- PTAB · Apr 28, 2017 · IPR2015-01664 · APJ Justin Busch · IPR · Rehearing
The Board denied Ericsson’s rehearing request, leaving intact its final written decision that claims 8–12 and 18–22 were not shown unpatentable.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“On rehearing, the burden of showing the Decision should be modified lies with the party challenging the Decision. 37 C.F.R. § 42.71(d). “The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id. For the reasons that follow, Petitioner’s Request is denied.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITADecided for patent owner
“Petitioner provided no details in its Reply regarding how “within the limits of” adds additional confusion, or why a construction including such language would be inappropriate. The Patent Owner Response demonstrated Patent Owner’s clear disagreement with Petitioner’s position that the proposed prior art combination teaches transmitting the entirety of a broadcast channel in an OFDMA core-band. Nevertheless, in its Reply, Petitioner provided neither an explanation of its understanding of the alleged plain meaning of the disputed limitation nor an explicit statement that transmitting only a portion of a broadcast channel in an OFDMA core-band would be sufficient to meet the disputed limitation. Accordingly, we did not misapprehend or overlook Petitioner’s generic argument for adopting an unspecified “plain meaning” of the disputed limitation. We evaluated all arguments and evidence submitted by both parties, and we determined that the proper construction of the disputed limitation precluded transmitting any portion of the recited broadcast channel outside the OFDMA core-band.” slip op. at 5
- Strike new argumentNew argument disregardedDecided for patent owner
“As discussed in the Decision and above, we provided a preliminary construction of the plain meaning of the disputed term in our Institution Decision, Inst. Dec. 11, and Patent Owner contested that preliminary construction in its Patent Owner Response, see PO Resp. 14–16. Nevertheless, as explained above, Petitioner merely provided unsupported assertions that the plain and ordinary meaning of the disputed limitation should apply and argued Patent Owner’s proposed construction generated more confusion than clarity. See Pet. Reply 2, 3–5. Petitioner did not identify evidence to demonstrate the preliminary construction was correct. We are unable to find—and Petitioner does not cite—any portion of the Petition or Reply identifying the full bandwidth preamble to which Petitioner now refers, much less discussing its relevance to any issue. The panel questioned the parties extensively at the hearing regarding what it means to “transmit a broadcast channel in an” OFDMA core-band. See Tr. 10:4–21:4, 24:16–25:4. Petitioner never pointed to the now-cited disclosure in the specification, let alone argued that such a disclosure was relevant to the proper construction of the disputed limitation. Moreover, the technology is complex, and the record during trial lacks briefing from the parties or testimony from either party’s expert declarant on the portion of the specification now raised by Petitioner. We decline to consider Petitioner’s untimely argument presented for the first time in its Request for Rehearing.” slip op. at 6
Claim constructionPatents in suitUS 7,787,431 - Ericsson Inc. / Telefonaktiebolaget LM Ericsson v. Intellectual Ventures II LLCNo claims unpatentablePTAB · Feb 8, 2017 · IPR2015-01664 · APJ Justin Busch · IPR · Final written decision
The Board held claims 8–12 and 18–22 not shown unpatentable as obvious over Dulin, Yamaura, Zhuang, and Hwang because the combination did not teach the entire broadcast channel within the core-band.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Upon further review of the ’431 patent, particularly in view of Patent Owner’s arguments supported by Dr. Zeger’s testimony discussed above, we are persuaded that our preliminary partial construction was unreasonably broad to the extent that construction indicated the transmitting a broadcast channel limitation would be met by the transmission of a broadcast channel that is only partially within the core-band. Thus, we agree with Patent Owner that to show that the transmitting “a broadcast channel in an” OFDMA core-band limitation is met, Petitioner must demonstrate that the prior art teaches or suggests transmitting a broadcast channel, wherein the entire channel is contained within the core-band.” slip op. at 8
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“as calling signals) in a “broadcast burst” (including Yamaura’s BCH and FCH) using only a subset of the subcarriers near the center of the bandwidth that makes up the channel. Pet. 27–29, 36–37; PO Resp. 30; Ex. 1003, 1:65–67, 6:5–8, 20:65–67, 21:30–32, 24:6–14; Ex. 1012 ¶¶ 65–68. There is some ambiguity, however, regarding whether Yamaura transmits signals outside of its narrow band during the time slots assigned to the alleged broadcast channels BCH and FCH (e.g., SC1 and SC2 as depicted in Figure 17 of Yamaura). See Ex. 1003, 21:1–43, Fig. 17. After reviewing the relevant portions of Yamaura, we determine Petitioner has not demonstrated by a preponderance of the evidence that Yamaura transmits signals only in its narrow band during the BCH and FCH time slots for the reasons discussed below.” slip op. at 13
- Expert testimonyPetitioner expert creditedOther
“Petitioner argues there are no signals other than calling signals sent during BCH and FCH because “the whole broadcast burst is part of the calling signal.” Tr. 102:17–103:2. However, upon review of the complete record and in the context of Yamaura’s entire disclosure, we credit Dr. Haas’s testimony that Yamaura’s repeated references to calling signals being specific control signals or part of the control signals indicates that Yamaura transmits other control signals during the BCH and FCH time slots. PO Resp. 30–31; Ex. 2001 ¶ 107.” slip op. at 15
