• Cradlepoint, Inc. / Honeywell International, Inc. et al. v. 3g Licensing SAAll claims unpatentable
  PTAB · Sep 15, 2022 · IPR2021-00639 · APJ Juliet Mitchell Dirba · IPR · Final written decision

  Claims 1–25 are unpatentable as obvious; the Board denied the motion to amend because proposed substitute claims 26–50 would have been obvious over Oksala or Oksala and Yoshioka.

  RulingsFinal written decision

  • Skill levelSkill level board ownOther

    “B. The Level of Ordinary Skill in the Art Our reviewing court has explained that “the level of skill in the art is a prism or lens through which a judge, jury, or the Board views the prior art and the claimed invention.” Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (citing Al-Site Corp. v. VSI International, Inc., 174 F.3d 1308, 1324 (Fed. Cir. 1999)). “This reference point prevents these factfinders from using their own insight or, worse yet, hindsight, to gauge obviousness.” Id.” slip op. at 10

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable

    “e. Conclusion For the reasons provided above, we are persuaded that each limitation of independent claim 1 is either taught or suggested by Oksala. We are also persuaded that Oksala’s disclosure would have motivated a person of ordinary skill in the art to modify Oksala, as Petitioner contends, to yield the subject matter of claim 1. Accordingly, we conclude that Petitioner has shown, by a preponderance of the evidence, that the subject matter of claim 1 would have been obvious over Oksala.” slip op. at 52

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

    “Accordingly, we determine that Petitioner has shown, by a preponderance of the evidence, that the subject matter of proposed substitute claims 35 and 43 would have been obvious over Oksala.” slip op. at 78

  • Disclosure Requirements (§112) › Definiteness (Nautilus)IndefiniteNot shown unpatentable

    “2. Indefiniteness In its Opposition, Petitioner contends the limitations “wherein each established data connection is a packet-switched connection; and wherein each requested data connection is a packet-switched connection,” as recited in substitute claim 26, and similarly recited in substitute claims 35 and 43, render the proposed substitute claims indefinite. MTA Opp. 12 (emphases added). First, according to Petitioner, the term “packet-switched connection” does not have a claim construction, which means that it can refer to two different types of packet-switched data (i.e., Layer 1 and packet network). Id. at 12. Second, Petitioner contends that there are two recitations of “a packet-switched connection,” making it “unclear if they are the same packet-switched connection or a different one.” Id. at 12–13. Third, Petitioner contends that the claims include “another antecedent issue” because “a wireless network” appears twice in the claim. Id. at 13.” slip op. at 81

  Patent outcomesUS 8,189,611 unpatentable
  § 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham
  Patents in suitUS 8,189,611
• Cradlepoint, Inc. / Honeywell International, Inc. et al. v. 3g Licensing S.A.All claims unpatentable
  PTAB · Sep 12, 2022 · IPR2021-00584 · APJ Monica S Ullagaddi · IPR · Final written decision

  Claims 16–19, 21, 22, 39, 40, and 42 are unpatentable under § 103: Meeting45 anticipates claims 16–19, 21, 22, and 39, and Meeting45 with Meeting45bis renders claims 40 and 42 obvious.

  RulingsFinal written decision

  • Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner

    “In order to obtain the benefit of the filing date of an earlier application, 35 U.S.C. § 120 requires that the earlier application include a disclosure that complies with the written description requirement of 35 U.S.C. § 112. Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1571–2 (Fed. Cir. 1997). To comply with the written description requirement, a specification “must describe the invention sufficiently to convey to a person of skill in the art that the patentee had possession of the claimed invention at the time of the application, i.e., that the patentee invented what is claimed.” Lizardtech, Inc. v. Earth Res. Mapping, Inc., 424 F.3d 1336, 1345 (Fed. Cir. 2005) (emphasis added). The written description requirement “guards against the inventor’s overreaching by insisting that he recount his invention in such detail that his future claims can be determined to be encompassed within his original creation.” Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1561 (Fed. Cir. 1991). “[O]ne skilled in the art, reading the original disclosure, must immediately discern the limitation at issue in the claims.” Purdue Pharma L.P. v. Faulding Inc., 230 F.3d 1320, 1323 (Fed. Cir. 2000) (emphasis added). “Entitlement to a filing date extends only to the subject matter that is disclosed; not to that which is obvious . . . Therefore the parent application must actually or inherently disclose the elements of the later-” slip op. at 23

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Disclaimer not foundDecided for petitioner

    “We are not persuaded that the disclosures of the ’625 patent cited by Patent Owner “‘clearly set forth a definition of the disputed claim term’ other than its plain and ordinary meaning.” See Thorner v. Sony Comput. Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002)). “We depart from the plain and ordinary meaning of claim terms based on the specification in only two instances: lexicography and disavowal.” Hill-Rom Servs., Inc. v. Stryker Corp., 755 F.3d 1367, 1371 (Fed. Cir. 2014) (citing Thorner, 669 F.3d at 1365). “‘To act as its own lexicographer, a patentee must clearly set forth a definition of the disputed claim term other than its plain and ordinary meaning’ and must ‘clearly express an intent to redefine the term.’” Id. (quoting Thorner, 669 F.3d at 1365). “Disavowal requires that ‘the specification [or prosecution history] make[] clear that the invention does not include a particular feature,’ or is clearly limited to a particular form of the invention.” Id. at 1372 (alterations in original) (internal citations omitted).” slip op. at 15

