised in the Response. See 37 C.F.R. § 42.23(b) (generally permitting a reply to respond to arguments raised in a response). Patent Owner also argues in the Response that claim 54 requires communicating a 32-bit PCI address. PO Resp. 8–11. As such, Petitioner’s argument in the Reply that claim 54 only requires communicating two bits of a PCI bus transaction is responsive to an argument raised in the Response. Because we are not persuaded that the identified arguments in the Reply are improper, the premise of Patent Owner’s Motion to Exclude Exhibit 1031 fails. Therefore, Patent Owner’s Motion to Exclude paragraphs 10–24 and 31–37 of Exhibit 1031 is denied.” slip op. at 16

  Patent outcomesUS 8,041,873 not shown unpatentable
  Claim construction§ 103 obviousnesscites Graham
  Patents in suitUS 8,041,873

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.