Patent outcomesUS 7,787,431 not shown unpatentableClaim construction§ 103 obviousnesscites PhillipsPatents in suitUS 7,787,431 - Westerngeco LLC v. PGS Geophysical AsRehearing grantedPTAB · Feb 3, 2017 · IPR2015-00313 · APJ Justin Busch · IPR · Rehearing
On rehearing, the Board held claim 2 unpatentable as anticipated by Gallagher, modifying the final written decision; no other aspect was modified.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“On rehearing, the burden of showing the Decision should be modified lies with the party challenging the Decision. 37 C.F.R. § 42.71(d). “The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id. For the reasons that follow, Petitioner’s request for rehearing is granted. This decision on rehearing modifies our Final Written Decision only to the extent that we now hold claim 2 of the ’059 patent to be unpatentable as anticipated by Gallagher. Neither party challenges our holdings with respect to any other claims in our Final Written Decision.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“Owner, and Petitioner does not contest, that traces “have the same coordinates” when those traces populate the same bin in the “set of bins.” We agree with Petitioner, however, that the disputed limitation is tied to the assignment of coordinates, not to the organizing step, and we are unpersuaded by Patent Owner’s arguments that a trace can only populate a particular bin after “the coordinate-designated set of traces” has been organized.” slip op. at 6
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“interpreted properly (i.e., not tied to the organizing step), Gallagher teaches or suggests the disputed limitation. Req. Reh’g 5–6. We found persuasive Petitioner’s mappings of (1) Gallagher’s assignment of sections and shells in a common reference point bin to the assigning step, (2) the section-shell segments created from that assignment to the recited set of bins, and (3) Gallagher’s decimation process, which in one example leaves one trace per section-shell segment (or bin), to the organizing step. Dec. 14–19; see Pet. 45–48. In Gallagher, it is the combination of the acquisition geometry and the selection of the sections and shells that defines the coordinate-designated set of traces and the bins. Prior to Gallagher’s decimation,” slip op. at 10
Claim construction§ 102 anticipationcites PhillipsPatents in suitUS 6,026,059 - Microsoft Corporation And Microsoft Mobile, Inc. v. Global Touch Solutions, LLCAll claims unpatentablePTAB · Dec 28, 2016 · IPR2015-01928 · APJ Justin Busch · IPR · Final written decision
Claims 1, 3, and 20 are unpatentable as obvious over Jahagirdar and Schultz because their combination would have been a predictable substitution of familiar touch sensors for keys.
RulingsFinal written decision- BurdenUnpatentable
“III. CONCLUSION Based on the evidence and arguments, Petitioner has demonstrated, by a preponderance of the evidence, that claims 1, 3, and 20 of the ’494 patent are unpatentable under 35 U.S.C. § 103(a) as obvious over Jahagirdar and Schultz. IV. ORDER Accordingly, it is: ORDERED that claims 1, 3, and 20 of the ’494 patent have been shown to be unpatentable; and” slip op. at 19
- Skill levelOther
“touch sensors were not limited by size or arrangement, and a person of ordinary skill could have taken the Schultz sensors and put them into touch sensors the size of the buttons on Jahagirdar. Ex. 1017, 138:17–21, 140:2– 13. Additionally, as Dr. Morley acknowledges, the claims of the ’494 patent contain no limitations as to the physical form, internal architecture, or arrangement of the touch sensors. Id. at 172:12–173:10. Patent Owner presents no argument that the proposed combination would have been beyond the capabilities or knowledge of a person having ordinary skill in the art. As the Supreme Court has stated, “when a patent simply arranges old elements with each performing the same function it had been known to perform and yields no more than one would expect from such an arrangement, the combination is obvious.” KSR, 550 U.S. at 417 (internal quotation marks omitted). “If a person of ordinary skill can implement a predictable variation . . . § 103 likely bars its patentability.” Id. As illustrated by Schultz, the use of a touch sensor as an alternative to a mechanical push button was well known in the prior art. See Ex. 1005; Ex. 1015 ¶¶ 40–43. We agree that the combination of Jahagirdar and Schultz teaches the elements of claim 1 as arranged, and we determine the proposed combination would have been obvious, because it merely involves substitution of familiar elements, the combination of which yields predictable results. See KSR, 550 U.S. at 417. In particular, we agree that the proposed combination is the simple substitution or modification of Jahagirdar’s keys with Schultz’s known touch sensor. This is, in other words, a textbook case of obviousness. See Agrizap, Inc. v. Woodstream Corp., 520 F.3d 1337, 1344 (Fed. Cir. 2008) (“This is a textbook case of” slip op. at 11
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“As the Supreme Court has stated, “when a patent simply arranges old elements with each performing the same function it had been known to perform and yields no more than one would expect from such an arrangement, the combination is obvious.” KSR, 550 U.S. at 417 (internal quotation marks omitted). “If a person of ordinary skill can implement a predictable variation . . . § 103 likely bars its patentability.” Id. As illustrated by Schultz, the use of a touch sensor as an alternative to a mechanical push button was well known in the prior art. See Ex. 1005; Ex. 1015 ¶¶ 40–43. We agree that the combination of Jahagirdar and Schultz teaches the elements of claim 1 as arranged, and we determine the proposed combination would have been obvious, because it merely involves substitution of familiar elements, the combination of which yields predictable results. See KSR, 550 U.S. at 417. In particular, we agree that the proposed combination is the simple substitution or modification of Jahagirdar’s keys with Schultz’s known touch sensor. This is, in other words, a textbook case of obviousness. See Agrizap, Inc. v. Woodstream Corp., 520 F.3d 1337, 1344 (Fed. Cir. 2008) (“This is a textbook case of when the asserted claims involve a combination of familiar elements according to known methods that does no more than yield predictable results.”). Patent Owner does not point us to objective evidence of nonobviousness to overcome the textbook case of obviousness here.