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

    “We determine that the usage and description of the term E-AGCH in documents accompanying the 3GPP TS 25.211 v6.2.0 (2004-09) standard along with at least one later version––3GPP TS 25.211 v6.7.0 cited by Patent Owner in its infringement complaint (see, e.g., Ex. 1017, 3)––are consistent and that E-AGCH would have been known and understood by a POSITA to carry the meaning set forth therein as of the filing date of the application underlying the ’625 patent, March 31, 2005.10 We further conclude that one of skill in the art would have understood that the patentee used that term in the ’625 patent in accordance with the 3GPP’s definition.” slip op. at 14

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner

    “accessibility with respect to any of the cited references. See generally PO Resp. 17–18. For the reasons that follow, we find that Petitioner’s showing sufficiently demonstrates public availability and accessibility for Meeting45, Meeting39, and Meeting45bis prior to March 31, 2005. 1. Meeting45 Petitioner asserts that Meeting45 (Ex. 1004) “is a 3GPP change request document that was publicly available on the 3GPP FTP server no later than December 3, 2004.” Pet. 18 (citing Ex. 1021 ¶¶ 64, 77). In support of this assertion, Petitioner cites the Bishop Declaration, in which Mr. Bishop describes in detail how he searched for and found the Meeting45 document by navigating the 3GPP FTP website. Ex. 1021 ¶¶ 54–63. Based on this process, Mr. Bishop testifies that “by December 3, 2004, an interested POSITA using reasonable diligence could have located Meeting45 on the 3GPP website, downloaded the reference without providing any credentials, and disseminated the reference to others without restriction.” Id. ¶ 64. We have reviewed the relevant portions of Mr. Bishop’s Declaration and are persuaded that his testimony sufficiently demonstrates that Meeting45 was publicly available and accessible prior to March 31, 2005 (the earliest priority date to which the ’625 patent is entitled). See id. ¶¶ 54– 63; see also id. ¶¶ 55–57 (testimony as to availability and accessibility of attachment distributed via email and stored on an email list archive).” slip op. at 27

  Patent outcomesUS 7,551,625 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham
  Patents in suitUS 7,551,625
• Palo Alto Networks, Inc. v. Centripetal Networks, Inc.Institution denied
  PTAB · Feb 22, 2022 · PGR2021-00108 · APJ Aaron W Moore · PGR · Institution

  Institution was denied because the petition did not show a reasonable likelihood that claims 1–20 were unpatentable, including because the asserted combination did not link rule generation to the packet correlation.

  RulingsInstitution decision

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

    “Obviousness Analysis A claim is unpatentable 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. See 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, primarily: (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) objective evidence of nonobviousness. Graham, 383 U.S. at 17–18.6 Petitioner asserts that claims 1–2, 7–8, 10, 12–13, and 17–18 are unpatentable under § 103 as obvious in view of Paxton and Sutton. See Pet. 6, 18–64. For the reasons described below, we are not persuaded by Petitioner’s argument and evidence.” slip op. at 14

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner asserts that a person of ordinary skill in the art “had a bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field, and approximately 2-3 years of experience in the design or development of telecommunication systems, or the equivalent” and that “[a]dditional graduate education could substitute for professional experience, or significant experience in the field could substitute for formal education.” Pet. 13–15 (citing Ex. 1003 ¶¶ 18–20). Patent Owner does not address this issue in the Preliminary Response. As Patent Owner does not dispute Petitioner’s characterization of the level of skill in the art, and because we find it generally consistent with the disclosures of the ’797 patent and the prior art, we adopt it for purposes of this analysis. C.” slip op. at 9

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

    “Patent Owner argues that “[t]he plain and ordinary meaning of the terms “determining . . . a first plurality of log entries” and “determining . . . a second plurality of log entries” is “identifying” or “ascertaining” log entries.” Prelim. Resp. 16. Patent Owner also argues that “[t]he terms “provisioning, . . . based on the determined correlation, . . . rules configured to identify the first plurality of packets received by the network device,” and “provisioning, . . . based on the determined correlation, . . . rules configured to identify the second plurality of packets transmitted by the network device” (“provisioning rules”) . . . should be given their plain and ordinary meaning—rules configured to identify packets.” Prelim. Resp. 20. Neither party, however, argues that the prior art arguments presented in the Petition turn on the construction of these terms. Instead, it appears that they are raised as claim construction issues only because Petitioner is challenging the language under Section 112. We will discuss the Section 112 arguments below, but do not see a dispute about the constructions offered by the parties above the makes a difference in the prior art analysis and, therefore, do not construe these terms at this time. See 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

    “respect to this limitation for several reasons, including that Petitioner’s “alleged rule generation and provisioning” is responsive to detecting malicious activity, not “based on the determined correlation.” Prelim. Resp. 38. On this record, we agree with Patent Owner. The claims require “generating, by the computing system and based on the determined correlation, one or more rules configured to identify packets received from the first host.” We do not have sufficient argument or evidence to show that one of ordinary skill in the art would have found it obvious to generate these rules “based on” the determined correlation.” slip op. at 16

  Claim construction§ 103 obviousness§ 112 disclosurecites KSR · Graham · Nautilus
  Patents in suitUS 10,931,797
• Samsung Electroncis Co. Ltd. v. Acorn Semi, LLCAll claims unpatentable
  PTAB · Feb 9, 2022 · IPR2020-01183 · APJ Brian J Mcnamara · IPR · Final written decision

  Claims 1–3, 17–18, and 21–24 are unpatentable: claims 1–3 and 17–18 are obvious over Jammy, and claims 21–24 are anticipated by Grupp ’483 and Jammy.