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“Notwithstanding Patent Owner’s position that the proposed combination would increase accidental actuations when grabbing or holding Jahagirdar’s mobile station, Petitioner points to Dr. Morley’s testimony that touch sensors would alleviate accidental actuation by inanimate objects (e.g., “clothes, objects in a bag, [and] surfaces of furniture”). Pet. Reply 2 (citing Ex. 1017, 157:20–158:23; Ex. 2006 ¶ 63). Accordingly, Petitioner argues a person having ordinary skill in the art looking to reduce inadvertent actuation by inanimate objects would be motivated to incorporate Schultz’s touch sensor. Id. at 2–3 (citing Ex. 1023 ¶¶ 4–5). Moreover, Petitioner’s unrebutted evidence in the record demonstrates Schultz’s touch sensor could have been integrated into Jahagirdar’s keys 144 in multiple ways, depending upon what might have been convenient or desirable. Id. at 3–4 (citing Ex. 1015 ¶ 75); Ex. 1023 ¶ 5. For example, a person of ordinary skill would have been readily able to relocate those touch sensors to different locations, or “one of skill could have easily programmed Jahagirdar’s controller such that touch sensor inputs were only recognized at appropriate times for example, depending on whether the mobile station 102 was opened or closed.” Ex. 1015 ¶ 75. In such a way, inadvertent actuation of the touch sensors would be minimized or eliminated.” slip op. at 13
Patent outcomesUS 7,265,494 unpatentableClaim construction§ 103 obviousnessPatents in suitUS 7,265,494 - Toshiba America Information Systems, Inc. / Apple Inc. v. Global Touch Solutions, LLCAll claims unpatentablePTAB · Dec 28, 2016 · IPR2015-01616 · APJ Justin Busch · IPR · Final written decision
Claims 1–3, 19, and 20 are unpatentable as obvious over Layman and Beard, with Rathmann additionally for claim 19 and APA additionally for claim 20.
RulingsFinal written decision- BurdenDecided for petitioner
“We have reviewed the Petition, Patent Owner Response, and Petitioner’s Reply, as well as the relevant evidence discussed therein. For the reasons that follow, we determine Petitioner has shown, by a preponderance of the evidence, that the challenged claims would have been obvious in view of the asserted combined teachings of the asserted references.” slip op. at 5
- Skill levelOther
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“We agree with Petitioner’s arguments, as supported by testimony from Mr. Beard, that the combination of Layman and Beard teaches or suggests the uncontested limitations recited in claim 1 as well as the additional limitations recited in dependent claims 2 and 3, and we adopt those assertions as our findings. See Pet. 35–43, 50–51. For example, Petitioner points to Layman’s power management system 28 (electronic unit) connected to an infusion pump system (product), including pump circuits 34 (load), and to power sources (both an AC power source and a battery) through an electrical circuit as meeting the preamble of claim 1. Id. at 35– 37. Petitioner argues Layman’s disclosure of processor 42 providing a control signal to turn power to pump circuits 34 on or off in response to a signal received from switch 38 meets the recited microchip that controls “the flow of power from the power source to activate the load.” Id. at 38. Petitioner contends Layman’s switch 38 is not a serial element in the power circuit because switch 38 merely sends a signal to processor 42, which controls whether the pump is powered on, and that switch 38, therefore, teaches the recited switch. Id. at 38–39. Petitioner relies on Beard for teaching a touch sensor used to activate the battery capacity display. Id. at 39–40. We find the disclosures in Rathmann and APA relied upon by Petitioner teach or suggest the additional limitations recited in claims 19 and 20, respectively, id. at 52–55, and that a person having ordinary skill in the art would have had reason to combine Rathmann’s asserted teachings as proposed, id. at 30–34. We discuss the disputed limitations of independent claim 1 and the rationale for combining the asserted teachings from Layman and Beard in more detail below.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“All of Patent Owner’s challenges to Petitioner’s rationale assume the proposed combination replaces Layman’s battery with the battery disclosed in Beard. See, e.g., PO Resp. 8 (“While the Petition suggests replacing Layman’s battery with that of Beard would be desirable . . . .”) Petitioner does not suggest such a replacement. Rather, Petitioner asserts “[a] POSITA would have been especially motivated to combine Layman with Beard’s power-saving touch switch activated display in light of Layman’s stated desire for features that extend battery life and increase the time between battery replacements.” Pet. 28 (emphasis added). Petitioner reiterated its position, asserting that Patent Owner’s arguments do “not address Petitioner’s motivation arguments,” which are no “more than an obvious substitution of elements that were well known in the prior art.” Pet. Reply 2. Petitioner merely proposes incorporating Beard’s teaching of a touch switch activated display into Layman’s system. Pet. Reply 7 (arguing “the Petition analyzed whether one of ordinary skill would have found it obvious to incorporate a touch-sensor activated display such as in Beard into Layman’s system”). As discussed above, Petitioner has presented reasons with rational underpinning as to why a person having ordinary skill in the art would look to integrate Beard’s touch sensor activated display with Layman. We find Petitioner’s arguments persuasive, and we adopt those reasons as the rationale for combining the cited teachings of Beard with the cited teachings of Layman.” slip op. at 12
Patent outcomesUS 7,265,494 unpatentableClaim construction§ 103 obviousnesscites KSRPatents in suitUS 7,265,494 - Westerngeco, L.L.C. v. PGS Geophysical AsSome claims unpatentablePTAB · Jun 8, 2016 · IPR2015-00310 · APJ Justin Busch · IPR · Final written decision
Claims 23, 24, and 30 are unpatentable as anticipated by de Kok; claims 23, 24, 28, and 29 are unpatentable as obvious over Beasley and Edington.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“We agree with Patent Owner that the “indexed” limitation requires more than merely “selecting” times. Petitioner offers no explanation how Dr. Ikelle’s testimony that “indexed” should be construed broadly to mean “selected,” Ex. 2002, 184:8–11, would be consistent with the rest of the limitation that requires enabling separate identification of events originating from different sources. Patent Owner’s proposed construction, however, is unduly narrow to the extent it requires recording. As explained in the passage cited by Patent Owner, recording the signal and indexing are two separate aspects of the process involved in the ’981 patent. Ex. 1001, 5:62–67 (“A recording is made of the signal . . . that is indexed to a known time reference with respect to time of firing of the first source) (emphases added). The ’981 patent demonstrates that the term “indexed” is used in the “indexed” limitation according to one of its ordinary meanings that one thing is arranged in reference to another. Id.; see also id. at 6:66–7:1 (“[A] time of firing of each source with respect to a time index” is shown in Figure 4.), 8:33–40 (“[W]hen time is indexed with respect to the firing time of source A,” source B events are not coherent between firing sequences.).” slip op. at 7
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Owner’s distinctions between what de Kok discloses and what claim 23 recites are inapposite. We are persuaded by Petitioner’s arguments, which Patent Owner does not contest, that de Kok’s firing times for each source are indexed (as we have construed the “indexed” limitation) to the reference time in a way that allows the shot records to be separated into source records. Because de Kok discloses both indexing and enabling separate identification of seismic events originating from each source, de Kok discloses the “indexed” limitation as we have construed it.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“unpersuaded. Petitioner’s challenge relies on Edington for its teaching that time-delays can be used to encode and decode signals. Based on the arguments and evidence presented during trial, we are persuaded by Petitioner that a person having ordinary skill would have used time-aligning signals, as taught by Edington, as a type of decoding without needing to take multiple shots from the same source. Accordingly, a person having ordinary skill would have been able to decode a signal for a given encoding scheme, and we find Patent Owner’s assertion that an ordinarily skilled artisan would “lack[] an effective decoding scheme” unpersuasive.” slip op. at 21
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“Beasley clearly states that “no time shift” results in “no spatial reflection-point smearing.” Ex. 1004, 7:61–62. Both parties agree that some amount of spatial reflection point smearing would result from using Edington’s time delay encoding with Beasley’s seismic surveying system. See Tr. 28:3–8, 38:14–15 (counsel for Patent Owner stating that “frankly, any time you have a time delay at all, there is spatial reflection point smearing”). However, neither party pointed us to evidence explaining the relationship between the amount of delay and the amount of smearing, or how much smearing would be tolerated in marine seismic surveying. One consequence of the lack of evidence on this point is that it is unclear whether Beasley is stating that simultaneous activation versus sequential activation avoids smearing or if simultaneous activation versus near-simultaneous activation avoids smearing. Beasley’s disclosure regarding the benefit of eliminating smearing immediately follows the discussion that distinguishes between sequential and concurrent source activation. Based on the record before us, we find Beasley indicates that simultaneous (or near-simultaneous) activation of sources avoids the smearing that otherwise results when activating the sources sequentially. Ex. 1004, 7:52–63. Furthermore, Patent Owner has not argued, and we do not find, that claim 23 should be construed to exclude any amount of spatial reflection point smearing.10 The parties have pointed to no evidence or argument explaining sufficiently why the level of smearing resulting from Petitioner’s proposed combination of Beasley and Edington would be unacceptable, but the level of smearing resulting from the time delay encoding recited in the ’981 patent would be acceptable. Therefore, to the extent that incorporating Edington’s time delay encoding into Beasley’s system generates reflection point smearing, the evidence does not support a finding that claim 23 excludes any amount of smearing. Based on the record before us, we are not 10 When asked whether the subject matter of the ’981 patent suffered from spatial reflection point smearing because of its use of time delays, counsel for Patent Owner stated “I do think it suffers it to some degree.” Tr. 41:14– 15. persuaded the smearing allegedly introduced by combining Edington’s time delay encoding with Beasley’s system would have led an ordinarily skilled artisan away from that combination.” slip op. at 25
Patent outcomesUS 6,906,981 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites GrahamPatents in suitUS 6,906,981 - Westerngeco, L.L.C. v. PGS Geophysical AsSome claims unpatentablePTAB · Jun 8, 2016 · IPR2015-00309 · APJ Justin Busch · IPR · Final written decision
Claims 1, 2, 6, 7, 10, 11, 16, 17, 21, and 22 are unpatentable; claims 3–5 are not shown unpatentable, and challenges to claims 18–20 are dismissed.