  RulingsFinal written decision

  • Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner

    “mental steps that an ordinarily skilled artisan theoretically might have taken after reviewing the minimal disclosure in the ’423 patent. The ’423 patent does not discuss any properties of metal oxides (other than the lower barrier of the metal oxide TiO2) or design considerations concerning the selection of particular oxides to use in the claimed structure, particularly in the context of MIGS separation. Dr. Kuhn cites very little, if any, evidence to support her testimony regarding the knowledge of an ordinarily skilled artisan. Thus, we do not credit this analysis as showing that an ordinarily skilled artisan would have found that the inventors of the pre-2011 priority applications possessed the recited genus. See Ariad, 593 F.3d at 1352 (a description that merely renders the invention obvious does not satisfy the written description requirement); PowerOasis Inc. v. T-Mobile USA, 522 F.3d 1299, 1306 (Fed. Cir. 2008) (“Entitlement to a filing date does not extend to subject matter which is not disclosed, but would be obvious over what is expressly disclosed.”) (quoting In re Huston, 308 F.3d 1267, 1277 (Fed. Cir. 2002),” slip op. at 22

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

    “As discussed above, Petitioner has demonstrated Grupp ’483 is prior art to challenged claims 1–3, 17–18, and 21–24 of the ’261 patent. It is undisputed that the priority applications disclose at least some group IV semiconductors. Thus, claims reciting the metal oxide interface layer and Group IV semiconductor are anticipated under In re Slayter, 276 F.2d 408, 411 (CCPA 1960) (“It is well settled that a generic claim cannot be allowed to an applicant if the prior art discloses a species falling within the claimed genus; in other words, whatever would infringe if subsequent will anticipate if prior.”) and In re Gosteli, 872 F. 2d 1008, 1010 (Fed. Cir. 1989). The additional limitations of the challenged dependent claims are also disclosed in Grupp ’483. See Pet. 25–26. For the reasons discussed above, we conclude that Petitioner has demonstrated by a preponderance of the evidence that claims 1–3, 17–18, and 21–24 are anticipated by Grupp ’483.” slip op. at 25

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
  • Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner

    “On this record Patent Owner has not provided sufficient evidence of a nexus between the long felt and the specific limitations recited in claims 1–3 and 17–18, e.g., the structure recited in independent claim 1, in which a metal oxide interface layer interposed between a metal and a group IV semiconductor comprising the source or drain of a transistor has a thickness between 0.1 nm and 5 nm.” slip op. at 39

  Patent outcomesUS 9,209,261 unpatentable
  § 102 anticipation§ 103 obviousness§ 112 disclosurecites KSR · Graham
  Patents in suitUS 9,209,261
• Cradlepoint, Inc. / Sierra Wireless, Inc. et al. v. Sisvel International S.A.Some claims unpatentable
  PTAB · Jan 18, 2022 · IPR2020-01102 · APJ Aaron W Moore · IPR · Final written decision

  Claims 1–5, 15–20, 30, and 31 are unpatentable as obvious over Qualcomm and TS25.322; claims 6–14 and 21–29 were not shown unpatentable. Substitute claims 32–35, 45–49, 59, and 60 were denied.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner asserts that a person of ordinary skill in the art at the time of the invention “would have a degree in electrical engineering or similar discipline, with at least three years of relevant industry or research experience in telecommunication, including familiarity with cellular communications technologies,” that this person “would also have familiarity with WCDMA,” and that “[t]his definition is approximate,” as “more education may substitute for industry experience or vice versa.” Pet. 12–13 (citing Ex. 1007 ¶¶ 30–34). We adopted Petitioner’s proposal at institution. See Decision 7–8. In its Response, Patent Owner “proposes that a person having ordinary skill at the time of invention—August 23, 2005—in the relevant art would be one with a bachelor’s degree in electrical engineering, computer sciences, or telecommunications, along with three to five or more years of practical experience in the field” and that “[a] combination of more experience in the field and less education or more education and less experience in the field would also suffice.” PO Resp. 8 (citing Ex. 2001 ¶ 27). Patent Owner asserts that “[a]lthough [its] proposed level of skill in the art is similar to Petitioners’ proposal, Patent Owner includes the qualification that a combination of more experience in the field and less education, or more education and less experience in the field would also suffice.” Id. The parties do not argue that the formulation of the level of skill in the art affects any issue in this case, and we maintain our adoption of Petitioner’s formulation, which we find to be generally consistent with the disclosures of the ’443 patent and the prior art, and which includes that “more education may substitute for industry experience or vice versa.”” slip op. at 9