RulingsFinal written decision- BurdenMixed
“Decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73. For the reasons that follow, we determine that Petitioner has shown, by a preponderance of the evidence, that claims 1, 2, 6, 7, 10, 11, 16, 17, 21, and 22 are unpatentable, but has failed to do so for claims 3–5 and 12–15. We dismiss the Petition with respect to the challenges asserted against claims 18–20.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“more than merely “selecting” times. Petitioner offers no explanation how Dr. Ikelle’s testimony that “indexed” should be construed broadly to mean “selected,” Ex. 2002, 184:8–11, would be consistent with the rest of the limitation that requires enabling separate identification of events originating from different sources. Patent Owner’s proposed construction, however, is unduly narrow to the extent it requires recording. As explained in the passage cited by Patent Owner, recording the signal and indexing are two separate aspects of the process involved in the ’981 patent. Ex. 1001, 5:62–67 (“A recording is made of the signal . . . that is indexed to a known time reference with respect to time of firing of the first source) (emphases added). The ’981 patent demonstrates that the term “indexed” is used in the “indexed” limitation according to one of its ordinary meanings that one thing is arranged in reference to another. Id.; see also id. at 6:66–7:1 (“[A] time of firing of each source with respect to a time index” is shown in Figure 4.), 8:33–40 (“[W]hen time is indexed with respect to the firing time of source A,” source B events are not coherent between firing sequences.).” slip op. at 9
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed
“Although a prior art reference may anticipate when the claim limitations not expressly found in that reference are inherent in it, inherency requires that “the prior art necessarily functions in accordance with, or includes, the claimed limitations, it anticipates.” In re Cruciferous Sprout Litig., 301 F.3d 1343, 1349 (Fed. Cir. 2002). Here, Petitioner’s arguments and evidence fail to persuade us that de Kok disclosure of suppressing random noise inherently includes determining trace to trace coherence. Merely demonstrating a step may be done is not sufficient to show that step is inherently anticipated. Accordingly, based on the arguments and evidence submitted, we find Petitioner has failed to demonstrate, by a preponderance of the evidence, that de Kok anticipates claims 12 and 17. Similarly, because claims 13–15 ultimately depend from claim 12, we find Petitioner has failed to demonstrate, by a preponderance of the evidence, that de Kok anticipates claims 13–15.” slip op. at 19
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“The relevant passages cited by both parties demonstrate that Beasley distinguishes between alternating and concurrent firings. See, e.g., Ex. 1004, 7:52–63. Although Herkenhoff states that the concurrent disclosure in Beasley means “exactly concurrently,” Patent Owner has not pointed to any clear disclosure in Beasley itself indicating “concurrently” should be understood as excluding any amount of time delay. Petitioner, however, has pointed to multiple references where Beasley explains that sources may be fired “simultaneously or nearly simultaneously.” Pet. Reply 15 (citing Ex. 1004, 8:46–47); Pet. 47 (quoting Ex. 1004, 1:19–25 (“The present invention, in certain aspects, is directed to seismic survey systems and methods in which two or more seismic sources are fired simultaneously, or significantly close together temporally . . . .”)); see also Ex. 1004, 1:47–51, 8:44–47, 9:5–10, 12:26–29. Moreover, claim 1 of the ’655 patent, which Patent Owner asserts claims the “first embodiment” of the ’981 patent, recites a method including the step of “substantially simultaneously launching a first acoustic wavefield,” from the leading source, “the first wavefield being characterized by a first unique code and launching a second acoustic wavefield” from the trailing source, “the second acoustic wavefield being characterized by a second unique code.” Ex. 2009, 6:46–53. Accordingly, Beasley does not exclude time delay encoding from its disclosed “concurrent” activation embodiments.” slip op. at 27
Patent outcomesUS 6,906,981 mixedClaim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites GrahamPatents in suitUS 6,906,981 - Westerngeco, L.L.C. v. PGS Geophysical AsSome claims unpatentablePTAB · Jun 8, 2016 · IPR2015-00311 · APJ Justin Busch · IPR · Final written decision
Claims 31, 32, and 35–37 are unpatentable as obvious over Beasley and Edington; the Board did not find claims 31–34 and 36–38 anticipated by de Kok or claims 33–34 obvious.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner initially argued for a specific construction of “wavelet time” as “the duration of the source signature.” Pet. 14–15. For purposes of the Decision on Institution, we preliminarily construed wavelet time consistent with Petitioner’s proposed construction. Dec. on Inst. 14–15. Now, with the full record before us, we determine an explicit construction of “wavelet time” is not necessary to resolve this controversy. Petitioner does not clearly set forth a proposed construction for any other term in its Petition. Patent Owner argues for specific constructions of “quasi-randomly” and “randomly.” PO Resp. 15–19. The constructions of “quasi-randomly” and “randomly” are not in dispute, and an explicit construction is not necessary to resolve the controversy; accordingly, we do not provide an explicit construction of “quasi-randomly” or “randomly.” Therefore, we determine there is no need to construe explicitly any term for purposes of this decision.” slip op. at 6
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“We agree with Patent Owner that de Kok’s polarity encoding and decoding process does not disclose the “time aligning” step. As Patent Owner argues, de Kok describes a polarity encoding and decoding system that does not align the “recorded signals with respect to a firing time of the second source in each firing sequence.” Specifically, de Kok explains that it uses activation sequences and polarity to generate signals, from which “source records may be derived” “using a combination of shot record summations, inversions and filtering.” Ex. 1003, 2:51–53; see also id. at 4:55–5:4, 5:55–65. To the extent de Kok discusses time delay encoding, any arguable time alignment applies to the firing of the sources, not the recorded signals. Id. at 5:66–6:2, 6:41–52. Accordingly, Petitioner has not pointed to persuasive evidence that de Kok’s polarity encoding and decoding discloses the “time-aligning” step.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“The relevant passages cited by both parties demonstrate that Beasley distinguishes between alternating and concurrent firings. See, e.g., Ex. 1004, 7:52–63. Although Herkenhoff states that the concurrent disclosure in Beasley means “exactly concurrently,” Patent Owner has not pointed to any clear disclosure in Beasley itself indicating “concurrently” should be understood as excluding any amount of time delay. Petitioner, however, has pointed to multiple references where Beasley explains that sources may be fired “simultaneously or nearly simultaneously.” Pet. Reply 12 (citing Ex. 1004, 8:46–47); Pet. 38 (quoting Ex. 1004, 1:19–25 (“The present invention, in certain aspects, is directed to seismic survey systems and methods in which two or more seismic sources are fired simultaneously, or significantly close together temporally . . . .”)); see also Ex. 1004, 1:47–51, 8:44–47, 9:5–10, 12:26–29. Moreover, claim 1 of the ’655 patent, which Patent Owner asserts claims the “first embodiment” of the ’981 patent, recites a method including the step of “substantially simultaneously launching a first acoustic wavefield,” from the leading source, “the first wavefield being characterized by a first unique code and launching a second acoustic wavefield” from the trailing source, “the second acoustic wavefield being characterized by a second unique code.” Ex. 2009, 6:46–53. Accordingly, Beasley does not exclude time delay encoding from its disclosed “concurrent” activation embodiments. Patent Owner’s argument that time delay encoding results in a plain wavefield rather than an encoded wavefield and, therefore, using time delay encoding would not fall within Beasley’s “any type of coding,” is similarly unpersuasive. Patent Owner fails to address that Beasley distinguishes between “a signal with no encoded feature, individual identifier, tag, discriminating feature, or separate signature” and “signals that can be discriminated from each other due to some identifying characteristic, parameter, signature or feature.” Ex. 1004, 9:67–10:8 (emphasis added). Accordingly, the evidence supports Petitioner’s contention that time delay encoding generates signals with an identifying parameter or characteristic (the timing) that would allow the signals to “be discriminated from each other.” Pet. Reply 11–12. Furthermore, Dr. Lynn acknowledged that “Edington’s time delay source coding is ‘a type of source signature encoding.’” Id. (quoting Ex. 1022, 148:18–23).” slip op. at 17
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“nonobviousness. PO Resp. 55–60. The factual inquiries for obviousness include secondary considerations based on evaluation and crediting of objective evidence. Graham v. John Deere Co., 383 U.S. 1, 17 (1966). However, to accord substantial weight to objective evidence requires the finding of a nexus between the evidence and the merits of the claimed invention. In re GPAC Inc., 57 F.3d 1573, 1580 (Fed. Cir. 1995). “Nexus” is a legally and factually sufficient connection between the objective evidence and the claimed invention, such that the objective evidence should be considered in determining nonobviousness. Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387, 1392 (Fed. Cir. 1988). The burden of showing that a nexus exists lies with the patent owner. Id.; see In re Paulsen, 30 F.3d 1475, 1482 (Fed. Cir. 1994). Patent Owner points to various prior attempts (including Edington, Beasley, and de Kok) to conduct simultaneous shootings in a marine environment and the failings of each of them. Id. at 43–44. Patent Owner also points to various published papers allegedly “investigat[ing] data processing techniques for use with data sets modeled on [the ’981 patent]’s varied time delays” and field trials and studies allegedly using the ’981 patent’s “time-delay acquisition and indexing methods.” Id. at 44–48. Petitioner argues Patent Owner has shown no nexus between Patent Owner’s proffered secondary considerations and the invention of the ’981 patent. Pet. Reply 20–22. Petitioner contends Patent Owner’s focus on the varied time delays of claim 31 is insufficient because time delayed encoding “existed long before the ’981 patent.” Id. We agree with Petitioner that Patent Owner has not demonstrated sufficiently a nexus between the secondary considerations and the alleged novelty of claim 31. First, as Petitioner points out, and as borne out by the evidence in this case, time delay encoding for seismic surveying existed prior to the ’981 patent. E.g., Exs. 1006, 1021. Second, the majority of the evidence cited by Patent Owner focuses on the randomness of the time delays, not just the use of time delays generally. Consequently, Patent Owner has not presented persuasive evidence or analysis linking the claims at issue with the alleged “long-felt but unmet need, industry praise, and copying.” See PO Resp. 55.” slip op. at 20
Patent outcomesUS 6,906,981 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites GrahamPatents in suitUS 6,906,981 - Westerngeco LLC v. PGS Geophysical AsSome claims unpatentablePTAB · Jun 3, 2016 · IPR2015-00313 · APJ Beverly M Bunting · IPR · Final written decision
Claims 1, 4, 10, and 11 are unpatentable: claims 1, 4, and 10 as anticipated by Gallagher, and claim 11 as obvious over Gallagher and Frasier; claims 2, 3, and 5 were not shown unpatentable.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionDecided for patent owner
“Id. at 3:59–65. Additionally, the specification describes how, in this embodiment, “a plurality of the coordinate-designated set of traces have the same coordinates . . . the acquisition geometry resulted in two traces populating each common-inline/common-crossline bin.” Id. at 3:66–4:3. In an alternative embodiment, “there will be a unique set of coordinates per trace (i.e. a single trace per coordinate bin).” Id. at 4:5–7. Thus, based on the specification of the ’059 patent, we credit the testimony of Dr. Lynn that one of skill in the art would understand the “set of bins having a regularized number of traces” into which the coordinate-designated set of traces is organized are “common-offset bins.”4 Ex. 2037 ¶¶ 57–65, 111–113.” slip op. at 10
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed