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

    “length indicator” to mean “a single length indicator that provides two pieces of information: (1) that a first data octet of the protocol data unit is a first octet of a first service data unit; and (2) that at least one other octet of the protocol data unit is the last octet of another service data unit.” See Prelim. Resp. 9–10. We agreed with Patent Owner that the specification’s description of a single length indicator that conveys both types of information and the arguments made during prosecution that the claims required a “single LI” or “the same length indicator” to include both types of information were sufficient to support a construction that required a single length indicator to include both pieces of information. See Decision 9. Although it did not propose a construction in the Petition, Petitioner now argues that “the claim language uses the indefinite article ‘a’ to modify ‘length indicator’” and that “[p]recedent is well settled that ‘an indefinite article ‘a’ or ‘an’ in patent parlance carries the meaning of ‘one or more’ in open-ended claims containing the transitional phrase ‘comprising.’” Pet. Reply 5 (citing KCJ Corp. v. Kinetic Concepts, Inc., 223 F.3d 1351, 1356 (Fed. Cir. 2000)). While we agree with Petitioner that “a” may mean “one or more,” that simply means that the addition of more length indicators would not be excluded from the scope of the claim. Petitioner does not explain, and we do not see, how that affects the meaning of “length indicator” itself and, for the reasons argued by Patent Owner and adopted at institution, we maintain the earlier construction of “length indicator” as “a single length indicator that provides two pieces of information: (1) that a first data octet of the protocol data unit is a first octet of a first service data unit; and (2) that at least one other octet of the protocol data unit is the last octet of another service data unit.” See Decision 8; Prelim. Resp. 9–12; PO Resp. 10–13. slip op. at 11

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

    “We also observe that, although Patent Owner characterizes this issue as one based on “teaching away” (see, e.g., PO Resp. 3; PO Sur-Reply 15– 16), the argument is not about teaching away because Patent Owner is not pointing us to any specific teaching in the prior art, or elsewhere, that would counsel against the proposed modification. Patent Owner is not arguing that something in the prior art disparages or discourages the use of one bit of an LI as a flag. Instead, Patent Owner is arguing that one of skill in the art would not pursue the Qualcomm approach because to do so would mean accepting other drawbacks that would flow from the use of the flag. In any event, we credit Patent Owner’s evidence that dedicating a bit of the LI for use as a flag would reduce the length that could be represented by the remaining bits of the LI and cause SDUs to be divided into more PDUs. See, e.g., Ex. 2005 ¶¶ 30, 32. However, the record also shows that use of the flag would provide a specific advantage, as described in Qualcomm. See Ex. 1006, 3; Ex. 1007 ¶ 253. This is the motivation advanced by Petitioner which, notably, Patent Owner does not dispute. We conclude that, even if Patent Owner is correct that the proposal in Qualcomm would reduce the permitted PDU size from 128 octets to 64, the change would merely be something a skilled artisan would need to weigh against the advantages that the Qualcomm technique would provide. Patent Owner may be correct that the reduced lengths would, in the end, render the modified system unsuitable for certain applications or for adoption in a standard. That would not, however, make the modification nonobvious, particularly where the exact change proposed in the combination was suggested by individuals working in the field, as evidenced by Qualcomm itself.7 The record shows that at least some of those working in the field, at the time of the invention, believed that the advantages of Qualcomm’s approach would outweigh the reduced lengths.” slip op. at 20

  • BurdenMixed

    “In TS25.322, the value “0000000” is a predefined, special value used to indicate that “[t]he previous RLC PDU was exactly filled with the last segment of an RLC SDU and there is no ‘Length Indicator’ that indicates the end of the RLC SDU in the previous RLC PDU.” See Ex. 1005, 36–37. However, although Qualcomm specifically contemplates implementing its flag scheme by “[r]e-arrang[ing] special LI values as they are now coded on less number of bits” (Ex. 1006, 4), the Petition did not argue a combination that includes modification of the special LIs for the independent claims. Instead, Petitioner relied on Qualcomm’s proposal to modify ordinary LIs that indicate the end of SDUs. See, e.g., Pet. 71–72 (describing and illustrating modification of the LI that identified the end of SDU 1: “[t]he green modified LI indicates that a first data octet of PDU is a first octet of SDU1 and another octet of the PDU is the last octet of SDU1”); Ex. 1007 ¶¶ 261–262. Petitioner’s argument with respect to these claims is thus not consistent with the argument it advanced for the independent claims from which these claims depend. Petitioner cannot reasonably rely on one type of prior art LI as the “length indicator” of claim 1, but then shift to a different type of prior art LI when addressing the very same “length indicator” recited in a dependent claim. Moreover, Petitioner fails to explain how or why the special LI “0000000” that is used to indicate the layout of the previous PDU could reasonably be used to also indicate the layout of the current PDU in which the LI appears. For example, if the previous PDU did not meet the condition identified by the “0000000” special value, then the LI would not appear in the next PDU even if that next PDU had a first SDU that ended in that PDU. For these reasons, Petitioner has not provided sufficient explanation or argument to establish obviousness of claims 6 and 21.9” slip op. at 28

  Patent outcomesUS 7,894,443 mixed
  Claim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham
  Patents in suitUS 7,894,443
• Samsung Electronics Co., Ltd. v. Acorn Semi, LLCAll claims unpatentable
  PTAB · Jan 12, 2022 · IPR2020-01205 · APJ John R Kenny · IPR · Final written decision

  Claims 1–3, 6, 8–12, and 14–16 are unpatentable as anticipated by Grupp ’483; the priority applications do not support or enable the claims’ full scope.