“As discussed supra, we determined that the correct interpretation of the claim term “set of bins” is “a set of common offset bins within a common reference point bin.” Patent Owner’s arguments directed to “posthoc bins” are not persuasive because the claims do not limit the bins to “pre” or “post” hoc bins. Thus, in view of the correct construction of the claim term “set of bins,” we are persuaded by Petitioner’s arguments that Gallagher discloses a “set of bins.” Specifically, Petitioner explains how the section shells group the sources based on their azimuth and offset from the CMP (Reply 10–11), and that the sub-squares represent common offset bins (Id. at 11–12). Additionally, Petitioner argues persuasively that the single-trace bin satisfies the claim limitation “a set of bins” as we have construed this term, because “[e]ach trace within the sub-bins or sections of Gallagher is necessarily common [to itself] with respect to offset and even azimuth.” Reply 13. In considering the record in its entirety, Petitioner has presented persuasive evidence to support a finding that Gallagher describes the “organizing” step recited in independent claim 1.” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“We are not persuaded by Patent Owner’s argument that the disclosure in Gallagher teaches away from the recited method. Patent Owner has not shown, nor can we find, that Gallagher criticizes, discredits, or otherwise discourages the use of a common reflection point instead of a common reference point. A reference teaches away from a claimed invention if it “criticizes, discredits, or otherwise discourages” modifying the reference to arrive at the claimed invention. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). We will not, however, “read into a reference a teaching away from a process where no such language exists.” DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1364 (Fed. Cir. 2006).” slip op. at 26
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“The Supreme Court has held that an obviousness evaluation “cannot be confined by a formalistic conception of the words teaching, suggestion, and motivation, or by overemphasis on the importance of published articles and the explicit content of issued patents.” KSR, 550 U.S. at 419. Instead, the relevant inquiry here is whether Petitioner has set forth “some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), cited with approval in KSR, 550 U.S. at 418. Patent Owner does not proffer persuasive arguments or evidence that Petitioner’s proposed modification of the system of Gallagher using the teachings of Frasier regarding common reflection point would not have been obvious to one of skill in the art. We have considered Patent Owner’s arguments; however, we are persuaded that Petitioner has provided an articulated reasoning with rational underpinning to support the legal conclusion of obviousness. See KSR, 550 U.S. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).” slip op. at 26
Patent outcomesUS 6,026,059 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,026,059 - Cisco Systems, Inc. v. Aip Acquisition LLCAll claims unpatentablePTAB · May 18, 2016 · IPR2015-00307 · APJ Justin Busch · IPR · Final written decision
Claims 1–29, except claims 10 and 25, are unpatentable under § 103 over Weinstein and RFC1190, with Gurrie or ISI added for the dependent claims.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer not foundDecided for petitioner
“recited term, Petitioner is correct that disclaimer requires a clear disavowal of that allegedly ceded scope. Purdue Pharma L.P. v. Endo Pharm. Inc., 438 F.3d 1123, 1136 (Fed. Cir. 2006) (“a patentee may limit the meaning of a claim term by making a clear and unmistakable disavowal of scope during prosecution”); cf. Computer Docking Station Corp. v. Dell, Inc., 519 F.3d 1366, 1375 (Fed. Cir. 2008) (“Prosecution disclaimer does not apply to an ambiguous disavowal.”). At oral argument, Patent Owner acknowledged that “if you just had the deletion of the article ‘an,’ it may – may or may not leave some confusion,” but asserted the arguments submitted with the amendments “made clear . . . that either the lower case I, lower case P or the upper case I, lower case p internet protocol/Internet protocol” refer to the “Internet Protocol,” which is a part of “TCP/IP.” Tr. 32:1–18. Patent Owner further conceded that the patent applicant did not explicitly articulate that the claim terms “internet protocol” and “Internet protocol” referred to the specific protocol that was the industry standard “Internet Protocol.” Id. at 35:14–17. In response to questions about patent applicant’s statements accompanying the subject amendments that the claims comprise or include TCP/IP, which indicate a broader scope not limited to only TCP/IP, Patent Owner argues that an ordinarily skilled artisan would have looked at the specification and seen that the only protocol the specification mentions is TCP/IP. Id. at 32:22–33:6. Based on the facts and argument presented, there is not sufficient evidence to find a clear and unmistakable disavowal of claim scope. The only amendment to the claims pointed to by Patent Owner is the removal of the article “an,” which originally preceded each of the disputed phrases. Notably, the patent applicant did not elect to amend the claims to recite “the Internet Protocol.” With respect to the patent applicant’s argument in its responses to office actions, we agree with Petitioner that the phrasing appears to merely restate the language recited in the claims. We find nothing presented by Patent Owner clearly indicates the patent applicant intended to disavow any scope covered by the plain and ordinary meaning of the recited terms. Patent Owner has not pointed to any discussion by the patent applicant that “internet protocol” or “Internet protocol” was intended to be limited to one particular protocol (specifically the “Internet Protocol” that is part of TCP/IP). Accordingly, we find Patent Owner failed to demonstrate that the patent applicant disavowed any scope within the” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“The extrinsic evidence of record indicates that the Internet is one example of internetworking and Internet Protocol is one specific “internet protocol.” Ex. 2009, 10; Ex. 1001, 7:34–39. Accordingly, we construe internet protocol to be “a specific set of rules, procedures, or conventions relating to the format and timing of data transmission between two devices on different networks.” Neither side has pointed to persuasive evidence that the patent applicant’s use of different capitalization in different claims was merely oversight or error. Therefore, because there is a meaningful and logical way to distinguish the constructions of “internet protocol” and “Internet protocol” based on the selected capitalization of each phrase, we construe “internet protocol” and “Internet protocol” differently from each other. We have already discussed our construction of “internet protocol.” Accordingly, we construe “Internet protocol” to be “a specific set of rules, procedures, or conventions relating to the format and timing of data transmission between two devices over the Internet.” Our constructions of both “Internet protocol” and “internet protocol” include the Internet Protocol that is part of TCP/IP and, thus, are consistent with the specification of the ’247 patent. Moreover, those constructions are the ordinary and customary meaning that a person having ordinary skill in the art would have attributed to the disputed claim terms, in part because that person would have understood that “internet protocol,” “Internet protocol,” and “the Internet Protocol” are distinct phrases of increasingly narrow scope.” slip op. at 15
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“preliminary construction provided in the Decision to Institute. Tr. 36:13–17. Our construction now is the same as our preliminary construction. Accordingly, after reviewing Petitioner’s arguments and in consideration of Patent Owner’s acknowledgment that ST-II is an internet protocol, as we have construed it, we find ST-II meets both the recited “internet protocol” and “Internet protocol.” We further find that “internet protocol” and “Internet protocol,” as we have construed them, also read on Weinstein’s ST protocol. Moreover, even under Patent Owner’s proposed construction, we find Petitioner has demonstrated that the combination of Weinstein and RFC1190 teaches using the Internet Protocol of TCP/IP at least because discloses encapsulating ST-II in IP packets. Petitioner argues Weinstein discloses converting a signal from any one of a digital telephone network, an analog telephone network, and a cellular network to ST format, which is then transmitted over ARPANET and a wide-band satellite network. Id. at 22–29. Petitioner asserts that a person of ordinary skill in the art would have understood ARPANET and the wide-band satellite network to constitute a portion of the Internet. Id. at 16, 17 (citing Ex. 1008, 14–16; Ex. 1019, 57). Thus, Petitioner asserts Weinstein teaches “sending the converted transmission through . . . the Internet,” as recited in claim 1 and “a telecommunication node configured for . . . transmitting the converted transmission through the Internet,” as recited in claim 16. Id. at 16, 17, 42. Patent Owner asserts RFC1190’s disclosure of encapsulating ST-II in IP packets does not meet the recited conversion of voice packets into internet protocol or Internet protocol. PO Resp. 30–31. Notably, however, Petitioner does not argue the encapsulation alone meets the recited conversion. Rather, Petitioner argues conversion from various telecommunications transmissions into a packetized format and optional encapsulation in IP packets meets the recited conversion. Pet. 26–29; Pet. Reply 9–11. We agree with Petitioner that, under our construction of “internet protocol” and “Internet protocol,” the conversion from the various voice protocols to ST meets the recited conversion. Moreover, even under Patent Owner’s proposed constructions of “internet protocol” and “Internet protocol,” the steps in Petitioner’s proposed Weinstein-RFC1190 combination of converting the voice protocols to ST-II and encapsulating those packets into IP packets meets the recited conversion because the proposed combination converts voice transmissions from various telecommunication protocols to Internet Protocol (of TCP/IP) packets, using the two-step process of generating ST packets and encapsulating those packets in IP packets. Ex. 1010, 4; Ex. 1011, 7, 64.” slip op. at 23
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“would have lacked motivation to combine ST-II with the Internet Protocol, that argument fails at least because the use of ST-II over IP is described within a single reference, RFC1190. Thus, no combination of references is required to provide the teaching of using ST-II over IP, and, accordingly, any argument against combining ST-II with the Internet Protocol is unfounded. Moreover, Petitioner’s various references describing implementations of using ST-II over the Internet to transmit voice provide evidence in favor of a finding that it would have been obvious to transmit voice over the Internet using ST protocol. That leaves, at most, an argument by Patent Owner that an ordinarily skilled artisan would not have combined Weinstein’s asserted teachings (i.e., converting a voice transmission from a telecommunication protocol to ST, transmitting the ST packets over a data network, and converting the voice transmission back to a telecommunication protocol) with RFC1190’s asserted teaching (using the ST-II protocol, either alone or encapsulated in IP packets, to transmit packets across a data network). As discussed above, Petitioner has submitted evidence that internet engineers near the time of invention of the ’247 patent were implementing and considering implementing ST-II in various systems for voice communication across the Internet. Ex. 1023, 1–4; Ex. 1031, 20–21; Ex. 1032, 20–21. Moreover, RFC1190 clearly indicates that ST-II is a revised version of ST, notwithstanding ST-II’s lack of backward compatibility with the original ST protocol. Ex. 1011, 1; see Pet. 17. Petitioner also argues an ordinarily skilled artisan would have been motivated to upgrade Weinstein’s ST with RFC1190’s ST-II because RFC1190 identifies various improvements and benefits of ST-II over ST. Pet. 18–19 (citing Ex. 1011, 1, 8). Petitioner asserts combining RFC1190 with Weinstein is merely the application of a known technique to a known system yielding predictable results. Id. at 19. We are persuaded by Petitioner’s arguments that an ordinarily skilled artisan would have considered upgrading ST to ST-II, the version available at the time of invention of the ’247 patent. The fact that ARPANET no longer existed at the time of invention of the ’247 patent does not render all of Weinstein’s teachings unavailable to the hypothetical person of ordinary skill in the art. One would not have needed to “resurrect” the defunct ARPANET to take advantage of Weinstein’s teachings regarding combining voice networks with data networks. Rather, one would have gleaned the knowledge necessary to create a system using a data network to transport voice communication as a bridge between conventional telephony networks. We also agree with Petitioner that the submitted evidence regarding other systems adopting ST-II supports a conclusion that a person having ordinary skill would have been capable of making any hardware changes required to implement ST-II.” slip op. at 28
Patent outcomesUS 7,269,247 unpatentableClaim construction§ 103 obviousnesscites PhillipsPatents in suitUS 7,269,247
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.