  RulingsFinal written decision

  • Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateEntitled to earlier dateMixed

    “To support a claim to a genus, a specification must disclose “either a representative number of species falling within the scope of the genus or structural features common to the members of the genus so that one of skill in the art can ‘visualize or recognize’ the members of the genus.” Ariad Pharmaceuticals, Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1350 (Fed. Cir. 2010) (en banc). Here, the recited genus is an interface layer comprising a metal oxide, where the interface layer is configured to provide a specific contact resistivity between a contact metal and a semiconductor of than 1 Ω- μm2. Ex. 1001, 18:37–43. It is undisputed that the only species the pre- 2011 priority applications disclose is TiO2, as set forth in the following passage: Two other properties of the dielectric deserve mention. First is the property of the height of the barrier compared to the semiconductor conduction band (for electrons). In making the barrier thinner than a silicide barrier, the tradeoff may be a higher tunnel barrier (e.g., 2 eV for nitride, compared with about half the gap of 0.6 eV for silicide). Spacer layers may be used with lower barriers (e.g., TiO2 has a barrier of less than 1 eV). Nevertheless, even with the higher barrier to electrons, the present inventors have determined that the resistance can still be one hundred times lower than a contact to silicon with a silicide barrier. Id. at 17:59–18:2 (emphasis added).” slip op. at 18

  • Disclosure Requirements (§112) › Enablement (Wands, Amgen full scope)Not enabledNot entitled to earlier dateDecided for petitioner

    “evidence shows, that the disclosure does not enable specific contact resistance down to zero. Ex. 1016, Schubert Decl. ¶¶ 87–90. Instead, Patent Owner argues that one of skill in the art would have understood there to be an “inherent lower limit” and that the claims are enabled because one of skill in the art could achieve that lower limit through experimentation based on the disclosure of patent. We are not persuaded by Patent Owner’s argument, for two main reasons. First, we do not agree that the cases cited by Patent Owner establish that the enablement requirement is satisfied if one of skill in the art could experiment in accordance with the disclosure to find a practical end of an open ended range recited in a claim. Patent Owner principally relies on Andersen Corp. v. Fiber Composites, but the Federal Circuit in that case affirmed the jury verdict of enablement because “the upper limit of the Young’s modulus of the structural member would lie somewhere between the Young’s modulus of the wood fiber and that of the polymer used in the composition.” 474 F.3d at 1377. In other words, there were two known quantities that provided a fixed range. That is not the case here, where Patent Owner does not point to any such predefined limits. Patent Owner also cites a district court case, PerkinElmer Health Scis., Inc. v. Agilent Techs., Inc., 962 F. Supp. 2d 304, 310 (D. Mass. 2013). That case is not directly on point, because it was considering claim construction and not enablement, but that court also found an existing practical upper limit to the” slip op. at 36

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner

    “Neither party asks for a construction of the subject claim language, and we determine that the plain meaning of “a specific contact resistivity . . . of less than 1Ω μm2” would encompass all specific contact resistances below 1 Ω-μm2 and down to zero.” slip op. at 35

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableReference is prior artUnpatentable

    “reference for purposes of anticipation under section 102 [] differs from the enablement standard under section 112.” Rasmusson v. SmithKline Beecham Corp., 413 F.3d 1318, 1325 (Fed. Cir. 2005). Enablement under section 112, which is required for priority under section 120, requires enablement of the full breadth of a claim. Wyeth and Cordis Corp. v. Abbott Laboratories, 720 F.3d 1380, 1384 (Fed. Cir. 2013); MagSil, 687 F.3d at 1384; 35 U.S.C. § 120. Enablement for anticipation does not; rather it requires only enablement of an embodiment or embodiments that fall within the scope of the claim. Chester v. Miller, 906 F.2d 1574, 1577 (Fed. Cir. 1990) (“a CIP's claim for a genus might not be enabled by a parent's disclosure, but that parent may enable a species that anticipates the CIP's claim for a genus . . . . the Court of Custom and Patent Appeals [] made clear the differences between the requirements for claim-anticipating disclosures and for claim-supporting disclosures”) (citing In re Lukach, 442, F.2d 967, 969–970 (CCPA 1971)). Here, the enablement challenge for priority is for a lack of enablement of the full breadth of the recited range, and in particular, a lack of enablement of the lower part of the recited range (that which is at or near zero). No party has argued that the upper part of the recited range (just below 1 Ω-μm2) is not enabled by either the priority applications or Grupp ’483. See, e.g., Pet. 20; PO Resp. 1–2; Pet. Reply 27–28; PO Sur-reply 17– 18. And enablement by a prior art patent is presumed. In re Antor Media Pharm., Inc., 545 F.3d 1312, 1316 (Fed. Cir. 2008); Amgen, Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1355 (Fed. Cir. 2003). Thus, the record does not reflect an inconsistency in holding the priority applications as not enabling the breadth of the recited range while treating Grupp ’483 as enabling the upper part of the range for anticipation. As set forth below, we find that Petitioner has proven that Grupp ’483 anticipates every challenged claim.” slip op. at 42

  Patent outcomesUS 9,461,167 unpatentable
  Claim construction§ 102 anticipation§ 112 disclosurecites Phillips
  Patents in suitUS 9,461,167
• Samsung Electronics Co., Ltd. v. Acorn Semi, LLCAll claims unpatentable
  PTAB · Jan 12, 2022 · IPR2020-01204 · APJ Aaron W Moore · IPR · Final written decision

  Claims 1–8, 13–16, and 77–80 are unpatentable as anticipated by Grupp ’483; the challenged claims are not entitled to the earlier priority date.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner asserts that “[a]ny of the following combinations of education and experience would have qualified someone as an ordinarily skilled artisan in the field of the ’336 Patent”: (a) “a Ph.D. in electrical engineering, physics, materials science”; (b) “chemical engineering, with two years of practical experience with semiconductor research and design”; (c) “a Master’s degree in electrical engineering, physics, materials science, or chemical engineering, with four years of practical experience with semiconductor research and design”; or (d) “a Bachelor’s degree in electrical engineering, physics, materials science, or chemical engineering, with six to eight years of practical experience with semiconductor research and design.” Pet. 13 (citing Ex. 1016 ¶¶ 70–71). Petitioner further asserts that “[m]ore education could compensate for less practical experience, and vice versa” and that “[t]he same level of ordinary skill would have been applicable in August 2002, February 2011, or November 2012.” Id. Patent Owner does not address the level of skill in the art. Because Petitioner’s proposal is consistent the disclosures of the ’336 patent and the cited art, we apply it in this Decision.” slip op. at 10

  • ExcludeOther

    “We dismiss Patent Owner’s Motion to Exclude as moot because, unlike other cases in this family, this case does not include any claims that recite an “oxide of titanium.”” slip op. at 53

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

    “III. CLAIM CONSTRUCTION Neither party seeks any claim constructions, and we see no terms that need to be expressly construed to resolve the issues before us, so we do not engage in any formal claim construction. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (explaining that construction is needed only for terms that are in dispute, and only as necessary to resolve the controversy).” slip op. at 11

  • Disclosure Requirements (§112) › Written description (Ariad)Written description adequateNot entitled to earlier dateNot shown unpatentable

    “We agree with Petitioner that the pre-2011 priority applications do not describe the recited genus. To support a claim to a genus, a specification must disclose “either a representative number of species falling within the scope of the genus or structural features common to the members of the genus so that one of skill in the art can ‘visualize or recognize’ the members of the genus.” Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1350 (Fed. Cir. 2010). Here, the recited genus is an interface layer comprising a metal oxide, where the interface layer is configured to provide a specific contact resistivity between a contact metal and a semiconductor of less than or equal to approximately” slip op. at 15

  Patent outcomesUS 8,766,336 unpatentable
  Claim construction§ 102 anticipation§ 112 disclosurecites Graham
  Patents in suitUS 8,766,336
• Falkbuilt Ltd. v. Dirtt Environmental Solutions Ltd.Institution denied
  PTAB · Sep 24, 2021 · PGR2021-00067 · APJ Stacy B Margolies · PGR · Institution

  The Board denied institution because Petitioner did not show that claims 1–5, 8–12, and 15–17 were more likely than not unpatentable as indefinite or obvious.

  RulingsInstitution decision

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

    “review under 35 U.S.C. § 324 and 37 C.F.R. § 42.4(a) (2020). We may not institute a post-grant review unless “the information presented in the petition . . . , if such information is not rebutted, would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” 35 U.S.C. § 324(a) (2018). After considering the Petition, the Preliminary Response, Patent Owner’s Certificate of Correction Brief, and Petitioner’s Certificate of Correction Response Brief, we determine that Petitioner has not demonstrated that it is more likely than not that at least one of the challenged claims is unpatentable. Accordingly, we deny institution of post-grant review.” slip op. at 2

  • Disclosure Requirements (§112) › Definiteness (Nautilus)IndefiniteNot shown unpatentable

    “indefinite. “[A] patent is invalid for indefiniteness if its claims, read in light of the specification delineating the patent, and the prosecution history, fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention.” Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 910 (2014); see also id. at 910 (The definiteness requirement “require[s] that a patent’s claims, when viewed in light of the specification and prosecution history, inform those skilled in the art about the scope of invention with reasonable certainty.”). Petitioner has not sufficiently shown that, when viewed in light of the specification and the prosecution history, claims 2 and 3 fail to inform a skilled artisan about the scope of the invention with reasonable certainty. Petitioner fails to address the amendment of claim 2 leading up to the issuance of the patent.” slip op. at 13

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

    “Petitioner fails to sufficiently explain how the references are combined to teach this limitation or the reason one of ordinary skill in the art would have made such a combination. For example, Petitioner fails to explain how one would have “[a]ppli[ed] the teachings of Shingu to Scranton.” Id. Such a combination is not readily apparent from the references themselves because Shingu relates to moving a camera so that it can take a repeat photograph and does not describe determining the architectural space surrounding the user. Petitioner also does not provide a reason why one of ordinary skill in the art would have combined the cited teachings of Shingu and Scranton to arrive at the claimed features. See id. at 41–42. Nor does Petitioner’s declarant, Dr. Welch, provide testimony explaining how the teachings would have been combined or a reason to make the combination. See Ex. 1002 ¶¶ 79–81. Indeed, as Patent Owner notes, Dr. Welch does not even reference Scranton in his analysis of this claim limitation. See id.; Prelim. Resp. 19–20. Petitioner therefore fails to sufficiently show that the combination of Shingu and Scranton teaches “the particular physical location and the virtual predetermined position comprising the same relative view position within the architectural design file and an architectural space surrounding the user.”” slip op. at 25

  • Expert testimonyPetitioner expert discountedOther

    “and Scranton teaches the “receive a communication” limitation. Petitioner relies on Dr. Welch’s testimony to fill in gaps for what is not expressly disclosed in Shingu. As explained above, Shingu discloses an augmented reality system “that helps users take pictures from the same position and camera angle as a previous photo.” Ex. 1003, 272. Shingu discloses “us[ing] an existing method to estimate camera position as implemented in ARToolKit.” Id. at 271 (emphasis added). Shingu—which describes aiming a camera on an object at a certain angle—does not disclose having a user located within a particular physical space. Petitioner therefore relies on Dr. Welch to assert that it was known ARToolKit could provide the claimed functionality—indicating a relative direction that the virtual reality module (the camera in Shingu) is facing, and a location of a user with respect to the one or more position tracking sensors, wherein the user is located within the particular physical space. Pet. 34–35 (citing Ex. 1002 ¶¶ 69, 72). Dr. Welch’s testimony, in turn, is based on Wagner (Exhibit 1018), which appears to have been downloaded in February 2021. See Ex. 1002 ¶¶ 69 (citing Ex. 1018), 72; Ex. 1018 (footer). Although Dr. Welch gives a date of 2002 for Wagner (see Ex. 1002 ¶ 69), that date does not appear in Exhibit 1018. See Ex. 1018. Petitioner fails to explain in its Petition what evidence supports its assertion that Wagner shows that ARToolKit had been applied to the creation of a floor of a building “more than a decade before the time of the alleged invention” or that the techniques described in Welch were “well known by the time of the alleged invention.” See Pet. 34–35. Nor does the cited testimony from Dr. Welch identify evidence or otherwise provide support for the 2002 date or that the functionality described in Wagner was “well known.” See Ex. 1002 ¶¶ 69, 72. Thus, Petitioner’s assertions and Dr. Welch’s testimony regarding what was known to a person of ordinary skill in the art about the functionality of ARToolKit goes well beyond the express disclosures of Shingu—using “an existing method to estimate camera position” (Ex. 1003, 271)—and, on the current record, are not sufficiently supported by contemporaneous evidence. Petitioner therefore does not sufficiently show that the combination of Shingu and Scranton teaches “receiv[ing] a communication from the one or more position tracking sensors, wherein the communication comprises an indication of a relative direction that the virtual reality module is facing, and a location of the user with respect to the one or more position tracking sensors, wherein the user is located within the particular physical space.”” slip op. at 22

  § 103 obviousness§ 112 disclosurecites Phillips · Nautilus
  Patents in suitUS 10,783,284
• Cxloyalty, Inc. v. Maritz Holdings Inc.All claims unpatentable
  PTAB · Dec 19, 2019 · CBM2018-00037 · APJ Justin T Arbes · CBM · Final written decision

  Claims 1–15 are unpatentable under § 101; the motion to amend is granted for proposed substitute claims 16–23, which were not shown unpatentable.

  RulingsFinal written decision

  • Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionUnpatentable

    “does not remove the claim from the realm of abstract ideas. See Pet. 52–53; Reply 12; SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1168 (Fed. Cir. 2018) (holding that it “does not matter to [the conclusion that the claim is directed to an abstract idea] whether the information here is information about real investments,” as “even if a process of collecting and analyzing information is ‘limited to particular content’ or a particular ‘source,’ that limitation does not make the collection and analysis other than abstract” (citation omitted)). Further, the last two clauses of claim 1 that recite how the transaction is viewed from the perspectives of the participant and vendor system, respectively, merely express the “non-physical result” of the information transfers and confirm the abstract nature of the claimed subject matter. See Pet. 57. In fact, as to the vendor system clause, the Specification indicates that the vendor system transfers information no differently than it would for any other transaction. See Ex. 1001, col. 7, ll. 15–18 (disclosing that vendor system 208 responds to purchase request 216 “in the same way that it would respond to any other purchase request from a consumer that presents a credit card”).” slip op. at 35

  • Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptStep2 no inventive conceptUnpatentable

    “Our conclusion also is supported by the ’087 patent’s description of” slip op. at 41

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

    “transaction, . . . display[ing] an order message indicating the completion of the purchase transaction to the respective participant.” Mot., App’x A, 4. An example in which a judicial exception is not integrated into a practical application is when “an additional element adds insignificant extra-solution activity to the judicial exception.” Guidance, 84 Fed. Reg. at 55; Flook, 437 U.S. at 590 (holding that a step of adjusting an alarm limit variable was “post-solution activity”). Displaying an order message after the facilitated transaction has been completed amounts to insignificant post-solution activity, and does not support a conclusion that the abstract idea of claim 16 is integrated into a practical application.” slip op. at 75

  • 101 substituteMixed

    “transaction, . . . display[ing] an order message indicating the completion of the purchase transaction to the respective participant.” Mot., App’x A, 4. An example in which a judicial exception is not integrated into a practical application is when “an additional element adds insignificant extra-solution activity to the judicial exception.” Guidance, 84 Fed. Reg. at 55; Flook, 437 U.S. at 590 (holding that a step of adjusting an alarm limit variable was “post-solution activity”). Displaying an order message after the facilitated transaction has been completed amounts to insignificant post-solution activity, and does not support a conclusion that the abstract idea of claim 16 is integrated into a practical application.” slip op. at 75

  Patent outcomesUS 7,134,087 unpatentable
  § 101 eligibilitycites Alice · Mayo · Bilski · Berkheimer · Enfish
  Patents in suitUS 7,134,087
• Samsung Electronics Co., Ltd / Samsung Electronics America, Inc. v. Affinity Labs Of Texas, LLCAll claims unpatentable
  PTAB · Jan 28, 2016 · IPR2014-01184 · APJ Jon B Tornquist · IPR · Final written decision

  Claims 1–3 and 5–14 are unpatentable under § 103 as obvious over the prior art combinations addressed in the decision.

  RulingsFinal written decision

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

    “We agree with Patent Owner that the term “streaming” is often used in the context of the immediate processing and playback of audio information. -01181 Dec. on Inst. 7. The ordinary meaning of the term, however, does not require the immediate playback of streaming audio information, and the portions of the ’641 patent identified by Patent Owner do not demonstrate with reasonable clarity, deliberateness, and precision that a narrower claim definition should apply. For example, although the discussion in the ’641 patent of using high-speed communications for streaming an Internet radio station supports Patent Owner’s argument that “streaming audio” may be played immediately as it arrives, Ex. 1001, 7:3–7, the ’641 patent also discloses “downloading” “streaming audio” and “streaming Internet Broadcasts.” Id. at 3:67–4:1, 8:31–35, 17:1–2, 18:1–5. Thus, the disclosures of the ’641 patent are consistent with the dictionary definition of the term “streaming,” which contemplates the transfer of “streaming audio” as a constant stream of data for either immediate or delayed playback. Accordingly, we construe the term “streaming audio signal” as “an audio signal that is transferred in a continuous stream.”” slip op. at 10

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

    “3. remaining claim terms Patent Owner also proposes constructions for the terms wireless telephone device, a signal representing at least a portion of a song, while, and portable electronic device. PO Resp. 5–6, 8–10, 11–12. Upon review of Petitioner’s and Patent Owner’s arguments, we determine that construction of these additional claim terms is not required for purposes of this decision.” slip op. at 13

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

    “We agree with Petitioner that the addition of well-known rechargeable battery technology (as disclosed in Herrod) in the device of Abecassis would have been obvious, at a minimum, to eliminate the need to periodically replace the batteries in the Abecassis device. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (“The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.”). Moreover, we are not persuaded by Patent Owner’s argument that Abecassis and Herrod are in different fields of endeavor, as both references relate to the communication of data using a cellular phone.8” slip op. at 17

  • Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateNot entitled to earlier dateDecided for petitioner

    “Ipsis verbis disclosure is not necessary, however, to satisfy the written description requirement of section 112. Fujikawa v. Wattanasin, 93 F.3d 1559, 1570 (Fed. Cir. 1996). Thus, we must also determine whether, despite the lack of express disclosure, one of ordinary skill in the art would have understood that Patent Owner was in possession of the invention set forth in claim 8. Id. In conducting this analysis, we are cognizant that “a description which renders obvious a claimed invention is not sufficient to satisfy the written description requirement of that invention.” Regents of the University of California v. Eli Lilly & Co., 119 F.3d 1559, 1567 (Fed. Cir. 1997). Dr. Wolf recites the same disclosures as Patent Owner and concludes that one of ordinary skill in the art would understand that the ’812 application demonstrates possession of an invention wherein a radio dial transmitted to a recipient device could be used to cause the transmission of selected information to the recipient device. Ex. 2005 ¶¶ 287, 290. Dr. Wolf does not address, however, the specific configuration set forth in claim 8 of the ’641 patent. In particular, Dr. Wolf does not explain why one of ordinary skill in the art would understand from the recited disclosures that the patentee was possession of a method of streaming a song from a portable electronic device to a recipient device in response to the selection of a selectable menu item “presented on a recipient device display.” In contrast, Dr. Quackenbush analyzes the disclosures of the ’641 patent in detail and concludes that one of ordinary skill in the art, upon review of the priority disclosures as a whole, would not understand the patentee to be in possession of the invention set forth in claim 8. Ex. 1025 ¶¶ 189–207. Specifically, Dr. Quackenbush concludes that the disclosures of the ’812 application and the ’641 Specification focus on the transmission of data from a storage device and digital engine to an electronic device, and not from a portable electronic device to a recipient device, in response to a selection of a selectable menu item presented on a recipient device display. Ex. 1025 ¶¶ 193–203. Upon careful review of both Dr. Wolf’s and Dr. Quackenbush’s” slip op. at 52

  Patent outcomesUS 8,532,641 unpatentable
  Claim construction§ 103 obviousness§ 112 disclosurecites KSR
  Patents in suitUS 8,532,641

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.